Tuskys V Tusker

According to the New Vision newspaper in Kampala,


TUSKYS, a Ugandan Company "dealing in arts and crafts, has sued Tusker Mattresses, a subsidiary of Kenya’s Tusker Mattresses over a trademark" for damages, costs and interest from Tusker Mattresses for denying it the exclusive use of its trademark. Tuskys is also praying court for an injunction "stopping Tusker Mattresses from using the trademark" which according to the company's Managing Director was registered in Class 8 for crafts and arts in 2008.

According to Tusker Mattresses’s Legal Counsel, the renowned IP Lawyer John Magezi, the company registered the logo and slogan “Time to go, Tuskys, your friendly supermarket” in Class 16 in 2009.

According to the New Vision, the defendant company's position is that there is no infringement on the part of his company, since the plaintiff’s trademark covers goods in Class 18 that embrace arts and crafts, whereas the alleged infringement of the trademark is in respect of goods in Class 16, for paper articles, cardboards, newspapers and other printed matters.

This case resurrects some of the issues dealt with by the Kenyan High Court in Matthew Ashers Ochieng –vs- Kenya Oil Company Limited & Kobil Petroleum Limited Civil Case 377 of 2007, as recently analysed by John Syekei and Andrew Ndikimi here. One of the important points made by the court in this case is that "That the protection afforded by trade mark registration in Kenya is class specific." Should the Commercial Court in Uganda be persuaded to follow this principle, the court would then find the defendants innocent of the alleged infringement.

Two issues remain to be pondered though.

First of all, would an application for the word mark "Tuskys" in class 16 by Tusker Mattresses succeeded, even in the presence of a prior registration of "Tuskys" by the plaintiff in class 8? The response to this question may determine whether the parties can still seek a remedy to this problem before the Registrar of Trademarks, under the mandatory Commercial Court Mediation procedure.

Secondly, this case brings back the old and thorny issue as to whether the Company's register should be cross linked with the trademark register. Although the two registers are based on different laws and are different many other respects, it is possible that if some of this information is readily searchable electronically, the parties concerned would be able to minimise the occurrence of some trademark disputes. This may not be of assistance however where the matters at issue involve foreign companies not incorporated in Uganda.

Ultimately, it behoves the Government of Uganda and all involved in improving the business climate in Uganda and brand protection to assist the Uganda Registration Services Bureau in its plans to fully automate the IP registry.

So far, .SO good

Anyone for maesto.so ?

Via Lexsynergy comes news that, on 1 April 2011, the .SO Top Level Domain (TLD) assigned to Somalia will be open to the general public, allowing the registration of .SO domain names on a “first come, first served" bases and without restriction.  Lexsynergy point the attraction of domains such as espres.so and provi.so, though this blogger started running out of bright ideas pretty quickly ...

"Proudly Kenyan" protectable? - High Court speaks out

Afro Leo received the following judgment summary from Kenyan IP experts John Syekei and Andrew Ndikimi (Coulson Harney). The Court did not hold back in rebuking the local Registry yet themselves made mistakes.

The High Court of Kenya, in the recent case of Mathew Ashers Ochieng –vs- Kenya Oil Company Limited & Kobil Petroleum Limited (civil case No. 377 of 2007) has held that descriptive expressions or slogans such as “PROUDLY KENYAN”, which are widely used and familiar within the public domain, should not be registrable as trade marks. John and Andrew summarise their thoughts in a considered article (click here) as follows:

(1)  The fact that descriptive words, expressions, slogans etc are not registrable as trade marks in Kenya.

(2)  That the protection afforded by trade marks registration in Kenya is class specific.

(3)  The mere fact that a person has registered any descriptive words, slogans, expressions or common name, etc. as a trade mark cannot entitle him any legal protection of a right acquired through the inept and inattentive action of the registering authority and no property right can be acquired through the laxity and negligence of public officers to adhere to their legal mandate by allowing the registration of unregistrable trade marks.

(4)  Local firms should not invoke their roots to edge out foreign and local competitors by registering trade marks that are not distinctive, but are merely slogans aimed at boosting their sales and inspiring customer loyalty, patriotism etc on the basis of their Kenyan identity. Therefore both local and foreign firm can successfully challenge such wrongfully registered trade marks in the event that they are threatened with any such misconceived trade mark infringement action.

Further, any such act of purporting to register such marks can be deemed to constitute restrictive trade practices under the recently gazetted Competition Act, 2009.

New CEO for Kenya IP Office

Dr. Henry Kibet Mutai is the new Managing Director of Kenya Industrial Property Institute with effect from 1st April 2011. Currently he is a Law lecturer at Moi University.

Dr. Mutai graduated from the University of Nairobi with Bachelor of Laws (LL.B) degree in 1994. He obtained a Master of Laws (LLM) degree from Temple University in USA with a focus on international law and intellectual property. He is an alumni of the University of Melbourne from where he obtained his Doctorate in 2006 - his Phd thesis was titled “The regulation of regional trade agreements: harnessing the energy of regionalism to power a new era in multilateral trade”.

He is also the author of the book “Compliance with International Trade Obligations: The Common Market for Eastern and Southern Africa” published by Kluwer Law international in 2007.

Dr Mutai takes over from Prof. James Odek, who Afro-ip is informed has been named the Dean of the school of Law at the University of Nairobi.

Afro-IP takes this opportunity to congratulate Dr. Mutai and to wish him well in his new position for the next three years.

Academics at INTA

There was dismay in African IP circles about the perceived lack of attention given by INTA to IP isues on our continent. A small consolation emerged from the workings of the Organising Committee of the INTA Academic Day. At this day, a session is devoted to presentations by members of their scholarly work. Academic members were invited to provide details of their projects. Only eight proposals were accepted for presentation. One of these was from Wim Alberts, Professor in Intellectual Property Law at the University of Johannesburg, and also special IP Counsel for Edward Nathan Sonnenbergs. The project he will present is a comparison between English and South African law on passing off. The emphasis will fall on the protection granted to foreign plaintiffs. In English law, the Crazy Horse hardline approach is followed, which requires the presence of goodwill. In contrast, post-Caterham, all that South African courts require is the existence of a reputation. This is not unlike the position under s56 of the UK Trade Marks Act. Afro-IP wishes Wim well.

Swartland SCA judgement - commentary

Afro Leo has received a note (see below) from live-wire Jeremy Speres (Cluver Markotter) on the recent SCA Swartland judgement. 


To the uninitiated, the Swartland region is an incredibly beautiful area near Cape Town. It (including the more famous Stellenbosch) produces great wine, great "rooibos" and great IP issues, not least involving geographical indications, grape varieties and genericides (the one that does not fall into class 5). There is no shortage of parody either (see earlier post here), a Techno Park for hard IP enthusiasts, the Woordfees (word feast) if you are into copyright and a growing academic IP fraternity (Dr Dean is now lecturing out of Stellenbosch University). The combination can be quite intoxicating even if you are not based there, as our learned friends in Bloemfontein recently found out adjudicating on the issues raised in "Swartland":  


"[The Swartland decision is a] nice short judgment tying in with the Century City matter concerning geographical terms... here’s two points I found interesting:

1. The court found that the long and extensive use of the SWARTLAND mark saved the mark from expungement in terms of s 10(2)(b), despite the fact that the court found the mark to be prima facie liable to expungement as a sign that may serve to indicate the geographical origin of the goods and despite the fact that the Swartland region is certainly associated in the minds of consumers with wine (para 15). This point wasn’t dealt with directly in Century City and is sure to give some relief to the holders of geographical marks concerned with the enforceability of their marks. Despite the ruling, it also highlights the practical pitfalls of adopting a geographical mark as one’s own – others will always be tempted to use it (and may well be more inclined to feel they are entitled to do so) and the chances of having to litigate over your mark, and the uncertainty surrounding its enforceability, are heightened.

2. The Appellant took the cunning, yet ultimately unsuccessful, point that the SWARTLAND mark should be expunged as a mark contrary to law in terms of s 10(12). The reasoning being that the mark was contrary to s 11(3)(a)(i) of the Liquor Products Act which provides that, unless otherwise authorised, no person may use a wine of origin designation in connection with wine, with the Swartland being such a designated area. The point failed because the SWARTLAND mark was in use prior to the commencement of this section, however it does highlight the interesting interplay between the Trade Marks Act and other legislation, such as the Liquor Products Act, which can easily be overlooked in the registration process. The new food labelling regulations passed in terms of the Foodstuffs, Cosmetics and Disinfectants Act as well as the proposed regulations regarding the labelling of goods in terms of the Consumer Protection Act will no doubt provide applicants and the Registrar with some additional headaches."


Thank Jeremy!


Following on from my earlier post on exchange control this week, readers may be interested in this summary provided by Adams & Adams who were involved in the case.

The Oilwell valves tightened - SCA adjudicates on exchange control and IP

Last year Afro-IP reported on the latest in a string of controversially conflicting judgements relating to the transfer of IP from RSA residents to non-residents (for background information click here).

Thanks to an email from Adv Ilse Joubert, Afro Leo has now read last week’s Supreme Court of Appeal judgement in the Oilwell case (unfortunately not yet online). The SCA have provided much needed clarity and not shied away from ensuring that the scope of the judgement is likely to be applicable across all forms IP in transactions. The appeal was dismissed; the views in the lower court and those of Tim Ball (Without Prejudice 2005 "Exchange Control and the Assignment of South African Patents") largely upheld.

Prior to the SCA judgement, the big questions were whether exchange control approval was required for the transfer of IP from a resident to a non-resident and what would happen if such approval was not obtained. There was at least one view that the absence of approval would mean that the transfer would be void. This meant that a large number of IP transactions were vulnerable to being declared void and it had the effect of deepening the reluctance to invest in IP in RSA.

The five judge appeal bench lead by Deputy President Harms, dismissing the appeal, held in a lucid judgement that:

• IP is not “capital” in the financial sense envisaged by the Exchange Control regulations. It however, an asset;
• IP is territorial in nature and akin to immovables. It cannot be exported. (see comment on the Sting judgement here);
• A patent per se does not create a right to royalties. Rather, a licence agreement does (but see comment below);
• Royalties represent “earnings” and not “capital” which, in any event, require exchange control approval under reg 3(1)(c); and
• The failure to obtain exchange control approval  (where it is required) does not necessarily render a transaction void:

a.     The absence of exchange control approval does not necessarily mean that parties should be punished criminally. Circumstance is important;

b.     The parties in the Oilwell case had negotiated in good faith;

c.      The Treasury could have provided consent retrospectively;

d.     Declaring the transaction void would lead to “greater inconvenience and impropriety“; and

e.     The Regulations impose penalties which should be sufficient to address the wrong.

Comment:

The finding that a patent (or for that matter any other IP right – Harms does not distinguish between them) does not create a right to royalties (see 3 above and para 13, page 6-7 of the judgement) is somewhat tenuous. For example, the infringement of a trade mark creates a right to relief which may include payment of a reasonable royalty (section 34(1)(d)). A similar provision exists in the Patents Act. Consequently, the link between the IP right and a royalty right is established by the relevant Act and not necessarily, only by a licence agreement as suggested by the judgement. Furthermore, the express right to receive a reasonable royalty does not exist under common law action of passing off dealing with unregistered rights. Even so, as Afro Leo reads the SCA judgement, this right is incidental and not of a capital nature under S10 of the Exchange Control Regulations, so no approval is required under this Section.

This judgement is unlikely to mean that exchange control approval is not required in any form of IP transaction between non-residents and residents. Such transactions may take the form of:

• IP licences
• Non assert agreements
• Co-existence arrangements
• Settlement agreements
• Copyright assignment reversals eg following a parallel import confiscation; and
• IP assignments (dealt with above)

It is almost certain that exchange control approval will still be required especially if royalties/payment and/or the right to receive royalties/payment is transferred. However, such approval will not be under regulation 10.  Furthermore, the absence of obtaining consent to date will not necessarily mean that transaction is invalid, which is a significant relief.

Nigeria election saga finally ends in the public interest -- we hope

Late last year Afro Leo's friend the IPKat posted this item from Kingsley Ebguonu on the battle between Bedding Holdings and Independent National Electoral Commission (INEC) over Bedding's action in November 2010 against INEC and the other defendants, asserting that it had exclusive patent rights to produce Electronic Collapsible Transparent Ballot Boxes (ECTBB), as well as being the patentee of the Proof of Address System/Scheme (PASS), used for the collation and collection of the names, age, gender, address, fingerprint, geographical description and location of various places in the country, including the biodata of every person resident in Nigeria. Controversially, an interim injunction was granted which arguably would have had the effect of paralysing the Nigerian elections.

Latest news from Kingsley is as follows:

After hearing both parties in the suit, Justice Ibrahim Auta finally lifted his earlier injunction granted against INEC on 3 December 2010 commenting that: “the 2011 general election is of utmost national importance and it is in the public interest that the court does not disrupt the process”. Having reached this conclusion, the court however fixed the 27 and 28 January 2011 for substantive hearing. Due to lack of details in recent news articles and scant case reporting, it is difficult to judge what exactly happened thereafter and the current status of this case.

The Court noted that the claimant had proved that it is the true proprietor of the patent in suit, while the defendant(s) inadequately mounted a defence (here I think the court was most likely referring to an invalidity defence). Nonetheless, the Court ultimately reached its decision on the unequal consequential harm to both parties and correctly decided that it was in the public interest to discharge the injunction.

One fails to understand how the Court could reach this conclusion or realisation (in this particular circumstance) so late when, arguably, it should have been aware of the ultimate effect of its order (disrupting the 2011 general elections) on first hearing.

I think it is safe and reasonable to say that a Court doesn’t need bundle of papers (evidence) to be persuaded that restraining INEC would disrupt the 2011 election in Nigeria and, in fact, could jeopardise the stability of the nation.

Browsing through various online posts, it appears that the court was trying save itself from being held responsible for contributing to the disruption of the 2011 general election. Unfortunately, this case has now attracted the attention of the general public to well-known issues associated with politics, judiciary and strangely, IP law and practice in Nigeria.

As for the defendant(s) and they way they handled this case, I did not pick out anything substantial from their defence other than mere rhetoric that the claimant was not the proprietor of the IP rights in suit as claimed, or that any certificate of patent(s) put before the Court is more or less fake. I also did not pick out any argument towards “government use or compulsory licence” for patented articles/products.

This case also draws our attention to issues surrounding product patent versus process patent regimes and particular to this case, there may be patentability arguments in substantive suit in respect of whether this is product-by-process patent claim.

They say “no news is good news”.  This may not be good news for some but, for all IP enthusiasts reading this, it is good to see that IP is proving relevant and important in developing countries. This is therefore a wake-up call for policymakers to neglect IP at their own risk.

Some of my questions are:
1. Was it the case that the Court was indeed misled by the applicant in the motion ex parte as to the “urgency” at stake in its claim?
2. Is this just another case of the “state of affairs” or habit; i.e.  taking advantage of the political situation in Nigeria with plethora of lawsuits? or
3. Is this simply sheer incompliance with established principles of law?
4. Can one ever envisage this type of case in the UK?
5. In almost all circumstances in IP litigation, do you need evidence to show an overriding public interest?
6. How do you go about gathering such evidence (particularly in this case, is it sufficient to expect the Court to use common sense?)
7. How often do we hear of public interest and IPRs in circumstances outside the public health and access to medicine discourse?
8. From what the claimant have exposed in its patent, is this a case of product-by-process claim and if so, how easy or difficult are these to defend where one is accused of infringement?"

News from the Egyptian Patent Office

The pyramids -- prior art over the camel's hump?

With the current turbulent activity in North Africa making it difficult for intellectual property owners and their advisers to see clearly what is happening, Afro Leo is grateful for all the news he can get. Here, thanks to AGIP, is some helpful information for readers with IP interests in Egypt.

The Egyptian Patent Office has recently issued two decisions:

1. The Patent Office will not accept any late filing for the national phase entry; accordingly the deadline of filing a national phase within 31 month, 32 month and 33 month (chapter II) from the priority date will be no longer valid.

2. The official fees for the examination will be 7000 EGP instead of 2000 EGP.

Source: "Egyptian Patent Office Issues New Decisions", Abu-Ghazaleh Intellectual Property (AGIP) Newsletter, 27 February 2011

Notoriety for general use: Trade Marks

The excellent Class 46 posted (per Robert Börner) a summary of a decision of The German Federal Patent Court rejecting an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.

The relevance of the decision to readers of this blog is that it shows the importance of evidence of use (not evidence to get protection under passing off or famous marks type legislation but evidence to show that a mark with a high degree of distinctiveness gets wider protection) in trademark oppositions, infringement cases and for overcoming citations not only in RSA but in all African countries that use the European tests (Sabel v Puma, Cannon etc). For RSA, see for instance the Cowbell AD decision adopting these tests.  

The African decisions that Afro Leo has read indicate that attorneys very rarely rely on evidence of use in this way.

"The German Federal Patent Court (Bundespatentgericht) recently rejected an application of the term "TELFEXAN" for "industrial chemicals" in Class 1 due to an opposition based on the earlier trademark "TEFLON" being registered for identical goods.  

Despite the (according to the opinion of this class 46 member rather strong) differences between the signs, the court stated an overall risk of confusion due to the very high distinctiveness of the earlier sign. 

The sign  "TEFLON" allegedly forms a traditional trademark of the opponent being strongly used over the last decades (which had apparently been sufficiently substantiated by the opponent).  Interestingly the court explicitly stated that the decision with respect to a risk of confusion would have been different if  - the goods had not been identical or  - the earlier sign did only have an average distinctiveness."

Canada's One License Solution Update

snail's pace

Progress on the debate around Canada's innovative "one licence solution" (see earlier post on Afro-IP here) for creating access to life saving drugs is contained in a piece in the Ottawa Citizen (click here):

"Advocates say the private member’s bill [up for a vote on Wednesday] contains reforms needed to make Canada’s Access to Medicines Regime (CAMR), adopted unanimously by Parliament in 2004, actually function. But opponents insist it won’t work, largely because Canadian generic drugs are too expensive to attract interest from impoverished developing nations."

Whilst the article contains interesting dialogue on the debate and as noble as the legislation appears to be, the people without access to these drugs have been dying since that debate started almost a decade ago. It is a depressing state of affairs because, assuming that the legislation has the potential to work, the real challenge will only commence once the legislation is in place and if the time taken to debate the legislation is any indication of the time it will take to overcome this future challenge, one feels that the legislation is bound to fail anyway.

Coming up this week: the latest Gap Case in RSA, an IP update from Kenya and Afro-IP gets more contributors. Stay tuned.

JIPLP: access from low-income countries can help Africa

As part of its charitable aims and objectives, Oxford University Press provides free online subscriptions to some of its journals to qualifying not-for-profit educational institutions in a number of countries, and offers greatly reduced subscription rates to corresponding institutions in others.  Among the journals available under this scheme is the Journal of Intellectual Property Law and Practice (JIPLP).

Free list
Benin
Burkina Faso
Burundi
Central African Republic
Chad
Eritrea
Ethiopia
Gambia
Ghana
Guinea
Guinea-Bissau
Kenya
Liberia
Madagascar
Malawi
Mali
Mauritania
Mozambique
Niger
Rwanda
Senegal
Sierra Leone
Somalia
Tanzania
Togo
Uganda
Zambia
Zimbabwe

Reduced rate access
Angola
Cameroon
Cape Verde
Congo
Congo, the Democratic Republic of The
Cote D'Ivoire
Djibouti
Lesotho
Sudan

Details of the OUP initiative -- and how to apply for its benefits if you are a qualifying institution -- can be found here.