Custom Recordal of IP Rights: An Extra Layer of Brand Protection in Africa

KENYA

Formal recordal available

Enabling law:

1. The Anti-Counterfeit Act, No. 13 Of 2008
2. The Anti-Counterfeit (Recordation) Regulations, 2021

Relevant Body:

The Kenya Anti-Counterfeit Authority

Protection available for all IPR: in Kenya custom recordal is available for all intellectual property rights. This includes copyright, Patent, copyright, and plant Breeders right.

Compulsory: Custom recordal IPR is compulsory for owners of IPR When importing goods into Kenya.

Requirement

1. description of the IPR;
2. a Power of Attorney in the name and address of the IPR owner and/or authorised importers(signed and notarized)
3. detailed description/specification of the goods;
4. certified copy, by the registering authority, of the certificate of registration of the IPR to be recorded;
5.  telephone number and email address of the IPR owner and/or authorised importers;

6. photos of the original products bearing the IPR to be recorded;
7. identity of any parent or subsidiary company or other foreign company which uses the IPR abroad; and
8.  place of manufacture of the original products bearing the IPR;
1. name, telephone number and email address of the IPR owner and/authorized importers as well as each foreign person or business entity authorized or licensed to use the IPR (includes distributors)

Duration/Renewal

The Recordal is valid for one year (or the current registration period of the IPR, whichever is shorter), and is renewable for a period of 1 year.

ALGERIA

Informal recordal Available

The General Directorate of Customs does not have a formal system for registering IPR. However, where a IPR owner suspects infringement of its goods in Algeria, the owner can request the customs authority to seize the shipment that may contain fake or illegal goods into the country.

If the Directorate finds that there are goods infringing the rights of the applicant, the goods will be suspended for three days, within which the applicant or the applicant's representative must verify the validity of the claim.

Enabling Law

• The Customs Code
• The Law No. 79-07 of July 21st, 1979, as amended and supplemented, with the Customs Code (Articles 22, 22a, 22b, 22c);
• The Law No. 07-12 of December 30th, 2007 Finance Act for 2008 (Articles 41-45).

Relevant Body: General Directorate of Customs (Directorate)

Requirement

An application to record one’s IP rights is made by submitting the following:

• Copy of the certificate registration of the trademark.
•  Description of the genuine product and the counterfeited products
• Photos of the genuine products and its packaging along with the counterfeited products.
• Letter of commitment in French signed under the company’s seal or letterhead and duly legalized before the Algerian Consulate.
• A Power of attorney, legalized up to the Algerian Consulate.
• Any other relative information is about the counterfeiter, arrival of counterfeited products.
• The duly authorized importer or licensee or distributor in Algeria

Duration: Custom alerts in Algeria will expire after the trademark expires, therefore it will be necessary to file a copy of the renewal trademark with an original PoA

 ( notarized & legalized) at the level of the Algerian customs to maintain the Alert.

MOROCCO

Formal recordal Available

Enabling Law: Moroccan Law No. 23-13, amending and supplementing Law No. 17-97 on the Protection of Industrial Property

Relevant Body: Central Customs Administration of Morocco

Protection available for Trademarks

Requirements

1. A certified copy of your trademark registration in Morocco.
2. An original Power of Attorney in the name of the current applicant as registered with the Moroccan trademark office and signed by one of the qualified representatives/executives of the company duly notarized and legalized up to the Moroccan consulate (a form is attached). The Power of Attorney must be printed on the letterhead of the applicant.
3. You will note that the validity of the Power of Attorney should be limited to a specific period in order to be acceptable for use in our country as per the new requirements by the customs authorities.
4.  A certified copy of the extract of the Commercial Registry showing the ability of the said signatory to sign in the name of the company.

• All these documents should be sworn translated into French or Arabic.

Duration

The request is valid for a period of 1 year or for the remaining period of the IP right if it less than 1 year

Renewal: can be further renewed for subsequent years until the termination of such rights in the IPR.

SUDAN

Formal recordal Available

Enabling law: Customs Borders Measures for the Protection of Intellectual Property Rights

Relevant Body: Directorate General of Customs in Sudan.

Protection is available for all IPR.

Requirement

1. Power of attorney, legalized up to the Sudanese Consulate
2. List of countries where the product(s) is being manufactured
3. Certificate of Incorporation /Commercial Register of the applicant company, legalized up to the Sudanese Consulate with sworn Arabic translation
4. Certified copies of the registration certificate
5. Copy of the Importation Certificate for each trademark
6. Certificate of origin of the product(s) – Legalized up to the Sudanese Consulate
7. Clear A4 sized photos of the authentic products from different sides and photos of the inside of the boxes, and specify, if these capsules, tables, syrups or injections
8. An electronic presentation of the original products to aid the Customs officials in detecting counterfeit products and differentiating them from the originals
1. furthermore, the Arabic translation of the POA is a must, and the barcode of the trademark is also required.

Duration/Renewal

One year renewable for subsequent terms after the lapse of the original term.

MAURITIUS

Formal recordal Available

Enabling Law: Section 66A-E of the Customs Act

Relevant Authority: Mauritian Revenue Authority customs

Protection is available for all IPR: Mark, Collective Mark, Patent, Industrial design, and Copyright

Requirement

1. proof of ownership: Any evidence that the applicant is the owner or the authorized user of the patent, industrial design, collective mark, or the copyright.
2. Certificate of registration of the IPR
3. A statement of the grounds for the application supported by evidence showing that his rights have been or are likely to be infringed.
4. Particulars relating to the description of goods making them readily recognizable by the customs, and the place where such goods are to be foun
5. A minimum bank security amounting to 20,000 Mauritian rupees (500€ )
6. In the case of Copyrights which are non-registered rights, the right-holders have to

demonstrate credibly that a claim to that right may be made (e.g. affidavit, proof of

acquisition).

7. Power of attorney (procuration/pouvoir), duly registered in Mauritius under the Registration Duty Act, in case applicant is not the owner of the right
8. Catalogue/photographs/sample, if any.

Duration

An application for suspension has a maximum validity period of two years.

SOUTH AFRICA

Formal recordal Available

Enabling law: The Counterfeit Goods Act 37/1997 as amended

Relevant Authority: South African Revenue Services (the Customs Authorities)

Protection is available for all IPR

Requirements

• Application to the Commissioner for Customs and Excise requesting the Customs Authorities to search and seize all suspected counterfeit goods bearing your brand(s).
• Power of attorney simply signed.
• Certified extract of the subject trademark.
•  indemnity document: to indemnify the Customs Authorities against any liabilities as a result of the search and seizure.

Duration/Renewal

Two years renewable subsequently for another 2 years

MALAWI

Formal recordal of IPR not available.

There are currently no rules in place with respect to registration of the custom recordal in Malawi. However informal registration can be done with the Customs Authority.  

Where the applicant suspects an infringement of his trademark rights, the applicant must notify the commissioner general in writing. The Commissioner General must take all necessary action after receiving the notice to ensure that the imported goods do not violate the registered trademark.

Enabling Law: The Trade Marks Act, 2018 (section 55)

Protection available for trademark

Requirement

1. Written notice
2.  information and particulars of the trademark
3. The applicant must indemnify the Commissioner General against any liability or expense, whether security has been given or not.
4. Specification of time and place where infringing articles are to arrive in Malawi
5. The applicant giving notice must provide security in respect of any liability or expense which the Commissioner General may incur in the process of protecting the trademark. The type of security required is not necessarily a bond, it could take whatever form specified by the Commissioner General. In addition to that, the Commissioner General is required to generally protect the trademark and not necessarily carry out the actions of destruction and demurrage.

6. Other relevant documents required by the commissioner General

Duration

Once the custom recordal is registered, it remains valid until the trademark owner or licensee removes the registration from the Commissioner General’s office.

EGYPT

Formal recordal of IPR not available. Informal recordal available for Trademarks.

Enabling Law: The Executive Regulations of the Import and Export Law 118 (1975)

Protection available for all IPR: rights of the copyright holder and related rights, trademarks, geographic indications, industrial designs, patents, integrated circuit lay-out designs).

Relevant Authority: Custom Authority

There is no formal IPR custom registration available in Egypt.

 However, the Customs has implemented proactive anti-counterfeiting measures that permit IP owners or their representatives to file a complaint with the Customs to suspend the release of any imported goods or products or packages into free circulation which allegedly involving infringement on their intellectual property rights, provided that the goods are entering Egyptian ports or yet to be released from Customs.

Requirement

1. a Power of Attorney duly legalized up to the Egyptian Consulate and

2. a Certified copy of the client’s trademark registration in Egypt are required to be able to represent the client before the Customs Authority.

3. The complaint letter which contains the following information:

1. The applicant's name and job, and the name of his representative.
2. A detailed description of suspected consignment/consignments subject of complaint regarding the exporting country, bill of lading number and date, port of destination, name of importer, and description of goods.
3. Adequate evidence and documents that there is a prima facie infringement of intellectual property rights.
4.  A certified deed to assert IPR ownership subject of complaint along with an affidavit indicating the property has not been assigned or subject to a usufructuary right.
5. An affidavit by the IPR holder verifying that he has not filed a request for a decision on the merits by the competent chief justice to the effect of taking one or more provisional measures or that no decision rejecting the provisional measure regarding the brief has been issued.

4. The applicant and the customs shall provide Trade Agreements Sector at the Ministry of Foreign Trade and Industry with a copy of the complaint.
5. a security or a letter of guarantee issued by an Egyptian bank accredited by the Central Bank of Egypt

Duration

The seizure will last for only 48 hours during which the customs shall provide the owner or its representative with the consignment information; on amicable basis; to proceed officially with the customs complaint illustrated above.

RWANDA

Formal recordal of IPR not available

Protection available for trademark

Enabling Law: LAW N° 31/2009 OF 26/10/2009 ON THE PROTECTION OF INTELLECTUAL

PROPERTY, Article 273-279

Although formal recordal of IPR is not available in Rwanda, the Rwanda Intellectual property law allows customs authorities to suspend the release of goods into free circulation where they are suspected of being counterfeit on their own initiative or upon request by an owner/licensee of IP rights/any other interested party.

Requirements

1. adequate evidence that the applicant is the owner of the intellectual property right.
2. evidence that his or her right has been infringed or that an infringement is imminent.
3. A detailed description of the goods alleged to be infringed, to make them readily recognizable by the customs authority
4. The customs authorities shall suspend release into free circulation after a security assurance of
5. Twenty per cent (20%) of the value under customs clearance procedures of the alleged infringing goods has been provided by the applicant.

Duration

The suspension of the goods would last twenty (20) working days or thirty (30) calendar days, whichever is greater. Those days begin on the day the owner was notified. Only the court has the authority to grant a period extension.

ZAMBIA

Formal recordal of IPR available

Protection available for copyright  

Enabling Law: THE COPYRIGHT AND PERFORMANCE RIGHTS ACT, CHAPTER 406 OF THE LAWS OF ZAMBIA

Requirements

The owner of the copyright in a literary or musical work, compilation, audiovisual work, or sound recording, may, if the work has been published, give notice in writing to the Controller of Customs.

(a) that he is the owner of the copyright in the work; and

(b) that he requests the Controller to treat as prohibited goods, during the period specified in the notice, copies of the work which are infringing

Copies

C) The applicant may be required to provide evidence of ownership of the copyright.

Duration

The period in the notice must be 5 years or the remainder of the duration of the IPR, whichever is less.