Sunday, 31 May 2009

Darren Olivier

Ghana focus on education to combat counterfeit crisis amidst calls for stricter laws

Mr. Kofi Essuman, President of Ghana's Institute of Packaging, on Friday called on the government to review or update existing laws on counterfeiting and piracy or enact new ones to curb the menace at a workshop in Accra. “Employment has shrunk from 250,000 in 1985 to below 40,000 today largely due to faking and counterfeiting of African textile manufacturers' designs and trademarks,” he added.

Right: Ghana's Coalition Against Counterfeiting at a conference in 2008

This blog is full of these types of stats and calls for action and most of them propose stricter laws and better enforcement, as this article reports too. What caught Afro Leo's eye is the focus on education and defeating the "menace" using the consumer.

"Earlier, over 30 students from some Senior High Schools were given awards for participating in the 2009 National Anti-Counterfeit Campaign Competition.

Master Nathan Andre Melcom, a student from Tema Senior High School and Master Isaac Koney of Presbyterian Senior High School emerged winners in the Essay and Art Competitions respectively. They each took home a certificate, cash voucher of GH¢150 and a plaque for their school.

Miss Emelia Dede Quist from Ebenezer Senior High and Cobbiah Jepheta from GHANATA were second in the essay and art competitions respectively and had a certificate, a cash voucher of GH¢100 and a plaque each for their schools.

The third position went to Abigail Adu Pokuwaa and Hamid Nortey who each collected a certificate, a cash voucher of GH¢50 and a plaque for their schools. "

Source : Modern Ghana article here and Ghana blog here.
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Thursday, 28 May 2009

Aurelia J. Schultz

Nigerian Caught Attempting to Export Pirated DVDS

The Nigerian Punch reports that a local business man has been charged with cross-border trafficking in pirated goods.  Nearly half a million DVDs from large production houses such as Paramount, Warner and Disney were confiscated.  It appears the goods were intercepted during an attempt to import them into South Africa.  (The South African police transferred the case to Nigeria.)

The business man is being charged with only one count, importing pirated works for the purpose of selling the products.  Unfortunately, due to court backlog, the case is on hold until the end of June.  It is unclear from the article whether the South African authorities held onto the confiscated DVDs or returned them to Nigeria.  In most pirating cases, the Nigerian Copyright Commission destroys the pirated goods by burning them.

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Exceptions to copyright: 8-country seminar exposes issues

Catherine Saez's latest article on IP Watch, "Copyright Exceptions Needed To Ensure Balance In Africa, Panellists Say", reviewed the proceedings of a seminar organised by research organisation IQsensato. This seminar focused on copyright and access to educational and learning materials in Africa, presenting the research findings of the African Copyright and Access to Knowledge (ACA2K) Project.

The research project studied eight African countries - Egypt, Ghana, Kenya, Morocco, Mozambique, Senegal, South Africa and Uganda - and aimed at better understanding the relationship between national copyright environments and access to knowledge. The choice of countries was based on a number of criteria in order to represent different legal, socio-economic, political, cultural and linguistic contexts.

The article leaves one with the depressing feeling that Africa is in many ways an inhospitable territory both for copyright owners and for users. The substantive law often makes inadequate provision for the needs of consumers of copyright-protected works, which are frequently hard to come by because of distributional issues and the division of the continent into a large number of small and sometimes non-viable commercial markets, while the mechanisms for the enforcement of copyright are such that most rights owners will not opt to press any infringement claims except in the grossest incidents of unauthorised exploitation.
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Wednesday, 27 May 2009


Sudan: new regulations for translations and powers of attorney

The INTA Bulletin for 15 May 2009 (Vol. 64, No. 10) carries news, supplied by Nada Zaitoon (Abu-Ghazaleh Intellectual Property News Agency, Amman, Jordan) of Sudan's new trade mark regulations. The Registrar General of Intellectual Property at the Sudanese Ministry of Justice has issued Trade Mark Regulation 1/2009, to regulate the work of trade mark agents. From 1 July 2009 a power of attorney is required when filing, registering or renewing trade marks, whether the agent is inside or outside the country, and any document submitted in a language other than English or Arabic must be translated by an authorized translation office in Sudan.

Other items in the new regulation have been in force since 6 April 2009. These concern, among other things, legalisation of powers of attorney issued outside Sudan at the Sudanese Consulate in the country of origin (or in the closest country if there is no Sudanese representation in that country).
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Darren Olivier

More on SABC cash crisis: protest

A mass protest has, according to several sources, now been arranged on 4 June - see IP Finance post here. Meanwhile the SABC has requested a bail out. Will this be another SA example of how collective strength produces meaningful results and will it bring changes to copyright legislation on ownership of commissioned works?
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Tuesday, 26 May 2009

Darren Olivier

Swaziland's branding debate

Swaziland has recognised that a trade mark/brand is a designation of the quality of the product and not merely a badge of origin. IOL reports that a proposal by a Swaziland member of parliament that HIV-positive people be branded on the buttocks has been met with outrage. According to a report on the IoL site, Swaziland MP and leader of the gospel group Ncandweni Christ Ambassadors, Timothy Myeni, told a leadership workshop for fellow MPs that the kingdom needed a mandatory law for testing people for HIV. 'Before having sex with anyone, people will have to check their partners' buttocks before proceeding,' Myeni told a workshop last week. Swaziland AIDS Support Organisation spokesperson Vusi Matsebula said: ‘His utterances represent the views of someone who is still sleeping around.' Thanks to Reinhold Gregorowski (Bowman Gilfillan) for the tip off.
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Darren Olivier

Fake IPL Tickets

A few weeks ago this blog reported that the absence of a discussion over RSA's ability to protect IP was re-assuringly noteworthy in IPL's decision to host the tournament in RSA (see here). The attempt by K B J Asset Holdings to apply to register and misappropriate the trade mark rights in the team names (reported here) and the headline of yesterday's Star (see right) are stark reminders that opportunists exist. The Star headline is a particularly chilling reminder of the life threatening risks associated with counterfeiting (in this case counterfeit tickets causing dangerous overcrowding at the Wanderers stadium).
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Darren Olivier

IP to foster growth

John Kilama (President of Global Bioscience Development Institute) discusses the need to foster growth in African countries by establishing formal property rights systems...."it is extremely important". 


The Global Bioscience Development Institute describes itself as a world-leading organization in the field of bioscience development, bioprospecting, biotechnology, and related law (e.g., intellectual property rights and trade regimes.)
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Monday, 25 May 2009

Darren Olivier

Govt requested to assist in SABC cash crisis

Afro Leo has stumbled across a damning and accusatory open letter to the Government from the Television Industry Emergency Coalition (TVIEC) concerning the South African Broadcasting Corporation (SABC). According to Tonight "Producers have complained that the SABC owes them as much as R40 million for work commissioned by the broadcaster. The SABC has acknowledged that it owes producers money, but has disputed the amount claimed." The open letter which can be located here contains allegations which include "enforced price fixing" by the SABC and this complaint concerning IP rights: "The important matter of content creators not owning their rights to intellectual property ... is in contradiction to the spirit of our constitution and prevents our sector from growth...". The letter alleges too that "...broadcast policy and management decisions have been made largely without meaningful industry consultation; this has brought our sector to its knees and cannot be allowed to continue."

Right - testing the SABC

The tone of the letter is desperate and clearly borne of the frustration of members of the coalition not being paid. The letter also contains statements which, if only partially correct, cast a very poor light on the leadership of the SABC. However, the letter loses some credibility because of its desperation. For example, the reference to IP policies being "in contradiction to the spirit of the constitution" suggests that the TVIEC feels that the policy is abhorrent but does not know why it is unlawful. It is quite natural for the SABC to wish to negotiate to own the IP of the content provider, and ownership of some of the IP may even vest in the SABC automatically for certain commissioned works. On this particular issue, one feels that the TVIEC should find a way to use their collective strength (ultimately the SABC needs content) to negotiate a better position for themselves. Perhaps the TVIEC letter is a step in that direction? That said, the government, which itself recently fought over IP rights to the Springbok emblem, is unlikely to be particularly sensitive to IP rights of content providers.
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Friday, 22 May 2009

Aurelia J. Schultz

INTA Africa Update

Afro-Leo had a special treat yesterday at INTA, a whole session just for him!  The Regional Update: Africa session brought together four very knowledgeable and well spoken African attorneys.  Completing quite the feat, the panel managed to give a decent overview of most of the continent in just over an hour.

The panel gave us a very optimistic view of the future, including improvements in new trademark legislation, steps to implement recent legislative changes and increased enforcement of trademark laws.

Legislative Developments

A number of countries are in the process of changing, or have recently updated, their trademark legislation.  South Africa, Namibia, Djibouti and Rwanda all have new Trademark Acts in the works.  And it looks like Zambia may soon begin working on a new act as a working group has recently formed to begin tackling this task. 

Zimbabwe, Ethiopia, the Gambia, Uganda and Tanzania have recent Acts or amendments to old acts, which those countries are working to implement.  Ethiopia and the Gambia are moving along well in their implementation.  Zimbabwe has more pressing issues at the moment.  Kenya is also working to implement its existing modern legislation.

Special notice was given to Mozambique, perhaps the brightest shining star in African Trademark legislation.  Mozambique is celebrating the 10th anniversary of its Trademark Act.  The act is working well in practice, there are provisions for compliance with the Madrid Protocol and the trademark office has a good staff with a very capable registrar.


William I. Maema discussed the trademark implications of the forming East African Community.  Kenya, Uganda, Tanzania, Burundi and Rwanda hope to have the EAC common market in place by next year.  This common market will mean harmonization of trademark laws and coordination of enforcement activities.  The EAC countries also plan to introduce specialized anti-counterfeiting police units and training for the area’s customs units.  There is also the potential to introduce mandatory sentencing for counterfeiting crimes.  (Currently, most of the area’s countries have maximum sentences, but no minimums.))

Tanzania’s Two Systems

August Mreme gave specific information regarding Tanzania’s two separate trademark systems.  The existence of two different systems within one country can sometimes take foreigners attempting to do business in Tanzania by surprise.  There are historical reasons for the existence of two systems, relating to the way in which the government was set up when Tanganyika and Zanzibar joined together.

Both systems include recently amended trademark laws.  Tanganyika amended its Merchandise Act in 2008 and Zanzibar introduced its Industrial Property Act the same year.  Tanganyika's Merchandise Act introduced zonal offices around the territory, defined “counterfeit goods,” created a specialized task force comprised of officials from a variety of government agencies, and strengthened enforcement with anton pilar orders, mareva injunctions and new punishments.  Zanzibar’s Industrial Property Act extended protection to non-traditional types of marks such as sound, color and smell.  Service marks and well-known marks are also now protected.  Enforcement measures were increased here as well, with new boarder measures, remedies and injunction possibilities.

Improvements Needed

While optimism is high, there is still much work needed.  In general, many countries have decent legislation but Acts do not have implementing regulations and laws do not have proper enforcements on the ground.  A few countries, most notably Eritrea, Libya and Somalia, are in desperate need of trademark reform.  Unfortunately, countries needing high levels of reform often have much more pressing issues with which to deal more immediately.

Madrid also remains a big sticking point in Africa.  Several brand owners at INTA mentioned that the lack of Madrid compliance in Africa is one of the main reasons they do not attempt to regiser their trademarks there.  The number of countries acceding to Madrid is increasing, but the countries do not always have the matching legislation.

Going Forward

African countries are moving in the right direction.  Many issues still exist, but countries are addressing the issues as able.  OAPI remains a strong player in these improvements.  (Simon Brown described OAPI as an “African beacon – how a regional system should work.”)  But the countries cannot do everything alone.  Brand owners demand enforcement and protection of their marks, yet are reluctant to register their trademarks.  The countries are putting the necessary legislation in place, but the legislation cannot offer protection without the brand owners doing their parts.  As August Mreme explained, if brand owners do not register their marks to protect their brands, counterfeits from the Middle East will destroy their brand image in Africa.

[For those wishing to know more about the panel, the speakers were: Simon Brown of Adams & Adams in South Africa, William I. Maema of Iseme, Kamau & Maema Advocates of Kenya, and August N. Mreme of Mkono & Company Advocates of Tanzania.  The panel was moderated by Gerard du Plessis from Adams & Adams of South Africa.]

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Thursday, 21 May 2009


SA wines always winners!

Well maybe not always, but definitely at the ECJ!

A South African winery, Waterford Wines, applied to OHIM for a figurative mark 'Waterford Stellenbosch' in class 33 for alcoholic beverages, namely wines produced in Stellenbosch. The application was opposed by Waterford Wedgwood, manufacturers of the well-known Waterford crystal, who had a registration in class 21 for goods that included 'articles of glassware'. The opposition was based on art 8(1)(b) of Reg 40/94 (similar marks/similar goods).

OHIM's Opposition Division held that there was no likelihood of confusion as the goods were not similar. On appeal, OHIM's First Board of Appeal disagreed and held that the goods concerned were similar on account of the high degree to which wine and wine glasses complement each other. A further appeal to the Court of First Instance resulted in a finding that, although there was a degree of complementarity, there was no similarity and so there could be no likelihood of confusion between the marks.

Finally, on appeal to the ECJ, the court held that the more distinctive the earlier mark, the greater the likelihood of confusion, and that a low degree of similarity between the goods concerned can be offset by a high degree of similarity between the marks. However, a complete lack of similarity cannot be offset by the distinctiveness of the earlier mark. The ECJ confirmed the finding by the Court of First Instance that the goods were not similar, despite a degree of complementarity and dismissed the appeal.

We hope that when the mark proceeds to registration, these wines will remain available in South Africa, and that consumers in the EC will not be the only ones to raise a glass of Waterford to toast the occasion.

The full text of the ECJ judgment is available here
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Aurelia J. Schultz

Lions Invade Seattle

Afro-Leo’s Darren Olivier, Jeremy Phillips, Paul Asiimwe and Aurelia Schultz spent the past week at the International Trademark Association’s (INTA) Annual Meeting in Seattle filling up with wonderful African trademark news to share with all of you. 

Paul, Jeremey and MePart of the week’s events included the Fifth Annual Meet the Bloggers.  Fans of IP and bloggers gathered together to share part of their evening talking, eating, laughing and meeting new people.  Even the trademark attorney for Cowbell was there!  Always fun to find a bit of Africa in random places.
(right: Aurelia, Paul and Jeremy enjoying the Meet the Bloggers event.)

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Monday, 18 May 2009


Call to cultivate the talent in the continent

Writing for Daily Sun of Nigeria, Fidel Odum reports of a number of achievers from that Country who have made some great inventions- notably a recent invention by Dr. Louis Obyo Obyo Nelson of a drug for the treatment of diabetes.

The writer notes that “what is of utmost significance in Dr. Nelson’s invention is that it is a cure and not just another control drug for diabetes” and that a complete remission of the disease was reported in all the tested persons.

It is reported that the United States Patent Office has granted a patent for this invention and a partnership between a Nigerian Company and an American pharmaceutical company will soon have the drug marketed worldwide.

The piece also cites other Nigerians making great scientific strides locally and abroad noting that there is need celebrate and cultivate more seriously the talent in the continent.

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Aurelia J. Schultz

Utilizing More Government Resources for Enforcing Trademarks

Afro Leo had the opportunity today to discuss trademark enforcement in Africa with some very knowledgeable trademark practitioners as part of the International Trademark Association Annual Meeting.    A particularly interesting part of the discussion involved attorneys from Nigeria and Zimbabwe sharing ideas about government agencies that can assist in trademark enforcement.

Government agencies can provide benefits to the regular trademark office because of their different regulations.    The agency regulations may allow seizures to happen more quickly than the trademark office’s procedures or proceed with investigations in another way.

The main agencies mentioned as useful in assisting in trademark enforcement were customs agencies, agencies dealing with product standards, food and drug agencies and consumer protection agencies.  All of these agencies have a stake in the quality of goods and can therefore be useful in dealing with subpar counterfeits.   One drawback: most of the agencies cannot help when the counterfeit goods are of high enough quality to meet national requirements.

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Friday, 15 May 2009

Darren Olivier

African trade mark makes history in Europe

It is not often that European Court of Justice (ECJ) is interesting has delivered a much-awaited decision relating to a dispute between Ireland's glassware giant, Waterford Wedgwood Plc, and a Stellenbosch-based company, Assembled Investments (Pty) Ltd (which owns the trademarks used by Waterford Wines (Pty) Ltd). Leanne Mostert, a partner in the Cape Town office of Webber Wentzel, who represented Assembled Investments, commented: ‘…after an almost decade long battle, the ECJ found in favour of Assembled Investments. Not only is this a great victory for SA, and for a South African brand, but the decision also sets a global precedent.’ She adds: ‘The ECJ’s decision finally puts to bed a long disputed issue. It establishes that even where a proposed trademark is identical or similar to an earlier mark with a particularly high distinctive character, there must still be some degree of similarity between the respective goods to establish a likelihood of confusion. Only then will the owner of an earlier mark be able to prevent the registration of a proposed similar mark on the basis of Article 8(1)(b) of the EU community trademark regulations.’ Mostert says the decision also confirms the 2007 decision of the EU's Court of First Instance that wine and wine glasses are not similar products although to a degree they are complementary.

Going bust:

the case:
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Counterfeit costs

Mandla Mnyatheli, the Chief Director of company and IP enforcement at South Africa's DTI said recently that trade in counterfeit goods is costing the country more than R2 billion annually in lost revenue. A 2006 research report by UNISA's Bureau for Market Research found that counterfeit goods worth over half a million rands were confiscated at borders during the period under review. A major reason for this was the acceptance in developing countries of fake products.
While consumers do not always find it unacceptable to purchase counterfeit consumer goods such as bags, clothes and movies, these same consumers would no doubt be horrified to know that possibly 10% of medicines and pharmaceuticals on the South African market are counterfeit. This is the figure provided by a spokesman for the Medical Controls Council, who said that most of these products originated from China, India or Pakistan.
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Wednesday, 13 May 2009

Asiimwe Paul

Africa Pharmaceuticals Trademark Network?

I have mooted the idea of setting up an network of Trademark professionals interested in the issue of pharmaceuticals in Africa and it has received interest from some bloggers. Currently, Pharmaceuticals pose the greatest threat to human and animal life among the counterfeits that are ravaging Africa.

If you are not able to attend the INTA conference in Seattle and would like to discuss this idea further, please get in touch offline. Otherwise let us meet after the update on Africa May 20th at 11.30 am for those that will attend the conference.
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Asiimwe Paul

Uganda IP office gets automated using WIPO's IPAS

Good news comes to those that are long suffering and patient!

According to officials from Uganda's Registration services Bureau(URSB) formerly the Registrar General, it will soon be possible to effect more accurate searches on the trademark register. The existing system was only able to determine availability of word marks, whereas the new IPAS system will be able to compare images scanned into its system for similarity. With this system, it will be easier to determine the number of marks registered in Uganda, the number of local or foreign applications as well as other related issues.

The IPAS system has been launched with support from WIPO and will initially begin with trademarks by introducing a paperless age that is revolutionary in this office. Hopefully, all concerned, both local and foreign users of the trademark registry will begin benefiting from this new facility.
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Tuesday, 12 May 2009

Darren Olivier

All change

Afro Leo linked to the FT this morning to find out that the European Central Bank had signalled that the global downturn has bottomed out (FT's believe-it-or-not article here). He then peaked onto IPKAT and noticed that Google will extend a scheme that allows companies to use their rivals' trademarks for online advertising to 194 countries (read about the impact here). He then read an email from a good friend that he was changing his adopted name back to his birth name after he met up with his biological father after 36 years. Significant changes indeed.

And, congratulations to RSA based luxury safari group &Beyond whose website was nominated as a finalist in the travel sector of the highly acclaimed international Webby Awards, one of the first South African companies to achieve this recognition. Four other contenders were listed in the travel sector including Lonely Planet and the eventual winner -
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Monday, 11 May 2009

Darren Olivier

INTA's "Africa Update" next week

Next week INTA hosts its 131st Annual Meeting in Seattle. On its educational program is a regional update for Africa held on Wednesday May 20 between 10.15 and 11.30. The session will be moderated by Adams & Adams' Gerard Du Plessis and the speakers are Simon Brown (Adams & Adams) together with Elio Teixeira (Afrilegis). The discussion is promoted by this intro on the program:

"In spite of the fact that the laws in african countries are changing, the trademark laws of many countries on this continent remain problematic and fall short of international requirements. This session will highlight recent legislative changes and potential difficulties as well as focus on specific issues concerning counterfeiting, such as the significant problem in africa of refurbished goods being sold as new ones."

The Afro-IP team will be attending this talk and looks forward to meeting those who are able to make it!
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Friday, 8 May 2009


Tanzania generic pharma sector set for growth

The East African reports predictions of healthy growth in Tanzania's spend on generic medicines -- the annual figure will rise from $105 million now to $188 million by 2014, says consultancy Frost & Sullivan. Government and donor-supported programmes will account for most of this. The increased spend is reckoned to be a possible tonic for growth of local generics manufacture. In 2007 Tanzania had just eight drug manufacturing companies, compared to Kenya’s nearly 40.

According to World Trade Organisation (WTO) provisions, Tanzania is free to amend the Patents Act to exclude, until 1 January 2016, pharmaceutical products from protection through patents and undisclosed information.

The conclusion we can draw from this is that it's not the presence of patent laws that stimulates sectoral growth, but the presence of purchasers with money in their pockets and of people capable of providing them with something to spend.
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Darren Olivier


Anyone seen the Servier judgment?
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More about the Merchandise Marks Act

The recent post about FIFA's 'great victory' made me reread the relevant provisions of the Merchandise Marks Act on which FIFA relies. Two questions:

1 Whatever happened to s 15A(b), which no-one ever quotes?

Here it is:
15A Abuse of trade mark in relation to event
(1) (b) The Minister may not designate an event as a protected event unless the staging of the event is in the public interest and the Minister is satisfied that the organisers have created sufficient opportunities for small businesses and in particular those of the previously disadvantaged communities.
Given the control exercised by FIFA, it is difficult to imagine what opportunities will be created for small businesses.

2 Are the marks used by Eastwood Tavern in fact protected?

A study of General Notice 1791 of 2007 (GG 30595) in which the Minister of Trade and Industry prohibited the use of certain words in terms of s15A at FIFA's request, will show that the words "World Cup 2010", "South Africa 2010" and "Twenty Ten South Africa", which are the words detailed in the consent order in the recent FIFA v Eastwood Tavern litigation are not protected in terms of this notice. The consent order refers to these words as trade marks, but it would be interesting to know whether these marks have proceeded to registration - it is hard to believe that they are viewed as distinctive.
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Thursday, 7 May 2009

Darren Olivier

Urgent action required as counterfeiting expected to increase

Business Daily has published an excellent synopsis of the predicted effect of the global meltdown on counterfeiting in East Africa with a focus on Kenya. However, it will be relevant across Africa too. Dominique Patton and Jim Onyango neatly outline a number of factors which will increase counterfeiting, including increased trade between Africa and China, the decreased purchasing power of consumers inviting them to switch to counterfeit goods, relatively porous borders (especially as Europe tightens), weak or nonexistent intellectual property laws (though that is changing in East Africa), increased sophistication of counterfeiters coupled with a need in China to maintain levels of production as legitimate demand decreases, and low consumer awareness. You can read more here.

Meanwhile as the Indian Premier League Twenty Twenty cricket competition has been drawing substantial crowds in South Africa, a company known as K B J Asset Holdings (PTY) Limited has seen it appropriate to misappropriate the names of the sides by filing for them as trade marks for "Education; providing of training; entertainment; sporting and cultural activities, soccer sport, rugby & cricket". At the end of each application there is a signature below which the signor claims that the trade mark applied for is in use or intended for use by the applicant and that the applicant is the bona fide proprietor of the trade mark. Sure. However, steps can be taken by the franchises as outlined in an earlier post here. South African law will recognise rights in the reputation of the IPL cricket sides by virtue of the tournaments and exposure around them over the last two years.
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Wednesday, 6 May 2009

Darren Olivier

Who did The Nose pick in May?

Noseweek (news you are not supposed to know)has a following thanks to its sensational exposes. The IP industry in RSA has found itself on its content page more often than it would probably like and consequently Noseweek is received with mixed feelings by practitioners. My own view is that Noseweek is quite positive for the IP industry. Nonetheless, it can be and often is, a dubious honour to mentioned within its pages simply because of the nature of the publication. This is what happened to Dr Wim Alberts, a respected IP commentator in South Africa, who suffered a few hours of anguish yesterday when he was told by a colleague that he had been quoted in an article provocatively entitled "Driven to Drink". You can locate the article here (if you subscribe) and Afro-IP will publish the article next month when it is released for free. Frustrating I know - it cost Dr Alberts a few hours and R30 (the cost of the article) to find out that The Nose had actually picked Fleurette Coetzee (CIPRO's Senior Manager of Trade Marks) for a rollover this time, while the Doc's reputation remained safely intact, if not enhanced.
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Tuesday, 5 May 2009

Darren Olivier

The Gap trenches dug again

Litigation in South Africa over The Gap trade mark has raged for well over a decade now. The case, primarily between Kingsgate Clothing (Pty) Ltd (previously, the Moola Group) and The Gap Inc, is South Africa's equivalent of the Bud/Budweiser and Apple Computers/Apple Corp trade mark wars.

The Gap's case has been run by Nola Bond's (DM Kisch) team for the majority of the time (which includes SC Cedric Puckrin). Kingsgate have primarily used the law firm Macroberts Inc, under the strategic guidance of Philip Ginsburg, another well known Senior Counsel. Despite court successes by both sides neither side has managed to persuade a Court to give them outright exclusivity to the GAP trade mark in RSA. In essence, this has become a fascinating (if not tiring) battle between the different principles governing rights to trade marks and protectable goodwill and reputation in South Africa. Meanwhile shoppers are caught in no man's land.

The latest in the saga is this judgment handed down last month over a scrap clarifying issues for yet another trial. Before the Court were two separate applications, firstly an application to amend particulars of claim and secondly an application by Kingsgate to join Stuttafords as an additional defendant in reconvention. Both sides were successful in their applications but not without detailed legal argument with input from no less than seven advocates (in addition to the attorneys), which will give some indication as to why a commercial settlement has not ever been achieved to date, and the extent to which both sides wish to go to achieve success.

The case is useful if you are interested in principles of joinder (adding a defendant or plaintiff to an action) or if you wish to be reminded again that a passing off action is different from trade mark infringement. It is not a case to be read out loud if you battle with your "r"s - it is filled with reconventions, replications, res judicatas, reliefs and registrations.
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Monday, 4 May 2009

Darren Olivier

USTR Special 301 Report

On 30 April 2009, the USTR issued its Special 301 report identifying those countries that deny adequate and effective IPR protection or deny deny fair and equitable market access for persons that rely on intellectual property protection. Algeria and Egypt are the only African countries on the report, which can be located here.

Algeria: The United States is troubled by a law that took effect in Algeria on January 1, 2009 that bans numerous imported pharmaceutical products and medical devices in favor of local production in Algeria.This import ban prevents market access by U.S. companies that rely on intellectual property, and is a serious concern.Industry has also noted concern over the granting of marketing approval in recent years to unauthorized copies of drugs protected by Algerian patents, and the lack of effective judicial remedies to enable rightsholders to challenge in court the granting of such marketing approvals. Enforcement against piracy and counterfeiting is weak.

Egypt: Serious concerns remain, however, about weak copyright enforcement by the Ministry of Culture against piracy of books, music, and films, which the U.S. copyright industries describe as virtually unchecked.U.S. industries report the recent growth in Internet piracy, which needs to be effectively addressed by law enforcement officials and courts. With respect to pharmaceutical products, the United States recognizes the Ministry of Health’s efforts to combat counterfeit pharmaceuticals, streamline its regulatory processes for pharmaceutical products, and to establish a website to increase transparency.
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Friday, 1 May 2009


Tunisia latest country to receive French nuclear technology

According to a report in Reuters, France and Tunisia have concluded a nuclear cooperation pact together with an 80 million euro aid package for Tunisia. The deal, which will help Tunisia develop civil nuclear technology, is accompanied by agreements on industrial cooperation and transport. France, who previously struck similar energy deals with Algeria, Libya and Morocco, will help Tunisia develop its first nuclear power station by 2020.
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