Friday, 30 October 2009


Better late than never

Over a year and a quarter since Cape Verde became a member of the World Trade Organization, the United Kingdom has issued the Designs (Convention Countries) (Amendment) Order 2009, which confirms that from 12 November 2009 Cape Verde is declared to be a convention country for the purposes of all the provisions of the United Kingdom's Registered Designs Act 1949. The Schedule to the Designs (Convention Countries) Order 2007 will now be amended by the insertion of Cape Verde into the alphabetical list of Convention Countries.
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Wednesday, 28 October 2009

Aurelia J. Schultz

WIPO Striving to Increase Access and Protect Assets

Next week, Cairo, Egypt is hosting a WIPO seminar entitled “African-Arab Seminar on Copyright Limitations and Exceptions: Addressing the Needs of Affected Constituencies.”  Recognizing that copyright exceptions and limitations (CELs) differ from country to country, the seminar is designed to allow people to share perspectives and experiences from their countries.

The seminar is related to the work of WIPO’s Standing Committee on Copyright and Related Rights (SCCR) and the WIPO Development Agenda.  One of the aims of the Development Agenda is to increase access to knowledge, which often means increasing access to copyrighted materials.  In relation to this, the SCCR is doing research into copyright exceptions and limitations around the world.  Presumably, this seminar will help contribute to the ongoing discussions and research.

Presenters at the seminar hail from Egypt, South Africa and Egypt.  For those who will be in the Cairo area, more logistics details can be found here.

In related news, the 5th International Forum on Creativity and Inventions will be held the following week in New Delhi, India.  The forum includes speakers from Africa, as well as the rest of the usual guests.  This year’s topic is IP in a Changing World.  More information is available here.

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Darren Olivier

Some progress in CIPRO fraud pandemic

Two recent reports reveal that "investigators are trying to link three men arrested for stealing more than R80 million (+-$10.4 million) to the fraud pandemic at CIPRO". According to yesterday's The Star the three men "were arrested on the weekend". There is a also a report that the suspected "kingpin" was arrested in June, denied bail in August and is due back in Court in December. Thanks to Maria Mcgibbon (Bowman Gilfillan) for The Star report.

The significance of "Ciprogate" is such that new finance minister Pravin Gordin was tested by Marius Swart of the Democratic Alliance who asked in a written parliamentary question what amount of money Sars (revenue service) lost in cases where employees of Cipro duplicated companies on the database in the 2008/09 financial year. "These cases reveal that Sars has lost a total of R50 949 743.80 in income tax refund fraud as a result of duplicate companies registered at Cipro," he said. The companies were SBC International Management Services (R31 600 946.89 lost) and Sun Microsystems (R19 348 796.91 lost)." IOL News

Despite the progress in catching the perpetrators (for which Cipro and the authorities should be congratulated), Afro Leo received a report from an attorney who, for the past three weeks, has been trying (without success) to set up a meeting with Registrar of Companies and Close Corporations to try to agree a way in which orders for changes to obvious company and close corporation name duplications can be made without trade mark owners having to incur the cost of filing formal objections. The attorney's explanation to the unfortunate client (now faced with incurring three objection costs) is as follows:

"We called the Cipro general number and made a report on the Cipro fraud report line (which promises a response within 48 hours). We received no response from the fraud report line. The operator on the general number referred us to the Cipro legal department. We called the legal department and left messages, to no avail. We finally made contact but the person who answered the call referred us to someone else and we emailed him. No Joy. We have also written to various other people at CIPRO and have had no joy. These efforts have taken place since our call with you [the client] on 7 October."

Are trade mark owners expected to incur the cost of formal objections (which may be to the High Court) where fraud has occurred? This blog has encouraged trade mark owners to assist Cipro by setting up watches to check the registers against their trade marks. Trade mark owners are responding - some guidance from Cipro would be appreciated.

  • For previous reports on Ciprogate click here.
  • On how to escape handcuffs click here and an early attempt to improve handcuffs.
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Monday, 26 October 2009


AMOAPI initiative to counter counterfeits

"Joint Effort Underway to Combat Counterfeiting", an article in AllAfrica by Godlove Bainkong, reports on a forthcoming international forum to seek common solutions to the threats posed by rampant counterfeiting. The forum will be held in Douala on December 1 and 2, is organised by the Association of Trade Mark and Patent Agencies Affiliated with the African Intellectual Property Rights Organisation (AMOAPI), which says that studies have shown that a greater percentage of goods consumed in the continent are counterfeit.

AMOAPI president Françoise Ekani said records show that 70 per cent of medication, especially malaria drugs, is counterfeit. She added counterfeiting is not only dangerous to human health, but that it also stifles the growth of the economy as well as creativity. Some 15 enterprises, members of Confederation of Business people of Cameroon (GICAM), she said, in 2005 lost over FCFA 62,008 billion to counterfeiting and that the customs sector recorded a FCFA 5,058 billion deficit in related circumstances. It was necessary to sensitise IP owners as to the scale and nature of their losses, she added.

Afro Leo wishes the forum luck and hope it does well. Sadly the problem isn't (or isn't just) that IP owners don't take enough action to stop counterfeits. A far bigger problem is that so many people are more than happy to sell and buy them, irrespective of the consequences.
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Friday, 23 October 2009

Darren Olivier

Upcoming Events

On the off chance that the title of Wednesday's Afro-IP post indicated to readers that this blog is forward thinking (and not simply that Afro Leo thought he had a four day week!) it seems appropriate to end off the week by canvassing upcoming events in November which will be listed alongside in due course:

  • Bowman Gilfillan is hosting their IP Crammer on 11 November. The invitation is open to all. The session is being chaired by Philip Ginsburg SC and the speakers are aiming to distill the IP developments of 2009 and cast an eye over key issues for 2010. Over 30 attendees have already confirmed - join in - there is no charge and Bowman Gifillan serve a great breakfast.

  • There is an Annual Intellectual Property Rights Conference taking place on 19 and 20 November at the Indaba Hotel. The conference content looks very good and aims to cover issues such as:
    · Levelling the playing field: Co-operation and competition in the software sector
    · Realising the potential of publicly financed IPR research
    · Role of IPR in quality health care for all
    · Innovation and IPR
    · Reducing hunger in Africa: Better seeds make better crops
    · Protecting African artists
    · Illegal copying (piracy) is theft

  • Those who attended DM Kisch's 135th celebration (which was befitting such an occasion), look out for pictures to be posted on this blog in November.
Just a reminder that Afro Leo is happy to post upcoming IP events on this site, please just email him here.

And finally, one email Afro Leo received this week is co-incidentally entitled "Proofreading - a dying art" and lists the following very comforting headlines: "Man Kills Self Before Shooting Wife and Daughter", "Something Went Wrong in Jet Crash, Expert Says", "Police Begin Campaign to Run Down Jaywalkers", "Panda Mating Fails; Veterinarian Takes Over" and the best of all "Typhoon rips through cemetery, Hundreds dead"

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Wednesday, 21 October 2009

Darren Olivier

Thursday thinking as DM Kisch celebrates 135 years

Access Codes Please

Greater awareness of the existence of open access information resources for innovation and making the information easily accessible and relevant to developing country users could help spur innovation in these countries, according to top technical assistance providers and local innovators. In a two-part series, Intellectual Property Watch (Robinson Esalimba and William New) spoke with local innovators and researchers in Kenya to identify successes and challenges facing local innovators in Africa. Mrs Nicholson (ACA2K network - music to your ears, I suspect.)

Bad faith and bona fide intentions

The recent US decision in Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660 (TTAB 2009) illustrates how a "lack of intention to use" can be fatal to an application. The US has always been more strict on this requirement but it nonetheless demonstrates the potential vulnerability of marks filed in countries whose registries accept wide specifications and there is a corresponding requirement on the applicant to show that he has an intention to use the mark for the goods or services covered by the application.

Take for instance the filing form in South Africa which requires the signatory to state that:

"The Applicant claims to be the proprietor of the accompanying Trade Mark which is proposed to be or is being used in respect of the aforementioned specification of goods/services".

RSA case law mentions that one must have a present and definite intention to use the mark.

"There must be a real intention to use the mark in future [for the specification of services], not a mere problematical intention, nor a general intention to extend business or an uncertain or indeterminate possibility" (Webster and Page, amongst others).

Section 32(3) of the UK Act, similarly states:

“The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.”

Left - bona fide or a bone for fido(s)...?

Afro Leo thinks it is just a matter of time before there are increased challenges on wide specifications on this basis... as was held by this UK Registry Hearing Officer:

"In so far as the applicant makes a materially false statement in this regard then I believe that the application is made in bad faith. This was clearly the view of Jacob J. in DE LA MER, and he evidently had well in mind the difference in approach of OHIM as revealed by TRILLIUM...By making its statement of use/intention of use, when it did not have an intention to use LML was acting in a manner that fell short of the standard of acceptable commercial behaviour observed by reasonable and experienced men." Landau in Jemella Limited v Landlord Mortgages Limited (2008 UK Registry decision)

It also shows that care should be taken when drafting specifications for US applications, in particular.

On a celebratory note...

it came to Afro Leo's attention just yesterday that Messrs DM Kisch are celebrating their 135th anniversary with a cocktail party this evening and this Leo is invited. Congratulations DM Kisch on 135 years!

Did you know that in RSA in 1874:

- A college was founded at Stellenbosch which later becomes the University of Stellenbosch
- The railway line from Port Elizabeth to Uitenhage was opened
- The Burgerspond, the South African Republic's first coin, was introduced
- Charlotte Makgomo Maxeke, religious leader and political activist, was born at Ramokgopa near Polokwane.

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Monday, 19 October 2009


Medicines for Rwanda -- but what about the 'drug miles'?

Shire Canada Inc., a division of Shire plc, announced today its voluntary cooperation to enable further royalty-free access to HIV/AIDS medicines for Rwanda as part of that company's ongoing collaborative efforts to improve health and save lives in the developing world.

Shire is a supporter of Canada's Access to Medicines Regime (CAMR) -- under which Canadian generic companies can manufacture in Canada a fixed dose triple combination antiretroviral medicine that contains 3TC(R), a patented drug over which Shire Canada owns the local patent rights. According to Shire Canada VC Claude Perron,
"Shire is totally supportive of this initiative, and will work collaboratively with government and non-governmental agencies worldwide to help secure medicines for those that request it. Our industry wide efforts are aimed not only at preventing and treating HIV/AIDS but also tuberculosis, malaria and other diseases that affect sub Saharan Africa."
The CAMR is a positive consequence of the August 2003 World Trade Organization (WTO) agreement which lets WTO member countries with pharmaceutical manufacturing capacity issue licences for the manufacture and export of generic versions of patented drugs and medical devices to developing countries that do not have the capacity to manufacture the products themselves.

What Afro Leo would like to know is what steps are taken to transfer to Rwanda, and other HIV/AIDS-rife jurisdictions, the necessary technology and know-how to enable them to manufacture vital patented medicines locally rather than have them sent half way round the world, virtually from the Arctic to the equator. Once the principle of licensing the manufacture of generics is accepted, there must surely be a more efficient way of doing it. In developed countries, foods flown in from developing African economies are often tainted with the environmentally hostile stigma of 'food miles'. Surely the same can be said of the 'drug miles' clocked up by pharma products travelling in the opposite direction.
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Friday, 16 October 2009

Darren Olivier

Friday update

A summary of recent Zimbabwe case law involving (amongst other index heads) trade marks, copyright and passing off has been published by Saflii here.

Denise Nicholson, Wits Copyright Services Librarian and founder of ACA2K blog site dedicated to probing the relationship between national copyright environments and access to knowledge in African countries, has informed Afro-IP of research updates on the ACA2K site for South Africa, Ghana, Kenya, Mozambique and Uganda.

Afro Leo, in considering David's post immediately below, would like to know if this case may set a precedent for how all rights (ie including trade marks) will be treated by ARIPO member states (those who have ratified the protocols) and is ARIPO equipped to handle revocation claims?
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Thursday, 15 October 2009


Patent Tribunal rules that ARIPO patents cannot be revoked in Kenya

In a ruling that is likely to create a legal loophole and ambiguity in the patent system in Kenya, the Industrial Property Tribunal (Tribunal) has made a ruling that it has no jurisdiction to hear applications to revoke patents granted by ARIPO.

The ruling arises from an application by Chemserve Cleaning Services Ltd (Applicant) to revoke (the notorious) patent AP 773 held by Sanitam (EA) Services Limited (Respondent).

Before the application could be heard, the respondent filed a preliminary objection that the Tribunal lacks jurisdiction to hear and determine issues regarding an application to revoke a patent issued by ARIPO in that section 59 of the Industrial Property Act 2001 (the Act) only incorporates patents granted by ARIPO in relation to their effect in Kenya and that other issues such as revocation are not expressly stated in the section.

Under section 59, patents granted by ARIPO are recognized as valid in Kenya and are given the same effect as patents granted under the Act. Relevantly the section states 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…”
The main issue between the parties was the meaning of the word “effect” in the section. According to the Tribunal the word simply means “the powers conferred to a right holder by the patent in Kenya.”

The Tribunal further canvassed on various provisions of the Harare Protocol and concluded that once an ARIPO patent is given “legal effect” in Kenya, the only matters it is mandated to adjudicate are infringement and compulsory licences. Pertinently it argued that where an application for revocation is filed under the Act, ordinarily it would have to peruse the registration file and on finding that the patent ought not to have been registered, it orders KIPI to remove the patent from the register. Accordingly the Tribunal held that since it had no mandate to order ARIPO to remove the patent from its register, it had no jurisdiction to revoke the patent!

The Tribunal’s interpretation of section 59 is problematic and raises numerous questions. It is recognized that patent rights are not absolute; there are limitations to the rights given to the patentee, and which can be raised as a defence by an alleged infringer. A common defence in infringement proceedings is invalidity of the patent. Having conceded it has jurisdiction to hear infringement proceedings, the question is how the tribunal would deal with a case where, for the example, the defendant argues invalidity of the patent, which if successful would call for revocation of the patent.

It would seem that there are now two sets of rules applying in Kenya; while on one hand the Tribunal cannot revoke a patent granted by ARIPO, it can nevertheless revoke a patent granted by KIPI as provided under section 103 of the Act!

At this point it is not clear what will happen next or whether the loosing party will make an appeal to the High Court. Afro-IP has been reliably informed that there are a number of revocation applications before the tribunal over the same patent.

The matter is further complicated arising from a number of rulings by the High Court and the Court of Appeal regarding the question of validity of patents once granted. In 2006 in the matter Sanitam services (E.A) Ltd v Rentokil (k) Ltd & another [2006] eKLR the court of Appeal made it clear that it had no capacity to determine validity of patents, and that only technical bodies such KIP[I] and ARIPO had the capacity to do so. Early this year, the High Court in Rentokil v Sanitam Civil Case No 702 of 2008 (unreported) held that “it is not the duty of th[e] court to determine whether the invention that is the subject of litigation conforms to the patent or not.”

See previous posts here and here .
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Tuesday, 13 October 2009

Darren Olivier

Fifa v Metcash - Owen Dean's response

Afro Leo has received the following response to fellow contributor Roshana Kelbrick's post covering the FIFA v Metcash judgment from Dr Owen Dean, in his personal capacity, with a request to post them on this blog:

"I act for FIFA and I have brought a number of claims and cases on their behalf, including the case against Eastwood Tavern. I did not act in the Metcash matter because of a conflict of interest but the arguments and papers used in the Metcash case were derived from, and were substantially similar to, the arguments used in the Metcash matter. My comments should therefore be viewed against this background, but they are made in my personal capacity and not on behalf of FIFA. Apart from any other considerations, Metcash is also a client of our firm and I will thus seek to be objective in making my comments.

I was involved in the drafting of Section 15A of the Merchandise Marks Act and I can thus state with authority that it was not inserted in the Act at the behest of FIFA. Indeed, the Section was first drafted in anticipation of the 1995 Rugby World Cup at the request of the South Africa Rugby authorities. It did not find favour with the powers that be at that stage, possibly because the whole concept of ambush marketing was somewhat new to South Africa at that time. In around 2002, with the Cricket World Cup in the offing, the South African Cricket authorities made a spirited plea to the Government to draft appropriate ambush marketing legislation and the draft that had been prepared in anticipation of the 1995 Rugby World Cup was refashioned slightly to become Section 15A. This Section came into operation shortly before the 2003 Cricket World Cup and that event was declared a protected event under it. When FIFA requested that the football World Cup should be designated a protected event, it was doing no more than relying on existing legislation. To the extent that it was this Section that Roshana had in mind when she claimed that FIFA rewrote national laws at its own convenience and for its own advancement, she is, with respect, incorrect. I am not aware of any other legislation relating to IP protection that FIFA has instigated in South Africa.

As part of its campaign to protect its rights and those of its sponsors in connection with the football World Cup, FIFA commenced at an early stage writing letters of demand to those whom it considered were violating those rights. This was done irrespective of the size of the enterprise that was perpetrating the objectionable conduct. In the early stages, three parties refused to back down and to comply with FIFA’s request. They were Eastwood Tavern, Metcash and Executive African Trading. Consequently, court proceedings were instituted against these three parties. The fact that Eastwood Tavern and Executive African Trading were small entities was purely happenstance and no attempt was made to seek out small parties for special treatment. Metcash, can, of course, not be considered to fall into this category. In the circumstances, it is not, I believe, a fair statement to suggest that FIFA sought out those who cannot afford to litigate as its targets.

While it is true that the effect of the court’s judgment places a limit on Metcash’s use of its trade mark ASTOR in certain circumstances, namely in a manner so as to derive promotional benefit from the football World Cup, Metcash is free to continue using the trade mark in all other circumstances and in conjunction with get-up material not alluding to the football World Cup, perhaps in the same manner that it used it from 2004 up to the time that it changed to the contentious get-up. It is therefore not being deprived of the use of its mark as Roshana seems to sugget.

I do not interpret Section 15A (nor was it intended to be so interpreted) to mean that sub-Section 1(b) imposes an onus on a plaintiff to show that the event is in the public interest and that sufficient opportunities for small businesses have been created in seeking to enforce rights conferred by the Section. In my view, the aforegoing are criteria that the Minister is directed to apply when considering whether or not to grant an event the status of being a “protected event”. If the Minister considers that these criteria have been met, he is entitled to designate the event as a “protected event” and it remains so unconditionally, unless and until the Minister should decide to withdraw the designation. Accordingly, anyone seeking to enforce rights created under Section 15A is not required to establish these points in the litigation.

Legislation along the lines, or having the effect, of Section 15A has become the norm in countries staging events such as a football World Cup. For instances, prior to the Cricket World Cup taking place in the West Indies, most, if not all, of the West Indian states adopted ambush marketing legislation which incorporated our Section 15A, virtually verbatim. New Zealand has adopted similar legislation for the 2011 Rugby World Cup and the United Kingdom has passed special legislation having the same effect which is probably more far reaching than our Section 15A. The simple fact of the matter is that the organisers of major international sporting events like the World Cup and the Olympic Games set adequate ambush marketing legislation as a criterion which bidding companies must meet before they can come into contention to have the events awarded to them. The simple fact of the matter is that if a country wants to host a World Cup or the Olympic Games it will not get to first base unless it has adequate ambush marketing legislation in place. In this regard our Section 15A has become something of an international norm. In the modern world this type of legislation goes with the territory of staging a major sporting event. One can love it or hate it but it is a fact of life.

Owen Dean"

Do you agree with these comments or have any of your own? Please feel free to write in or post them to the comment section.
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Asiimwe Paul

Who picks the bill for IP education?

I have for long wondered who should actually pick the bill for IP education and enforcement in Africa.

The article by Wayne Meiring here also commented on by Darren here have both reminded me of this dilema.

In most Sub Saharan African countries, the national budget has little if any appropriation that is Intellecual property related. In the recent past some governments have appropriated funds to strengthen support to standards authorities. However, this effort still falls short of what is required to stem the growth in trade of counterfeits.

This then begs the question; should a percentage of the fees paid for trademark or patent registration go to a specific IP fund to support IP education and enforcement? This in my view would help in ascertaining how much the registration systems actually collect vis a vis funds required as direct support from Governments. There is the controversial issue of whether Private companies should be allowed to support specific public sensitisation campaigns against counterfeits while at the same time promoting their brands.

Getting opinions on this issue will most certainly help in knowing who and how public sensitisation of IP can be done.
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Monday, 12 October 2009


Is it a patent, is it a copyright, is it a moral rights dispute?

Via AllAfrica comes this piece of reporting from Lagos's Daily Independent that Sidemans and Company Nigeria Limited, which compiled and published an oil and gas survey, has sued Calag Capital Limited and the United Nations Conference on Trade and Development (UNCTAD) over alleged infringement on its intellectual property.

According to the report, Sidemans has alleged that Calag has infringed patent rights in the survey it carried on the oil and gas sector and also failed to acknowledge its authorship and patent rights on the survey, entitled Unctad/Calag African Oil and Gas Services Sector Survey Volume 1 ...Nigeria: Creating Local Linkages by Empowering Indigenous Entrepreneurs. While Sidemans conceded that Calag sponsored the production of the survey, it had been agreed that "statutory acknowledgments of authorship of the plaintiff be unreservedly observed in all material respect with regard to the survey". From the brief facts as described in the article, this looks to Afro Leo more like a copyright infringement action than a patent one -- but he's prepared to be persuaded by facts to the contrary, should they emerge.

The defendants are yet to file their defence to this action, for which Justice Abutu has fixed 10 November as the hearing date.
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Darren Olivier

MIP's Africa Focus 2009

Managing Intellectual Property has published its first ever Africa Focus:

Tanzania's IP changes are good for business - 3 leading East African IP lawyers from Mkon0 & Co (Nimrod E Mkono, Audax K Kameja and August N Mrema) describe how two recent legislative changes to their IP regime have allowed Tanzania to better comply with international standards and also, better fight against the considerable counterfeit problem experienced by the country. There remain several hurdles to effective implementation of the new legislation as discussed in the article. Nonetheless, the authors have invited IP rights holders to have confidence in the recent changes.

Africa must nurture home grow brands - David Haigh CEO Brand Finance sets out a case for why Africa needs to create brands. Afro Leo comments that robust IP regimes are required to protect such brands. Another reason why the efficient national registries and courts are crucial to the process.

Africa's good news story - respected African IP commentator and consultant at Spoor & Fisher (Jersey), Mac Spence, sets out what he describes (in qualified terms) as Good News ie the progress being made by the countries of the [African] region towards uniform and contemporary protection of IP rights. A useful bird's eye view.

SA's IP outsourcing advantage - Afro Leo (as Darren Olivier, director Bowman Gilfillan) examines how best trademark management can be outsourced and proffers South African firms as an outsourcing solution ahead of firms in popular India, and other destinations such as Thailand and New Zealand. He will be addressing a seminar in London on 2 December hosted by the South African High Commission on RSA's IP outsourcing advantage.

South Africa 1 - Ambush marketers 0 - Herman Blignaut - partner Spoor & Fisher - reports on a hot topic on this blog, namely RSA's legislation on ambush marketing and a review of current cases. The article is well compiled as he also describes the vast opportunities for South Africans from the FIFA event. Not everyone is supportive of the legislative changes though (albeit that they may support the event) - AFRO-IP's poll on the validity of FIFA's 74 RSA trade mark registrations for SOUTH AFRICA 2010 and WORLD CUP 2010 illustrated that readers overwhelmingly thought that they were not valid, and the blog commentary on the Eastwood Tavern case together with Roshana's insightful observations immediately below, make for an interesting debate - but perhaps only an academic one so close to the tournament but useful nonetheless as RSA fast becomes a favoured sports tournament destination.

Make the most of Africa's IP organisations - Wayne Meiring - director Spoor & Fisher outlines how the two regional African IP systems (OAPI and ARIPO) work and highlights some of their strengths and weaknesses as well as those of the International System as it applied to African countries. A useful and well illustrated summary - Wayne cites the OAPI and ARIPO systems as being "reasonably effective" for registration purposes but that, for OAPI, the member countries "sorely lack the capacity to effectively police and enforce" and, for ARIPO, only Botswana has ratified the obligations of the system (a similar drawback to using IRs to cover African member states). "For this very reason, very few trade marks are filed in ARIPO...". Afro Leo notes though that Wayne's firm has filed two African Union trade marks to protect their name.
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Thursday, 8 October 2009


The FIFA v Metcash judgment

Darren has asked for my comments on the FIFA v Metcash judgment, handed down by Msimeki J on 1st October 2009, some 10 months after the matter was argued. As Darren knows, I had hoped for a different outcome – my personal opinion is that FIFA’s general attitude is that of a superbully – rewriting national laws at its own convenience, for its own advancement, and openly admitting to taking action against those who cannot afford to litigate.
But my academic opinion is more restrained. It is a pity the judgment took so long to appear, and one can only hope that Metcash does decide to appeal the decision, and that this delay does not make any appeal futile.
FIFA originally asked for relief on a number of grounds- trademark infringement, passing off, contravention of s9(d) of the Trade Practices Act, and finally, unlawful competition by contravening s15A of the Merchandise Marks Act. Only the last ground was argued; the other heads were ‘not necessarily abandoned’ but would appear more tenuous than generally admitted in FIFA press reports. (Of particular interest is the registered trade mark in the relevant class – a device mark for SOUTH AFRICA 2010 BID with a disclaimer of the words ‘SOUTH AFRICA’ and the numerals ‘2010’ separately and apart from the mark – matter not commonly included in any FIFA information pack!)
FIFA alleged a contravention of the Minster’s declaration that the 2010 Soccer World Cup was a ‘protected event’. Section 15A(2) provides that ‘for the period during which an event is protected, no person may use a trade mark in relation to such event in a manner which is calculated to achieve publicity for that trade mark and thereby to derive special promotional benefit from the event, without the prior authority of the organiser of such event’. It is possible that Metcash did contravene this provision, if it is interpreted widely, as Judge Msimeki did. But even if it was contravened, Metcash’s argument is that the provision is unconstitutional, offending against both freedom of expression and property rights. The applicant’s response, approved by the court, is that ‘s36 of the Constitution would allow and justify the limitation of the Respondent’s rights to freedom of expression or to the[eir] intellectual property if their use would deceive or confuse the public and end up jeopardising an event such as the soccer world cup and at the same time prejudicing the sponsors and the licensees of the event’ (p 17 judgment). He unfortunately gave no further consideration to the question of whether s15A is unconstitutional.
This is a pity. The limitations contained in s36 of the Constitution include the nature of the right (all holders of SA trade marks: here, a trade mark used from 2004, two years before the s15A prohibition commenced); the importance of the purpose of the limitation (for FIFA, through sponsors and licensees, to make money); the nature and extent of the limitation (4 ½ years absolute prohibition); the relation between the limitation and its purpose (there was a mere allegation that the staging of the event is in the public interest and no evidence was submitted that the organisers have created sufficient opportunities for small businesses and in particular those of the previously disadvantaged communities, in fact, media coverage suggests the contrary); and less restrictive means to achieve the purpose (no equivalent relief is available in terms of any other legislation or common law – the provision is extraordinarily wide and no equivalent relief is available in terms of any other legislation or common law – for example trade mark rights are much narrower in scope and the applicant’s registered trade mark does not give any such protection because of the disclaimers).
We can only hope that an appeal is noted and that a considered decision on the constitutionality of this, and similar future legislation, is forthcoming. Not to spoil the game, but because s15A appears to score 10(FIFA) -1(public interest).
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Wednesday, 7 October 2009

Darren Olivier

Tuesday's ticklers: EAC, CIPRO, Adwords

Adam Smith (World Trade Mark Review) has published a news article based on a full interview he had with Omari Issa, the CEO of Investment Climate Facility for Africa, with whom he was talking about the counterfeiting problem in east Africa. The new article is here: Brand owners urged to sponsor enforcement coordination. This is the latest in WTMR's coverage of the EAC study into harmonizing IP enforcement in the region. Previous article here: Fresh move to harmonize anti-counterfeiting law in east Africa, with further reports and background reading from Afro-IP here. Afro-IP will report WTMR's update article when it is published. Thank you Adam.

Minister of Trade & Industry's (Rob Davies) replies to parliamentary questions on Ciprogate. Meanwhile, Natacha Rey (LLM IP student at UCT) has alerted Afro Leo this news article about the transformation of CIPRO to a commission following amendments to Companies legislation, commenting that "a commission is the opportunity SA IP needs...." If the success of the Competition Commission is anything to go by Ms Rey may well be correct.

Jeremy Speres (UCT LLM Student) sent in a short piece he wrote for a class, comparing the recent ECJ Advocate General's opinion on the AdWords matter with the decision of the US Court of Appeals for the Second Circuit in Rescuecom v Google, also concerning AdWords. Thank you Jeremy - we wait with bated breath for the ECJ decision. Afro-IP reported on the ECJ advocate general opinion recently: ECJ closer to Adwords decision.

Elizabeth Bourne (librarian, Bowman Gilfillan) has sourced the elusive and unreported Lollipop decision - the first reasoned decision of its kind regarding ambush marketing in RSA and S15(A) of the Merchandise Marks Act. Metcash were founding wanting after having been sued by Fifa for ambush marketing the 2010 World Cup Event by promoting their lollipops as "2010 Pops" with the national flag and footballs. Afro Leo wants to know Roshana's view (and any of yours) on this decision published shortly here and summarised by Fifa's counsel Kelly Thompson (Adams and Adams) here. He also wants to know why the decision is not reported.

Finally, Afro-IP notes that its email subscriber list has now passed 300, its LinkedIN subscription is at 60 and its two feeds reach over 100. The blog wishes to thank its followers but also invite them to contribute through the comment section on the blog, by sending upcoming events or offering guest posts. The several voices on the contributor list are not enough to cover the entire Africa nor are they sufficient to get the full and depth range of commentary on IP in Africa. The community is growing. Be part of it.
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Tuesday, 6 October 2009

Darren Olivier

Zimbabwe update - ZIPO

Afro-IP thanks Zimbabwe IP expert Chris Kimberley and Thomas Seremani of Zimbabwean law firm Honey & Blanckenberg for this update:

"Difficulties are being faced with ZIPO [Zimbabwe Intellectual Property Office] at present particularly as regards the fees which they are charging for advertising applications in the Trade Marks Journal. Having for 5 months failed to issue any proof advertisement fee forms to us, calling for payment of advertisement fees, a few days ago these suddenly resurfaced but ZIPO was purporting to charge about 10 times the advertisement cost which they disburse to a company called Printflow which publishes the journals. Resistance to this type of excessive overcharging has been verbally indicated to a senior ZIPO official and we hope that ZIPO will see sense and revise its fees significantly downwards to recover only its disbursement to Printflow. Alternatively, a suggestion has been made for ZIPO to consider issuing the Journals in-house which would be a cheaper alternative. We hope for a soon resolution of this hurdle."

A quick sniff around this news morsel reveals that the Zimbabwean government has an interest in Printflow as disclosed on their Ministry if Finance website "Companies in which the Ministry has a shareholding".
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Thursday, 1 October 2009


Good news for ARIPO as USPTO rides to the rescue

A press release from the United States Patent and Trademark Office, "USPTO and African Regional Intellectual Property Organization Sign Historic Workplan for Bilateral Cooperation", dated 25 September, heralds a new era for IP administration in Africa. According to the release:
" ... USPTO and ... ARIPO have signed a historic Workplan for Bilateral Cooperation on intellectual property issues. Under Secretary of Commerce for Intellectual Property David Kappos and Director General of ARIPO Dr Gift Huggins Sibanda signed the Workplan in Geneva at the United States Mission to the United Nations on September 24. This Workplan marks the first cooperative agreement between the USPTO and ARIPO and will serve to promote the development of effective intellectual property systems in ARIPO member countries.

“We look forward to working with our new partner to strengthen cooperative efforts and promote innovation,” noted ... Kappos. “By working together, our efforts to address common global challenges will meet with success.”

The Workplan will strengthen the bilateral relationship between ARIPO and USPTO; improve the administration of intellectual property protection systems [and about time too!]; increase public awareness about the importance of intellectual property issues; and develop professional skills through information sharing and capacity building [let's hope that demand, and user confidence, will rise commensurately with capacity]. As part of this agreement the USPTO plans to train ARIPO patent and trademark examiners to further develop their technical expertise and their capacity to respond to increasing workloads.

ARIPO, an intergovernmental organization comprised of 16 African countries, operates as a central intellectual property filing system. Signing an agreement of this type, with an organization having such a large and significant regional presence, will promote a level intellectual property rights (IPR) playing field for U.S. right holders in the burgeoning African marketplace. It will promote the protection and enforcement of IPR in the global market place by creating a more efficient and consistent application and registration process for U.S and African right holders".
Afro Leo hopes that the first thing to benefit from the cooperation will be ARIPO's website, which is about the last place he'd go if he wanted to know about IP in Africa. As of the date of posting of this item, ARIPO's website still contains no mention of this cooperation.
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