Wednesday, 30 April 2008
Tuesday, 29 April 2008
If any reader has a link to this film, can he or she post it below under Comments.
Canada's International Development Research Centre (IDRC) and South Africa's Shuttleworth Foundation are supporting the ACA2K network through the LINK Centre of Wits University in Johannesburg.
According to the activities guidelines, researchers in the study countries will investigate the "copyright environment", namely, policies, laws, regulations, practices and perceptions, in the respective countries in relation to access to learning materials, with emphasis on university learning environments.
On May 15, 2008, the World Intellectual Property Organization (WIPO) will be choosing a new Director-General. Historically, the selection process has been non-transparent and closed to civil society. In an attempt to open up the process, CIEL, Third World Network, and a group of civil society organizations invited all 15 of the WIPO Director-General candidates to meet with civil society groups on April 15, 2008 in Geneva. Candidates were also asked to respond in writing to 8 questions.
A Webcast of the whole meeting in five sequences is available below:
Video 1 - http://video.google.com/videoplay?docid=5093362967627971571&hl=en
Video 2 - http://video.google.com/videoplay?docid=1312827334844132820&hl=en
Video 3 - http://video.google.com/videoplay?docid=-8845402997045229188&hl=en
Video 4 - http://video.google.com/videoplay?docid=5105921436401561633&hl=en
Video 5 - http://video.google.com/videoplay?docid=8998862960353259859&hl=en
Further information on who attended the meetings well as the written responses that have been received so far, can be found on the CIEL website at: http://www.ciel.org/Tae/WIPO_DirGen_15Apr.html
News reports on the WIPO DG candidates race and on the meeting with civil society can be found at:
http://ip-watch.org/weblog/index.php?p=955 (Responses to 5 IP Watch Questions)
http://www.ip-watch.org/weblog/index.php?p=1016 (Report on meeting with Civil Society)
http://www.ip-watch.org/weblog/index.php?p=1002 (Report on Candidates meeting with member states)
We encourage civil society and other stakeholders to make their opinions and evaluations known and to engage as fully as possible in the discussion about who the best person should be to lead to WIPO."
Monday, 28 April 2008
“He [Prof Odek] is the only candidate from Africa. At 44, Prof Odek is the youngest candidate. But his credentials are impressive. He is likely to provide the organisation with the vision it needs. As an outsider, he is also more likely to effect changes to meet many of the challenges facing WIPO.
He has a doctorate degree in judicial sciences and a masters in law from Yale University, and he has chaired various WIPO committees.
He is also an associate professor of public law at the University of Nairobi and a member of the governing council of the African Regional Intellectual Property Organisation.”
Mwaura also believes that if all the 19 African countries in the coordination committee, including Kenya, vote as a block then Prof. Odek will carry the day.
However, as reported here the geography factor may come into play considering that the outgoing DG is from Africa and a European and an America has previously been at the helm.
Comparing the first three months of this year to the same period last year, Lennox said enforcement action against pirate operations across the country was up from 62 last year to 170, arrests were up from 22 last year to 97, and convictions up from six last year to 44. While piracy levels in South Africa remained unacceptably high, he expected significant progress during the next two years.
Meanwhile, in Ray Hartley's blog (quoting Adams and Adams) in TheTimes.co.za "one in five South Africans are “quite unconcerned” about STEALING intellectual property. EXTRACT:
The firm [Adams and Adams] was citing the findings of a survey by TNS Research Surveys which it said was “shocking”.
“These buyers give no thought to copyright or other intellectual property rights and make a significant contribution to the problem.”
Chairman of the firm, Chris Job, said counterfeiting and piracy had increased across all product categories.
He said the prosecution of counterfeiters and pirates had also increased, but not in the same proportion.
“Whilst South Africa has excellent laws to protect intellectual property, its enforcement record can still be improved.”"
This report also cites a recent economic study which shows that spending on hardware, software and IT services in South Africa was expected to reach R61 billion for 2007. For every R1 that Microsoft earned in 2007, partners working with Microsoft were estimated to earn R9.69.
Friday, 25 April 2008
Ocean Tomo has released its catalogue for its European IP auction due in Amsterdam in June 2008.
The auction that will be conducted by Ocean Tomo Auctions will have IP assets under 40 main lots. These include domain names, patents relating to wireless electronic payment systems, video compression technology and encryption technologies, among others.
The IP assets on auction will be "grouped into 15 categories including: online & mobile commerce; digital media systems & management; computer systems & software, lighting technology; information management & Data systems, Fluid handling: Location based systems & Logistics; Security & Authentication systems; Communications; Messaging: Electronics & Handheld Devices; Smart Cards; Manufacturing & Automation; telemedicine; and Domain names.
This mode of exchanging value for intellectual property has generated over US$ 70 million since 2003 which confirms its effectiveness as an IP exchange mechanism. For a long time, Governments in Africa have called for the transfer of technology to the continent in vain. The success of this model is one that business and government leaders on the continent should watch and learn from. Quite possibly, a variant of this auction system could stimulate the transfer of technology into and out of Africa.
The transaction is expected to close in the second quarter, and is subject to definitive agreements, regulatory approvals in Canada and South Africa, including the acceptance by the Toronto Stock Exchange, and various other consents and approvals typical for this type of transaction.
Afro-Leo is pleased to hear that Napier's shareholders have approved the deal which, if it goes ahead, will see an inflow of IP onto the continent by acquisition (whether it is actually held there post acquisition or not), rather than the usual outflow he has become accustomed to reporting. Afro-Leo suspects that the $5.25 million price tag may have become more attractive to the South Africans, following recent exchange rate fluctuations in the past month since the deal was announced(assuming the deal is funded in Rands).
Thursday, 24 April 2008
Given the tendency of top positions within international agencies to rotate between different geographical regions, the chances are that this position, currently held by an African (Dr Kamil Idris) and formerly held by a European and an American, will go to a candidate from the Asia-Pacific region.
Wednesday, 23 April 2008
Asmus sued on the basis of passing off and under the Close Corporation Act 26 of 1988 and was successful. This appeal was then lodged. In dismissing the appeal the Judge considered the content of S20(2) of the Close Corporations Act and the meaning of an "undesirable name" and "calculated to cause damage", as well as the principles of passing off when applied to the sale of part of a business (including a name) and the subsequent use of that name by the purchaser for other businesses. A more comprehensive note on this case will follow at a later date.
The defence raised by Moresport was that its actions were lawful under Section 15(3A) of the Copyright Act 98 of 1978 (general exceptions from protection of artistic works). The judge relied on National Director of Public Prosecutions v Basson 2002 1 SA 419 (SCA): "where and order is sought ex parte it is well established that the utmost good faith must be observed. All material facts must be disclosed which might influence a court in coming to its decision and the withholding of such facts entitled a court to set aside an order."
Afro-IP reported on a similar Croc case involving Shoprite Checkers here. The earlier decision (in favour of Crocs) was handed down by the Cape High Court whereas this case found itself in the High Court (Transvaal Provincial Division). Afro-IP also notes that the supplier of Moresport, Holey Shoes is involved in litigation with Crocs Inc in other jurisdictions - one reason why this may have been an important strategic decision for both Holey and Crocs.
Tuesday, 22 April 2008
Monday, 21 April 2008
On another note, ICSTD reports that the TRIPS Council is once more divided over whether patent applicants should be obliged to disclose more about the origin of ‘biological resources’ or ‘traditional knowledge’ than has previously been the case. Wider disclosure requirements were supported by key developing countries such as Brazil, India, Thailand, Pakistan and Venezuela, while Uganda led the LDCs group. This continued disagreement highlights the persistent failure of WTO member states to resolve trade interests and environmental /conservation concerns as enshrined in the Convention on Biological Diversity (CBD).
Peter Mwaura may not be aware that fellow blogger, David Njuguna's blog IP Kenya, is also doing its part to educate and highlight the concerns and issues around IP rights in Kenya, by creating a local forum for news and comment. Afro-IP hopes to help that cause too.
Friday, 18 April 2008
The slogan ‘Grown Under the Sun' was unveiled in Britain in July 2007 by Kenya's horticulture industry to market its fresh produce in UK. As a result of this initiative, as noted here, Kenya’s share of the European market grew from to 32% to 38%.
A search of the UK trade mark database shows existence of a community registered trade mark number E4549333 consisting of the slogan “NATURALLY GROWN UNDER THE CANARY ISLANDS SUN SINCE 1935” in class 31(Fresh fruits and vegetables) and 39(Distribution, transport, storage and warehousing of fruits and garden herbs of all kinds). The trade mark is in the name of JULIANO BONNY GOMEZ of Spain, the application having been filed way back in 2005.
Thursday, 17 April 2008
"I have your letter of 16 October 1970 in the above and I am rather surprised that the Registrar would take such completely moronic view of the situation. Had the individual any intelligence, he would know that no business man in his right mind would use a term with vulgar meaning to sell reasonably high-priced merchandise. Where a word like “Bum” might possibly give offence to delicate Registrars of Trade Marks in the under side of the world when applied to such things as underpants, it has only a connotation of casualness and ease when applied to anything else.
With regard to the mark THE BUM SHIRT the situation is even more remarkable for it is utterly inconceivable that the term in THE BUM SHIRT can be related to what the Registrar obviously feels is the primary meaning of the work “BUM”. So far as I am concerned, the particular Registrar has not yet climbed out of the slime in which he was spawned to persist in such a completely idiotic decision. I see that both the Deputy Registrar and the Registrar have concurred in the idiocy reflected by their most recent decisions.
Our Trade Mark Office has at its disposal every English language dictionary in current use throughout the world. The definition of “BUM” which has an off-color meaning does not appear in relation to an individual’s backside. As a matter of fact, Webster’s Third New International Dictionary, Unabridged Edition, does not even give the slang definition. The Random House Dictionary of the English Language, Unabridged Edition, similarly fails to relate the word “Bum” to anything which might be offensive. The word “Bum” occupies over two columns in the “Dictionary of American Slang” published in 1960, copies of which are enclosed. Some sixteen definitions are given of the word as a noun and you will find the definition “the human posterior” as the very last.
It is inconceivable, therefore, for anyone on your side of the water to follow and accept the six percent view of the meaning of the word taken by the Deputy Registrar and the Registrar. I fear very strongly for the intellectual level of South Afrikaner who must continue to live subject to such thinking. Our Patent Office, operating under a law which prevents registration of offensive trademarks, has no difficulty in registering “THE BUM SHIRT” and a copy of Reg. No. is enclosed. No registration has been sought in any other nation of the commonwealth.
I wonder if you would dare to show the Registrar a copy of this letter. If nothing else, it might be a good mental cathartic. However, if in your timid judgment you fear reprisal for calling the shovel the shovel it is, you may limit Application No. 0585 to the device and THE B—SHIRT.
By the way, has the Registrar been able to overcome his delicacy to the extent of registering BEACH BUM? It would be interesting to know what happened to that trademark application and even more interesting for the Examiner to explain away the fact that more human posteriors are seen currently on beaches than any place outside houses of ill repute.
You will gather from all the above that I am a bit upset. If you reach this conclusion, you will be absolutely correct. I am annoyed as all get our with what I feel is narrow-minded stupidity bordering on outright illiteracy.
PS I am even use this letter as basis for a thesis on "Phobias of the World". I have a doctorate in law but a doctorate in philosophy might not be amiss if I could squeak through for one with a thesis on this general subject"
Needless to say, the letter did not appear to find success as AFRO-IP could not find either of the trade marks on the SA Registry website using his online login. AFRO-IP also tried to contact the attorney for his view on the UK Registry's rejection of TINY PENIS for shirts and to ask him for a copy of his doctorate(s) but sadly found that this colourful attorney passed away in the late seventies.
"We are not just working to protect Nigerians. It's also a responsibility for us to protect other countries in sub-Saharan Africa. These countries, most of them are poor. They don't have the capacity to help themselves. And more importantly, the criminals being chased out of Nigeria were relocating to these countries. In 2005, we instituted the West African Drug Regulatory Authorities Network as a platform for interacting and exchanging strategies. And it's working. East African countries are joining us. The level of incidence of fake drugs is coming down drastically, though we are not relaxing because we know these criminals are not relaxing. We always want to be ahead of them".Presumably she can expect little help from the pharmaceutical industry: so many of the basic medicines in circulation are out of patent protection and are marketed in generic rather than branded formats. Additionally, IP rights are national--which makes cross-border activity easier for governments than for individual rights holders.
Wednesday, 16 April 2008
"Motivated by the concern of creating an unwarranted monopoly, recent decisions in Europe and South Africa have imported certain restrictions into the current trade-mark infringement provisions. These restrictions are intended to limit the infringement rights of trade-mark proprietors. This is particularly evident from the definition of infringing use adopted by the courts. This article compares the approaches adopted in Europe and South Africa. Like the British House of Lords, the South African Supreme Court of Appeal has adopted a narrow traditional approach in defining infringing use which is at variance with European jurisprudence and the TRIPS Agreement. Also in line with developments in the United Kingdom, onerous requirements for establishing trade-mark dilution have been imposed".
Please bear with us whilst we search for the looted picture of the mask alongside
Mr Ita sets his version of facts in chronological form and summarises English law on copyright. His argument about invalidity of the copyright in the photograpgh based on a subsequent UK trade mark registration is not entirely correct, as it assumes that a trade mark registration "overrides" copyright. Similarly, the logic in coming to his royalty figure of £350million is not beyond reproach. However, his article, its style and its conclusion are indicative of the scale of the issue and the emotion which surrounds it.
Article 11 of the UNESCO 1970 Convention on cultural objects declares as illicit, “the export and transfer of ownership of cultural property under compulsion arising directly or indirectly from the occupation of a country by a foreign power.”
Tuesday, 15 April 2008
The two suspect ringleaders were to appear in the East London Magistrates Court today. The vendors who have been selling the counterfeits have been warned and their names taken, so that if they are apprehended again they will be unable to plead they didn't know they were selling fakes.
Monday, 14 April 2008
That may be the effect of the decision by the European Court of Justice (ECJ) this month in the long running effort by Adidas to enforce its three stripe device mark against the two stripe "decoration" by Marca Mode CV and others reported here. The ECJ was asked to adjudicate on the meaning of the Harmonisation Directive, in particular whether the requirement of "availability" (ie the need of others to use the sign in the ordinary course of their business) should be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark. The ECJ said NO, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.
Article 6(1)(b) of the Directive provides that the proprietor of a trade mark cannot prohibit a third party from using, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services, provided he uses them in accordance with honest practices in industrial or commercial matters.
This case finds itself on Afro-IP because Anglophone African countries frequently use ECJ cases on the interpretation of the Harmonisation Directive, to help determine their own law. For example, under SA law, could this judgement spell the end of the relevance of the phrase "reasonably required for use in trade" to justify the rejection of a trade mark, thereby subtly broadening the right afforded by a trade mark registration (as the ECJ have done)? Article 6(1)(b) is repeated almost word for word in the SA Trade Marks Act, 1993 as Sections 10(2)(b) (Unregistrable Trade Marks) and 34(2)(b) (Defences/Exclusions to infringement).
Saturday, 12 April 2008
"The Koras promote African artists and their music to a global audience, unite Africans through celebration of excellence in music, produce a world-class, live performance and television broadcast show that portrays the best of Africa and the diaspora to the rest of the world.but no details are given as to how this laudable (and, some would say, nearly impossible) objective is to be achieved through the hosting of seminars. Nonetheless, Afro Leo purrs with pleasure to see the protection of copyright being mentioned in the promotional literature: it shows how much prominence the unauthorised exploitation of others' works has now obtained.
They also protect the intellectual property of artists and prevent unauthorised copy and reproduction of materials, unite and connect Africans in a spirit of unity through hosting of seminars by industry professionals ..."
Friday, 11 April 2008
and makes for fascinating reading. In particular, it contains a list of what should be in the Act, but isn't. It is open to all for comments and suggestions.
This blogger will also be involved in a number of discussions with colleagues concerning the draft Bill - for example, a rose grower wanted to know if the Bill made provision for plant breeders rights, which it does not appear to do.
The SAIIPL were hoping to get comments by the end of the month and if you would like to add yours to that list, please let me know here. In addition, if you wanted to take part in the discussions (which will take place on 15 April (Patents) and 17 April (Trade Marks and general)) I am happy to arrange to patch you in by conference call or if you are in the vicinity you are welcome to join in. If you are interested in joining us by call or in person please make it clear in your email. The sessions will be an hour long each starting at 16h00 GMT+2
Thursday, 10 April 2008
In March, SABS destroyed thousands of goods deemed unsafe for consumers, many bearing counterfeit CE markings (the markings that the European Commission requires for products that match the European Union's fairly stringent safety standards).
This blogger wonders whether, and if so to what extent, organisations like the European Commission are willing and/or able to police the use of their safety standard marks outside the European Union.
There is provision for service mark applications
It has adopted the International Classification of Goods and Services
Licensing is recognised, subject to control provisions
Paris Convention may now be claimed
Trade marks are now registered for 10 years
The implementing rules and regulations have not yet been published and there appears to be some uncertainty over whether multi class applications will be accepted, the transitional provisions and the delays in publication of existing applications.
Gamibia is known for its significant tourism industry and the change in legislation is likely to be good news for tourist operators, who can now apply for protection in the service classes most relevant to their industry.
Wednesday, 9 April 2008
"... For poor Africans, intellectual property is not the issue and Kenya’s Ministry of Health should know better. Less than two per cent of the WHO’s list of essential medicines is protected by patents. In 2005, the head of the WHO’s Aids division, Kevin de Cock, said: “It is obvious... that the elephant in the room is not the current price of drugs. The real obstacle is the fragility of the health systems. You have health infrastructure that is dilapidated, a health workforce that is demoralised, labs that don’t work, supply chains that don’t exist and diagnostics that are missing.”
Without these things, you can give drugs away for free and they still won’t get to the most needy. But this doesn’t appear to matter to activist organisations like Doctors Without Borders and Oxfam ...".
Tandis que les marques de commerce et les marques de certification garantissent dans une certaine mesure l'origine, la traçabilité et la qualité des produits qu'elles accompagnent, les indications géographiques restent les seules à être liées d'une manière indissociable à des attributs et à des critères de qualité liés à l’origine des produits.
Dans son rapport sur l'évolution de la marque ingrédient de café "colombien" jusqu'à la reconnaissance de la dénomination Café de Colombia comme indication géographique par l'Union européenne, au sens du droit communautaire, le magazine de l'OMPI note:
"Dans un monde où les consommateurs exigent de plus en plus d’être informés sur les produits qui leur sont proposés, conclut‑il, les systèmes d’indications géographiques, qui offrent des garanties quant à l’origine et aux méthodes de production, ne peuvent que prospérer."
Tuesday, 8 April 2008
She states that "this measure has been taken to rationalise the operations of the Office. We crave your indulgence on this matter as we strive to improve our service position to you our esteemed clients"
Monday, 7 April 2008
Just focussing can be tough at UCT:
“Subject to an Act of Parliament, every person shall have the right to access all information held by the state or any of its organs at any level of government in so far as such information is required for the exercise of his rights.”This includes all records held by a public body, regardless of how the information is stored, its sources, when it was produced or whether it is classified -- a broad category that is capable of embracing intellectual property that is protected by confidentiality. The article details the provisions of the proposed legislation and the various checks and balances it seeks to implement.
Sunday, 6 April 2008
Afro-IP wonders if the Ernie Els figures included any payments from a fan pub in Surrey which, during The Open last year, sold limited edition - Ernie Ales?!
"An incident in Tamale, according to Bulldog, made them appreciate the hassles in trying to protect one’s own intellectual property.
“We were on tour of the three Northern regions last year with Castro and got wind of 5five material being pirated in Tamale. We tried to pursue it but rather ended up behind bars for some hours. We were not amused at all about the situation but we took it as part of the burden to bear in moving on with our work.”"
Saturday, 5 April 2008
Thursday, 3 April 2008
The Afro-Leo actually doubts whether use of the word "kikoi" to describe kikois would have infringed the registered mark KIKOY (had it been registered) simply because Section 11 of the UK Trade Marks Act provides that a registered trade mark is not infringed by the honest use of a sign to describe goods or services. How else would one refer to kikois (which it appears everyone accepts as a generic term for a type of cloth or fabric, normally of Kenyan origin)? Afro-Leo is, however, surprised that the application for KIKOY slipped through the usually thorough UK IPO examination process, which would normally spit back a rejection letter for these types of applications stating something like "... the mark applied for is an obvious misspelling of a non distinctive/descriptive term for a type of cloth or fabric, and as a result is not registrable in class 25." He does wonder if the term "kikoi" is protectable as a cloth or fabric from Kenya in the same or similar way that "champagne" is protected for sparkling wines and if Kenyan law makes provision for such protection.
Traidcraft Exchange agreed to spearhead opposition to the application in the UK at the request of a Nairobi-based charity Co-operation for Fair Trade in Africa, according to the Daily Nation report. A previous report highlighting the controversy can be viewed here.
"In recent weeks, I have been considering the problems faced by those seeking to secure, protect, or exploit IP in the African continent. It seems that, despite the wide spectrum of cultural, ethnic, geographic, and economic differences demonstrated across that vast continent, there are some features which are so widely shared as to be virtually pandemic.For the full contents of this issue of JIPLP click here.
One problem facing Africa's 54 countries (or more, depending on how you count countries and which ones you recognize) is that it is difficult to obtain information as to what the law is and how it works. Most African countries have very small IP professions, which means that there is little or no economic incentive for any publisher to assume the financial burden of launching and selling specialist law journals, law reports, and practitioners' reference works. For the insider, this means an increased degree of reliance on one's own personal knowledge and experience, and of reliance on the assistance of one's closest colleagues; for the outsider it means that advice relating to the filing of a patent, an opposition to a trade mark or a defence to an action for copyright infringement cannot be found without making personal contact with an expert in the country or countries concerned. It also means that, where the same question is asked of several practitioners in the same jurisdiction, their answers are different not because they each analyse the application of the law to a set of facts in a different way but because they often seem to hold different pieces of their country's legal jigsaw in their hands.
A second problem relates to the relative difficulty in communication both within Africa and between Africans and the outside world. Levels of telecommunications penetration, and particularly the lack of broadband wireless internet access, place greater importance on slower and less reliable media such as the fax and the regular postal service. This means that, where IP information is available, it percolates slowly. It also means that much information which, in many developed countries, one simply gathers from an official website is far more difficult to access.
A further problem is that the general level of interest and excitement regarding IP rights which is found in those countries which own the most of them is far lower in those countries which either generate few such rights themselves or regard those rights as being matters of low priority. In many countries where IP is seen as an imported commodity that must be paid for, with consequences for their balance of payments, and where local need (in the case of patented healthcare products) or demand (in the case of branded fashion items and consumer goods) runs higher than the ability to pay for it, it is easy to see why local resentment of foreign IP runs high as well. Then there are countries in which the problems of internal security, external threats, environmental disaster, and demographic instability are so great that IP is viewed as a distraction from the immediate concern for survival.
The picture is not uniformly grim. South Africa has a vibrant and articulate IP community. Many of Nigeria's practitioners have studied the subject in depth in Europe and elsewhere and possess an impressive understanding of the field. Across the top of North Africa too, pockets of professional excellence can be found. But the overall situation remains bleak and two of the braver attempts to remedy it—the OAPI regional patent in Francophone Africa and the ARIPO system mainly English-speaking parts—have remained underutilized as IP owners display their indifference to the need to obtain protection or their lack of confidence that protection is what they will receive.
There is no obvious solution or quick fix to Africa's IP problems. In the short term, however, we must remember that we are dealing with human beings and not only with sets of rules. Before our brethren in Africa can improve the situation there, they must believe that they can do so. We must encourage them and support them, rather than confining our input to complaining about how things are and kicking out at those who have so far failed to put them right. Without the support of the wider IP community, the agony of Africa and its ensuing entropy will only continue, to the detriment of us all".
The order states that, pending the hearing and determination of the suit, the defendant and its servants are restrained from,
- Providing services using the patented bin
- Offering for sale or selling the patented bin
- passing off the foot operated bin as theirs
- trading in Kenya in any manner likely to cause their business to be confused with that of Sanitam
- trading in any manner as to infringe patent no, AP 773
- passing off their business of foot operated sanitary bins as that of the plaintiff
This is the second injunction to issue for Sanitam. The first was against Rentokil in Sanitam Services (E.A.) Ltd v Rentokil Kenya Ltd & another  eKLR, in which the Court of Appeal restrained Rentokil from infringing the same patent, AP 773. The said patent relates to a foot operated sanitary bin. Sanitam applied for the patent on 4th September 1998 in ARIPO and the patent was subsequently granted on 25th October 1999.
Sanitam has fought many battles before the Courts to prevent infringement of the patent. In April 1999, before the grant of the patent, it unsuccessfully sought temporary injunction against Rentokil. After the grant of the patent, it again unsuccessfully sought the same orders in 2000. Thereafter the matter went for full hearing in which the High Court ruled in 2002, Sanitam Services (ea) Limited V Rentokil (k) limited  eKLR, that Sanitam had not proved infringement.
Sanitam appealed against the decision of the High Court and it partially succeeded in the Court of Appeal (in 2006) in obtaining an injunction for the lifetime of the patent with effect from 16th December 1999, the date when Sanitam submitted an amended plaint to take account of the granted patent. However, the Court of Appeal did not award damages, ruling that, “[h]aving so found on the issue of infringement, it was unnecessary to examine the hypothetical issue relating to damages.” It may not be surprising that this is the first case on patent infringement in Kenya to go through the ranks all the way to the Court of Appeal.
After the Judgment against Rentokil in 2006, ARIPO published an entry in its Journal to the effect that the patent had lapsed for failure to pay annual fees. Sanitam then sought the intervention of the Board of Appeal, which ultimately overturned ARIPO’s decision and reinstated the patent on the register.
The present case, against Bins, is quite interesting and demonstrates the complexity of resolving intellectual property disputes and it kind of echoes the sentiments expressed by the Court of Appeal in the Rentokil case that it is “…a branch of law which has scanty litigation and therefore minimal jurisprudential corpus in this country...”
For example, the orders sought by the plaintiff included passing off and damage of goodwill, which ordinarily are trade mark issues. It is telling that the counsel for the plaintiff made submission to the effect that “a case relating to patent was similar to that of protection of trade marks.” However, it is not clear how or to what extent that relationship holds but it may be because the practitioners are more conversant with trade marks disputes which are legion, and this probably explains the tendency to extrapolate from experience of familiar territory.
The defendant argued that:
- The existence and efficacy of the patent was doubtful (perhaps alluding to the removal and restoration of the patent from the register).
- The plaintiff had not demonstrated that it had invented the bin.
- The patent was meant to muzzle the legitimate activities and honest business activities of the defendant.
- The plaintiff had not demonstrated that the patent was its invention.
- The plaintiff had registered the patent to achieve a technical result-to lock out other users of the sanitary bin from the market.
- Similar bins were in use in many parts of the world and the defendant had imported the bin it was issuing to its customers.
- It was in the process of challenging the registration of the patent.
As one would expect, this thread of argument by the defendant did not offer a lifeline, and the court was convinced that the law did not back the contention by the defendant that it was not bound to respect the patent.
The court concluded that the issue to be determined was not whether the patent was wrongly registered but whether the plaintiff had established a case to entitle the court grant the orders sought. As such, the court distilled three principles needed to support an injunction; namely, that applicant was required to demonstrate,
(1) probability of success at trial; and
(2) that damages would not adequately compensate for the loss suffered and
(3) consideration by the court balance of convenience in case of doubt on either (1) or (2).
In the circumstances, the court made a finding that the plaintiff had proved it had a valid patent, which was infringed by the defendant by the acts of offering for sale or hire foot operated sanitary bins without authorization of the plaintiff. Apparently, the Rentokil case considerably influenced the decision to grant the injunction, with the court holding that the two cases were similar.
The court further observed that if the defendant considered that the patent was wrongly registered it could apply for invalidation or revocation of the patent under section 103 of the Industrial Property Act, 2001(Act) and that it could also seek exclusion of application of the patent in Kenya under section 59 of the Act.
While the observation on revocation under section 103 is correct, it does appear that the court was wrong in stating that the defendant could seek exclusion, under section 59 of the Act, of the application of a patent in Kenya where the patent is registered by ARIPO.
Section 59 provides that:
A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act except where the Managing Director communicates to ARIPO, in respect of the application thereof, a decision in accordance with the provisions of the Protocol that if a patent is granted by ARIPO, that patent shall have no effect in Kenya.
First, the word “application” in section 59, does not mean “application of a patent in Kenya” as stated by the court, rather it is in reference to a “patent application”. This is so because once ARIPO makes a decision that an invention is patentable, before granting the patent, it has to communicate the decision to member states (meaning heads of the respective patent offices), who determine whether the patent will have effect in their country.
Secondly, under the section it is only the Managing Director who is mandated to communicate a decision to ARIPO that the patent if granted will not have effect in Kenya. There is no provision in the Act for an aggrieved person to seek exclusion of an ARIPO patent based on section 59.
Thirdly, section 59 is only applicable before grant of a patent not after grant, as is the present case.
The same article reports that, last year, artists including Mzwakhe Mbuli (above, left) and Richard Siluma took the battle against piracy to the streets, raiding shops and factories producing pirated music and confiscating millions of rands worth of counterfeit products.