Monday, 28 December 2009

Darren Olivier

IP exposure in East Africa

A regional forum for policy makers in the English speaking developing countries of Africa commenced in Kampala, Uganda this month with a call to integrate intellectual property into the national development strategies. The meeting has attracted participants from South Africa, Malawi, Kenya, Ethiopia, Zimbabwe and as far as China. The World Intellectual Property Organization meeting was opened by Uganda's State Minister for Justice, Parliament and Constitutional affairs, Fred Ruhindi. (AllAfrica)

Writing for BBC News and BBC Focus on Africa magazine, Pamela Whitby sets out the significant counterfeit goods problem affecting Africa. Her article entitled "Africa-dumping ground for counterfeit goods" asks the interesting question: "Do brand owners like Unilever have a responsibility to lower prices to the point where there is no market for counterfeit goods in Africa?" Unilever says price is not the issue - well, what do you think? Big brand owners face the risk of losing rights to counterfeiters and some (eg Microsoft's policy in Kenya) do use pricing to deter counterfeiters. Others, like drug company Pfizer, prefer to tackle the problem by educating consumers of the risks. Many use a combination of strategies. Afro Leo is particularly pleased that the BBC is covering the topic.
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Saturday, 26 December 2009

Aurelia J. Schultz

African-Arab Seminar on CEL Presentation Available.

a2k newsletter coverA few months ago, Afro-Leo posted about the then-upcoming African-Arab Seminar on Copyright Limitations and Exceptions.  A brief recap, the seminar was part of  WIPO’s Standing Committee o n Copyright and Related Rights (SCCR) on work on copyright limitations and exceptions.  The December Bibliotheca Alexandrina Access 2 Knowledge (A2K) newsletter contains a very brief synopsis of the event.  BA A2K’s PowerPoint presentation from the seminar is available from WIPO.

Although missing the benefit of Hala Essalmawi’s verbal presentation, the slide show provides a lot of useful information.  It reviews the importance of accessible knowledge in the building of civilizations, reviews international treaties as they relate to copyright exceptions and notes a few alternatives to over-extensive copyright protection.

For those interested in more information about the Seminar and BA A2K, the last slide also provides contact information.

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Thursday, 24 December 2009


Kenya Anti-Counterfeiting Act criticised

A report in the Nairobi Business Daily states that a Constitutional Court challenge of Kenya's new Anti-Counterfeit Act will be will be launched early next year. It is alleged that the Act violates the right to health by confusing fake and generic medicines. Generics constitute 90 per cent of medicines used in Kenya. Representatives of two organisations co-ordinating access to essential medicines have stated that the Act contains ambiguities which could lead to misinterpretation, as the definition of counterfeiting could be read to include generic drugs.
The onus to verify whether goods are fakes or not has been put on Revenue authorities , rather than the police. One of the representatives, Christa Cepuch, who is HAI Africa director of programmes, states that "The law further gives these officials excessive powers, making the process difficult and expensive. Moreover, the onus to prove the products are not fakes lies with the accused, a price many will not be willing to pay”.
The full story is available at
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Wednesday, 23 December 2009


Egypt revises its PCT annuity payment instructions

Afro Leo has learned that the Egyption Patent Office issued new regulations on 2 December 2009 by which that Office requests the payment of due annuities at the time of filing of the national phase of an international application, this being calculated as of its international application date, and not after grant. The Office also confirms that all annuities which are due of previous applications must be settled before 31 December 2009 if the applicant is to avoid the lapse of its application.

Source: December Newsletter of NJQ Associates (Amman, Jordan).
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Aurelia J. Schultz

Guinness: Broiled and Embroiled

guinness cc by codaAn ongoing suit against famed brewery Guinness before the Federal High Court of Nigeria has moved from Justice Shaibu to Justice Archibong. Both the original and current justice on the case have experience handling copyright infringement suits, and both have previously heard cases brought by the plaintiff in this case, Musical Copyright Society of Nigeria (MCSN).

Musical Copyright Society Nigeria (MCSN) brought suit against Guinness alleging infringement of musical works in which MCSN holds the rights. Business World, which reported on the case does not say what acts of infringement are alleged, whether Guinness used musical works in advertising, hosted concerts or some other type of infringing act.

Guinness denies any infringement. According to Business World, Guinness claims at the time of the alleged infringement MCSN was not licensed to operate as a collecting society in Nigeria. This is a defense that has worked for other companies in the past. [This defense stems from the long-lasting dispute between MCSN and Performing Musicians Rights Society (PMRS) over who has the authority to collect music royalties in Nigeria. (For more on the history of the dispute, see here; For information on the dispute in the past few months, see]

Guinness appears not to be too concerned with the suit in their statement, but then it is rather standard practice for defendants to assure everyone that the suit against them is baseless. Perhaps the company may need to focus right now on recovering from the Dublin factory fire.

Photo credit: “Guinness Pint” cc-by coda

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Thursday, 17 December 2009


Nothing reconciliatory about this costs order!

Yesterday in South Africa was the Day of Reconciliation, and I spent it trying to reconcile teaching and research duties.

I had two pleasant surprises – the first a wonderful article by fellow blogger Jeremy on IP research, which appears in the new WIPO Journal. The full journal is available here and Jeremy’s article starts on p138. It should be compulsory reading for all post-graduate students and anyone else who writes on IP matters.

The second was an equally pleasant surprise. I was in Cape Town two weeks ago and got lost looking for a business in Century City, so did not feel very positive about reading the recent decision in which it featured. But the Supreme Court of Appeal judgment written by Harms DJP, Century City Apartments Property Services CC and Another v Century City Property Owners Association, available here, is enormously instructive. The paragraphs dealing with the validity of marks consisting of geographical names in previous and current UK and SA legislation, set out the law with great clarity, while the different requirements in the two jurisdictions for blameworthy conduct on the part of the proprietor is also most useful. Both of these deserve more detailed study and discussion than I can give here. However, the part dealing with costs will raise a smile (albeit wry) from all. The fun bit follows:
[56] …. Schutz JA once began a judgment with these words:
‘A record of 720 pages and heads of argument totalling 57 pages have been placed before us in order to allow us to decide whether the wrapping of its coconut biscuits used by one manufacturer passes itself off as the wrapping of another manufacturer of similar biscuits.’ (Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd [2001] 4 All SA 235 (SCA) para 1.) Not to be outshone the parties in this case presented us with a record of 1,557 pages. Trade mark cases have developed into paper wars in the apparent belief that the weight of the papers of the respective parties determines the merits or that the threat of cost orders would force the one or other party to capitulate. …..
[57] … Practitioners apparently also believe that the more they burden this court with paper the better for them. Perhaps they hope that the court will locate a winning fact that they have missed. Practitioners are paid to determine what their case is about and to make a value judgment about what is required and what not; and not only to photocopy documents. This should serve as a final warning, also for counsel who tell us to read unnecessary paper.
What a judgment!
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Tuesday, 15 December 2009

Darren Olivier

Teazer's teaser such a tease

Thanks to all those who took part in the Teazer's teaser. The voting indicates that there was quite some debate over the issues despite the fact that it was not possible to vote with complete confidence because nobody had sight of the registered trade mark. If anyone knows what Lolly actually did then please let this blog know.

Right: A Teazer's Poll

In the meantime, it is interesting to consider what the implications would be if RSA legislation adopted an "unjustified threats" provision in their trade mark legislation making it possible for law firms and claimants/plaintiffs to be sued for unjustified threats in cases where the infringement is overstated. The Teazer's teaser illustrates just how careful one would have to be in describing the infringement and how easy it may be for a character like Lolly to counter-claim for an unjustified threat, even if it was justified (instead Lolly used the press, and quite successfully too). Litigation tactics would certainly change as would those detested (but effective) standard letters of demand.

Natasha Rey's comment on whether the controversial "Laugh it off" case would have been decided differently had it involved an expression KYKNET! with the sexual overtones of the Teazer's example is something to ponder. Perhaps you have a view?
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Wednesday, 9 December 2009

Darren Olivier

RSA as an IP outsourcing destination

Afro Leo has been promoting RSA as an IP outsourcing destination and this evening returns from a short trip to Europe where he visited a beauty packaging business in Paris for whom two firms in RSA do patent outsourcing work, and then addressed an audience at RSA High Commission in London on outsourcing IP services. The feedback he received was very encouraging. The Paris based business, lead by IP advisor Anca Condrea, enjoyed cost effective services and was impressed by the quality of work, whilst over 55 people RSVPed for the London event representing the who's who of the top 40 London law firms.

Opportunities exist for the big four law firms in RSA who are able to offer the highest economies of scale in a safe and reliable environment. However, boutique firms offering a bespoke skilled service are also well placed to take advantage of the recessionary pressure on law firms to look for creative ways of cutting costs (which may be more than 50% of their current spending). But there is some way to go.

In 2010 the recession is expected to ease and that means less pressure on firms. In addition those who have been laid off are offering cost effective services to their previous employers from their homes or are otherwise happy to accept a lower pay. Firms in RSA concerned about upsetting reciprocity relationships are also not keen to be visibly taking advantage of the opportunities, notwithstanding that outsourced services are capable of enhancing an overseas law firm's offering to its own clients. Perhaps the biggest driving factor though will be how the legal market reacts to Baker and Mckenzie and Clifford Chance's outsourcing moves. As explained to me by one management consultant "law firms will need to react". Afro Leo will be monitoring just how.
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Teazers teaser

This member of Afro-IP wanted to cast her vote in the Teazers poll, but decided she needed further clarification. The original report says that Afrikaans TV channel kykNET (just look) is alleging traditional infringement ito s34(1)(a). She wondered what the registered mark looks like – presumably the words ‘kyk’ and ‘net’ have been disclaimed separately and apart from the mark? Also, does the classification cover ‘live entertainment of an explicit adult nature’?
If it does not, the alternative claim appears be based on the dilution provisions of s 34(1)(c). Here, both unfair advantage and detriment are claimed by kykNET. The allegation of ‘unfair advantage’ seems unwise, despite the fact that the goings-on of some celebrities featured on kykNET seem more appropriate to an environment like Teazers.
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Wednesday, 2 December 2009


Sudan picks date for its Madrid moment

By Madrid (Marks) Notification No. 186, the World Intellectual Property Organization has indicated the deposit by the Government of the Republic of the Sudan, on November 16, 2009, of its instrument of accession to the Madrid Protocol of 1989 on the international filing of trade marks. The Protocol will enter into force, with respect to Sudan, on 16 February 2010.

The only neighbour of Sudan -- Africa's largest country -- that has signed up to the Protocol so far is Egypt, where it has been in effect since 3 September of this year.
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Darren Olivier

What should Lolly do?

Thanks to an alert from brand enforcement expert Marius Haman, Afro Leo has become aware that strip club Teazers is on the end of an unfair advantage and detriment claim by Afrikaans entertainment channel kykNET (just watch) in relation to their use of Kyk Net! on the billboard featured alongside. You can read about the claims here.

Unlike Lolly, this blog encourages interaction and has set up a poll alongside for your comment. Cast your vote - is this a case of unfair advantage, is it a case of detriment, is there a defence or is there merit in the case at all? You have until 11 December to make your call, the same date as Lolly.

The relevant provisions of the Trade Mark Act can be found here - see sections S34(1)(c) and S34(2)(b). We shall assume the mark kykNET is validly registered for the services in respect of which which it is used.
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Tuesday, 1 December 2009

Darren Olivier

Aripo Conference Insight

Nicky Garnett (Adams & Adams) has kindly responded to Afro-IP's call for information from the ARIPO Conference in Gabarone last week:

"..the meeting was an excellent opportunity for us to witness the inner workings of ARIPO and to gain a better understanding of the organisation and its current projects.

There were substantive discussions surrounding the domestication of the Harare and Banjul Protocols into the national laws of the various signatory states and a tacit acknowledgement by all the officials present that this must be done without delay in order to make the system more attractive to potential users. Joyce Banya from WIPO's Africa Bureau was in attendance as the Africa Bureau has been very active in assisting many of the member countries with improvements to their system and the development of national IP Policies. INTA's OAPI / ARIPO Committee also presented their preliminary report back on the work that they have been doing to obtain information about the trade mark laws in the ARIPO member states.

There is a growing sense that the ARIPO system is gaining ground and it seems to be growing in its capacity (with WIPO's assistance) to act as a regional intellectual property lobbying body and effect real and substantive improvements for the member states who wish to take advantage of the benefits of the organisation."

Yesterday Afro Leo took the unusual step of acknowledging the attorney who worked in a case before Supreme Court of Appeal. In previous posts he has tried not to for a number of reasons that will be explained, but not today. The reason for making specific reference to Nolwazi Gcaba is because she is South Africa's first black IP attorney to take a matter to the SCA. In most circumstances such an acknowledgement would not be necessary and probably even offensive. However, those that have followed the court decisions reported on in this blog, most notably demonstrated by the all white appearance of ANC and COPE's legal teams in their highly publicised and politically motivated trade mark spat, will have noticed the significant absence of colour in the top echelons of the IP world in South Africa. The achievement and those that have helped it occur should therefore be celebrated.
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