FIRST-TO-FILE VERSUS FIRST-TO-USE TRADEMARKS SYSTEMS IN AFRICA

  • In countries where common law rights (for example rights acquired through use) are recognized, the law provides for rights to a trade mark to arise with or without registration and the rights generally accrue to the first person / entity to use the trademark. This isreferred to as the first-to-use system.

 

  • In other countries, the first person/entity to file an application for registration of the mark will have the rights to the mark, regardless of whether another person/entity has built up a reputation in the mark in that country. This is known as the first-to-file rule. 

 

  • African countries which practice the first – to –file system include Angola, Nigeria and Ghana.

 

  • OAPI also applies the first-to-file system, unless the applicant is acting in bad faith and should have known that another person had prior right to use the mark.

 

  • Having a registered trade mark means the trademark owner need not prove use or reputation – thereby cutting down on litigation cost.

 

  • In African countries which practice first – to -use/create, common law rights are recognised, and prior use in a country may entitle an entity to institute infringement proceedings, e.g. in Tanzania, Ethiopia, Uganda, Rwanda, Burundi.

 

Challenges of First-To-File Trademarks System In Africa

 

In developed jurisdictions, one may have more than one basis on which to take on infringers, however in some first-to-file African countries a business can only rely on its trade mark.

 

Other related laws may be unenforceable or implementation of the laws onerous.

  • Not registering a trademark may leave one without a remedy if a third party decides to register the trade mark there first.
  • It may weaken brand value for first-to-use owners.
  • It may lead to avoidable transaction cost. This is because litigation in Africa may be very expensive and lengthy.
  • The strength of a company’s case against infringers also depends on the law in each African country.