Leaders League. You were the first French industrial property law firm to make a footprint in sub-saharan Africa. Can you explain the reason for your implementation in Africa?
Jérémy Giacopazzi. The law firm, which was created by Eric Schahl and Franck Soutoul, is now celebrating its 20th anniversary, with branch offices all over France. At some point we had to deal with a client trading food products in Africa, for whom we had issues registering trademarks through a reliable agent. We then identified some significant issues, and especially a serious lack of security. Not to mention that since about 90 % of African lawyers are generalists, the number of recognized specialists is very limited, particularly those with solid expertise in intellectual property. There was therefore an opportunity for us to fill this gap!
We thus decided to embark on an African adventure and to establish an office on the continent. I was accredited OAPI industrial property consultant by the end of 2013, and we opened our very first branch office in Africa in June 2014 at Yaoundé in Cameroon. This location in Yaoundé naturally stood out as the head of the OAPI, as it would enable us to respond rapidly and register a trademark immediately if circumstances require it. Also, Cameroon appeared as very central to reach out to both west and central Africa, and to English-speaking African nations. Our team is balanced between French lawyers, OAPI attorneys and African lawyers from Zimbabwe and the Ivory Coast. In Africa the OAPI (African Intellectual Property Organization) allows reaching out to 17 member states with one single trademark registration. This is very advantageous; especially given that all those countries have a strong growth, such as Ivory Coast, Gabon, Cameroon etc...
And the OAPI, together with the ARIPO (African Regional Intellectual Property Organization), headquartered in Zimbabwe, give access to intellectual property protection within 26 African counties, meaning that, with only two trademark registrations, you can cover 26 countries – this is truly unique in Africa!
Leaders League. What have you witnessed over the first year of your establishment in Africa?
J. G. Given the international investments in the region, the number of trademarks registration can only increase. Many companies have now understood the necessity to register their trademarks when penetrating African markets. However, some companies are still a bit reluctant.
What appears quite clear is that there are ever-increasing registrations within three sectors: food, pharmaceutical and telecommunications.
Also, there has been a huge increase in counterfeit trademark registrations. Africa is actually facing what China went through 10 years ago. In this regard, we have to keep in mind that some trademarks which enjoy notoriety in France or the European Union are completely unknown in Africa.
Therefore, it is hard to convince Examiners of the trademark applicant’s bad faith, since it appears very complicated to demonstrate both the prior use and the notoriety of the trademark in Africa. And this leaves the companies with only two solutions: either buying back the African registered trademark
or changing it.
Finally, some African countries, I am especially thinking of Nigeria, have made efforts in accelerating the filing and registration of trademarks. Nigeria has just created an online filing: this is a positive sign.
Leaders League. After this first year of establishment, how do you want the INLEX service to evolve?
J. G. Since our establishment in Cameroon, we have traveled throughout the continent and met with many different local agents, developing our expertise and becoming more aware of the difficulties. The real difficulty is to find reliable and above all, responsive, local agents. Sometimes it has taken 7 years to receive a registration certificate. As for the main issues at stake for our clients, we want to give them the best support possible when developing their businesses in Africa by ensuring the permanence of their industrial property rights. Our main concern is to ensure that our clients’ protections are optimal.
We have started to establish partnerships with local agents with whom we want to sign a charter, and we have covered 41 out the 48 countries of sub-Saharan Africa, wherein we want to have a single contact in each. Our objective is to have a business relationship in each entity so that we have better and easier enforcement and seizure for counterfeiting.
Leaders League. What would be your advice to investors developing their activities in Africa as to the protection of their intellectual property rights?
J. G. For some years now, we have noticed a growing interest of our French and international clients and more especially of our American and Asian clients, in Africa. The biggest mistake the investors could make is to believe it is not worth thinking about their industrial property rights in Africa! This region is home to over 260 million people. However, some big international corporations still have not understood this aspect and continue to fail to register their trademarks… Actually, some French companies appear to be less far-sighted than others with regards to trademark registrations in sub-Saharan Africa, even in OAPI which is the French-speaking area.
Our experience shows that when deliberating businesses in Africa, international investors should bear in mind a few things, first of which is the necessity to safeguard their rights, as I have mentioned, through both the filing and registration of their trademarks.
One other important piece of advice I would give them is to pay attention to legal voids. One should be extremely well protected by contracts. It is therefore necessary to have a solid contractual strategy with distributors.
Also, investors must not forget the internet, and should buy the African top-level domains (TLDs). There are about 70 national domains in Africa. Within the countries of interest for the investor, it is absolutely crucial to determine whether the corporate brand has been bought.
Be careful when choosing your partner. One investor already lost his brand because of a bad partnership. Above all, I would advise companies wishing to expand in Africa to create a branch or subsidiary there, and not just to settle for a local partner. A legal entity bearing your name allows you to better defend your rights as it gives legal legitimacy n the OAPI area. For example, when you register a trade name, that protection extends to all the OAPI countries. This is not be the case for a locally-protected company name.
Leaders League. What will be INLEX’s main development projects in the years to come?
J. G. There is exceptional growth and dynamism in the Ivory Coast and this is where we are definitely considering setting up another branch office. Also, we plan on opening another office in an English-speaking country, such as Nigeria or Ghana.
We do not want just to support our current clients in their African ventures, we also want to raise awareness among local businesses about protecting their brands when exporting their goods and services. Along these lines, we are developing training programs throughout Africa, explaining the appropriate strategy to implement and raising awareness of both applicants and law firms.
In addition to the administrative management, which we intend to be irreproachable, we also want to develop the quality of our strategic advice. Furthermore, our affordable position in terms of price will set us apart from the already strong present of South African firms and will make us more appealing to clients.
Finally, our long-term project is to open branch offices in all major African countries using the same tools, standards and procedures throughout the continent.