Friday, 29 November 2019

Afro-Buff

Lions square up in fight for territory



Zimbabwe: Lion Match Proprietary Limited is a South African company trading in Zimbabwe some years ago through a subsidiary, Lion Match Zimbabwe Limited (initially Lion Match Rhodesia Limited). The latter was sold including its trademark and goodwill and the Lion Match brand continued in the country first with both companies trading and then later only Lion Match Zimbabwe Limited.

In 2000, due allegedly to the harsh economic climate in Zimbabwe at the time, Lion Match Zimbabwe Limited allowed the Lion Match trademark to lapse and stopped trading in the associated product. Lion Match Proprietary Limited later acquired a renewed interest in trading in the country and sought to file a trademark to protect the Lion brand.

Lion Match Zimbabwe became aware of this and made their own application for the trademark. The Registrar was faced with the issue as to who ought to be granted the trademark. The difficulty was that Lion Match Zimbabwe’s trademark had lapsed for in excess of three years and no move had been made to renew it until after Lion Match South Africa’s filing.

The Registrar acknowledged the economic difficulties faced by Lion Match Zimbabwe and found in their favour. Aggrieved by this, Lion Match South Africa approached the Intellectual Property Tribunal for relief. All eyes were on this forum as it was its maiden case and those concerned waited with bated breath as to what the outcome would be.

The issue before the Tribunal was the consequences of non-renewal. In reaching its decision, the court examined section 24 of Zimbabwe’s Trade Marks Act. It found that in the event that a trademark has been removed from the register on account of non-payment of fees, it can only be restored within a period of three years from the date of expiry. After this three year period, the previous owner of the trademark loses legal rights to the trademark and another party can appropriate and register it.

This places the party who has lost the rights to the trademark on an equal footing with any other party who wishes to register the trademark. The parties had, in fact, both acknowledged this as reflected in them both having made fresh applications. Lion Match Zimbabwe contended, in addition to issues pertaining to the economy, that they ought to be granted the trademark as they had built up goodwill within the country. The court did not accept this because they had ceased trading for some time. On this basis, the courts found in favour of Lion Match South Africa Proprietary Limited because they were the first party to seek registration of the trademark after its expiry.

Afro Leo, naturally perturbed about his brethren lions fighting, suggests that this is the right outcome. If Lion Match Zimbabwe had residual rights to the name through their use then they still have the option to oppose of cancel the trade mark filed by Lion Match South Africa. This did not occur. The lesson here is to be vigilant in the maintenance of one’s trade marks. This is especially so in first-to-file jurisdictions.

This matter was also reported on by Spoor and Fisher and All Things IP 4 Africa

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Afro-Buff

Khoi and San communities to benefit from rooibos products


On the 1st of November 2019 and as reported by a broad spectrum of publications listed below, the Honeybush Rooibos and Honeybush Traditional Knowledge Benefit Sharing Agreement was signed. It accords Khoi and San communities with a one-year pilot providing them with a 1.5% benefit of the farm gate price from those who process Rooibos. This comes in the form of an annual levy. It is estimated that the levy will amass a total of approximately R12 million per annum. This will be paid into trust accounts. The agreement will facilitate the creation of jobs and will serve as a driving force for upliftment of small-scale farmers. The benefit agreement was signed after a period of 9 years of negotiation. Rooibos is a R300 million industry but has been monopolised by approximately 300 white farmers up until this point. Coloured farmers produce a mere 2% of the profits.

Rooibos is used in a host of fashions including as a toiletry and a herbal medicine but most commonly as a tea. It occurs in the Cape Floral Region- a place from which the Khoi and San communities originate. That the Khoi and San communities were the traditional knowledge holders for both Rooibos and Honeybush was determined by the Department of Environmental Affairs- research dating back to 2010- and the resultant agreement ensued allowing these groups to benefit from the proceeds of commercial use of the product.
At the launch of the agreement, Barbara Creecy- Minister of the Department of Environmental Affairs, Forestry and Fisheries- stated that:
“Such international recognition cannot exist without appreciating the contribution of indigenous knowledge to the use of rooibos and honeybush. That is why it is important that the parties to the Rooibos Traditional Knowledge Industry-Wide Benefit Sharing Agreement, salute the role of San and Khoi traditional knowledge, without which the variety of medicines and other products made from this plant by the rooibos industry would not have happened.”
Despite the undeniably positive step that has been taken, there are also questions about how positive change will pan out for the Khoi and San people. How profits will be distribute and how exactly they will trickle down to small-scale farmers has yet to be determined. It is also problematic that many of the people living in the communities to whom this agreement bears relevance are mixed race. Such people do not readily identify with being part of the Khoi or the San communities, which may affect how they benefit from the agreement. The question as to who bears responsibility for ensuring that people like those who are landless and otherwise disenfranchised will benefit is also at issue.

While the agreement will not wholly provide restitution to the Khoi and San people who have been prevented from benefitting from the industry since its inception, and while this hardly makes up for the historically atrocious treatment meted out to these individuals over the centuries, it is undeniably a start. The advent of democracy has purported to build a nation where there are opportunities for all and while government hasn’t always gotten it right, one cannot deny that considerable strides have been made. This is one of those strides.

This story was also published in:
·         Mail and Guardian
·         News24
·         BBC News
·         Times Live

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Image credit: Joanna Kosinska

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Afro Chic

Mauritius’s new Industrial Property Act: Mr Marius Schneider explains.


In March 2019 Mauritius passed the Industrial Property Act (the Act). The Act promises to improve intellectual property systems and to facilitate ease of process in matters concerning this sector. It aligns Mauritian intellectual property law with international treaties such as the Madrid Protocol and the Hague Agreement. While signed into law and gazetted, the Act has yet to come into operation as a date has not been fixed by Proclamation. Mauritius has very recently had its national elections and it remains to be seen whether the Act will be prioritised by the government and thus when it will be implemented. With a view to understand more about this new statute, we caught up with Marius Schneider, a Mauritius based intellectual property expert and his colleague Nora Ho Tu Nam. They both offer professional services through IPvocate Africa.

When asked about overall impressions of the Act, Mr Schneider indicated that it is a very satisfactory piece of legislation. He indicated, for example, that the inclusion of the Madrid Protocol into national legislation is extremely promising. This is because most trademarks in Mauritius are registered by foreign companies, given the small size of the country. This will change the way in which companies do business with Mauritius in the intellectual property realm.

Schneider was asked where the main change would come from for the practical working of the Industrial Property Office (IPO). It is all very well to implement legislation, we indicated, but sometimes implementation itself can be lacking and this can impede the process of change. Schneider indicated that in this regard, change is likely to come from practice rather than the change in the law itself. In the wake of the reform, for instance, the European Union has apportioned funding to modernise the Mauritian IPO, which is presently still mostly a manual and paper based system., There is no way of having a current account and one still has to pay fees in cheques or cash at the registry for each application.

When asked of any barriers or inequalities faced by local Mauritians in registering intellectual property, Schneider indicated that Mauritius was fortunate in this regard with fair ease of process and reasonable fees. His colleague Ho Tu Nam illustrated that the process towards the passing of the Industrial Property Bill (the Bill) into the Act as it now stands was a very democratic one with lengthy processes of discussion around what to include in the legislation, a long time spent in Parliament discussing the reform and hearings being held to ascertain the views of stakeholders.

Of course, in the wake of change there will always be detractors with varying bones of contention. Perhaps, indicated Schneider, the most controversial provision of the Act is the retention of the system of national exhaustion. In a system of national exhaustion, those who own trademarks have the right to take legal action against goods bearing their trade marks imported by third parties, even when those goods are original.  The issue of national exhaustion caused quite a lot of debate in the National Assembly and amongst businesses but was finally retained in the Act. 

Mauritius may be a small country but it prizes the protection of the rights of its people. This is all-important in any democracy and it is vital that every piece of legislation seeks to espouse fair and just purports. By all accounts the Intellectual Property Act appears to do just this.

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Image credit: Marius Schneider 

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Afro Chic

Questions and answers surrounding the Copyright Amendment Bill

The Copyright Amendment Bill of 2019 (CAB/the Bill) in South Africa raises many questions surrounding how this piece of pending legislation will function if it is passed into law in its current form. The Bill has caused much controversy among both creators and practitioners and it is important that parties speak out with a view to clear the air and enhance understanding of the possible reforms. Denise Nicholson of the University of Witwatersrand provides a series of questions and answers pertaining to general features of the Bill and the controversial doctrine of fair use. In the interest of disclosure Denise is an active supporter of the CAB in its current form.

The questions posed were the following and you can click here for the full set of answers.

For additional articles and posts on the CAB click here.

General questions on the CAB:

Where can one find the latest version of the Copyright Amendment Bill?
Did any international, regional or domestic policies, documents or research form the framework of the Copyright Amendment Bill?
What was the Farlam Copyright Review Commission (CRC)?
Is the SA Bill in conflict with our international IP treaties?
Is the Bill compliant with the 2013 Marrakesh Treaty?
Is the Bill unconstitutional?
Was the public given adequate time to participate in the process of CAB?
Why was the copyright term not extended to 70 years in the Bill as many other countries have done?
Is the clause on unenforceable contracts legal?
Does the Bill amount to expropriation of local content without compensation?
Will the Bill limit the right to freedom of trade, occupation or profession as provided for in Section 22 of the Constitution?
Will the Bill lead to the Minister of Trade and Industry being able to prescribe the terms of publishing contracts, taking bargaining power away from authors?
Will authors/creators be affected by regulation of collecting societies?
Does reversion of assigned copyright after 25 years negatively affect authors?
Does Section 12B (1)(a) in the Bill encourage plagiarism?
Is the exception for course-packs for educational purposes unique to South African copyright law?
Does the Bill protect data?
Does the Bill allow text and data mining?
Why is the Bill important for all stakeholders?
Does the Bill enable SA to benefit from the 4th Industrial Revolution?
What is Parallel Importation?
Are Parallel Importation Restrictions (PIRs) prescribed in international intellectual property agreements?
Why has the Bill not included provisions for content filters, similar to the recent EU Directive?
What are the President’s obligations with regard to a Bill that has been approved by the National Assembly and the National Council of Provinces?

Questions on the doctrine of fair use

Why has the Bill adopted concepts such as fair use, which originated in other countries?
Will fair use lead to greater recourse to the courts and a dependence on U.S. jurisprudence, causing unnecessary financial problems for authors or publishers?
Under fair use, can a whole textbook be copied and 2000 copies be made for students, without permission?
Are the provisions for fair use in SA Bill much wider than fair use in the U.S.?
Should the fair use provisions in the Bill be accompanied by statutory damages?
Does the PWC Report quoted by rights owners present the true picture about fair use and other provisions in the Bill?
What impact did ‘expanded fair dealing’ (not fair use) have on the Canadian publishing industry?
Did the introduction of fair use negatively affect the publishing industries of countries that adopted it?
Do transformative uses of copyright works compete with the market of the original work of the authors and publishers?
Will every case relating to fair use have to go to the courts for a decision?
Was fair use recommended in the WIPO Study commissioned by the DTI in 2011?
What does the Handbook of South African Copyright Law say about fair use?
Does the Australian Law Reform Commission's Report 122 (2014) entitled "Copyright and the Digital Economy" say anything about fair use?
What is New Zealand’s approach to fair use?
Where can one find more information about fair use?

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Image credit: Iñaki del Olmo 

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Wednesday, 27 November 2019

Afro Leo

Updates for Egypt, Uganda, Zambia, Rwanda, Tunisia and Mauritius


Although it was anticipated that the cost of filing trademarks and designs in Egypt would increase, this has been placed on hold. For more information and for assistance in filing and related matters, click here.

In the recent matter of Sigma-Tau Industrie Farmaceutiche Riunite v Amina Limited, it was decided that international registrations under the Madrid Protocol which designate Zambia are valid registrations in this country and that this may be used by a proprietor of an earlier trademark to oppose subsequent trademark registrations. For more information click here and here.

The Uganda Patent Office has issued its objection to granting of patents in terms of pharmaceutical inventions when this is followed by a notification of the grant by the African Regional Intellectual Property Organisation (ARIPO), and in the event that Uganda is the state of designation. For more information click here.
Trademark owners who have registrations in Rwanda obtained before 14th December 2009 are reminded that these trademarks will have to be renewed on 14th December 2019 in order to remain valid. For more information click here.

In Mary Theresa Kakoma, as administrator of the estate of Professor George W Kakoma v Attorney General the question came before the Uganda Courts as to who owns the Uganda National Anthem. It was found that it was owned by the Government of Uganda. For more information on this case, click here.
Official fees for designs, patents and trademarks are set to significantly increase in Tunisia. For more information click here.

Mauritius has new intellectual property legislation entitles the Industrial Property Act 2019. There is no indication as to when it will come into effect as yet. For more information click here.

In the recent case of Lion Match Proprietary Limited v Lion Match Zimbabwe Limited IPT 01/16, the IP Tribunal in Zimbabwe found that even though a trademark had lapsed as a result of a harsh economic climate, it could not simply prevent another trademark from being registered simply because of this. For more information about this case, click here.

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Afro Chic

The Copyright Amendment Bill- A bid to save the poor?


The Copyright Amendment Bill is a controversial piece of pending legislation that has led to much discord in the IP community. Many seem to think that it completely disharmonises the system of creation and control- one of the hallmarks of copyright law in national and international systems. With a world-first interpretation of the doctrine of fair use creating broad exceptions, there are many instances where creators will stand to have diminished rights over their work.
In a society that has long since prided itself on reward for one’s endeavors, what is the reason for this departure? The difficulty with which lawmakers are faced appears to be that South Africa is also one of the most unequal societies in the world with often only a privileged few being able to benefit from copyrighted goods. Current copyright law precludes unauthorised use of works in most circumstances and this means that in some instances only a small number of people have access to these works- regardless of whether this is in the public interest or not. A prominent example perhaps is that of academic literature. Many students find the cost of books prohibitively expensive and thus cannot benefit from the content of the works. This inhibits their ability to access education, which prevents them from being able to lift themselves out of poverty. This perpetuates cycles of social exclusion, which is contrary to the prescripts of the Constitution- an instrument with which all law must accord.
It is also important that laws in a country reflect one single system of governance. If a country is dedicated to making law and policy that is pro-poor, then it stands to reason that all law and policy ought to lean in this direction. Much is presently in the works to bring this about, with the reimagination of property rights set to hit many different sectors. Phenomena such as expropriation of land without compensation, national health insurance and prescribed assets are all on the table and our government has made its leftist ideology very clear in this regard. The aftermath of Apartheid means it’s time to do business differently- specifically that it is no longer all about business but rather that things ought to be done in the name of uplifting the poor and disadvantaged.
But who will this actually uplift? Most certainly we all ought to work together to create a more equal society, but will the fair use exceptions really accomplish this? Are these provisions of the Bill a justifiable limitation of the rights of creatives? Will knock-on effects such as a potential brain-drain and job loss really uplift the poor or is it government’s responsibility to do so? Is taking away people’s livelihoods truly democratic or is it a dangerous plunge towards a complex socialist system our government cannot properly run? Is taking something away from one person to give to another not more of the proverbial “stealing from Peter to pay Paul” than bringing about substantive equality? Indeed there are many questions and the answers are not clear cut. One can only hope that all of this is thoroughly considered by South Africa’s President before the Bill is signed into law.
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Afro Chic

November Update: CAB

In April 2019, the office of the President of South Africa was petitioned not to sign the Copyright Amendment Bill into law. It was thought by some that the outcomes of the promulgation of this pending legislation would have devastating effects on creators of work as well as the economy at large. There were also, however, many supporters of the Bill. This has divided the IP community to a great extent with parties pitted against each other and indeed there is no clear-cut way to proceed. Today, the Bill remains on the desk of the President, with no real resolution in sight. Thrust frequently into the media and otherwise in the public domain, incensed debate surrounding the Bill continues day after day. The following post will provide links to what is being said in the news in the hopes that readers will gain an understanding of the debate surrounding the Bill.

  • Daily Maverick: DA - Ramaphosa taking South Africa to the brink over Copyright Amendment Bill
  • Timeslive: Ramaphosa queries proposed changes to entertainment industry laws
  • The Conversation: South Africa’s Copyright Bill is good for digital archives: here’s why
  • University of the Witwatersrand: Counsel’s opinion on South African Copyright Amendment Bill and the Constitution
  • New frame: The right to read
  • The Conversation: New copyright law will benefit South Africans with disabilities
  • Info Justice: Does the South African Copyright Bill promote plagiarism?
  • Info Justice: Are Fair Use Provisions in the SA Copyright Amendment Bill far broader than in the US?
  • University of the Witwatersrand: Decolonising SA’s copyright law
  • Alberton Record: This is why global creative companies are urging Cyril Ramaphosa not to sign the Copyright Amendment Bill
  • African LII; Copyright and A2K issues
  • Mail & Guardian: The Copyright Amendment Bill is a recipe for recolonising education
  • Daily Maverick: The Copyright Bill is fundamentally flawed and strips creatives of their rights
  • GroundUp: Copyright Bill will make cost of studying cheaper
  • Business Insider: The US just announced a review of SA’s place in its biggest preferential trade scheme – because its movie and music companies don’t like the controversial Copyright Bill
  • Daily Maverick: DA: Ramaphosa is taking SA to the brink over Copyright Amendment Bill
  • News24: Coalition urges Ramaphosa to refer copyright bill back to Parliament
  • Africa Print: Printing SA calls upon President not to sign Copyright Bill
  • AGOA.Info: R35 billion in South African exports to the USA are at stake in a 'review' just triggered by SA's copyright reform efforts
  • Daily Maverick: US at odds with SA over ‘fair use’ in proposed new copyright law
  • Business Tech: 5 reasons why the US is reviewing its dealings with South Africa
  • Daily Maverick: ‘Fair use’ in new Copyright Bill benefits everyone
  • Tech Dirt: US Government threatening to kill free trade with South Africa after Hollywood complained it was adopting American fair use principles
  • Business Day: Copyright flexibility opens the door to decisive AI advantages
  • Power FM: SAGA Chair Jack Devnarain in PowerFM discussion on rights of actors
  • Mail & Guardian: The new copyright Bill could help unlock the doors of learning and culture
  • Politicsweb: Artists urge President to reject Copyright Amendment Bill – Coalition for Effective Copyright
As is evident from the above there is certainly a great deal of information and opinion out there. Regardless of what your opinion is, reform is important and it is integral that it take the most just and equitable path possible. What do you think should happen with the Bill? Drop your comments below.

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Image Credit: Markus Spiske

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Wednesday, 6 November 2019

AfroTwiga

African universities and their role in innovation

Richard Branson once said that if you want to be a millionaire, start with a billion dollars and launch a new airline. Alternatively, you could start an Office of Tech Transfer at a University.

There are two schools of thought around IP and tech transfer in universities in Africa. The first is that tech transfer is irrelevant because most big research universities are public institutions and are therefore not allowed to acquire IP and control research output through the use of IP. The second is that IP acquisition and tech transfer would be a game changer, allowing universities to access the vast resources of global private industries through royalty payments. Neither view is entirely accurate, in general.

(Unfortunately, there's also a third view: what is an Office of Tech Transfer and why should we start one? Although this view is probably more common than the others, it isn't terribly relevant to this post.)

A good friend to this blogger recently pointed out this article about the failure by most Universities in Canada to transfer technologies from university labs to Canadian industries. The conclusion is that patents are not helpful enough, and cost too much, to justify the focus placed on them by universities.

To be sure, universities in Africa don't own very many patents. Even in Kenya, one of the most active countries in terms of patent filings, Kenyan universities own a very small (albeit growing) handful of patents.

This blogger is convinced that the solution to moving technology from African universities to African businesses is not by way of patents, but rather by way of direct partnerships. African universities have R&D resources (the three Ls: labs, labour, and literature) but like most universities around the world are not equipped to commercialize products. African companies don't generally do much R&D but are very aware of local needs/challenges, have some financial resources, and are relatively good at marketing solutions.

Patents are not needed for such partnerships. Ideally, private industry would work directly with university researchers to identify and solve local problems. Industry can cover some of the research expenses in exchange for access to the three Ls and first access to the research outcomes.

This model may not work in highly developed countries with universities that are very well equipped and very good at obtaining large research grants. But in Africa, where universities are available to do research but (very) rarely see the impact of that research, it may be a better model than the traditional OTT model we know from developed countries.

A perfect example of this model exists already - it's called BioInnovate and it is a successful example of industry/academia partnerships in Africa, mostly or entirely without patents.
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Friday, 11 October 2019

Darren Olivier

Cannabis, IP and Africa – 10 things to know


·     
  The cultivation and use of the cannabis plant is ancient. Apart from the market for hemp, dealing in cannabis is still largely an illicit activity. It is only over the last decade that the cannabis market is becoming accessible.

·         A number of countries are now in various stages of decriminalising it with Canada leading the trend, after Uruguay started it. Possession of cannabis is still punishable by death in some countries and is highly regulated in all countries that have legalised it.

·         The size of the African market for cannabis is significant. According to recent data from New Frontier Data, there are 263 million consumers of cannabis products globally of which 83 million are in Africa, or a whopping 32%.

·         Ethiopia, Nigeria and Morocco are the 3 largest markets in Africa. Only South Africa and Lesotho have taken active steps to de-criminalising the cultivation, possession, ownership and use of Cannabis related products. In South Africa, for example, revenue streams from cannabis were a specific feature of the national budget speech in 2019.

·         Hemp is obtained from a strain of the cannabis plant. Hemp contains no or very little THC and is therefore a recognised raw material and has an established market. For example, over 20kg of hemp is contained in a Mercedes Benz C class motor vehicle. The changes in the cannabis market mainly do not include or refer to the established hemp market.

·         The cannabis “market” in South Africa consists of the following broad categories:

o    The established market for hemp that is generally lawful
o    The private possession and use market by adults in private, that is lawful following the constitutional court ruling
o    The regulated prescription market of products by practitioners containing cannabis with material levels of THC and/or CBD content for medical reasons
o    The licensed market:
§  for cultivating and producing cannabis and cannabis resin
§  extracting and testing cannabis, cannabis resin and cannabinoids
§  manufacture of cannabis or cannabinoid containing medicine
§  importation, export and distribution of cannabis containing medicine
o    The market for products bearing a low THP and/or CBD content that have been sanctioned for 12 months since May 2019.
o    The remaining “market” which is illegal.

·         Intellectual property (IP) has a considerable part to play in the cannabis market. Conceptually, IP is a legal mechanism to stimulate innovation by balancing effort with reward in the form of exclusivity or a monopoly. For example, the reward for a new pharmaceutical product containing cannabis is 20 years provided that the owner explain how it works so that other can benefit from either improving it or using it after the patent has expired.  

·         Relevant forms of IP or related considerations include:

o    Registered trade marks – used for protecting all distinctive features such as names, logos, packaging and vital protection for that first to market advantage. Registered for 10 years, renewed indefinitely.
o    Designs – used for all those visual attractive features and functional forms, as well as two dimensional logos applied to packaging. Not a bad option for immediate protection as they can often be obtained quicker then registered trade marks. Can give on 10-15 years protection.
o    Plant Breeder rights – if you are cultivar looking to protect innovation or new varieties then these rights can give you a significant advantage, up to 20 or 25 years depending.
o    Patents – although plants themselves are not protected, infused products could be or methods of extraction or production. A great form of protection for all things new and inventive, including any pharma products, for 20 years.
o    Copyright – a lengthy free form of protection for all drawings, databases, logos, formulations, recipes, training manuals and anything creative reduced to material form.  
o    Trade Secrets and knowhow – keep your methodologies and the secret sauce, secret and it could well last forever as knowhow protection. These are kept that way through agreement obligations and through practical measures.
o    Geographical indications – are relevant for state or regional protection of methods of production or notoriety of regions in relation to cannabis. They work like “champagne” does for sparkling wine or “gorgonzola” for cheese or “rooibos” for tea.
o    Internet names – such as domain names, Twitter handles and Facebook profiles will be relevant but please be aware that online advertising for drugs and cannabis is largely not allowed by most mainline social media channels.
o    Licenses – in many instances, permission for cultivation and the like of cannabis is regulated by the state. Those good enough to secure licenses enjoy a natural scope of exclusivity relative to those that are unable to obtain a license, for the period of the license

·         The use of intellectual property can not only protect market share and entrance but raise the value of the company. These intangible rights require proper management to be effective. They may also need to be enforced.

·         Enforcement of IP rights can take place through the courts, advertising authorities, customs (especially for counterfeit goods) and through strategic use of watching services and, of course, your friendly lawyer.

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