Kenya's proposed constitution gives IP a mention

"Proposed new Constitution to recognize IP rights", an article written for International Law Office by David Kimani (Njoroge Regeru & Company), explains that, this May, Kenya's Attorney General published the country's proposed Constitution which, if passed in a forthcoming referendum on 4 August 2010, will by Article 11.2c oblige the state to "promote the intellectual property rights of the people of Kenya". This provision is said to require the state to promote all forms of national and cultural expression, such as the arts, as well as ensuring that communities receive compensation or royalties for the use of their culture and cultural heritage.

The current Constitution protects persons against unlawful deprivation of property of any description, but Article 40.5 of the proposed Constitution goes further, by specifically providing that "the state shall support, promote and protect the intellectual property rights of the people of Kenya".

Afro Leo wonders what checks and balances, if any, may be lurking elsewhere in the proposed Constitution, to protect the interests of users, consumers and competitors of those who own and seek to exploit their intellectual property for gain. Can any readers advise him?

Monkey Business

Last week the ASA Directorate dismissed a consumer complaint by what appears to be an animal rights group against Europcar South Africa. The television advert portrays a chimpanzee playing and successfully completing a computer game at what seems to be a laboratory. A man enters and asks the chimpanzee if he will be learning anything that day and is ignored. The chimpanzee makes a hand gesture implying that he considers the man to be a loser.

The complaint was submitted that the advertisement is offensive, irresponsible and an abuse of animal rights. The complainants asserted that the animal was grinning as it was in distress.

In response to the complaint, the advertiser stated that all necessary measures were taken to ensure that the advertisement would not be seen to condone irresponsible behaviour to animals and submitted a film-shoot report from the Animal Anti-Cruelty League stating that the filming was closely supervised by the chimp’s wrangler and the League and that it was satisfied with the overall treatment of the animal both on and off set.

The Directorate considered whether the animal was harmed during the making of the commercial and was satisfied by the report of the Animal Anti-Cruelty League that it was not.

It then considered whether the advertisement condones cruel or irresponsible behaviour towards animals, viewed from the perspective of the hypothetical reasonable person. It determined that a reasonable person would see that the chimpanzee is portrayed as scornful of the man’s ignorance and is mocking him. It is not featured as abused or deprived and the Directorate found nothing in the advertisement that could be perceived as being the result of cruelty to the chimpanzee or that a reasonable person would be encouraged to inflict harm on animals as a result of the advertisement.

Tunisia lines up for copyright training

Citing Tunisia Online News, AGIP reports that the World Intellectual Property Organization (WIPO) and Tunisia's National Standardization and Intellectual Property Institute (INNORPI) have entered into a cooperation agreement providing for the creation of a Copyrights Training Academy. The agreement was signed on 7 June, at the end of a meeting held between Secretary of State in charge of Renewable Energies and Food Industries Abdelaziz Rassaa and WIPO’s Director-General Francis Gurry.

A summary of the Tunisia meeting, viewed from WIPO's perspective, can be accessed here.

There's no need to read the small print when the T's & C's are obvious

The ASA will not come to the assistance of a complainant simply because he or she misunderstood or didn’t properly read an advertisement.

Last week the ASA dismissed a consumer complaint against Wireless Hotspot (Pty) Ltd which advertised a “30 Day Broadband Pass”. The advertisement bears the following copy: “Limited Edition! Get up to 27GB of data with this awesome 30-Day Broadband Pass! This Pass is valid for 30 days from purchase and offers prices on all our mediums such as 3G at 35c per MB, Wi-Fi at 28c per MB and ADSL from 1,4c per MB!”

The complainant reported that he was only able to transfer 1.1 GB of data using a 3G connection from the voucher purchased and submitted that the advertising was accordingly misleading. In response, Wireless Hotspot pointed out that the voucher will be deducted at different rates depending on the type of connection used. It submitted that the advertising truly reflects the actual bandwidth available i.e. “3G at 35c per MB, etc”.

The Directorate noted that the complainant laboured under the misapprehension that he would receive 27GB of data simply because of the reliance he placed on the wording “Get up to 27GB of data...”. It noted that the hypothetical reasonable person, however, would be able to gauge how much data he or she would get, depending on the connection used, by the wording “3G at 35c per MB, etc”. It is clear from the wording of the advertisement that the mode of connection (i.e. 3G, Wi-Fi or ADSL) would directly influence the amount of data available and that 27GB falls on the high end of the scale.

In dismissing the complaint, the Directorate stated that the advertisement is sufficiently clear and does not convey a misleading claim.

Egypt gets صر ccTLD up and running

According to this recent note in the AGIP Bulletin ("Egypt’s Arabic Top-Level Domain Implemented in the Internet Root Zone"), Dr Tarek Kamel, Egypt's Minister of Communications and Information Technology, has announced that the Arabic country code top level domain (ccTLD) of Egypt "مصر." is now implemented in the Internet root zone.

Registrar licences have been issued to three Egyptian companies, TE Data, Vodafone Data and Link Registrar, which are accredited by the National Telecom Regulatory Authority to be the new registrars for مصر. Says Dr Kamel,

“This great step will open up new horizons for e-services in Egypt. It will boost the number of online users in the country and will enable Internet services to penetrate new market segments by eliminating language barriers”.

Dutch courage

Bavaria beer has given the world another textbook example of how to use ambush marketing to best advantage – by making organisers angry enough to react. The vast majority of spectators and TV viewers would have had no idea that a group of pretty girls wearing orange minis at the Holland/Denmark game were anything more than enthusiastic Dutch supporters. But because of FIFA’s reaction, the whole world now knows about Bavaria beer, which is definitely NOT the official WC sponsor.
Reports conflict somewhat, but apparently the whole group was removed from the stadium. The two ringleaders have already appeared in the special world cup criminal court, where they were released on bail of R10 000 each (about $1200) and had to forfeit their passports. They face fines of up to R5 000 and a maximum of three years imprisonment for contravening s 15A of the South African Merchandise Marks Act. The Dutch ambassador has been involved, and the incident has been reported worldwide(also on IPKat here). Read more about it here.
Beer, soccer, or ambush marketing fans might remember that Bavaria pulled a similar stunt at the 2006 Soccer World Cup, where a group of Dutch men, wearing orange lederhosen, were forced to strip to their underwear before being allowed into the stadium. Comments posted about the story indicate some regret that a similar fate was not visited on the current ambushers!

Libya back in the TM grant business

The May 2010 release of the AGIP Bulletin, brings news that the Libyan Corporate and Commercial Registrations Directorate, which is affiliated to the General People's Committee for Industry, Economy and Commerce, has now issued a registration certificate for a trade mark in the country for the first time in 30 years. Apparently the Libyan Trade Mark Office started to receive applications for trade mark registration applications again in 2002, since which time more than 20,000 have been received.

The (arrest? of the) Beautiful (at the) Game

The latest ambush marketing news to come out of the football World Cup (and no this blog does not only cover the World Cup) is that a group of female fans wearing skimpy, tight fitting orange dresses were allegedly detained/removed/arrested (depending on which report you read) during Monday's game between Holland and Denmark for allegedly being involved in ambush marketing activities for Dutch brewery Bavaria.

There is no shortage of reading material here - see for eg - Google's "Fifa detains blondes". Bavaria of course have a history of taking Fifa on (a similar, not-quite-so-sexy incident involving leiderhosen occurred in 2006). This time though the "offending orange outfits" apparently did not bear telltale logos and it is not clear to what extent Bavaria were involved other than by giving the outfits away. The incident also took place during a game when partisan Dutch would also have been clad in bright orange. To avoid being naive though you may wish to consider Bavaria's advert "Check De DutchDress Commercial" before taking a view on whether this was innocent co-incidence or a very well conceived and, aided by Fifa, effective marketing ploy.

Perhaps the most compelling piece from a marketing perspective is contained under the headline "Sorry Budweiser, Fifa just sold a boatload of beer for your competitor".

The question of whether Fifa acted lawfully is dependant on a number of factors such as - was the detention/arrest/questioning/removal (depending on which it was) of the women within the powers of the "Fifa police"? If so, did they follow due process which includes having regard to the womens' right to dignity, freedom and privacy? Were the activities of the women "ambush marketing" within the very broad definitions of the by-laws and/or Acts eg S15 Merchandise Marks Act? Were the activities of the Bavaria Brewery ambush marketing - did they simply give away the dresses or did they do more eg fund and plan the trip to RSA - or was this a group of supporters who simply got together and decided to dress up for the fun of it or to mimic the girls on the Bavaria advert (must have been pretty cold if it was)? Could the ambush marketing legislation withstand an attack on constitutional grounds?

Lawful or not, apart from the press, is anyone going to take Fifa on? Will Fifa take this further - unlikely? Fifa are apparently going to file criminal complaints.

And...will Robbie Earle get his job back?

Oh ... and Holland won 2-0 ....just in case anyone is interested.

Copy That

A consumer complaint was lodged against a Konica Minolta’s Bizhub advert, in which it claimed that it was “South Africa’s favourite brand”. The complaint was that, while the product may be the best selling in the printer-photocopier market, its success in this niche market did not entitle the advertiser to claim it to be the “favourite brand” amongst all brands in the country.

In response, Konica Minolta submitted survey evidence and reports illustrating volume and market share. The Directorate accepted that this type of evidence was appropriate, however rejected the evidence on the basis that the sources of the information (IDC South Africa and InfoSource) were not approved by or acceptable to the South African Market Research Association, which is a requirement of clause 4.1.3 of Section II of the Code of Advertising Practice. It found that the claim “...Bizhub, South Africa’s favourite brand” was unsubstantiated and ordered it to be withdrawn in its current format.

Had the evidence provided by Konica Minolta been accepted by the Directorate and had it shown that the Bizhub product was indeed the market leader in printer-photocopiers, I would have been interested to learn the Directorate’s view of whether the advertiser could have made its “favourite brand” claim, or whether it would still have been ruled as unsubstantiated. I suspect that even had the advertiser argued that the claim applied only to the printer-photocopier market (in which it may well have been the “favourite brand”), the Directorate would still have found that the claim was too broad and unsubstantiated in the context of all brands in South Africa.

Henry's postcard

[Back of Postcard]

Dear Mum,

Finally, I have landed in South Africa. There were no problems with the ash cloud. I know how worried you were. I also haven't been mugged - read that article in the Telegraph if it helps - but I think I have been ambushed. It happened during this Spur advert and I have been eating their R69.95 deal (+-6 quid) ever since. I hadn't realised anyone but the sponsors were allowed to advertise during 2010. Anyway, everything is very cheap here. I bought myself an England hat that cost me 2 quid (back home it cost 20!) and I have got two Bafana Bafana souvenier shirts for Charley and Sue (saved 150 quid!). Someone told me they were fake but I don't believe them. Anway you try tell the fake from the real on the front of this postcard! And I mean the expensive ones are sold out. As expected I did catch flagitis - but managed to cure it by making a cross on my body using suntan cream. The red on white works quite nicely. Gotta go - downloaded the Vuvuzela ringtone and it's trumpeting..

Love you mum. Will write soon and please stop worrying.

Henry

[Front of postcard - Spot the Counterfeit]


Photographer John Livingstone, Street Parade outside Afro Leo's Office

Counterfeit contagion and the Gordian knot

These articles (here, here and here) portray the extent of counterfeit crisis ahead of the World Cup in South Africa. Yet is it a problem that ought to have been anticipated and could anything have been done about it by Fifa, the government or the event's official sponsors?

The articles linked to above may provoke empathy for the locals enjoying the fruits of the counterfeit industry or sympathy for the "innocent" entrepreneur who has spotted an opportunity. After all counterfeiting creates employment and a counterfeit shirt - how harmful can that be?

The problem is that the behaviour perpetuates a mindset that copying is okay, that big brand owners can afford to be ripped off and perhaps even ought to be - how can they charge so much for a shirt ($80) that I can produce (or get produced) at a fraction of the price ($5) ? Once this thinking becomes popular the fight against counterfeits becomes significantly more difficult.

A counterfeit shirt is one thing, a counterfeit spare part that endangers lives, counterfeit software that fails to prevent a car hijacking and counterfeit drugs that fail to contain the spread of disease are quite another. And let's not downplay the counterfeit shirt. We have seen it used to transport illegal drugs under its neck labels and exploit child labour in its production.

This all threatens to become another strand in what has been dubbed Fifa's Gordion Knot and in turn a headache for government.

So, what could have been done? Is it possible to have sold official shirts for $5-$10 so that the counterfeit market is/was eliminated, for example? Could Fifa or the RSA authorities have insisted on it?

Could the brand owner have still benefited - eg if you combine a cut price strategy with an effective communication campaign official could brand owners win customers in higher earning countries (where they can sell their shirts for more) and in Africa would they win market share? Evidence suggest that strategies like these work. Coke, for example, is probably the best known brand in Africa because they made their product and brand available in even the poorest (financially) of African countries many years ago and one of the ways in which Microsoft is combating its Kenyan software piracy problem is by selling their product at a significantly reduced price.

Or is it a problem with anti-counterfeiting laws and enforcement or that brand owners simply cannot compete with counterfeits often produced in the East?

Your views would be most welcome? This Afro Leo has to go for now - it is not even 6am and a Vuvuzela is pounding outside. The rooster has cried.

IP's rockin' in Rwanda

Only a few short days ago Afro-IP was pleased to make available to its readers the full text of Rwanda's new intellectual property statute (see earlier post here). Now it seems Rwanda is the name on everyone's lips. By way of evidence, Afro Leo instances this article by Kaitlin Mara ("New Rwanda IP Policy Taps Information For Development") on the ever-excellent Intellectual Property Watch weblog. This article reviews Rwanda's new IP policy (see this 29-page document from the Ministry of Trade and Industry here) and strikes an encouragingly upbeat note.

Flagitis

Flagitis is condition that you will almost certainly be exposed to if you are visiting South Africa over the next two months. You are most likely to catch the bug at airports, street corners, shops and in pubs. Most businesses are already affected and wing mirrors are normally a tell tale sign of condition-carrying vehicles. It is highly contagious but is it lawful? With the help of research by Janine Thomas, Afro Leo looks at the legislation in South Africa surrounding the use of national flags:

The Heraldry Act:

The South African flag is registered as a “heraldic representation” with

the Bureau of Heraldry, which is established in terms of the Heraldry Act 18 of 1962 (the Heraldry Act). This Act expressly prohibits the misuse of heraldic representations. A heraldic representation includes the national flag, coat of arms, or a badge (which is further defined as including any symbolic representation, used by an association, institution or as a mark of recognition or distinguishing token). Misuse, very broadly, is defined to include, without permission of the State Herald, using for gain, selling, or trading in the heraldic representation.

The Merchandise Marks Act provides that:

Section 14(1A):

‘No person may use a mark or trade mark which consists of or contains the national flag of a convention country, or an

imitation from a heraldic point of view, without authorisation of the competent authority of the convention country or without being in possession of an authorization in writing signed by or on behalf of the Minister’

It is interesting that this section covers both use of a flag as a "mark" or as a "trade mark". The term "mark" is very broadly defined in the Trade Marks Act.

Section 14 (1B):

“No person may use a mark or trade mark which consists of or contains the armorial bearings or any other state emblem, of the Republic or a convention country, or an imitation from a heraldic point of view, without authorization of the competent authority of the Republic or convention country, as the case may be”

This section deals with use of state emblems and specifically makes reference to use of state emblems of the Republic of South Africa. While the Merchandise Marks Act does not define “state emblems”, the Department of Trade and Industry, in terms of its policy on the Use of State Emblems issued in January 2004, provides that “state emblems include national flags”. The policy states that the Minister must approve the use of state emblems.

Section 15(1):

The Minister may, after such investigation as he or she may think fit, by notice in the Gazette, prohibit either absolutely or conditionally the use of-

(a) the National Flag, or any former National Flag, of the Republic; or

(b) any mark, word, letter or figure or any arrangement or combination

thereof, in connection with any trade, business, profession, occupation or event, or in connection with a trade mark, mark or trade description applied to goods.

As far as Afro Leo is aware, to date, no prohibition has been placed on the use of the national flag in terms of this section.

Government Gazette Notice no.22356 of June 2001 regulates the manner in which the flag is to be used and states for example that must not be used as a tablecloth or to start or finish a race or competition. This notice requires in essence that the flag must be treated with dignity and respect.

The Trade Marks Act:

Section 10(7) (a) of the Trade Marks Act of 1993 prohibits the registration of a mark:

“which consists of or contains the national flag of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of a the competent authority of the Republic or convention country, as the case may be, unless it appears to the Registrar that the use of the flag in the manner proposed is permitted without such authorization”

A “competent authority” is not defined in the Act.

As intimated above flags are in widespread commercial use in all sorts of ways. It is very unlikely that authority (where required) has been granted and, to be fair, it is not even clear who to ask. Moreover, to the best of Afro Leo's knowledge, there has never been a prosecution of anyone for using (or even misusing) a national flag. Afro Leo concludes therefore that Flagitis is contagious, often unlawful but too enjoyable to stop.

Tiger and Johnson - Back in the Ring

In a dispute between Johnson & Johnson and Tiger Brands over the latter’s claim “Purity. The Baby Experts” (previously reported on here), it was ruled by the Final Appeal Committee (FAC) that the claim was to be removed. In May, a breach allegation was raised by Johnson & Johnson and upheld regarding point of sale material and a television commercial, but no sanctions were imposed.

A few days later a further breach allegation was raised by Johnson & Johnson in light of Tiger’s extensive use of the offending claim at the Baby Expo at the Coca Cola Dome in Johannesburg on products, promotional hampers, hand-outs and the stand itself. It was further submitted that the claim was included in three print advertisements in a June 2010 issue of a baby magazine. Johnson & Johnson called for “the harshest sanctions” to be imposed on Tiger, including publishing an apology with a summarised version of the FAC ruling.

In response, Tiger requested that the Directorate appreciate the magnitude of the task of complying with the FAC ruling. It stated that it was fast tracking all changes and pulling out all the stops to ensure compliance. It pointed out that the offending claim was used on more than 40 products in its range, in addition to all the advertising material.

The Directorate dismissed the complaint regarding product packaging as Tiger had until 24 June 2010 (three months from the 24 March 2010 ruling) to comply. Despite the packaging displayed at the expo being new, it was still displayed prior to the deadline and could therefore not be in breach of the FAC ruling. The complaint regarding the actual stand at the expo and promotional hampers and hand-outs that were distributed was, however, upheld. Tiger attempted to raise the defence that it had outsourced the expo work to a promotional company and the use of the claim was an inadvertent oversight, but this did not impress the Directorate, which noted that since Tiger was now able to correct the error by placing a sticker over the offending claims, there was no reason for it not to have been able to do so prior to the expo.

The breach allegation was also upheld regarding the magazine advertisements. The print deadline for the magazine fell shortly after the date of the ruling and Tiger submitted that it did not have sufficient time to determine what amendments it should make to the advertisements. The Directorate rejected this defence as it felt that compliance with the FAC ruling would have involved simply withdrawing the advertisements, rather than replacing them.

In considering what sanctions to impose, the Directorate noted the earlier breach and that it had not resulted in sanctions but rather merely a stern warning. In light of this being the second breach and that Tiger failed to withdraw the offending advertising simply because it could not replace it, the Directorate felt that sanctions were appropriate. It directed Tiger to publish a summarised version of the ruling (to be written by the Directorate) in appropriate media, at their own cost.

Rwanda's new IP law -- in full!

Many thanks to my dear colleague on the Afro-IP weblog Paul Asiimwe for providing us all with this pdf copy of Rwanda's new state-of-the-art intellectual property law. Don't be put off by the fact that it's 367 pages long -- it's not because of the detail but because the text appears in the country's three national languages.

Kulula, ambushed by FIFA, gets last laugh?

A longer version of this item appears on this morning's IPKat weblog, with acknowledgements to Kat reader Dan Guildford.

In "Scramble for sponsorship in 2010", popular football magazine When Saturday Comes (otherwise known as WSC) gives an account of the sad life and times of FIFA in its attempts to ensure that only official sponsors may advertise and promote their brands at the forthcoming soccer World Cup.

Their treatment of Kulula Airlines seems very harsh. Techdirt carries illustrations of Kulula's advertisement (right), to which FIFA took exception, as well as the now presumably acceptable form (left).

Afro Leo suspects that his readers may have something to say about this.

INTA 2010: Africa Panel Report

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.

Trademark Highlights

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.

Top Cases

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)

A&D Spitz (Pty) Limited v. Turbek Trading CC – announcement of Appeal decision, lower court decision discussion

Oilwell (Pty) Limited v. Protec International and Others – on trademark assignments

Legislation

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.

Legislation

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.

Top Cases

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

Rwanda

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.

ARIPO

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.

Banjul Background

The Banjul Protocol was developed in 1997. The member countries are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Uganda, Zimbabwe and Tanzania minus Zanzibar.

Benefits

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.

Pitfalls

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.

OAPI

Christian gave some background on OAPI and covered some new national regulations relating to OAPI.

Background

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.

Regulations

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.