Monday, 31 January 2011

Egypt trade mark office upholds ITIMAT opposition

While the world waits anxiously to hear the latest news from Egypt, Afro Leo can at least report some solid IP news from that land.  The Egyptian Trade Mark Office (ETMO) has issued a decision concerning the ITIMAT trade mark. Sami Labib Rizk (Tower SMC Company), a local Egyptian business filed an application to register the word ITIMAT as a trade mark in Class 11.  An opposition was filed by a Turkish company Itamat Makina Sanayi ve Ticaret Anonim Sirketi, which owned the same mark in the same class.

The ETMO, relying on the prior use and registration of the opponent, decided to allow the opposition since the registration of the word ITIMAT by the local company would confusion the public and lead to unfair competition  -- quite apart from the fact that the word was part of the opponent's name.

Source: NJQ and Associates Newsletter, January 2011

Wednesday, 26 January 2011

Mali goes to Singapore when its friends go too ...

The World Intellectual Property Organization (WIPO) has issued a corrective statement regarding the Republic of Mali, with regard to its instrument of ratification of the Singapore Treaty on the Law of Trademarks.  Since Mali is a Member State of the African Intellectual Property Organization (OAPI), the Singapore Treaty will enter into force with respect Mali, three months after the date on which OAPI deposits its instrument of accession to that Treaty.

When, wonders Afro Leo, will that be?

Current state of Singapore commitment here.

Tuesday, 25 January 2011

Investigation update: It's War

“This wasn’t a hijacking. This wasn’t theft. This wasn’t robbery. The guys who did this were carrying out a hit. I don’t think there is any doubt about it,"...


"Police are hot on the trail of the businessmen who ordered the hit on specialist policeman Warrant Officer Johan Nortje this week, and disclosed yesterday that the hero cop had made a R100-million counterfeit bust in Durban harbour three weeks ago....."


"Mandlenkosi Chiliza, 21, and Nkosinathi Ntuli, 27, were arrested during a raid on a home in Umlazi’s T-section at about 3am on Friday, and Bheki Khuzwayo, 44, was arrested in a separate raid in Maphumulo on Friday afternoon. During a raid in Umlazi, Philani Dlamini, 33, was shot and killed after he allegedly opened fire on officers as they went to arrest him - he is the man believed to have pulled the trigger and kille d Nortje. The other three will appear in the Durban Magistrate’s Court tomorrow. During the arrest, a Toyota Condor, believed to have been the getaway vehicle, and a 9mm pistol were recovered. Police spokesman Lieutenant Colonel Vincent Mdunge said it was “possible” that this was the gun used to kill Nortje, but that they were awaiting ballistic results." IOL news site


Afro Leo has emailed Interpol, WCO and expects to speak with KwaZulu-Natal police commissioner Mamunye Ngobeni today for comment. Although it is  welcome that the police are taking this  very seriously, the real instigators - those that ordered the alleged hit - are still at large.


In the meantime PLEASE VOTE - (see IPKAT comment here). Thanks to those that have and who have written in. Not all have been published.

Saturday, 22 January 2011

Nollywood Takes on New York (and the rest of the US)

Those of us who follow intellectual property on the continent are no strangers to stories from Nollywood about filmmakers’ efforts to fight the rampant piracy of their films.  But here’s a new twist, brought to us by a report from PIIPA, Nollywood has taken it’s battle across the ocean to the United States of America.

Manning the US front for Nollywood are the African Artists Collaborative, a non-profit that assists African artists with US copyright registration and legal help, and the Filmmakers Association of Nigeria, USA (FAN USA), which founded the African Artists Collaborative

The report expresses the the need for these organizations in the recognition that “for the first time ever, Africans have been able to create a commercial product which has been accepted by large niche markets in the United States, the Caribbean and Europe.”  Afro-Leo supposes that these large niches are the large diaspora populations as she has often, and only, seen Nollywood films available in hair shops and hair braiding salons, the most visible business establishments of the African Diaspora population.

The Positives

So far, it seems that the African Artists Collaborative and FAN USA have been able to assist quite a number of African artists through copyright registrations, DMCA take-downs, information about civil suits, and pushes for criminal enforcement.

Copyright Registration

Nigeria and the United States are both members of the standard copyright treaties.  Thus, all films are copyrighted in both countries without any formal registration processes.  However, registration in the US offers some important benefits, including a presumption of a valid copyright and the ability to receive higher damages at trial. 

PIIPA helps match African artists with pro bono lawyers who assist the artists with registration of their works.  Over 100 films have been registered.  An interesting adaptation of something familiar to the trademark world, a publication listing all African music and films registered in the US is released periodically in order to put people on notice of the works’ copyrights.  And following in the footsteps of the Nigerian Copyright Commission, films registered in the US receive a hologram sticker notifying buyers of the work’s copyright.

DMCA Takedowns

The DMCA, Digital Millennium Copyright Act, refers to provisions in the US Copyright Act that allow copyright holders to stop infringements occurring online.  One important provision allows the copyright holder to work with third-party websites that host content to remove posted material that infringes the copyright holder’s work.  The copyright owner submits a notice to the website where the infringing material was found.  The website removes the content from the site, a take-down, and notifies the user who posted the content that the material was removed based on allegations of copyright infringement.  This process is, perhaps not very creatively, called “notice and takedown.”  From here, it gets a bit more complicated and we’ll leave that for another blog.  Another important provision allows copyright holders to request information from ISPs in order to identify the people or entities behind infringing websites.  Identifying the infringer is an important step as it lets the copyright holder know who to sue.

There are a number of websites online where one can easily find Nollywood films for streaming and downloading.  A good number of these sites are providing the films without the permission of the copyright owner.  African Artists Collaborative is helping artists obtain information from ISPs and remove infringing content from the internet.   Infringing content has been removed from over 50 sites and “AAC has identified at least 14 habitual offenders that we hope can be prosecuted in the near future.”  Afro-Leo would like to note here that this sentence is a little misguided as posting infringing material online is a usually a civil liability issue and only a crime under certain circumstances.  (See Sec. 504 (false domain name registration), 506 (for profit distribution with minimum value requirement) & 1201 (circumventing technical protection measures) of the US Copyright Act.)

Civil Suits

Most copyright infringement in the US is a civil action, a conflict between the copyright holder and the infringer. In order to help with civil infringement suits, African Artists Collaborative assists artists with the sending of cease and desist letters to infringers.  Cease and desist letters are the first step in the road to a civil copyright infringement law suit.  Though the report does not say so, Afro-Leo guess that PIIPA also helps match pro-bono attorneys to artists to assist with these actions.  FAN USA also hopes to match artists with firms to handle actual litigation against these infringers.  As most US states allow contingency fees, this is a chance for attorneys to assist without that pro bono tag.

Criminal Enforcement

One of the major activities highlighted by the report is a raid of stores selling infringing Nollywood movies in Kings County, New York City, New York.  Afro-Leo was very surprised to read about these raids and about the Kings County District Attorney’s involvement in conducting the raids.  She hardly ever hears of such things happening in the US and other than one case in her copyright law textbook (about secondary liability) cannot think of a specific instance of such occurring in the US.  Either store raids for infringing goods are very infrequent, or they aren’t the national news story in the US that they are in Nigeria. 

Although, Afro-Leo’s understanding is that District Attorneys’ offices usually focus on prosecution after the police have made arrests, not on enforcing the law in the streets, the King’s County DA’s office seems to be more active in enforcement (about 2/3s way down the page) and crime prevention.  It even has community contact centers where people can report instances of copyright infringement and other suspect crimes.

FAN USA is very proud of its work in helping conduct this raid.  The website showcases a number of pictures from the press conference afterwards.  If it weren’t for the muzungu District Attorney in the center of the photos, Afro-Leo would swear they were taken in Nigeria.  Congratulations to African Artists Collaborative and FAN USA for producing such a successful raid.

Afro-Leo’s Concern: Mis-information

While the work being done by PIIPA, FAN USA and the African Artists Collaborative is proving to be very beneficial to African artists, the report released by PIIPA and the FAN USA website raise some concerns for Afro-Leo.  Despite the promotion of IP education for African artists, there is still a lot of misinformation presented.

The FAN USA website instructs artists to register their copyrights with the US Patent & Trademark Office.  Afro-Leo can guarantee that this will not work as the US Patent & Trademark Office (USPTO) handles only, you guessed it, patents and trademarks.  Copyright registrations are handled by, you probably guessed it again, the US Copyright Office.

Glosses over the distinction between crimes and civil matters are common in both the report and materials provided on the FAN USA website.  Unfortunately, this is not at all unique in the US or Nigeria.  Afro-Leo also wishes the report would make a clearer distinction between having a copyright and registering a copyright, but again, this is another often confused concept.

IMPORTANT NOTE:  These misunderstandings are most likely not the responsibility of PIIPA.  Although PIIPA released the report, it appears to have been written by a FAN USA board member (though this is not entirely clear from the report itself).  From Afro-Leo’s experience with PIIPA, it is a very professional organization with knowledgeable and experienced attorneys.

Accessing the Full Report

The full 4-page report is available in pdf form under a CC BY-NC-ND license, which means that you can download, print, email, share and distribute however you see fit to all your friends as long as you don’t do so in a way that is primarily designed to give you a commercial benefit (ie don’t sell it), and you don’t make any changes to the document.

Friday, 21 January 2011

Petition for Urgent Investigation into Custom Official's Murder

On the morn of murdered Warrant Officer Johan Nortje’s funeral today supporters of the Afro-IP community are calling for an urgent special investigation into Inspector Nortje’s murder by the Police Organised Crime Unit, with the involvement of Interpol and the World Customs Organisation. (see earlier posts here and here)

Supporters of this petition please use the voting poll alongside and/or comment in the section below.
----------------------------------------

“This is really terrible and I think this blog should petition the IP Community to support an urgent special investigation with all 
assistance from Interpol and WCO. The effects are dire for future
 enforcement as it will drive good cops and customs officials away from 
doing their jobs.” Marilyn Krige (MKIPWORKS)
---------------------------------------------
“If, as suspected, this link is established his death should dispel the myth that counterfeiting is a victimless crime. We join the call for an urgent special investigation.” Bowman Gilfillan's Brand Enforcement and Anti-Counterfeiting Group (see full statement below in the testimonies)
---------------------------------------------
“This incident has created concerns, amongst others, that reliable and dependable officers (i.e. SAPS, Customs, DTI and CCU) will be derailed from doing their work without fear. For this and, other reasons, the concerns should be addressed to avoid future border enforcement from being severely compromised. We believe that these circumstances call for an urgent special investigation into Inspector Nortje’s murder by the Police Organised Crime Unit, with the involvement of Interpol and the World Customs Organisation.” Adams & Adams' Anti-Counterfeiting Team (see full statement below in the testimonies)
--------------------------------------------
DM Kisch anti-counterfeiting team is shocked and deeply saddened by the untimely death of Inspector Johan Nortje, who was so dedicated to the fight against anti-counterfeiting. We have worked together with Johan Nortje for many years and his enthusiasm, dedication, professionalism and pride to his work cannot in anyway be faulted.  He will be sorely missed and the team wishes to extend our heartfelt condolences to his family friends and work colleagues.  DM Kisch Inc supports an urgent special investigation into Inspector Nortje’s murder”
--------------------------------------------
The Managing Director of "Cabinet ISIS” and staff was deeply shocked to learn of the death of Officer Jacobus Nortje. ...., we support the calls for an urgent investigation (with the assistance of the WCO and Interpol) into the death of Officer Nortje
-------------------------------------------
We support the calls for a thorough investigation into Mr Nortje's death, and in particular into the allegations that his death came as a direct result of his role in tackling anti-counterfeiting activities in South Africa.  Enforcement officers must be free to do their work without fear of death, injury or intimidation. The IBML Trade Marks and Anti-Counterfeiting Team - see full statement below
--------------------------------------------
The incident has lead to notes of condolence including a post on leading IP blog IPKAT and by law firms mentioned above: 

"Please spare a thought for the family and friends of Johan Nortje, a senior South African customs investigator who, having enjoyed considerable success in the fight against the tidal wave of counterfeits, has been murdered amid fears that the gangs who smuggle unlawful goods into the country are targeting enforcement officers -- or at least the ones who are (i) effective and (ii) don't accept bribes. Next time anyone starts telling you that IP infringement is just an economic crime and doesn't really hurt anyone, you can remind them that the name of Johan Nortje has been added to the list of human fatalities, along with those unnamed souls who are poisoned by fake medications or malnourished through worthless infant formula or maimed through accidents resulting from the malfunction of counterfeit mechanical parts." (IPKAT)
------------------------------------------



Testimony to the work of Johan Nortje from law firms:

“Adams & Adams’ Anti-Counterfeiting Team is deeply saddened by the abrupt passing away of Inspector Johan Nortje. Our concern is exacerbated by the speculations that he was murdered for being an excellent and dedicated Police official. 
 

We worked and interacted with Inspector Nortje for many years in relation to anti-counterfeiting matters and we can attest to the fact that he was dedicated and committed to the eradication of counterfeit and other illicit goods being imported into the Republic of South Africa and fought the proliferation of the scourge of these goods in this country. He demonstrated exceptional investigative qualities and outstanding moral standards. His passing is an enormous loss, not only to his family, but to the South African government enforcement community at large.

Adams & Adams is grateful for his invaluable contribution, which led to numerous successful prosecutions of offenders in the past.

This incident has created concerns, amongst others, that reliable and dependable officers (i.e. SAPS, Customs, DTI and CCU) will be derailed from doing their work without fear. For this and, other reasons, the concerns should be addressed to avoid future border enforcement from being severely compromised.

We believe that these circumstances call for an urgent special investigation into Inspector Nortje’s murder by the Police Organised Crime Unit, with the involvement of Interpol and the World Customs Organisation.” 
-------------------------------------------
"Bowman Gilfillan's Anti-Counterfeiting Group was shocked and deeply saddened to learn of the death of Warrant Officer Jacobus Nortje earlier this week. The passion and enthusiasm with which he applied himself, was a daily testament to the personal pride he took in doing a very difficult job, well.  He was a wonderful ally to the anti-counterfeiting community, always willing to assist - often before his help had even been requested. His professionalism and integrity will be sorely missed. We support the calls for an urgent investigation (with the assistance of the WCO and Interpol) into the death of W/O Nortje, especially since it has been linked to his vital role in the fight against counterfeit goods entering South Africa through Durban harbour. If, as suspected, this link is established his death should dispel the myth that counterfeiting is a victimless crime. 


Our heartfelt condolences go out to his family and law enforcement colleagues. 


We join the call for an urgent investigation."
---------------------------------------------





PUMA´s International Brand Protection Team learnt with shock about the tragic passing away of Warrant Officer J.J Nortje.

In the short time that we have known him, he distinguished himself as a dedicated member of the South African Police Service (SAPS).  In him, we had hope that the battle against Counterfeiting will eventually be won.

Mr Nortje was forever willing to assist and like a true warrior, he was always in the forefront of the battle against Counterfeiting. His qualities are there to be copied by the new generation of officers in the South African Police Service.

On behalf of PUMA AG Rudolf Dassler Sport and PUMA South Africa we would like to convey our heartfelt condolences to his family, the South African Police Service and South Africa at large.

The South African Border Police has lost a true Servant and he would truly be missed. 

Sincerely yours,
Neil Narriman

____________________
Neil Narriman
Senior Brand Protection Manager
 - Legal Department -
----------------------------------------------------------
"The IBML Trade Marks and Anti-Counterfeiting Team were shocked and saddened to learn of the murder of South African customs officer Inspector Jacobus Nortje.  We support the calls for a thorough investigation into Mr Nortje's death, and in particular into the allegations that his death came as a direct result of his role in tackling anti-counterfeiting activities in South Africa.  Enforcement officers must be free to do their work without fear of death, injury or intimidation.  Our condolences go out to Mr Nortje's family, friends and colleagues at this sad time."

Cameron Olsen - Head of Legal IBML (ed - responsible for the worldwide management of brands including Dunlop, Slazenger, Lonsdale, Karrimor, Sports Direct and others)

Thursday, 20 January 2011

INTA's Response & we need your help again please

INTA have posted a response on this blog (see commentary on this post) and in the twittersphere that the Africa regional focus will be back on the agenda for 2012! This is great news. Thanks again to INTA for the quick, positive response and to those who wrote in expressing support. Of course there is no reason why a gathering of those interested in African IP still cannot take place this year - so watch this space.

Meanwhile another very urgent issue needs your attention please. Yesterday's very disturbing news has attracted much comment and, in particular, a call for our community to petition an urgent investigation into the death of "Norje" with the help of Interpol and WCO. If anyone can help us compile a post for that purpose eg you worked with him or wish to comment, please write to us at afroipmail@gmail.com. We hope to have a post ready tomorrow.

Wednesday, 19 January 2011

South African customs official murdered

Durban Harbour
 Marius Haman has informed Afro Leo of some very disturbing news which is confirmed in this report in the Citizen Newspaper. A senior and very effective customs officer responsible for policing the borders of South Africa and based in Durban - Johan Nortje - has been shot dead in what is described as a "hit". 

"Johan Nortje, who was shot and killed in his own driveway on Monday morning, had been charged with investigating the smuggling of counterfeit goods. He had also been involved in recent arrests and confiscations."

Afro-IP sends condolences to his family and friends.

Anyone with any doubts as to the seriousness of counterfeiting in South Africa, take note.

Tuesday, 18 January 2011

INTA's African Regional focus scrapped! A call to action


Since the birth of this blog three years ago, Afro-IP bloggers and readers have attended the African regional focus at the annual INTA conference (see here, here, here, here and here for reports). The session has gradually grown over the three years with last year's session attracting some healthy debate and relatively decent numbers. Although most INTA focus sessions receive paltry attendance in comparison to the large number of people who attend the conference, they are an opportunity to place a region or interest in the program and give the significant membership access to presentations which have benefit after the event. It is, without doubt, an opportunity to promote African IP on the biggest stage in our IP community and it is an indictment that it is no longer on the program (thanks to Aurelia who noticed it and contacted INTA).

Afro Leo does not know the reason why the African regional focus has been scrapped for 2011. The session always appeared to be hanging on a by a thread. It had been relegated to a Wednesday slot some time back which made it difficult to generate attendance, as most attendees are tired after five days of networking and thinking about their trip home.  But one cannot escape a strong feeling that we - the African IP community - really only have ourselves to blame. We know that there is no right to a slot in a program nor that a slot is a benevolent allocation, just because the region happens to be Africa.  The fact is that we have failed to show INTA that there are pressing, interesting and internationally important IP issues on the continent of Africa that demand discussion. The question should not be whether there ought to be an African session at INTA but on how long that session should be. We need to put INTA and its members back in that mindset.

Afro-IP intends ensuring that there IS a gathering of those interested in IP on the continent at INTA in 2011 even if the only topic of discussion is how to get African IP back onto the program. This is a call to anyone (including firms, institutes, organisations, publications) who wishes to help to arrange, sponsor or promote such a gathering to please get in touch. Afro-IP will be using all of its resources and contacts to help promote the rendezvous. We need a venue, some drinks and your attendance! Please contact us by email here or on Twitter - Afro-IP @afroip, Jeremy @IPKAT or Aurelia @ivoryblossom.

Monday, 17 January 2011

IP's place in the fight against the spread of malaria

the irritant
The danger caused by pirated drugs is no stranger to this blog. This Monday's post links to two posts commenting on the international initiative to stop the spread of a drug resistant strain of mosquitoes into Africa caused, in part, through the use of counterfeit drugs. Examiner.com's Robert Herriman explains the five point plan in his post here. The Bangkok Post's editorial describes the chilling concerns in a neat article here. Meanwhile, almost as if part of the plan, news of the constitution of the Board of the African Network for Drugs and Diagnostics Innovation (ANDI) last week is contained in this piece from Ghana Mail here - candidates from Kenya and South Africa are selected as co-chairs of the new Board.

Friday, 14 January 2011

Where in Africa is Afro Leo?

It's Friday and Afro Leo has decided to take a break from it all. What better than to witness the likely birth of Africa's 55th nation. Here are some clues:


  • the development follows 27 years of parental strife - and the loss of about 2 million lives - culminating in a peace agreement in 2005
  • Afro Leo could meet Jimmy Carter, an international observer at this week's referendum on the new nation
  • the potential new nation will have around 9 million people, mainly Christian
  • it evolves from a country that is likely to be an Islamic Republic governed by Shari'a law
  • new IP will or has already been created:
    • the new national anthem is a collaborative work of 49 poets
    • its distinctive brand is mooted to be names such as Nilotia, Nilotland and Cush
    • valuable knowhow is expected from companies such as Total who are now free from sanctions to prospect for oil in untapped concessions
  • a new national IP office could be a source of income for the country and job creation but will need to co-operate with the current office to ensure that current rights holders in the territory do not lose rights

Tuesday, 11 January 2011

Mozambique's copyright failing

Malangatana Ngwenya, the famous artist from Mozambique, sadly died last week in Portugal where he was assisting in a case involving counterfeits of his work. AllAfrica and the The New York Times carry the story and summary of his life and fame. The NYT describe him as:

"..a beloved national hero in Mozambique, was one of the few African artists to gain substantial worldwide recognition while staying in Africa — an international profile that was enhanced by an expansive personality. He had cosmopolitan tastes; his knowledge of global art was wide; and he was a born performer who composed music, sang songs in five languages and periodically broke into spontaneous dancing."


It is a travesty that as much as his country loved him they have not yet bothered to deposit their ratification of the Berne Convention at WIPO (see ACA2K link below) meaning that his famous works may not be protected internationally. Mozambique's best tribute to the life of the man will be to ensure that they make that deposit and join the other 164 countries taking advantage of the reciprocity offered by the BC. This type of scenario is frustrating when African countries so often play victim when their IP is "stolen" by the big bad West.

Click here for ACA2K assessment of the state of copyright in Mozambique and here for the [dismal] state of Mozambique's accession to international copyright agreements.

Friday, 7 January 2011

SLOW NEWS DAY: RELOCATION OF THE TRADEMARKS REGISTRY IN NIGERIA

The registration of a trademark in Nigeria, as anyone who has ever attempted can attest to, is a time-consuming, expensive and often frustrating process. The registry in Abuja is dark, lacking in a lot of the resources necessary to ensure a smooth working environment and most importantly, the files located at the registry are NOT COMPUTERIZED. One cannot be 100% positive about the system in place for the registration of marks but one thing can be sure, it is by no means a perfectly effective system.

In order to try to rectify the situation, two features have been implemented. The first is the increase in the fees charged for filing. The fees for filing a registration have effectively doubled and the fees for renewals, searches and pretty much everything else you can think of have increased significantly as well. This change was implemented by Senator Jubril Martins Kuye, the present Minister for Commerce and Industry in line with Section 45(1)(e) of the Trademarks Act which allows for the Minister to prescribe “the fees to be paid in respect of applications, registrations and other matters”. All in all the increases have been significant and taking into account the number of registrations that are filed and the consequent renewals necessary, it would be of great assistance in making the registry more efficient.

The second feature that has been implemented is even more dramatic. The entire trade marks registry has relocated. It has moved to what we can only assume (and hope) is a more spacious building with full time electricity and a more effective system for organizing the files. This writer has not actually had the pleasure of visiting the new registry in our Nation’s Capital personally but remains quietly confident that the move will indeed result in the increase of productivity. When making enquiries as to when I would receive certain documentation from the trademarks registry just before Christmas, I was told to be patient and assured that the move will indeed result in a more efficient system.

So there we have it, the days of disorder and chaos at the trademarks registry will soon come to an end… and there is still no need for the use of a computer (does anyone else sense my sarcasm?)!!!!!!!!!!

Please leave any and all comments after the jump and share any personal experiences you’ve had with the registry, old or new.

Thursday, 6 January 2011

I Put it on a Shirt First, Swaziboy–Swazi Boy dispute in Swaziland

A line of clothing, a company that provides DJs.  The two sound different enough that sharing a similar name shouldn’t be a problem, like a record label and a computer hardware manufacturer.  But for Swaziboy Entertainment and Swazi Boy Africa, it’s not that simple.  Much like Apple Records and Apple Inc., the two have found themselves in some overlapping territory.  Unlike the Apple brands, however, this is not the story of two long established companies unexpectedly moving into overlapping areas.  Swazi Boy Africa is a fairly new company and according to Swaziboy Entertainment, the two-word Swazi Boy is intentionally stomping on its ground.

Swazi Boy Africa is a t-shirt-only clothing line produced by Nkhosi Clothing.  (Facebook photos showing the clothing line here.)  Swaziboy Entertainment is “a promotional and events management company that specializes in providing entertainment in birthdays, engagements, weddings, corporate functions, Christmas and New Year’s Eve parties.”  (More info on their extremely hard to read MySpace page here.)

Swaziland uses the international classification system for trademarks. (Section 16, Trademarks Act of 1981Note: This is not the most recent TM Act for Swaziland, but is the most recent available online. Information about changes made in the 1994 Act are available here.)  Products like clothing (class 25) are in different classes than services like entertainment (class 41), so it seems like there should be no problem.

Things aren’t quite that simple though.  Swaziboy Entertainment also has t-shirts and other clothing items with its logo on them.  And to complicate things more, the owner of the Swazi Boy Africa t-shirt line is also in the music industry; he’s a hip hop artist.  And a hip hop artist that performs at the same venues as hired DJs.  (example)  This means, it is quite likely that both Swaziboy Entertainment t-shirts and Swazi Boy Africa t-shirts could wind up promoted at the same events.

swaziboy entertainment logoVisually, the marks are very distinctive from one another.  The Swaziboy Entertainment logo features a red hut for the “A” and a red dancing man for the “I”, the word “Swaziboy” written out in one long line with “Entertainment” smaller below it.  imageThe Swazi Boy Africa logo is a two-color logo, the words “Swazi” “Boy” and “Africa” each on different lines within a Swaziland-shaped figure.  The “O” in “Boy” is also shaped like Swaziland.  Nkhosi has similar “Swazi Gal Africa” shirts.

According to an article in The Times of Swaziland, Swaziboy Entertainment is currently attempting to negotiate with Swazi Boy Africa.  Whether the negotiations are to stop production of the Swazi Boy Africa shirts or work out some sort of licensing deal, Afro-Leo does not know.  According to The Times, if an agreement is not reached, Swaziboy Entertainment will be taking Swazi Boy Africa to court.

In order to have a cause of action for trademark infringement, the mark needs to be registered.  (Section 20 Trademark Act 1981.)  Afro-Leo was unable to find out if either of the marks are registered.  If they are both registered, the registration serves as prima facie evidence that the mark is valid.  (Section 7.) 

If the mark of the complaining company is not registered, the only matter of recourse is passing off.  Given the great differences in the two marks and the statements by Nkhosi company that it’s t-shirt line in no way is related to Swaziboy Entertainment, passing off may be hard to show.  Additionally, Nkhosi is based in and has sold most of its shirts in South Africa, outside Swaziboy Entertainment’s market. 

What also may be important, and is unknown to Afro-Leo, is the commonality of the phrase “Swazi boy” in Swaziland and the surrounding areas.  Is this a fairly generic term that Swazi male youth use to refer to themselves? If so, Swaziboy Entertainment may have a hard fight ahead of them.

Afro Leo would love to hear readers thoughts on the dispute, especially from those readers familiar with Swazi trademark and passing off law.

Wednesday, 5 January 2011

SACTWU warns that factories may close due to counterfeiting


If only counterfeiters were voodoo dolls
The Southern African Clothing and Textile Workers Union (SACTWU) were recently concerned that if the scourge of counterfeit sales does not cease, it would impact the entire South African textile industry and stated that factories will eventually close down. Whilst appreciative of  the efforts made against counterfeiting in the country SACTWU advocate tougher penalties. Source Coastweek and SACTWU press release.

SACTWU appear desperate. Counterfeiting creates a market for illicit goods that compete with genuine products resulting in large scale unemployment in the official goods sector. All of this is not surprising in an industry whose export market has been decimated by the strong value of the Rand over the past year - a situation caused largely by global interest rate differentials which ultimately, were caused by a much more sophisticated deception in the banking industry a few years ago.

However, toxic debt is not to blame. RSA has suffered significant unemployment for a number of years and its manufacturing industry, like many others, struggles to compete anyway with the cost of production of genuine goods made in other parts of the world, especially China (as this article illustrates). Ironically, critics of unions like SACTWU may blame them for assisting to cause their anti-competitive positioning. Furthermore, the temptation to sell counterfeits can be overwhelming as the illegal Ray Ban sunglasses salesman poignantly explains in the piece: “I have a family to feed. I must sell what I can,”

Without doubt, counterfeiting in RSA is on the increase. SCA IP decisions were dominated by counterfeit issues in 2010. The big IP firms in RSA now have dedicated anti-counterfeit departments. Higher sanctions (proposed in the article) may act as a deterrent but the problem is multi-faceted.

Effective or a checklist for counterfeiters?
Educating the public of  the dangers of counterfeiting like the cigarette companies are doing at the moment with their massive motorway billboards should help shift public opinion to reject counterfeits. Government initiatives like this one in September last year are useful but need to show that it has moved from talk to real, effective and measurable action and, despite successes, the court system needs to be able to deal with the problems efficiently. There are some very effective provisions in RSA legislation but the Copyright Act does needs a major update. Other less direct initiatives aimed at increasing growth and employment will also help as would efforts to secure funding (and use it effectively) from worldwide anti-counterfeiting groups.

Afro Leo notes with interest that the article commented on in this post is reported by a Chinese Xinhua news correspondent on a Kenyan website - the effect of broadband access in Africa or a sign of the global nature of the problem and interest groups? Whichever, Afro Leo thinks it positive.

Monday, 3 January 2011

First January Post

Afro-IP wishes its readers Seasons Greetings and a really prosperous 2011! In this post Afro-IP steals a glance at some of the more popular, interesting and thought provoking issues in 2010 and takes stock of its own progress as it turns three.

Here goes (in no particular order and at risk of not highlighting notable developments):

• Cape Verde gets a new IP office – this post heads up the most popular hit counter ranking although Afro Leo is not entirely certain why.

• The World Cup Football event sheds a spotlight on Africa, some unique ambush marketing laws and anti-counterfeiting policies. Lots of controversy and much interest.

• Various countries make progress with legislation – Sudan adopts customs registration against counterfeiting and Uganda service mark legislation.

• RSA’s law seeking to promote innovation from public funds came into force in August amidst much commentary from the skeptics while movement on its controversial TK legislation seems to have stalled.

• The African Regional Intellectual Property Organization (ARIPO) adopted a legal framework, known as the “Swakopmund Protocol” for the protection of traditional knowledge and expressions of culture while Ghana seeks to ensure its people use the National Folklaw Board.

• A hat trick of judgments in RSA on the Counterfeit Goods Act and associated legislation in RSA is welcomed and a sign of growth in this area of IP.

• CIPRO claws back credibility from setbacks in 2009 with good progress in its Trade Mark section.

• The facts behind the real story on coffee branding in Ethiopia percolate in a series of posts by Jeremy.

• Collecting society tensions continue in Nigeria despite the celebrated approval of COSON.

• Afro-IP bloggers are well represented at the INTA annual conference regional focus session on Africa, in Boston.

• Afro-IP welcomes contributions from new authors Sara Spiro, Christian Djomga and Angela Adebayo as well as valued contributions from its regular authors and readers that send it information and leads.

• The Kenya Industrial Property Institute new Managing Director position was advertised on Afro-IP.

• The “access to drugs” debate receives attention from the Kenyan courts in the controversial case over its new anti-counterfeit legislation. The country also witnessed the launch of its anti-counterfeit agency.

• In 2010, Afro-IP’s email subscribers rose from 328 to 502 with a growing LinkedIn membership.

• Over the year the blog received 31,468 visitors, a 24% increase over 2009.

As much as the post is an opportunity to reflect, Afro-IP is about the present and future of IP on the continent where commentary on the questions posed in this post, for example, is appreciated. With 3000-4000 visitors per month and a unique archive of over 900 searchable posts, this blog feels it can do more in 2011. Afro-IP values your support and always welcomes contributions, thoughts, leads, comments and suggestions. Please feel free to send them to this email address here or through commentary on the blog.