The infringement of intellectual property rights and counterfeiting are significant challenges within African countries. Registering and protecting its IP in each and every relevant country on the continent is key for every business, and requires specialist advice and knowledge.
ALN understands the complexities of creating, exploiting and enforcing intellectual property rights in Africa’s rapidly growing domestic and regional markets. We provide support to our Corporate M&A colleagues in connection with providing appropriate due diligence services and advice on key IP issues on any M&A transaction in any market.
Our lawyers work hard to protect and promote clients’ ideas, inventions and trademarks, including anti-counterfeit measures and brand protection, because we understand that intellectual property is an invaluable company asset.
Principal Areas of Practice:
- Anti-counterfeit procedures
- Copyright
- Disputes
- Distribution agreements
- Franchising deals
- Industrial designs and utility models
- Patents
- Plant breeders’ rights
- Sponsorship agreements
- Trademark licensing
What Sets Us Apart in Intellectual Property Service.
ALN’s Intellectual Property practice stands apart due to our consistently recognised Africa-wide work and significant cross-border capabilities. We provide legally sound and pragmatic advice to a diverse client base, from national businesses to large multinational corporations with operations spanning Kenya and the wider continent.
- Pan-African Reach and Coordinated IP Strategy: Our integrated alliance is specifically structured to manage complex multi-jurisdictional IP deals with a single point of contact. This capability is clearly demonstrated by our extensive work, such as coordinating trademark registration processes across numerous African countries.
- On-the-ground presence and deep understanding of local regulatory nuances: We have a presence in multiple jurisdictions in Africa and the UAE. This ensures added value and truly tailored solutions. We are “firmly rooted on the ground in Africa, in a Pan-African way”.
- Recognised Thought Leadership and Influence: ALN firms are not just practitioners; we are consistently recognised as thought leaders in intellectual property law across Africa. Our experts actively contribute to global IP publications, and we are members of the International Trademark Association (INTA). This deep engagement ensures our advice is at the forefront of legal developments.
- Comprehensive Intellectual Property Services Backed by Deep Sector Expertise: Our IP lawyers provide strategic advice covering the full spectrum of IP law, including trademarks, patents, industrial designs, copyright, anti-counterfeit measures, and plant breeders’ rights. Our team’s specialised expertise extends across a wide range of industries, including food and beverage manufacturing, banking and financial services, healthcare, energy, entertainment, transportation, and information and communications technology, allowing us to deliver context-specific and highly effective advice.
Our lawyers work hard to protect and promote clients’ ideas, inventions and trademarks as intellectual property continues its rise as an invaluable company asset. Representative transactions include advising:
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Eastern and Southern African Trade and Development Bank
in connection with the filing and prosecution of trademark registration applications in respect of its new trademarks (adopted following its rebranding in late 2016), including making direct national filings in 10 African countries.
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Eastern and Southern African Trade and Development Bank (formerly PTA Bank)
In connection with the filing and prosecution of trademark registration applications in respect of its new trademarks (adopted following its rebranding in late 2016), including making direct national filings in 10 African countries.
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Nokia Corporation
In connection with their entry into national phase and prosecution of sixteen PCT patent.
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Microsoft
In connection with the regulatory compliance of their Windows software.
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Colgate Palmolive
In connection with trademark infringement and passing off of goods resulting in a permanent injunction.
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Flamingo Horticulture
In connection with the legal position on the alleged infringement of a third party’s European patent on account of Flamingo Horticulture’s exportation of allegedly offending products to France.
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Anti-Counterfeit Procedures
Combatting counterfeiting is crucial for brand integrity and market protection in Africa. ALN firms offer comprehensive advisory and enforcement services to tackle the proliferation of counterfeit products and intellectual property rights infringement. Our services include:
- Strategic Advisory: Providing guidance on the legal framework for anti-counterfeit measures in various African jurisdictions.
- Enforcement Actions: Assisting clients in pursuing effective enforcement actions against counterfeiters.
- Regulatory Engagement: Engaging with national anti-counterfeit agencies and relevant regulatory bodies for investigations and capacity building initiatives.
- Contractual Review: Advising on contractual arrangements related to anti-counterfeiting investigations and evidence gathering.
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Disputes
When IP rights are threatened, our dispute resolution team provides robust representation across various contentious matters. Our experience spans national and cross-border IP disputes, ensuring your rights are defended with strategic foresight. Our dispute services include:
- Trademark Litigation: Handling contentious trademark work, including:
◦ Opposition and cancellation proceedings before registrars and tribunals.
◦ Infringement cases and passing-off matters before high courts.
◦ Disputes centered on complex designs, such as 3D trademarks.
- Patent Disputes: Representing clients in patent appeals before industrial property tribunals and advising on patent infringement claims.
- Domain Name Disputes: Advising on available dispute resolution mechanisms and engaging with domain name registrars to resolve ownership disputes.
- Cross-Border IP Disputes: Acting as lead counsel in complex multi-jurisdictional IP disputes, including coordinating market research, advising on legal remedies, sending cease and desist letters, and instituting mediation proceedings with infringers.
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Franchising Deals
Franchising offers a powerful model for business expansion, and ALN firms possess extensive experience in structuring and advising on these deals. We ensure that your brand and intellectual property are securely managed within franchise arrangements throughout Africa and the UAE. Our offerings include:
- Franchise Agreement Review: Reviewing and amending IP-heavy franchise agreements to ensure local law compliance.
- IP Licensing Provisions: Analysing and advising on trademark licensing and other IP provisions embedded within franchising models.
- Market Entry Strategy: Facilitating franchising arrangements for international clients entering the African market, from initial setup to ongoing compliance.
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Patents
Patents are fundamental for protecting novel inventions and technological advancements. ALN’s IP teams offer extensive experience in securing and managing patent rights across Africa, leveraging national, regional (ARIPO), and international (PCT) systems. Our patent services include:
- Filing and Prosecution: Advising on, filing, and prosecuting national, regional (ARIPO), and international (PCT) patent applications.
- Portfolio Maintenance: Managing ongoing patent portfolios and ensuring compliance with maintenance requirements.
- Appeals: Preparing and filing patent appeals to industrial property tribunals.
- Strategic Advisory: Offering advice on patent protection for software and other eligible inventions.
- Infringement Advisory: Providing guidance on patent infringement claims and related legal positions.
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Sponsorship Agreements
Sponsorships are increasingly common for brand visibility and commercial partnerships. ALN firms provide expert legal counsel to structure sponsorship agreements, ensuring the clear definition and protection of intellectual property rights involved. Our services include:
- Drafting and Negotiation: Preparing and negotiating robust sponsorship agreements that address IP ownership, usage, and branding guidelines.
- IP Rights Integration: Advising on the effective incorporation of IP rights, such as trademarks and publicity rights, into sponsorship deals.
- Compliance and Risk Management: Ensuring agreements comply with local regulatory requirements and mitigate potential IP-related risks.
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Copyright
Copyright protection is essential for creative and original works, from software to artistic expressions. ALN firms offer tailored solutions to secure and manage your copyrights across Africa and the UAE. Our expertise covers:
- Registration and Protection: Advising on copyright registration requirements and procedures, including navigating national and new online registration systems for various forms of intellectual property works, such as software programs and advertising materials.
- Licensing and Royalties: Providing comprehensive advice on copyright licensing and royalty obligations, particularly for digital content and online broadcasting services.
- Enforcement: Assisting in the enforcement of copyright against infringement, ensuring your creative assets are protected.
- Transactional Support: Advising on commercial and transactional matters involving the assignment and licensing of copyright.
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Distribution Agreements
Effective distribution strategies are vital for market penetration across Africa. ALN firms provide legal support to structure and manage distribution agreements, ensuring IP considerations are integrated seamlessly. Our services in this area include:
- Drafting and Negotiation: Preparing and negotiating distribution agreements that clearly define intellectual property rights, usage, and protection.
- IP Integration: Advising on how IP rights, such as trademarks and copyrights, are licensed and protected within distribution frameworks.
- Cross-Border Considerations: Ensuring distribution agreements comply with local laws and regional IP regulations across different African jurisdictions.
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Industrial Designs and Utility Models
Protecting the aesthetic and functional aspects of your products through industrial designs and utility models is a key aspect of IP strategy. ALN firms offer comprehensive services in this area across national and regional frameworks. Our services include:
- Registration and Protection: Advising on national and regional industrial design protection and utility model registration.
- Filing and Prosecution: Handling the filing and prosecution of industrial design applications, including for product packaging.
Enforcement: Advising on and representing clients in claims for infringement of industrial designs.
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Plant Breeders’ Rights
For innovations in agriculture and horticulture, plant breeders’ rights provide crucial protection for new plant varieties. ALN firms assist clients in securing these specialised IP rights across African jurisdictions. Our services include:
- Advisory and Registration: Advising on the registrability and protection of plant breeders’ rights for new plant varieties.
- Enforcement: Assisting in the enforcement of these rights, ensuring your agricultural innovations are protected from unauthorised use.
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Trademark Licensing
Trademark licensing is a strategic tool for brand expansion and revenue generation. ALN firms offer comprehensive support for clients looking to license their trademarks or acquire licenses from others. Our expertise includes:
- Agreement Drafting and Negotiation: Preparing and negotiating trademark assignment and licensing agreements.
- Tax Efficiency: Advising on the tax implications of licensing arrangements, including transfer pricing and international tax models (DEMPE models), to achieve tax-efficient offshore structures for IP asset holding.
- Rebranding Support: Integrating trademark licensing into rebranding exercises and corporate restructurings, ensuring seamless transitions and continuous brand protection.
- Cross-Border Licensing: Structuring and implementing complex multi-jurisdictional licensing models that comply with varied African and the UAE regulatory landscapes.
Principal Areas of Practice in Our Intellectual Property
ALN firms provide market-leading intellectual property (IP) services across Africa and the UAE, offering strategic advice and robust protection for innovators and businesses operating in diverse and dynamic markets. Our integrated alliance of top-tier law firms ensures a seamless approach to managing your IP assets. Our IP team delivers legally sound and pragmatic advice across the full spectrum of IP law, covering both contentious and non-contentious matters. Our IP practice is designed to safeguard, enforce, and maximise the value of your innovations throughout the continent and includes:
