Monday, 31 October 2011

Nigeria: PINS ON PILLS!

Africa is one of the largest markets for mobile technology in the World, it has been said that more people have started using phones in Africa since the year 2000 than in the prior century. Nigeria is one of the largest Countries in West Africa and the telecoms market is hugely successful. The rise in mobile technology (whether real or fake) has taken off beyond the expectations of all. Nigeria is commonly known to be the largest African market for the sale of mobile phones, ahead of South Africa and Zimbabwe along with all other African jurisdictions.

Today’s installment however is not about the correlation between IP rights and mobile communication, it is about something else entirely which I’ll come to in a second.

Nigeria has a large and escalating problem with the sale of counterfeit drugs. These products are often much cheaper than the originals but also often of a much lesser standard, this particular issue can have wide reaching health repercussions. One can categorize the different types of ‘fake’ drug which can be found in the market into 4 groups. First is the total inauthentic, whereby you buy an aspirin and end up swallowing chalk, then you have the mimic, whereby the counterfeiter has attempted to copy the chemical formulation of the original and (usually) failed, you also have the sale of expired products and lastly where they again mimic the chemical formulation but use a much weaker (read- cheaper) dose. Any of these four are extremely dangerous to the consuming public, and I won’t waste all our time be telling you why. Basically take them and you’ll probably die.

So now we come to the great reveal (and I’m not kidding, I really think it’s’ great) GSK has teamed with a company called SPROXIL alongside NAFDAC to see if it is possible to combine the issue of consumption of fake drugs and the booming mobile phone industry in Nigeria. The result is a technology known as- SMS consumer product verification.GSK products will now contain a scratch off pin on the packaging. Upon purchase of the pills, the pin number should be sent via text to the number provided which is the NAFDAC health desk. Please reserve all comment about how the NAFDAC registration number can be faked because this pin IS NOT the NAFDAC registration number. It is a special formulation of numbers thought up by SPROXIL. After the text has been sent, within ten seconds you will get a reply saying either- Genuine NAFDAC product with the serial and NAFDAC registration number provided, or you will receive a text saying- FAKE, DON’T USE and instructions on what to do next. It is also possible that the text will say- this pin has been used before or pin not recognized.

In this author’s opinion, this could go a long way into curbing the issue of consumption of fake and also sub-standard goods on the market place in Nigeria. There are plans to expand into food stuffs and electrical items as well and it is my belief that it is a much needed initiative that Nigeria desperately needs. So what does everyone else think? All comments after the jump please…

A to Z of African official IP websites no.20: Gabon

Afro-IP's A-to-Z series of visits to the official IP websites of African states reaches episode 20 with the arrival of Afro Leo's special agent Kingsley Egbuonu to Gabon.  This is what Kingsley finds there:

Overview
Gabon is a member of the OAPI and a contracting party to a number of international agreements on intellectual property; these include: the Paris Convention, the Berne Convention and the Convention Establishing the World Intellectual Property Organization.
 Copyright Office

  • The National Agency for the Promotion of Arts and Culture (ANPAC) is the competent office responsible for copyright and related rights in Gabon.
  • Currently, this office has no web presence.
 Industrial Property Office(s)

  • The Center of Industrial Property of Gabon (CEPIG) is responsible for the administration of intellectual property rights in Gabon.
  • The official website for this office is http://www.cepig.net/  and the language is French.
  • Relatively, CEPIG’s website is informative and functioning; however, there is still much work to be done to bring it up to a reasonable standard.
 NB: The CEPIG’s patents and trade marks database redirects you to Esp@cenet (France).

 Social media presence
None
 Conclusion
Unlike some in the OAPI club, Gabon has at least made an attempt to maintain the presence of its intellectual property office online. Perhaps, this could be the result of its link and/or co-operation with the French Intellectual Property Office, Institut National de la Propriete Industrielle (INPI). This itself raises the question whether IP Offices in developed countries can play a meaningful role in the developing ones?
Kingsley tweets as @IPinAfrica

ARIPO's latest newsletter

Afro Leo received a welcome email containing ARIPO's third newsletter publication for this year. Previous issues are available on the ARIPO website under "publications".

Catching this Leo's eye is a fascinating article on the potential protection of Shea-butter as a geographical indication in Ghana and beyond and an excellent summary and commentary on the impact of the Anti-Counterfeiting Trade Agreement for IPRS from an African perspective, both by Mcdave Appiah.

The call from the editorial is a strong one too - the promotion of access to free online patent databases among African universities and development institutions.

Sunday, 30 October 2011

Morocco: ORKIDE ... or ORKIDE?

Moroccan company Ruby Rough applied to register as a trade mark in Morocco the word ORKIDE (Classes 3, 5 & 35).  The application was opposed by a Turkish company, ORKİDE PARFÜM VE KOZMETİK SANAYİ ANONİM ŞİRKETİ, which was itself the proprietor of the trade mark ORKIDE.

The opposition was based on prior use of the trade mark, the fact that the opponent was the sole and legitimate owner of the trade mark in its country of origin (in addition to other countries around the world), priority of registration in Morocco and Turkey, the fact that it was considered a well-known trade mark worldwide, including Morocco, as well as asserting the Ruby Rough's application was made in bad faith.

In the face of this imposing array, the presiding Registrar issued a decision in favour of the opponent and rejected the application.


Source: NJQ & Associates news letter. For further details email NJQ here.

Friday, 28 October 2011

Anti-Counterfeit Friday

Quote of the day: "Counterfeiting is a monster. You cut one hand and another one grows…" Tina Rose, an anti-counterfeit programme manager for aftermarket sales at HP.
"If you view counterfeit products as illegal competition that means we have helped our partners and retailers who sell our genuine products to operate in a much more fair environment by re moving those counterfeit products from the market." Tina Rose in The National. And, HP’s raid in South Africa here.

Practical difficulties spotting fake intellects
A good story about counterfeits: innovating to stop it. Pharmasecure secures funding for its anti-counterfeiting technology. Marketwatch

Afro Leo’s fun pick of the day: Zimbabwe’s problem with Counterfeit Intellectuals

The Chinese have endorsed a culture of copying (all about sharing) which is why they are such prolific copiers and why one has to understand their culture before being over critical about their IP regime. Heard that before? This fascinating short history of money published by Businessweek describes how the Ming Dynasty in China denounced counterfeiting several centuries ago “To counterfeit is death…” Buck up.

Counterfeit toys confiscated in England to be donated to children in Africa BBC Afro Leo says Santa Claus, this sounds kind but it is promoting an accepting culture for counterfeits in Africa, creating demand and perpetuating the problem.


The Tobacco Institute of South Africa said over the past month, more than 160 million counterfeit cigarettes have been confiscated in the country. EyewitnessNews

On the Health Affairs blog Daniele Dionisio makes the case for a stronger regulatory regime to curb “bad medicines” and strikes at the confusion caused by bad drafting of anti-counterfeit legislation in East Africa, particularly. A slightly different but equally persuasive take on the problem revealed by this piece on AEI on sub-standard (as opposed to fake) medicines.

The workshop organised by the Assembly's Committee on Communications, Trade and Investment (CTI) took place on October 16-19, 2011. The topics ranged from: avenues for Private Public Partnerships (PPP) to curb imported sub-standards and counterfeit goods in the EAC region, the EAC's outlook on the counterfeits and anti-dumping. Plenary discussions on the how to strengthen quality infrastructure to prevent entry of sub-standard goods in the EAC region are also envisaged. StarAfrica 

Tuesday, 25 October 2011

ICANN says it hasn't forgotten Africa after all

A media release, "ICANN Dakar Meeting Opens with Calls for Greater Internet Access for Africans", makes reference to what it describes as "support for Generic Top Level Domain Applicants from Developing Countries". Speaking from Dakar, Senegal, ICANN President/CEO Rod Beckstrom is quoted as saying:
“There has been tremendous progress toward greater connectivity. In ten years, the number of Internet users has grown 25-fold,” said Beckstrom. “That is rapid growth, yet it still represents only 11.5 percent of the African population.” 
Beckstrom made his comments during the kick-off of ICANN’s 42nd public meeting in Dakar, Senegal. He told the conference that discussions will take place during the week on how to best provide financial and logistical support to applicants of new generic Top-Level Domains (gTLDs) from developing countries. 
“ICANN’s global community is already taking steps to help needy applicants apply for new gTLDs,” said Beckstrom. “A joint working group has spent many hours working on a proposal that the Board will consider this week on how best to provide that support.” 
The new gTLD program will vastly expand the number of generic Top-Level Domains from the current 22, which includes such familiar endings as “.com”,”.net” and “.gov.”
Afro Leo, who has noted that even the developed world is largely reluctant and unexcited to fork out US$ 185,000 for the privilege of applying for a gTLD which it might never get, wonders how many African governments, businesses and organisation will see any advantages to paying out and jumping through ICANN's hoops in order to get their own new gTLDs.  Perhaps a reader can enlighten him.

Monday, 24 October 2011

A to Z of African official IP websites no.19: Ethiopia

Afro-IP's A-to-Z series of visits to the official IP websites of African states visits Ethiopia -- a country whose policy regarding the protection and exploitation of rights in the reputation of its coffee may be regarded by some as a template for other producing countries to copy.  Kingsley Egbuonu writes:.

Overview
Ethiopia is a contracting party to the convention establishing the world intellectual property organization. It is signatory to most IP-related multilateral treaties and regional economic integration treaties.
Copyright Office

  • The Ethiopian Intellectual Property Office (EIPO) is the competent office responsible for copyright and related rights in Ethiopia.
  • This office was formed in 2003.
  • The office website is www.eipo.gov.et.
Industrial Property Office

  • The EIPO is also responsible for the administration of intellectual property rights in Ethiopia.
  • The office website is www.eipo.gov.et.
  • The EIPO’s website appears useful but there is room for improvement.
  • Key sections of the website lack content and among other things, a section dedicated to EIPO’s rules and procedures would be a great enhancement.
Social Media Presence
None
Comments and conclusion
Intellectual property might not be considered a priority for most African countries, especially those in the horn of Africa; however, Ethiopia has embraced IP and made effective use of it. This is indeed significant that intellectual property can become a vital tool for growth and sustainable development for African countries. 
Established in 2004, the Ethiopian Coffee Trademarking and Licensing Initiative (ECTLI) is a fantastic commercialisation project aimed at ensuring a win-win solution for all stakeholders -- including Ethiopian coffee farmers. Although funding is a necessity, without dedicated legal technical assistance, projects like these often fail. Therefore, it is crucial that law and IP-oriented organisations firms (as part of their pro bono and/or CSR schemes) emulate the likes of Arnold & Porter LLP and Light Years IP in supporting beneficial intellectual property regimes in Africa. 
For more details on the ECTLI, visit www.ethiopiancoffeenetwork.com
Kingsley tweets as @IPinAfrica

Thursday, 20 October 2011

PRE –GRANT ENTITLEMENT ACTIONS IN KENYA – WHO SHOULD FILE A PATENT APPLICATION?

Last week Afro Leo promised a summary of a groundbreaking patent decision to come out of Kenya from John Syekei (Coulson Harney, who represented the requesting parties, Vestergaard Frandsen). Here it is - thanks John:

"The Kenyan Industrial Property Tribunal, a judicial body established under the Industrial Property Act (“the Act”) with powers, inter alia, to determine disputes related to Patents and Industrial designs, handed down a ground breaking decision on pre- grant entitlement actions in relation to patent applications pending grant at the Kenyan Patent registry.

In the decision, IPT No 50 of 2010, Reference of a Matter to the Tribunal by the Managing Director under Section 118 of the Act between Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd on one hand and Intelligent Insect Control S.A.R.L and Ole Skovmand, the Tribunal dealt with a material question on the recognition of and manner of procedure involved in the conduct of pre- grant entitlement proceedings in respect of a patent application in Kenya. The significance of the matter before the Tribunal was twofold in that, while on the one hand while section 30 of the Act impliedly recognized this right as being available to an aggrieved person, on the other hand it was silent as to form, costs, timelines and procedure.

Section 118 of the Act entitles the Managing Director, on his own motion or upon application by an affected person, to refer an unusual and /or complex point of law in relation to the interpretation of the Act to the Tribunal for directions. This is because the Tribunal is empowered to provide guidance on key issues as relates Kenyan patent law which is modeled on English patent law. The reference in this matter was based on section 118 and related to the question of whether pre-grant entitlement actions were recognized under Kenyan patent law and if so, what forms and procedure would apply.

The background of this matter, where the author represented the requesting parties, M/s Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd, global manufacturers of insecticide impregnated textiles, was that the requesting parties laid claim to a pending patent application filed into Kenya by M/s Intelligent Insect Control S.A.R.L ( applicant) and Ole Skovmand (inventor) on the basis that the inventor was employed by the requesting party during the time that he came up with the invention relating to the patent application. It was his job description to develop new processes and formulae in the development of the technology surrounding fabric impregnation with insecticides. 

On instructions from the requesting parties, we filed the reference under section 31 of the Act arguing that under Rule 37 of the rules subsequent to the Act, a party was entitled to approach the Tribunal to determine the appropriate mechanism, procedure and forms for the prosecution of a pre grant entitlement proceeding as the law was silent in this respect. As such we invited the Tribunal to take charge and create a forum for such actions which it was empowered to do, thus developing this important aspect of Kenyan patent law as it allowed an entitled aggrieved party some respite before grant. Normally, without such a forum, a party would have to challenge a granted patent by way of a revocation proceeding which is not only costly but also ineffective in the sense that there is a time lag between the time a patent application is noticed by an affected party and the time that it is published which may be 2 to 3 years. This would have implications on an affected party justly entitled to the patent in that no action can be taken on the patent for that period because of this lacuna in the law and may affect the effectiveness of the entitled party to consolidate and derive commercial benefit from its patent rights, including its entitled patent pending grant.

In arriving at its decision, the Tribunal rightly considered the nature of patent filings in Kenya and their examination. As noted by the Tribunal, examination of patents is important but the question as to the legality of an applicant in filing a patent is one best suited for determination by the Tribunal and not a patent examiner. The Tribunal cited Indian patent law in this decision and reached the conclusion that under Section 30 of the Indian law, the right to a patent is subject to a determination on the point of ownership. In Kenya, as is the case in many Commonwealth jurisdictions, the practice is that “the first to file” rule applies such that the person who files for a patent first normally obtains the rights to the patent upon grant as against the world and can enforce this limited monopoly. The mischief to be cured by a pre grant action would be to correct an anomaly where a patent application and related rights accrue to a person who lacks the legal rights to claim ownership yet maintains them until challenged via revocation, entitling such a person to enforce the rights as against third parties including the rightfully entitled party. In short, the Tribunal was of the view, and correctly so, that the question of ownership cannot be left to a patent examiner as they do not possess the requisite knowledge of patent law. This is further compounded by that fact that key legal questions would arise where an applicant to a patent was an employee of a third party and it was part of his job description to originate inventions that would be patentable. In addition, substantive examination of patents is limited to the technical issues of novelty, disclosure in prior art and possession of an inventive step and as such ignores the material issue of ownership.

The Tribunal held that pre grant proceedings are in aid of an examination of a patent application and must be conducted expeditiously to ensure that the entire process of prosecuting the patent application is not disrupted. Such actions must not be time consuming and expensive to prosecute.

Thus, in issuing directions by adopting a “purposive approach” to statutory interpretation, and in an effort to embrace international best practice, the Tribunal held that a pre grant proceeding which primarily deals with the question of ownership should be canvassed within 2 months before the Tribunal prior to grant by an affected party and shall be undertaken by use of a form similar to the one used in post grant proceedings (referred to as Form PR/IPT) such as revocation actions albeit with changes to reflect the nature of the proceedings. A claimant in such actions is now mandated to file its pre-grant arguments in written form within 10 days of written notice to the Tribunal and submission of the aforementioned form. It must annex supporting affidavits and documents in its possession as indicated in its Form PR/IPT.

In conclusion, this determination by the Tribunal was welcomed as it developed Kenyan patent law and provided a legal exception to the first to file rule at pre grant stage where questions of ownership arise. In effect, a party filing for a patent in Kenya must be the rightfully entitled party, through invention or otherwise."

Sunday, 16 October 2011

A to Z of African official IP websites no.18: Eritrea

Afro-IP's A-to-Z series of visits to the official IP websites of African states visits one of Africa's more recent states, the State of Eritrea.  Again, Afro-IP's intrepid e-explorer Kingsley Egbuonu finds little to be cheerful about.

Overview
Eritrea is only a contracting party to the Convention establishing the World Intellectual Property Organization. However, it is signatory to most IP-related multilateral treaties and regional economic integration treaties.
Copyright Office

  • The Department of Culture (Ministry of Information and Culture) is the competent office responsible for copyright and related rights in Eritrea.
  • Currently, this office has no web presence.
Industrial Property Office

  • The Domestic Trade and Intellectual Property Office (Ministry of Trade and Industry) is responsible for the administration of intellectual property rights in Eritrea.
  • Currently, this office has no web presence.
Kingsley tweets as @IPinAfrica

Friday, 14 October 2011

Anti-Counterfeit Friday

Chillin out after a raid
Customers who came in for a good deal ended up having a bad day.

"Doors were kicked open. Sheriff screaming, 'Everybody get down, get down,' and I was about to like dart out, but I had a sheriff behind me with a gun," customer Cleo Jackson said.

Customer Tim Yates said he was ordered to the ground.

"They said get on the ground, and I thought they were being robbed. We started walking away, and the sheriff said, 'Get over to your car,' and I guess they're selling false stuff," Yates said.

Investigators thought Trevor Reddhi was a lookout.

Investigators had him facedown on the sidewalk in seconds. "They pulled around ... two SWAT trucks pulled right around the corner, and they told me to get right on the ground -- that it was a search. So I got on the ground and listened to what they said. Wrong day, wrong time. I picked the wrong time," Reddhi said.

A description of an actual raid this week in the US with links to Africa or the new movie script for Die Hard complete with cliches? Read on...

Counterfeit drugs targeted by technology in India BBC News
The majority of fake drugs available are said to originate in India and China. India is also one the world's fastest-growing hubs for generic drug production. A majority of the medicines available in Africa come from Indian generic drug laboratories. ...
Largest Identity Theft Ring Busted In Queens, 111 Indicted! Post Chronicle
Five organized crime organizations in Queens with ties to Europe, Asia, Africa and the Middle East were broken up after a credit card counterfeit operation netted more than $13 million over 16 months, WABC-TV, New York, reported. ...
 
Police Smash Tyre Imports Racket Involving KEBS Officials Middle East North Africa Financial Network
Oct 07, 2011 (Nairobi Star/All Africa Global Media via COMTEX) -- DETECTIVES in Nairobi yesterday smashed a fake Kenya Bureau of Standards rubber stamps racket and arrested four suspects. The police also impounded containers with suspected counterfeit tyres ...
 
WIPO Assemblies Call for Diplomatic Conference on Audiovisual Performances Bridges Weekly Trade News Digest
Similarly, member states also discussed the work of the Advisory Committee on Enforcement (ACE), paying special attention to its research on counterfeiting, piracy, and the motivations for intellectual property infringement. Speaking at the closing of ...

And, finally Die Hard..

Eastland Mega Flea Market Raided For Counterfeit Goods NBC4i.com
We have not linked this one to terrorism at this time, but the only thing I know for sure is that some of these monies have been going back to Africa," Scott said. There are 57 booths at the flea market, and 54 of them are illegal, authorities said. ...

Wednesday, 12 October 2011

Kenya: KIPI onwards and upwards

Courtesy of John Syekei (Coulson Harney) we have news that the Kenyan Industrial Property Tribunal (KIPI), a judicial body established under the Industrial Property Act with powers to determine disputes related to Patents and Industrial designs, has handed down a ground breaking decision on pre- grant entitlement actions in relation to patent applications pending grant at the Kenyan Patent registry. More on that case will be published very shortly on Afro-IP. In the meantime, KIPI has gone online with a neat website that will excite Kingsley (@IPinAfrica) together with user ratings, new logo and commentary options that can all be located here - check it out and rate them (impressive). Afro Leo has also come across new blog IPKenya (not to be confused with David's blog by the same name hosted on blogspot) complete with interesting insights on IP developments in Kenya, particularly copyright.

Tuesday, 11 October 2011

Cameroon: Collecting Societies the subject of litigation

Christian Djomga (Cabinet Isis - see full profile on the blog) has sent in this contribution from Cameroon:

Le Cameroun, c’est décidément le Cameroun.

Nous ne cesserons jamais de le dire. La honte ne tue pas au Cameroun ; cela ne cesse de se vérifier.
Il ya quelques jours la Cour suprême siégeant en séance plénière donnait une fois de plus raison à la Cameroon Music Corporation (CMC) sur le différend qui l’oppose au Ministère de la Culture chargée de la supervision et du contrôle du Fonctionnement des Société s de gestion collective.
La chambre administrative de la haute institution judiciaire du pays a ainsi annulé les décisions prises par cette institution, à savoir la décision de retrait de l’agrément de la CMC, six mois avant l’expiration de cet agrément et une autre décision désignant un comité ad hoc pour gérer les affaires de la CMC en attendant la mise sur pied d’une nouvelle société de gestion collective.

Mais la SOCAM, société créée et agréée pour remplacer la CMC se défend d’être concernée par cette décision.
Pourtant la loi est claire : Il ne peut exister QU’UNE SEULE SOCIETE DE GESTION COLLECTIVE PAR CATEGORIE DE DROITS D’AUTEUR. La CMC et la SOCAM ne peuvent donc concomitamment exercer la gestion collective dans la catégorie « Art musical » où elles sont compétentes.
La réhabilitation de la CMC par l’annulation de la décision ministérielle signifie donc ipso facto retrait de l’agrément de la SOCAM.
L’autre précision, et non la moindre, est que la décision d’annulation, pour la haute juridiction, est rétroactive ; ceci mettant en cause l’ensemble des actes posés par la SOCAM depuis son agrément en 2008.
Et que fait Madame le Ministre de la Culture, prise dans l’étau de ce contentieux ? Pour l’heure ce qu’on sait, c’est qu’elle a fait appel de la décision. Qu’espère-t-elle de ce énième acte de défense, quand on sait que les décisions de la haute juridiction sont restées constantes depuis le début du contentieux ? A notre avis, il ne s’agit ni plus ni moins que d’une manœuvre dilatoire, la Ministre n’entendant, du moins en apparence, pas vouloir donner droit au ordonnances de la justice de son pays, ce qui aura pour effet collatéral de remettre en cause, aux yeux du public, son jugement et sa capacité à

Et comme pour l’heure l’appel suspend l’exécution de la décision de la haute juridiction, la Ministre en profite pour repousser l’échéance d’un clash inévitable, à moins que le Président de la République n’intervienne pour expier le péché qui entache l’âme de la République.
En attendant… Qui vivra verra !



- Posted by Darren

Monday, 10 October 2011

A to Z of African official IP websites no.17: Equatorial Guinea

Afro-IP's A-to-Z series of visits to the official IP websites of African states has run aground again, as yet another OAPI member state appears to have no online presence.  This time Kingsley Egbuonu visits the Republic of Equatorial Guinea:


Overview
Equatorial Guinea is a Contracting Party to the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member of the African Intellectual Property Organisation (OAPI).
Copyright Office

  • The Council of Scientific and Technological Research (Presidency of the Government) is the office responsible for copyright and related rights in Equatorial Guinea.
  • Currently, this office has no web presence.
Industrial Property Office

  • The Council of Scientific and Technological Research (Presidency of the Government) is the competent office responsible for the administration of intellectual property rights in Equatorial Guinea.
  • Currently, this office has no web presence.
Conclusion

This is yet another example of an OAPI member without any presence online for its national office. The curiosity continues: is the OAPI system creating complacency among its members?

Kingsley tweets as @IPinAfrica

Sunday, 9 October 2011

RSA: Amarula decision on unfair advantage

The latest trade mark related High Court case from South Africa finds unfair advantage and a likelihood of confusion based on the use of a descriptive term.

The facts are relatively straightforward. The case is between Southern Liqueur Company ("SLC"), owner of the IP in Amarula cream liqueur, and a competitor product Black Horse Marula cream liqueur ("Competitor"). SLC claims that Competitor infringes (on the basis of likelihood of confusion and unfair advantage) its registered trade mark 84/2496 AMARULA covering goods including liqueurs and is passing off.  The relevant products (as close as Afro Leo could find to those attached to the judgement) are depicted from the left in diagrams 1. and 2. below. Diagram 3 represents a further product sold by Competitor. Click on each Diagram to enlarge.





Competitor counterclaimed that the registered AMARULA trade mark should be cancelled or failing that endorsed with a disclaimer or admission because the mark consists of the word "marula" which is descriptive of the flavour or contents of the liqueur (being a fruit of the Marula tree). The notoriety in the AMARULA trade mark was not denied by Competitor and Judge Goliath reasoned that the mark's reputation had saved the mark from cancellation because it had "acquired distinctiveness through extensive use". This must be correct. 

SLC rather astutely offered the following endorsement against the registration:

"Registration of this mark shall not debar others from the bona fide descriptive use in the ordinary course of trade of the word 'Marula'."

There is a subtle difference between this endorsement and the typical wording of a  disclaimer; this wording does no more than iterate one of the limitations to the rights of a trade mark.

The arguments are summarised in paras 6-12 of the judgement. In short, the Judge felt that the main question for determination was whether the use of MARULA in the diagrams was bona descriptive use of the term MARULA. If so, the claims would not have succeeded. The relevance of diagram 3 is explained because the the Judge felt that an intimate comparison of the two Competitor labels was required to establish good faith, or not (see para 24).

"[25] A critical evaluation of the two labels clearly demonstrates inconsistent use of the principle trade mark "Black Horse". It is evident that there is a dilution [really, how exactly?] of the trade name on the Marula product due to the indistinct print of the trade mark, the deliberate adjustment of the principal trade mark by reducing font size, and the removal of the horse figure. Clearly the Dark Horse trademark should be used in conjunction with the horse figure in order for the public to recognise and associate its product with a particular trade origin as illustrated in its strawberry product. [this cannot be correct]"

The Judge has conflated the issues here too. Instead of first analyzing whether infringement had taken place and then considering the limitations, he has taken a short cut to the question of good faith descriptive use concluding that there is infringement, essentially because the descriptive term is used in a manner that is more prominent than the principle trade mark and inconsistent vis a vis other products in Competitor's stable and in the marketplace.

The Judge appears to make a mistake in quoting Harms that "Use will not be bona fide, however, if the user does not unequivocally make it clear that his goods are not connected in the course of trade with the proprietor of the trade mark [that is being used ie the identical trade mark, which MARULA (a descriptive term) is not]. It follows that bona fide use in sec 34(2)(c) means honest use of a trade mark, without the intention to deceive anybody and while unequivocally making it clear that the goods are not connected in the course of trade with the proprietor of the trade mark." at para 26 citing Harms in Commercial Auto Glass v BMW.

At para 28 "...The flavour variant of respondent's Marula product is reflected in such a position on its labels that the principal trademark becomes irrelevant and invisible [MARULA is dominant but the principle trade mark is visible to consumers of liqueurs (the nature of the consumer does not appear to have been considered)]. There are several ways to draw to the attention of the consumer that the product's flavour is "Marula". Respondent chose to do so by using the word "Marula" in red bold capital letters and bold gold capital letters which bore a deceptive resemblance to applicant's trade name [for infringement or passing off purposes?]. The only distinctive feature [how can it be the "only distinctive feature" if it is an inherently descriptive term?] on the Marula product that is given prominence on the main, neck and back labels is the word "Marula" Furthermore, by reducing the size of the Marula label, in comparison with its strawberry label [is this not also because the word "strawberry is just longer?], the respondent effectively gave more prominence to the word "Marula" on the Marula product. This fact, coupled with the eye catching red and gold bold lettering, leads one to conclude that respondent intended to align its product with that of the applicant's [using an ordinary descriptive term].

In finding on all claims including unfair advantage infringement Goliath held that "The parties have similar products with a general African theme [which is not uncommon for African drinks]. I am satisfied that there is a reasonable likelihood that members of the public may be confused into believing that there is some trade connection between the goods of the parties [disagree, bring to mind SLD's mark perhaps but confuse based on a descriptive term?]. The difference in the shapes or sizes of the bottles and labels are not sufficient to overcome the general visual impression of similarity. The nature of the confusion or deception is likely to divert business away from the applicant, which could result in a loss of its market share [typical of a passing off conclusion but no apparent evidence]. It was clearly established that "Amarula" is a well-known brand in South Africa. The applicant has established itself as a market leader with its award winning "Amarula Cream Liqueur" and presently holds a dominant share in the overall Marula Cream Liqueur market [but this does not mean that they should retain it through exclusivity over its description] . Its reputation was created at enormous advertising costs. Consequently, respondent's conduct is likely to take unfair advantage of the distinctive character and reputation of the "Amarula" mark in a manner that is unfair. [a link to AMARULA yes perhaps but even if that link is intentional is it unfair if this advantage is based on the use of a descriptive term? Can it be an advantage if it is based on a descriptive term? Apparently so.]" 

Afro Leo hopes this decision is/was taken on appeal but wonders who will adjudicate it, as Harms retires shortly.

Friday, 7 October 2011

Anti-Counterfeit Friday

This is the thirds post in Afro-IP's ACF campaign designed to increase awareness of the problem in Africa.

The fake BlackBerry is surrounded by dozens of other shanzhai, or “bandit phones.” These cheap imitations of brand-name products, bearing names such as J-Max and Eurocell, are manufactured in mainland China and shipped in the hundreds of thousands across South Asia and Africa - Chungking Mansions, home of the ‘bandit phone’

Gallup surveys in sub-Saharan African countries underscore the growing health threat that counterfeit drugs pose - click here


 
Kenya is the biggest market for counterfeit goods and contraband in East Africa, says a new report accoprding to the Daily Nation here. The counterfeit industry, according to Termites at Work: A report on Transnational Organised Crime and State Erosion in Kenya, is worth Sh70 billion and rivals key foreign exchange earners tourism, tea and coffee.
 
Zimbabwe: Opposition party ZAPU SA has lambasted counterfeiting of its t-shirts by some unknown people in South Africa. The party's publicist also warned the public against being duped into buying fake party regalia and cards, as reported by the Zimbabwean here.
 
Two raids by the Nigerian Police and the Nigerian Copyright Commission at the behest of Microsoft Corporation have been reported in Nigeria:
 
The premises of IPS Plus Solution Limited, a computer reseller at Veterans Plaza, located in Yaba, were raided following a consumer tip-off, an undercover test purchase and a subsequent petition to the local law enforcement authorities by Microsoft Corporation. The raid took place on 14 September 2011 and the matter has been handed to the Nigerian Copyright Commission (NCC) for further investigation.
 
Separately, officials from the Nigerian Copyright Commission (NCC) raided the premises of a local software reseller in Port Harcourt following a complaint made to Microsoft by a consumer after he was sold counterfeit software. The raid resulted in the seizure of 269 units of suspected high and low quality counterfeit products, ranging from computer games, music, anti-virus software, and Microsoft Windows and Office. Microsoft have an educational portal on how to detect if you have counterfeit software, located here.

The South African counterfeit industry is estimated at approximately R362bn and is viewed as one of the world's fastest growing industries, with seizures of fake goods up 46% annually according to litigator Nishan Singh at attorneys, Adams & Adams. News24 

Thursday, 6 October 2011

Brazil scores!

The debacle around the issue of a visa to the Dalai Lama is not the only reason for bad press about South Africa this week. The Brazilian president, Ms Dimla Rousseff, has also referred to South Africa in less than flattering terms. She is being taken to task by FIFA for failing to ignore the Brazilian constitution, and other existing legislation, so as to accede to FIFA’s requirements for the staging of the 2014 Soccer World Cup. According to a report in Monday’s Irish Times, available here http://www.irishtimes.com/newspaper/world/2011/1003/1224305145366.html
she made it clear that ‘Brazil will not let Fifa impose its demands on Brazil in the same way it did with South Africa ahead of the 2010 tournament’.
In particular, she refused to accept state liability for any damages suffered by Fifa and its executive during the tournament, she has not guaranteed the sale of alcohol in stadiums during the tournament (this falls under state not national legislation), she has refused to raise the prison terms for counterfeit merchandise to the levels demanded by Fifa, and she has respected national legislation that grants reduced admission rates to pensioners and students.
Maybe women’s priorities are less focussed on TV sport?

Monday, 3 October 2011

A to Z of African official IP websites no.16: Egypt

Afro-IP's A-to-Z series of visits to the official IP websites of African states has taken a turn for the better, now that Afro-IP's intrepid e-explorer Kingsley Egbuonu visits Egypt. This is what he found:

Overview
Egypt is a Contracting Party to several treaties on intellectual property including: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.
Copyright Office
• The Permanent Office for the Protection of Copyright (Ministry of Culture) is the office responsible for copyright and related rights in Egypt. 
• The Ministry’s website (http://www.ecm.gov.eg/) is in Arabic and it utilises social media such as: facebook and twitter to reach its audience. 
• At present, visitors in search of legal materials (on copyright and/or allied matters) may not find the website particularly useful.
Industrial Property Offices

Trade Mark Office
• The Commercial Registry (Ministry of Trade and Industry) is the competent office responsible for the administration of intellectual property rights (in particular trade marks and designs) in Egypt. 
• The Ministry’s website (http://www.mfti.gov.eg) is in Arabic (with English option), but unlike the copyright office, it doesn’t employ the use of social media. 
• At present, this website does not appear particularly useful for visitors in search of intellectual property materials – although there is an intellectual property unit section on the website.
Patent Office
• Egyptian Patent Office (Ministry of Scientific Research) is the competent office responsible for the administration of patent rights in Egypt. 
• The office website (http://www.egypo.gov.eg) is a very good resource tool for IP practitioners – in particular, its patents database. 
• The website is in Arabic, but it also has an English language option.
Kingsley tweets as @IPinAfrica