International Intellectual Property – Ghana – Renee Panarkuor Owusu Ansah

Our firm provides extensive IP services covering:

• Trademark searches and registrations across Africa
• Patent and Industrial Design registrations across Africa
• Copyright and Domain Name registration
• Drafting of Assignments, Licenses and Franchising Agreements
• Brand Protection Services-customs / border services, criminal and civil litigation, Market raids
• IP Advisory
• IP Audit / due diligence
• Technology Transfer services
• Data Protection
• IP market survey
• Gazette watch

We have collaboration with another law firm in another jurisdiction which allows us to provide quick and effective services to our clients beyond the shores of Ghana. In addition, our firm believes that when it comes to IP protection time is of the essence. We therefore have the required expertise in terms of lawyers, paralegal to execute the mandate of efficiency.

Our current workflow includes almost all the services outlined above. We are on a daily basis either filing IP applications or following up applications at the Ghana Industrial Office. We have also been involved in hearings at the Industrial Office in trademark opposition matters. In addition, we are also involved in filing petitions/responses at the Industrial Office to overturn rejections of trademark applications. We are involved in a lot of IP advisory work where clients engage us to advise on possible infringements or passing off etc. We currently have some IP litigation ongoing as part of the brand protection.

We were involved in an infringement action in which we counterclaimed for invalidation of the registration of a trademark for which our client had been sued. Our invalidation claim was successful. We have also been involved in raid actions in conjunction with the Ghana Police Service to offer immediate protection against infringement in circumstances where we viewed litigation would be protracted.

In our practice currently we are actively involved in brand protection which encompasses registrations and litigation. The emergence of streaming platforms has also brought to the fore copyright issues, particularly in the movie and music industries. Takedown requests and actions for copyright infringement which hitherto were not common have seen a surge in recent times as people seek to protect their intellectual property.

Some of the challenges faced are: (i) inadequate awareness of intellectual property rights and intellectual property culture; (ii) Use of IP without the permission of the creators e.g. copyright. (iii) counterfeiting; (iv) time and cost of registration; (v) protracted litigation. (iv) 3rd party already existing similarly confusing marks.

We try to settle some of the matters using Alternative Dispute Resolution methods like Mediation. In addition, with respect to IP registrations we have personnel assigned to the Ghana Industrial Office who consistently visits the office to follow up matters. We also advice clients to execute Non-Disclosure Agreements when a commercial transaction is contemplated which will include IP matters. We advocate for parties to also negotiate co-existence agreements where the situation necessitates that.

One emerging trend is the use of social media platforms for business promotion and for uploading content for either free access or paid viewing. One of the challenges encountered by our clients is the unauthorised use of their content and we have assisted our clients apply for such offensive contents to be taken down and offenders prevented or restrained from further infringement.

There are several challenges that can be identified in enforcing IP on a cross-border scale. These include inconsistency in the procedures used in enforcing IP across jurisdictions. The use of varying national laws can result in the absence of predictability when pursuing IP protection. This unpredictability can serve as a barrier to rightsholders pursuing IP protection in multiple states. There is also this challenge where some jurisdictions have laws for some aspects of IP and not others. This affects rightsholders as they may have protection for their IP in some jurisdictions and not others. Another challenge is the fact that some countries are non-signatories to certain intellectual property treaties. The countries that are non-signatories are not bound to respect the intellectual property rights given under the treaties to rightsholders. Other challenges that rightsholders face is in the area of cross border enforcement. Rightsholders can be burdened if they lack the finances to for instance pursue infringement actions in different countries in different languages.

It is very important because it prevents the rightsholders from wasting not just their time but also their finances. When a rightsholder for instance conducts a search prior to filing an application for trademark registration, similar or same marks on record will be exposed and this will prevent the rightsholder from expending resources to file a mark which will be rejected along the registration process. Market surveys also inform IP rightsholders of whether there is conflicting IP already on the market. This awareness guides business decision making in that it informs the rightsholders of whether or not to pursue a co-existence agreement or abandonment. Failure to embark on due diligence before an IP case can result in the rightsholders being engaged in a protracted litigation.

We have been involved in conferences in the past. We also have affiliation with a law firm in another jurisdiction which in turn has affiliations with IP practitioners in several other jurisdictions.

We are not just experts in IP. We are experts in several other areas of practice like Energy, Mining, Corporate and Commercial, Public Private Partnerships (PPA), Banking to name a few.