Thursday, 29 July 2010

The Tour De France - an inspiring anti-climax

This post is about a short trip to Paris and a talk that Afro Leo (amongst others) gave to marketing professionals yesterday in Sandton arranged by Knowledge Resources and filmed for CNBC Africa's Media&Money show presented by Jacqui Nel.

Outsourcing to Africa

The Paris trip makes the blog because it involves an instruction by a large company based in France that is rebranding its business in over 80 countries and has a growing patent portfolio to protect its technologies. That in itself is not unique nor is the that fact that the company is using legal resource in another country to help draft the patent specifications, create the drawings and manage the re-branding project. What is both exciting and different is that the outsourced country is based in Africa as opposed to more common outsourcing destinations such as India, the Philippines and New Zealand. It is also further evidence that the nature of the IP legal function is changing too.

The interplay between Marketing and Trade Mark Attorneys

Of course, being at the final stage of the Tour de France on the Avenue des Champs-Élysées is quite special; Paris in general is intoxicatingly beautiful and the cafe culture thoroughly absorbing. Watching those race the TDF live though, is a dramatic anti-climax. In a blink "the amazing men on their cycling machines" that have raced over 3500km in under a month are gone. Lost on the casual viewer is the teamwork, the inter and intra-team dynamics, the personality of the peloton, the tactical nuances and the commentary of Phil Ligget to explain it all. In many ways, the work of a marketing professional and trade mark attorney can be underestimated and overlooked in the same way.

For example, when a casual observer views a 10 second commercial about a product or service the immense amount of time and skill required to achieve the exact message and its ability to win consumers in a highly competitive space is really appreciated only by others in the know or by others who can explain it. Likewise, the trade mark attorney's work (which can take months) ensuring that the advert is lawful and that the right measures are in place to ensure that the effort of the canny marketer cannot be used or stolen by the competition, suffers a similar fate.

Pic right: wish you were here.. just for a blink

We can take the TDF analogy further too. If one considers the peloton as the competitive space in which a company operates - filled with other marketing teams all trying to launch their brands as breakaways to distinguish themselves from each other - then it would be foolhardy for any marketing professional to do so without help. Indeed just as the peloton sucks in and overtakes the considerable efforts of a lone breakaway 500m before the finish line then so will the competition seek to deal with a new brand attempting to win market share. The successful breakaways work as teams. The encouragement to marketing professionals yesterday was to include the trade mark attorney in that team and make every effort to understand how that attorney can help achieve ultimate success of the breakaway brand. In turn the trade mark attorney needs to understand that what is trying to be achieved and put on a "can-do" hat to assist with that success. There is always a "yes". And that was the nub of yesterday's discussion.

Monday, 26 July 2010

ARIPO's voice and a counterfeit reminder

Last week Afro Leo got in touch with ARIPO to find out more about its services and had the wonderful opportunity of meeting Charles Satumba, the Assistant Librarian/Documentation Officer and one of the editors of the ARIPO newsletter. Charles was kind enough to scan and send sample newsletters for 2010 and I have pleasure in linking to them here and here. Packed with content about African IP and developments at ARIPO this wonderful source of news can be subscribed to by emailing mail@aripo.org. Like AFRO-IP, I am sure that they would welcome contributions too.

A quick scan of recent news reveals that another significant counterfeit seizure has taken place in Durban involving goods valued at R40 million (around $5 million) - the IOL report here. Meanwhile, Kenya's Daily Nation, runs another reminder of the significant problem of counterfeiting in the the printing industry. Counterfeiters are packing fake products in genuine packaging - a practice that is apparently rampant in African countries Kenya, South Africa, Nigeria and Egypt. Kenya's new anti-counterfeit legislation cannot be implemented fast enough.

Thursday, 22 July 2010

WHO - a response

The efficient John Syekei, has punched out an update on the anti-counterfeiting decision in Kenya for us, and a response to the post immediately below. According to the update, John explains that the WHO template legislation is flawed and states that the Constitutional Court decision over the anti-counterfeiting clause will be a landmark decision.

"The question that begs is whether the Constitutional Court shall in its interpretation of the [Anti-Counterfeit] law, redraft the AC law , re-look at the existing Patent laws in Kenya and issue a judicial comment on them or shall it send it back to Parliament? This decision will definitely redefine the landscape as we know it as relates to Patent protection of branded medicines, Trademark rights and Counterfeit practices." ...

Full text:

"I believe, WHO has admitted its template legislation is flawed.

As an update on the Kenya case ( Kenya being one of the few African countries that has effected a law to legislate against counterfeits) :

Kenya’s Constitutional Court is due to set a date today for a hearing on the inter partes substantive application against the Anti-Counterfeit Act of 2008, of which clauses pertaining to medicines have been suspended pending the court’s decision on whether the law violates the right to health and life. As I had reported earlier, in April 2010, Justice Roselyn Wendoh appreciated that the petitioners would suffer irreparable damage if their plight were not addressed. In her ruling, Justice Wendoh issued a conservatory order on the application of the law to medicines until a verdict is delivered in the case.

Parties enjoined in the case were supposed to file written submissions for the main constitutional application before Jul 22.

Today, the Constitutional Court will confirm that all parties including the Interested parties , have filed their written submissions and then set a date when it will hear each party highlight in brief a summary of their written submissions and their prayers. The Court will ask questions on that day as well.

In my view, this is public interest litigation that touches on the fundamental right to life and the commercial right of patent brand owners and generic pharma brand owners to have fair treatment in Kenya. What stand will the Court take. It is clear , as has been suggested by WHO, that poor legislative drafting has led to this problem. The question that begs is whether the Constitutional Court shall in its interpretation of the law, redraft the AC law , re-look at the existing Patent laws in Kenya and issue a judicial comment on them or shall it send it back to Parliament? This decision will definitely redefine the landscape as we know it as relates to Patent protection of branded medicines, Trademark rights and Counterfeit practices.

My feeling is that, with proper education at the enforcement level- the Inspectors appointed under the debatable AC act who include Customs officers, these problem would not be the mountain it seems to be. The devil is in the details. It is important to Kenyans that they have accessible drugs especially for HIV carriers , looking at the dynamics of poverty in Kenya and the fact that many of those HIV carriers form a large portion of the people who earn less than 1 US Dollar a day.

It is argued that the law contravenes sections of the Industrial Property Act of 2001, including section 58 (2) providing for parallel importation and section 80 on government use. Section 58 (2) waives patent rights pertaining to some products on the market in Kenya or in any other country or imported into Kenya and essentially facilitates, accessibility to affordable medicines by all," With the Industrial Property Act of 2001, Kenya used the flexibilities afforded to least developed countries in the Doha Declaration of 2001 with regards the Trade-Related Aspects of Intellectual Property (TRIPs) agreement.

Health rights activists argue that developed countries ( read big pharmaceutical companies who form a majority of the patent owners) are trying to force TRIPs-plus agendas (intellectual property rights protection that goes beyond TRIPs) regarding medicines on developing countries in favour of IP rights holders.

Activists argue that the Anti-Counterfeit Act of 2008 fails to acknowledge and to specifically exempt generic medicines from the definition of counterfeits. Moreover, TRIPs identifies intellectual property (IP) rights as "territorial rights". IP on medicines would only be protected in the territory where it is registered. However, the Anti-Counterfeit Act of 2008 upholds IP rights registered in countries outside Kenya.

I believe, having looked at the trends the Constitutional Court has been taking lately, that the decision will most likely be in favour of the public interest groups rather than a proper analysis of the law as drafted."

Wednesday, 21 July 2010

The WHO - an admission?

The World Health Organisation (WHO) agrees that the anti-counterfeit legislation that has been adopted or that is under consideration in East Africa threatens the accessibility of affordable generic medicines according to this report published by IPS Inter Press Sevice. The report follows the recent Kenyan case kindly reported by John Syekei here. Afro-IP generated some helpful comments from co-blogger Paul Asiimwe and others here, one of which was that the Kenyan definition of "counterfeiting" was almost identical to the WHO definition (WHO site -here). Afro Leo has not had the opportunity to compare the texts and would welcome views. Does the WHO admit that its template legislation is flawed?

Monday, 19 July 2010

eIFL Releases Report on Open Content

open_book_01Earlier this month, eIFL released a “Report on the implementation of open content licenses in developing and transition countries.”  The report looks at open access journals and repositories across a number of countries.  As would be expected with words like “developing” and “transition” in the title, the report includes information and case studies from a number of African countries.

Highlights of African countries include open journal publications by Egypt’s Hindawi Publishing Corporation (p.9), Nigeria’s Academic Journals and Science World Journal (p. 10), and South Africa’s Open Journals Publishing (p. 11).  All four of these publishers release some of their journals and articles under the Creative Commons Attribution (CC-BY) license, which means the works are open for anyone to use anyway they like, as long as the original author is given credit for the original work.

The report also looked at open repositories, including Botswana’s Innovation and Scholarship Archive at the University of Botswana (UBRISA), which suggests that works being contributed to the repository be openly licensed (p. 13), and African Higher Education Research Online (AHERO) based out of the University of the Western Cape in South Africa (p.14).

Perhaps the most interesting Africa-related tidbit is a section about the University of Pretoria on page 16:

Recommendations to the researchers to actively manage the copyright of their publications, inter alia with addenda to their contracts or using Creative Commons licenses are one of the
approaches to change scholarship practice at the University of Pretoria towards becoming an Open Scholarship institution.

The full, 16-page report is available here [pdf] under a CC-BY license.  (Info page here.)

Cape Verde gets new IP Office

The Instituto da Propriedade Intelectual de Cabo Verde (the Cape Verde Intellectual Property Office) has been legislated into existence by Cape Verde Government Resolution No. 25/2010 of 24 May 2010.

Under this law, which came into effect from 3 June 2010, the IP services provided by the Direcção Geral da Indústria e Comércio, together with those included in the Sistema de Registos (Registration system) for Copyright and Neighbouring Rights were transferred to the new office. If you happen to find yourself in Cape Verde, the office is located in the capital, Praia. Its main goal is the promotion, defence and protection of intellectual property both at home and abroad.

Source: email circular from Raul César Ferreira (Herd.), Lda., Lisbon, Portugal.

Can Cipro do a Louis?

South Africa's embattled Companies and Intellectual Property Registration Office (Cipro) confirmed on Wednesday that, as from July 14, 2010, certified copies of identity documents would be required for all future applications and transactions. Creamer Media carries the story of how Cipro is trying to tackle corruption here.

Meanwhile, users of Cipro's services ranked it stone last in a recent performance study undertaken by John Olsen and Nicholas Bolter of EAPD and published in Managing Intellectual Property here. The blog has published much of the criticism of Cipro's services over the last few years and also visited Cipro's offices for more information. There is a genuine attempt to improve performance at the Office and Afro Leo knows how disappointed some of the staff will be on learning of this study. One just gets the feeling that they need much more support and resource, and are hampered by a government that does not appear to truly recognise the crucial importance of the Office as a gateway to business in RSA and its role in generating a knowledge based economy.

On a more celebratory note, with unassuming African Louis Oosthuizen winning the Open Championship on Madiba's birthday yesterday, one wonders if the number 57 and "Shrek", which seem to be distinctive features of his persona, will be exploited by his management company taking advantage of his new found fame in the coming months. If they do then Cipro will be asked to look after his rights in RSA.

Tuesday, 13 July 2010

Is Zambia first-to-file only?

The Zambian Trade Mark Registry does not recognise unregistered rights according to the decision in Olivine Industries Pty Ltd v D H Brothers Pty Ltd over a dispute to rights in the sign DAILY for soaps. The Registry failed to uphold the opposition despite finding that the Opponent had achieved a reputation in mark DAILY and that the Applicant's mark was confusingly similar (see page 12) to the Opponent's earlier right:

"..a proprietor or an unregistered trademark lacks the basis upon which to prevent registration of a trade mark" (at page 14)

The decision seems at odds with the common law that protects passing off in Zambia. For example, the early user could in theory prevail in a passing off action to prevent the use of the later mark but fail to prevent a registration of the same mark on the same grounds.

In any event, it seems advisable for trade mark owners to register their marks in Zambia.

I attempted to contact the Registrar in Zambia but could only reach a persistent voice mail.

In the jungle..

Given the recent lack of activity on this blog one might be mistaken for believing that Leos hibernate during southern African winters. The truth is that they don't (see here) although they are known to become restful after periods of intense activity. This Leo's excuse is partly due to the WC 2010 vuvuzela vibe that swept through South Africa leaving normal life in its wake, and partly because this post lead to a busy instruction involving the so-called "Bavaria Babes". Who said trade mark law was not fun? This short note is to let you know that life is back to relative normality and more regular postings will commence shortly.

For those interested in the whereabouts of Henry (see here), I am happy to say that his worrisome mum wrote in to say that he returned home safely yesterday. She said that she was grateful for the efforts of the SS in keeping him safe during his WC trip. Henry later clarified that SS was tweetspeak for Soccer Sity...

Wednesday, 7 July 2010

Slipping through the net: SA loses to fakers

How well has the South African economy done in light of the past month's football frenzy? Not as well as it might, according to "Counterfeit World Cup goods dent South African economy", published on CPA Global's New Legal Review (here). Citing a report from the INTA, the article reports that the influx of fake-branded clothing into South Africa has distracted consumers from purchasing indigenous goods, since counterfeits have provided them with a cheaper means of keeping up with fans wearing licensed products.

Figures from the South African Clothing and Textile Workers Union suggest that 14,400 jobs have been lost in the country’s textile sector over the past year as a result of World Cup fakes. On a more positive note, in the past six months South African customs authorities have impounded fake World Cup goods worth R66m, (US$8m) -- though there are of course no figures for the fakes that slip through the net.

Tuesday, 6 July 2010

Interim injunctive relief in Tanzania

There's an article coming out soon in the Journal of Intellectual Property Law and Practice (JIPLP), 'Trade Marks in Tanzania: the prima facie case and interim relief’. The author, Alex B. Makulilo, is an advocate and Assistant Lecturer of Law at the Open University of Tanzania. The abstract is as follows:
Legal context: This article analyses case law developed by the High Court of Tanzania pursuant to temporary injunction in trade mark infringement disputes. However analysis of this case law is limited to the principle of ‘prima facie case’ as this appears to be the most difficult to apply in the context of trade mark infringement disputes.
Key points: This difficulty has rendered most applications for temporary injunction to be refused unnecessarily making this remedy virtually unavailable. The Court's reluctance to grant a temporary injunction has always been justified on the ground that it is difficult to determine temporary injunctions in trade mark infringement disputes without considering the merits of the main suit.

Practical significance: Although such justification has frequently been stressed by judges, little guidance has been provided by the Court as to how a plaintiff may establish ‘prima facie case’ in applications for temporary injunction in trade mark infringement disputes. In this article the author argues that since proof of trade mark infringement is established on the basis of the ‘likelihood of confusion’ of identical or similar trade marks, then ‘prima facie case’ in temporary injunction in trade mark infringement disputes would have been established when the Court is satisfied that contested trade marks are identical or similar.
It is possible to access this article in advance of publication on payment of a fee to the publisher by clicking here and scrolling down to 'purchase short term access'. Once the issue in which this article appears has been published, I hope to be able to persuade the publishers to make it available free of charge to readers of this weblog.

Friday, 2 July 2010

Modern look for Libya's trade mark law

The INTA Bulletin, vol. 65, no. 12 (1 July 2010) carries an article, excitedly entitled "LIBYA: A New Law Is Born!", which summarises the position in Libya following the recent introduction of its new trade mark law -- which still awaits the passage of implementing regulations before it can take effect. Replacing Law No. 40 of 1956, the new law
• defines “trade mark” broadly, so as to include trade names, sound marks and colour marks;
• provides for registration of collective and certification marks;
• permits priority claims based on earlier foreign applications;.
• subjects marks to cancellation by any interested party within five years from registration (or without time limit in the case of marks registered in bad faith);
• grants an initial protection period of ten years, infinitely renewable;
• recognizes and protects famous trade marks even for marks not registered there;
• provides for both civil and criminal actions against any infringing party, with penalties of up to two years’ imprisonment and payment of fines of up to US $7,500.