The ability to defend a trade mark in an African market depends in part on the scope of the registration and the evidence available to support it. For South African and international brand owners, a portfolio review should therefore consider how marks are being used and whether that use can be demonstrated if challenged. A registration maintained for many years can still contain vulnerabilities that become apparent only when the proprietor seeks to enforce it.

The BIG MAC warning

The European Union General Court’s June 2024 decision in Supermac’s v EUIPO provides a useful illustration. McDonald’s failed to establish genuine use of BIG MAC for certain goods and services, including chicken sandwiches, foods prepared from poultry and specified restaurant-related services. The court consequently narrowed the protection afforded by the registration. It did not remove all BIG MAC protection.

The evidence did not sufficiently establish the extent, duration and frequency of use for the relevant goods. Although the decision concerned an EU registration, the distinction between commercial familiarity and legally sufficient evidence deserves attention wherever a business intends to rely on registered rights.

Non-use under South African law

Section 27 of South Africa’s Trade Marks Act 194 of 1993 permits an interested person to seek removal of a registration on grounds of non-use. Under section 27(1)(b), the relevant ground concerns a continuous period of at least five years without bona fide use for the goods or services concerned, calculated within the statutory framework. The registration does not disappear automatically when that period passes.

In proceedings under this provision, the proprietor bears the onus of establishing relevant use where it is disputed. Statutory exceptions and the circumstances of the alleged non-use must also be considered. Removal can affect only some of the goods or services, leaving a narrower registration than the proprietor expected.

A useful evidence file should connect the mark to particular products or services, dates and markets. Sales records, dated packaging and advertising can contribute to that assessment. Where a distributor or licensee uses the mark, the proprietor should retain the relevant authorisation and arrange access to the underlying commercial records. Evidence held by an overseas head office should be retrievable by territory rather than only as consolidated global figures.

Different rules across an African portfolio

African trade mark protection involves national and regional systems with different territorial effects. ARIPO’s Banjul Protocol provides a filing mechanism for designated participating states, while an OAPI registration operates across its member states. Neither route provides continent-wide protection, and a South African registration requires separate consideration.

Use must also be assessed under the relevant system. For example, use in one OAPI member state can satisfy the regional use requirement. That approach should not be assumed to apply to a collection of national registrations. A business operating through several African distributors therefore needs advice on where use matters, whose use counts and which records should be retained.

Preparing rights for enforcement

Before an opposition or infringement claim is pursued, the supporting registration should be reviewed alongside the proposed action. A challenge to a competitor can expose weaknesses in the proprietor’s own portfolio, particularly where older specifications cover products that are no longer sold or where changes to branding have not been considered.

This review is also relevant when acquiring a business or licensing a brand. The commercial value attributed to registered rights should reflect their scope, use history and exposure to challenge. Keeping that information current reduces the prospect of discovering a serious weakness after a dispute has begun.

KISCH IP assists South African and international clients with African trade mark portfolios, including registration, evidence of use and enforcement strategy. The most effective time to identify an unused registration’s hidden weakness is while there is still an opportunity to address it.