Although no express provision is made for the protection of well-known marks in the Angolan Industrial Property Act, 3/92 of 1992, well-known marks are in fact afforded some protection in Angola.
In practice, the Registrar will refuse or annul a trade mark if it constitutes a reproduction, imitation or translation of a mark that is well-known in Angola, if it is used for identical or similar goods or services and is liable to cause confusion. A mark may also be refused or annulled where the mark, although used on goods or services that are not identical, constitutes a reproduction, imitation or translation of another mark that enjoys high renown in Angola, and the use of the mark is intended to take unfair advantage of, or may be detrimental to the distinctive character or renown of the mark.
Similar to the definitions contained in the Mozambique Industrial Property Code, a mark is considered well-known by the Angolan registry if it is well-known among the interested local public as a result of the promotion of the mark in Angola. A mark will be considered a mark of high-renown when it is well-known among the interested public as a result of the promotion of the mark in Angola or worldwide.
Notably, and an important fact to remember when instituting opposition proceedings based on the well-known status of a mark in Angola, the proprietor of a well-known mark or mark of high renown may only institute proceedings where they have registered or applied to register their own trade mark in Angola, albeit after the date of the application that they wish to oppose.
Although Angola is a first-to-file jurisdiction, given that the relevant legislation is silent on the protection and enforcement of well-known marks, it is difficult to predict how the authorities will apply the principles of protection to well-known marks. A pattern that seems to be emerging from a slew of recent trade mark opposition rulings is that it is easier to succeed in an opposition based on well-known mark rights if it is a foreign entity that has applied to register the mark that you want to oppose, rather than a local entity.
In all instances though, in both Mozambique and Angola, the well-known mark proprietor will need to submit a wealth of convincing evidence as to the mark’s notoriety, preferably including, where available, evidence of local use or recognition in the country. This can take the form of invoices to local entities, a listing of local retailers that stock the products, any country-specific websites or social media profiles, any local or at least Portuguese advertisements or local news articles or other publications that mention the mark.
Despite the fact that Angola acceded to the Paris Convention for the Protection of Industrial Property on 27 December 2007, the registry appears to give little regard to the provisions regarding the protection of well-known marks when considering an opposition filed against a local Angolan entity.
Ideally, the proprietors of well-known marks would be well-advised to prioritise the filing of their own trade mark applications in Angola, before a wily entrepreneur gets there before them.
ANGOLA | OPPORTUNITIES & CHALLENGES