Afro-Leo kings Jeremy Phillips and Darren Olivier participated in the Africa Update panel at this year’s International Trademark Association Annual Meeting (INTA). Along with John Syekei of Kenya, Natalia Pereira of ARIPO and Christian Dudieu Djomga of OAPI, they gave an overview of the past year’s trademark law happenings in Africa.
South Africa Report
Darren discussed top trademark highlights for South Africa, important cases and developments in national legislation.
As most people might guess, the biggest trademark issues in South Africa at this time stem from FIFA’s World Cup 2010. [Afro-IP posts about IP issues related to the World Cup, here.] FIFA has managed to fight the two common types of unlawful behavior, Intrusion and Ambush Marketing.
Intrusion refers to non-sponsoring companies advertising in areas where official sponsors would need to pay a lot of money to advertise. To combat this, FIFA has established controlled access sites that should limit adverts to only those by paid sponsors.
In order to prevent ambush marketing, FIFA has managed to get South Africa to pass specific legislation against the practice in the Merchandise Marks Act, the Trade Practices Act and others. There is lots of controversy surrounding this legislation, but FIFA only needs the legislation to last for the duration of the World Cup games, and it will. Darren predicted that the real result of FIFA’s approaches to intrusion and ambush marketing will be more creative marketing.
South Africa’s Supreme Court of Appeal, the highest commercial court in the country, heard four trademark cases in the past year. There was also an important case in a lower court. This is a very high amount of trademark cases and shows a healthy state of affairs for trademarks in South Africa. However, Darren pointed out one slight caveat, of the four Supreme Court of Appeal cases, three were overturned. So while the value of trademarks in South Africa is evident, it appears the law is not yet clear.
The four Supreme Court of Appeal cases and the one lower court case have all been previously reported on by Afro-Leo. Here is the list of cases and links to their posts:
On-line Lottery Services (Pty) Ltd v. National Lotteries Board – on Generic Marks
Puma AG Rudolf Dassler Sport v. Global Warming (Pty) Limited – on Copycat brands (Follow-up on copycat businesses)
Century City Property Services CC and Another v. Century City Property Owners Association – on geographical names in marks (Lower court decision report)
Oilwell (Pty) Limited v. Protec International and Others – on trademark assignments
Two forthcoming legislative developments highlighted by Darren were the Consumer Protection Act, expected to come into force later this year, and the discussion on Traditional Knowledge legislation. The Consumer Protection Act will be a boon to South African attorneys as it will likely require anyone with licensing relationships into South Africa to seek advice to ensure the agreements comply with local law. As usual, the subject of Traditional Knowledge protection is very controversial and its relation to the existing intellectual property law framework is unclear.
East Africa Report
John covered legislation changes, reported on registry statuses and domain name protection, and highlighted key cases for the countries of Kenya, Uganda and Tanzania in the East Africa region.
John stressed the many reasons East Africa is becoming a great place for investment and company development: large involvement by stakeholders stakeholders in intellectual property law development in East Africa, good relationships with WIPO and accessible trademark databases.
Kenya: Intellectual property related legislation in Kenya includes a new constitution, a geographical indication bill, regulations for existing legislation and a competition bill.
The proposed constitution for Kenya includes intellectual property rights, giving them constitutional protection. Referendum on the proposed constitution will take place on 6 August 2010. Regulations to put the 2008 Anti-Counterfeit Bill into effect are expected soon. The draft GI Bill and Competition Bill are pending. There are also proposed changes to the Industrial Property Act aimed at making it easier to enforce rights.
Jeremy, as moderator, added that there is a study on IP and Tanzania that will be forthcoming for readers of this blog.
Uganda: Two new bills and some new regulations, all aimed at enforcement of IP rights, are expected to increase IP security in Uganda this year. The Trademarks Bill 2008 is now pending before parliament. It will introduce an electronic register for trademarks and will make pre-filing searches mandatory. Under the Trademarks Bill, East Africa companies will be exempt from security deposits when filing for opposition proceedings. The purpose of this exemption is to encourage the growth of local companies.
The Anti-Counterfeit Bill is part of the planned region-wide Anti-Counterfeit legislation. Another step towards fighting counterfeit goods comes from the already passed Merchandise Marks Act. Regulations for this Act are also in effect; they bar counterfeit goods in the region and provide powers to the Chief Inspector and others to enforce IP rights.
Registries and Domain Name Protection
John commented on the amazing quickness of the Uganda, Tanzania and Kenya registries. He also reminded the audience that Kenya is a first to file country. Kenya also has a robust domain name protection agency.
Kenya: Patricia Asero Ochieng’, Maurine Atieno and Joseph Munyi v. The Republic – on the Anti-Counterfeit Bill and generic HIV medicines
Glaxo Group Limited v. Syner-Med Pharmaceuticals – on phonetic confusion of marks
Uganda: Angol Fabrics (Bolton) Ltd. & Another v. Africa Queen Ltd. & Another – on passing off
Via a question from the audience, the session also provided a bit of information about progress in Rwanda. William Maema, of Kenya, was able to report from the audience that Rwanda has passed a new IP law embracing all IP types. The law is available in French, English and Kirawanda. William added that Rwanda is one of the most efficient counties for trademark registrations.
Natalia discussed the history of ARIPO’s Banjul Protocol, establishing a procedure for registering in all participating ARIPO countries with one registration. She highlighted the benefits of the Banjul Protocol and acknowledged the process’ pitfalls.
The Banjul Protocol was developed in 1997. The member countries are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Zimbabwe and Tanzania minus Zanzibar.
The purpose of the Protocol is to simplify trademark registration in ARIPO member states. One registration will ARIPO registers the respective trademark in all Banjul Protocol member countries. ARIPO’s formalities and substantive examinations are of high quality.
Since inception of the Protocol in 1997, ARIPO has handled only 764 registrations. Compare this to the 12,000+ registrations done by OAPI in the past 6 years, and you can see that the Banjul Protocol is not widely successful. Natalia highlighted three suspected reasons for this: legal systems of members, discrepancies in national trademark law, and fees.
As the Anglo-phone African intellectual property organization, most of ARIPO’s members are former commonwealth countries with their basis in UK law. This means that their legal systems require national legislation ratifying a treaty before the signed treaty is truly effective in the country. Only Botswana and Namibia have recognized ARIPO under their domestic law, making it unclear whether an ARIPO registration is valid in any other Banjul member countries.
Some of the member countries have slightly differing trademark laws. Most markedly, Malawi and Uganda do not recognize service classes. This creates some confusion as to what happens when an ARIPO application includes a service mark and attempts to register in Malawi or Uganda.
Lastly, and most emotionally riling to the room at INTA, is the matter of fees for registering. ARIPO registrations cost less than an individual national legislation. This means an ARIPO registration deprives governments of potential revenue and local attorneys of work. Jeremy, as moderator, took the discussion on the fee discrepancies to remind all those present that as attorneys, the first duty is to the client and to do what is best, including economically best, for the client.
Suggestions to Improve Banjul Registrations
In a sort of chicken or the egg type conundrum, Natalia suggested that the ARIPO registration would be more beneficial to users if more people used it. She also suggested more countries enact domestic law to ratify the ARIPO treaty within their borders.
Christian gave some background on OAPI and covered some new national regulations relating to OAPI.
OAPI was created in 1977 and encompasses 16 Franco-phone countries, mostly in West Africa. OAPI has been working to increase sanctions against patent and trademark infringers.
Christian explained that a number of countries have enacted new regulations since 2005, leading to an increase in OAPI registration applications. He highlighted, in particular, the proposed amendment in Congo DRC that will strengthen the DRC law no. 82/001 Related to Trademark, Patent and Industrial Design Rights.