Wednesday, 29 October 2014

South Africa CLEARVU ruling out today - keyword advertising

Cochrane Steel had sought to interdict M-Systems for passing off because it bid on CLEARVU as a Google keyword generating adverts for its own products. The court held that where the use is solely as a keyword (i.e. it is not visible in the advert triggered) there is no likelihood of confusion or deception and therefore passing off does not occur. 

M-Systems bid secure
The court also rejected an attempt to establish “leaning on” as a new species of unlawful competition. The interdict application was rejected and costs were awarded to M-Systems. The decision was handed down this morning in the Gauteng High Court (Johannesburg) by Judge Nicholls.

Timo Meintjes of M-Systems is “pleased with the decision because it promotes choice and competition which are good for the consumer, especially when there is no likelihood of confusion which the Judge found to be the case

Yours truly and Ian Learmonth who acted for M-Systems provide further legal commentary here. Background to the decision can be obtained here

A discussion of the case will take place through an interview with Gareth Cliff at CliffCentral studios on 13 November at 6pm. If you want to register please email us here. Spaces are limited so please hurry.

Notes:

The case is important because:

·         it is the first case in Africa on whether the bidding on a competitor’s trade mark for keyword advertising is unlawful, an IP issue of much national and international debate
·         it provides further clarity on the scope of passing off, in particular that the concept of “leaning on” is not part of our law and that keyword bidding (without more) is unlikely to be trade mark infringement
·         for Google, it supports their advertising model for South Africa
·         it is of interest to all brand owners that use a website or other online marketing platforms

Take home points for brand owners are:

·         Bidding on a competitor’s trade mark as a keyword is not generally unlawful unless:
o   There is a likelihood of confusion eg counterfeit site or there is use of the mark in the text of the sponsored link or advert which leads to confusion
o   The trade mark is registered and well known, and the owner is able to establish that there is an unfair advantage taken, or dilution can be shown
·         Legal advice should be sought if a competitor’s trade mark will be used for keyword advertising
·         Brand owners need take steps to combat the risk of aggressive adwords campaigns by competitors when formulating their marketing strategies

The case is open to a request for leave to appeal. Link to the judgment here.

Tuesday, 28 October 2014

Ebola & IP, Adwords decision

It did not take long for an article to appear seeking to blame intellectual property for perpetuating the Ebola crisis affecting West Africa, and here it is: "Ebola Vaccine Delay May Be Due To An Intellectual Property Dispute":

"For the past six weeks, about 800 to 1,000 doses of an experimental ebola vaccine have been sitting in a Canadian laboratory instead of being dispensed to West Africa. The delay, it would now appear, may be on account of an intellectual property spat."

The article has attracted no less than 3000 FB likes, 73 comments and 15 top of class stars! But what unfortunate rubbish it is.

The piece stirs and seeks to capitalise (rather successfully it would seem) on two emotive issues (IP & the lack of access to drugs & the ebola outbreak) without a proper analysis of whether in fact there is a relationship between the two. It simply alludes to a connection and lets the groundswell begin on what the author suggests is "epidemic profiteering [caused by the patent system]" but with no real support for his view.

Fortunately not all commentators have agreed with him. In fact Catherine Saez of the excellent IP-Watch has penned several more balanced articles. Some of these were published well before Dvorsky's opportunistic outcry, which rather strangely does not mention them. Unfortunately, Catherine's articles do not appear to have reached as many as Dvorsky's piece has, attracting just a handful of comments but such is life on an IP blog. Hopefully, this post gives them just a little more air.

And, to a completely different IP issue, news just in is that those who have been following the Adwords dispute in RSA can expect to receive a judgement summary tomorrow.


Friday, 24 October 2014

India investigates Mr Cricket software over IP misuse

As Hashim Amla completed his 16th ODI ton within the last few hours in what looks to be an easy victory for the South Africans over New Zealand (currently 90/5 chasing an imposing 289), Hashim's picture appears in The Indian Express under the heading Bangalore Cops Probe South African Cricket Team's Analyst

Hashim is pictured alongside software analyst Prasanna Agoram, the performance analyst of the South African cricket team to whom he dedicates a triple ton in England. According to the article, Mr Prasanna who recently licensed his software tool Mr Cricket to Cricket South Africa, is being investigated for breaching copyright and know how laws in India:

Prasanna
"In the first of its kind case in India since the emergence of computer analysis of cricketers as a key coaching tool, cyber crime police in Bangalore are investigating a top performance analyst with the South African national cricket team for alleged theft of proprietary coaching software belonging to a company run by a former India and Karnataka cricketer."

We are seeing more and more of these types of cases (see here and here, for example) and it has been apparent from the audience attending these Breakfast Seminars that the protection of know how and software is increasingly of interest. 

Software, is of course, largely protected by copyright and contractual relationships regulating confidential information and termination of employment (eg restraints of trade), and occasionally a smart patent lawyer can obtain patent protection. However, because of:
  • the difficulties in determining who owns copyright in software (eg establishing who did exercise control under South African law, for example), 
  • showing proof of copying (re-engineering is generally acceptable and it can be difficult to obtain evidence of copying) 
  • NDAs and employment contracts are often badly drafted or not entered into at all; and
  • courts can be expensive and understood to be risky
the perception (at least in South Africa) is that very little protection exists for software. The reality though is that proper agreement work regulating ownership and proper advice on IP structuring within ventures can save a tremendous amount of time, cost and effort when things go wrong (which they often do as is illustrated by The Indian Express). 

There is also strong protection under the Counterfeit Goods Act for software piracy that is often overlooked as a means of obtaining evidence of copying and quick relief against copying. In other parts of Africa, eg Kenya and Nigeria specific copyright enforcement structures have been set up and have been very effective in protecting software.

It will be interesting to see what happens in India, reporting on the first ever case of its kind. If anyone has any more information, please share it. This is not the first time this blog has covered cricket related technology. For long time readers they may remember this post and the series of posts that followed. Have a good Friday. New Zealand now almost all out. Damn good software that is.

Wednesday, 22 October 2014

Search tools gradually open for Africa

From the desk of MIP's managing editor James Nurton comes news that Tunisia is the latest country to allow access to its trade mark database to TMView which now allows searching of "almost R24.5 million trade marks". You can read more about the development here.

Afro-IP notes that Morocco is the only other African country on the TMView list which is dominated by Europe and North America, and includes Russia.

Although competitor search tool Saegis offers access to a greater number of trade mark records in Africa, it is not free, unlike TMView.

My own experience is that whilst the search tools are very quick and useful, in many African states a physical check of the actual register is still required to rely on the information, constraining users to unfortunately spend more time and money. This is changing slowly as more and more registries go online.

Tuesday, 21 October 2014

RSA: National Summit on Intellectual Property (IP) and Access to Medicines

Yesterday (20 October 2014) the TAC hosted its National Summit on Intellectual Property (IP) and Access to Medicines  (see its report on the summit here). An open letter to the President and the Minister of Trade and Industry was handed over to government representatives at the Summit. The letter is available in full here. The letter and summit remind us all once again of the urgent need to finalise the national IP policy and to thereafter effect some meaningful change to patent law.  If I were to sum it [pun intended] up in one phrase, I'd say 'where is the national IP policy?

Thursday, 16 October 2014

Upcoming Events for Africa’s IP Gurus

Two IP events relevant to Africa recently wandered onto this Little Leo’s hunting grounds.  For those who have the inclination and ability to travel, these are worth checking out.

Uganda

Open Air booksNext Monday, 27th October, the Uganda Christian University and Center for Health Human Rights and Development (CEHURD) as a participant in the Open AIR project are presenting a public lecture on Intellectual Property and Innovation in Africa

The program will feature world renowned experts and Open AIR researchers Dr. Jeremy de Beer and Dr. Chidi Oguamanam, both coming from the University of Ottawa in Canada.  Both are also contributors to the Open AIR books Innovation & Intellectual Porperty: Collaborating Dynamics in Africa and Knowledge & Innovation in Africa: Scenarios for the Future, which were released last December at the Open Air conference in Cape Town. (Afro-IP posts on the conference here.)

The lecture is from 2pm – 4pm Monday in lecture room (M3) at Uganda Christian University Mukono.  If you are interested in attending, please RSVP with Ms. Primah Kwagala at kwagalap@gmail.com.  There is a book launch event the following day, 28 October at Protea Hotel Kampala from 9am – noon.  Tickets for the book launch are available through Eventbrite.

Geneva

WIPO, WHO and WTO are collaborating on a program covering Innovation and Access to Medical Technologies – Challenges and Opportunities for Middle-Income Countries on 5 November.  This all-day event (8:30am – 5pm) will cover plenty of hot topics, including Ebola, trends in medical technologies, and challenges in ensuring access to medical technologies.  Full pdf schedule here.

Since roughly half of the countries on the continent are classified as middle-income countries in some way (one list here), this program could be relevant to a number of Afro-IP readers.  It’s also nice to see the big organizations collaborating together to discuss important issues.  Registration is open until 3 November through the WTO site.

 

If any readers are able to attend either of these programs, we’d love to hear reports back about them.

Wednesday, 15 October 2014

Seychelles Industrial Property Act inching closer to mattering

Seychelles enacted a new Industrial Property Act about 6 months ago and it is now available for your perusal.  It is not yet in effect, though, so don’t start relying on it yet.  The new Act is available here in a delightfully nostalgic looking pdf. Not great for searching, but excellent for reminiscing about long hours in the library.  For those more interested in usability than nostalgia, the version submitted to WIPO is searchable.

The Act covers Patents, Utility Models, Industrial Designs, Integrated Circuits, Trademarks and Geographical Indications (combined in the same part), and Unfair Competition.  The Act includes enforcement provisions for both civil and criminal enforcement.  According to Inventa International, the new legislation is in preparation for Seychelles to join the WTO.  The purpose of the act certainly seems in line with the purpose of IP purported by TRIPS:

AN ACT to provide for the adequate protection and enforcement of industrial property rights in order to encourage local inventive and innovative activities, stimulate transfer of technology, promote foreign direct investment, create competitive business environment, discourage unfair practices, enhance free and fair practice and thereby foster socio economic development and for matters connected therewith or incidental thereto.

Here’s a great opportunity.  Many of the goals listed above are measureable.  Since the Act is not yet in effect, we could get some baseline numbers for current foreign direct investment amounts and number of existing technology transfer projects and compare those down the road at the 5, 10, 20, etc. -year points after the 2014 Act goes into effect.  Then we can analyze whether TRIPS-level IP laws really do increase all these things.

In the meantime, we’ll settle for covering some aspects of the new Act worth mentioning. 

Patents

Plants, micro-organisms and natural substances are not patentable; neither are business methods. The Act follows the first to file rule, however applicants who have already applied for a patent in a WTO member country can receive right of priority (See Sect. 13).  Patent terms are 20 years from date of filing and annual fees are due (yes, every year) to keep the patent valid.

The Act provides for compulsory patent licenses in the cases of public interest, non-practice (“insufficiently exploited in Seychelles…after a period of 4 years”), anti-competitive practices, abusive licensing, and needs of a subsequent patent. (Chapter 5.)

Industrial Designs

Industrial Design registrations are valid for 5 years with the possibility of 2 additional 5-year renewal terms.  The same compulsory licensing provisions for patents apply to Industrial Designs.  Changes in ownership must be registered in ordered to be enforced against third parties.

Trademarks

The Act provides for right of priority for trademark registrations, as with patents.  Three-dimensional marks can be registered, and there’s provisions for what to do when the mark cannot be visually perceived, which suggests that sound and scent marks may be registerable.  Trademark registrations are valid for an initial term of 10 years with renewals available at 7 year intervals.

Monday, 13 October 2014

IP and capacity-building: either/or or both/and?

"Formal IP System Does Not Fit Africa, LDCs Need Technological Capacity, Speakers Say", by Catherine Saez, was posted on Intellectual Property Watch last week. You can read it here.

This article summarises discussions by a panel addressing the relationship between intellectual property and innovation in Africa, in particular in the informal sector, which took place on the final day of the World Trade Organization Public Forum on 1 to 3 October.

Readers are invited to form their own opinions, in the unlikely event that they do not have their own already.  This blogger's position is that it's not an either-or issue. Africa needs both a formal IP system and more technology capacity-building because each enriches the other.  This blogger is also concerned at the ease with which Africa is at one moment treated as though it were a single homogenous and generally rather hopeless country and then, minutes later, described in terms of the vast diversity which makes it so impossible to generalise across its culturally, economically and politically separate regions.

Comments, anyone?

Tuesday, 7 October 2014

Cape Verde’s New Home for IP

Merging existing government divisions into a single new entity is a daunting task.  New processes, new names, less faces, there’s a lot to consider.  Musings of what if’s have been heard before, “what if we combined office x and office y?” Inventa International brings us news of just such a merger already complete.  Cape Verde merged its Quality Management Institute and Intellectual Property Institute to form the (very merged sounding) Quality Management and Intellectual Property Institute (“IGQPI”).  The new IGQPI will handle all intellectual property maters.

This little Leo is interested to see how this merger might play out on the international stage.  The old Quality Management Institute was responsible for things outside of IP but definitely affected by it, such as energy sector development. With better integration between IP and development fields within the government, will Cape Verde discover a new balance between property rights and other rights?  Will IGQPI be more aware than other Copyright, Industrial Property or IP offices about all aspects of the interplay between IP and Innovation?  And if so, despite Cape Verde being a rather small country, will it be able to share its experiences with larger countries in the region and in international forums like WIPO?

Inventa International’s full release: http://www.inventa.com/news/cape_verde_new_institute_for_intellectual_property_and_quality_management_matters

IP policies in Africa no. 35: Mozambique

Mozambique has had a ten year IP Strategy (2008 - 2018) in place since 2008, which is available here.

The Strategy is informed by the following vision: 'The Mozambican government regards intellectual property as an instrument for stimulating and protecting creativity and innovation to promote the country’s economic, scientific, technological and cultural development'. Its overall goal is 'to create the basic preconditions for promoting creativity, the results of scientific and technological research and local innovative capacity, thereby furthering the use of the intellectual property system for the benefit of the scientific, technological, economic, cultural and social development of the country'. Well said, says this Leo.

Much thought has gone into formulating the Strategy as it draws from a multiplicity of other relevant documents, policies and programs, namely:
'the main national, regional and international instruments guiding Mozambique’s development, such as Agenda 2025, the Expanded Program for the Reduction of Absolute Poverty (PARPA), the Government’s Five-Year Plan, the Millennium Development Goals, the New Partnership for Africa's Development (NEPAD) and the various policies and strategies of the relevant sectors in the sphere of intellectual property, in particular the Policy on Science and Technology, the Strategy for Science, Technology and Innovation, the Industrial Policy and Strategy, the Rural Development Strategy, the Policy on Traditional Medicine, the Cultural Policy, and the Strategic Plan on Education and Culture'.

The contents of the Strategy are as follows:

  • Overview of Intellectual Property in Mozambique 
  • Importance of Intellectual Property
  • Vision and Goals  (see above)
  • Strategic Framework and Strategic Areas: These are well articulated and are quite detailed. They centre around the following seven areas:


  1. Dissemination of IP;
  2. Education and IP;
  3. Scientific and technological research;
  4. Innovation and competitiveness in industry;
  5. Traditional knowledge and biodiversity;
  6. Creativity and development of the cultural industry; and
  7. Administration of the intellectual property system.


The Strategy also consists of ANNEX II: Intellectual Property Action Plan which outlines 25 strategic goals to which short and medium term actions are assigned, as is a mid-term (2012) achievement target. Any planning pundit will agree that this is how one sets SMART goals. They are Specific, Measurable, Assignable or Achievable (depending on who you read), Realistic and Time-related.

This is an impressive effort from Mozambique which seems to be doing well as far as its IP environment is concerned. As Kingsley noted here, it also has a vibrant IP Office website and is providing regional IP leadership in the person of the former  Director-General of Mozambique's Industrial Property Institute (IPI) Mr Fernando Dos Santos who is the current Director-General of ARIPO.
-------------------
Recent Afro-IP posts on Mozambique
The Global Innovation Index: Ranking African countries since 2007..
Mozambique signs up for Berne at last!

Thursday, 2 October 2014

MARQUES reports on Africa

This blogger's attachment to European trade mark organisation MARQUES is well known and of some antiquity. He was therefore delighted to see that Mariëtte Du Plessis of the MARQUES Trade Mark Law and Practice Team has provided an updated report on IP developments in Africa. According to the HouseMARQUES e-newsletter:
Africa has seen what has been described as a "remarkable growth" since the mid-1990s, with 10 of the world's 11 fastest-growing economies by 2020 expected to emerge from the continent.

This has prompted greater concern among investors about protecting and commercialising their intellectual property in Africa. In a paper published on the Trade Mark Team's website, Mariëtte Du Plessis of Adams & Adams reviews recent developments in Algeria, Egypt, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, South Sudan, São Tomè & Príncipe, Sierra Leone, South Africa and Tunisia.

She also provides an update on ARIPO and OAPI, the latter of which has confirmed its intention to join the Madrid Protocol.
If you click through to the Team's web page, you will find that the report is accessible to MARQUES members only. However, if you want sight of it you may find it worth contacting Mariëtte on a personal basis and asking there is any chance that you might get to see it -- particularly if you are with a firm or company that is contemplating joining MARQUES and would like to see the quality of its work.

Tuesday, 30 September 2014

Egypt, Oman sign patent pact

The latest Newsletter of NJQ & Associates reports that, on 13 September 2014, the Head of the Academy of Scientific Research and Technology in Egypt signed a memorandum of understanding agreement with the Minister of Industry in Oman with respect to cooperation in the field of patents and other IP rights.

This memorandum looks forward to a degree of cooperation between the countries' respective patent offices, and the Egyptian Patent Office (EGPO) -- an accepted examination authority for PCT purposes -- will host researchers from the Oman Patent Office (OPTO) for training in substantive examination of patent applications in Oman. The EGPO will send examiners to the OPTO for training purposes and will also examine all pending patent applications pending in Oman.

Monday, 29 September 2014

New WIPO Senior Management team

Thanks to a post over at IPKat (here) which alerted this Leo to the approval of a new leadership team at WIPO to work with DG Gurry after he begins his new term on 1 October. The rest of his team will commence their terms on 1 December. They are:
Ms. Anne Leer (Norway), Deputy Director General, Culture and Creative Industries Sector.
Mr. Mario Matus (Chile), Deputy Director General, Development Sector.
Mr. John Sandage (United States of America), Deputy Director General, Patents and Technology Sector.
Ms. Binying Wang  (China), Deputy Director General, Brands and Designs Sector.
Mr. Minelik Getahun (Ethiopia), Assistant Director General, Global Issues Sector.
Mr. Naresh Prasad (India), Assistant Director General, Chief of Staff.
Mr. Ramanathan Ambi Sundaram (Sri Lanka), Assistant Director General, Administration and Management Sector.
Mr. Yoshiyuki Takagi (Japan), Assistant Director General, Global Infrastructure Sector.

For those who are wondering, the current Senior Management Team consists of
Mr. Geoffrey Onyeama (Nigeria), Deputy Director General, Development Sector
Mr. James Pooley (US), Deputy Director General, Innovation and Technology Sector
Ms. Binying Wang (China), Deputy Director General, Brands and Designs Sector
Mr. Christian Wichard (Germany), Deputy Director General, Global Issues Sector
Mr. Trevor C. Clarke (Barbados), Assistant Director General, Copyright
Mr. Ambi Sundaram (Sri Lanka), Assistant Director General, Administration and Management Sector
Mr. Yoshiyuki (Yo) Takagi (Japan), Assistant Director General, Global Infrastructure
Mr. Naresh Prasad (India), Chief of Staff


Ms Wang and Mr Takagi are the only incumbents who have retained their portfolios.
................
see WIPO's Press Statement here

Thursday, 25 September 2014

OAPI-SAIC: China strengthens ties with one of Africa's most prominent IP registries

This is the third of three reports by Aminou Ndala TITA based in Cameroon on developments at OAPI this month:

"Liu Yuting, Vice Minister of the State for Industry and Commerce of the People's Republic of China visited was in OAPI for a working visit from the 9th to 11th September 2014.

This visit which comes as a result of the cordial relationship that exists between the Chinese Ministry of Trade and Commerce and OAPI will end with the validation of the plan of action between both structures for the period 2014/2015.


The action plan includes a range of issues amongst others exchange of information, technical support, advocacy and training on various topics such as trademark examination, counterfeiting and several other themes. The publication of information on the respective websites of each organization is also on the plan.

Another high point on the visit was the meeting between the Chinese Minister and his Cameroon counterpart. The opportunity was given to Liu Yuting and the large delegation of five employees who accompanied him, to exchange views on China-Cameroon relations in the fields of industry and commerce.  Aspects such penetration strategy of the international market, China's expertise in standard and quality, support for industrialization and processing of local raw materials locally, are key areas where cooperation with China must be strengthened. Cameroon home country for all members of the OAPI has benefited from the forty-eight hour visit of the Chinese authority.

OAPI has every intention of boosting its volume of application by adhering to international treaties and conventions."

You can follow Aminou on the twitter handle @aminoudnalatita