Friday, 20 November 2015

African IP in November

We are only three weeks into November, but what a month it has been for IP. It began with an 'IP for an Emerging Africa' three-day conference held on November 3 – 5, 2015 in Dakar, Senegal (see Kingsley's post here and the WIPO conference page here which includes the program and technical documents). As noted by Darren (here) WIPO published a special edition of its magazine, with a focus on Africa, to coincide with the conference. Nicola Searle commented on the conference on the IPKat blog ('African Ministerial Conference in IP: The Dakar Rally' and 'Talk Talk Fashion Baby').  The twittersphere was also abuzz with commentary, some of which is curated under  the hashtag #AfricaInnovates.  There was a clear call for the conference to embrace a developmental approach to IP in close alignment with WIPO's Development Agenda. (see Ahmed Abdel-Latif , Dick Kawooya, Chidi Oguamanam 'WIPO African ministerial should embrace a pro-competitive and pro-development IP vision'). No doubt further commentary will soon be published on how the conference unfolded and whether or not it lived up to this call. WIPO's own summation of the conference and its significance and outcomes is available as a four-minute video-clip on YouTube here.

A key conference theme was innovation. The relationship between IP and innovation is one worthy of sustained study and has significant implications for how IP is regulated on the continent. It was the focus of a recently completed  research project by the Open African Innovation Research network (Open AIR) ( see publications here).  The network has recently released a call for African case studies for a further stage of its work that will seek to shed light on the following two overarching research questions:

  1. How can open collaborative innovation help businesses scale up and seize the new opportunities of a global knowledge economy?
  2. Which knowledge governance systems will best ensure that the social and economic benefits of innovation are shared inclusively across society as a whole?
Proposals (submitted on this template) will be accepted through to 10 December 2015. It is hoped that this further research will be useful for African governments, IP policy-makers and entrepreneurs. (Disclosure: the author of this post is a member of the OpenAIR network).

Another major development this month was the WTO TRIPS Council recommendation to extend the LDC pharmaceutical patents waiver to 2033 (see the WTO's press release here and an IPWatch report here). This recommendation is expected to be endorsed by the General Council when it meets later this month. 

Wednesday, 11 November 2015

Pfizer/Biovac deal potentially good for everyone

This month Pfizer announced a deal with Biovac that would see it transfer skills and technology and license the manufacture of its Prevnar 13 vaccine in South Africa for ultimate distribution throughout Africa. In this play Pfizer is the well known global pharmaceutical and lesser known Biovac is a South African company set up to boost local pharma capability to address severe local needs. Also important is that South Africa’s government has a major stake in the ownership of Biovac and that Naledi Pandor (the Minister of Science and Technology) has been vocal in commenting on the deal.

On the face of it, this deal seems to be a very good one.

For South Africa it has real potential for positive outcomes; it will create jobs, it will upskill workers, it has the potential to reduce the cost of the vaccine and give greater access to it, it could enable Biovac to become the access point for those vaccines into Africa, it is sustainable in the sense that the need is great and competitive drugs appear to be few, it has the potential to reinforce a positive message to other pharmaceuticals that South Africa is a viable destination for trials and drug manufacturing (not that the likes Adcock Ingram or Aspen have done a bad job) despite the restrictions on IP developed locally through public funds and exchange control, and it is welcome news (politically and economically) in contrast to South Africa’s recent woes reflected by the continuing fall in the rand over the past few years.

So what’s in it for Pfizer? Why would Pfizer transfer manufacturing skills, risk the fact that any IP it helped developed locally may never be able to leave RSA, help reduce the cost of a drug that it has spent the R&D developing (and still appears to be under patent) and therefore possibly reduce potential revenue streams and help create another drug manufacturer which could potentially produce generics in competition to it? Afro Leo suggests that there is quite a lot in it for Pfizer.

This blog has reported for some time on the pressure that has come to bear on big pharma to provide solutions for developing and least developed countries which account for a considerable percentage of the need for critical drugs. This pressure has also spilled over to the patent system per se and has called to question the very idea behind intellectual property (upon which big pharma rely) and its place in developing countries. Added to that is the idea of integrated reporting for sustainable businesses where value is not just measured on bottom line profits but in the concept of value to society and corporate responsibility, and an increasing general awareness by the consumer in supporting companies and brands who do so, and are seen to do so. This deal creates material for Pfizer to use to address these issues.

There are bottom line reasons too though. A decline in the rand makes imports expensive which will affect current demand for the drug based on affordability. Creating a manufacturing partner in South Africa therefore starts to make sense. Not only does the initial $ investment go much further but it creates potential for drugs to be exported into Africa more cheaply. In addition the deal creates options for Pfizer once the drug goes off patent. The potential cheap production of off patent drugs under a locally known brand name that would have captured market share, should be a shrewd move to ensure longer term demand, not only for Prevnar 13 but potentially others.

Admittedly, one would have to consider the close detail of the deal especially on the extent and effectiveness of the technology transfer and any competition restraints. Is Biovac likely to be beholden to license to use the name and a supply of the active ingredient even post the technology transfer, for example? There are other risks too such as labour unions, quality and supply but overall, the deal does seem encouraging.

Thursday, 5 November 2015

#Africainnovates - WIPO gets awesome

In the week that celebrates the Ministerial Conference for IP in Africa which is co-organised by the Government of Senegal and WIPO in collaboration with the African Union and Japan, in Dakar (you can find more about that here), WIPO have published a special edition WIPO Magazine dedicated to Africa, and it's jam packed:
Check it out by downloading the PDF here and follow the conversation on twitter through the hashtag #africainnovates.

Trade mark certificates in Libya: an update

We have learned that the Libyan Trade Mark Office has started issuing trade mark registration certificates and has also been accepting renewal applications, as of 1 October 2015.

Accordingly, for any applications that have matured to registration (ie which have been published and where no oppositions have been raised) and that are still valid, a registration certificate will issue once payment of the official fees of LYD 151 (approximately US$ 111) has been made.

As for expired applications, it is possible to issue renewal certificates after paying the normal renewal fee of LYD 181 (approximately US$ 133) per application.

Source: newsletter of NJQ & Associates, from whom further information can be obtained by emailing

Wednesday, 4 November 2015

Zimbabwe follows Gambia down the Madrid Protocol 18-month route

Yesterday this weblog conveyed the news that Gambia, a recent adherent to the Madrid Protocol, was to extend the period within which it must reject international trade mark oppositions if they are not to be automatically allowed from 12 to 18 months under Article 5(2) of the Protocol. WIPO has also announced that Zimbabwe is doing the exact same thing, only with effect from 7 January 2016. You can check out the WIPO announcement here.

Tuesday, 3 November 2015

Gambia fine-tunes its Madrid Protocol arrangements

A week and a half ago, Afro Leo noted that Gambia had signed up for the Madrid Protocol -- the smart way to save money and gain efficiency when seeking trade mark protection internationally. Well, there has been a sequel. By a further notification, WIPO has indicated that Gambia is replacing the basic period of 12 months within which it may refuse an international application under the Protocol with an 18-month period, as it is entitled to do under Article 5(2)(b) of the Protocol.

This takes effect from 6 January 2016 -- which rather suggests that the period remains 12 months for international applications received between 18 December (when the Protocol takes effect in Gambia) and 5 January.

Friday, 30 October 2015

Tanzania commits to UPOV Convention

By UPOV Notification No. 119 International Convention for the Protection of New Varieties of Plants: Accession by the United Republic of Tanzania to the 1991 Act, the World Intellectual Property Organization (WIPO) has announced that the United Republic of Tanzania deposited last week its instrument of accession to the 1991 version of the International Convention for the Protection of New Varieties of Plants (the UPOV Convention).

Right: the castor bean is among Tanzania's valuable plant varieties

If you are involved in plants, note that the UPOV Convention will enter into force for Tanzania on 22 November 2015.

Friday, 16 October 2015

Gambia signs up for the Madrid Protocol

According to the recently-issued Madrid (Marks) Notification No. 207: Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks: Accession by the Republic of the Gambia, Afro Leo learns that the Government of the Republic of the Gambia deposited last month its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol (1989) will enter into force, with respect to the Gambia this coming winter, on 18 December 2015.

Here's the WIPO Madrid Protocol page, and here's the list of countries where the Madrid Protocol is operative (or nearly so) -- all 96 of them at the time of posting of this item.

Monday, 12 October 2015

African Ministers to convene for a conference on IP

'IP for an Emerging Africa' is the theme of a three-day conference scheduled for November 3 – 5, 2015 in Dakar, Senegal. The event is jointly organised by the Japan Patent Office and WIPO, in cooperation with the African Union and the Government of the Republic of Senegal. [Says Afro Leo: “Those following the progress of African countries in the Global Innovation Index will notice that the host has done well, again, alongside Mauritius and South Africa.”]

The venue: King Fahd Palace Hotel 
According to the planners, this event will “highlight the relevance of IP as an engine for promoting creativity, innovation, scientific and technological transformation of African economies”. 

It is packed with sessions discussing, among other things, how to create a balanced IP regime which enables innovation; the role of the patent system; modernising IPOffices; R&D and IP; and the creative industries.  

Special guests and panellists include:
  • Nkosazana Dlamini-Zuma, Chairperson of the Africa Union Commission;
  • Kunihiko Shimano, Director-General, Trial and Appeal Department of the Japan Patent Office;
  • H.E. Mr. Macky Sall, President of the Republic of Senegal;
  • H. E. Mrs. Ameenah Gurib-Fakim, President of the Republic of Mauritius;
  • Francis Gurry, Director General of WIPO;
  • Martial De Paul Ikounga, Commissioner for Human Resources, Science and Technology at the African Union; and
  • Catherine A. Odora-Hoppers, Professor at the University of South Africa.

[Afro Leo thinks this is the sort of gathering where one may get the latest on the Pan-Africa Intellectual Property Office (PAIPO)]

This Leo also recognises Nicola Searle (the Katonomist), who will be moderating a panel discussion on capturing value through IP in the fashion design industry. He must say that Nicola gave him the idea behind an Africa creative industries event in London two years ago.

There might still be places left, if you would like to attend. Afro Leo would welcome feedback or IP-related gossip from anyone attending.

Friday, 9 October 2015

FridayLite: Paarl's blue eye boy wins all expenses trip to Geneva!

#SandtonDiscussion is delighted to announce that Reinhardt Biermann has won the Unisa Domain Name essay competition after being motivated to enter by Prof Eddie Hurter during a discussion in July.

He has won an all expenses trip to WIPO to attend an advanced course on domain names next month! The twittersphere is already ablaze with congratulations.

These discussions, hosted by Adams & Adams, feature on twitter ever Monday (you can follow it and partake at your leisure, whenever, using the hashtag).

This coming Monday it’s John Ndlovu's turn to present – here is his taster:

"So this week I have decided to take us down under … can’t you hear can’t you hear that thunder! The case deals with parody trade marks but also enforcing rights where the public has given your trade mark a different or shortened mark and if you are able to enforce based on the reputation acquired in this other mark. The case is Target Australia Pty Ltd v Pty Ltd [2015] ATMO 54 (24 June 2015) . You can also read a brief article from IPKat’s Jani Ihalainen here."

Meanwhile, if you are plotting investment activity on the continent, check out this article by Mail & Guardian entitled "They just keep coming: These 15 big investments are on the cards around Africa":

"From manufacturing, financial services, renewable energy, petrochemicals and mobile data, global and African investors are seeing dollar signs"

Hope you are in on the action. Have a great weekend!

Conference Update: ATRIP (Cape Town) and Social Responsibilities of IP right-holders (Pretoria)

The International Association for  the Advancement of Teaching and Research in Intellectual Property (ATRIP) held its 34th congress from 27 - 30 September 2015 in Cape Town. The theme for the conference was 'Intellectual property in action in society: new perspectives from the North, the South and the cloud'. The congress was well attended and lively discussions were held after all the presentations (see the programme). For an overview of these see twitter
Some of the papers will be published in a book next year, as is the norm. So far the following books have been published after previous congresses.

After a day's break, some ATRIP attendees, reconvened in Pretoria for UP's Conference on Social Responsibility of IP Rights Holders. The conference had a very thought-provoking presentations that considered IP law from corporate governance and human rights perspectives. For a sneak peak see 
Hopefully some of these papers will be published soon, perhaps in a special edition of De Jure

Monday, 28 September 2015

Significant damages awarded in software infringement case in RSA

It's not often that we get a case involving copyright enforcement in the software space especially against a government department, by a local software developer and where significant damages are awarded. In the recent case of Quill v Randfontein Local Municipality (RLM), local software developer (Quill) sued RLM for copyright infringement in respect of their BIQ software product and in the process obtained over R10million (-+$1million) in damages (a large amount by RSA standards).

Five key points to be canvassed shortly by Nic Rosslee in this week's #SandtonDiscussion at 9am CAT are:

  • the nature of copyright in software in South Africa as a separate category of work
  • the inadequacy of RLM's defenses
  • benefits of using trial proceedings under these circumstances
  • the court's interpretation of a reasonable royalty
  • the refusal to grant leave to appeal 
The timing of this case is apt in that it endorses the need for education (even within government departments) about the need to pay attention to software licenses. A recent post on the work of Amanda Lotheringen (DTI) and the Billa Coetsee (BSA) whose teams have launched a world first compliance campaign explains more about that here.

Hosted by Adams & Adams.
Tune in at 9am for more. 

Monday, 21 September 2015

The intimate question of class 25/3 similarity up next in #SandtonDiscussion

Can you concentrate?
This week on #SandtonDiscussion, the group takes a look at the case of Chantelle v Designer Group (Pty) Ltd. This judgment was handed down in the North Gauteng High Court on 24 April 2015.

It is an appeal against the dismissal by the Registrar of Trade Marks of the Chantelle’s opposition to the registration of the trade mark CHANTELLE which has applied for in class 3 (cosmetics etc) by the South Africa company Designer Group. Chantelle is a French company which has registered the trade mark CHANTELLE in South Africa covering items of fashion, in particular, intimate apparel, underclothing and swim suits in class 25. The key question is whether these goods in class 25 are similar to those in class 3 such there exists a likelihood of confusion. 

RSA already has a similar decision in South Africa (Danco Clothing) based on previous legislation where it was decided that a likelihood of confusion would exist where identical marks covered goods in class 3 and 25 generally. This is contrary to the Registry decision. To find out what the High Court has to say, log on to your twitter accounts at 9am CAT.

The discussion will be led by @maureenthuto at 09h00 CAT.

Monday, 14 September 2015

Anas exposes Ghana corruption scandal in judiciary

Anas, the acclaimed Ghanaian investigative journalist has exposed a corruption scandal that threatens to undermine one of Africa's cinderellas. Ghana, ranked in the top 5 least corrupt countries in Africa by the Corruption Perceptions Index in 2012, is now the subject of headline news of the BBC which reported a few days ago that:
"A group of Ghanaian judges allegedly caught on camera asking for bribes has filed a legal challenge to their suspension.
Of the 22 suspended lower court judges, 14 have filed a writ to the high court, saying the judicial council's investigations have no basis in law.
Investigative journalist Anas Aremeyaw Anas conducted a two-year undercover investigation into the judges.
It is the biggest scandal in the history of Ghana's judiciary." Full article here.
AllAfrica took up the story and leads with the following:
"It may go down in history as the single most massive bribery scandal to hit Ghana's Judiciary, as 180 officials of the Judicial Service have been caught on camera taking bribes and extorting money from litigants."
More about that here.
Afro Leo commends Anas for his work which, unfortunately, will not provide much comfort for investors in Africa, especially those that put their IP at risk through distribution, licensing, JV and other collaborations. A typical example of a distributor gone rogue in South Africa was discussed today in #SandtonDiscussion.

Passing off, domain and company name objection and cancellation in #SandtonDiscussion today

Afro-IP's coverage of the #SandtonDiscussion continues today when the group considers the case of Global Vitality Inc v Enzyme Process Africa (Pty) Ltd. This judgement was handed down in the Western Cape High Court last month (21 August 2015). 

The applicant is Global Vitality Incorporated (an American manufacturer, distributor and seller of dietary nutritional supplements) against Enzyme Process Africa (Pty) Limited (the former exclusive distributor of Global Vitality of goods bearing the mark ENZYME PROCESS) in South Africa. Global Vitality sought to interdict/injunct Enzyme Process Africa from using the mark ENZYME PROCESS as a trade mark, company name and domain name, as well as to cancel certain trade marks held by them. The discussion will be lead by @EricMashida at 9:00 am CAT.

You can follow these and other discussions hosted at the Adams & Adams office based in Sandton using the twitter handle #SandtonDiscussion. If you are interested in joining via Skype please email Afro-IP here and we will see if we can hook you up.

Sunday, 13 September 2015

Kenya to copy DMCA, block hosts of infringing sites?

Via Infojustice comes "Upcoming Kenyan Copyright Amendments to Target Local Internet Service Providers Hosting Infringing Content", which tells us the following:
The Kenya Copyright Board (KEBCO) is preparing to propose amendments to the Copyright Act that would block sites hosting content which infringes local creators’ copyrights. Local internet service providers that refuse to take down content would face fines and even prison sentences. KEBCO’s webpage notes that the new rules should “come into play by the end of the year… The laws will be ready for public discussions next month before they go to Parliament.” Head of the Kenya Copyright Board (Kecobo) Edward Sigei told the Standard:
“We are proposing to introduce an amendment in the Copyright Act that will place the onus of responsibility for Kenyan content illegally downloaded, squarely on local internet service providers … We are borrowing from the Digital Millennium Copyright Act of America and others that have come after it and we have designed an amendment where the ISP will be liable under certain circumstances for infringements that happen through their channels.”
This is part of a larger effort to promote the local TV and movie industry. The government is also working with broadcasters to increase the coverage of local content.
This blogger, apart from being curious as to why the Kenya Copyright Board is both "KEBCO" and "Keboco", wonders how long it will take to get this law -- assuming that it will be passed -- up and running, and how effective it will be.  He hopes to hear from his Kenyan friends as to their hopes, expectations and analysis of the provision and its likely efficacy.

Thanks to Chris Torrero for this link.

Tuesday, 8 September 2015

Tunisia's new trade mark law has suddenly become more accessible

Afro Leo learns from the World Intellectual Property Organization's WIPO Lex News that the text of Tunisia's Decree No. 2015-303 of 1 June 2015, establishing the Procedures for the Registration of and Opposition to the Registration of Trade Marks and Service Marks, as well as the Procedures concerning Recording in the National Register of Marks, has now been added to WIPO's online database of national IP laws. This Decree, which came into force on 9 June 2015 and repealed Decree No. 2001-1603 of 11 July 2001, introduced the following amendments to Tunisia's trade mark law:
(i) introduction of electronic filing of applications for the registration of trade marks;  
(ii) setting out of provisions governing the trade mark registration through the Madrid Protocol; 
(iii) extension during the opposition period of the time for the applicant to submit observations from 45 days to 2 months from the date of notification of the opposition; 
(iv) fixation of a maximum period of 8 months from the date of submission of observations for the applicant and the opponent to attempt conciliation in the trade mark opposition; 
(v) extension to 2 months from 1 month of the period during which the opponent may furnish proof of the use of the trade marks upon which opposition has been based and 
(vi) definition of a period of 2 months for the applicant to submit the missing documents to request recording of a change of names, addresses, ownership, assignment, etc., in the National Register of Marks.