Introduction
Intellectual Property (IP) protection systems in the EAC embrace the principle of territoriality in the protection of all aspects of IP. The principle of territoriality of IP systems entails the protection of IP based on national laws, i.e., what is protected and the scope of protection is limited within relevant national laws. In the same channel, the principle explains that IP protection is limited only to a jurisdiction where the owner sought registration and received protection on the same.[1]
Consequently, all EAC partner States have domestic legal and institutional frameworks regulating IP in their territories.[2] In the same lane of territoriality of IP systems, an invention protected in one EAC partner State is not necessarily protected in another partner State.[3] Unless an extended protection of an already protected IP in one partner State is sought and granted in another partner State. For instance, trademarks protected in Tanzania are not automatically protected in Kenya and vice versa. This may interfere with the free movement of goods and/or services in the EAC under the common market economy.
EAC Common Market Economy and IP Protection
As a regulation for economic regional cooperation, the Treaty on the Establishment of the East African Community[4] recognizes the importance of IP protection. Article 103(1)(i) of the EAC Treaty [5] speaks of the harmonization of laws and policies in the EAC to promote and protect IP and innovation with economic prosperity. Article 43(1) of the EAC Protocol on the Establishment of the East African Community Common Market hereinafter referred to as EAC Common Market Protocol,[6] speaks about cooperation amongst the EAC Partner States in the field of protecting IP. Whereby EAC partner States are called to enhance the protection of IP and come up with a common agenda.
IP as an Aspect of the EAC Common Market Economy
Common market economy comes with several angles of integration, which include the free movement of capital, labour, goods, and services, as well as two rights of residence and establishment as envisaged under Article 5(1) of the EAC Common Market Protocol.[7] With the current global regional economy under the umbrella of the common market, one cannot separate different aspects of IP from the common market. For instance, IP aspects such as patents and trade secrets can be invested as capital to a business and facilitate the means of doing business. While fostering integration through trade in goods and services, one cannot isolate IP aspects of trade and service marks from free movement of goods and services. Also, with the right of establishment, one cannot ignore the protection of aspects of IP and IP rights of different businesses that tend to have cross-border effects within different partner States. Therefore, IPs are important aspects of regional integration.[8]
Challenges of the Principle of Territoriality of IP Protection in the EAC
Violations of IP Rights in other EAC Partner States; when a certain IP is protected in one partner State and not protected in other partner States, it might be exposed to possible infringements in other partner States.[9] In the case of Mikoani Traders Limited (Azania) v. Bakhresa Grain Milling (Rwanda) Ltd.[10] two business rivalries from Tanzania were fighting over an already protected trademark in Rwanda. Whereby Azam sought to expand its business in Rwanda, in doing so Azam registered Azania as one of its brands when in fact Azania is a rivalrous brand and trademark already protected in Tanzania. In applying the principle of territoriality, the Commercial Division of the High Court of Rwanda ruled in favour of Bakhresa Grain Milling, stating that despite their alleged reputation, Azam and Azania are two trademarks protected in Tanzania, not in Rwanda. This ultimately blocked the intended expansion of Plaintiff Mikoani Traders Limited (Azania) in Rwanda and barred the use of Azania as its trademark.[11] This is possibly a bad precedent for the protection of IP in the EAC.[12]
Increase of Time and Costs when Initiating Cross-Border Protection of IP; the principle of territoriality requires an IP owner to move to all jurisdictions where the IP owner wants the protection of his invention.[13] This means an inventor has to spend time, financial resources, and other resources in moving to different partner States to seek the protection of the invention. Indeed, there is the African Regional Intellectual Property Organisation (ARIPO), where one can file for protection from several countries. However, the challenge is not all EAC partner States are member States of the ARIPO, for instance, South Sudan, Burundi, and the Democratic Republic of Congo (DRC).[14] Thus, moving to different EAC partner States is a necessity since not all EAC partner States are members of ARIPO.
Extra-territoriality of Trademarks: a Lesson from EU IP System
The European Union (EU) has advanced its IP systems through the application of the principle of extra-territoriality in trademark laws. The principle entails that the protection of a trademark in one EU Member State is recognized in other EU Member States.[15] Once a trademark is registered by the EU Intellectual Property Organisation (EUIPO), under the EU Trade Mark (EUTM) it acquires protection in the EU region.[16] Therefore, the EAC can learn from the EU by establishing extra-territorial regional IP protection systems in terms of laws and institutions.
Extraterritoriality of IP systems can be introduced in the EAC by harmonizing IP-related laws of partner States. Also, the Community should create a special protocol that will underline substantive regional arrangements concerning the governance of IPs. In the harmonization of IP laws and the creation of a special IP protocol the key consideration should be creating an EAC-centered system tailored to the special needs of the EAC partner states
Therefore, the EAC should rethink how to do away with IP management challenges associated with territorial-based systems of IP protection and ultimately introduce extra-territorial systems of IP protection to strengthen the EAC common market agenda.
[1] Emmanuel Oke, ‘Territoriality in Intellectual Property Law: Examining the Tension Between Securing Societal Goals and Treating Intellectual Property as an Investment Asset’ (2018) 15 A Journal of Law, Technology and Society 313, 348.
[2] James Odek, ‘Situational Analysis of Legal and Policy Framework for Intellectual Property Rights in EAC, SADC and COMESA’ <https://www.trapca.org/wp-content/uploads/2019/09/TWP1306-Situational-Analysis-of-Legal-and-Policy-Framework-for-Intellectual-Property-Rights-in-EAC-SADC-and-COMESA.pdf> accessed 14 January 2024.
[3] Kenya Association of Manufacturers, Intellectual Property Rights Regime Within the East African Community (Kenya Association of Manufacturers 2017).
[4] Treaty on the Establishment of the East African Community [1999].
[5] Treaty on the Establishment of the East African Community [1999] art 103(1)(I).
[6] East African Community Protocol on the Establishment of the East African Community Common Market [2009] art 43(1).
[7] East African Community Protocol on the Establishment of the East African Community Common Market [2009] art 5(1).
[8] Marumo Nkomo, ‘Regional integration in the area of intellectual property: The case for Southern African Development Community involvement’ (2018) 18 Law democr. and Dev. 317, 323.
[9] Curtis Bradley, ‘Territorial Intellectual Property Rights in an Age of Globalism’ (1997) 37 Virginia Journal of International Law.
[10] Mikoani Traders Limited (Azania) v. Bakhresa Grain Milling (Rwanda) Ltd. [2016] 00043 (HCC).
[11] Kenneth Agutamba, ‘Bakhresa Wins Brand Dispute’ (The New Time, 20 May 2015)<https://www.newtimes.co.rw/article/116201/News/bakhresa-wins-brand-dispute> accessed 14 January 2024.
[12] Kenneth Agutamba, ‘Mikoani vs Bakhresa: Case will have broad implications on business in EAC’ <http://rweyemamuinfo.blogspot.com/2015/01/mikoani-vs-bakhresa-case-will-have.html?m=1> accessed 14 January 2024.
[13] Irene Calboli and Edward Lee, Trademark Protection and Territoriality Challenges in a Global Economy Elgar Intellectual Property and Global Development Series (Edward Elgar Publishing Ltd. 2014).
[14] Njoroge Regeru and Company, ‘Towards Community IP rights protection: the East African Common Market Protocol’ <https://www.lexology.com/commentary/intellectual-property/kenya/njoroge-regeru-company/towards-community-ip-rights-protection-the-east-african-common-market-protocol> accessed 15 January 2024.
[15] Trimble, Marketa, ‘Extraterritorial Intellectual Property Enforcement in the European Union’ (2011) 18 Southwestern Journal of International Law 101, 104.
[16] Benedikt Herz and Malwina Mejer, ‘Effects of the European Union Trademark: Lessons for the Harmonization of Intellectual Property Systems’ (2019) 48 Research Policy, 1841, 1847.
