Tuesday 17 June 2008

Darren Olivier

SA: More on Traditional Knowledge

Further to posts on Afro-IP here and here concerning the IP Amendment Bill, Chris Job and Esme Du Plessis (both Adams and Adams) writing for World Trade Mark Report have provided a summary highlighting that in addition to amendments to the existing IP legislature protecting performers, trade marks, designs and copyright, the bill establishes:

"* a national framework to administer the protection system, including a National Council for Traditional Intellectual Property with appropriate responsibilities, duties and functions;
* a National Database for Traditional Intellectual Property, incorporating separate sections for the different types of traditional knowledge ; and
* a National Trust Fund for Traditional Intellectual Property to administer income derived from the exploitation of traditional knowledge." and

"The bill will also amend the Trademarks Act to provide for the registration of a traditional term or expression as a trademark. A 'traditional term or expression' will be defined to mean a term or expression having an indigenous origin and a traditional character and which is used to designate, describe or refer to goods or services. It will be registrable as a trademark if it is capable of distinguishing the goods or services of an indigenous community from the goods or services of another community or person. The registration must be in the name of the indigenous community, or a person or body authorized to act on its behalf. A traditional term or expression will also be capable of constituting a certification mark, a collective mark or a geographical indication.

An 'indigenous community' is defined as any community of people currently living within the borders of South Africa, or which historically lived in the geographic area currently within the borders of South Africa. Once a traditional term or expression is accepted by the registrar for registration as a trademark, the National Council must be notified. The council may also be called upon for advice if a mark which forms the subject of a trademark application appears to contain a traditional term or expression.

Following registration, the indigenous community which owns the registration will not be entitled to:

* restrain a person from continuing to use the mark if such use started prior to the commencement of the Amendment Act; or
* restrain a member of the indigenous community from using the mark, provided that licence fees are paid. The amount of the licence fee will be determined by:
agreement between the user and the Trust Fund; the collecting societies representing the parties; or the courts (in the absence of agreement)."

As Roshana, points out in her post here, the bill has far reaching consequences. For example, the widely cast definition of "indigenous communities" pertaining to a nation dubbed the "rainbow nation" (as much for its outlook as for its vastly different cultures) suggests that IP lawyers will have much to think about. Comments on the bill were requested by 15 June but we understand from Dr Wim Alberts (Bowman Gilfillan), who attended the public consultation on the 13 June, that this has been extended to the end of June by "gentleman's agreement". In any event, it seems that in the not too distant future the bill is likely to become essential reading for IP practitioners, if not for pleasure, interest or influence.

Darren Olivier

Darren Olivier

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