Friday, 29 May 2015

Misuse of trade secrets and more #SandtonDiscussion - JRMM Technologies v Ball

This Monday's 9am (GMT+2) #SandtonDiscussion arranged by Lita is being lead by Reinhardt Biermann who will cover the recent case of JRMM Technologies v Ball involving:

  • misuse of trade secrets, passing off and confidential information
  • decisions between action and application court procedures
  • the importance of choosing business partners correctly
  • how not to spend your start up funds
all in the context of a new business for importing and distributing rock crushing equipment for use in mines. And if you think there is nothing secret about a rock crusher check this out.

The #SandtonDiscussion hashtag enables to you comment on, partake and follow previous discussions even after they have taken place. 

Some action from this week (if there is nothing below then the embed is not working, please check the blog):

Thursday, 28 May 2015

Comments on South Africa's Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014

Since the call for comments on this bill (noted here), the following comments have been published:

  1. The International Trademark Association (INTA)'s comments are available here 
  2. The UCT IP Unit  has posted comments (here) co-authored by Tobias Schonwetter (UCT),  Lesle Jansen (Natural Justice) and Laura Foster (Indiana University). 
  3. The Anton Mostert Chair in IP at Stellenbosch University has posted comments by Sadulla Karjiker (here) and Madeline Kleyn (here)  

Amongst other concerns, INTA notes the potential negative impact of  a 'the co-existence of traditional knowledge and traditional cultural expressions with trademark rights' and implores the creation of a system that is 'consistent with the well-established intellectual property principles of territoriality, exclusivity, priority, and notice' (p. 1). All the other comments are unanimous in their  view that the sui generis approach to the protection of TK advanced by the bill is a better approach than that provided for by the IP Laws Amendment Act. However, they all point out concerns about the Bill in its current form. In my view, one of the most pressing of these is how this Bill, if it it passed, will relate to the IP protection provided by the various IP statutes as amended by the IP Laws Amendment Act. The UCT IP Unit submission notes that South Africa will have a mixed approach [that offers the option of either IP or sui generis protection] that may cause tensions 'among and within indigenous communities' about the selection of  protection for their TK (p. 3).    Dr Kleyn, on the other hand, is of the view that such a mixed approach is not feasible because 'the two separate systems of protection for IK provided for in these two pieces of legislation cannot co-exist.' Therefore she recommends that the 'IKS Bill should upon promulgation repeal the IPLA Act' (p. 14). 

It will be interesting to see how discussions on this Bill develop both in and outside parliament.
For more discussion, see Linda Daniels 'A Cautious Welcome For South Africa’s Traditional Knowledge Legislation'

Friday, 22 May 2015

Join us on Twitter for the #SandtonDiscussion every Monday

For the past eight months Afro Leo has been attending internal discussion sessions on IP managed and run by Lita Mita-Qamata. These discussions, presented on a rotational basis, cover the latest and most relevant trade mark cases in local and foreign courts. Other participants include John Ndlovu, Ian Learmonth, Nic Rosslee, Maureen Thuto MakokoEric Mashida and Reinhardt Biermann.

You are now also invited to join us each Monday at 09:00 GMT + 2 by tracking the conversation at #SandtonDiscussion on Twitter and contributing. What will happen is as follows:
  •  each Friday we will communicate the case intended for discussion on the Monday
  •  the leader of the discussion will prepare and present on the Monday
This Monday's case will that of the recent UK Supreme Court decision  Starbucks (HK) Limited v British Sky Broadcasting Group PLC which makes direct reference to the South African Caterham trade mark decision in deciding a case involving internet protocol television. Find out how South African law of passing off differs from that in force in the UK, and what effect this may have on common law jurisdictions in Africa.

The case will be presented by Ian.

Thursday, 7 May 2015

ARIPO, OAPI attend INTA in San Diego -- but there is still further to go

This year's International Trademark Association (INTA) Meeting in San Diego, California, is now over and the nearly 10,000 registrants are wending their way home.  For many of our African colleagues this means taking two or three flights and experiencing a second major bout of jetlag in a single week. Afro Leo wishes them all a safe trip home and hopes that the experience was a positive one for them.

It is good to see Africa being represented at INTA not only by the many practitioners who have put aside their daily workload in order to travel and participate.  Both ARIPO and OAPI (in alphabetical order) took display booths in the INTA Exhibit Hall and were able to provide useful advice to those who sought it.

ARIPO now has 19 member states, plus 12 states with observer status, while OAPI has 17.  This is very encouraging, for those of us who remember what things were like 30 or 40 years ago, but it indicates that Africa as a regional concept still has a considerable distance to travel if it is able to achieve the sort of functional efficiency and cost-saving that is enjoyed by other regions in the world. Let's hope that we won't have to wait too long to see those benefits.

Saturday, 2 May 2015

INTA Annual Meeting 2015 - once again features IP in Africa

WIPO’s filing statistics (2014) unsurprisingly tell us that the African continent’s share in the global trade mark activity in 2013 is higher (guess year-on-year) than its share for the other registrable IP rights compared in that same year. Trade mark = 2.4%; Industry design = 1.2%; Patent = 0.6%; and Utility model = 0.02%. Surely, the corporate world (or to be precise, multinational brand owners) isn't neglecting the trend here – which is likely to remain so for the next decade.

Fancy a chillaxing time here?
The 137th Annual Meeting (AM) of the International Trademark Association (INTA) kicks off today in San Diego, USA. [Did you know that INTA was founded as the United States Trademark Association?] Since this Leo can’t afford (financially and otherwise) to be there – same old excuses - the best he can do is to window-shop for Africa-related content. If nothing else, this post may serve as a benchmark for next year’s AM so as to gauge the level of topics discussed and the local IP firms involved.

Main course
Tuesday, 5th May, 11:45 am–1:00 pm
RT20 Trademark Offices in Africa: The Importance of Working with Related Government Agencies [Brilliant! Afro-IP blog once had a look at the state of affairs online here and here]

Simon Brown, Adams & Adams (South Africa)
John Syekei, Coulson Harney (Kenya)
Chitua Uzoh, Aluko & Oyebode (Nigeria)
Uche Nwokocha, Aluko & Oyebode (Nigeria) – Moderator (also a member of the project team)

Followed by Africa reception from 1:15 pm - 2:15 pm - mingle time!

Wednesday, 6th May, 10:15 am–11:30 am
RW02 Regional Update: Africa—The Implementation of International IP Treaties in Africa

Fernando Antonio Dos Santos, African Regional Intellectual Property Organization (ARIPO) (Zimbabwe)
Dr. Paulin Edou Edou, Organisation Africaine de la Propriété Intellectuelle (OAPI) (Cameroon)
Wayne Meiring, Spoor & Fisher Jersey (South Africa)
Uwa Ohiku, Jackson, Etti, Edu & Co. (Nigeria)
Chinyere Anayo Okorocha, Jackson, Etti, Edu & Co. (Nigeria) – Moderator (also a member of the project team)

Side dishes a.k.a Table Topics
Monday, 4th May, 1:15pm – 3:15pm
TM72 Regulation of Franchising in Africa: A Little Too Much?
Presenter: Tiwalola Okeyinka, AELEX (Nigeria)

Tuesday, 5th May, 1:15pm – 3:15pm
(1) TT67 Supply Chain Security: A Regulatory and Anticounterfeiting Measure in the Food and Drug Industry
Presenter: Kingsley Ejiofor, The National Agency for Food and Drug Administration and Control (NAFDAC) (Nigeria)

(2) TT68 Taking Security Over Intellectual Property: The Challenges of Global Market Operation Companies
Presenter: Obinna Osisiogu, Stillwaters Law Firm (Nigeria)

Committee sessions include:
Monday, 4th May, 1:15 pm – 3:15 pm
Trademark Offices Practices Committee – Africa TMO Relations Subcommittee
Tuesday, 5th May, 3:30 pm – 4:30 pm
Africa Global Advisory Council

On a side note, this Leo can see Aisha Salem, USPTO IP Attaché for the Middle East and North Africa, is listed as a participant. It would be good to find out from Salem if the USPTO (budget permitting) has any plans to expand its attaché program in Africa. [South Africa, Kenya, Nigeria?]

This Leo can remember Afro-IP’s rallying call to action after the Regional Update for Africa vanished from INTA’s AM agenda in 2011. Indeed, it is with great relief to see the slot restored the following year and thereafter (see 2013). In fact, last year it was titled ‘Africa Rising!’ At this juncture, one can hazard a guess that local IP firms [though Afro-Leo would like to see more firms from other African countries participating] and the regional IP offices help retain Africa on the agenda through their support. Please keep up the good work!

Sitting next to me is one over-optimistic Afro-Leo who is sing-songing, “I still have a dream that one day - oh yes, one good day - that INTA will boldly stage this grand event on African soil”. Well, for those looking for IP events in one of the lovely African cities, there are a few scheduled this month in Cairo, Dakar and Kigali.

To the fortunate ones attending: please do feel free to share (anonymously or otherwise) your thoughts, notes, gossip etc during or after the event. (See one example on Afro-IP here)

20[ ] – INTA holds its first Annual Meeting in Africa, in [fill in the gap].
2014 - INTA holds its first Annual Meeting in Asia, in Hong Kong.
2007 - INTA establishes representation in Mumbai, India.

Thursday, 23 April 2015

RSA IP Compliance Collaboration World First

Afro Leo challenges you at CEOSLEEPOUT™

Afro Leo has been invited to take part in the 702 Sun International CEOSLEEPOUT and is humbled to take up the challenge. After all no self respecting lion can say no to such a great cause and concept. In doing so, I am also challenging readers, bloggers and other blogs to become involved.

You can support Afro Leo or the cause generally by doing the following:
  • accepting Afro Leo's challenge to sign up, sleep out and raise funds
  • sponsoring a participant or, if you like, Afro Leo himself* or Boys & Girls Town directly
  • challenging your colleagues to take part in the event or by nominating someone
  • if you are a blogger or run a blog, by linking to this post

*If you sponsor Afro Leo by clicking here and following the instructions, he will match the amount until he reaches target.

All of the information is contained on their website and the ever growing list of participants taking up the challenge can be found here. See if you can spot the animated Leo!

Some information on the CEOSLEEPOUT™

In just six months since her arrival back in South Africa from Australia, Alison Gregg, through her company The Philanthropic Collection has launched the 702 Sun International CEOSLEEPOUT which challenges business leaders to look beyond profit motives and sleep out on the streets in the middle of winter to raise funds for the homeless. 

Afro Leo attended the launch last week together with an auditorium filled with people from stakeholders, sponsors and media. The news trended on Twitter for that day and the next and  
the take-up of CEO's, board members, directors and partners has been quite incredible for the 18 June sleep out date. Over 100 C-Suite executives have already committed to the event. 

Wednesday, 22 April 2015

ARIPO: Swakopmund Protocol to enter into force on 11 May 2015

The sixth instrument of ratification of the Swakopmund Protocol  was deposited on 11 February 2015. ARIPO has announced on its website that the Protocol will come into force on 11 May 2015, three months after the sixth ratification was deposited, as provided for by section 27(3) of the Protocol. 

Monday, 13 April 2015

OAPI Suspend Agents

Aminou Ndala TITA based in Cameroon reports that there has been significant tension between OAPI and some its agents over OAPI's decision to join the Madrid Protocol. OAPI has responded banning certain members from practising. The full story:

"A month after joining the Madrid Union, the dust has not settled on why OAPI chose that option. The in house fighting between the Director General of OAPI and some of his accredited agents has raised so much doubt on the competence of the organization’s hierarchy.

Accredited agents are those who have been granted special license by the Director General of OAPI to represent clients. They are usually legal experts or those with a background in IP and have fulfilled special conditions laid down by the organization.

It should be recalled that the decision to join Madrid was arrived at the 53rd session of the Board of Directors of OAPI held in Malabo on the 14th December 2013. Resolution No. 53/25 of 14 December 2013, authorized the accession of OAPI to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Director General of OAPI was mandated to submit the instrument of ratification with WIPO which he did on the December 5, 2014. The official entry is dated March 5, 2015.

The accession of OAPI to the Madrid Protocol has not been welcome my most IP legal practitioners within the OAPI Jurisdiction. These legal minds who now branded themselves as « Collectif des Conseils en propriété industrielle » have labeled the OAPI accession to Madrid illegal and are bent on reversing this decision. The arguments advanced by these group are:

1.       That OAPI as an international organization does not have the mandate to ratify a treaty on behalf of member states.
2.       That the Bangui Agreement does not allow the Organization to ratify a treaty through a resolution of its Board of Directors;
3.       That only independent states have the power to ratify such a  Protocol;
4.       That accession to the Madrid Protocol will have negative economic and strategic impact on member States of OAPI.
5.       The professional / accredited agents of OAPI will experience a decline in the volume of their activities.

This action has been met by stiff resistance from the organization. The organization hierarchy has suspended ( all agents involved in this action which to him is an attempt to discredit and destabilize the organization. The communique from the D.G reads:

“The patent attorneys involved in this campaign and the firms they are attached to, will not be allowed to represent clients at OAPI for any action which include but not limited to Patent, trademark and design applications, opposition, appeals, recordals etc.;

 - They are also banned from advertising their firms as official agent / attorneys of OAPI”.

The list of agents and firm suspended by OAPI has not been made known to the public but one thing is clear, this will definitely be a long fight."

Thursday, 9 April 2015

International Firms Colonise Africa Big Law - Legal 500

African interest has created a real dilemma for African law firms that operate in the corporate, banking and mining spaces - big law.  Local legal powerhouses that have dominated their region for decades have been facing increasing international competition for their patch and the Africa opportunity. The latest (and first ever) Legal 500 listing for Africa illustrates that, in a relatively short space of time, the international firms have completely dominated the continent. In fact, of the top locally branded firms in Africa, only two make even the bottom tier,

For Africa based firms focusing on big law this means either merging with super firms or coming up with an alternative strategy, for example, by investing in firms on the continent to make them more attractive for corporate deals (that are not run by the mega firms on the continent) or focusing on specialist areas. However, both require major change, good leadership and a strong constitution.

Wednesday, 8 April 2015

Busy time for Africa at WIPO - Part II

Swiftly following Monday's post, here are further updates from our anonymous friend on WIPO-coordinated activities relating to African countries.

Image result for wipo
The fifteenth session of the CDIP will be meeting in Geneva from April 20th to 24th.  Unsurprisingly, there are a number of agenda items relating to Africa.  The committee will be reviewing, among others, the Director General’s Report on the implementation of the development agenda, evaluation reports on several studies and external review projects. 

Evaluating the CMO project
One of the evaluation reports, prepared by Lois Austin, was based on a project involving 11 African countries. The idea of the project was to make copyright work better in developing countries by empowering the collective management organizations (CMOs) to aspire to “international state-of-the-art standards” and to assist them learn how to “deliver timely, effective and efficient value-added service to national creators, copyright industries and consumers”.  Austin’s report reviewed the various objectives of the project and the extent to which they've been achieved.

The busy bees in charge of the project thought they had everything set up and ready go, but, as is all too common, they discovered that the technical infrastructure necessary to support their plans was lacking. Time and funding was spent on attempting to build this underlying infrastructure, particularly upgrading the WIPOCOS (WIPO Software for Collective Management Organizations or Societies). This was, however, accomplished, and the remainder of the original plan was “re-oriented”.  The re-oriented program was deemed complete, but it’s going to take quite some time to actually realise an increase in capacity and efficiency at CMOs in developing countries.

More related events to look out for in May and June
There will be an Inter-regional Expert Meeting on South-South and Triangular Cooperation for Access to Information and Knowledge, Innovation Support and Technology Transfer in Lima, followed by the WIPO-NORCODE training on Exercise and Management of Copyright and Related Rights for Developing Countries in Oslo. 

Stay tuned!

Algeria requires proof of use for trade mark renewals

An item in Abu-Ghazaleh Intellectual Property's most recent newsletter, "New Requirement for Trademark Renewal in Algeria", reports that the Algerian Trade Mark Office has issued new regulations relating to trade mark renewals in Algeria. These new regulations require that renewal applications be accompanied by proof of local use of the mark in the year preceding the renewal deadline.

This blogger wonders what the criteria for proof of local use will be. Will Algerian practice be influenced by current European Union case law on the subject? Will token use be sufficient or will it have to be genuine? How "local" can such use be, given the fact that much of Algeria's large territory is sparsely populated  -- and to what extent if any will importation be considered to be "local use"?

Tuesday, 7 April 2015

Nagoya: A headache just for developing countries?

Nagoya is not as sexy as TRIPS?
Afro-IP is lending its voice to a very important post, by Leofriend Darren Smyth, which sadly received little attention on our sister blog - despite the EU masters taking it seriously. It is important because it explains how the UK has decided to play its part in ensuring that organisations share the benefit of genetic resources with the countries from which they have been obtained.

When this Leo saw the post, his immediate thought was that it may well not be the cup of tea of the majority on IPKat (cf. here); but, on second thought, he doubts whether the subject-matter would've generated a great deal of enthusiasm here. Previous Afro-IP posts are here and here. [Afro Leo says: "Perhaps some see Nagoya as one of those charitable side dishes legal thingummies for the benefit of developing and least-developing countries."]

Afro Leo might have a point if one considers the context provided in a nice little piece by Elsa Tsioumani (University of Edinburgh). Ms Tsioumani says:

 The turnout looks like the blog interest
"...Most of the world’s biodiversity is found in developing countries; whereas developed countries usually host research institutes and companies that make commercial use of this biodiversity. In light of the asymmetries between States providing and using genetic resources, as well as growing expectations concerning the commercial value of biodiversity, ABS [i.e. the Protocol] was conceived as a tool for equity and as an opportunity for sustainable development. 

The idea behind it was quite simple: developing countries host most of the world’s biodiversity and thus genetic resources; commercial products developed on the basis of these genetic resources benefit mostly companies and consumers in developed countries; part of these benefits should flow back to the countries of origin of genetic resources."

It seems our friends at Spicy IP (e.g. here and here) are doing better on this topic. Please head over to the IPKat with any comments; alternatively, let's turn Nagoya into an attractive legal instrument right here on Afro-IP. 

Extra bits
Nagoya Protocol is here
Governments agree to make Nagoya work here
Study on the Implementation of the Nagoya Protocol in the EU and its impact is here
Nagoya implications for UNCTAD BioTrade initiative and BioTrade actors are here (draft copy)

Monday, 6 April 2015

Busy time for Africa at WIPO - Part I

Image result for wipo
An ardent and long-standing reader has sent Afro-IP this piece which somewhat chimes with Caroline's post on South Africa's long-awaited Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill (2014). Here is what our friend says:

There has been a lot of Africa-focused activity at WIPO this month; and with the Committee on Development and Intellectual Property (CDIP) meeting coming up in a few weeks, that activity isn't going to slow down any time soon.

Over the past few weeks, WIPO jointly hosted two separate programs on Africa and IP. Program no.1, involving the Japan Patent Office, ARIPO and the Government of Uganda, was titled “Strategic Use of the Intellectual Property (IP) System for Economic, Cultural, Social and Technological Development”.  The program, which was held in Kampala, featured speakers from all of the host organizations as well as experts from Kenya.  The topics covered the following:  Creative Industries for Economic Growth and Development (copyright); Use of Technical and Scientific Information for Technology Capacity Building (one of many focused on patents); and Significance of Trademarks, Industrial Designs, Utility Models and Geographical Indications for Commerce and Development (everything else).  Full agenda is available here

Program no.2 - which was held in Geneva, thanks to the generosity of Australian Aid - was titled “Seminar on Intellectual Property and Genetic Resources, Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs): Regional, National and Local Experiences”. The program featured speakers from Peru, Jamaica, Romania, Finland, India and Kenya sharing their experiences with protecting TK and TCEs.  Session topics also covered IP and development, the interplay of TK and TCEs with the concept of the public domain, and experiences on introducing IP legislation.  Full agenda is available here

It makes sense to see Australia in program no.2 since its Aboriginal culture laws (also here + New Zealandare often held up as examples in the fields of TK and TCEsSpecial mention goes to an IP expert in great demand Ms. Marisela Ouma (Kenya Copyright Board), who was a presenter at both of these programs.

If you were able to attend either of these programs and would like to report on them in more depth, please do let us know or post your comments below. Thanks.

Sunday, 5 April 2015

African Declaration on Internet Rights and Freedoms - 0% 'IP fat' content

Image result for i pledge
In a previous post, we saw how the current government in Nigeria plans to curb copyright piracy. It is not debatable whether a great deal of the infringement problem can be found online, when it appears the Nigerian Copyright Commission has a mammoth offline enforcement task to deal with.

Anyway, Afro-IP's attention has been drawn to a pledge drafted by a group of individuals who are concerned about the role of internet in the socio-economic development of African countries. 

From an IP perspective, unless this Leo's sight needs a serious eye checkup, here are the interesting parts: 

Principle 1: Social and economic openness, to support innovation and guard against monopolies, should be protected.

Principle 2: The cutting off or slowing down of access to the Internet, or parts of the Internet, for whole populations or segments of the public can never be justified on any ground, including on public order or national security grounds.

Principle 11: Everyone has the right to due process in relation to any legal claims or violations of the law regarding the Internet. Standards of liability, including defences in civil cases, should take into account the overall public interest in protecting both the expression and the forum in which it is made.

Access and Affordability

Access and affordability policies and regulations that foster unfettered and non-discriminatory access to the Internet, including fair and transparent market regulation, universal service requirements and licensing agreements, must be adopted.

Freedom of Expression
Filtering, blocking, removal and other technical or legal limits on access to content constitute serious restrictions on freedom of expression and can only be justified if they strictly comply with international human rights standards relating to limitations and due process requirements.

No one should be held liable for content on the Internet of which they are not the author. Furthermore, the State should not use or force intermediaries to undertake censorship on its behalf and intermediaries should not be required to prevent, hide or block content or disclose information about Internet users, or to remove access to user-generated content, including those that infringe copyright laws, unless they are required to do so by an order of a court.

Right to Information and Open Data
Copyrighted materials held by public bodies should be licensed for re-use in accordance with relevant access to information laws and licensing frameworks.

The existing obligation on public bodies to share all information produced with the support of public funds, subject only to clearly defined rules set out in law, as established by the Declaration of Principles on Freedom of Expression in Africa, shall extend to the proactive release of such information on the World Wide Web in openly licensed, freely re-useable formats.

Indeed, access to education is a key aspect of the Declaration, so is preservation of cultural heritage. (Though some might argue that there are contentious points to address) 

'IP rights in the digital age' and 'access to educational content online/copyright' discourse remain topical, globally. It would be interesting to see how or whether African countries would heed to the call.

Updated on 14/04/2015 to highlight parts of the Declaration which explicitly (or as may be interpreted) refer to 'IP rights' and the enforcement or exploitation of such rights.
Copyright infringement allegation which swirled around Nigeria's most lucrative blog is here and here
Mass digitisation of cultural heritage: Can copyright obstacles be overcome? Find out here
UK's latest exceptions to copyright are here