Wednesday, 31 March 2010

Darren Olivier

Some alternative methods to fighting fake drugs

The problem of fake drugs is not new to this blog and nor is the debate over whether IP legislation and reliable enforcement effectively deals with the problem. Earlier this month, Afro-IP understands that the Kenyan Anti-Counterfeit legislation was brought to task before the Constitutional Court. Why - amongst other things, because activists (not only those with self interest in the production of generic drugs) believe that stopping the supply of generics (because they fall within the definition of "counterfeit" in the Act) poses serious health risks to developing nations. As one article puts it - a seizure disrupts tenuous supply chains increasing the risks of stock-outs in health facilities. However, IP (on its own and for its own sake) should never be touted as the only solution to this very complex situation, crucial as it may be. An article in Now Lebanon, also illustrating that fakes drugs is not just an African problem, reveals some of these other solutions including the notion that a state run health system significantly reduces the problem of counterfeit drugs:

“In a social health care system that covers all citizens, [the prevalence of] counterfeit medicine deceases, while the opposite is true [with privatized systems],” he said. “In France for example, [an estimated] zero percent of medicine is counterfeit, whereas in Africa the percentage can reach up to 30 percent.”

"Health Minister Mohammad Khalifeh says that his ministry currently sends out inspectors to over 80 pharmacies on a daily basis to buy samples that are then tested. The customs department is also collaborating by increasing surveillance on the country’s borders to control smuggling. Meanwhile, new electronic methods are being used, with drug companies asked to tag their packages with certified barcodes and serial numbers to guarantee authenticity."

“We are bringing it to the public’s attention, not only to highlight the apprehension of criminals but also for awareness purposes. The public should know which pharmacist to trust and how to buy their drugs through legal channels and not to resort to online buying and home deliveries, which is at the root of this problem.”

"To guarantee the product, the syndicate offers its members a hologram to place on medicine packets as a sign of commitment to the specifications of the Ministry of Health and a responsibility toward the proper channeling of drugs from producers to consumers. Syndicate members, according to Phares, have a written and moral obligation to these commitments and represent 90 percent of local suppliers."
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Tuesday, 30 March 2010

Darren Olivier

Chameleon controversy

Against the backdrop of gorgeous wine estates Lovane and Jordan comes a fight over marks which are conceptually, chameleon (no pun intended). Key principles include the extent of protection for English words against Xhosa translated derivatives, evidence preparation and the link between passing off and infringement. Jeremy Speres who completed his LLM last year and recently joined Stellenbosh based firm Cluver Markotter found time to send Afro Leo this latest trade mark decision from the Western Cape and a very useful summary. You can decant the decision and the useful summary here and here: Judge Bozalek rules on Xhose translation of trade mark

Additional comment:
  • The judge erred in suggesting that evidence is required to show actual confusion (see para 21) - a likelihood of confusion is sufficient.
  • Did the judge also err that expert evidence is required to show a linguistic link between "lovane" and "ulovane" (also para 21) which seems at odds with para 6 which states that it is "common cause" the word "lovane" was derived from the xhosa word "ulovane" (perhaps he meant that the derivation was common cause but the impact on a consumer would not be - see also para 22)?
  • Does the judge endorse the notion that because Xhosa-speaking people make up a minority of population (17.5%) it is more difficult to show a likelihood of confusion (see para 22)? If he did he must surely be incorrect.
  • Counsel did not argue the "bait and switch" concept which is mooted (see Momberg & Els here) to be part of our law and goes something like this: Once Lovane baited the public with an image of a chameleon on its signage (which would further the conceptual similarity with the name "Lovane" and also the derivation of "Lovane" from "Ulovane") the mere removal of the chameleon image does not avoid further misrepresentation/passing off occurring. In fact, as the argument goes, Lovane would in those circumstances be required to go further than would ordinarily be the case to ensure that no confusion would occur ie it would be argued that they would be required to change their name too.
  • The whole case would have been decided differently had Jordan filed for the protection of its name in Xhosa
  • Does the protection afforded by word marks extend to all identical conceptual devices? Afro Leo expects not. Take for example a registration for CAT for shoes - it is unlikely stop a puma (PUMA) or panther (Slazenger) device being registered or used for say, shoes and vice versa.
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Monday, 29 March 2010


The Baby Experts: Round 3

Last year, Johnson & Johnson (Pty) Ltd lodged a competitor complaint against Tiger Brands (Pty) Ltd’s Elizabeth Anne’s by Purity advertisement which contained the wording “Elizabeth Anne’s by Purity. The Baby Experts”. The complaint was, in essence, that the word “the” (in “The Baby Experts”) implied that Purity is the only expert in relation to baby products which, according to Johnson & Johnson, it could not claim. In response, Tiger Brands submitted that the statement is not one of fact, but rather an opinion, puffery or a value judgment that does not require substantiation and is not likely to mislead the consumer. In considering whether the statement was an opinion, the Directorate relied on a 1995 ruling in MTN/Vodacom where it was remarked that where a statement is “disassociated from and not amplified in the context or the body of the advertisement”, it would be regarded by the consumer as an opinion rather than a statement of fact. The Directorate felt that this approach applied in this case and dismissed the complaint.

Johnson & Johnson noted an appeal to the Advertising Industry Tribunal, where the majority ruled that the statement is indeed one of fact and does require substantiation – which had not been provided. It held that the claim was misleading and that Tiger Brands was unfairly trading on the goodwill established by the Purity brand which is a leader in baby food products. The appeal was upheld.

In an appeal against the majority ruling of the Advertising Industry Tribunal, Tiger Brands approached the Final Appeal Committee. The Committee considered the critical issues of whether the advertisement, read as a whole, would be interpreted to mean the Purity is an expert in baby care products and whether the statement was one of fact or an expression of opinion.

Tiger Brands pointed out that Purity has expertise in the area of baby nutrition and Elizabeth Anne’s has expertise in baby care products, accordingly the combination of the expertise of the brands (both in its stable) allows them to claim that they are experts in both fields. The Committee was not impressed with this argument, pointing out that had the wording been “Elizabeth Anne’s and Purity”, rather than “Elizabeth Anne’s by Purity”, it may have some justification in the claim. As it stands, Purity is being promoted as the expert and not Elizabeth Anne’s. It was argued by Johnson & Johnson that the goodwill of Elizabeth Anne’s would entice consumers to purchase the products. The Committee found that Purity is claiming a wider sphere of expertise than it has and that the claim is misleading to the hypothetical reasonable reader. The Committee agreed with the decision of the Advertising Industry Tribunal and dismissed the appeal.
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Friday, 26 March 2010

Darren Olivier

No Fake Smokescreen

News that 25 million sticks or Ksh 125 million (about US Dollar 1.5 million) worth of fake cigarettes were consumed in the Kenyan market last year is reported by A24Media. British American Tobacco estimates that the illicit cigarette market accounts for about 12 per cent of the total market consumption in Kenya. Anti-counterfeit budgets for Africa often struggle to win fights for money in big corporates, typically because of the low importance of Africa relative to other continents, the difficulties (sometimes perceived) of enforcing IP rights in Africa and a lack of understanding of the impact that counterfeiting has on brands. At some point though the problems (as illustrated by this news) are so self evident that budgets will simply have to increase, especially as anti-counterfeit legislation and international funding take hold.
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Aurelia J. Schultz

Swaziland: Un-deterring Fines, Successful Raid

See adjacent text.Swazi Observer has a follow-up regarding the frustration with low fines for copyright infringement in Swaziland.  (Discussed on Afro-IP here.)  Taking an active role in the fight against infringement, artists from the Association of Christian Artists in Swaziland (ACASWA) joined forces with the local police in Manzini, an industrial centre in central Swaziland.  Together, the police and artists raided the streets of Manzini for unauthorized copies of the artists’ works.

The raid seems to have been successful; the police and artists confiscated a large number of infringing goods valuing E100,000 (ZAR 100,000).  The police also made a significant number of arrests, but all those arrested were able to pay the low fines and were released from custody.

These low fines - four emalangeni per copy - are the source of growing frustration over Swaziland’s Copyright Act of 1912.  The Observer comments:

“Gospel artists are utterly outraged by the existence of the Copyright Act of 1912 which stipulates that after conviction, music pirates will be liable to a fine of E4 when found in possession of counterfeit goods.”

Afro-Leo would like to observe that the artists are probably not “outraged by the existence of the Copyright Act of 1912,” but rather outraged that the an act from 1912 is still the current act.  If the 1912 Act did not exist, the country would have no copyright law.  While the absence of copyright would also mean the absence of infringement, it would not place the artists in any better of a position.

Once again, the artists spoke out to urge the Swaziland parliament to enact a new copyright act.  A draft copyright act was in circulation in 2006.  (Mentioned in endnote 5 of this pdf document discussing Botswana’s 2005 copyright draft.)  Afro-Leo has not yet been able to find more information about this draft, its contents, or what happened to it.  Perhaps some Swazi readers can help with more information.

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Wednesday, 24 March 2010

Darren Olivier

The much awaited ECJ Adwords decision

Afro Leo has come across the much awaited ECJ Adwords decision - handed down within the last 24 hours here. Readers may recall an earlier post on this blog entitled ECJ closer to Adwords decision covering a preliminary opinion which basically said that the sale and use of keywords (which could include a competitor's registered trade mark) did not amount to trade mark infringement in Europe (the same TM laws that most of Africa follow). Yesterday brand owners (Google included) clawed back some significant ground. Users can infringe by using identical keywords where there is deception. However, Google's lucrative Adword's business model is preserved whilst its obligation to respond expeditiously to take down notices is clarified. Nice. Don't just take it from me though:

"Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.

Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned."

Watch the IPKAT for in depth commentary.
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Tuesday, 23 March 2010


Another plant based patent germinates

Coming hot on the heels of the sorghum gene patent storm in Tanzania another patent recently granted in the US is likely generate debate in Kenya, at least from genetic resource campaigners.

US 7674483 titled medicinal herbal composition for treating infection, granted on 9th March 2010 relates to a herbal composition derived from Kenyan plants for treatment of HIV and other infectious diseases.

The patent mentions up to 14 different plants, including Dovyalis abyssinica and Clutia robusta. The claims however are directed to the process for preparing the herbal composition and not to the plants themselves.

The patent is assigned to International Patent Holdings, LLC of USA and the inventors are listed as Paul Kiprono Chepkwony, Maria Medina and Mitchell Medina all of Kenya.
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Monday, 22 March 2010

Darren Olivier

Cipro and Kulula interviews

IP made news on Radio 702 (probably South Africa’s best known talk radio station) during last Friday’s 6pm roundup which included interviews with Minister Rob Davies over CIPRO’s woes and Gidon Novic on Fifa’s strongarm tactics against his company, Kulula. You can listen to it here.

Be prepared though for rhetoric from the minister and some frustration if you have been reading this blog for the past year. Most disappointing though is Mr Davies' underestimation of what CIPRO potentially means to business and government, even if we are to forgive his IP faux pas about CIPRO being about copyright registration and IP treaties.

Gidon Novic pleads foul and is unashamedly proud of his ignorance of the impact of Metcash, in defending his company’s rather blatant ambush marketing tactic … and with good reason too. Fifa’s no tolerance approach has handed his company some fantastically good marketing whilst inciting more anti-Fifa fervour. Does Fifa care – probably not. For every Novic there are hundreds of others who steer clear of sponsor’s rights, because of Fifa's vigilance.

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Making Waves

Clause 8 of Section II of the Code of Advertising practice deals with the exploitation of advertising goodwill. It prohibits advertisements which (without permission) take advantage of the goodwill of another party’s advertisement. Consideration is given to, inter alia, the likelihood of confusion, deception and the diminution of goodwill, as well as to whether the advertising concept relied upon is the “signature” of the product or services advertised, is consistently used and prominent in the mind of the consumer. This clause is somewhat in line with the principles of passing off.
Recently, Ocean Basket Holdings (Pty) Ltd lodged a complaint against Jimmy’s Killer Prawns Franchise Group (Pty) Ltd which was using a wave device in its advertising. This use, it submitted, was exploitative of the goodwill of the Complainant’s own wave device, used since 2003.
In response, the Respondent submitted evidence supporting the fact that wave devices are common in the seafood industry, and that they have been for many years prior to 2003. It also provided examples of how the Respondent had, itself, applied its wave device differently in many cases. While it respected the Respondent’s right to the device in its particular colour combination, texture and design, it submitted that its own wave device was sufficiently different to the Respondent’s to avoid confusion in the mind of the consumer.
It appears that the Complainant laid claim to wave devices in general and believed that its use since 2003 created proprietary rights. The ASA Directorate dismissed this argument on the basis that “the use of the device does not create distinctiveness in the device”. It found that a wave device is not unique to or distinctive of the Respondent and dismissed the complaint.
It is important to note that the Directorate did not dismiss the idea that a particular wave device could be distinctive of an advertiser, but rejected this claim on the basis that the complaint was against the mere use of a wave device and not on the similarities between the Complainant’s and the Respondent’s wave devices.
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Thursday, 18 March 2010

Aurelia J. Schultz

Fines as an Incidental Cost for Infringing

It’s a problem many African countries face, inflation rendering a fine meaningless.  When the law listing the fine is very old, the fine goes beyond meaningless to downright ridiculous.  This is the complaint of musicians in Swaziland who are upset over the very low fine amounts for copyright infringement in Swaziland. [More information on reactions to the fine and the particularly hard effect of copyright infringement on gospel singers can be found here.]

The current Swaziland Copyright Act dates back to 1912 and lists the fine for making, selling, distributing or displaying infringing works as 4 rand for each infringing copy. (Section 13.)  The Act also caps the fine at 100 rand.  (E 4 is equal to ZAR 4, or about half a US dollar.)

A new copyright act has been drafted, which would increase the fine amount to E25,000.  A coalition of copyright law stakeholders met last week to discuss the new draft.  Representatives from the judiciary, music industry, publishing industry and the Council of Arts and Culture discussed their support of the proposed draft and their plans to increase awareness of the need for a new act.  (Swazi Observer has more details of the meeting here.)

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Darren Olivier

Kenyan campaigners anxious

"Since the birth of the Anti-Counterfeit Agency in January (Afro Leo thinks December), we are yet to see or feel any action against producers of fake goods which continue to find their way into the Kenyan market. Counterfeits are increasingly dominating the country’s retail network and in the process stifling the growth of the manufacturing sector (ed - for the extent of the problem have a peek here). We acknowledge the fact that it takes a bit of time to set up a fully-fledged secretariat to serve an institution such as the anti-counterfeit agency but, nevertheless, the establishment of the body should be expedited quickly to give impetus to the fight against counterfeits in Kenya." (Business Daily Africa). Readers interested in background reading are invited to read David's post here.
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Monday, 15 March 2010


Double Delight for Lolly

It was a double bill this week for strip club owner Lolly Jackson with two consumer complaints lodged against two different billboard advertisements for his Teazers clubs. Lolly has made no secret of the fact that he welcomes such complaints, as they provide him with

In the first complaint, a group of consumers objected to a billboard featuring a scantily clad woman wearing a red Santa Claus cap with the words “O’ Come all yea faithful” on the basis that it is offensive to Christians as it uses a song celebrating the birth of Jesus (and accordingly has religious connotations) to promote an adult entertainment venue.

The relevant clause of the Code of Advertising Practice, Clause 1 of Section II, requires that advertising may not cause serious, widespread or sectoral offence. That an advert is offensive to some, however, does not in itself qualify the advertisement as offensive in terms of the Code. The Directorate will consider context, medium, likely audience and degree of social concern. The advertisement is to be considered through the eyes of a hypothetical reasonable person who is not over-sensitive or hypercritical.

In its response, Teazers submitted that the song is not of a Christian origin but refers to the birth of Prince James II in the 18th century.

The Directorate found that the advertisement does not comment on any aspect of Christianity or religion and does not attack or belittle it. It found further that just because the advertisement features a traditionally Christian song does not imply that it belittles a basic principle of Christianity. The complaint was dismissed.

In the second complaint, a consumer lodged a complaint against a billboard featuring a woman’s naked torso accompanied by the wording “Abreast of the rest! Still the best”.

The complaint was that the advertisement was indecent and explicit for children, the relevant clauses of Section II of the Code being 1 (offensive advertising) and 14 (which requires that advertising should not contain matter which may harm children mentally, morally, emotionally or physically).

The ASA found that the image on the billboard was “not overtly sexual and would not be understood to be sexual by a child” and accordingly would not be harmful to children. It was found that only an adult familiar with the services offered would read into the advertisement sexual innuendo. It was found not to be in contravention of Clause 14 and could not, therefore be regarded as offensive and the complaint was dismissed.

While it is debatable whether the advertisement in question is harmful to children, I must disagree on the Directorate’s finding that it would not be understood by a child to be sexual. Perhaps for very young children this is true, but I think that older children are certainly savvy enough to have at least a limited understanding of the sexual innuendo.

I wonder if Lolly knows that “abreast” means “equal to”, “alongside of” or “up to date with” and that his advertisement is not quite as laudatory as he probably intended. For an advertiser who relies on witty pay-off lines, it is disappointing that perhaps this one was not properly thought out.
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Babes get Bullshy

At Loftus Versfeld stadium in Pretoria it was back to the bad old days, when all fans got to see was rugby. The cheerleaders, commonly known as the Bulls Babes, were nowhere in sight, to the disappointment of the majority of spectators.
The reason for their absence is an argument about ownership of the name ‘Bulls Babes’, which landed in the North Gauteng High Court on an urgent basis last week. Both the Blue Bulls Company (BBC) and Jump CC, which manages the cheerleaders, apparently lay claim to the name ‘Bulls Babes’. BBC asked for an urgent interim interdict to prevent Jump from using the name and logo ‘Bulls Babes’. It is not clear from media reports precisely how or why the dispute arose, but, as is usual in such matters, it is described as ‘complex … involving trademark registrations and passing off of a product’. Whether the girls themselves would be happy to think of themselves as a product is not apparent, but Judge Prinsloo was clear on one matter – not urgent enough!
He obviously had not consulted the fans at Saturday’s match on this finding.
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Friday, 12 March 2010


Africa and the INTA: do you care?

The 132nd Annual Meeting of the International Trademark Association takes place in Boston, Mass., from 23 to 26 May. From the programme (which you can view in full here) it can be seen that the regional session ("Africa Crammer – Ex Africa semper aliquid novi") takes place on Wednesday 26 May, 10.15am to 11.30am.

Last year I attended the corresponding session, together with some other members of the Afro-IP blog team. It was really sad to see how few people attended this session, given the huge amount of preparation that the African contingent of speakers in Seattle had expended and the high quality of the presentations. The organisers must have known that hardly anyone was going to turn up, since they accommodated the Africa session in a cosy little room which couldn't have held that many folk anyway.

I plan to attend the corresponding session this year and hope that as many readers of this blog who are coming to Boston will be at this session too. Africa counts: it is a large and growing consumer market; it has an increasingly sophisticated (if slow-growing) industrial base; it is a space into which counterfeit products are sold and through which they are transmitted. Its importance to the IP community should be recognised -- but if we don't emphasise this importance ourselves and commit ourselves to supporting the African part of the INTA programme, why should others bother?
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Aurelia J. Schultz

Keeping Track without Requiring Registration, a New Approach in Nigeria

Criminal copyright enforcement, it can be a bit difficult without records of what is copyrighted and by whom.  Yet, under the Berne Convention (art. 5(2)), signatory countries cannot require any formalities as a prerequisite to copyright protection. 

Many countries still manage to have some sort of registry systems.  The United States, for example, gets around Berne by requiring registration not as a prerequisite to copyright protection, but as a prerequisite for US authors to bring an infringement suit, among other things.  Some other countries have pure voluntary registration systems.  Nigeria is one of these.

Copyright Notification Scheme

In 2005, the Nigerian Copyright Commission (NCC) introduced the Copyright Notification Scheme.  The purpose of the scheme is to create a registry database of all copyrighted works in Nigeria.  The NCC’s goal is to eventually have this database accessible world-wide through the NCC website, thus facilitating easy contact for rights and usage requests to the copyright owners.  Works submitted under the Copyright Notification Scheme are included in the NCC’s database, currently a ledger book, and the author is sent a Notification Certificate.  Submitting a work currently costs N6,000, about ZAR300 or US$40.

Uptake has been alright, but not as high as the NCC would like.  (The most recent data from the STRAP II report, shows 389 total registrations as of May 2007.)  In order to increase the number of submissions to the Copyright Notification Scheme, and thus increase the number of works in the country’s database, the NCC has taken initiative with a new approach.  The NCC has started reaching out directly to places producing high amounts of creative works, such as universities.

You’re Invited

Kwara_State[1] Last month, the University of Ilorin in Kwara state published an announcement in the Unilorin Bulletin highlighting the NCC’s invitation for authors to submit works for the Notification Scheme.  The announcement directs authors to the local NCC office, saving them the trouble of traveling to, or submitting their work via mail to, the head office in Abuja.

The approach seems to make sense; concentrate resources on reaching out specifically to those who have something to submit.  The question is whether the authors will see enough benefit in the scheme to pay the fee and fill out the form.

Confusion Consequences?

On an interesting side-note, Afro-Leo is a bit surprised to see the Bulletin say “NCC Invites authors to register.” (bold added)  The NCC has been very careful in the past when discussing the Copyright Notification Scheme to go out of the way to explain that it is NOT a registration system.  Presumably, this is to avoid any apparent conflict with Berne.  Most likely the editors of the Bulletin, and not the NCC, decided to use the term “register.” 

This is just one more point of confusion with the Copyright Notification Scheme in Nigeria.  Confusion also exists around the scheme’s purpose.  Some believe it actually is a registration required for copyright protection.  (Newspaper articles and editorials about piracy often will say something to the extent of ‘he doesn’t have a copyright because we checked the NCC registry and there’s no listing of his work.”)  The NCC attempts to dispel this myths, but its publications are not as widely read as the daily papers and entertainment gossip

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Darren Olivier

Fridaylite: World's Top 10 Counterfeit Cities

Yesterday's post posed the question: "What are the top ten counterfeit cities in the world?" A slightly ambiguous question but here they are:

1. Albany

2. Canberra

3. Springfield

4. Brasilia

5. Ankara

6. Bern

7. Pretoria

8. Bamako

9. Carson City

10. Rabat

Read why from the source of this news here.
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Thursday, 11 March 2010

Darren Olivier

Much ado

Afro Leo came across an article penned in respectable that got him excited, for a moment:

"All the cool things that are happening might sound truly exciting, but the reality is that the regulatory framework in South Africa does not support venture capital (VC) investment - in fact, most who make VC investments into SA businesses would rather set up entrepreneurs offshore in a more friendly environment."

According to Marc Ashton there are three main concerns in terms of our regulatory framework the authorities need to focus on: foreign exchange, skills and intellectual property.

Hoping for some analysis of this contentious topic and with some luck too, the recent Oilwell decision, Afro Leo was disappointed. Instead the author regards RSA IP laws being "in serious need of an overhaul" .. "There has to be protection of these brands and technology, both at home and in the international market place." I would invite Marc to read "Trade Mark Infringement: Is SA world class or bottom of the log?" (Charles Webster - latest Without Prejudice) and previous posts on Afro-IP here and here. There are IP laws that need a major service, like the Copyright Act, but overall I think he will find them pretty brand friendly. Exchange control, on the other hand - how much does it deter overseas IP investment in RSA and is the oil well drying up for SARS? Stay tuned.
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Darren Olivier

Tanzania: US Hails Region's Fight Against Couterfeited Trade

"We have been impressed over the last few years to see East African Community member countries and the EAC itself making strides to improve laws and mechanisms, increase resources and promote regional cooperation to fight the vice [Counterfeiting]," The US ambassador to Tanzania, Mr Alfonso Lenhardt also said ".. for 2010 alone the US has committed over 1.1bn/- for intellectual property rights enforcement training through out sub-Saharan Africa."(

Afro Leo is excited about the progress in the EAC but there will undoubtedly be critics and cynicism around the US funding because, as the argument typically goes, it fosters IPR protection of US proprietary rights and interests. In other words the funding is self preserving. Whilst the US has an interest in ensuring that its IPRs are adequately enforced, Africa's own IP creators share that interest too as illustrated by this comment:

"when he [the US Ambassador] arrived in Tanzania he attended a concert by one of Tanzania music stars and asked her where he could purchase a legitimate recording of her music. She replied that the stores selling her music in Dar es Salaam only offered pirated discs."

On a related but different topic, have you ever wondered which countries would rank in world's top 10 counterfeit capitals? Answers will be published tomorrow. Hint, only two are in Africa.
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Wednesday, 10 March 2010

Darren Olivier

Single colour difficulties before the ASA - Pritt

The Advertising Standards Authority (ASA) has ruled against Henkel AG, the producer of the well known PRITT glue stick, in a dispute with Trefoil Manufacturing over the colour of its glue stick. In essence, the ASA has said Henkel AG has no exclusive rights in South Africa to the red of its glue stick and the advertising associated with the product. Local IP dispute expert Carl Van Rooyen is heavily quoted in Supermarket Online. A copy of the decision will be made available shortly. Afro-IP went orange reporting the difficulties faced by brand owners trying to protect single colours before the ASA here.

That's the ASA's position and they are sticking to it! Well, we will see - Afro-IP understands that the Pritt decision is on appeal.

Meanwhile some depressing news is that head of CIPRO (Keith Sendwe) is apparently off sick and "very ill". Afro-IP wishes him a speedy recovery. Business Report though is less sympathetic.

Mark Schweizer of IPKAT writing for the excellent Class 46 Marques blog brings us an example of brand tarnishment and shows sensitivity to his American audience here. Afro Leo would like to think his post was inspired by all the pomp and ceremony last Friday on Afro-IP.

Please keep an eye out for commentry on the Oilwell decision, coming soon.
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Monday, 8 March 2010


Very Vague Vegetarian Versions

I follow a strict set of dietary laws, so I was quite interested to read this week’s ASA Directorate ruling on what food qualifies as “vegetarian”.

A consumer lodged a complaint regarding the wording on a Wimpy menu above a burger which states: “Remove the meat for a vegetarian option”. The complainant submitted that the removal of the meat alone would not create a vegetarian option, as the onions that form part of the recipe are fried on the same grill as the meat and that the meat would contaminate the onions. The relevant clause of the Code of Advertising Practice is Clause 4.2.1, which deals with misleading claims.

It was not disputed by the Respondent that the onions were fried on the same grill as meat and chicken, however it pointed out that the onions were fried after the grill had been scraped to remove residue from the meat. It pointed out, further, that the advertisement refers to an item which is described as “vegetarian friendly” which does not imply that it is exclusively vegetarian. It submitted that it could be expected of a reasonable vegetarian consumer to inspect the place where the product was being prepared in order to ensure that there was no chance of contamination by meat before, during or after cooking.

In a previous ruling where the wording “suitable for vegetarians” was considered, the Directorate had found that there was such diversity in opinions as to what constituted “vegetarian” that it could be expected of a reasonable vegetarian consumer to inspect a product to ensure that it “falls within a particular vegetarian category ascribed to”.

The Directorate accordingly found in this case that because the use of the word “vegetarian” is not regulated or required to be used in any particular way, that the Wimpy menu item is not misleading and the complaint was dismissed.

It is somewhat disappointing that neither the ASA nor the Department of Health has provided guidelines for vegetarian claims, which I believe may be welcomed by vegetarian consumers. Even with diversity among vegetarians as to what qualifies as “vegetarian”, perhaps guidelines following a strict interpretation of the word would assist vegetarian consumers in making food selections.
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Friday, 5 March 2010

Darren Olivier

Pomping our moral fibres

Jacob Zuma’s visit to the UK this week has provoked much controversy and indeed, a great deal of humour. Local headline writers have being having a field day: Zuma’s Royal Pomp, Pomp before talks, Pomp continues for Zuma etc. Blissfully unaware, the Yorkshire Post, Telegraph and other "dailys" in the UK and elsewhere perpetuate the humour with expressions of “pomp and ceremony” despite “ongoing controversy over Zuma’s polygamy”. It doesn’t take a genius to work out that the word “pomp” in South Africa takes on an entirely different meaning. “Oh bugger!” I hear them say…. but be careful with that expression too.

According to a recent Greek decision book titles (and for that matter, titles of articles) are not registrable as trade marks because they do not function as such. Perhaps a tragedy that “Pomp before talks” may not be registered in Greece but there would be substantial other difficulties in RSA and in other jurisdictions. Under local legislation, like many others, offensive marks may not be registered as trade marks. The South African registry has historically taken a very robust approach to ensuring a “clean” register and a delightful reminder of that is recorded here. More recently though the local Registry has rejected the label (alongside) as being offensive for energy drinks:

The question of course is how leading RSA newspapers are able to feed off sexual connotations to sell their papers (and by doing so, also influence and/or reflect the moral fibre of local society) yet Registries, rightly or wrongly, do not afford that right to trade mark owners. Take for instance too, the decision in the UK to reject applications for the trade marks "tiny penis" and "fook" on similar grounds. But are Registries in a position to make the call, especially in a multicultural societies like RSA? It must be an extremely difficult task and there will always be a tendency to err on the side of caution meaning that risque brand owners who trade on the edge are always at a disadvantage. The trend in Europe, through the dropping of relative grounds examination, is for Registries to take less of a role in policing Registers for confusion. Is there case for releasing Registries from determining the moral fibre of society...... or is this speculation just pomp?
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Monday, 1 March 2010


Slender Hopes

Slimming and diet aid products abound in the marketplace, promising instant toned and svelte bodies. Many of these products are the subject of ASA complaints and this week the ASA Directorate considered a consumer complaint lodged against the packaging and advertising of Planet Hoodia’s weight loss product “Slender Gel”.

The packaging displays the claim: “Designed to assist with curbing appetite, reducing cravings, improving skin tone”. It also claims: “CAUTION, USE OF THIS PRODUCT CAN LEAD TO MASSIVE WEIGHT LOSS”.

The complaint was that the advertisements were misleading, as was the use of the word “Slender” in the product name. The relevant clauses of Section II the Code of Advertising Practice were found to be 4.1 (which deals with substantiation) and 4.2.1 (which deals with misleading claims).

The Respondent submitted in reply to the complaint that the name “Slender Gel” makes no claim to actually making people thinner. It argued, rather creatively, that the word “slender” is used as an adjective, makes no suggestions or claim to effect weight reduction and, further, that it does not apply exclusively to humans. It pointed out that inanimate objects such as masts, cables, books and spaces could be described as “slender” (although whether it expected the Directorate to believe that the product was intended to be used on these objects is not clear). Because the word is used on a product promising weight reduction, the Directorate found that it could only be interpreted to refer to “becoming slender” and the Respondent’s defence was dismissed.

In a giant leap of logic that appears to ignore the subtlety of figurative language, the Respondent also submitted that the “CAUTION” claim is hyperbole, not intended to be taken literally. This defence also appears to have been rejected.

In making its ruling, the Directorate pointed out that due to potentially dangerous effects of medicinal products, they cannot be treated “as an ordinary general commodity” and their advertisement and promotion are strictly controlled by specific regulations.

The advertising complained of was found “clearly” to attribute its weight reduction and hunger suppressing characteristics to the inclusion of hoodia in the product. This is due to the wording “The World’s #1 Selling Hoodia Gel”and “Hoodia Gordonii” just above the weight loss claims and the statement on the Respondent’s website that the product “contains pure Hoodia Gordonii and…has been designed to assist with controlling appetite, reducing cravings and enhancing skin tone”.

Addressing the question of whether the claim regarding the efficacy of the Respondent’s product could be substantiated in terms of Clause 4.1, the Directorate considered the Respondent’s own advertising, which states that it relies, not on scientific proof, but on survey data based on consumer perception to make its claims. Clause 4.1.3 of Section II requires that survey data submitted as evidence must emanate from or be verified by an entity that is approved or recognized by the Southern African Market Research Association. No such verification was submitted and this evidence could not be accepted.

The product packaging makes no reference to consumer perceptions but merely accredits the weight loss and hunger suppressing characteristics to the product. In order to assess whether these claims are substantiated, the Directorate is required to rely on the opinion of an independent and credible expert in the field. No such verification was submitted and the claims were found to be unsubstantiated and in breach of Clause 4.1. In light of this, the advertising complained of was found to fall foul of Clause 4.2.1 and was considered to be misleading.

The Respondent was ordered to withdraw the claims displayed on its website and packaging and not to use the claims in their current format until new (or any) substantiation has been submitted, evaluated and a new ruling made.
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Darren Olivier

Monday - Counterfeit Focus

The links below will remind you of why counterfeiting is Africa's single biggest IP problem. Look out too for Sara Spiro's ASA column due out today.

In a move that spells relief for Indian generic drug manufacturers, at least five East African countries—Uganda, Tanzania, Rwanda, Burundi and Sudan—have refused to endorse a proposal by the East African Community (EAC) to introduce an anti-counterfeit products law. The East African states have “refused to endorse the draft proposal and have demanded that the definition of generics be what WHO (World Health Organization) stipulates”, said Baguma, who is also a director of Ugandan generic drug firm Quality Chemicals Industries Ltd. (LiveMint)

Thousands of fake or bogus tickets for the football World Cup this summer in South Africa are being sold on websites including Gumtree for many times their face value, an investigation by The Times has found. Times Online

The South African Football Association and its technical sponsor Adidas said on Tuesday they would investigate the latest counterfeit Bafana Bafana jerseys being sold in Gauteng. (Eyewitness News)

Three Nigerian nationals were arrested in Johannesburg after being found in possession of counterfeit money, Gauteng police said on Tuesday. (News24)

Two police operations yesterday netted R1,1 million in counterfeit money and uncovered goods worth R42m in a Kempton Park warehouse. The operations were not related. The goods included fake Springbok rugby jerseys, Pringle shirts, kitchenware, shoes and Zam-Buk ointment worth about R5m. (IOL)

Counterfeit medicines are a widespread problem in developing countries. Like other counterfeits, they look like real products. But counterfeit drugs may contain too much, too little or none of the active ingredients of the real thing. (VOA Part 1 and Part 2 - Dangers of counterfeit drugs)

A new firm that sells office supplies has opened an office in Nairobi. Despec International says that apart from offering a wide range of products, it will also provide product training to help fight counterfeits. (Daily Nation)

Users of HP products in Ghana are at a higher risk of using fake products, especially printer cartridges as a result of growing counterfeiting. And Hewlett Packard (HP) is not sitting on the fence and watching. The company is acting to redeem its business and save customers. (Ghana Business News)

Pic Source
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