Thursday, 9 August 2018

Chijioke Ifeoma Okorie


Can the evidence of application for trademark registration made by a company (Toyota Motor Corporation), which is aware of another company’s (Subaya Metalware Nigeria Limited) ownership of similar trademark amount to the infringement of such trademark?

This is the principal question that the Court of Appeal was asked in the case of Toyota Motor Corporation v. SubayaMetalware Nigeria Limited and the Registrar of Trademarks CA/L/1003/2016 decided late last year.

Subaya Metalware Nigeria Limited (Subaya) had instituted an action at the Federal High Court (the court of first instance) against Toyota Motor Corporation (Toyota) for trademark infringement and passing off. Subaya claimed that as a result of several suits pending at the court of first instance between Subaya and Toyota, Toyota was aware of Subaya’s ownership of trademark, “Lexus” in Classes 9 and 11 of the trademarks register. By going ahead to apply for registration of the mark, “Lexus and Device”, using the “Lexus” mark in advertising its products and causing the Registrar of Trademarks to publish the fact of application in the trademark journal, Subaya claimed that Toyota acted in bad faith and infringed upon its (Subaya’s) trademark. During the course of the suit, Toyota withdrew its application for trademark registration and the Registrar of Trademarks issued appropriate acknowledgement of the withdrawal. 

2019 Lexus NX
The court of first instance granted Subaya the reliefs sought and awarded damages against Toyota for trademarks infringement and passing off. Toyota appealed to the Court of Appeal which reversed the judgment of the lower court and held that Subaya did not prove its claim for trademark infringement against Toyota as an application for trademark registration whether or not made in bad faith, does not amount to trademark infringement.

Issues raised on appeal
In his lead judgment, Justice Tijiani Abubakar identified 3 issues raised by the parties while holding that the other issues relating to damages for trademark infringement would amount to an academic exercise given that the claim for trademark infringement was not proved. Page 45 of the judgment.

Whether sections 5(1) and 9(1) of the Trademarks Act, can be a basis upon which to found the legal personality of a party, so as to have the requisite locus standi, without the production in evidence of the certificate of incorporation?

Toyota contended that parties joined issues on the juristic status of Subaya. The Court of Appeal held that this was not so because Toyota did not properly deny Subaya’s averment in its Statement of Claim regarding the fact of its incorporation. Accordingly, that averment having not been properly denied was taken to have been established. See page 32 of the Judgment. Having taken the matter of Subaya’s juristic status as established, the Court of Appeal did not resolve the question of whether sections 5(1) and 9(1) of the Trademarks Act can be the basis upon which to found the legal personality of a party.

Whether, by applying for registration of the mark, LEXUS & Device despite being aware of Subaya’s registration in Classes 9 and 11, Toyota had infringed on Subaya’s said trademark
In resolving this issue, the Court of Appeal considered section 5(2) of the Trademark Act, which stipulates the elements that must be established to succeed in a claim for trademark infringement. The Court held that a Claimant seeking reliefs for trademark infringement must show that (a) the defendant is not the trademark owner or a permitted registered user and (b) the defendant has used the mark or a similar mark in the course of trade and in a manner that is likely to deceive or cause confusion. See page 39 of the Judgment.

Lexus Dome Camera
The Court of Appeal held that an application for trademark registration even if made in bad faith, is not use in the course of trade and therefore, cannot amount to an infringement of Subaya’s trademark. In the Court’s view, section 18 of the Trademark Act required any entity seeking to use a mark to apply for registration of such mark and therefore, compliance with such statutory requirement cannot amount to infringement. See pages 39 and 40 of the Judgment. Evidence of application for trademark registration cannot amount to trademark infringement regardless of whether or not the applicant for registration had prior knowledge of the existence of registration of the proposed mark. See page 41 of the Judgment.

The Court of Appeal rightly identified the elements that must be proved in an action for trademark infringement. However, in holding that an application for trademark registration cannot be an infringement of trademarks, the Court of Appeal did not define the concept of “use in the course of trade”. The Court did not also consider Subaya’s claim for passing off.

The meaning of “use in the course of trade” was a crucial factor in the appeal and it would have been helpful if the court proffered a definition. That is not say that the Court of Appeal’s decision was wrong – evidence of application for trademark registration is compliance with statutory requirement. Such cannot amount to evidence of trademark infringement.

Subaya hinged its claims at the court of first instance and its arguments at the Court of Appeal on Toyota’s “prior knowledge” and “bad faith”. See pages 6 and 18 of the Judgment. It also led evidence that Toyota advertised the Lexus mark after the Registrar of Trademark issued Toyota with a letter of acceptance of its application for registration. See page 24 of the Judgment. Subaya appears not to have considered the question of what should be the import of prior use of a mark before application for registration.

Most companies make use of a proposed mark for a period of time before approaching the trademark registry to apply for the registration of such mark.  Afroleopa has had the opportunity to handle product registration at the National Agency for Food and Drug Administration and Control (NAFDAC) and is aware that applicants are required to provide their certificate of trademark registration. At the application stage, proof of application for trademark registration will suffice. In Afroleopa’s view, one of the underlying reasons for such requirement is to ensure that the applicant intends to trade in or is already trading in the product. In such circumstances, what should be the import of submitting such proof of application to NAFDAC? Should such conduct constitute use in the course of trade? Or can it sustain an action in passing off?

It is opined that such prior use of a mark before applying for registration may not only show bad faith but may provide evidence of use in the course of trade. If there has been no use of the mark prior to application for registration and no prior knowledge of another firm’s ownership of a similar mark, these issues may not arise. But where there was use of the mark prior to application for registration, such application is no longer a mere compliance with section 18 of the Act. It is now a business decision to cement and protect business reputation. In such instance, it is hoped that the courts would lean more towards protecting businesses from those who may seek to take undue advantage of their business reputation and by extension, consumer interests. That is the end game for the trademark protection in the first place.

Afroleopa is grateful to Davidson Oturu for obliging her with a copy of the judgment of the Court of Appeal discussed here.

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Wednesday, 8 August 2018

Afro Leo

SA IP Conference 14-15 August Emperor's Palace

Eventus International is bringing together The South African IP Conference 2018 to be held at Montecasino on the 14th and 15th of August.

Afro-IP is pleased to be appointed a media partner to the event (for which it receives no monetary payment), together with the very well respected Geneva based publication IP-Watch. 

Published on their website Eventus explain what can be expected from the 2018 event:
  • Explore the latest IP regulatory developments in Southern Africa  
  • Discover how collaborative innovation will influence IP and future trends 
  • Learn how to manage IP litigation to protect and defend your IP rights  
  • Master the effective commercialisation strategies used to further develop your IP 
  • Hear the most recent case law in the IP field  
  • Receive professional guidance from leading IP advisors to help increase your shareholders’ revenue and your company’s profits
The speakers include:

Amy Jones, Director, Truter Jones
Brian Steinhobel, CEO, Steinhobel Design
Darren Olivier, Partner, Adams & Adams (who will chair the event)
Dina Biagio, Patent Attorney, Spoor & Fisher
Eitan Stern, Director, Legalese
Elaine Bergenthuin, Partner, De Beer Intellectual Attorneys
Fernando Dos Santos, Director General, African Regional Intellectual Property Organisation (ARIPO)
Janusz F. Luterek, Partner, Hahn & Hahn Inc
Jennifer Sing, Commercial Legal, Mobile Telephone Networks (Proprietary) Limited
Joseph Adrian Walker, Commercialisation Scientist, Resolution Circle
Karen Kitchen, Director, KISCH IP
Kevin Dam, Director, KISCH IP
Dr Madelein Kleyn, Group Manager, Oro Agri International Ltd
Dr Mathapelo Matsaneng, Intellectual Property Management Advisor, SABC
Mavis Nyatlo, Senior Researcher, University of South Africa
Naazlene Patel, Commercialisation Specialist, The Innovation Hub
Rosemary Wolson, Intellectual Property Manager, Council for Scientific and Industrial Research (CSIR)

You can obtain a detailed agenda through this link here.

Afro-IP understands that there are only a few places left so please hurry if you are interested in attending. The price tag is R6995.00. However, there are specials of up to 50% for women and bulk booking (subject to availability)

Media Partners: 

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Saturday, 28 July 2018


Time for a sui generis technology importation right?

At the Intellectual Property Law Clinic in Nairobi, the following inquiry is a very frequent occurrence: "I saw technology X in foreign country Y, and it doesn't exist here in Kenya. I'd like to invest time and money in bringing the necessary equipment from abroad in order to practice this technology method (or make and sell this product) locally. Can I get any protection for that?"

The answer is always the same. No.

(Although, technically, the answer is yes. Since Utility Model Certificates are not substantively examined, a UMC could be obtained for the imported technology, although presumably such UMC would be invalid if the UMC holder ever tried to enforce it.)

The "No" answer is always very frustrating to the client, and this blogger has seen several business fail to launch simply because the would-be proprietor (read: tech transfer agent) decides it's not worth the effort since there is no exclusivity of any kind.

So this blogger has been thinking, and proposes the following concept for discussion. What if we granted a very limited exclusivity period for someone who imports a technology that exists elsewhere but (demonstrably) doesn't exist locally? Maybe the promise of 3 years exclusivity would encourage more tech transfer into the country, and would encourage local innovation as well (particularly as people observe the technology in the local context and brainstorm ways to improve the local experience)? 

Perhaps it's time to create a form of IPR that removes the absolute worldwide novelty requirement in exchange for a drastically reduced period of exclusivity. 

Reader thoughts?
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Wednesday, 4 July 2018

Chijioke Ifeoma Okorie

The Regulator v The Regulated: Governance Issues of Nigerian music collecting society, COSON continues

Between 2014 and 2017, the IPKat’s Merpel provided the IP community and the general public with information and insights from the unrest and management issues at the European Patent Office (EPO). In that same spirit, AfroLeopa has taken it upon herself to provide readers of this blog with relevant information regarding the governance issues of Nigeria’s major collecting society, Collecting Society of Nigeria (COSON).

Last month, AfroLeopa attended a press conference co-convened by the president of the Association of Music Business Professionals (AM.B-Pro), Mr. Edi Lawani under the auspices of Concerned Stakeholders’ Forum. The majority of the music artists and COSON members, who spoke at the event, aligned themselves with the statements made by Mr. Lawani urging the NCC to lift the suspension of COSON’s licence in the interests of artists and copyright owners. Regulation 20 (2) of the CMO Regulations stipulates that a suspension order from the NCC may be commuted to a revocation of licence if the collecting society fails to comply with the directives that led to its suspension in the first place.  Some copyright owners have expressed support for the licence suspension.

A communiqué was issued in which the NCC was urged to audit COSON and also collaborate with specialised agencies such as the Nigerian police and the Economic and Financial Crimes Commission (EFCC) to arrest the ousted and allegedly reinstated Chairman) Chief Tony Okoroji. [As far as AfroLeopa is aware at the time of writing, no arrests have been made and there has been no directive has been issued regarding lifting the suspension of COSON’s licence.]

 The powers of the NCC as sector regulator for the copyright industry are wide. Further, the NCC has a discretion regarding the power it chooses to exercise in any given situation involving collecting societies. For instance, the NCC has a choice to treat the COSON leadership tussle as a dispute between members and apply its dispute resolution powers under Regulation 15 of the CMO Regulations. As required by the CMO Regulations, all Board members of COSON, with the exception of the General Manager, are artists and copyright owners. It may also decide to appoint an auditor to investigate COSON’s affairs, especially its governance structures and processes. Further, it may (as it has elected to) suspend COSON’s licence to operate as a collecting society.

However, it is important, especially in governance issues of collecting societies that the discretion of the NCC and the powers it exercises are effective and able to achieve desired results.  It is equally important that petitions/suggestions to the NCC in such instances are couched in language that shows the correlation between each specific powers, available facts and probable results.

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Nuances of Patents and TK

A recent article in the Mail & Guardian (here) claims that the European Patent Office recognizes Jans Roosjen, a Dutch man, as the "inventor" of teff flour and associated food products.  The article also states "Roosjen also has a patent for the “invention” in the United States — though he is patently not the inventor of a product that has been around for millennia."

As is almost always the case when it comes to patents, the situation is not as straight forward as this article makes it seem.

This blogger found EPO patent EP1646287 (B1) (access it here), with the above named inventor, and the title "Processing of Teff Flour".

Claim 1 of the patent is directed to "A flour of a grain belonging to the genus Eragrostis, preferably Eragrostis tef, characterized in that the falling number of the grain at the moment of grinding is at least 250, preferably at least 300, more preferably at least 340, most preferably at least 380." In short, then, this patent doesn't cover "teff flour and associated food products" except in the case that the flour has a "falling number" greater than 250.

Without getting too technical, here's an excerpt from the patent description to explain the falling number: "The falling number obtained relates to the amount of undigested sugars in the starch. The higher the falling number, the lower the alpha-amylase activity and the fewer digested sugars are present in the grain." In less technical terms, the higher falling number apparently allows the teff products to be used in making products with more "stability" and less of an "unattractive taste and/or structure."

Interestingly, it seems that the falling number can be increased simply by storing the teff post-harvest for at least several weeks.

Regarding traditional uses of teff, the patent background section states the following: "This crop has been cultivated for human consumption in mainly Ethiopia and Eritrea for more than 5000 years...  Teff flour is traditionally used for preparing injera, a spongelike, gray pancake with a somewhat sourish taste. Injera is usually made from a flour mixture consisting of equal parts of Teff flour and wheat flour diluted with water and yeast. The diluted flour mixture is usually fermented for three to four days before it is baked."
Image result for teff
Patented teff?  Tough call. 

As for the US case, there are no related granted patents but there is a published application.  The application was abandoned in 2013 (USPTO data - see here), so there are no patent rights in the US.

There are no related patents on the African continent (according to EspaceNet data), although Ethiopia is not a member of the PCT so this blogger was not able to determine whether a related Ethiopia application was filed.

So, is injera patented?  Despite the broad statements in the Mail & Guardian article, traditional injera is not patented, as it is described as prior art in the background section of the granted patent. Instead, injera made from a very specific form of teff flour, with a specific property obtained by weeks-long storage of the teff post-harvest, is patented in Europe.

Is this an exercise of hair-splitting (or, more appropriately, teff splitting)? Possibly. This blogger finds it hard to believe that no Ethiopian prior to 2003 ever made injera with teff that had been stored for a few months. Of course, the question is actually whether such a process is documented - i.e., contained in the prior art. The simplest way forward, then, is for someone (e.g., the Ethiopian patent office) to find a reference from prior to 2003 that describes the use of stored flour in making teff. As this blogger understands EPO practice, national-level court cases would now be required to use such a reference (if found) in invalidating the patent. 
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Monday, 25 June 2018


Celebrating(?) patents, by the numbers

For those of you too busy (watching football, perhaps...) to notice, the 10 millionth US patent was granted last Tuesday (US patents are always granted on Tuesdays, by the way).  This blogger would like to take the momentous occasion to look at some numbers.

The first US patent was granted in 1836. It took about 150 years for the US to grant the first five million patents, and less than 30 years to grant the next five million. It took just over 3 years (38 months, precisely) to grant the most recent million patents. That's an average of 26,315 patents per month, or 6,100 patents per week.

On 30 April 2018, ARIPO recently granted AP4556, the highest number this blogger could find. The earliest ARIPO patents granted in 1987. Although it has taken 31 years to grant 4556 patents, the last 1000 patents were granted in just the last 2.5 years (i.e., about 33 per month). The halfway point, AP2278, was granted in 2011, less than seven years ago. So the numbers in ARIPO are also showing a dramatic increase.

In Kenya, the most recent patent available to this blogger is KE789, granted in February 2018. The first Kenyan patent was granted in 1994, resulting in an average of 33 patents granted over 24 years. As with the US and ARIPO, grants were increasing in Kenya until about 2012. Interestingly, however, the number of grants in Kenya has been declining year-on-year since that peak year. Here are some of the numbers: 43 granted in 2017, 37 granted in 2016, 22 granted in 2015, 53 granted in 2014, 70 granted in 2013, 76 granted in 2012, 63 granted in 2011, and 53 granted in 2010.

As this blogger has said many times before on this blog and elsewhere, the number of patents is a poor measure of innovation in ARIPO and Kenya (and, presumably, most or all of Africa). There are also many other factors that affect grant rate, from population and GDP to culture and tradition. Nevertheless, it is striking to see a per-week grant rate that is more than three orders of magnitude larger in the US compared with African offices.

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