Tuesday, 19 July 2016

What's happening with Quentin?

Thanks you for all your responses to this post after a street sleeper wore the placard below. This is a short update on what's happening..

His name is Quinton, not Quentin. Quinton comes from the Cape and is in his late 20s. He has been on the streets since 2009. His credit record is clear and he has no convictions but he is scared of sleeping rough and it is very cold this time of year. The response to help him has been remarkable, and Quinton has responded well too. I have read this update to him and have his permission to send this update. In fact he is very grateful to all those who have assisted him.
Through Ali Gregg at The CEO SleepOut he was introduced to Lucky (an ex street sleeper who now runs Homeless Talk) and has become one of their vendors. Lucky describes Quinton as "respectful" and gave him the thumbs up to take him on with the first 10 newspapers "mahala" (free). They are worth R7 each and new copies cost R3 each.
Quinton was involved in a road accident a few years ago. His attorney who works on contingency before the road accident fund also vouched for him.  
Shelters are extremely difficult to get into, especially if you are above 20 and male. At this time of year they are overcrowded and would not take him. Quentin had a list of over 30 names given to him by The Salvation Army and Girls & Boys Town but they were all full at the time. Eventually, he went from shelter to shelter and finally got into one in Hillbrow late Friday a week ago, and then only for several nights. He then slept rough again and this afternoon secured shelter, after an interview, for three months. Shelters costs between R10- R15 per day.
In yesterday's Hope Talk drive he was given newspapers to sell to raise money. Hope Talk is a special edition Homeless Talk activated as a result of The CEO SleepOut event by Caxton Publishers, and where he is able to sell papers and retain all the proceeds. They are R10 each. Some are also being sold for him in the reception at Adams & Adams to assist him.
Quinton is also helping to wash cars as part of Abreal's enterprise development program after an interview. He will get training and earn something from that. Enough to put a roof over his head and get a blanket in addition to some daily needs. The receptionist at the local gym took pity on him and allowed him to have a shower. He said it was great "to feel like a man". The Steve Biko Foundation have also offered to assist mentor him.
Angela Meuwsen who assists with the creatives on both The CEO SleepOut and Empathy book projects has spent some time with him on his designs especially after the initial quote for 100 long sleeve T shirts came back too expensive. He is adjusting them to reduce the cost of printing which should help him sell them at a more affordable price. He has entered the Adams & Adams pro bono program for clearance searches and a trade mark.
Ultimately he wants to become sustainable through his own creativity.
This is the story of Quinton over the last two weeks. There is still a long way to go but there has been a tremendous outreach to assist him. Ultimately though it will be up to him. He knows that.
Thanks for all the responses.

Friday, 8 July 2016

Mozambique's New Industrial Property Code Adjusts Important Deadlines

Thirty courtesy of Markussipiske, Pixabay
Mozambique’s new Industrial Property Code came into force on March 31.   Afro-Leo was busy hunting to hibernate for the winter; oh wait, that's bears... Anyway, Afro-Leo is sometimes a little behind, but that doesn't change a thing about the new IP Code for Mozambique.  This law replaces both the Industrial Property Code of 2006 and Decree no. 47/2015 on Appellations of Origin and Geographical Indications.
Unfortunately, the law is currently only available in Portuguese, which is not one of the languages in this dilettante's collection.  With the help of Google Translate and a few write-ups on the law, Little Leo was able to work out that many of the changes are procedure and deadline changes. 
General observation: when in doubt, assume the deadline is 30 days.  The time period for submitting outstanding information on an application was increased to 30 days from 15 days.  (Article 11.)  The time for the new ability to appeal provisional refusals is 30 days.  (Article 18.) -- It is now possible to receive a provisional refusal and provide additional documentation to address the grounds for refusal for patents, utility models, industrial designs and trademarks.  (Articles 104, 70, 115 and 132, respectively.)  
The trademark opposition period has been lowered to 30 days.  (Articles 130, 159 and 197.)  There is a new opposition period for industrial designs, which gives 30 days in which to file an opposition(Article 113.)  The timeframe for filing patent oppositions, however, is still 60 days from publication in the Bulletin of Industrial Property.  (Article 68.) 
There is also a new appeal process, with a 30-day deadline for filing, beyond the Industrial Property Institute itself; rejections may be contested to the Minister of Industry and Commerce and from there to the Administrative Tribunal.  (Articles 19 and 20).  The IP Bulletin will now be published monthly, which is nearly every 30 days, so it sticks with the pattern.  (Article 239) 

Monday, 4 July 2016

Guest Post: AFRICA – A land of opportunity to brand holders and counterfeiters alike

In this guest post, Vanessa Ferguson unpacks some of the key considerations and strategies for dealing with counterfeits on the African continent: 

Africa has seen a vast increase in investment and growth over the past 50 years and many companies have already mobilized to capture this emerging demand. 

With the growing investment, Africa is being increasingly targeted as a market for counterfeit goods and merchandise as a result of the escalating urban populations’ growing demand for many goods not widely available, as well as the lack of means to buy them. 

Whilst the demand is growing for branded goods, and the instances of infringing and counterfeit goods are on the increase, the various Intellectual Property Rights protection measures available to brand holders differ from country to country and remain largely inadequate in most African countries and vary from region to region.  As a result, a “one size fits all” anti-counterfeiting strategy cannot be easily applied or adopted in covering the key regions and territories in Africa. 

Furthermore, the market structure in Africa differs substantially from first world markets, such as Europe and America, and, as such, the best practices developed and applied in these territories cannot necessarily be adopted and applied in Africa with the same results and consequences. 

A key understanding of Africa and its nuances is important in establishing an effective anti-counterfeiting strategy .  Although modern trade is growing, this is still small and under developed outside of South Africa.  The most common and popular trading channels in Africa are the simple table top or small “spaza” shops, which are individually owned and managed by local entrepreneurs, set up on the side of the road or in local markets in order to capture the passing trade.  These businesses are supported and supplied by an equally efficient network and well-developed informal distribution structure.   Furthermore, informal cross-border trade is important to Africa and more than 43% of Africans are involved in informal cross-border trade, which contributes a large portion of the economic growth, job creation and job security.  

As a result, counterfeit goods are increasingly being sold, transported and distributed across African borders using these well-developed and largely uncontrolled informal trade routes. 
An effective African anti-counterfeiting strategy should therefore not only be focused on the countries of relevance to the brand holders, but also the neighbouring territories, taking into account the retail structure, main trade channels and distribution routes in Africa. 

As an initial step, brand holders should ensure that their primary trade marks are registered - not only in the main countries in which their goods or services are provided -but also in neighbouring territories.  Without the existence of a registered trade mark, it is almost impossible to act against counterfeiters in Africa, especially in those territories where common law rights or protection of well-known trade marks is not recognised.  Copycat infringement is on the increase, where infringers will adopt a label that is a colourable imitation of the original label.  As such, consideration should be given to the registration of the labels for the primary products to provide statutory protection against the use of a similar label or get-up. 

Although Customs remains an important and critical element to an effective anti-counterfeiting strategy, the relevance and success of actions by customs differs from region to region in Africa.  Unfortunately not all territories have established Customs practices focused on the registration of brands and detention of suspect counterfeit goods and it is only possible to record brands with Customs in a handful of countries.  Where formal customs recordal procedures are available, such as in South Africa, Mauritius, Ethiopia, Morocco, Tunisia & Egypt, brand holders should record their brands.   In other territories, an informal strategy can be adopted for the identification and to support the notification of suspect counterfeit goods.  This has been proven to be effective in key African territories including Namibia, Zambia, Mozambique, Kenya, Tanzania, Uganda, Rwanda, Ghana and Nigeria. 

A strategy focused primarily on customs recordals and actions alone is not sufficient or recommended in Africa, particularly due to the inconsistencies in inspections and measures to stop counterfeits at the ports, airports and borders differ from region to region.  In each region it is necessary to assess and work with local police services and regulatory bodies, for example NAFDAC in Nigeria and the Anti-Counterfeiting Agency in Kenya, that have the capacity and infrastructure to tackle counterfeit goods in the region.

Steps should also be taken by brand holders to formalise and strengthen their own distribution channels in the region and across borders.  Based on the demand for products, the informal distribution channels and methods are strong and well-entrenched in Africa, facilitating the trade in counterfeit and parallel goods.  Brand holders should firsthand build up understanding and knowledge of these distribution and retail channels in order to infiltrate and effectively act against key counterfeit role players.  Such investigations and actions, however, take time, money and patience.  A long-term approach, with consistent supported actions against retailers and suppliers alike, should be implemented, with a view to obtaining or extracting information on the source and supply of these goods.

In each territory, brand holders should adopt a zero-tolerance approach to anti-counterfeiting and take action to the full extent of the law in the respective regions.  In such cases, where appropriate and feasible, brand holders should institute criminal or civil proceedings against known and identified offenders, especially in the case of repeat offenders or where other extenuating circumstances justify the spend and time taken in bringing these matters to finality. The continued prosecution of offenders will not only build up a valuable precedent of case law, but will also send a clear message to the market of the severity and consequences of dealing in counterfeit goods.

Saturday, 2 July 2016

Big Win for Copyright and Artists in Tanzania

Back in May, a large variety of news outlets announced a major copyright victory for two Tanzanian musicians, rappers AY (Ambwene Yessaya) and MwanaFA (Hamisi Mwinjuma), against telecom operator Tigo (MIC Tanzania Limited).  According to its Wikipedia page [which reads like it was written by Tigo’s PR department], the company is owned by European-based Millicom International Cellular.  The High Court’s decision in an appeal was supposed to be released on June 27, but Little Leo wasn’t able to find much on the High Court of Tanzania website, or elsewhere, in terms of a written decision from either the High Court or District Court.  As also, Afro Leo would love if someone has either decision to share.

Here’s what we know based on what’s been circulating in the news.  Tigo was selling AY and MwanaFA’s music to Tigo customers to use as caller tunes (called ringback tunes in America), the music that can replace the standard telephone ring a caller hears while waiting for the line to be answered.  At least two songs released on the Bongo label were at issue in the case, “Dakika Moja” (“One Minute”) and “Usije Mjini,” which were both written and performed by the duo.  The case was brought before Magistrate Juma Hassan in Ilala District Court (a district in Dar es Salaam) in 2012 and was decided on April 11, 2016.  The court held that Tigo infringed the rights of AY and MwanaFA’s musical works.  Tigo was ordered to pay Tsh 2.16 billion (about 2 to 3 million bottles of Coca Cola) in special damages and costs and another Tsh 5 billion or 25 million, depending on your source, in general damages. 

Tigo’s appeal brought the story back into the news again in May.  Tigo filed for a stay of execution with the High Court, arguing that the actual damage suffered by the artists was not proven and that the court should consider the benefits the artists received because of Tigo’s work to create and offer the caller tones with their songs.  [Presumably that magical “promotional” benefit for which all artists should be happy to work.]  Tigo also is arguing that the artists cannot prove rights to the songs because they do not have registrations from the Copyright Society of Tanzania (Cosota, which is the collecting society authorized by the Copyright Act, Art. 46 and the entity listed with WIPO as being the national copyright office).

What is unknown is which rights the court held were infringed.  Ringback tunes present interesting issues here that often turn into interesting arguments.  (Citations to articles in The Copyright and Neighbouring Rights Act 1999)  Are the ringback tunes adaptations because they are only a part of the song? (4(1)(f).)  Did (or does when the tune plays) the telecom company reproduce the work? (4(1)(a).)  Is the ringback tune a public performance even though it only plays to one person at a time because it could play to anybody and does play to multiple people over the time it’s in use? (4(1)(g).)  Is the telecom distributing the work by sending the ringback tone to its customer’s phones? (4(1)(b).)  It would be interesting to see how the court sorted these answers under Tanzanian law.  Also, was it only the musical works that were held to be infringed?  What about the phonogram/sound recording rights (32(1).) or performance rights (31(c) and (f).)?  We know that AY and MwanaMF wrote the songs and performed them.  Did they also produce them?  Are producer’s rights held by their label, Bongo Flava [likely], and was the label a plaintiff in the case?

Tigo’s registration issue is also unclear.  There’s no registration requirement in the Tanzanian Copyright Act.  It sounds like (see Mwananchi below) they are arguing that the artists must prove their collecting society membership in order to sue, but it is unclear from the information available whether Cosota was the (or a) plaintiff.  Most of the reports make it sound like the artists themselves won the damages, but one can easily see how the press might confuse a collecting society or label winning on behalf of an artist who was infringed with the artist winning.  [Of course, if it was Cosota or Bongo Flava, one would wonder why only sue for these two songs.  According to The Citizen (see below), most of the caller tones in use in Tanzania belong to Bongo Flava.] 

Lastly, what are those “general damages”?  The reports seem pretty clear that the Tsh 2.6 billion are actual damages for the plaintiffs.  But the reports interchangeably refer to the other amount (the 5 billion or 25 million) as “damages” and “fines.”  Article 36(1)(b) allows the court to award exemplary damages “if the infringement is found to have been prejudicious to the reputation of the person whose rights were infringed.”  Is that what happened here?  The Copyright Act also has a “sanctions” provision for knowingly infringing on a commercial basis, which allows the court to impose a fine up to Tsh 5 million or 3 years imprisonment (42(1)(a).)  This seems like an odd criminal remedy in a civil suit, but perhaps that is what is going on here, though neither proffered amount matches the limit. In any case, is this extra amount a fine that goes to the government or additional damages that go to the plaintiffs?

There’s a lot left to find out, but one thing is very clear—and it’s been said by the plaintiffs—having copyright upheld in court is a big win for young artists in East Africa.

Similar cases have been brought in Kenya--where Safaricom settled with JB Maina for using his works in ringtones without his approval—,and in Nigeria, where MTN is in trouble again.

News sources for the case:
The Citizen
Daily Nation
Hat tip to African Hip Hop Blog and their Podcast for discussing the story

Friday, 1 July 2016

Request: Can you help Quentin?

Dear all

This morning I was driving to work and came across a man holding up the request below. I stopped and asked him to get in, parked and took him up to our offices, offered him coffee and consulted with him. His name is Quentin, he is unemployed, a street sleeper with some initiative and a sparkle in his eye. He has sketches for clothing designs in koki pen. He also has a brand name which he wants trade marked. He was also darn hungry and we got more biscuits. That was at 8am.

Quentin has no email or street address (in fact he has many). He has his identification number but no id book. He is armed with his koki pen and his drawings, a brand, his personality and a spark but as far as I am aware those are his only assets. No doubt he has an interesting, perhaps shocking and tragic story too. It is difficult to not want to help him turn his ideas and creativity into sustainable income and help alleviate the conditions he finds himself him. Indeed, I think that you will agree, it is our obligation as people, to try to help him do that.

At 9am, I was in a CEO SleepOut Trust meeting helping to update stakeholders partners ahead of the event on the 28th. The CEO SleepOutTM is of course an initiative aimed at raising awareness for the homeless.  The timing was entirely co-incidental and obviously fortuitous for both Quentin and those at the meeting. With Quentin's permission he was introduced to the meeting and shared his ideas. Unsurprisingly, there was an immediate interest in assisting him and I am now, at 11am, spreading that call for assistance to you, our readers.

Quentin returns to our offices next Wednesday. He doesn't want handouts, he needs people who can help brings his brands, designs and story to market in the clothing sector.  If you feel you can help please email me here.

Thank you


Tuesday, 28 June 2016

Djibouti’s Accession to the PCT

On June 23, 2016, WIPO welcomed the accession of the 150th Member State to the Patent Cooperation Treaty (PCT) when the Minister Delegate to the Ministry of Economy and Finance in charge of Trade, SMEs, Handicrafts and Tourism, Djibouti, Hassan Houmed Ibrahim deposited his States’s instrument of accession to the PCT.  The Treaty will enter into force for Djibouti on September 23, 2016.

Read more about it here.

This development is goods news for Djibouti as its patent filing system is still in early development (see Afro-IP posts here and here). One of the advantages of the PCT is that it allows designated member states to use prior art and patentability results from the international phase resulting in a less work and more efficiency in deciding whether to grant the patent at national level. 

That said, it's all well and good acceding to the PCT and legislating for patent protection but implementing it and educating people how to use patents is just as important. We look forward to news of how this is effectively achieved in an economy largely dependent on its service sector and strategic location as a Red Sea transit point.

Monday, 20 June 2016

What would BREXIT likely mean for IP in Africa?

On a limb .. pondering Brexit
Britain ranks very high on the trading partner lists of most African countries (especially Commonwealth influenced countries) as does the EU so how could a Brexit affect the continent from an IP perspective? A few thoughts.
  • The uncertainty caused by an exit is estimated to result in bureaucratic constipation and a slowing of trade as new agreements are forged between the EU and Britain, and Britain and the rest of its trading partners. This will not be good for African exports, possibly raising costs or restricting the market.
  • An expected initial depreciation of the pound will not be good for export prices but may increase demand and would likely decrease the cost of expensive British imports. The result could see a Africa becoming a greater market for more British brands resulting in more IP filings, and at the same time reducing the profit gap for potential counterfeiters or perhaps opening a counterfeit market for more goods.
  • It would become more expensive to trade with Europe (including Britain) from an IP perspective because ultimately Africa would need to treat them as two different national areas and hence add additional cost eg to protective filings or additional regulatory requirements such as customs recordals or regulatory mandates.
  • Europe trade agreements with Africa would need to be reconsidered and renegotiated with Britain. This would also raise cost and uncertainty. For example, trade agreements that give reciprocal protection for IP eg geographical indications within Europe would likely take time to renegotiate with Britain resulting in higher IP filings in the UK to obtain the additional protection.
  • The influence of the UK courts would also like increase again. For many years prior to Britain forming part of the EU common market these court decisions were highly influential in Africa but eventually gave way to European interpretation (though they are still highly influential). A Brexit would give the UK courts more freedom and African jurisdictions would either find themselves gravitating to them or away. Both options would create more uncertainty for interpretation of IP laws within Africa where there is still a dearth of jurisprudence.
  • Britain is the home of many African businesses wanting to trade in Europe. This would begin to change, resulting in new know how transfer exchanges between Africa and Europe.For example, Africans with British passports may now be restricted to work in Britain whilst businesses may be incentivised to relocate employees (including  Africans) to work in other parts of Europe.
  • The nationalistic fervour that seems to be making the polls as tight as as they currently are would, it seem (possibly as self justification even), perpetuate into  policy decisions and possibly law possibly making it far more difficult to trade freely with Britain or to live there. This could have an effect on everyone seeking a career opportunity including African sport stars. The transfer of knowhow would be affected.

Friday, 17 June 2016

5 Reasons Why You Need To Be At INTA's Building Africa With Brands Conference 1-2 September Cape Town

Why you need to be at INTA's first ever conference on African soil:

1. INTA is the single largest IP industry representative body on the globe meaning that a dedicated INTA conference on the African continent allows Africa and its unique issues, talent, innovation and creativity to be exposed to the largest worldwide IP network there is. This is for you.

2. The CEO of INTA, Etienne Sanz de Acebo, recently expressed the organisation's dedication to the continent at the 2016 INTA annual meeting in Orlando during his address at an invitation only meeting dedicated to Africa practitioners. This is therefore a dedicated attempt to mobilise African thought leadership and members on pan African IP issues. You need to be there.

3. The program has been designed to traverse material and speakers from across the continent, from industry and in house, and is lead and moderated by experienced practitioners.  You won't be disappointed.

4. It's not just a meeting for African practitioners to mix, mingle and network with other Africans but a chance to also meet with people and organisation based outside of Africa, who have an interest in Africa, in you. These could be future clients or contacts. Attendees could be future funders. They could be academics, business people, entrepreneurs, policy makers with useful insights. They could have solutions. You won't know unless you are there.

5. Have you ever been to Cape Town at the start of spring....?

Sign up here

Wednesday, 15 June 2016

IP policies in Africa no. 22: Ghana - update

Launch event 21 January 2016 source
In June 2014, I reported on Ghana's progress towards the development of a national IP policy with the assistance of  the Swiss Federal Institute of Intellectual Property (here).  Their work has come to fruition and Wayne Meiring reports on Managing IP (here) that the country published its policy in early 2016 which will be implemented from September 2016 - 2020.  However, the full text of the NIPPS document is not publicly available.
For further information see:
Government of Ghana Ghana's Intellectual Property Rights Launched
Ntrakwah & Company - Abena Ntrakwah-Mensah Ghana launches a National Intellectual Property Policy

Monday, 6 June 2016

Please Call Me Panel Discussion Thursday 9 June

Just a note that there are still places left to attend the PLEASE CALL ME discussion with Pavlo Phitidis (Aurik and well known Radio 702 guest) and Angela Cherrington (CEO of the Institute of Directors Southern Africa). Legal issues will be covered by Darren Olivier and Ashlin Perumall. The focus of the discussion will be on what the judgment means for businesses, of all sizes. Why is there such hype about this decision? Is it just a case of David prevailing over Goliath or is there something more fundamental that it teaches us?

You can sign up by clicking here for the hour discussion taking place between 8am and 9am, with breakfast and networking from 7am. There is no charge.

Friday, 27 May 2016

Appeal Court Decision in Africa's First Adword Case Provides Clarity

News just in from Bloemfontein is that M-Systems successfully defended the appeal by Cochrane Steel creating clarity that keyword bidding on a competitor's trade mark (on its own) is not passing off or unlawful competition in South Africa. The case will make it difficult to run an infringement suit on the same facts. It brings South Africa in line with worldwide jurisprudence on this issue, is Africa's first case on keyword use and will benefit Google's Adword program and other search engines. The appeal was dismissed with costs.

The history of the saga between market leader Cochrane Steel against new entrant M-Systems is outlined in this post here. The decision, handed down in just over a week from hearing, can be obtained here. Breaking news of Google's developments on their Adword service for mobile devices and native advertising is located here.

Monday, 23 May 2016

Africa is @INTA

From the madness that is INTA, here is a short synopsis of Monday and Tuesday events, table topics and panels that include Africans or cover African related issues.
You can also follow the INTA through twitter on #INTA16 where you can enjoy tweets from the likes of @Kisch_IP, @RouseIP, @AdamsAdamslaw, @ManagingIP, @WTRmagazine @WorldIPReview, @INTA, @AfroIP, @Ivoryblossum, @KellyThompsonSA, @DarrenTOlivier amongst others   

Monday, May 23

CM02 Utilizing Regional IP Attachés Representing the U.S., Europe, & Japan Abroad: For Brand Owners and Policy Makers
Intermediate Level

Many national IP Offices station IP Attachés in regions throughout the world to advocate for sound international IP policy and to help protect their respective commercial interests abroad. Learn about the valuable resources and support provided by these IP Attachés and how to utilize them as both sources of information and as allies in trademark protection and anticounterfeiting enforcement activities. Speakers will discuss:

  • As a brand owner or brand owner representative, what can IP Attachés do for me?
  • How do IP Attachés initiate and take part in anticounterfeiting efforts? 
  • What types of policy matters to IP Attachés promote? 
  • What types of outreach and education to IP Attachés provide to the public and to local governments?
  • How do IP Attachés coordinate with their respective home offices and other government agencies? 

Aisha Salem, USPTO IP Attaché for Middle East and North Africa (Kuwait)

Gerardo Munoz de Cote, Televisa, S.A. de C.V. (Mexico)
Leila Equinet, INPI French PTO (United States)
Riki Kishimoto, Ministry of Foreign Affairs (Japan)
CM21 Anticounterfeiting Strategies in South East Asia and Africa 
Intermediate to Advanced Level

This interactive session will present a case study where brand owners and regulatory bodies are informed of strategies for effectively combating counterfeits in any industry area. Speakers will discuss highlight issues and offer perspectives from each region represented. 

Lara Kayode, O. Kayode & Company (Nigeria)

Kingsley Ejiofor, The National Agency for Food and Drug Administration and Control (NAFDAC) (Nigeria)
William Mansfield, ABRO Industries, Inc. (United States)
Nick Redfearn, Rouse & Co. International LLP (Indonesia)

 CM51 Where Am I? Transporting Your Trademark Career to a Different Country
Beginner Level

It is often said that the world is a global village, and in the world of trademarks this is now truer than ever. This session highlights the benefits to corporations, service providers and law firms of having expats, with their unique skills and experiences, on their team. It will also address the feasibility of transferring licenses to practice in other countries and ways to continue your career without a local license. Expats who have successfully transferred their careers cross border will share their experiences. Challenges and pitfalls to such a professional move are all part of the journey and will also be discussed.

The panel consists of a lawyer from the US who started his own firm in Brazil, an Australian lawyer who immigrated to the US and worked initially in law firms and now is with an international legal service provider, a lawyer from South Africa who is now in-house counsel in Europe and a New Zealand lawyer who is now partner in an international law firm, with her office located in Dubai.

Discussion points will include:
  • What are the unique skills that expats bring to corporations, firms and service providers?
  • Transferring and applying “local” trademark knowledge to a career in a different country.
  • Must one obtain a local law license to work in the trademark field in a country other than where they initially qualified?
  • Ethical considerations in being subject to two separate and possibly conflicting ethical guidelines. 

Kay Rickelman, Spoor & Fisher (South Africa)

Jayne Elizabeth Durden, CPA Global (United Kingdom)
Barry Gerber, Philip Morris International Management SA (Switzerland)  
Walter W. Palmer, Pinheiro Palmer Advogados (Brazil)

Africa Reception (5pm - 6pm - Convention Centre) 
(By invitation only)

This reception provides registrants from Africa with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

Tuesday, May 24

RT20 Africa and Middle East Regional Update: Opportunity and Growth Amidst the Turmoil of the Middle East and a Rising Africa
Intermediate Level

An overview on trademark developments in the Gulf Cooperation Council (GCC)/Levant, Sub-Saharan Africa, and North Africa. This panel will discuss the impact of instability in the Middle East on the trademark regime, the GCC Trademark Law, Kuwait accession to the Paris Convention, well-known marks and online enforcement. Experts will look back at the effects of OAPI joining the Madrid Protocol at the end of 2014, and strengthening ties with the power houses of Asia. 

Hoda Barakat, Hoda Barakat Legal Consultancy (United Arab Emirates)

Elie Atallah, Brand Owners' Protection Group (United Arab Emirates)
Karim El Helali, Oracle Systems Limited (Middle East)
Charles Webster, Spoor & Fisher (South Africa)

Friday, 13 May 2016

FridayLite by Nic Rosslee

It’s the ten year anniversary since the most humorous moment in trade mark law

Ten years ago, Guy Goma arrived at the BBC in London for an interview.

Standing around, waiting to be interviewed for a position in the BBC’s IT department, the conversation between a representative and Guy probably went something like:

Are you Guy?

Yes, I am Guy.

Please come with me.

Minutes later, Guy Goma was being interviewed. However, he was being interviewed on BBC News as the tech expert Guy Kewney commenting on the trade mark dispute between The Beatles’ record label, Apple Corps and Apple Computers.

We were happy to see that Guy saw the bright side of the situation and later made a series of celebrity appearances on a number of television shows including Friday Night with Jonathan Ross.

Thank you Guy for bringing us one of the greatest moments in the age of the internet.

We think you did a good job and sometimes feel the same way about the latest trade mark law judgments: surprised.


This FridayLite was brought to you by the pen of Nic Rosslee (Associate at Adams & Adams). Follow him on twitter @nicrosslee. If any reader wants to share a humorous moment on IP for FridayLite, please email us here. For wayback FridayLite's click here.

More on Please Call Me - Not Out of the Woods Yet (Guest Post by Graeme Gilfillan)

Copyright Lawyer: Graeme Gilfillan
Readers will recall this recent post on the recent Please Call Me con court decision which is now followed up by a guest contribution from copyright lawyer Graeme Gilfillan highlighting some key and interesting questions including whether Mr Knott-Craig can now be sued by Vodacom or by Mr Makate (or perhaps  by its shareholders says Afro Leo), the conduct of Vodacom after Mr Knott-Craig's departure, the interface between copyright law and idea protection, and the possibility that the determination of a reasonable payout may still endure for some time. Read his guest post "Not out of the woods yet – a copyright lawyer take on the Concourt’s judgement in the Please Call Me caseby clicking here

The podcast discussion of the case on Power FM on Victor Kgomoeswana's show with Maclean Sibande (CEO of the Innovation Hub) and Darren Olivier (Adams & Adams) is now up and can be located here.

Thursday, 12 May 2016

The USTR Special 301 Report 2016 - Africa in review

Afro-IP regularly reports on how Africa fares in the Special 301 Report issued annually by the USTR (see links to some previous posts below). The 2016 Report was released at the end of April 2016. The generation of the report through a unilateral US process and its goal have been protested by several countries. For instance, as noted by Mike Palmedo in his post on the 2016 report, both India and Chile have registered their displeasure. Palmedo writes:

  • Indian Commerce Minister Nirmala Sitharaman gave a statement to the Lok Sabha (Lower House of the Legislature): “The Special 301 Report issued by the United States under their Trade Act of 1974 is a unilateral measure to create pressure on countries to enhance IPR protection beyond the TRIPS agreement. Under the WTO regime, any dispute between two countries needs to be referred to the Dispute Settlement Body of the WTO and unilateral actions are not tenable under this regime.”

Similarly, some law professors and civil society groups have sounded the same caution about the listing of WTO member states  being a probable violation of  "either the WTO’s dispute settlement understanding or GSP enabling clause." Following the filing of their Joint Special 301 Comment by Law Professors and Civil Society Groups, several scholars and activists participated at the Special 301 hearing (see here for a post hearing report by Sean Flynn and here for the transcript of the full hearing).

Two African states are listed in the priority watch list  (Algeria) and the watch list (Egypt) and several others are mentioned in the 2016 report as summarized, in alphabetical order, below -  

  • pp 23 and 45: Algeria's promotion of local pharmaceutical products and medical devices is cited as the reason why she remains on the Priority Watch List.  For a contrary view, see the AU's comments on Algeria's approach in its Pharmaceutical Manufacturing Plan for Africa: Business Plan at p41. 
  • p9: Burundi's becoming party to the WCT is noted.  
  • p53: Egypt remains on the Watch List because of her "failure to combat reportedly widespread usage of pirated and counterfeit goods, including software, music, and videos, and the failure to implement a transparent and reliable patent registration system."
  • p9: Kenya receives praise for boosting her anti-counterfeiting efforts and preparing draft trademeark and copyright amendments which "strengthen IPR protection and enforcement" (see here for commentary).
  • p9: Nigeria and  other Sub-Saharan states are encouraged to "similarly to address the factors that undermine effective IPR protection and enforcement." Nigeria is also mentioned at p 15 where it is noted that she is "reported to have [an] ineffective or inadequate IPR enforcement system". She is also mentioned at p20 in relation to her government procurement regulations and their impact on the trade secret protection of source code. Her final mention is at p22 where her 2013 Guidelines for Nigerian Content Development in Information and Communications Technology (ICT) are cited, with disapproval, for their promotion of local production or the utilization of Nigerian material and labor across a broad range of ICT goods and services "at the expense of of foreign firms, investors, and multinational enterprises."
  • p10-11: South Africa's participation with the US and Brazil in the WIPO Re:Search Consortium is lauded as enhancing access to medicines. (For fundamental reform suggestions to enhance access to medicines see here for a post on the UN's High Level Panel on Access to Medicines (HLP) hearings on Johannesburg).   A note is also made of US-South Africa engagement on GI-related concerns at p24. 
  • p9: Tanzania's joining of UPOV 91 is noted with approval. For a robust discussion of the merits this development see Chidi Oguamanam Breeding Apples for Oranges: Africa's Misplaced Priority Over Plant Breeders' Rights (2015).
The USTR's views are not the last word on what is appropriate for African IP regimes and each state would do well to consider other views and its own context in arriving at its response, if any, to the above US Special 301 statements. In the words of South Africa's Minister of Trade and Industry at the WIPO International Conference on Intellectual Property and Development in April:
  • "While generalized conclusions can offer insightful guidance, it may not be applicable at all         times to all countries ... it is vital that research is undertaken in a manner that context specific,   taking into account the level of development of the country under consideration, with a clear     focus on its industrial profile and capabilities.” (For a full report on his comments see W New    South African Trade Minister Opens WIPO Conference With Call For Appropriate IP  IP-          Watch, 7 April 2016.)

The U.S. is watching you.... Monday, 3 June 2013
USTR Special 301 Report - Monday, 4 May 2009
African Countries Suggested for the USTR Special 301 Report - Saturday, 21 February 2009