Inventa International - Africa
Trademark infringement in Africa is one of the reasons why various stakeholders avoid seeking protection there, as it is believed that the trademark registration systems of certain countries are not as effective as those of more developed countries. This is one of many misconceptions about intellectual property in Africa. Some countries on the continent – whose legislation does not provide for a formal recordal of trademarks before a customs authority – offer the possibility of requesting an informal registration.
In Egypt, filing an informal registration before Customs can be effective in protecting against counterfeits. A formal registration before the customs authority is not available in Egypt, despite the Executive Regulations of the Import and Export Law 118 (1975), which restricts the import of products that infringe IP rights and the procedures available to rights holders to stop and prevent infringing shipments from entering the country. However, it is possible to seek IP protection and fight counterfeits by means of an informal registration.
The process starts by addressing a letter to the customs authority requesting to enter a mark in a watch list for monitoring possible counterfeit consignments. The letter should contain information about possible local distributors, the country of export and the usual ports of arrival in Egypt. It is then the rights holder’s responsibility to have detailed knowledge of the incoming products (eg, port of origin, shipment number, name of vessel, name of consignee and date of arrival of shipment at port), which will make the customs authority alert to possible infringement and able to identify and seize the shipment, if necessary. Without this information, infringing products can and do enter the country unchecked.
This letter should be accompanied by a certified copy of the registration certificate of the trademark in Egypt and a power of attorney legalised before an Egyptian consulate. The request will be then forwarded by Customs to all customs units in Egypt.
In the case that Customs detects any goods being imported or exported under a trademark included in the watch list, an alert will be sent to the IP owner, which then has the option to file a lawsuit. This is mandatory to continue with the seizure of the shipment and to call for an expert to examine the shipment and confirm the infringement. In addition, a civil case should be filed within 15 days from the date of the seizure order in order to obtain a decision on merits.
Following the publication of Decrees 992/2015 and 43/2106, which entered into force on 16 March 2016, the Ministry of Trade and Industry has introduced important changes to the customs clearance procedure, as well as to the list of regulated products subject to conformity assessment. As of this date, manufacturers or trademark owners of regulated products must be registered at the General Organisation for Export and Import Control (GOEIC) to be able to import products into Egypt.
In order to register a company or factory in the GOEIC, the rights holder must submit the following, along with a power of attorney legalised before an Egyptian consulate:
- a consulate copy of the licence issued to the factory or a certificate of the contents of the licence legalised at an Egyptian consulate and the Chamber of Commerce;
- a copy of the commercial register of the company legalised at an Egyptian consulate and the Chamber of Commerce;
- a certificate of registration of the trademark or priority documents that have been issued by the Egyptian trademark office within six months from the filing date; and
- a certificate that the factory applies the quality control system (ISO certificate) legalised by an Egyptian consulate and the Chamber of Commerce.
All of these documents must be translated into Arabic.