Afro-IP

Uganda: Bottler goes to court on look-a-likes

2013-06-19T06:33:00.000+02:00

Tony Kakooza reports from Kampala that "A new battle over trade mark rights is brewing in the Uganda beverage industry between the Coca-Cola and Riham Cola brands. Century Bottling Company (CBC) runs the Coca Cola brand in Uganda while Riham Cola is owned by Harris International Limited (HIL). CBC is seeking an injunction from court against further infringement by Riham over confusingly similar products on account of similarity in brand colours, packaging, content colour and so on."

According to Sunrise, who sourced the pics above:

"Business pundits had seen it coming for a longtime. Riham Cola is a sensational at has seen the new product taking supermarkets, bars and other outlets across the country by a storm."

At the moment thanks to its low price of Ushs1000 as well as its maker's aggressive marketing strategy that has seen the new product taking supermarkets, bars and other outlets across the country by a storm.

At funerals, Riham Cola is now replacing Mineral Water because it goes at the same price with bottled water. Even the prestige of drinking soda as opposed to water among the village folks, is driving Ugandans into hooking to Riham soda.

Moreso, at a cost of Ushs2000, one drinks more soda with Riham Cola's 640mililiters (ml)--as compared to 500mililitres of Coca Cola at the same price.

For people on the move, Riham Cola is also convi[e]nient as one can buy the soda and take the bottle, dri[n]king it later."

Aggressive competition is not new to The Coca-Cola Company who defend the world's most valuable brand over the last decade, across the globe, on a daily basis. What seems to be in issue for CBC, the bottler, is the look-a-like packaging which Riham have apparently been slow to change.

Tony observes that "Ugandan trade mark legislation was only recently reformedwith the passing of the Trademarks Act No. 17 of 2010 which repealed and replaced the colonial era legislation. The fairly new statute made improvements on registration and enforcement procedures in the protection of trademark rights."

He mentions that "according to sources from Harris International Limited (HCI), they are shocked by CBC rushing to institute an infringement suit against them when negotiations between the two companies were still on-going. "

Sunrise reports that HCI have filed their defence and that ".. the matter will proceed to an arbitrator, to see if the two parties can sort out their differences. If they fail to agree, the case file will go before Lady Justice Hellen Obura, who will kick off the hearing by framing issues that the two principals would want court to resolve."

Afro Leo looks forward to further updates. It is interesting that the bottler seems to have taken action, not Coca-Cola and also, that this appears to be more of a passing off case on look-a-like products than one strictly on trade mark infringement. HCI were apparently prepared to change their bottle packaging but are now counterclaiming for damages. It is a proper fight, in the market and, potentially, in the court.

A review of African official IP websites: no.50: Togo

2013-06-17T22:09:00.000+02:00

As this Leo attempts to review the online presence of Togo's intellectual property (IP) office, he is nicely helped by one of our readers who goes by the name of Maria Georgieva - according to Google's translation. Maria has kindly directed us to this website www.innovations-togo.org which appears to have a searchable database for patents.

This Leo has had a look and he is not entirely sure where the owner, Ministry of Industry, Innovations and Technology, is going with this. Otherwise, the web presence of Togo's IP office has not changed since last year. He is conscious of the fact that Togo is one of the least-developed countries (LDCs) that has benefited from the TRIPS transition period extension reported earlier on this blog. Perhaps, they do not need to bother with a website for their IP office.

Same interests, one community, different locations.
Source: here

Well, this is not the first time Afro-IP's friend, Maria, has come to this Leo's rescue as he struggles to locate the existence of some of these websites. Afro Leo is always extremely grateful for any little participation or help from our ever-growing community because Afro-IP is here to inform us all regardless of where we are located.

Thank you, Maria.

All the talk about TRIPS deadline extension …

2013-06-17T08:32:00.000+02:00

Here's the final guest post from Chijioke Ifeoma Okorie, who has now joined the regular Afro-IP team:

The Least Developed Countries’ agitation for an extension of the deadline within which they must comply with TRIPS reminds me of the decision of Nigeria’s High Court affirmed by the Court of Appeal in CA/L/573/2008: Microsoft Corporation v Franike Associates Limited. In that case, Microsoft had sued Franike claiming, in the main, for an order restricting Franike from infringing Microsoft’s copyright in its software programs and products (“WINDOWS” especially). Franike provided no defence to Microsoft’s allegations. Rather, it challenged the jurisdiction of the Federal High Court to entertain Microsoft’s claims on the ground that Microsoft has not provided proof of reciprocal protection of copyright laws between Nigeria and United States of America. The Court of Appeal affirmed the ruling of the Federal High Court and agreed with Franike that the Federal High Court does not have jurisdiction to entertain suits relating to US copyrights in the absence of a certificate from the Nigerian Copyright Commission certifying that Nigeria and USA are co-signatories to an international agreement relating to copyright or a Gazette from the Minister in charge of copyright matters extending the provisions of the Copyright Act, 2004, to copyrights from the United States of America.

The Nigerian Copyright Commission was quick to the rescue and published a notice on its website stating that by virtue of the Schedule to the Copyright (Reciprocal Extension) Order of 1972, US works are protected under Nigeria’s Copyright Act. If the courts will not examine an alleged case of infringement of foreign copyright work unless a certificate showing reciprocity is produced, is an extension of compliance deadline any more favourable for other countries?

Hurray! LDCs offered 8 years TRIPS extension: Enough or not enough?

2013-06-17T07:30:00.000+02:00

This blog has followed the TRIPS extension debate and development this year here and here since over 70% (25 out of 34) of WTO member countries categorised as least-developed countries (LDCs) are in Africa. Today, this Leo learns from the WTO press release (dated 11 and 12 June 2013), that a decision has been reached on TRIPS extension for WTO LDC members.

The WTO Council for TRIPS have agreed to extend the transition period for LDCs to implement the TRIPS Agreement until 1st July 2021 - with an option to seek further extension beyond 2021 ('The 2013 transition period agreement') or until such a date on which they cease to be LDC, whichever date is earlier. Without this extension, LDCs would have been expected to provide for intellectual property rights protection stipulated under the TRIPS Agreement from 1st July 2013 pursuant to the initial extension in 2005.

This Leo highlights these key points although 2 and 3 are closely linked:

Patents for pharmaceuticals intact: The 2013 transition period extension agreement does not apply to the current expectation on LDCs to provide for patent protection for pharmaceutical products from 1st January 2016 ('The 2002 transition period agreement'). (Afro Leo notes that LDCs have the right, like they have successfully done this month, to seek for a further extension of the 2002 agreement)
Non roll-back provision: Unlike the stronger wording in the 2005 transition period extension agreement, LDCs have now only expressed a willingness not to reduce or do away with their current IPRs protection if they have already voluntarily implemented TRIPS. (Afro Leo thinks that most have voluntarily done so or probably coerced to do so by trading partners).
May continue to implement and/or apply TRIPS: LDCs may continue with their progress in TRIPS implementation and fully utilise its flexibilities such as introducing compulsory licensing to get around patent rights and this does not count as rollback. Developed countries are also expected to offer incentives to support LDCs' technological base.

Comment

Basically, the 2013 extension agreement does not entirely exempt LDCs from implementing and/or applying TRIPS. They are free to implement TRIPS if they wish to do so and as a gesture of goodwill, have expressed an intention to take necessary steps in readiness for the 2021 implementation deadline. In addition to this kindness, they have also agreed to act in good faith by not reducing or scrapping the protection they already provide for under TRIPS.

Obviously, this news will not be all that positive or encouraging for some while others may well think it is a fair compromise. (Whichever side you sit on, even WTO's news headline 'The least developed get eight years more leeway on protecting intellectual property' sounds as if the extension is somewhat not enough or fair, says chuckling Afro Leo).

Fikremarkos Merso argues, as reported by this blog here, that "...Extending the transition period under TRIPS is just one step. There is also a need to address the underlying issues beyond extension such as helping LDCs build their technological base and better integrating IP and development, rather than focusing on mere implementation and compliance. Comprehensive work is required to identify trends, gaps, successes and challenges facing African LDCs in this area. Finally, the issue of the LDC TRIPS extension should be considered in the context of LDCs that are in the process of WTO accession."

Considering that this Leo is not a development expert, he currently takes no firm view on whether an eight (8) year extension or an indefinite extension is the right or wrong solution. What he is eager to see is more transparent and useful IP technical assistance and capacity building initiatives which would enable both developing countries and LDCs develop sustainably and navigate TRIPS for their respective socio-economic development and needs. (Afro Leo finds it interesting that the enhanced technical cooperation provision has been dropped this time around. So back in 2005, developed countries were expected and eager to assist developing countries and LDCs in need of TRIPS implementation but this is now irrelevant or not needed in the 2013 extension agreement. How come and why? And, what about those LDCs who have been assisted to implement TRIPS considering that they agree not to reduce or scrap whatever IP regime they have put in place. Essentially, the lucky ones are those who have not put anything in place to begin with)

We welcome your general comments on WTO's decision, including on the following:

(a) Do you think 8 years is enough?

(b) Do you agree with Fikremarkos Merso's view?

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For a history on TRIPS and LDCs, see here
For global academics's expert support for unconditional extension of TRIPS, see here
For ICTSD's commentary on this, see here and for IP-Watch, see here

Afro-IP at IPKat's 10th anniversary: Thoughts and afterthoughts......

2013-06-17T07:00:00.000+02:00

Can you see this Leo on the left?

This Leo was glad to join the IP community to celebrate IPKat's 10th birthday party at Allen & Overy last Wednesday. The event was packed full of IP enthusiasts (practitioners, scholars and so on) from the UK and beyond with distinguished guests including notable members of the senior judiciary. The agenda focused on topical IP, and other related rights, issues in the digital age presented by the IPKat team.

He picked interest in some of the Eurocentric issues discussed or views shared at the event which, to his mind, serve as useful lessons when any other continental IP regime and/or institution is contemplated. These include complexities and questions surrounding whether important points of law or matters should be decided or handled by national courts or institutions or by a supranational entity and the impact of language and cultural differences.

One of the panellists on the panel discussion session was WIPO's Director General (WIPO DG), Francis Gurry. Fearing that Mr Gurry may escape soon after the event or engaged by others thereafter, this Leo jumped on the opportunity to put the following questions (as relevant to this blog, here and here) to him:

(1) What is WIPO's position on the establishment of PAIPO?

This Leo understands from the response that WIPO is playing a supporting role behind the scenes and that the main work of the new organisation would be policy-based. In his response, Mr Gurry also recognised and appreciated the role of OAPI and ARIPO but felt that more can and should be done if the continent is looked at as a whole.

(2) What are WIPO's priorities for developing countries - especially, in the African continent?

Mr Gurry started off with an upbeat message on the economic growth seen across the African continent. He then went on to tell the audience that WIPO continues to support African countries with IP technical assistance in areas that would stimulate their local economies such as in agriculture and technology (with a focus on access). This Leo also picked up from his initial response to Sir Richard David Arnold's question on the state of the global IP regime that WIPO's role, holistically, has significantly diminished due to, among others, bilateral arrangements. (Afro Leo wants to know whether this effectively means that WIPO has no influence across Africa)

Further conversation....

Luckily, Mr Gurry joined most of the Kats and other distinguished guests for a post-event dinner where this Leo furthered his conversation with him. This Leo was briefly told of the work and structure of the Africa Bureau and learned of, or perhaps confirmed, Tanzania's enthusiasm on the opportunities presented by IP regime as well as Kenya's rewards in the area of agriculture. Another point picked up from the chat between former Kat, Dr Nicola Searle (the Katonomist, as she then was) and Mr Gurry was that some countries are still in 'Transition' hence WIPO's dedicated support.

Further thoughts....
How Mr Gurry started his response to question 2 arouses one of those moments when this Leo often finds himself thinking deep about the correlation between economic development and IP (respect and enthusiasm about the latter). For example, China's WTO status depends on whose camp you are on but she surpassed the United States, a clear-cut developed country, in terms of IP fillings according to WIPO's report in 2012. Yet China is still perceived as lacking respect for IP. (Does it really mean anything tangible to have the most IP fillings in the world? As China becomes richer with increased admiration for quality, and more technologically advanced, would she end up becoming a staunch guardian and evangelist of IPRs like the U.S?) Finally, if this Leo had learned of the TRIPS deadline extension decision before now (see previous Afro-IP post here), he would have obtained the view of WIPO's DG as well.

Conclusion

Little Leo had a good time
Source: here

This Leo was enriched at the event. He even managed to utilise the networking opportunity to get the thoughts of some IP practitioners and that of an IP judge (whom he is fond of) on a selfish matter - though the latter's view was a reality check. Most importantly, he is very grateful for the invitation and warm hospitality shown by his Kat friends (especially, his mentor and friend the IPKat himself, the AmeriKat, former Katonomist and Dr Birgit Clark). My fellow Leos would be glad to know that this Leo had a good time ~~and felt like a Kat on the day.~~

Afro-IP wishes the IPKat blog many more anniversaries. Keep an eye on the IPKat blog for the informative but fun PowerPoint slides plus the recording from the IPKat's 10th birthday party.

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Before you import plants into Kenya read this here
For fair trade and flower farms in Kenya, see here
Is IP a power tool for economic development & wealth creation? see here
IP and access to clean energy technologies in developing countries, see here
For the African Court on Human and Peoples’ Rights, see here
Not everyone is a fan of the Unitary Patent system in Europe, see here

Anti-Counterfeit Friday - call for assistance

2013-06-14T09:02:00.000+02:00

tackling counterfeet is much easier

It might be fish on Friday, lunch on Friday, movies on Friday or perhaps even, if you are really lucky, sex on Friday, but for Afro-IP it has always been a more serious pastime - Anti-Counterfeit Friday - a series of posts highlighting the plight of Africa's single largest problem affecting IP- counterfeiting.

Today, on the back of what the World Customs Organisation and the Institute of Research against Counterfeit Medicines are claiming, in a press release, as an operation of "unequalled scale across 23 African countries" in which "more than 1 billion illicit products [were] seized in 10 days, of which 550 million were medicines", this blog is calling for information to be sent here to help resurrect the weekly post. If you would like to volunteer to help compile and publish the post, please also let us know.

Virtues of the registered Trade Mark

2013-06-14T06:34:00.001+02:00

As a post script to Mabel's post on Dean's inaugural lecture: Deprivation of Trade Marks through State Interference - plain packaging in South Africa, here are some reminders on the value of the trade mark that Afro Leo sent to the accounting folk at Accountancy SA, recently.

To many the registered trade mark is simply a document that records a business name at the local trade mark office. It's not compulsory to do and because it can take years to get registered, it is frequently dismissed as an irritation. So, it's relatively cheap, but why should we be paying close attention to the registered trade mark and those who administers them within a business?

Well, in short, it is the title deed (ie property) to a brand. The brand is, of course, everything that encapsulates and communicates a business, everything that keeps customers coming back. It may be a name, it could be a slogan, it could be colours, it could be three dimensional, it could even be a smell. All of these are capable of being registered as trade marks.

harping on, but still virtuous

So then, what's the fuss? Well, properly obtained, these title deeds can be listed in the asset register. They can be valued, used to raise finance and sold separately from the business. They can be let for cash or be allowed to sit passively, preventing others from communicating their offerings in a confusing manner. They protect the value generated by the brand. They protect market share both actively (in the hands of an attorney) and passively (just by sitting on the register).

But just like a Verimark ad - that's not all! The trade mark can be attached in legal proceedings or they can be used to transport goodwill into a diversified space that may just provide a hedge for a business, or enable it to grow.

They can be transferred to enable efficient tax planning or to reduce the exposure of assets to business risk and creditors. Brand protection using registered trade marks can be over 50% less costly than alternative methods such as passing off, and there is significantly less risk to the proceedings. Obtaining a registered trade mark reduces the risk of the dreaded urgent court order for a product withdrawal, considerably. In the growing social media space, the registered trade mark is frequently the only method of safely removing hijacked or rogue sites aimed at discrediting a business or someone holding a business to ransom for a fee.

Still not convinced?

Consider the recent ISO standard (ISO 10668) for brand valuation, which requires an audit of the legal protection of a brand as a fundamental step in the valuation of the brand. Skype's initial public offering (IPO) in 2010 disclosed an on going legal dispute with BSkyB as a material threat to its brand, which illustrates the correlation between proper trade mark management and the value of the business.

So, the next time a business finds itself assigning a junior administrator to look after a seemingly endless list of trade mark enquiries and small bills, or dismiss them as an irritant, please stop and reconsider. That person guards probably, the most important asset in the business

Open Educational Resources – a Nigerian perspective

2013-06-13T13:26:00.002+02:00

From IP commenttator Chijioke Ifeoma Okorie comes another guest post, this time addressing a sensitive cultural and commercial issue with strong copyright overones: the deployment of open educational resources. Writes Chijoke:

Intellectual Property Watchhas referred to the recent paper published by the International Publishers’ Association(IPA) which expressed concerns about the sustainability, quality and efficacy of Open Educational Resources(OERs). On sustainability, the IPA argues that there is no motivation to keep OERs updated because they are free to use and adapt. The IPA further contends that the quality assurance mechanisms, which are readily available to ensure that publisher-developed materials are thoroughly researched and designed, are not available for OERs. The IPA also takes the view that there is no reliable analysis which shows how much OERs have improved learning outcomes.

Many reactions have trailed the IPA’s position paper, from arguments that publisher-developed materials and OERs are not mutually exclusiveto arguments that publisher-developed materials are even more prone to errorgiven that the primary aim of publishers is to get books to the market as quick as possible.

While not denying the importance of sustainability and efficacy (quality is always very crucial) to any educational material, those are not in my view, the most important issues for Nigeria and I daresay, Africa.

What are important issues for Nigeria?

Access to affordable education: what is the age of recommended textbooks in Nigerian universities? I will provide an example. The recommended textbook for a third year law student taking Contract law in the university is the Second Edition of Professor Itse Sagay’s Nigerian Law of Contract, published around 1999, which costs about N2,000. Chitty’s Law of Contract used mainly by many established law firms costs about N125,000 (£495). Would students who have no choice but to read Sagay not be better educated if they had OERs to make up for any lapses in textbooks caused by changes in law? Court judgments can be made available for students to access on BAILII-likesites.

~~Eradicating~~(Reducing) piracy: quite frequently, the Nigerian Copyright Commission(NCC) impounds thousands of pirated copies of textbooks imported by book marketers to sell in Nigeria. If educators and students were to make (greater) use of OERs, wouldn’t that reduce the incentive to purchase (or sell) pirated copies of commercial textbooks?

Stage of development: the flexibilities of cost, freedom to distribute and adapt are more suited to Nigeria’s stage of development. If the main goal is to ensure access to education, then, OERs by virtue of the flexibilities mentioned above, would ensure just that and even more.In my view, OERs have not begun competing with publisher-developed materials in most of Africa. What should occupy our minds more than the IPA’s questions should be: how do we make OERs available and accessible to educators and students? How do we ascertain the quality of OERs available for use?

UNESCO raises other issues in its Report here.

In any event, the propriety or otherwise of how much OERs should be used would be better addressed by educators and also students, rather than the IPA which is an interested party.

For anti-IPA Position Paper, see here.

For the myth of commercial textbook reliability, see here.

Uganda’s Hip-Hop President wraps up rights in the Rap!

2013-06-13T05:35:00.001+02:00

Another very interesting and thought provoking post from Tony Kakooza (Sipi Law) in Uganda who has now joined Afro-IPs blogging team:

Deriving Copyright from Folklore: Uganda’s Hip-Hop President and the battle for cultural ownership.

The Office of the Registrar of Copyrights in Uganda has been handling a rather interesting case involving the President of Uganda in what can be seen as a battle over ownership of culture. The history of this dispute goes back to the Presidential campaigns in 2010:

In October 2010, the President employed the music production prowess of Kampala music artist Richard Kawesa to record a rap song within State House that was titled: Do you want another Rap? This was an innovative technique to especially capture the hearts of the young voters before the looming elections the following year. The rap song achieved its purpose, with President Museveni taking more than two-thirds of the electoral vote (approx. 68%) in February 2011.

Conversant of his Intellectual Property rights and the huge success that would follow the song (See YouTube video here), the President decided to register his copyright much to the chagrin of the Ankole community of which he is a part of. Two senior members of the Ankole Community, Mr. Mwambusya Ndebesa and Dr. Katono Nzarwa Deo filed an objection to the registration of copyright in the Registrar’s Office at the Uganda Registration and Services Bureau. The basis of their objection, briefly, was that the rap song is not original, having been derived from Ankole folklore which is in the public domain and constituting public property. The argument was that the poems from which the song derives, had been recited in the Ankole community for hundreds of years and thus the President had no right to grab ownership of the poems through his rap song.

This matter is highly intriguing for a number of reasons: The Uganda Copyright and Neighbouring Rights Act of 2006 has a flimsy provision for Traditional Cultural Expressions/Folklore. Section 5 simply lists Traditional Folklore as part of the works eligible for Copyright protection without any appreciation as to the underlying differences between Folklore and works of copyright. Secondly, as this matter raised alarming bells over the appropriation of culture, again we find ourselves asking – who owns cultureand who controls the means of production of culture such as through Cultural expressions? There have been on-going debates on related questions globally for over twenty years and WIPO is still tussling over the matter through the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore(IGC Committee) with little progress to date.

It is noteworthy that the very person appropriating cultural expressions in this matter was the President of Uganda, but would it have made any difference if it had been someone outside of the Ankole community? Eventually, in her ruling on the objection to Copyright registration (delivered February 14, 2013), the Assistant Registrar of Copyright, Ms. Mercy K. Kainobwisho granted the President’s registration of copyright as a derivative work.

Comment:
Afro Leo wonders how the two draft pieces of TK legislation competing for Zuma's pen in RSA would handle this situation? Would the community (assuming it could be identified) be able to enforce their rights (assuming they could be identified) under each piece of legislation and how would it work? And could it be recorded? It is interesting that President Museveni opted to have the work registered in his own name.
If you are viewing this on the blog (and not via email) you can listen to the Rap (presumably under licence or an infringement exception!) below:

Explained: South Africa's National Recordal System for Indigenous Knowledge

2013-06-12T08:00:00.000+02:00

Last month, fellow blogger, Caroline Ncube, brought us the news that South Africa has launched a National Recordal System (NRS) for indigenous knowledge (IK). In her piece, Caroline raised some questions in search of thoughts or responses from readers on this development. Thankfully, a friend and ardent reader of Afro-IP, Tom Suchanandan (who is also perfectly placed to respond) has come to the rescue with comprehensive answers to Caroline's questions. Tom writes accordingly:

1. Will the NRS be used by the Companies and Intellectual Property Commission to verify or confirm disclosures made under s30(3A) of the Patents Act?

The NRS has been designed as an [potential] interdepartmental instrument that will facilitate research and development, prior art for intellectual property administration, and management and examination of bioprospecting information on genetic resources associated with indigenous knowledge and communities. The NRS provides for indigenous knowledge that are associated with biological resources and the documented data is linked to a person, a community, a geographical area, biological resources. The latter is supported by multi-media which is also geocoded to a specific area.

In terms of the Companies and Intellectual Property Commission (CIPC) under the Department of Trade and Industry, CIPC can utilise the NRS for prior art searches as part of its a search and examination service, making the NRS critical element in preventing the granting of patents in error and also biopiracy. In doing so, the NRS adheres to a strict set of rules in terms of granting access to the system. Firstly, all information that is documented on the NRS, must be accompanied by a prior informed consent agreements, information transfer agreements, and a Memorandum of Agreement that is signed between each community participating in the project and the Documentation Centre which facilitates the recording of IK with the communities.

The NRS [can] also serve as an indigenous knowledge hub for a number of government departments including the Departments of Environmental Affairs, Trade and Industry, Health, Agriculture, Forestry and Fisheries, and Rural Development and Land Reform. For the Department of Environmental Affairs, it will create legal certainty because the NRS will provide a legal benefit-sharing framework, ensure that minimum standards in Information and Material Transfer Agreements in respect of IK research are available, and assist in the identification and location of knowledge holders in the bioprospecting permits granting process. The legal framework provided by the NRS makes it a suitable repository for the information they have been collecting.

2. How , if at all, does the NRS fit into the IP protection of TK scheme provided for in the IP Laws Amendment Bill No.8 of 2010? In particular how will it interface with the proposed National Database of IP protected TK?

The National Recordal System has been developed in phases with the first phase focusing on African Traditional Medicine (ATM) and Indigenous Foods (IF) for implementation because these two domains are most at risk in terms of Intellectual Property exploitation and bio-piracy. Mitigating this risk required careful design of the system, particularly in terms of security and the management of the data. Care was taken to design the National IKS Management System (NIKMAS) such that it will support, on a national scale, the recordal, management and protection of Indigenous Knowledge with potential benefits, especially in the absence of relevant legislation (i.e. Sui Generis on IKS). The importance of securing confidential and secret information against unauthorised exploitation was also a major design consideration.

In doing the latter, the IP Laws Amendment Bill No 8 of 2010, are but one of the legislations that was considered in designing the system. Because of the holistic nature of IK, the NRS acknowledges the limitation s of Intellectual Property regimes, and considers the current copyrights, trademarks, buiodiversity and related legislation. The NRS therefore complement the Bill. For instance, the Bill focuses on IK that resides in the public domain whereas the NRS focuses on unrecorded or uncaptured IK, i.e. IK not in the public domain. The NRS has been designed to incorporate –and or link to similar databases in order to optimise its use and functionality. NIKMAS which is the ICT backbone of the NRS will therefore provide a single access point to IK captured at distributed points and will contain links to other resources and databases containing relevant IK information managed in various institutions or government departments.

3. Will the NRS be shared with foreign patent offices to prevent misappropriation of South Africa's TK? India's Traditional Knowledge Digital Library (TKDL), upon which the NRS appears to be loosely modelled, is shared with the EPO. This has reportedly resulted in the rejection of some patent applications (per WIPO Magazine ).

Yes, the NRS has been designed to give access to International Patent Offices to conduct searches on IK that has been documented in the system in order to prevent misappropriation of South Africa’s IK. This is based on the requirements for allowing patent offices to search the NIKMAS, and developed specifications of patent offices to search the NIKMAS. For searches and examinations, approved scientists, researchers and Intellectual Property Offices are allowed limited authenticated access to confidential IK information as determined by adherence to the legal framework requirements.

4. Will the NRS be accessible to the public?

Yes, the NRS will be accessible to the public. There are 3 levels of access:

(a) Open access: Community promotional information as well as recorded knowledge that is already in the public domain.

(b) Restricted access: Authorised access to limited detail on recorded IK that is classified as confidential.

The NRS initiative IP objective is to prevent placing undisclosed IK into the public domain. The levels of access is therefore determined by a strict set of rules for example:

(i) . A member of the public can gain open access to information that is in the public domain for the purposes of education, tourism or awareness. Open and confidential information is preserved, but is made available to holders of indigenous knowledge and communities who will always have unlimited access to their own knowledge.

(ii) . For searches and examinations, approved scientists, researchers and Intellectual Property Offices are allowed limited authenticated access to confidential IK information as determined by adherence to the legal framework requirements.

(iii) . For development purposes, authenticated and approved scientists and researchers are given full confidential access to a single IK story on condition that all relevant legal agreements are signed, including a benefit sharing agreement.

Comment

Afro-IP is extremely grateful to Tom for taking his time to enlighten us all. This is sort of reader participation Afro Leo loves to witness. With the recent spike in activity on this weblog, one wonders where the next reader response to pressing and topical matters raised on Afro-IP would come from. We shall see.

Deprivation of Trade Marks through State Interference - plain packaging in South Africa

2013-06-12T06:22:00.000+02:00

We are very grateful to publish a guest post from Adv Mabel Jansen (Senior Counsel) on the inaugural lecture of Dr Dean in his capacity as the Anton Mostert Chair of Intellectual Property.

Dean tackles a controversial and topical issue around plain packaging for tobacco products making a case that any related legislation affecting trade marks in South Africa could be unconstitutional. The lecture is neatly summarised by Mabel below:

Dean

"With effect from 2011, Dr Owen Dean, author of the well known textbook Handbook of South African Copyright Law, was appointed as a professor at the Faculty of Law at Stellenbosch University, where he is the incumbent of the Anton Mostert Chair of Intellectual Property. Dr Dean delivered his inaugural lecture as Chair on 21 May 2013 in the Conservatory at Stellenbosch. (Afro Leo says check here for background.)

The topic of his lecture was “Deprivation of Trade Marks through State Interference”. The focus of his lecture was the global war being waged against the use of tobacco products. The formal declaration of this war was issued by the World Health Organisation (WHO) in the WHO Framework Convention on Tobacco Control which was signed by 169 countries.

He pointed out that the objective of the Convention is far removed from trade marks. It provides in article 11 for member countries to adopt effective measures to ensure that tobacco packaging and labelling do not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics, health effects, hazards, or emissions. Furthermore, any outside packaging should carry health warnings that should carry health warnings that should cover 50% or more of the principal display area. The Convention further makes provisions for Guidelines to be issued in terms of which:

“Parties should consider adopting measures to restrict or prohibit the use of logos, colours, brand images or promotional information on packaging other than brand names and product names displayed in the standard colour and font style (plain packaging).”

The motivation for these Guidelines is that plain packaging may increase the noticeability and effectiveness of health warnings and messages.

Dr Dean emphasized that this stipulation is not peremptory and that it is open to member countries not to implement it. Furthermore, he contended that the Guidelines have given rise to a faulty premise that legislation should be adopted allowing only brand names or product names, depicted in a plain manner, to be displayed on the packaging of tobacco products. Australia has followed this route and has adopted the Tobacco Plain Packaging Act 2011 (the TPP Act). Dr Dean pointed out that other countries are following suit and that Namibia and New Zealand, for example, are working on legislation to restrict the use of trade marks on the packaging of tobacco products.

Dr Dean discussed the 2011 Australian case JT International SA and British American Tobacco Australasia Services Limited and others (WHO http://www.who.int) where it was held that the TPP Act was not unconstitutional because although the plaintiff had been deprived of its property, namely its trade marks and the get-up of its tobacco products, no acquisitionof property by the state had taken place as envisage by the Australian Constitution.

Dr Dean pointed out that in the South African context; Health Minister Aaron Motsoaledi has expressed his enthusiasm to adopt plain packaging legislation in South Africa. Fortunately the South African Constitution in section 25 enshrines the right not to be deprived of property and includes, in section 25(1) thereof, an internal limitation to the effect that “... no law may permit arbitrary deprivation of property”. Section 25(2) somewhat complicates the issue in providing that property may be expropriated in terms of law of general application for a public purpose or in the public interest.

Dr Dean referred to the Constitutional case of First National Bank of SA Limitedt/a Wesbank v Commissioner for the South African Revenue Service; FirstNational Bank of SA Limited t/a Wesbank v Minister of Finance 2002 (4) SA768 (CC) which held that deprivation of property is a genus of which expropriation is a species, and that deprivationof property is arbitrary when there is insufficient reason for such deprivation or in circumstances where it is procedurally unfair.

Dr Dean stated that it was unnecessary to rely on the further general limitation on deprivation of property contained in section 36 of the Constitution, namely the proportionality test, for the simple reason that a deprivation of property, if arbitrary, by necessity is also unjustifiable and irrational – an opinion also held by the authors De Waal, Currie and Erasmus in The Bill of Rights Handbook 3rd edition (2011) note 2 at 20.

Dr Dean espoused the doctrine of “constructive expropriation” which holds that one should not have regard to whether legislation is meant to expropriate property, but rather whether it factually results in expropriation. He concluded that any plain packaging legislation along the lines of the TPP Act will amount to an infringement of sections 25(1) and 25(2) of the Constitution.

Dr Dean analysed the essential nature and character of trade marks, which is to denote source and stated that, in addition to a legal dimension, a trade mark also enjoys a commercial dimension which is termed “brand equity”, and which refers both to the trade mark and its commercial impact. He emphasised how valuable trade marks are and referred, by way of example, to the trade mark GOOGLE which represents 27% of the company’s overall value.

Given the fact that the aim of plain packaging legislation is to discourage the use of tobacco products , Dr Dean stated that it defies comprehension how destroying an item of property, namely a trade mark, could be brought into relation with the discouraging of smoking. A trade mark is an instrument for creating clarity in regulating the consumer’s ability to choose between competing products. He stated that it is a non sequitur to suggest that if the ability of the consumer to distinguish between producer A and producer B is diminished or taken away, it will have the effect of discouraging or inhibiting smoking. Hence Dr Dean opined that plain packaging legislation will infringe section 25(1) of the Constitution. If such legislation were to be held to be in the public interest, in terms of section 25(2) of the Constitution, appropriate compensation would be payable – which could amount to a substantial sum of money.

Dr Dean, during the course of his lecture, also analysed concepts such as whether trade marks are “property” for purposes of section 25 of the Constitution, the meaning of the phrase “law of general application” as set out in section 25(1), the effect of non-use of trade marks, different types of trade marks and the value of trade marks.

His lecture was well received by an enthusiastic audience which consisted of members of law faculties, legal practitioners and corporate and other bodies interested in plain packaging legislation for tobacco products. It was followed by a well organized and well attended cocktail function. We were all ad idem that we had gained valuable insight into the imminent plain packaging legislation and it’s potentially far reaching ramifications."

Mabel is a busy and respected senior practitioner in South Africa and this contribution is appreciated.

Look out for a post on the Virtues of a Trade Mark which will be published soon.

ICTSD Policy Brief on LDCs in search of a reviewer

2013-06-11T23:12:00.000+02:00

IP Trends in African LDCs and the LDC TRIPS Transition Extension, by Fikremarkos Merso, is ICTSD Policy Brief No.16. According to the media release accompanying it:

"This Policy Brief by Fikremarkos Merso (Addis Ababa University School of Law) provides an overview of the intellectual property landscape in African LDCs, in the context of the current LDC TRIPS extension debate. The brief shows that African LDCs are at different stages with regard to TRIPS implementation and they continue to face immense challenges towards building their technological base, thus their need for continuous flexibility and policy space. At the same time, the key issue is not whether African LDCs need extended flexibility - which appears to be obvious under current circumstances - but rather how to make better use of existing flexibilities in relation to IP protection and enforcement.

Extending the transition period under TRIPS is just one step. There is also a need to address the underlying issues beyond extension such as helping LDCs build their technological base and better integrating IP and development, rather than focusing on mere implementation and compliance. Comprehensive work is required to identify trends, gaps, successes and challenges facing African LDCs in this area. Finally, the issue of the LDC TRIPS extension should be considered in the context of LDCs that are in the process of WTO accession.

The policy brief is available here".

Afro-IP welcomes offers to review this Policy Brief.

An Association of Kenyan IP Professionals?

2013-06-10T08:45:00.000+02:00

On Saturday the latest meeting of IP CheckIn was held at CIPIT. IP CheckIn (on Twitter @IPCheckin) is a loose affiliation of Kenyans interested in discussing IP issues, and we gather once per month to discuss current and interesting topics in IP. Usually attended mostly by lawyers, we are always very happy when non-lawyers (typically musicians, inventors, or business people) are present to provide a different viewpoint.

Declaration of Independence, John Trumbull 1819

First, I am always amazed and impressed that (on average) 20+ people are willing to spend 2-4 hours of their Saturday voluntarily gathering to discuss IP. The tea and mandazi (doughnuts) cannot possibly explain this; there is a passion/curiosity about IP among attendees that is contagious.

The primary topic this month was the creation of an Association of Kenyan IP professionals. Specifically, we discussed several questions:

- What should be the goals of such an association?

- Who should be allowed to join?

- What should we call it, and what structure should it have?

What ensued was an engaging and sometimes passionate debate about the state of IP in Kenya, the needs of Kenyan creators and businesses, and how/whether an Association can serve those needs.

There seemed to be consensus that an Association (although I am calling it an “Association” there was debate over whether to make it a Company or a Society, and the conclusion was to form a Company Limited by Guarantee) was a good idea and would provide benefit. An inventor (“layman” by his own words) was present and recounted his experience with IP in Kenya. He was quite happy and excited to learn of the potential formation of an Association.

The most contentious aspect seemed to be over membership issues, i.e. whether to open the Association to anybody with an interest in IP, or whether to restrict to IP Practitioners (with an accompanying debate over what exactly is an IP Practitioner). There was consensus that the Association should have a way of telling the general public that certain individuals are qualified to give advice on IP issues. The idea for a tiered membership was well liked. Anybody can join the Association as a general member, but certain individuals (lawyers, academics, and others with specialized training) will achieve exceptional status and be “certified” as qualified IP Practitioners.

The Association is well underway in conception, and hopefully at the IP Checkin next month we will be able to finalize a Constitution. Comments or suggestions on this will be greatly appreciated and can be sent to CIPIT or posted here.

A review of African official IP websites: no.49: Tanzania

2013-06-10T08:00:00.000+02:00

Today we review Tanzania, the home of Mount Kilimanjaro. Last year, this blog was impressed to find that both the copyright and intellectual property (IP) offices have websites of their own. This is still the same on review. Readers may remember (here and here) that, a few months ago, Tanzania hosted a series of important meetings on the role of IP policies in fostering innovation, science and technology in Africa. Since Tanzania is rallying others in Africa to embrace IP, it may well also join a few by upgrading its IP office's website to one with a searchable database.

IP news across the continent

Protecting agricultural products using geographical indications (GI) can benefit women and the rural population across developing countries (especially in Africa) is the message from the conference reported here by IP-Watch. Readers may also remember that a memorandum of understanding on GIs co-operation between the European Commission and ARIPO was signed last year. In that post, this blog raised the concern that Europe already has a large stockpile of GIs which need global protection while African countries have relatively few.

Update on TRIPs Extension Battle

2013-06-10T01:58:00.000+02:00

Background: For those who haven’t been following the story, there is currently a proposal on the table to the TRIPs Council requesting a that LDC’s be permanently exempted from complying with certain provisions of TRIPs until those countries are no longer designated as Least-Developed Countries. For more information see this post.

Afro Leo recently learned that the East African Legislative Assembly, of the East African Community, has issued a resolution expressing it’s support for the permanent transition period. The Legislative Assembly sites the East African Treaty’s agreement to promote the quality of health in the EAC. Specifically, Article 118 (e) agrees to harmonize national health policies. Since four of the five EAC member countries are currently LDCs, the Legislative Assembly has a strong interest in supporting a position deemed critical to most of its members.

The Legislative Assembly also cites to the TRIPs agreement itself, pointing out the acknowledged importance of technical innovation and the agreement to allow members to enact measures for the purpose of protecting public health. The Legislative Assembly is concerned that if the extension expires, LDCs will lose their ability to access technologies, educational resources and other development tools.

The final provision of the resolution chastises the United States and European Union for attempting to limit the LDC flexibilities built into TRIPs. What kind of effect will this resolution have on the TRIPS Council decision? Guess we’ll have to wait and see.

Full resolution available in pdf here.

Does your Ethiopian trade mark application need re-registering?

2013-06-09T16:44:00.001+02:00

The Ethiopian Registry Office has apparently announced that trade mark applications filed before 7 July 2006 should be “re-registered” under the new law if they are to be effective in Ethiopia. The deadline to complete this process is coming up in just over a year's time on 18 June 2014.

Ethiopia's new regulations were published in Ethiopia on 24 December 2012, bringing into force the Trade Mark Registration and Protection Proclamation 2006. The changes include the following:

- Cancellation and invalidation procedures will apply and the renewal period will be extended from 6 to 7 years.

- Priority can be claimed, based on an earlier application in a foreign country.

- Publication and opposition procedures will be introduced.

- International classification of goods and services will be followed.

Trade mark applications filed after 7 July 2006 but before 24 December 2012 will be subject to amendment, extending their term from six years to seven. As for the new trade mark applications, a power of attorney should be legalised by an Ethiopian Consul, as well as a Certificate of Incorporation with verified English translation.

Soucre: Newsletter of the Abu Ghazaleh Intellectual Property Group (AGIP).

Meaning of “genuine use” of a trade mark is the same in Europe as is in Nigeria

2013-06-06T22:45:00.003+02:00

Here's another guest post by Chijoke Ifeoma Okorie, whose previous blog post attracted a record ten comments from readers (so far). This is a reminder that readers' comments, and indeed any form of participation, is hugely welcome on this weblog. Anyway, Chijoke writes as follows:

In its decision of 24 January, 2012, Appeal No. CA/L/369/2008: The Procter and Gamble Company v. Global Soap and Detergent Industries Limited and the Registrar of Trade Marks here, Nigeria’s Court of Appeal accepted the definition of “genuine use” of a trade mark proffered in the European Court of Justice decision in Ansul BV v. Ajax Brandbeveiliging BV (C-40/01) (2003) RPC 40 and held that Procter and Gamble has by advertisements in international media, registration of the Ariel detergent with the National Agency for Food and Drug Administration (NAFDAC), etc. made bona fide use of its trade mark in Nigeria.

The Procter and Gamble Company sued Global Soap and the Registrar of Trade Marks seeking several declaratory reliefs to the effect that as the registered proprietor since 3 December, 1969 of the trade mark “ARIEL” in respect of goods/products in Class 3 (detergents, bleaching preparations and other substances for laundry use) and also being

the proprietor of over 600 identical trade marks, some with additional suffixes spanning over 160 countries, it is entitled to the exclusive use of the ARIEL trade mark in relation to goods of that class and that the Registrar of trade marks should be compelled to rectify the Register of trade marks by expunging the trade mark “ARIEL AUTOMATIC” and atomium device owned by Global Soap. Global Soap’s trade mark was alleged to be a deceitful duplication of the ARIEL trade mark and likely to cause confusion.

Global Soap counterclaimed contending that prior to obtaining registration of its “ARIEL AUTOMATIC” trade mark, it searched the Register of trade marks and did not see the Procter and Gamble ARIEL nor was there any opposition to its registration of ARIEL AUTOMATIC when same was published in the Trade Marks Journal. Global Soap sought an order of court rectifying the Trademarks Register by expunging the ARIEL trade mark from it on the grounds that the ARIEL trade mark has been wrongfully remaining in the Regsiter.

The court of first instance (Federal High Court) dismissed the appellant’s case and entered judgment in favour of the first respondent making an order expunging the trade mark ARIEL from the Register of trade marks. On appeal, the Court of Appeal overturned the decision of the High Court and reversed the expunging of the ARIEL trade mark from the Register of trade marks. The Court also expunged the ARIEL AUTOMATIC trade mark owned by Global Soap, from the Register holding that the its use of the word ARIEL (suffix or different packaging notwithstanding), is a “recipe to create confusion in the mind of the average consumer”.

There are several important aspects of this decision:
 The Court of Appeal distinguished between the components and consequences of “non-registrability” of a mark (covered by Section 9 of the Trade Marks Act) and non-use of a mark (covered by Section 31 of the Act).

 To establish non-use, an applicant must prove a lack of “bona fide use” of the trade mark in Nigeria and courts must interpret “bona fide use”, liberally. Bona fide use of a mark in Nigeria will include international publications of advertisements in foreign media insofar as an impression is made to the Nigerian public that a product with this reputation exists and is available for purchase in Nigeria. The lower court had held that advertisements must be directed and issued to the Nigerian public in order to qualify as advertisement.

 By Section 31(2)(a) of the Act, two ingredients must co-exist in order to conclude that a registered mark has not been used: absence of bona fide intention to use the mark at the time of registration and ;absence of bona fide intention to use the mark up to one month before the application to remove the mark is made. The only other available ground upon which a mark may be expunged from the Register for non-use is where the mark has not been used in the 5 years preceding 1 month from the date of application to expunge.

 A mark that qualifies for expunction for non-use cannot become generic. A valid trademark can only become generic if the public misuses the mark sufficiently for the mark to become the generic name for the product (in this case, ARIEL would have to become the name of every detergent).

 Global Soap argued that if there has been use of the ARIEL mark, such use was by The Procter and Gamble Company and not the registered proprietor in Nigeria – Procter and Gamble Nigeria Limited. The Court of Appeal disagreed taking the view that use of a mark by the Nigerian subsidiary of a foreign company suffices as use by the foreign company.

 Even without executive or legislative ratification of TRIPS, Nigerian courts will protect well known marks.

 By virtue of section 9 of the Trade Marks Act, whether a trade mark is invented by its proprietor or not is not of complete importance to the issue of whether such mark is valid. A mark may be invented, be the name of a company or individual represented in a special manner, be a signature of its proprietor etc insofar as such mark is distinctive.
Whilst one appreciates this decision, this writer cannot help but think that this suit ought not to have seen the light of the day if the Trade Mark Registry kept proper record of registered marks. How on earth could Global Soap be able to find any mark with ARIEL available in the same Class 3? It is just as well that the Registrar of Trademarks was absent and unrepresented at the proceedings otherwise it would have been a “show of shame”.

Further, Procter and Gamble would not have wasted time with this case (spanning 14 years from 1998) or expended funds in attorney’s fees (SANs are not cheap!) if it had been diligent in searching the Trade Marks Journal. In any event, one of the delights of court decisions is that everyone gets to learn something.

RSA: another passing off decision: Distell Ltd v KZN Wines and Spirits CC

2013-06-06T13:06:00.000+02:00

The Durban High Court handed down its decision in Distell Ltd v KZN Wines and

Spirits CC (10006/2011) [2013] ZAKZDHC 25 on 23 May 2013.

Distell is the holder of the KNIGHT’S GOLD and KNIGHTS marks registered in class 33 which covers alcoholic beverages, including whiskey. The first trademark consists only of words and the second is a label device which incorporates the word 'knight' and some decorative features. Distell uses these trademarks in relation to whiskey which it manufactures and distributes in South Africa. This whiskey is sold in a rectangular 750 ml clear bottle with a rectangular front label front label with white and gold text designs against a black background (at para 6 and depicted here).

KZN Wines and Spirits imports and sells BLACK KNIGHT Blended Scotch Whisky. This product was described by the court as being sold in a round 1 litre green bottle with a wrap-around front label with black and red text and a black image on a white background (at para 6).

Distell sued KZN Wines and Spirits claiming that
1) the BLACK KNIGHT mark is so similar to its KNIGHT’S GOLD and KNIGHTS Label trademarks that it constitutes trademark infringement and
2) the use of the BLACK KNIGHT mark is so confusingly similar to its KNIGHTS trade mark in respect of which Distell averred it has substantive reputation and goodwill .

In relation to the trademark infringement claim the court dealt with visual, aural and conceptual similarity in turn. It held "As far as the visual similarity is concerned, I am satisfied that the comparison of the marks as a whole reveal that these marks are visually so different that confusion or deception is impossible" (at para 14). With regard to possible aural and conceptual similarity the court held that "it is unlikely that the notional purchaser of the applicant’s whisky, even with an imperfect recollection or perception, when confronted with BLACK KNIGHT, would focus attention only on the word KNIGHT and ignore the word BLACK. To my mind, the whole mark BLACK KNIGHT serves to distinguish the respondent’s whisky from that of the applicant" (at para 21). The court noted that whiskey drinkers are discerning and due to its costs are likely to "exercise circumspection and a greater degree of care in making a purchase" (at para 20).

With regard to the passing off claim the court reiterated the onus upon Distell in the following terms: "Passing off occurs when one trader represents to the public that his goods or merchandise are of another trader...The applicant must allege and prove the requisite reputation, misrepresentation and damage. The reputation must be in existence at the time the offending party entered the market and it must exist when the misrepresentation is committed." (at para 23). The court noted that establishing "reasonable likelihood of confusion or deception is a question of fact to be determined in the light of the particular circumstances of the case" (para 24). Assessing these circumstances, the court found that a comparison of Distell and KZN Wines and Spirits' get-ups made it "perfectly clear" that Black Knights Blended Scotch Whiskey was different from Knights whiskey and that there was no association in the course of trade between the two parties to the litigation (at para 33). The court laid great store on the fact that the two products had been on the market alongside each other for 11 years and there had been no instances of actual confusion (at para 33).

The court did not refer to the recent Supreme Court of Appeal (SCA) decision in the Swartkops and Cerebos matter but took a similar approach to the SCA which focuses on a first and general impression created in a consumer's mind rather than a detailed comparison of the get ups in issue.

TRIPS Extension: Press Conference in Uganda Tomorrow

2013-06-04T20:17:00.001+02:00

For those following the TRIPS extension request issue, there is going to be a press conference tomorrow to discuss the request made by Haiti and the current concerns and expectations with respect to the TRIPS Council’s upcoming decision on the request. For more information on the TRIPS extension, see this previous Afro-IP post.

What: Press Conference on TRIPS Extension
Date: Tomorrow, 5 June
Time: 10:30am
Location: CEHURD Offices located on Plot 614 Tufnell Drive Kamwokya

If any of Afro-IP’s readers in Uganda are able to attend, we’d love to hear about the discussions.

RSA's TM Registry - shackled

2013-06-04T11:26:00.000+02:00

With assistance from the excellent Katherine Harding, Afro Leo embarked on an exercise to analyse trade mark decisions of the South African Registry over the last two years with a view to determining how the tests are being applied by the Registry, trends and other useful information that can be gleaned from such an endeavour. The piece has kindly been published by peer reviewed Oxford University Press: Journal of Intellectual Property Law & Practice (edited by Jeremy) and can be located here (HTML) and here (PDF).

And I must catch a mouse?!

The RSA Registry is in a difficult place. They are succeeding at increasing examination rates, making decisions accessible, becoming more service orientated etc but there are structural problems beyond their control.

At the beginning of this year, 92 cases were ready for a decision. The Registry has one (sometimes two) hearing officers to deal with this task. Oppositions and cancellations are both procedurally and substantively complicated (unduly so from my point of view - see here and here) meaning that the Registry needs experienced officers/judges to step into the breach. As a result, the Registry has sought assistance from the High Court but apparently to no avail, as they too are over burdened. At the rate of decision making it will take until 2018 just to clear the back log.

Can anyone help?

The U.S. is watching you....

2013-06-03T05:52:00.000+02:00

Source: here. No, he doesn't offer
an IP watching service

When we hear that the government (or big brother) is watching us or plans to do so, it tends to generate some sense of unease. Most may find it irrelevant or not too concerned on the grounds that they have nothing to hide; while others value privacy and liberty regardless of their innocence. This Leo is thinking: can you bring about behavioural change by monitoring others? The U.S. thinks so with the Special 301 Report.

The Special 301 Report is an annual report prepared by the Office of the United States Trade Representative (USTR) pursuant to section 182 of the Trade Act of 1974. For sake of brevity, this section authorises the US government to monitor the intellectual property (IP) regime of its trading partners and identify those whose policies or practices (or lack of) adversely affect U.S. IPRs owners. Section 301 of the Trade Act allows for an investigation and subsequent action to be taken against those countries designated as Priority Foreign Country (PFC).

There are three main categories of awards dished out by the USTR in the Special 301 Report:

(1) Priority Foreign Country (PFC): "...The PFC designation is reserved by statute for countries with the most egregious IPR-related acts, policies and practices with the greatest adverse impact on relevant U.S. products, and that are not entering into good faith negotiations or making significant progress in negotiations to provide adequate and effective IPR protection." (Afro Leo calls this "the first class honours" as it is statutory)

(2) Priority Watch List (PWL): "....Placement of a trading partner on the Priority Watch List or Watch List indicates that particular problems exist in that country with respect to IPR protection, enforcement, or market access for persons relying on IPR. Countries placed on the Priority Watch List are the focus of increased bilateral attention concerning the problem areas." (The second class honours)

(3) Watch List (WL): Same description as PWL except on a lesser scale. (The third class honours)

Did any African country make it into the 2013 Special 301 Report awards list?

Yes, two of them. First is Algeria who took home the second class honours award. According to the Report, "Algeria remains on the Priority Watch List in 2013. The United States continues to urge Algeria to address the ban on an increasing number of imported pharmaceutical products and medical devices in favor of local products..." (see page 30) (Afro Leo wants the USTR to note that Algeria has been commended on our own A-Z IP office website Review as exemplary)

The second is Egypt who took home the third class honours award. According to the Report, "Egypt remains on the Watch List in 2013. IPR challenges for Egypt include the failure to issue deterrent-level sentences for IPR violations when offenders are convicted and the need for additional training for enforcement officials...." (Again, Afro Leo reminds the USTR that, similar to Algeria above, Egypt has been exemplary in our A-Z Review)

Other findings

The Report did not note any worthy or positive IP development in any African country (see pages 9 - 11) but it affirms the U.S' support for developing and least-developing countries to utilise the flexibilities within TRIPS (see pages 22 - 23). For individual reports on the 41 listed countries, see pages 28 - 56. Finally, it seems the USTR mainly focused on trade mark and copyright issues.

Conclusion

This annual ritual in form of the Special 301 Report reminds this Leo that IP is imperative, special and more valuable to one country (or a few) than others. In general, the Report and its ramifications serve as one of those tools used by the U.S. to put pressure on its trading partners to provide for adequate IPRs protection and enforcement (or what most, rightly, view as TRIPS-plus regime). Some argue that the ramifications of the PFC designation violates international trade rules.

In 2001, Ukraine was listed as a PFC; but after negotiations and "doing as instructed", this status, including accompanying sanctions, was lifted in 2005. Seven years later, Ukraine has once again picked up the first class honours and investigation has now begun in accordance with 19 U.S.C. § 2242(b)(1)(C). Well, it seems watching or monitoring only brings about an interim change. (Afro Leo is not too concerned since just 2 African countries made this year's U.S. naughty IP awards list. Perhaps, it demonstrates that African countries are not really the target - yet).

So this Leo says to Algeria and Egypt: the U.S. is watching you.

-----------------------------------------------------
For executive summary of the Report, see here and an analysis here
The EU thought the Special 301 Report was unfair, see here
The IPKat looks at Ukraine's re-emergence as a PFC, see here
Controversy surrounds data centre in the US, see here
"Surveillance can be a tricky affair in the Internet age", see here

A review of African official IP websites: no.47 & 48: Sudan & Swaziland

2013-06-03T00:03:00.003+02:00

Last year, this Leo was pleased to see a website for the intellectual property office in Sudan. On review, the website is nowhere to be found online. A country which initially impressed us now disappoints. Over to Swaziland. Like we saw last year, the ARIPO Member State is yet to establish a website for its IP office.

This Leo is still hopeful that, one day, both Sudan and Swaziland would each maintain a website for their respective IP offices.

Ugandans Fight for More Time

2013-05-31T10:31:00.000+02:00

Several organizations in Uganda have joined with Haiti in pressuring the WTO to extend the deadline for Least Developed Countries (LDCs) to comply with TRIPs. The desired extension time: indefinitely.

Haiti submitted the Request for an Extension of the Transitional Period Under Article 66.1 of the TRIPS Agreement on behalf the WTO LDC Group in November of last year. According to news(1) reports(2), several Developed Countries are pressuring the TRIPS Council to deny or limit Haiti’s request. TRIPS-structured talks between LDCs and Developed Countries have put on the table a limited extension of 5 to 7.5 years and a “no rollback” provision that would prevent LDCs from removing TRIPS compliant provisions from their laws.

Ugandan organizations* are working to build pressure in the opposite direction. The organizations have submitted a letter to the WTO Council Chair in support of Haiti’s request. They have petitioned the East African Legislative Assembly to apply pressure in support of the request. They have also written to several developed country-Ambassadors to Uganda, outlining the consequences for Uganda of not receiving an extension or introducing the suggested no-rollback provision. A media campaign is underway to inform people of the LDCs’ concerns. Organization representatives quoted in The Observer stressed the importance of ensuring Ugandans’ access to HIV medications and the country’s need to develop a competitive technological base, sentiments that echo Haiti’s concerns.

Article 66.1 of TRIPS states:

In view of the special needs and requirements of least-developed country Members, their economic, financial and administrative constraints, and their need for flexibility to create a viable technological base, such Members shall not be required to apply the provisions of this Agreement, other than Articles 3, 4 and 5, for a period of 10 years from the date of application as defined under paragraph 1 of Article 65. The Council for TRIPS shall, upon duly motivated request by a least-developed country Member, accord extensions of this period. (emphasis added.)

The TRIPS agreement was signed in 1994. Everyone was granted an initial grace period of one year and LDCs were granted an additional 10 years. The LDC exemptions were set to expire at the end of 2005. Zambia made a request in 2005 for an extension as outlined in Article 66.1 on behalf of the LDC members. The TRIPS Council granted that extension, moving the compliance deadline to 1 July 2013.

Haiti’s request differs substantially from Zambia’s request in that it asks for LDCs to be exempt from full compliance as long as they remain LDCs. While the TRIPS provision mentions “10 years,” for the original exemption time period, it mentions nothing about time limits for extensions. In this respect, Haiti’s request is within the bounds of the agreement. However, Afro Leo wonders if it’s a good idea.

Least Developed Countries are designated by the United Nations, unlike Developing Countries which can designate themselves into that category. 33 of the 48 Least Developed Countries** are in Africa. (See UN Factsheet.) There is no set number of countries that must be LDCs, for example, LDCs are not the bottom 5% of countries. Rather, LDC status is determined by 3 factors: per capita income, human assets and economic vulnerability. Since the LDC status was introduced, three countries have improved enough to graduate off the list. Two of these, Botswana and Cape Verde, are African. This shows that a change in status is possible. (Full LDC Report.)

Would an indefinite exemption for most TRIPS provisions provide reverse incentives to remain on the LDC list? Once a country graduates from LDC status, it can still designate itself a Developing Country for WTO purposes. TRIPS does provide extended deadlines for Developing Country compliance, but these deadlines have all passed by now. The only remaining benefit to being a Developing Country under TRIPS is the technical cooperation from developed countries granted under Article 67. Therefore, in order to not be in immediate violation of TRIPS, current LDC members need to be in full compliance with TRIPS before graduating from LDC status.

While purposeful holding back on development could be a risk of granting the indefinite extension, this Little Leo thinks it too risky to LDCs for any country to purposely pursue. (But she has been told she gives too much benefit of the doubt in general.) More likely is that a permanent extension would allow LDCs to focus on elements of development in the orders that best suit their individual country circumstances. As LDCs focus on development and continue to engage in the international discussions on IP, they will begin implementing laws and regulations that comply with TRIPS provisions. Not all at once, but piecemeal. This Little Leo predicts there will also be some tradeoffs where certain implementations are required by the international community in exchange for progression in the areas of Traditional Knowledge, Expressions of Folklore and Genetic Resources, areas being championed by Devolving Countries.

Afro-Leo is interested to hear others’ thoughts on the extension request.

Hat tip to Primah Kwagala of CEHURD for links to several articles on this topic.

* Ugandan organizations involved in the appeals:
1. The Center for Health, Human Rights and Development (CEHURD)
2. The Aids Support Organisation (TASO)
3. Uganda Network on Law, Ethics and HIV/AIDS (UGANET)
4. Coalition for Health Promotion and Social Development (HEPS -Uganda)
5. The HIV/AIDS Alliance
6. Health GAP
7. The National Community of Women Living with AIDS (NACWOLA)
8. The Mariam Foundation
9. Health Advocates Network(HAN)
10. Community Health and Information Network (CHAIN)
11. Office of the High Commissioner for Human Rights –Uganda Country Office (OHCHR)
12. SALT –Uganda
13. Uganda Youth Against AIDS foundation (UYAF)
14. The Action Group for Health, Human Rights and HIV/AIDS (AGHA)
15. Southern and Eastern African Trade Information & Negotiations Institute Uganda

** LDCs: Afghanistan, Angola, Bangladesh, Benin, Bhutan, Burkina Faso, Burundi, Cambodia, Central African Republic, Chad, Comoros, Democratic Republic of the Congo, Djibouti, Equatorial Guinea, Eritrea, Ethiopia, Gambia, Guinea, Guinea-Bissau, Haiti, Kiribati, Lao People’s Democratic Republic, Lesotho, Liberia, Madagascar, Malawi, Mali, Mauritania, Mozambique, Myanmar, Nepal, Niger, Rwanda, Samoa, Sao Tome and Principe, Senegal, Sierra Leone, Solomon Islands, Somalia, Sudan, Timor-Leste, Togo, Tuvalu, Uganda, United Republic of Tanzania, Vanuatu, Yemen and Zambia.

Registration of Trade Marks in Nigeria – Extra-statutory requirements?

2013-05-30T11:01:00.000+02:00

Here's a guest post by Chijioke Ifeoma Okorie, who is currently reading for an LLM in Internet Law and Policy at the University of Strathclyde, Glasgow:

In July 2012 the Nigerian Registry of Trademarks, Patents and Designs announced here that it will only accept electronic applications for registration of trade marks, patents and designs filed by accredited agents. The Registry also commenced a compulsory accreditation exercise whereby “law firms, stakeholders and potential registrants” who wish to apply for registration or act as agents are accredited by the Registry upon payment of an annual accreditation fee (N23,500 for firms and N13,500 for individuals), completion of the requisite form and provision of supporting documents such as bio-data and passport photograph of principal partner, company information etc.

Upon completing the Accreditation Form, submitting the requisite documents and paying the accreditation fee, a firm is provided with log-in details with which future transactions with the Registry can be done. A list of accredited agents can be found here.

However, some law firms under the auspices of Intellectual Property Lawyers Association of Nigeria (IPLAN) took umbrage at the accreditation exercise and by an Originating Summons in Suit No. FHC/ABJ/CS/579/2012 sued the Registrar of Trademarks as first defendant and the Minister for Trade and Investments as second defendant.

Here are some of the issues raised by IPLAN:

§ That the mandatory accreditation imposed by the Registrar on Agents and Legal Practitioners is a violation of the Trade Act and Legal Practitioners Act;

§ That neither the Registrar nor the Minister can validly increase or prescribe additional fees under the Trade Marks Act and the Patent and Designs Act without their prior publication in the Federal Gazette, by virtue of the provisions of Section 45 of the Trade Marks Act.

IPLAN is asking the Court to declare the mandatory accreditation exercise a nullity, to set aside the Registrar’s directive in that regard and to compel the defendants to cease the purported accreditation and the collection of additional fees other than the application fees prescribed by law. The defendants have joined issue with the plaintiff and have applied to withdraw the processes earlier filed and file fresh processes.

No interlocutory injunction was sought so the Registry has continued with the accreditation exercise and electronic filing of applications. In fact, the first edition of the Online Trade Mark Journal containing list of marks sought to be registered, was released on 25 March 2013 and is being sold for N12,000.

In my view, rather than increase the cost of filing applications through the requirement of payment of annual accreditation fees (likely to increase with the “cost of inflation”) and over-burdening the otherwise easy process of electronic filing by the same accreditation exercise, would the country and indeed, foreign investors not be better served by reduced filing fees for electronic filings? That is the case with countries such as the United States, the UK etc. including filings with WIPO.

Given that the Trade Marks Act does not demand that an applicant for registration should be a legal practitioner, should the Registry be concerned with who an agent is? Why should separate accreditation fees be paid to both the Registry and the Corporate Affairs Commission (CAC) when the both belong to the same supervisory body - the Ministry of Trade and Investment ? In fact, South Africa has both functions (company registration and IP registration) in the same entity – the Companies and Intellectual Property Commission.

Other issues that piqued my interest (and not necessarily raised in IPLAN’s suit) include: Is the accreditation an appropriate proof of expertise in trade mark matters, given that the requirements for accreditation are minimal and not even verified? What will be the position if a prospective applicant obtains accreditation and has no further marks to register? Will a legal practitioner who has obtained accreditation through his employers require fresh accreditation should he become a sole practitioner? Can his erstwhile employers substitute his name with another employee given that the erstwhile employee has the requisite password to practice with his former employer’s accreditation status?

What will the Court decide, given that electronic filing is ongoing and it is possible that the joys and ease of electronic filing will drown the “unsavoury” accreditation fees. Indeed, I have always wondered about a similar exercise which is compulsory for persons and firms wishing to deal with the CAC.

Again, is IPLAN the proper party to challenge the accreditation exercise given that, by its name alone, it creates a separate class of legal practitioners whom the public may regard as IP experts. Put differently, does IPLAN registration and membership requirements not have the same effect as the Registry’s accreditation exercise? Even if on a smaller scale?

What do readers think?

RSA: National Recordal System for Indigenous Knowledge launched

2013-05-29T09:29:00.000+02:00

The Department of Science & Technology (DST) launched the National Recordal System (NRS) for indigenous knowledge (IK) on Friday 24 May. According to the DST's press release dated 27 May 2013 (available here) the NRS will include audio and video recordings of IK, which will be linked to
"· A semantic digital repository with custom-developed metadata schemata.

· A geographic positioning system (to document the locations of IK holders, communities and plants).

· A sophisticated security model to preserve and protect IK.

· An advanced semantic search engine to aid intelligent searching across a number of possibly related IK entries.

·      An IK holder cataloguing facility."
Currently, it is envisaged that the NRS will only include information on traditional medicines and foods. Coverage of other aspects of IKS will be added on in the future. IKS documentation centres are currently located at the University of KwaZulu-Natal, Vuwani Science Centre in Limpopo, Tsengiwe in the Eastern Cape, Thaba Nchu in the Free State, and Tshwane in Gauteng. Centres will be set up in all nine provinces within the next two years.

This development raises interesting questions. For example -
1. Will the NRS be used by the Companies and Intellectual Property Commission to verify or confirm disclosures made under s30(3A) of the Patents Act?
[Note: this section requires that "every applicant who lodges an application for a patent accompanied by a complete specification shall, before acceptance of the application, lodge with the registrar a statement in the prescribed manner stating whether or not the invention for which protection is claimed is based on or derived from an indigenous biological resource, genetic resource, or traditional knowledge or use".]

2. How , if at all, does the NRS fit into the IP protection of TK scheme provided for in the  IP Laws Amendment Bill No.8 of 2010? In particular how will it interface with the proposed National Database of IP protected TK?

3. Will the NRS be shared with foreign patent offices to prevent misappropriation of South Africa's TK? India's Traditional Knowledge Digital Library (TKDL), upon which the NRS appears to be loosely modelled, is shared with the EPO. This has reportedly resulted in the rejection of some patent applications (per WIPO Magazine ).

4. Will the NRS be accessible to the public?