Thursday, 6 September 2018


Save the Buildings!! Or, How to Avoid Demolition?

This blogger's office is about 500 m from a mall that was built about two years ago, existed for two years and had tenants, and then was demolished over the last month. The demolition was conducted by NEMA, the Kenyan environmental protection authority, because the building was built on riparian land (i.e., built on or near a river). Several buildings in Nairobi have been similarly demolished or are about to be demolished.
Southend Mall, no more.
Photo Credit: Margaret Maina

Recalling a popular campaign from the 80s to "Save the Whales", this blogger got to thinking about creative ways of saving such buildings. (Please note, however, that this blogger is not arguing that illegal buildings SHOULD be saved, but only wondering how to do it creatively.) Finally, inspiration hit during an IP Law lecture to 3rd year LLB students!

The Copyright Act in Kenya provides for moral rights, including the right to prevent a work from distortion, mutilation, or other modification if prejudicial to the author's honour or reputation. So, perhaps a building owner wishing to avoid demolition should commission an artist to create a mural on a wall of the building. Demolition of the building and, consequently, demolition of the mural, would certainly be mutilation of the work. (Although, would it be prejudicial to the author's reputation or honour?  Hmmm.....) Then the building owner can request the author to sue NEMA for an injunction to prevent demolition!

Of course, NEMA could just cut the wall out of the building and deliver it to the author, so it would need to be a very carefully selected work of art. For example, a mural of a river running under a building - the author could claim that the location of the work provides critical context for the understanding of the work, thereby preventing destruction of the entire building.

This blogger loves the rule of law, and does not wish to justify illegal buildings, but would love to test the limits of copyright law and hopes that someone out there will try this approach......
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Wednesday, 29 August 2018


Another questionable Ad Campaign from KFC

Regular readers will recall this bloggers post, here, about KFC's ad campaign that was certainly tasteless and flirted with consumer protection laws. Well, the marketing team at KFC is at it again, this time flirting with trademark law.

On a street in Nairobi can be seen an ad encouraging customers to "Come in your shorts and crocs", with a signboard a few dozen meters down the road that reads "We won't judge."

The word mark "Crocs" was submitted by Crocs, Inc., a Delaware Corporation, for trademark protection at the Kenyan Industrial Property Institute (search for "crocs" at this link for more info about the advertised marks) in 2011.
Photo credits: Abdulmalik Sugow
Photo credits: Abdulmalik Sugow

So, KFC is using the registered trademark of another company in a commercial activity - i.e., their advertising campaign. This is not per se infringement, but it raises some issues.

1. Is KFC stating, implicitly or explicitly, that Crocs, Inc. has endorsed their product?  This blogger thinks the answer is probably "no" based on the context of the use. Nothing from the ads would seem to indicate that there is an endorsement.

2. Is KFC diluting or tarnishing the Crocs trademark? This question is a bit harder to answer. The implication by the ads is that you can go to a KFC in any state of dress, even wearing a super casual outfit or one that is not suitable for being seen in public (adults in Nairobi are almost never seen in public wearing shorts).  Is this disparaging on the Crocs trademark?  Certainly Crocs are known for comfort and are not generally considered formal attire, so perhaps it is in line with the brand that Crocs, Inc. seeks to portray. Nevertheless it seems that Crocs, Inc. should be the (only) one deciding the reputation they seek, independent of any advertising campaign of other companies.

3. Is KFC taking unfair advantage of the Crocs trademark? Perhaps here the answer is also "no" since there would seem to be no direct relationship between a croc and fried chicken (even if, as it has been reported, crocodile meat tastes like chicken). On the other hand, KFC is clearly trying to associate itself with the casual/relaxed reputation earned by the footwear at issue.

In conclusion, this blogger appreciates the activities of KFC only insofar as they allow speculation as to the limits of IP law.

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Tuesday, 28 August 2018

Afro Leo


This is a guest post from Prof Wim Alberts.

All trade mark lawyers are familiar with the first principles regarding the registration of colour marks – the most basic being, it is difficult.  Yes, we do have the pink stuff in the ceiling, the particular shade of green and yellow of agricultural implements which we hold dear, we also have the various conflicts regarding the colour purple for chocolate products, the colour purple for inhalers - Glaxo Wellcome v Sandoz [2017] EWHC 3196 here - the difficulty of how to represent the particular colour(s), the registrability of single colours and acquired distinctiveness etc (see the decision of the then European Court of Justice in Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, dated 6 May 2003 here).  So, about a single very plain colour - is it distinctive?  This was the first dilemma faced, over time, by the well-known designer Christian Louboutin in the process of enforcing the rights in his red sole trade mark.  A happy outcome in the United States was the decision here  in Christian Louboutin S.A. v Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012) 1 ‘…the Red Sole Mark has acquired limited secondary meaning as a distinctive symbol that identifies the Louboutin brand, and…it is therefore a valid and protectable mark…’ (page 25) here.

A second problem featured in the recent decision of the Court of Justice of the European Union in Christian Louboutin v Van Haren Schoenen BV (Case C‑163/16, dated 12 June 2018) here.  This ruling is discussed below.

At issue was the following legislative provision, being Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks here.

Article 3 of said directive, entitled ‘Grounds for refusal or invalidity’, provides:

‘1.      The following shall not be registered or, if registered, shall be liable to be declared invalid:

(e)       signs which consist exclusively of:
(i) the shape which results from the nature of the goods
(ii)       the shape of goods which is necessary to obtain a technical 
(iii)      the shape which gives substantial value to the goods;…’

The mark in question, a Benelux application filed by Mr Louboutin, in class 25, looked as follows:

In the application for registration, the mark at issue is described as follows:‘

‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.

In terms of a later amendment, the mark was amended in such a way as to limit the goods covered to ‘High-heeled shoes (other than orthopaedic shoes)’.

An opponent attacked the mark on grounds in the Benelux Convention, similar to article 3(1)(e) above.  It was stated that the mark is a two-dimensional figurative mark that consists of a red coloured surface.  A specific question was referred to the court, interpreted by it as being whether article 3(1)(e)(iii) means that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, consists exclusively of a ‘shape’, within the meaning of that provision.  It was said by the court (paragraph 21) that the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned.  Further, it does not follow that a colour per se, without an outline, may constitute a ‘shape’.

The court made (paragraph 24) the following important observation:

‘In that regard, it must be noted that, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.’

It was added that in any event, a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code.  The court then concluded that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of article 3(1)(e)(iii).

It might not be putting it too strong to simply say that rational thought prevailed in this long-running dispute.  After all, a colour is fundamentally different from a shape, doctrinally and practically.  The shape issue was substantially a red herring.  

It is already established that the red sole mark is indeed distinctive, and the acceptance of the mark’s distinctiveness shows what acquired, in contrast to inherent distinctiveness, can encompass.  In view of the outcome of the case under discussion it is probably not controversial to state that the mark’s status is now, in most countries at least, beyond dispute.  Can restrictions be discerned though?  It was said, in the important ruling in Christian Louboutin S.A. v Yves Saint Laurent 29-30- that:

‘We conclude, based on the record before us, that Louboutin has not established secondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts with the “upper” of the shoe.’
The use of a red sole on a shoe that is wholly red, can thus not be prevented.

Are other restrictions possible?  It is well known that little girls are fond of wearing high-heeled shoes – albeit for short distances!  Now it seems that Mr Louboutin might himself be taking baby steps, as he plans to extend his red sole range to baby shoes.  It would be interesting to follow the possible search, if any, for trade mark protection for these ‘flat’ shoes, entitled the ‘Loubibaby collection’.  They might be similar goods in a sense, but the restriction of the specifications to high-heeled shoes is probably fatal.  What about the Pantone number?  Would the use of a darker red or maroon or slightly lighter red colour infringe?  Would the colour depletion doctrine feature here?  It would seem that other shades of red can still infringe having regard, for instance, to the wording of section 34(1)(a) of the Trade Marks Act 194 of 1993, which refers to ‘…an identical mark or…a mark so nearly resembling it as to be likely to deceive or cause confusion…’.  That would be the test for ‘off-colour’ marks.    

In conclusion, the tale of the journey for the achievement of trade mark protection for a mere red shoe sole (surprising to non-fashion experts) is perhaps best described by the famous statement of Ripley’s: ‘Believe it or not’!

Wim Alberts 

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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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