Monday, 30 June 2008


Are compulsory patent licences the answer?

Writing in Business Daily, Franklin Cudjoe (editor of African Liberty) argues that it is bureaucracy and not drug patents which are the cause of disease in Africa. In discussing the adoption by the World Health Organisation’s governing body, the World Health Assembly (WHA), of a set of public policy recommendations for impoverished governments struggling with disease, he analyses the WHA's call for a more liberal use of compulsory patent licences, enabling governments to produce generic copies of patent-protected drugs on the assumption that patents prevent poor patients from accessing drugs. He then states:
"But patents aren’t pushing up drug prices, bureaucrats are. Consider the huge tariffs put on imported medicines in the developing world, going as high as 30 per cent in some African countries.

What’s more, prices aren’t the reason so many poor patients can’t get healthy. Even if you gave them unlimited to access to top-notch pharmaceuticals, most would still be facing substantial health risks every day.

From drinking water from polluted rivers, reliance on defunct medical equipment to living near open sewage systems.

Compulsory licences would likely exacerbate the problem of substandard pharmaceuticals in Third World drug markets. Locally produced pharmaceuticals often don’t meet basic quality and safety standards".
He cites the example of the research findings of Africa Fighting Malaria (AFM) that (i) of a representative sample of anti-malarial drugs sold in six African nations, almost half the drugs manufactured in Africa failed basic quality tests and (ii) a third of the drugs sold in Africa were single dose malaria treatments, often ineffective and causing the creation of drug-resistant strains of the disease. The irony, he says, is this:
"The WHA is also encouraging Western pharmaceutical firms to increase investment into medicines for diseases unique to the Third World. How do you convince shareholders to invest in R&D when the resulting drug formula can just be stolen by the local government -- with international sanction, no less?"
He concludes that the WHA should encourage poor countries to adopt prudent economic policies that will enable investment in healthcare infrastructure and ultimately encourage citizens to buy reliable health insurance.

My feeling is that it is necessary to distinguish the smaller picture from the larger one. In every individual situation in which a person's health is at risk because a patented product is not available to him, compulsory licensing would remove that barrier and provide relief -- but Franklin Cudjoe is right to say that prudent economic policies are the best solution in the long term since they provide the basis for market forces to enable legitimate medicinal products to be sold and distributed affordably while making it worthwhile for the IP owners to police the integrity of their own products.
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Friday, 27 June 2008


Zimbabwe: what's news?

Afro Leo has been very concerned about the recent news of political unrest and violence coming from Zimbabwe. Knowing that the African Regional Intellectual Property Organization (ARIPO) is quartered in Zimbabwe's capital Harare, and recalling that the African University in Mutare is expecting to host a WIPO Masters Degree course in Intellectual Property later this year (see Afro-IP post here), he asks if any of his readers can tell him how ARIPO is managing, and whether any contingencies have been made for the course if the troubles continue. Does anyone know?
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Thursday, 26 June 2008

Darren Olivier

Kenya's Anti-Counterfeit Bill - progress

According to Daily Dispatch, Kenya's Anti-Counterfeit Bill will be re-introduced in Parliament and introduced into law by the end of the year. Kenyan Industrialisation Minister Henry Kosgey said he would ensure that the Bill passed through the House. The Anti-Counterfeit Bill, 2007 was introduced in the last Parliament and only reached the first reading stage before the House was dissolved. As a result, all pending legislation has to be re-introduced. According to the draft Bill, dealers in counterfeit goods risk either 15 years in jail or a fine five times the value of the fake goods. It is estimated that manufacturers whose goods are affected experience losses in operating capacities of up to 30 per cent and associated loss in employment opportunities of above 27 per cent. Cases are reported of imported counterfeits but there is also a level of locally manufactured counterfeits. Beauty products, batteries and detergents are the most commonly imitated products. In addition Afro Leo notes previous reports on the scale of counterfeiting Kenya, particularly with respect to drugs, external pressure from pharma companies, from KIPI, from the ACCK and from IP Kenya.
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Wednesday, 25 June 2008


Hague, Geneva, Madrid -- and now Ghana

The World Intellectual Property Organization (WIPO) has announced that Ghana is acceding to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The Geneva Act will enter into force in respect of the Republic of Ghana on 16 September 2008 -- coincidentally the same day that the Geneva Act comes into force for the Organisation Africaine de la Propriété Intellectuelle (OAPI: see earlier Afro-IP post here). This brings to 50 the number of functional jurisdictions within the Hague Agreement, of which 11 are from Africa (click here for full list of Hague members). According to a further notice from WIPO, 16 September is additionally the date on which the Madrid Protocol comes into operation for Ghana.
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Darren Olivier

Pfizer-Ranbaxy deal might signal trend

...according to the title of Eklavya Gupte's article in MIP this week that reports that "This week's settlement of the Lipitor patent litigation suggests that branded and generic companies are more willing to compromise on IP rights". Lipitor is the the #1 prescribed cholesterol-lowering medication in the world according to IMS Health. IMS National Prescription Audit Plus™. March 2006. Heart Disease is usually seen as Western problem but is increasing prevalent in Africa - see News24 report here. The deal is described by Pfizer as a "win-win-win" because it is pro-competition, pro-intellectual property and pro-patient, according to the article.
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Tuesday, 24 June 2008


Kenya to protect its traditional knowledge and artifacts

Daily Nation reports that Kenya is to establish an inventory on its artifacts and traditional knowledge, which will then be registered (protected) under the custody of the National Museum.

This comes after the failed attempt to register KIKOI as trade mark in UK, reported here and here. The report indicates that a committee of stakeholders comprising Kenya Industrial Property Institute, Copyright Office, the department of culture, National Museum of Kenya and the Attorney General’s Office has been formed to develop “a legal and Institutional framework to protect cultural products and expressions.”

The committee will also identify cultural artefacts that can be commercially exploited with a view to protecting them to guard against exploitation by foreigners.

Details of the working of the committee are not clear from the Nation report and it will be interesting to know what proposals or legal framework the committee will come up with on how to protect artifacts and traditional knowledge.
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Darren Olivier

Nigeria's Drug trial settlement

According to this report in IOL, Pfizer Inc and Nigeria are keen to reach an out-of-court settlement over a 1996 drug trial that Nigeria says caused the death of 11 children and left dozens disabled, a lawyer for the drugmaker said on Friday. Nigeria's federal government and its northern state of Kano sued Pfizer more than a year ago for a total $8,5-billion (about R680-billion) in damages over the testing of the antibiotic Trovan in Kano during a 1996 meningitis epidemic that killed 12 000 children. The civil and criminal cases launched by Nigeria's authorities have grown into a tangle of unresolved petitions and counter-claims, dragging from one adjournment to the next. Pfizer, the world's biggest drugmaker, denies all charges stating that it was meningitis that killed the children or damaged their health, while Trovan saved lives and was as effective as the other, established drug used for comparison in the trial.
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Darren Olivier

Mr Video to pay punitive damages for copyright infringement

The Mr Video movie rental franchise – which had been interdicted and restrained from renting out films not acquired through Nu Metro earlier this month – was ordered in the Cape High Court this week to hand over the DVDs to Nu Metro and the copyright holders according to Die Burger. This report follows an earlier posting by Afro-Ip here. The group and 22 of its franchisees in the Western Cape were also ordered to pay the costs and punitive damages (ie a high award or so-called additional damages) of the application lodged against it by Nu Metro, the exclusive licensee of the movies, and the four copyright holders. Nu Metro had succesfully claimed that the group had been lending out zone 1 DVDs only intended for the North American and that the conduct of Mr Video constituted infringement under Section 23(1) of the Copyright Act 98 of 1978 read with Section 8(1)(g) of the Act which provides that hiring out a film is the exclusive right of a copyright owner. The case is interesting because it finds copyright infringement in respect of parallel imports and Afro-IP would be grateful for a copy of the decision to be sent here. For more information see allAfrica report here.
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Monday, 23 June 2008

Darren Olivier

25ft copy cats and the eroding influence of Schultz v B...

The waning influence of the 1986 case of Schultz v Butt seems clear from the latest High Court decision in Van der Merwe and Another v Els and Another (3279/08) [2008] ZAWCHC 31 (4 June 2008). For the uninitiated the Schultz V Butt cases involved copying of a hull of a catamaran, which was held to be unlawful. The cases arguably gave some form of recognition to a remedy of unlawful competition for copying of three dimensional utilitarian objects (in those cases the hull of a catamaran). In the present case counsel for the applicant relied heavily on Schultz v Butt in trying to show that his client's 25ft catamaran hull had been unlawfully copied by the respondent. The judge referring to observations by Dean (Handbook of South African Copyright Law), Justice Plewman (Premier Hangers v Polyoak (PTY) Ltd) and the S15(3A) amendment to the Copyright Act (see earlier posting here) concluded that the Schultz v Butt remedy "is of very limited scope":

"The inference seems irresistible, as submitted by counsel for the respondents, that the legal landscape has changed quite considerably since Schultz v Butt was decided more than twenty years ago. After all, how can the boni mores denounce as unlawful conduct that is specifically authorised by the legislature in s 15(3A) of the Copyright Act?"

In addition the judge distinguished the present case on grounds that the applicants had spent significantly less time developing the boat, than did Mr Butt; that the boat design had been protected by patents until 2003 which were now in the public domain; and the applicant's partnership had never produced the 25 foot boats on a commercially sustainable basis and that the application was not directed protecting existing goodwill but at preventing a competitor from trading.

In dismissing the application, he endorses Dean: "The unfairness and wrongfulness in the Schultz case in fact lies in the undue benefit which Schultz made of the expertise, effort and financial outlay of Butt and it is this principle which ought to apply in the area of the copying of three-dimensional technological objects."
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Egypt opens doors to GM pest-proof corn crop

Writing for IP-Watch, Wagdy Sawahel ("First Egyptian Approval of Genetically Modified Corn Raises Questions") discusses the recent approval by Egypt of the cultivation and commercialisation in that country of the Ajeeb-YG pest-resistant corn variety, developed by Monsanto. This is said to be the first lawful introduction of genetically modified crops into the Arab world.

The decision was taken following a recommendation by the Egyptian National Biosafety Committee and Seed Registration Committee, following field trials which showed that the infestation of three corn borers was eliminated or reduced to negligible proportions. In this excellent review of the positions taken both by GM's supporters and its detractors, the author adds that the 2002 Egyptian law on the protection of intellectual property rights is TRIPs-compatible and therefore allows for the patenting of GM plant products -- with all the repercussions that this has both for investment and the control of plant varieties.
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Sunday, 22 June 2008


Tanzania promises to protect Zanzibar henna art

The government of Tanzania has committed itself towards the protection of Zanzibar's henna art. According to an article in AllAfrica, this commitment was made by assistant director of Culture and Development in the Ministry of Information, Culture and Sports, Ms Angela Ngowi, while she was officiating at an dxhibition of henna painting on canvas under the Vipaji Arts and Culture Programme. Ms Ngowi is cited as saying that
"the copyrighting will be done promptly to avoid what befell the Tinga Tinga painting that originated in the country, but has been copied everywhere due to lack of copyright protection".
It may be speculated as to whether copyright is the appropriate legal means of protecting a technique, rather than specific works produced in accordance with that technique. Accordingly, Afro Leo awaits details of the promised protection with great interest.
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Friday, 20 June 2008

Darren Olivier

2010 World Cup Music Rights: whose right?

According to DispatchOnline Creative Workers Union of South Africa (CWUSA) is crying foul after music powerhouse Sony BMG Music Entertainment acquired the 2010 Fifa World Cup music rights. CWUSA General Secretary Oupa Lebogo said his organisation was troubled by the way the 2010 Fifa World Cup music rights tender had been awarded.

“The way Fifa handled the tender process is very suspicious. The tender was never advertised. Sony BMG and Fifa had an agreement outside South Africa without consulting the local artists.”

“This means that the local artists will be held hostage by a company located outside South Africa. Sony BMG will appoint anyone they choose to perform at the opening and closing ceremonies as well as during the tournament.

“They will also have the right to hand-pick a person to compose the theme song and an artist to perform it.”

Local Organising Committee spokesperson Tim Modise refuted the claims:

“Sony BMG did not get any tender. They are sponsors of Fifa. They will obviously be part of the whole process,” he said.
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Thursday, 19 June 2008


Prospects for African signatures on EPAs diminish

Some of the 35 African, Caribbean and Pacific states which originally initialled interim economic partnership agreements (EPAs) with the European Union may still withdraw from the process, joining the 44 states have that refused outright to sign them. The EU's June deadline for signatures has been deferred to September, but even this timing seems optimistic now according to many commentators. The EPAs include IP rights, which the EU wants to see tightened [Source: IPS News].
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Wednesday, 18 June 2008


90 minutes for the game, a lot longer for the copyright

Ghanaweb carries a note that the Local Organizing Committee (LOC) of the recently-ended football African Cup of Nations, Ghana 2008, is reminding everyone that it is still forbidden to use photographs of the tournament and related events for commercial purposes. Says the LOG secretariat, even though the event may have officially ended, the images, pictorials and all other symbols of the tournament belong to the LOC. It remains unlawful for any individual or organization to commercialize them without its permission.

The LOC regrets that, despite earlier attempts to educate the relevant public concerning the prohibition placed on copyright infringement, some individuals and companies have put on sale images which have been taken from the event without official authorization. The statement said such acts contravened the rights of those who duly obtained the right for the usage of the pictures. It further warned individuals and companies to refrain from the acts or "face the music". Presumably the music is copyright-protected too ...
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Road safety organisation accuses Lagos of criminal software infringement

The Nigerian Federal Road Safety Commission (FRSC) has accused the Lagos State government of infringing its copyright when producing motor vehicle plate numbers and drivers' licences. This course of action is criminal and undermines the National Uniform Licencing Scheme, according to the FRSC's Chief Executive. It has also led to the duplication of issued plate numbers. The copyright work in question is not the number plates and licences themselves, so much as the software which enables the vehicle licensing to be effected. Source: Damilola Oyedele (AllAfrica).
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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.
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Monday, 16 June 2008


OAPI signs up for Geneva Act of Hague

Press release PR/2008/554 today informs us that the African Intellectual Property Organization --OAPI -- has acceeded to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. One of the three treaties that govern the Hague System for the international registration of industrial designs, the Geneva Act offers businesses in all participating countries a simple, affordable and efficient way of obtaining and maintaining their industrial designs portfolios. The Geneva Act becomes effective for OAPI on 16 September 2008, so mark your diaries.

Currently 16 countries belong to OAPI: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Côte d'Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal and Togo.
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Darren Olivier

Breakthrough by WHO will give poor countries better access to drugs

An agreement has been reached by world health leaders regarding approaches to drug research and development and improving access to medicines, according to a report by Delegates at an annual meeting of the World Health Organization (WHO) (which Afro-IP believes is the Sixty-first World Health Assembly but would welcome confirmation) have endorsed policies governing public health, innovation and intellectual property strategies.

Not suprisingly, "The intellectual property issue has been a controversial one for the WHO, with members divided over how and whether to revamp the prevailing patent system, which many believe makes drugs unaffordable to poor nations."

At the meeting the main decision-making body of the WHO, the World Health Assembly (WHA), the 2,700 delegates from 190 countries endorsed a six-year-action plan to deal with non-communicable diseases.

Public health activists have appaarently welcomed and applauded the bitterly fought consensus and say the WHO has engineered a major step forward in tackling intellectual property, which spans patents, copyright and trademarks.

They have called on the WHO to push for new incentives for drug makers to create new diagnostic tests for tuberculosis, according to the report.
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Sunday, 15 June 2008


MIP course available, but you've only 2 weeks to apply!

On 4 August the World Intellectual Property Organization (WIPO) Worldwide Academy is jointly offering a Masters Degree in Intellectual Property (MIP), together with the African Regional Intellectual Property Organization (ARIPO) and Africa University (Mutare, Zimbabwe). The language of instruction for the MIP programme is English and the course runs for 12 months, from 4 August 2008 to 31 July 2009. It is aimed at young professionals who wish to acquire the skills required to play a leading role through exposure to an international and comparative approach. The curriculum aims to provide an in-depth examination of all fields of intellectual property and is taught by leading academicians, legal practitioners and IP experts drawn from various universities in Africa.

Applications must arrive by 30 June 2008 (you can find the application form here), accompanied by a detailed curriculum vitae, copies of university degree certificates/diploma and transcripts, at least two letters of reference and any other appropriate supporting documents. Detailed information concerning the MIP Program is also provided on the websites of AU, WIPO and ARIPO.
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Friday, 13 June 2008


Innovative franchise idea to beautify SA men

Health and beauty franchisor Placecol is set to open its first South African outlet catering for men -- but in a most innovative fashion. Placecol Man will be equipped with rugby screens and cultivate a "more masculine environment". At present, fewer than 10% of Placecol's clientele are male, since men were not comfortable receiving beauty treatments in a feminine environment. The first new salon is expected to open in Pretoria in September, providing hair treatments, pedicures and manicures as well as facials. The group CEO says that it is hoped to increase the number of outlets to180 during 2010. In a further development, Placecol's Stylique franchise concept, which targets black consumers, will be launched by Buhle Cosmetics later this year. Buhle has apparently acquired the relevant intellectual property rights from Placecol for this purpose [source: AllAfrica].
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Thursday, 12 June 2008


Watch out for fake HP refills

Computer hardware and accessory giant Hewlett-Packard has said 60 percent of the refill products used in printers across East Africa are not genuine, a fact that is making a serious impact on its sales and brand image. According to an article in Networkworld, the products most affected are laser and ink cartridges used in printing machines, where fakes enter the regional market through Asia, mainly from China.
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Wednesday, 11 June 2008

Darren Olivier

Domain Name Workshop 15 - 16 SEPTEMBER 2008

The CO.ZA domain name administrators, UniForum SA, in association with the SAIIPL, the .ZA Domain Name Authority will host senior ADR experts from South Africa and New Zealand in presenting a domain name Alternate Dispute Resolution (ADR) workshop in Centurion, Gauteng in September. The ADR workshop, which will coincide with iWeek, will take place on the 15th and 16th of September 2008 at the offices of Spoor & Fisher attorneys in Centurion. Anyone with an interest in the workings of the .ZA ADR Regulations is urged to attend the workshop. There is however limited space available so reserving your spot is essential.

The workshop will run over two days and will predominantly focus on the substantive and procedural legal issues influencing local and international domain name ADR Decisions and Procedures. Senior speakers from .NZ DNC (the .nz Domain Name Commission) will also be present at the ADR workshop, and a detailed Agenda will be circulated shortly.

Proposed matters for discussion include:

1. Tribute Sites ( matter) - as first reported on Afro-IP here.
2. Reverse Domain Name Hijacking (
3. The rights of local agents and licensees to a well-known international brand

A workshop agenda will be made available at

Attendance Fee: Total fee of R400 for both days, which includes refreshments and lunch.


Since there is limited space available, we request that all attendees please register for the workshop as soon as possible. Please also inform your colleagues of the workshop and encourage them to register.
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Light Years points the way for sub-Saharan IP growth

The Guardian relates that poor African farmers can boost export revenues from agriculture by billions of dollars if they use intellectual property as part of their business plans, according to a report by Washington-based non-profit organisation Light Years IP. This report focuses on sub-Saharan Africa, identifying some 14 products that could generate an average increase of 230 to 350 percent in income that could be ploughed back into developing countries' economies. Among the products researched were Kenyan tea, Sudanese cotton, Ethiopian fine coffee, Malian mudcloth (left) and Ethiopian leather.
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Tuesday, 10 June 2008


Visitor to Ghana seeks local products

Writing in the Canadian Epoch Times, ("Colonialism has left a stigma on Ghana's culture and traditional goods. What a shame"), Zoë Ackah writes a really depressing account of her experiences as a visitor to Ghana. She discovered that "the vast majority of 'African fabric' is now made in China". She continues:
"I decided to buy some of the cheap Togo fabric people sell on their heads. Ghanaians go to neighbouring Togo to buy fabric. Somehow, I though maybe the Togolese still make fabric. Stupid me. I later learned the Togo fabric is actually smuggled into Ghana. Why smuggled? It is a matter of copyright infringement.

You see African fabric print design is highly competitive. As soon as a fabric design from Ghana is selling well, someone will take a piece of it to China, have the print cheaply duplicated, and run yards of the knock-off at half the price. I guess the Hollywood elite aren't the only ones being bled dry by Chinese copyright infringement. They're just able to afford lawyers a team of public relations experts".
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Darren Olivier

Don't Let Your IP Slip Through the Net

Thanks to a tip-off from Birgit of (Class 46) I have two opportunities in one day to link to colleague Warren Weertman on domain name strategies (as reported on AllAfrica here). Warren comments on the increasing trend in cybersquatting and proffers a solution through the UDRP (which applies to .com, .net and .org domain names) and the ZADRR (which applies to domain names) forums as being quicker and more cost effective than the Courts; taking as little as 60 days from start to finish. Warren illustrates that in Kenya, there is no similar type forum, which in effect means tackling the issue of cybersquatting using costly court procedures. Of course Kenya is not the only country where (and there are many in Africa) there is no alternative dispute resolution forum for domain name disputes. Russia is also an example of where cybersquatter can be difficult to dislodge, without expensive proceedings.
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Darren Olivier

South Africa: first fan site decision

Warren Weertman (Bowman Gilfillan) has brought Afro-IP's attention to the the first case lodged in terms of the .ZA Domain Name Dispute Resolution Regulations (ZADRR) which deals with the issue of fan sites in South Africa. The case concerned the dispute between Automobiles Citroen and Mark Garrod, the owner of the domain name. The decision is located here. He describes the case as follows:

"The facts of the case are, briefly, Automobiles Citroen has been the owner of the Citroen trade mark in South Africa since 1953. It kept this trade mark registration even during the 1980s when economic sanctions were imposed on South Africa and it did not formally trade in South Africa. However, when Citroen decided to re-establish its dealer network in South Africa and set up a website to promote their cars in South Africa, they found that the domain name had been taken. The owner of the registered the domain name in March 2000. The website associated with the domain name was ostensibly a tribute site to Citroen cars. Whilst the website did not criticise Citroen cars in any way, the problem for Automobiles Citroen was that the domain name was the obvious domain name for their website.

Ultimately the adjudicator found in favour of Automobiles Citroen and ordered the transfer of the domain name from Mr. Garrod to Automobiles Citroen. The adjudicator found that the domain name did not convey to the public the true facts regarding the nature of the website associated with the domain name. Simply put, this means that the domain name did not indicate to the public that when they accessed the website associated with the domain name they would be accessing a tribute site for Automobiles Citroen and not the official website of Automobiles Citroen.

Importantly for brand owners, the adjudicator found that just because a brand owner was not quick enough to register an Internet domain name identical to their brand does not mean that they should be held to ransom by an Internet user that registered their domain name. This has important implications for brand owners and prospective critics / admirers of any given brand."
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Darren Olivier

Eagle wars

The SA High Court has handed down the latest judgment in EGL Eagle Global Logistics (South African Proprietary) Limited v Eagle Logistics CC and Another (37053/07) [2008] ZAGPHC 160 (6 June 2008) on a point in limine in a dispute between the two Eagle companies that has been going on since 2002 when Eagle Logistics applied under the Companies Act 61 of 1973 for Eagle Global to change its name, and succeeded in 2004. The decision was taken on review and referred back to the Registrar of Companies to decide the matter afresh, which it did in favour of Eagle Logistics again in 2007. Eagle Global objected that the order had been sent to the wrong address and that the decision was taken before close of pleadings. An application was then launched to reverse the decision and this hearing arose because Eagle Logistics took the point that the application was out of time. In dismissing Eagle Logistics' point the Judge held that:

"The phrase “apply to court” having been accepted as being ambiguous, should therefore be restrictively interpreted. That is to mean, when an application is filed in court subject to compliance with the provisions of Rule 6 (5)(a)(5)(b) and (5)(e), no one can claim to be likely prejudiced by allowing this matter to go into the merits as envisaged in section 48. I may indicate that having perused the entire papers forming part of the record, it did not appear like here, one is dealing with an application which has no merits. It would therefore be in the best interest of justice and fairness to both parties to have the real disputes between them, be heard and decided upon."

The application on the merits was postponed sine die (without date), so we wait for the next episode of ...... Eagle Crest?.
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Monday, 9 June 2008

Asiimwe Paul

Uganda's Private sector Foundation calls for stern measures on Counterfeits

In the run up to this year's reading of the budget, the Private Sector Foundation of Uganda (PSFU) has added its voice to several others concerning the effect of counterfeits on local industry. The PSFU represents private sector interests in Uganda, giving a platform to its concerns and carrying out advocacy initiatives.

The PSFU has requested the Minister of Finance to increase the penalties for trading in or manufacturing counterfeits to 10 million shillings(about US$6,000) with a jail term of 5 years. The Chairman of the PSFU, a former Minister of Finance "also proposed the establishment of a regional and international link with other anti-counterfeits bodies to curb the importation of fake goods."

These demands from the PSFU come against the backdrop of initiatives geared at curbing counterfeits by the East African Community Secretariat within the region. Hopefully, the PSFU will work hand in hand with international agencies such as the International Chamber of Commerce (ICC) and the World Customs Organisation (WCO) to implement sterner measures.
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Darren Olivier

Public consultation on Indigenous Knowledge in SA

The SAIIPL has issued the following notice concerning the policy framework on Indigenous Knowledge (see Afro-IP's post here on this important piece of legislation):

"The Department of Trade and Industry invited all interested parties to a public consultation on the Policy Framework for the Protection of Indigenous Traditional Knowledge through the Intellectual Property System & the Intellectual Property Laws Amendment Bill, 2008.

Date : 13 June 2008
Venue : University of Pretoria (Senate Hall)
Time : 09:00 – 15:00
RSVP : Brenda Ndlovu

Tel: + 27 12 394 1540
Fax: + 27 12 394 2540


Please confirm your attendance on/before 9 June 2008"
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Tanzania devises new measures to contain fake cosmetics and drugs

The East African reports that Tanzania Food and Drugs Authority (TFDA) will control advertisements for cosmetics and drugs in a bid to crackdown on fake products. It appears that TFDA is keen on enforcing the Food, Drugs and Cosmetics Act, which restricts promotion of regulated products.

By controlling promotion of products such as food, drugs, cosmetics and medical devices the authority expects that only reliable information will be disseminated to consumers. Any method of introducing, familiarizing or encouraging a person to use a particular medical product will come under close scrutiny by the authority and all forms of advertisements such as posters, billboards, radio and television will be targeted.

The authority blames rapid changes in technology, globalization and market liberation for the increase in fake cosmetics in Tanzania. As a result of trade in counterfeit products many people particularly women have suffered from toxic effects of these products.

The report says that TFDA is currently installing laboratory equipment to analyze the quality of drugs before they are approved.

As posted earlier here on Afro-IP, a recent study revealed that anti-malarial medicines sold in a number of countries across Africa are either counterfeit or are not strong enough to cure the disease. The survey indicated that Kenya at 38% had the highest percentage of inefficient drugs. Uganda and Ghana followed at 35%. Rwanda had 33%.Tanzania and Nigeria 32%.

It will be recalled that during the passage of the Olympic torch in Dare-salaam (reported here) there were protests against the importation of counterfeit goods from China.

Tanzania seems to have taken the lead in the region in fighting counterfeit activities. This latest initiative comes hot on the heels of a new law enacted to give Tanzania's Fair Competition Commission (FCC) powers to take action against dealers of counterfeit goods (see an earlier post here).

In Kenya, efforts to enact an anti-counterfeit law have not borne fruit despite the general consensus that such a law is urgently needed to address the menace.
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Sunday, 8 June 2008


Six African countries get a grip on Vice

Internet Business Law Services reports that the World Customs Organization has launched Operation "Vice Grips" to give effect to its determination to take concrete action against counterfeiting and piracy. Aided by six concerned countries -- Egypt, Ghana, Morocco, Nigeria, Tunisia, and Senegal -- this voluntary operation seeks to conduct simultaneous inspections of imported consignments that may potentially contain counterfeit and pirated goods.

Initially this operation is scheduled to last just one week, but with thorough controls being conducted at the following ports: Damietta (Egypt); Thema (Ghana); Casablanca (Morocco), Lagos (Nigeria), Tunis (Tunisia) and Dakar (Senegal). Operational teams led by national Customs experts from participating countries, supported by WCO intellectual property rights specialists, are targeting fake pharmaceuticals, foodstuffs, spare parts, cigarettes, everyday consumer goods, fabrics, CDs, and DVDs. The results of these simultaneous operations will be collated in Dakar, Senegal where the headquarters of the Operational Co-ordinating Unit is located.

The primary objective of Operation "Vice Grips" is not so much to catch the villains this time round, as to build the capacity of national Customs authorities. There will also be an opportunity to quantify and qualify the scope of fraudulent trade, to identify new fraud routes and places of concealment and to unearth new fraud techniques. Operation "Vice Grips" will eventually be extended to other ports in Africa.
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Friday, 6 June 2008

Darren Olivier

BIC Incovenienced

In Societe Bic Anonvyeme De Droit Francais (BIC) vs Wenbara Trading Company Ltd (Wenbara) and others (HCT-00-CC-CS-0704-2006) [2008] UGCommC 29 (4 June 2008) the High Court of Uganda Holden has held in favour of BIC against the importation of 852 cartons of counterfeit pens bearing the BIC trade marks and awarded them Shs.10,000,000.00 (about $6400) as general damages for inconvenience, and costs of the suit. The case is relatively straightforward and was uncontested. That said, it is the first time this blogger has come across a damages award based on inconvenience.

BIC was able to show that it was, at all material times, the registered owner of the BIC marks and that a consignment of countefeit BIC pens was detained by the Uganda Revenue Authority imported by Wenbara. BIC produced evidence that settlement terms with Wenbara could not be reached. The Judge had this to say:

"I am satisfied that the case for trademark infringement has been made out. The 852 cartoons of pens imported by the defendant no.1 are marked with the plaintiff trademark and logo. The goods were clearly not made by the plaintiff or its authorised agents though the goods were held out to be made by the plaintiff’s authorised agent. The plaintiff must succeed in its prayer that the said cartoons of counterfeit Bic pens be delivered up to the plaintiff for destruction."

The damages award is however worthy of further discussion. The Judge had found that as the goods had never been put on the market he was unable to see how BIC's goodwill or market had suffered and consequently did not award damages for such harm. Nonetheless the judge awarded damages based on the inconvenience caused by the legal suit: "the plaintiff and its authorised agent must have been put to great inconvenience. The agents are based in Kenya. The officials had to travel to and from Uganda on these matters prior to the institution of the suit. All that would have been unnecessary had the defendant no.1 not engaged in the conduct complained of."
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Latin tags don't avail Turbek

Writing in World Trademark Report, Lelo Nkadimeng (Spoor & Fisher, Pretoria) reviews A&D Spitz (Pty) Limited v Turbek Trading CC (12 May 2008), in which the South African High Court ruled that Turbek's use of the trade mark KG amounted to passing off of Kurt Geiger's well-known KG acronym KG as well as infringing its KG registered trade mark.

Spitz held registrations of KURT GEIGER for goods in Classes 9 and 25, and for KG in Class 9. Use of KURT GEIGER dated back to 1971, and KG to around 1994, for clothing and footwear. Turbek began using a KG mark and Spitz objected, maintaining that by virtue of the fact that the marks were similar and both used KG for footwear, there was a likelihood of confusion. The court agreed. Additionally, use by Turbek of the trade mark KG in relation to footwear was likely to cause confusion and deception with Spitz's registration in respect of sunglasses, since footwear and sunglasses were regarded as being similar goods. The court also ordered cancellation of Turbek’s KG registrations for goods and services in Class 25 and 35.

This case is notable for the court's treatment of Turbek's defence based on Spitz's delay. Said the court, delay, waiver, estoppel, volenti non fit iniuria (roughly translated as "if you consent, you cannot complain") and a pactum de non petendo (an agreement not to sue) could cause a trade mark owner to forfeit its rights -- but mere delay per se does not have such a consequence [the text of this feature can be read in full here].
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Thursday, 5 June 2008


Botswana's high aspirations for copyright unveiled

The Republic of Botswana Daily News reports that the Government is taking steps to "save artistes" - with the Copyright Office acquiring a security device to authenticate all sound and audiovisual recordings. Minister of Trade and Industry Neo Moroka says the device will be purchased in July and in operation by August of this year. A fund will also be set up from the collection of levies on technical devices such as cellphones, photocopiers, tapes and compact discs, mp3s and other devices with a copying facility. The fund will be administered by the copyright office and will be used for the benefit of rights holders as well as to finance programmes aimed at mitigating the negative effects of copyright infringements. Plans are also reportedly well advanced for establishing a copyright society which will collect and distribute royalties.
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Wednesday, 4 June 2008


Drug seizures -- now it's Kenya's turn

Recent postings on Afro-IP have featured the war on fake imported medicines in Nigeria, Uganda and elsewhere. This time it's Kenya's turn. According to Afrol News the Kenyan authorities, outraged by findings in a recent survey that 30% of the country's imported medicines were fake -- many containing chalk and water -- have immediately deployed secret service agents on the streets in order to remedy the situation.

Kenya's Medical Services Minister Anyang Nyongo has however downplayed the crisis, maintaining that just 16% of the country's malaria drugs were fake, less than half the reported figure of 38%. The basis upon which he has done so was not apparent from the Afrol article.
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Tuesday, 3 June 2008

Darren Olivier

Ambush marketing and the protection of the trade marks of international sports organisations – a comparative view

Co-blogger Roshana Kelbrick has published a thought provoking read entitled: Ambush marketing and the protection of the trade marks of international sports organisations – a comparative view in CILSA. Her final paragraph sums up her thoughts:

"I have illustrated that intellectual property legislation does not always
provide the level of protection sought by international sports organisations. Neither does event-specific legislation, when it clashes with intellectual property principles. But if a solution to this perceived lacuna is deemed necessary, it should not be sought by relaxing or amending intellectual property principles. As the foundations of intellectual property law are basedon the grant of some form of monopoly, the extension of such protection should not happen on demand. Big business, in the guise of sports organisations, is not entitled to unwarranted protection for descriptive words merely because this is ‘good for the game’. Neither is it entitled to prevent others from expressing pleasure and interest in the very ‘game’ on which its demands are based."

The article is timely given that brand owners (particularly sponsors) will be looking to shore up their protection ahead of the 2010 World Cup based in South Africa. FIFA itself is not lounging on the TV couch as explained by Dr Owen Dean in World Trade Mark Report: Opening Shots at 2010 World Cup Goal:

"The main objective of FIFA for the 2010 World Cup is to make it a success not only for the players, the football fans and the game of football, but also from a financial point of view. To this end, FIFA is actively pursuing a rigorous rights enforcement programme to curtail unauthorized use of the event for promotional purposes. The threats come from two quarters:

- the distribution of counterfeit merchandise; and
- ambush marketing"
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Monday, 2 June 2008


Worry Curves: do ambushers and infringers have them too?

"Cashing in on 2010", a piece in Marketingweb last week, describes South Africa as being at the stage of 'vague concern' in the lead-up up to the 2010 World Cup, says Ingrid Veysie, CEO of BBDO Consulting SA. She describes the "2010 Worry Curve", to which businesses seeking to exploit the commercial opportunities offered by this high-profile event should pay heed. Essentially the "Worry Curve" is a time line that commences with mild interest in a forthcoming event and terminates with the execution of a carefully-structured business plan that coincides with the event itself.

The "Worry Curve" however seems to be aimed only at legitimate businesses that are planning to take licences from official sponsors in order to leverage their products or services and enhance their market standing. Free-riders and infringers need not crystallise their plans so long in advance, it seems. Ambush marketers will presumably have a Worry Curve of their own as they apply their imagination to means by which they can attract attention and welcome custom without transgressing the increasingly detailed rules that now protect sponsors' investment in major events.
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