ARIPO - IP Case Study - countries infringement of unregistered well-known marks

An Irish company is a leading producer of a famous brand of whisky that is well known in most parts of the world, including Africa. In Africa, it has trade mark registrations that cover Botswana, Ghana, Namibia and Zambia, through the Madrid Protocol. It also has national registrations for the same trade mark directly through the national intellectual property offices in Malawi, South Africa, Tanzania and Zimbabwe. The company’s African supply network is supported mainly by its state-of-the-art brewery, which is in Durban, South Africa. It came to the Irish company’s attention through a trade mark watching service that an Indian company had applied to register a similar trade mark in some ARIPO countries for a competing brand of whisky. The ARIPO states that were designated in the application were Eswatini, Lesotho, Malawi, Mozambique, São Tomé and Príncipe, Tanzania and Zimbabwe. In addition, the Indian company was already selling its brand of whisky in Eswatini, Lesotho and Mozambique. Although the Irish company did not have trade mark registrations in these countries, its whisky brand was well known. 65 % of the company’s average annual sales in Africa in the last 3 years originated from these three countries. As a result, the Irish company regarded Eswatini, Lesotho and Mozambique as being of significant economic interest but had simply relied on the well-
known status of their trade marks without anticipating an immediate threat of infringement in these countries.