In this guest post, Vanessa Ferguson unpacks some of the key considerations and strategies for dealing with counterfeits on the African continent:
Africa has
seen a vast increase in investment and growth over the past 50 years and many
companies have already mobilized to capture this emerging demand.
With the growing investment, Africa is being increasingly
targeted as a market for counterfeit goods and merchandise as a result of the
escalating urban populations’ growing demand for many goods not widely
available, as well as the lack of means to buy them.
Whilst the demand is growing for branded goods, and the
instances of infringing and counterfeit goods are on the increase, the various
Intellectual Property Rights protection measures available to brand holders
differ from country to country and remain largely inadequate in most African
countries and vary from region to region.
As a result, a “one size fits all” anti-counterfeiting strategy cannot
be easily applied or adopted in covering the key regions and territories in
Africa.
Furthermore, the market structure in Africa differs substantially
from first world markets, such as Europe and America, and, as such, the best
practices developed and applied in these territories cannot necessarily be
adopted and applied in Africa with the same results and consequences.
A key understanding of Africa and its nuances is important
in establishing an effective anti-counterfeiting strategy . Although modern trade is growing, this is still
small and under developed outside of South Africa. The most common and popular trading channels
in Africa are the simple table top or small “spaza” shops, which are
individually owned and managed by local entrepreneurs, set up on the side of
the road or in local markets in order to capture the passing trade. These businesses are supported and supplied
by an equally efficient network and well-developed informal distribution
structure. Furthermore, informal
cross-border trade is important to Africa and more than 43% of Africans are
involved in informal cross-border trade, which contributes a large portion of
the economic growth, job creation and job security.
As a result, counterfeit goods are increasingly being sold, transported
and distributed across African borders using these well-developed and largely
uncontrolled informal trade routes.
An effective African anti-counterfeiting strategy should therefore
not only be focused on the countries of relevance to the brand holders, but
also the neighbouring territories, taking into account the retail structure, main
trade channels and distribution routes in Africa.
As an initial step, brand holders should ensure that their
primary trade marks are registered - not only in the main countries in which their
goods or services are provided -but also in neighbouring territories. Without the existence of a registered trade
mark, it is almost impossible to act against counterfeiters in Africa,
especially in those territories where common law rights or protection of
well-known trade marks is not recognised.
Copycat infringement is on the increase, where infringers will adopt a
label that is a colourable imitation of the original label. As such, consideration should be given to the
registration of the labels for the primary products to provide statutory
protection against the use of a similar label or get-up.
Although Customs remains an important and critical
element to an effective anti-counterfeiting strategy, the relevance and success
of actions by customs differs from region to region in Africa. Unfortunately not all
territories have established Customs practices focused on the registration of
brands and detention of suspect counterfeit goods and it is only possible to
record brands with Customs in a handful of countries. Where formal customs recordal procedures are
available, such as in South Africa, Mauritius, Ethiopia, Morocco, Tunisia &
Egypt, brand holders should record their brands. In
other territories, an informal strategy can be adopted for the identification
and to support the notification of suspect counterfeit goods. This has been proven to be effective in key African
territories including Namibia, Zambia, Mozambique, Kenya, Tanzania, Uganda,
Rwanda, Ghana and Nigeria.
A strategy focused primarily on customs recordals and
actions alone is not sufficient or recommended in Africa, particularly due to
the inconsistencies in inspections and measures to stop counterfeits at the
ports, airports and borders differ from region to region. In each region it is necessary to assess and
work with local police services and regulatory bodies, for example NAFDAC in
Nigeria and the Anti-Counterfeiting Agency in Kenya, that have the capacity and
infrastructure to tackle counterfeit goods in the region.
Steps should also be taken by brand holders to formalise and
strengthen their own distribution channels in the region and across borders. Based on the demand for products, the
informal distribution channels and methods are strong and well-entrenched in
Africa, facilitating the trade in counterfeit and parallel goods. Brand holders should firsthand build up understanding
and knowledge of these distribution and retail channels in order to infiltrate
and effectively act against key counterfeit role players. Such investigations and actions, however,
take time, money and patience. A
long-term approach, with consistent supported actions against retailers and
suppliers alike, should be implemented, with a view to obtaining or extracting
information on the source and supply of these goods.
In each territory, brand holders should adopt a
zero-tolerance approach to anti-counterfeiting and take action to the full
extent of the law in the respective regions.
In such cases, where appropriate and feasible, brand holders should
institute criminal or civil proceedings against known and identified offenders,
especially in the case of repeat offenders or where other extenuating
circumstances justify the spend and time taken in bringing these matters to
finality. The continued prosecution of offenders will not only build up a
valuable precedent of case law, but will also send a clear message to the
market of the severity and consequences of dealing in counterfeit goods.
