Thursday, 5 January 2017

Can you assist Aurelia make her IP Article on African IP Open Access?

The burgeoning use of social media and online marketing tools has seen more and more people turning to the world wide digital community to help them drive their interests and offer their contemporaries free-to-access content.

And the legal fraternity is no different.

Afro IP blogger and intellectual property lawyer Aurelia Schultz is on a mission to publish her journal article as an open access document in order for interested parties to benefit from her research.

Aurelia is an attorney working in the area of copyright policy, with a focus on using open licenses and a specialist on intellectual property developments in Sub-Saharan Africa.

 “The students and researchers I hope can find my work most useful and build on it in the future are the least likely to be able to pay for access to a journal. If the article is open access, anyone who wants to read it, copy it or share it will not need to worry about whether or not they can afford a license from the publisher,” says Aurelia.

Because Aurelia is from the US, a developed country by world standards, she is charged a fee to publicly publish the work. However, she cannot afford the fee herself and is looking to raise the funds through the “Go Fund Me” portal, an online portal that helps individuals campaign in their private capacity by motivating for their causes.

The piece of work she wants to publish was written for a special journal issue focusing on IP law in Africa. And her aim is to see it published under a Creative Commons License using money she hopes to raise through Go Fund Me.

To date, she has received $2 407 of the $3 670 she requires to realize her dream of sharing the journal work publicly. You can help her achieve this by donating using this link. Every little bit helps.


Monday, 2 January 2017

First January Post

Greetings from the Afro-IP team and best wishes to our readers. As this little blog and community shoots through the 40000 page view per month barrier, we share with you our most popular posts in 2016, in no particular order:
  1. IP and African Music Industries – and interview with Phil Chard by Aurelia
  2. INTA’s first Africa dedicated conference on African soil – click here and here
  3. Clearvu - Africa’s First Adwords case – SA’s Supreme Court Decision here
  4. Aurelia’s coverage of IP Developments in Zambia here and here
  5. Big Win for Copyright and Artists in Tanzania
  6. Brexit & its possible impact on Africa – read more here
  7. Quentin – the homeless man who begged for a trade mark - here
  8. Mozambique’s IP developments and new code - here
  9. Caroline’s ever popular review on IP Policies in Africa
  10. Counterfeiting Strategies in Africa – Guest post by Vanessa Ferguson

We are always looking for good content and bloggers and guest posts. If you feel that you want an outlet for your talents or views or just want to alert us to something, please contact us here for further information. On that note, if you have sent through a blog post which has not yet been published, look out for it this week. Thank you.
AFRO-IP re launch 30 cat naps away!
Afro-IP is now in its tenth year and boasts over 1500 posts on African IP making it the largest news source of searchable information on Africa IP. To celebrate this we are re-launching the blog on 1 February. Don’t miss it.

Best wishes

The Afro-IP blogging team

Wednesday, 14 December 2016

Guest Post: "The Look" For Everyone by Gaby Meintjies

The Supreme Court of Appeal recently upheld an appeal by Pepkor Retail (Proprietary) Limited, which trades, inter alia, as Ackermans, ("Ackermans") against an order interdicting and restraining it from using the phrase THE LOOK FOR LESS sought by Truworths Limited ("Truworths")  – the trade mark proprietor in South Africa of the trade mark THE LOOK in class 25 for clothing, which is used in the fashion retail industry. In response, Ackermans filed a counter-application for the removal of Truworths' mark from the Trade Marks Register based on non-distinctiveness, which was also upheld by the SCA.

The parties are rivals in the fashion retail industry and when Truworths found out about Ackermans' use of the phrase THE LOOK FOR LESS it was not happy, especially in light of the fact that the words "the look" were being used more prominently than the words "for less". Initially the parties managed to reach a settlement specifying that Ackermans would not use the mark THE LOOK on its own or use the phrase THE LOOK FOR LESS as the name of a store or on a label or swing tag in respect of any clothing.

Examples of the current use of the respective marks THE LOOK by Truworths and Ackermans :

It didn't take long before the parties were at loggerheads once again after Truworths heard that Ackermans was using the phrase THE LOOK FOR LESS on its in-store, print and television advertisements and signage. Truworths claimed this constituted a breach of Ackermans' undertaking in terms of the settlement, infringement of its trade mark THE LOOK as well as the passing off of its goods being those of Truworths. In defence, Ackermans argued that Truworths' trade mark THE LOOK was not distinctive or capable of distinguishing its goods, rendering its registration invalid.

The Western Cape High Court found for Truworths on all grounds it relied on and dismissed Ackermans' counter-application.

On appeal, Truworths no longer relied on the grounds of breach of the undertaking and passing off and only the infringement of the trade mark. Specifically, it relied on sections 34(1)(a) or 34(1)(c) of the Trade Marks Act, which provides for the infringement of a mark where there has been use of a same or similar mark, in respect of identical goods or services in the first instance or similar goods or services in the latter instance, provided there is likely to be deception or confusion in the marketplace.

The SCA went into what the purpose of a trade mark is and how it is meant to serve as a 'badge of origin' and be able to distinguish the goods or services of one person from the goods or services of another. Thereafter the Court discussed what constitutes an unregistrable mark in terms of section 10, stating that if it only consists of words that describe the particular goods or services covered by the registration it will not be inherently capable of distinguishing the goods or services of that person. As there was no proof that Truworths had used the trade mark THE LOOK prior to registration, Truworths could only rely on the mark being inherently capable of distinguishing.

The Court accepted Ackermans' evidence relating to the common meaning of the words "the look" and rejected Truworths' argument that the words are a "'covert or skilful allusion’ to these goods". Truworths even admitted that the phrase "the look" is commonly used in the fashion industry to indicate that a piece of clothing or accessory is fashionable. It also did not dispute the evidence put forward by Ackermans illustrating numerous examples of other fashion industry retailers, for example Woolworths and Foschini, using phrases such as "get the look". The Court held, in light of this evidence, that clearly the words have a generic descriptive meaning in the context of the fashion industry and, accordingly, a monopoly over their use cannot be afforded to one particular retailer.

On the question of whether the trade mark THE LOOK had become capable of distinguishing Truworths' goods through use at the date of Ackermans' counter-application, the Court stated that Truworths had failed to produce any evidence of the public perception of the mark and only evidence merely illustrating use of the mark. Thus confirming the principle previously followed by the courts that 'use does not equal distinctiveness'.
In summary, the Court accepted Ackermans' counter-application and ordered that Truworths' trade mark THE LOOK be removed from the Trade Marks Register, which resulted in the success of the appeal against the order in the main application.

 The conclusion to this case may have been different had Truworths been able to produce convincing evidence that the public perception was such that the trade mark THE LOOK was a so-called 'badge of origin' for its clothes. Such evidence would have needed to have been independent and illustrating more than just use of the mark. However, in light of the lack thereof, Truworths will no longer be able to rely on it having "the look" exclusively.
* GabyMeintjes is a senior associate in the Intellectual Property law department at Fairbridges Attorneys in Cape Town, South Africa.

Tuesday, 13 December 2016

Looming Traditional Knowledge Bill

The bones have been thrown for the estimated 25 000 traditional healers in South Africa and the impending regulations could have significant implications for ancient cultural practices, as well as the healers themselves, who may be in the dark regarding the expectations on them.

The protection, Promotion, development and Management of Indigenous Knowledge systems Act was brought before parliament in April 2016. The proposed regulations for traditional healing practitioners in South Africa is not without a number of contentious issues, including to what extent traditional medicine practitioners should be regulated and precisely what “indigenous knowledge” entails.

Luyanda Frans, parliamentary liaison officer, said the bill was currently being processed by the National assembly and is likely to be finalized in March next year.

Andre Van der Merwe
Andre van der Merwe, of Kisch IP law firm, writing for, questions the consultation process undertaken.

“The parties consulted to date are merely other State departments. No indigenous communities or their leaders have been consulted to date and in addition no regulatory impact assessment has been carried out to determine whether the benefits of the act will outweigh the costs of implementing it.”

Frans said the government was conducting public hearings but couldn’t confirm whether they had consulted with the various traditional healer organisations.

Conrad Tsiane, a traditional healer and chairman of the interim board working with the National assembly, said the local healers would be consulted and invited to participate. He said road shows in all the provinces, in conjunction with the department of health, would take place once a registrar had been appointed.

The World Health Organisation (WHO) estimates that around 80% of the population in Africa makes use of traditional medicine.

Van Der Merwe says generally, TK can be divided into three broad classes, namely: indigenous scientific or technical knowledge, works of an indigenous-cultural nature and miscellaneous works or know-how that are difficult to classify.

The defensive protection sought through the act is essentially to ensure that third parties do not gain illegitimate or unfounded IP rights as a result of TK.

Traditional (or indigenous) knowledge encompasses know-how resulting from a traditional context, including practices, skills and innovations, according to the World Intellectual Property Organisation (WIPO). It can also cover traditional cultural expressions, such as signs and symbols.

The WHO centre for Health development says African traditional medicine “is the sum total of all knowledge and practices, whether explicable or not, used in diagnosis, prevention and elimination of physical, mental or societal imbalance, and relying exclusively on practical experience and observation handed down from generation to generation, whether verbally or in writing.”

Dr Tsiane
A major bug-bear seems to be the definition of the forms of TK and how any act can successfully create protection for the various forms. But more pressing for Traditional medicine practitioners is the registration of knowledge. The transitional arrangements in the bill call for the recording of any TK knowledge that exists prior to the enactment to be registered within 12 months.

Van der Merwe says this is likely to place a huge burden on the indigenous communities to register TK within the time frame- the very communities the bill purports to “protect”.

Tsiane said it was very difficult to register TK and the idea was not to collect recipes of indigenous knowledge passed down over the years. But he admits it’s going to be tough getting all the practitioners to conform to the new regulations.

The proposed bill also provides for the establishment of a National Indigenous Knowledge Systems Office (NIKSO) and an advisory panel to support the office. Their function will include developing an effective regulatory framework and act as custodian for TK that cannot be specifically designated. 

Currently, TK is managed by the National Recordal System which currently endorses a closed access policy for TK and that which is not in the public domain requires authorized access. Patrick Gillfillan of UCT has also highlighted a concern that innovators could get around formal protections by adapting the knowledge.

Traditional practitioners are also obliged to register with NIKSO. Tsiane said the registration of traditional healers and their specific purview was a key outcome.

“The local healers organisations haven’t been regulated to date and the Act will help people to know who X and Y are in the context of the law. We must have rules, ethics and a code of conduct in the scope of our practice.”

He said the act talks about four categories of traditional practitioners and this would help align the industry.

According to Tsiane, the department of Health was legally obliged to be involved in the process. He said on December 13, 2016, the panel would select a registrar to oversee the forthcoming meetings. Afro Leo report

Monday, 14 November 2016

BRICS IP Forum - Register Now. Discount for Readers

Afro Leo has caught wind of a unique IP Forum dedicated IP issues in BRICS countries to be held in London next Monday and Tuesday (21-22 November 2016) at the Grange City Hotel. It is a jointly hosted conference by five well known IP firms dedicated to each country and region plus industry speakers from AB InBev, BSA The Software Alliance, Brand Finance, Novartis and Richemont.

There are a few seats still left. The cost of this two-day conference is US$550 pp. This includes the two-day conference, mid-morning refreshments, lunch and afternoon refreshments. The organisers have offered a 10% discount for readers of this blog, please just mention this when booking. Click here to register and send an email here to obtain the special rate.

Friday, 4 November 2016

IP & Corporate Governance : King IV

This is the first post of a series dealing with the role of IP in corporate governance in the wake of the launch of the KingIV report in South Africa by the Institute of Directors (Angela Cherrington and her team) earlier this week. The conference had well over 1000 business leaders based in Gauteng and a stellar line-up of speakers.

This post explores the relationship between the KingIV Report on sustainable governance and IP, the next traverses a three step approach to IP management, followed by a case study illustrating the need for a deft touch on IP enforcement where brands cater for social good, and the power of measurement.


Professor Mervyn King, the name that is inextricably linked to the KingIV report on sustainable governance, started off his presentation at the launch this week with a slide that I often use to start off my own presentation on intellectual property and innovation. I am sure he would be pretty bashful about using my favourite slide. That’s not true of course, but the fact that he used that particular slide, my slide, is.

He used it to illustrate, in his wise demeanour, that the value over time in companies has shifted from physical assets to intangible ones. This illustrated too, the evolution of the King reports (I-IV) and the shift in emphasis of governance over time from profits and outputs, to outcomes i.e. intangibles.
His particular example was the business of Ben & Jerrys which he introduced as a pioneer in using business as a force for good.  I am familiar with their ice cream and subsequently looked that business and came across a book published in 1994 entitled “Ben & Jerry’s: The Inside Scoop” which focusses on “how two real guys built a business with a social conscious and a sense of humour.”
1994 was of course also a critical date for South Africa and the wise Prof reflected upon that, stating that the evolution of King was is indeed an unintended and positive by-product of our grappling with our unique circumstances as a nation at that time, and since then. A nation with so much diversity and disparity. He explained that this is the reason why KingIV is also a pioneer, worldwide and why he sits on so many international boards, on governance. I am sure that there are many more reasons.
The use of that particular slide by me is significantly less profound but hopefully no less remarkable. You see the link between intangibles and intellectual property is in fact tangible. Intellectual property in its legal forms as patents, trade marks, designs, copyright and knowhow are the only legal way in which intangibles are protected and nurtured. Proper governance under KingIV will therefore mean proper IP governance.
So, despite the phrase “intellectual property” not featuring once in the entire KingIV report, adhering to KingIV naturally means adherence to sound policies on IP management and governance. The better this governance, the better care of the intangibles and potentially, the higher value of the business.  
It is worth mentioning here, that the ISO standard on brand evaluation published in 2010 (ISO10668), advocates a three step approach to brand evaluation. Brands are of course, the touch and feel of a business, that distinguish it from others and through which repeat customers are retained.
The Apple brand speaks to innovation and tremendous customer experience, whereas the Oakbay and Enron and now Eskom conjure up completely different images. Those brands also have three different brand values. Apple dominates the world, whereas Oakbay, Enron and sadly now Eskom do not.
The first step of the three step approach to brand valuation entails a thorough examination of the legal position of the brand i.e. legal governance of intellectual property used to protect a brand. The second and third steps, by the way, entail measuring the behavioural and financial aspects of a brand. I am no accountant but these are very King-like attributes to me.
An example of where a simple trade mark opposition had a direct effect on a listing value in an IPO was that of Skype. Their litigation (including routine oppositions) with BSkyB in Europe had to be disclosed in the listing documents as a material risk, directly affecting its value.
But this stage I am hoping that you are with me, that IP governance and KingIV outcome based reporting, and brand valuation are in fact, three peas in the same pod. I will go as far as to say so is innovation. The normal use of that slide is to draw parallels between IP governance in the creation of opportunities to innovate, create jobs and grow. Intellectual property therefore potentially underpins it all.
Next up, a three step approach to effective IP management.
Posted by Darren Olivier (editor of Afro-IP)

Friday, 14 October 2016

RSA: Much Needed IP Training Manual For Enforcement Officials Launched

This post is a welcome contribution from Amanda Lotheringen (Senior Manager of Copyright and Enforcement) on the launch of their new training manual. Congrats!
"The Companies and Intellectual Property Commission (CIPC) recently launched a South African version of a "Training Manual on Intellectual Property (IP) Crime Prosecution for law Enforcement Agencies and Prosecutors" prepared by the Honourable Justice Harms, former Deputy President of the Supreme Court of Appeal, based on a similar manual prepared for the World Intellectual Property Organization (WIPO). This IP Manual was customized by Justice Harms for the South African legal landscape. The success of the project can be attributed to the close collaboration between CIPC and WIPO’s Building Respect for IP Division.
With the manual as a backdrop a training programme was conducted over two and a half days and was attended by senior Commercial Court prosecutors representing six of the nine Provinces and senior police officers from the Directorate for Priority Crime Investigation from all nine Provinces. 38 nominated officials from the above organizations were the first batch to benefit from this Train the Trainer programme. Training trainers has proven to be very effective as a mechanism to promote peer to peer practical training.
The objectives were to build capacity and foster inter-agency cooperation as cornerstones of effective enforcement of intellectual property rights (IPRs) in South Africa. Building partnerships and leveraging on the expertise of such partners greatly assist the CIPC to strengthen the regulatory environment and efforts geared at combating trade mark counterfeiting and copyright piracy.
The first day commenced after the Acting Commissioner for CIPC, Adv Rory Voller welcomed all participants and emphasized the successes associated with collaboration, especially in training and education initiatives. He also mentioned the political will and commitment that the Minster of Trade and Industry, Rob Davies, MP had expressed by way of listing combatting counterfeiting and piracy as a key priority area for CIPC.
Adv. Voller was followed by the Executive Manager for Innovation and Creativity, Ms Nomonde Maimela who highlighted cooperation between investigators and prosecutors as a crucial element of a successful criminal prosecution. She emphasised the linkages between the IP Manual and the international obligations and requirements contained in Part III of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement"). Article 61 of the TRIPS Agreement requires members of the World Trade Organization ("the WTO") to "provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale". South Africa, as a consequence, adopted the Counterfeit Goods Act 37 of 1997 (GCA) as part of the legal framework within which to deal with IP-related crimes.
Ms. Maimela further underscored the value of the IP Manual as a tool to assist investigators and prosecutors in identifying the essential elements of trade mark counterfeiting and copyright piracy and to analyse the requirements for successful prosecution. She closed by emphasising the link between effective enforcement of IPRs and economic growth.
Louise van Greunen, Director, Building Respect for IP Division represented WIPO. She commended South Africa as being the first Member State to have adopted a customised version of the WIPO Training Manual on Intellectual Property (IP) Crime Prosecution for law Enforcement Agencies and Prosecutors and thanked the CIPC for their commitment to build capacity in this important area.
The training was conducted at the highest level with most of the substantive lectures being presented by the author of the IP Manual, Justice Harms."

Friday, 7 October 2016

Similarity Tools, Bug Bears and Brexit

Readers may or may not be aware of the work that the European IP Offices have doing to establish a similarity tool for goods and services. This tool (see here) consolidates the practices of the offices to create a search that will establish the degree of similarity between goods & services. This is important for both prosecution (searches, citations etc) and litigation departments (oppositions, infringements, cancellations etc).  It is a very useful guide only they say - check out its disclaimers.
Similarity Tool Disclaimer
Some of you may have already used this tool, some not. Although it does not give you a practice on the similarity of wine & grapes, it does for just about every other good and service. This is useful because if there is no similarity there cannot be a likelihood of confusion under the European application of the test and probably since Due South in South Africa's application of the test too. There is also a handy section measuring the degree of similarity and the reasons for non similarity (mostly applying the well known Treat test and recent permutations of it).
Forgive me for the next paragraph but it has been a bug bear of mine since returning to RSA from Europe almost a decade ago:
Under the EU application of the Sabel v Puma test on "likelihood of confusion", there is a distinct requirement for the similarity of goods and services to be determined. In South Africa, the judgments still conflate the issues of similarity of goods/services, similarity of mark, nature of consumer, purchasing act, strength of mark and likelihood of confusion without first analysing each element. I believe that the current approach in RSA is the wrong approach. I jotted down my thoughts in several blog posts in 2012 (here, here and here) and more recently gave a presentation at UJ on this very topic. I still get very irritated when I read Yuppie Chef, Black Knight and the many others on the application of our test because it leads to incorrect decisions. At least in my opinion.
Incidentally, this week ARIPO renewed its co-operation with EUIPO, and one of the areas of collaboration involved the sharing of the similarity tool. I thought that the tool, very kindly made available on EUIPO’s website, was therefore already “free to air”. However, the sharing of this tool and the various areas of co-operation discussed by the two intergovernmental offices does indicate to me that European influence in the interpretation of the tests is likely to prevail in Africa as we go forward.
On this note, it will be interesting when/if Brexit occurs. Up until the mid nineties, RSA courts if unsure of the meaning of their trade mark legislation they would take a look at that was happening in the UK. As the European system has developed the gaze of the South African courts has focussed more on continental Europe and decisions of the Courts of Justice as they have been known. Now if Brexit occurs it will be interesting to see which courts will have our preference; we have seen much discontent over the years over on IPKat about how the Brits view some of the decisions in Europe.
Happy Friday!

ARIPO & EUIPO shake hands as Marrakesh comes into force

Best mates: Campinos & Dos Santos
ARIPO, the intergovernmental organisation for co-operation amongst African states in intellectual property matters has, this week, signed a Memorandum of Understanding with the European Intellectual Property Office (previously OHIM). It aims to achieve the following:
  • renewing relationships between the two organisations that commenced formally in 1999
  • licensing ARIPO data for use in EUIPO's free to view trade mark, design and patent search platforms, and for statistical information
  • dedication to a process of harmonisation
  • co-operation on training (including secondment opportunities) with annual meetings to discuss major pending issues
  • extension of IT, automation and modernisation schemes
  • co-operating on research development and enforcement initiatives
The feature that caught Afro Leo's eye is the possibility of EUIPO exporting and sharing the EUIPO developed "similarity tool" and Afro Leo had dedicated a separate post to that.

For more on this please click here.

ARIPO also celebrated the coming of age of the Marrakesh Treaty on 30 September 2016 (thanks for reminding us!) but somewhat lamenting that only Mali had ratified the Treaty after nine African States had originally signed it. ARIPO urges other African states within its membership to come on board.

For more on Marrakesh including a tribute from Stevie Wonder click here.

Tuesday, 20 September 2016

Zambia's New Traditional Knowledge, Genetic Resources and Expressions of Folklore Act.

A Zambian citenge depicting a village scene.
(This is the one Little Leo has with her far from home,
so this is the one that gets pictured.)
Little Leo promised you a look at Zambia’s new TK, GR and EOF bill, so here we go.  Quite appropriate timing, too as the WIPO IGC on those very topics is going on now.  (Though Zambia is not on the list of participants.)
The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2016 (Act No. 16 of 2016) came into force in June of this year.  [WIPO has it listed in their database as “…Folklore Act, 2006,” but that appears to be a typo as the Act itself says 2016 and references treaties that came into existence after 2006.]  The Act’s preamble indicates that the Act is meant to implement the ARIPO Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore, the TRIPS Agreement, and, like the new Industrial Designs Act, “any other relevant international treaty or convention to which Zambia is a State Party.”  Unlike the Industrial Designs Act, the traditional knowledge (TK), genetic resources (GR) and expressions folklore (EoF) act does not replace any existing law in Zambia; it is brand new.
Little Leo’s first thought upon hearing that Zambia had a law on EOFs was whether the Nyanja singer Angela Nyirenda’s recording of “Ching’ande,” a traditional Tonga song, on her album Malo Abwino would have required permission under this law.  Article 3 of the Act seem to answer that in the negative by excluding from the Act any use of expressions of folklore among traditional communities.  [Little Leo is rather happy as “Ching’ande” was the reason she purchased that album, even if she spent more time listening to ”Nimpepako Ma Key” and “Ubwinga.”  Amayenge and Mashombe Blue Jeans aside, there’s not a lot of recorded music available in Tonga.]

Permits Permits Permits

The main gist of the act is that permits are required for exploring, accessing and using TK, GR and EOFs.  Permits must be obtained from the Patents and Companies Registration Agency after a written arrangement is worked out with the community that holds the GR, TK or EOF.  The community is not allowed to authorize anyone to access or use without a permit.  (Art. 67.)
There are detailed rules laid out for obtaining and complying with permits.  (Arts. 32, 36, 40 and 45.)

The New System

The structure of the system seems to be somewhat akin to trademark protection.  Registration is optional but will serve as prima facie evidence in court, and the Registrar will publish an Intellectual Property Journal on protected TK, GRs and EOFs.  It does not look as though there is any opposition process as in trademarks, however.  Registration does not require public disclosure of secret TK or EOF in order to register for protection.  (Arts. 15(5) and 47(3).)  The Register will also contain records of all licenses, access agreements and other contracts related to use of GR, TK and EOFs.  Access agreements must be in writing and approved by the Agency in order to be valid.
The duties in the Act are overseen by the Registrar appointed under the Patents and Companies Registration Act.  This Registrar is a very busy person indeed.  In addition to the duties required under the Patents and Companies Registration Act, the Industrial Designs Act and who-knows-what-other-acts, the Registrar is now also in charge of administering the TK, GR and EOF act.  In this case, that means also running a lot of education programs about these topics.  Luckily, both the Patents and Companies Registration Act and the TK, GR and EOF act allow the Patents and Companies Registration Agency Board to appoint assistant registrars to help out with all these duties.  [That is quite a mouthful; Little Leo thinks there must be a fun acronym for that board.]  The Agency also has the ability to transfer the TK, GR and EOF duties to another institution if it sees fit.  (Art. 9.)

Extensive Definitions

Over a tenth of the Act is definitions.  The Act contains very detailed definitions for many terms that have proven difficult to agree upon in international settings, such as “expressions of folklore,” “holder” and “traditional community.”  The definition of traditional community is worth highlighting as it illustrates the local nature of this law:
“ traditional community ” means a human population living in a distinct geographical area in Zambia which is the creator or recognised, according to customary laws and practices, as the creator and custodian of a traditional knowledge, genetic resource or expression of folklore and the words “community” and “local community” shall be construed accordingly.
Zambia has approximately 72 local languages with 7 or so that are recognized as main languages.  The languages, and the cultures with which they go, tend to be geographically segregated.  In general terms, Bemba in the north east, Kaonde and Lunda in the north west, Nyanja and Tumbuka to the east, Lozi to the west, Tonga to the south, etc.  In other words, nearly all Zambians live in distinct geographical areas.  Lusaka and the main Bomas (towns) tend to have some people from other tribes, but for the most part, geographical areas tend to be fairly homogenous in culture.
The concept of “customary laws” contained within the “traditional community” definition is another term upon which agreement is difficult internationally, but which makes sense in the Zambian context.  In Zambia, customary laws are enforced by local courts that are integrated into the full national legal system.
It is also worth noting that the definition of Expressions of Folklore includes “any form, whether tangible or intangible, in which traditional culture and knowledge is expressed, appears or manifests…”  Many discussions in this area use the phrase “traditional cultural expressions (TCE) instead of Expressions of Folklore.  It appears that the Zambian act’s use of EoF also covers TCE.

Protections Granted

The Act has five enumerated protections listed in Art. 4(1), with the authority of holders of the relevant rights to bring legal proceedings granted in Art. 4(2).  This makes sense for four of the protections, but is a little confusing with respect to 4(1)(c), which protects “an equitable balance between rights and interests of holders and users.”  That sounds like something that would also need to be enforced by users.  The other four protections are:
·       Against infringement of TK, GR and EOF
·       Against misappropriation of TK and EOF
·       Against misappropriation of GR
·       Against improper grant of IP right over TK, GR and EOF
The Act also enumerates six benefits and rights that are granted to holders of TK, GR and EOF.  (Art. 4(4).)  [The Act says the holder may “excise the following rights,” but Little Leo is pretty sure that’s a typo and should be “exercise.”]  These rights include the option of registering TK and EOF with ARIPO and with the Zambian Patents and Companies Registration Agency.  Registration opportunities extend to those with transboundary rights in accordance with Article 5.4 of the Swakopmund Protocol.
Rights granted include both economic and moral rights.  For example, “distortion, mutilation or other modification of” expressions of folklore are prohibited.  (Art. 49.)  And, holders have the exclusive right to license what they hold, which is discussed further below.
Somewhat oddly, in the middle of all this protection and right-granting, there’s a long list of principles that seems like it would better fit in a preamble.  But, hey who says laws have to be drafted in a certain order?  It is unclear what legal effect this list of principles will have or how the items on the list will play into enforcement of rights under the Act.  Perhaps it will be used to interpret other provisions of the Act by a court.  (The 12-element list can be found in Art. 5.)

Prior Informed Consent and Benefit Sharing

Prior informed consent and benefit sharing are sort of buzz terms in GR/TK/EOF circles.  The Zambian act pays homage to both by including the terms, although somewhat unnecessarily.  All three subject matter portions of the act allow holders of the relevant items to license access to or use of the respective materials.  As discussed above, arrangements are only allowed if approved by the Agency through the permit-granting process.  So, there is no use allowed without prior informed consent, even without the sections that require prior informed consent.  (Compare Art. 17 giving the holder the exclusive right to “authorise the exploitation” of TK and Art. 18 requiring users of TK to obtain prior informed consent.)
Benefit sharing is also required, again both through the exclusive-right-to-license provisions and through explicit benefits-must-be-shared provisions.  Benefits considered go far beyond money and can be anything the holders feel would be beneficial to them.  A non-exhaustive list appears in Article 43:
(a) the license fee;
(b) upfront payment;
(c) milestone payment;
(d) royalty;
(e) research and development funding;
(f) joint ownership of intellectual property;
(g) employment opportunity;
(h) participation of Zambian nationals, the Agency or appropriate institution designated by the Agency in the research, and development based on the genetic resource or traditional knowledge;
(i) priority to supply raw materials of the genetic resource required for the production of products derived from the genetic resource;
(j) access to products and technologies derived or developed from the genetic resource or traditional knowledge;
(k) training, both at institutional and traditional community levels, to enhance local skills in genetic resources or traditional knowledge, and their conservation, evaluation, development, propagation and use;
(l) provision of equipment, infrastructure or technological support; or
(m) any other benefits as may be appropriate in relation to the genetic resource or traditional knowledge.

Exceptions and Limitations

In addition to the inter-traditional community sharing discussed above, there is also a broad exception for education, research and experimentation.  (Art. 3(3).)  Somewhat surprisingly, there are also compulsory license provisions akin to what one might find in a patent law.  In cases where GR or TK is “not being sufficiently exploited by the holder or where the holder refuses to grant access subject to reasonable commercial terms and conditions, the Minister may, in the interest of public security or public health, grant a compulsory licence to fulfill a national need.”  (Arts. 30 and 23, respectively.)  Interestingly, “the Minister” is mentioned a number of times in the Act, but it is never specified which Minister this is.

Disputes, Remedies and Enforcement

Disputes under the Act are to be heard by the Registrar, with the option to appeal to the High Court.  (Arts. 56 & 64.)  Little Leo wonders how difficult it will be to dispute the accuracy or validity of a registration granted by the Registrar, or the fairness of an agreement authorized by the Registrar, or the validity of a permit issues by the Registrar, before the Registrar.
There are also criminal enforcement mechanisms similar to those in the Industrial Designs Act.  Contravening the Act can result in up to 4 years in prison, a fine of 400,000 penalty units (~USD$12,000), or both.
Lastly, Little Leo notes the customs authorities granted in the act, mainly because many of the things she uses in her daily life that could potentially fall under the EOF umbrella, from her hand-carved and pyrographic nsima sticks that she cooks with to the citenges she wears to bike.  Customs agents are given the authority to seize GRs or “any material incorporating traditional knowledge, genetic resources or expressions of folklore that a person intends to export without the necessary permits.”  (Art. 68.)  Those permits are really important.

Monday, 19 September 2016

Anything you can think of can be 3D printed. But what about intellectual property?

SLA 3D Printer used by Rabbit
Whatever object you can think of, as long as it’s not giant-sized, can be 3D printed these days. NASA is sending 3D printers onboard spacecraft, to print spare parts if and when they’re needed. Nike is 3D printing prototypes for bespoke footwear, having partnered with IT company HP, and in the US, the first 3D printed pills have been approved by the US Food and Drug Administration.
3D technology is already being used for things like hip and knee replacements. Dental technicians are using them to design highly customised dental implants, bridges, crowns and dentures, and shells for hearing aids can be very accurately moulded to a patient’s ear, thanks to a 3D printer.
Advanced 3D printing technologies have become accessible due to the expiration of key patents held by the original pioneers of the 3D printing industry, releasing the monopolistic control over printing processes that have traditionally been confined to the industrial or healthcare fields.
Quick to seize the opportunity, 3D printer manufacturers like MakerBot and Ultimaker have paved the way for accessible 3D printing, and prices for these printers range from R37 500 to R84 995. A MakerBot Replicator Z18, which can build an object of up to 12 inches in width and depth, and up to 18 inches in height, is selling on for R133 000.
DionWired, meanwhile, is selling a XYZ 3D printer for 9990 ZAR, and is soon bringing out the Da Vinci 1.0 AiO, which can scan and replicate objects up to six inches high, which will retail at 14 990 ZAR.
The intellectual property implications, of course, are far reaching. Sized up against the rapid evolution of 3D technology, and its quickly expanding accessibility, IP laws globally are simply inadequate, and there’s a dilemma: How can designs, patents and copyrights be protected, while allowing 3D printers to positively impact society? For example, one of these impacts could be the ability of a rural clinic to 3D print a prosthetic knee for a patient, instead of waiting weeks for it to be manufactured and transported back from a laboratory.
Sinal Govender, an associate in the IP practice at Norton Rose Fulbright points out that emergency medical equipment, including syringes and needles, can potentially be 3D printed, which would greatly relieve the scarcity of these resources in outlying areas. “Service delivery could be taken to another level, and the costs of manufacturing and transport could be significantly reduced,” she says.
If you’re a designer whose protected products are being flagrantly pirated via a 3D printer, however, it’s another story. And consider the fact that guns can potentially be 3D printed, as well as illegal drugs. Like all technology today, 3D printers can be applied to positive outcomes, as well as  negative ones.
This illustrates the imperative to find a balance in the IP law concerning 3D printers, that serves to protect creative ideas and control the reproduction of harmful objects, but doesn’t stifle the enormously beneficial potential of 3D printing in areas like education and medicine, both rights entrenched in the Constitution, says Govender.
The 3D printing world involves all aspects of IP, including copyright, patents, designs, and trademarks, so it’s a complex legal landscape to navigate, and laws and regulations haven’t caught up with this new technology, either in South Africa or elsewhere.  Various industries are currently debating the issue, and we may see each industry submitting their individual concerns so that the legislation can be updated and amended.  The fact remains, all IP rights owners should be taking particular care to ensure that their IP is protected in an environment where it’s increasingly easy to infringe it,”she says.
We all know about theft of software off the internet. Well, 3D printing can actually manifest the product or object itself. We are only beginning to see the applications of this technology, thus the law needs to apply itself with equal fervour if creative ideas are to be protected in future, while allowing technology to change the world for the better.

Afro Zee

Saturday, 17 September 2016

Zambia Welcomes Two New IP Acts

What better to do during cold season than sit huddled inside signing IP bills into law?  At least that seems to be the case for usually-quiet Zed with the introduction of two new IP laws this past June.  The Industrial Designs Act 2016 (Act No. 22 of 2016) and The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2006 (Act No. 16 of 2016) were both signed into law on June 6, 2016. [Given the large gap between 16 and 22, it seems President Lungu was busy signing quite a number of new laws.]  The updated WIPO announcement is available here.

We’ll explore the Industrial Designs Act here and save the TK, GR and TCE act for another day.  (Nkombo Little Leo wakatala na wayanda koona.)

Industrial Designs Act

The Industrial Designs Act replaces the British-era Registered Designs Act from 1958 (six years before independence).   According to the preamble, the Industrial Designs Act is meant to implement Zambia’s relevant obligations for the Paris Convention for the Protection of Industrial Property, the Harare Protocol on Patents and Industrial Designs and the TRIPS agreement, as well as “any other relevant international treaty or Convention to which Zambia is a State Party.”  WIPO, ARIPO, WTO; check, check, check.  Zambia joined these three agreements in 1965,1986 and 1995, respectively.  Some things take time.

To be fair, the 1958 Act had been amended multiple times, including in 1965, 1987 and 1994.  It already provided arrangements for utilizing the Paris Convention and provisions giving designs registered under the Harare Protocol effect in Zambia.  The TRIPS Agreement provisions on Industrial Design (Articles 25 and 26) are fairly basic protection provisions and may have already been met under the 1958 Act, but Little Leo is not going to try to analyze that.  (The 1994 amendments added penalties for falsification and deception with respect to industrial designs.)

So, if most of the treaty obligations were addressed in the 1958 Act, what’s so special and shiny about the 2016 Act?  A bunch of things.

Design Registration Now Gives Design Protection

The biggest change between the 1958 Act and the 2016 Act is that registering your industrial design in Zambia now gets you industrial design protection.  Under the 1958 Act, registering your industrial design got you copyright.  [This is where Little Leo scratches her head and says, “ndapyopyongana.”  Why would registering an industrial design “give to the registered proprietor the copyright in the registered design” as it says in Art. 14 of the 1958 Act?  And if it was a copyright, and registration was required and the term was only five years, wouldn’t that violate Berne?  Ndapyopyongana maningi.]

Interestingly enough, the old rights granted sounded more like patent rights, “to make or import for sale or for use for the purposes of any trade or business, or to sell, hire or offer for sale or hire.”  (1958 Act. Art. 14(1).)  The new act’s inclusion of the right to “reproduce and authorise others to reproduce” sounds more like copyright.   (Art. 56(1)(a).)   The new act also grants the rights to exploit and assign, and the very patent-like right to “prevent any person…from making, using, offering for sale, selling or importing.”  (Art. 56(1)(b),(d) and (c), respectively.)

The term of protection is the same at five years.

Additionally, beyond the rights outlined in the rights section, there are new offences provisions that protect holders of design rights.  Art. 89 makes it on offence for a person to “make a die, block, machine or instrument…”  Now, theoretically, this means a die, block, machine or instrument that will make goods that infringe a design right.  And that’s what Art. 89(1)(a) appears to do, “knowing that it is likely to be used for, or in the course of committing an offense against a design.”  However, Art. 89 then continues, “or (b) whether or not it is likely to be used for, or in the course of, committing an offence against design.”  Italics added.  Ndapyonpyongana alimwe.

New Protection Eligibility Requirement

The language for protection requirements has changed, but it is unclear how meaningful this difference will be.  Compare the 1958 Act and 2016 Act language:

1958 Act Art. 7(2) “new or original”

2016 Act Art. 15 “new and has individual character”

Individual character is explained in Art. 18 as “the overall impression [the design] produces on an informed user differs from the overall impression produced on such a user by an earlier design”

The 2016 Act also clarifies that the tests are measured globally, not just to Zambia.  (Art. 17.)

Opposition Period Introduced

The new act introduces an opposition period for designs, giving the public at least two months to file a written notice of opposition.  (Art. 43.)

New Exceptions and Limitations

The 2016 Act specifies exceptions beyond the innocent infringement defense and compulsory licenses available in the 1958 Act, both of which are still there.  (Arts. 66 and 81, respectively in the 2016 Act.)  Art. 59 limits design rights to industrial and commercial activities.  It then goes on to also specifically exclude acts done for scientific research, experimental use, teaching and testing.  Furthermore, Art. 61 specifies that use of a registered design is not infringement if the use is done for private and non-commercial purposes, for evaluation, research, teaching or in repairing a “complex product.”

The compulsory license options have been adjusted.  Those desiring a compulsory license must now wait until three years after the registration date.  (Art. 81)  Under the 1958 Act, compulsory licenses could be issued immediately.  (Art. 17.)   However, the conditions for receiving a compulsory license are now broader.  Under the 1958, the only reason for a compulsory license to be issued was if the design was not being applied in Zambia.  Under the 2016 Act, a compulsory license may be issued (a) if Zambian demand is not being met, (b) if refusal to grant a license is “prejudicial to the country’s establishment and development of industries or commercial activities,” (c) if a license on reasonable terms and conditions could not be obtained, (d)  in interest of public health or safety, (e) if there is IP abuse, or (f) for a national emergency.

Morality Clauses Strengthened

The exclusion of designs that violate law or morality has been greatly strengthened and expanded.  In the 1958 Act, this was covered by a savings clause buried in the Miscellaneous section of the Act (Art. 57) allowing the Register to refuse designs “the use of which would, in his opinion, be contrary to law or morality.”  The 2016 Act specifically says in Art. 16 that such designs “shall not be registered and shall be excluded from being protected.”  It also broadens the list of what’s covered to include contrary to well established natural laws, public order, principles of humanity and environmental conservation.  The Register also has the leeway to choose to refuse a design that would “encourage offensive, immoral or anti-social behaviour.”  (Art. 31(1)(b).)

New Destruction and Forfeiture Remedies Introduced

Interestingly enough, the 1958 Act does not describe the types of remedies available to a right-owner whose rights are infringed, though it does describe the remedies against groundless threats for infringement.  Being a Commonwealth country, remedies in Zambia were probably known and handled under common law rather by statute.  This seems to likely still be the case for remedies such as damages and injunctions.  However, the 2016 Act does specifically introduce forfeiture and destruction remedies. (Art. 65.)

Stronger Employee Rights

Employees are given stronger rights in their designs.  Under both the 1958 and 2016 Acts, designs done by employees for their employers belong to the employers.  However, in the 2016 Act, employees can receive equitable remuneration for designs that prove more valuable than either party imagined.  (Art. 45(1).)  The Act also clarifies that designs made by employees but not as part of their duties to the employer belong to the employee.  (Art. 45(3).)

Law Matches Other Changes

The 2016 Act brings the design law into conformity with other changes that have happened in Zambia’s IP structure since the last amendments in 1994.  For example, the law now acknowledges that design registrations are handled by the Patents and Companies Registration Agency that was established in 2010.   The creation of that agency consolidated registration duties with the new agency’s register, rather than under a specific Register of Designs.  Additionally, the registration records may now be kept electronically.  (Art. 10.)

Can’t Blame the Examiner

There is a new explicit non-warranty and non-liability clause for the decisions of the examiners.  (Art. 9.)  Presumably, this means if a court later decides that a registered design should not have been protected or if a design is registered which infringes someone else’s rights, the examiner who registered the design in question would not be liable for reliance on said registration.

Foreign Applicants Must Use Patent Agent

Foreign applications must be done through a registered Zambian patent agent.   (Art. 38.)

Criminal Penalties Enhanced

Lastly, maximum criminal penalties for contravening any provision of the act have increased from 15,000 penalty units and three years in prison (Art. 51 of 1958 Act.) to 400,000 penalty units and four years in prison (Art. 58 of 2016 Act.)  The current value of a penalty unit (per S.I. Number 41 of 2015) is 30 ngwe, or about 3 U.S. cents, meaning the current max fine is just under US$12,000.  That’s a rather hefty amount for a country with average incomes estimated at about 1/10 that (per World Vision) and average salaries barely over that (per Average Salary Survey).