- 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.