Monday, 26 December 2011

A to Z of African official IP websites no.28: Libya

Kingsley Egbuonu's 28th visit to an African jurisdiction takes him to Libya, where the highly-publicised civil war and change of government has inevitably resulted in the country facing higher priorities than getting its intellectual property offices online. This is what he says:

Overview
Libya is a Contracting Party to a number of 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 Intellectual Property Division (National Bureau for Research and Development) is the competent office responsible for copyright and related rights in Libya. 
• Currently, this office has no web presence.
Industrial Property Office
• The Intellectual Property Division (National Bureau for Research and Development) is the competent office responsible for the administration of intellectual property rights in Libya. 
• Currently, this office has no web presence.
Social Media Presence
None
Intellectual Property Update in Libya

The industrial property offices in Libya were not damaged during the recent civil war, but they are all expected to be fully functional soon (http://bit.ly/tuTGAt).

Until a government is elected and a new constitution adopted, the Constitutional Declaration currently issued by the Transitional National Council ensures intellectual property rights. Article 8 of the Declaration states that: “… The State shall also guarantee the right of work, education, medical care, and social security, the right of intellectual and private property …”

Comment

Afro-IP wishes the new government of Libya the best of luck in bringing the country together. Hopefully, it will do better on IP than its predecessor.

Kingsley tweets as @IPinAfrica

Wednesday, 21 December 2011

Frankie's v Woolies: Good old fashioned media

pic: facebook
Frankie's story

Goes like this: Frankie's and Woolies meet to discuss a distribution arrangement for their successful Frankie's range of products. After being "declined" by Woolies, Frankie's notice the launch of Woolies' own range of beverages sharing similarities in the retro packaging, range of flavours, descriptions and tag lines. They launch an immediate media attack and an ASA complaint against Woolies. Click here and here for more background information and thanks to Jeremy Speres for the link.


Unlawful - does it matter?

As interesting as the legal aspects are (and they are - you can indulge in the poll alongside if you like) the greater force at play here must be the media. For that reason and for the time being, we'll let the adjudicators and the lawyers (and you, if you wish) settle out the finer aspects of whether this is passing off, unlawful competition, misuse of advertising goodwill and/or breach of confidence by Woolies or defamation by Frankie's (you will note that the youtube video has been removed from the Timeslive site). This post will concentrate on reputation management, media and their place in IP disputes.

Frankie's did not need to go to Hollywood, they simply went to the press. And, in just a few days, social media has done the rest in creating what is no doubt a big headache for Woolies. Consumers appear to be up in arms regardless of whether Woolies are legally in the clear, and there are greater risks if they are found to be in breach of the law. Woolies, though, have handled this type of situation effectively in the past (see here for example) but this seems a steeper challenge to overcome and turn to its advantage?

Zuckerberg has heard this before

There is an irony and lesson that Facebook, itself the subject of a idea theft dispute, has been used as a platform to garner a petition and aire public views (see link above) as it illustrates just how common these types of allegations (theft of an idea shared with a possible business partner) are and also the viral effect of social media . Whether by design, intuition or luck, Frankie's reaction has enabled them to very quickly exploit several advantages open to a popular home grown niche brand and in doing so they have won further publicity (eg #frankies was apparently trending on Twitter). Before social media existed this would not have been possible or, at least not possible at the lightning speed at which it has occurred.

The relationship between media and IP is also illustrated in ambush marketing disputes where an arrest (which, by nature, attracts media attention) has been made, bringing into question the effectiveness of an arrest to curb ambush marketing (which feeds off media attention). It can have quite the opposite result.

It is palpably clear that anyone involved in IP litigation is required, now more than ever before, to be aware of the media (and in particular, social media) as an influencer in the resolution of a dispute. The Coca-Cola Company's handling of an "infringing fan site" is an example of such sensitivity and anyone who has had their cease and desist letter posted on a site for ridicule will also know only too well. Even, a run-of-the-mill trade mark opposition may require PR input before, during and after the decision as Virgin Enterprises found out.


Here's a thought

Social media is also not just open to the small guy. A colleague, Craig Shapiro, recently mooted the idea of using it as a tool to positively influence known infringers - what are the possiblities of a brand using its followers to help others respect their trade mark rights by spurring support and ostracising an infringer. Clearly cheaper than litigating, educational and properly done could deepen brand loyalty.



Monday, 19 December 2011

A to Z of African official IP websites no.27: Liberia

Undeterred by previous experiences and impervious to such trivialities as end-of-year breaks, Afro-IP's favourite web-trooper Kingsley Egbuonu soldiers on. In this, his 27th visit to an African jurisdiction in his alphabetical sequence, Kingsley arrives in Liberia. This is what he tells us:

Overview

Liberia is a Contracting Party to several treaties on intellectual property which includes the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. Liberia officially became a member of ARIPO on 24 March 2010.

Copyright Office

  • The Liberia Copyright Office is the competent office responsible for copyright and related rights in Liberia.
  • Currently, this office has no website.
Industrial Property Offices

  • The Liberia Industrial Property Office is the competent office responsible for the administration of intellectual property rights in Liberia.
  • Currently, this office has no website.
Social media presence

None.

Latest intellectual property update/law

None.

 Conclusion

Based on what we have seen so far in the series, some member states of ARIPO have not bothered to enhance their domestic IP office and/or regime. Again, many will –rightly or wrongly- argue that IP is not currently on Liberia’s development agenda.

Kingsley tweets as @IPinAfrica

Sunday, 18 December 2011

South Sudan opts for interim reservation scheme for trade marks

Afro-Leo has received the following information via a circular from SMAS Intellectual Property, Khartoum, Sudan:
"Following separation of Southern Sudan, and its emerging as a new State, and the absence of legislation and laws regulating Intellectual Property field which resulted from it, the Ministry of Justice in Southern Sudan has issued directives to officials at the Trade Mark Office that they adopt certain procedures known as “Reservation of a Trade Mark” until issuance of a trade mark law. These procedures may be summarized as follows: 
1. A written application is submitted to the Registrar indicating the trade mark sought to be protected, as well as prints of the mark in question. 
2. The Registrar will conduct search in the data base of the Registry to ascertain whether the mark is registered or not. 
3. If it turned out that the mark is not registered, it will be “reserved” in the applicant’s name , and no other person will be allowed to use that mark. 
Please note that no official fees have been fixed yet for such procedure".
This weblog is grateful to SMAS Intellectual Property for this information and hopes to be able to update it in due course.

Tuesday, 13 December 2011

RSA: Adidas v Pepkor - four stripes do not infringe

decorative or a trade mark?
IP livewire from Cluver Markotter, Jeremy Speres, has kindly provided Afro-IP with a summary of the very recent Adidas v Pepkor judgement handed down earlier this month in the Western Cape. Afro Leo feels that this is another High Court IP case which is ripe for appeal, but what do you think?

"In a judgement that is somewhat challenging to read at times, the Court touched on issues that have been quite topical in the local IP industry recently, including use as a trade mark as opposed to mere decorative use, the doctrine of acquiescence, survey evidence and, interestingly, the argument that where the complainant’s mark is well-known, likelihood of confusion is diminished.

Here the respondent, Pepkor Retail Limited, the operator of popular local retailers Pep Stores and Ackermans, had been selling various shoes bearing either 2 or 4 parallel stripes contrasting in colour to the material upon which they are placed.

Adidas sought interdictory relief against Pepkor on the strength of its various registered trade marks consisting of three, equally wide, equally spaced, parallel stripes contrasting in colour to the material upon which they are placed, as well as on the ground of passing off.

It was common cause that the only differences in question between Adidas’s marks and Pepkor’s shoes were the number of stripes and the device and label of origin used (Pepkor used various other marks on their shoes beside the stripes).

One of Pepkor’s defences was that the stripes on its products are used purely decoratively and that they do not function as a trade mark.  The court accepted that it was open to Pepkor to make this argument (at para 43) although ultimately the court appeared to decide the matter on the basis that Pepkor’s marks were not confusingly similar to Adidas’s.  In accepting that Pepkor could raise decorative use as a defence, the court relied on the remarks of Judge Harms in Puma v Rampar Trading (discussed by Afro-ip here) at para 27:

One also cannot use a trade mark and then argue that it was used as ornamentation. It could be different if one is dealing with changes to the mark, for instance, if the registered mark consists of three stripes it would be a question of fact whether the use of two or four stripes would be perceived as decorative or as trade mark use but one could not, I would think, use the same argument in relation to the use of three stripes.

Unfortunately, the court did not consider the judgement of the European Court of Justice in Adidas AG v Marca Mode CV (Case C-102/07) where it was found that generally, the public’s perception that a mark is used decoratively cannot limit the registered proprietor’s protection where that mark is so similar to the registered mark that the public is likely to be confused.

Pepkor also sought to argue that Adidas had acquiesced in the use by others of branding consisting of two and four parallel stripes.

It is to be noted that some have forcefully argued that the doctrine of acquiescence does not form part of our law, most notably Adv. Alasdair Sholto-Douglas SC in New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 (5) SA 388 (C) where the question was not ultimately decided. In this case however, the court seemed to accept that the doctrine is applicable (at paras 44 and 114) but found that it had insufficient evidence before it to show that Adidas had in fact acquiesced.

Regarding survey evidence, Adidas commissioned a market survey which seemed to find that consumers form a general impression of Adidas’s marks and that quite a few participants gave “stripes” as opposed to “three stripes” as their answer for identifying an Adidas product (at para 38).

Highlighting the difficulties involved in survey design and the great weight given to proof of actual confusion, the court gave the survey short shrift, finding that Adidas could have attempted to show actual confusion by showing the survey participants Pepkor’s shoes, which was not done.

Finally, and most interestingly, the court appeared to accept an argument that has generally not found favour in the courts (see Webster and Page at para 6.6.7), providing a rare example of the renown of a complainant’s mark actually counting against the complainant’s case!  

Pepkor argued (see pg 35 and para 80) that the renown of Adidas’s three stripes excludes the possibility of less or more than three stripes causing confusion, i.e., where a mark is renowned, likelihood of confusion is diminished.

Here the court appeared to accept this argument (at paras 116-119) in combination with the doctrine of imperfect recollection.  The reasoning of the court appeared to be that Adidas could not rely on the imperfect recollection of consumers (i.e. consumers failing to recollect that the Adidas mark consists of three stripes as opposed to two or four) given that Adidas’s three stripes are so well-known.  

One gets the sense though that this finding was informed more by the fact that potential decorative use was involved and the “requirement of availability” (in the words of the ECJ in Marca Mode)."

------------------------------------------------------

Afro Leo's two cents worth:

* This is another judgement that fails to appreciate that markings on shoes (other than word marks) are more valuable than word marks when it comes to protecting a brand and are very strong source identifiers. Copycats should clearly use their marks decoratively if they want to escape infringement.
* It is interesting that Adidas did not rely on the unfair advantage or detriment provisions when pleading trade mark infringement but did do so under the heading of passing off.
* Afro Leo feels that these types of cases are better suited to arguments that well known brands are diluted under the infringement provisions, interested that passing off is considered wide enough to include dilution at common law and wonders why the Judge did not appear to address the passing off dilution arguments in more detail.
* The Judge, on the other hand, has been very bold to fly in the face of local decisions using arguments that generally mean that less protection is given to reputable marks because they are known, and that the South African public is less likely to be confused in the post economic sanction period!
* As far as acquiescence is concerned, Afro Leo had the privilege of listening to Adv Burt Bester try to persuade Judge Harms in the KG footwear SCA matter that it formed part of RSA law, to no avail.

Monday, 12 December 2011

A to Z of African official IP websites no.26: Lesotho

Afro-IP's dedicated web-explorer Kingsley Egbuonu has visited some desperately depressing jurisdictions in his time, as he searches for websites and online services offered by intellectual property offices in our favourite continent. In the 26th in the series, Kingsley -- fresh from a good experience in Kenya -- is cast back into the gloom again after a visit to a country which was once thought to have great IP prospects, Lesotho. Kingsley reports as follows:

Overview

Lesotho is a Contracting Party to several treaties on intellectual property which includes: 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 ARIPO.

Copyright Office

  • The Ministry of Law and Constitutional Affairs is the competent office responsible for copyright and related rights in Lesotho.

  • Currently, this office has no website.
 Industrial Property Offices

  • The Ministry of Law and Constitutional Affairs is the competent office responsible for the administration of intellectual property rights in Lesotho.

  • Currently, this office has no website.
 Social media presence

None.

Latest intellectual property update/law

None.

 Conclusion

To date, it appears that where IP apathy exists — in a given country in Africa like Lesotho — it is highly unlikely for one to find a website or web trails for that country’s IP office or activity. Based on what we have seen so far in the series, some member states of ARIPO have not bothered to enhance their domestic IP office and/or regime. Again, many will —rightly or wrongly —argue that IP is not on its government’s development agenda.

Kingsley tweets as IPinAfrica

Thursday, 8 December 2011

Calling all Africans! INTA's on the way

Following last year's crushing disappointment that the International Trademark Association -- the world's biggest and most influential body of intellectual property owners and practitioners -- could find no room for a regional session on Africa (see Afro-IP here and here), I've just spotted that the organisation is calling for hosts in Africa for its Roundtable topics.  This can be a great way to promote greater understanding of IP in Africa and to generate more involvement, perhaps leading to an increase in Africa's presence at INTA.  The request for Roundtable hosts is here:



INTA seeks Roundtable hosts in Europe, Africa and the Middle East

INTA's International Roundtables are the perfect vehicle to trade thoughts with your peers, compare and learn new strategies, and address common issues and challenges facing the trademark and
intellectual property community, both globally and/or locally.

INTA is seeking hosts in Europe, Africa and the Middle East to participate in the Roundtable program. To volunteer to host a Roundtable or to obtain a copy of the host guidelines, email
roundtables@inta.org.

Learn more at www.inta.org/roundtables

Meanwhile, does any reader of this blog know what provision has been made for an Africa session in the 2012 INTA Meeting which takes place next May in Washington DC?  It would be good to hear from anyone who has been asked to give a paper.  The earlier Afro Leo gets to hear of the Africa session, the sooner he can start campaigning for readers (from inside Africa and outside it too) to support it.

Wednesday, 7 December 2011

WIPO's report on the Changing Face of Innovation

WIPO recently released its first publication on the state of health of the world IP economy and the changes within it.

Francis Gurry's Forward (copied below) is a very useful summary - the findings of the report make the case for greater investment in IP by governments (RSA's Maclean Sibanda is quoted several times) and service supporting firms. It also has some excellent data on University patenting (eg universities are the highest patent filers in RSA and responsible for 75% of basic R&D spend).

"Innovation is a central driver of economic growth, development and better jobs. It is the key that enables firms to compete in the global marketplace, and the process by which solutions are found to social and economic challenges.



The face of innovation has evolved significantly over the last decades.

First, firms are investing historically unprecedented amounts in the creation of intangible assets – new ideas, technologies, designs, brands, organizational know-how and business models.

Second, innovation-driven growth is no longer the prerogative of high-income countries alone; the technological gap between richer and poorer countries is narrowing. Incremental and more local forms of innovation contribute to economic and social development, on a par with world-class technological inventions.

Third, the act of inventing new products or processes is increasingly international in nature and seen as more collaborative and open.

Fourth, knowledge markets are central within this more fluid innovation process. Policymakers increasingly seek to ensure that knowledge is transferred from science to firms, thereby reinforcing the impact of public research.

Moreover, ideas are being co-developed, exchanged and traded via new platforms and intermediaries. In this new setting, the role of intellectual property (IP) has fundamentally changed. The increased focus on knowledge, the rise of new innovating countries and the desire to protect inventions abroad have prompted a growing demand for IP protection.

IP has moved from being a technical topic within small, specialized communities to playing a central role in firm strategies and innovation policies.

Understanding these innovation trends and the associated role of IP is important in order for public policy to support new growth opportunities. The essential questions to ask are whether the design of the current IP system is fit for this new innovation landscape, and how best to cope with the growing demand to protect and trade ideas. To move beyond polarized debates on IP, more fact-based economic analysis is needed. In addition, it is crucial to translate economic research in the field of IP into accessible policy analysis and messages. "

The report -184 pages of analysis - plots the link and development of IP and productivity in high income countries relative to low and middle income countries, the effects of collaborative innovation, growth rates of technology exports (notably from China) and records that Africa has increased its technological and knowledge share of its GDP. As with most statistic based analysis it will be open to criticism but it's a valuable start.

Sunday, 4 December 2011

A to Z of African official IP websites no.25: Kenya

Afro-IP's dedicated web-explorer Kingsley Egbuonu has visited some desperately depressing jurisdictions in his time, as he searches for websites and online services offered by intellectual property offices in our favourite continent. But this week, in the 25th in the series, Kingsley finds something to cheer about.  There is definite evidence of official life online in Kenya. Kingsley explains:
Overview

Kenya is a Contracting Party to several treaties on intellectual property which include 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 ARIPO.

Copyright Office

• The Kenya Copyright Board (KECOBO) is the competent office responsible for copyright and related rights in Kenya. 

• You can visit this office at http://www.copyright.go.ke

Industrial Property Offices

• The Kenya Industrial Property Institute (KIPI) (Ministry of Trade and Industry) is the competent office responsible for the administration of intellectual property rights in Kenya. 
• You can visit this office at http://www.kipi.go.ke

Social media presence

You can follow Kenya’s copyright office on twitter @KenyaCopyright and on Facebook with the username Kenya Copyright Board. The industrial property office is not on Facebook or Twitter, but the interactive facility (for comments) on its website is better than nothing.

Latest intellectual property update/law 
The Copyright (Amendment) Regulations (2011) amending the Copyright Regulations (2004). Also the Competition Act No. 12 of 2010 which came into force on 1 August 2011 makes provisions concerning the protection of intellectual property rights.

Conclusion

Both IP offices in Kenya are currently doing a fantastic job in terms of accessibility. Their websites are well updated and loaded with useful information and documents any IP devotee would love to see.

All Afro-IP can say is: “keep it up”!

Friday, 2 December 2011

Anti-Counterfeit Friday

On the morn of ex top cop and head of Interpol, Jackie Selebi's (right), appeal decision in South Africa against his corruption charge that could see him sent to jail, Afro-IP brings you their regular post highlighting the damaging problem of counterfeiting on the continent. Corrupt cops and border officials are partly to blame ... For previous ACF posts, click here.

Counterfeit goods: Where to go for a Chinese BlackBerry
Financial Times (Subscription based)
Similar 
counterfeit brands exist for other phones in similar markets across east Africa's towns and cities. They sell in the thousands to lower income consumers, unable to afford the real thing, but seduced by big brand names. ..



Africa: Western Union Offering Support for Diaspora Entrepreneurs
AllAfrica.com
Look at SPROXIL in Nigeria addressing the issue of 
counterfeit pharmaceuticals prevalent throughout Africa. SPROXIL has generated deals with pharmaceutical companies where they put a code behind a scratch-off label and consumers can SMS the number to ...



East Africa: Regional Parliament Wakes Up to Fight Counterfeits
AllAfrica.com
The East African Parliament has demanded that the five partner states implement and operationalise laws against 
counterfeit products, which have continued to flood the regional markets. Officials also want states to enforce stiffer penalties for ...



Counterfeits Dragging EAC Single Customs Plan
Middle East North Africa Financial Network
Counterfeit goods menace is slowing down the implementation of the East Africa Community single customs territory because of some porous borders within member states, a new report has ...



Nokia Fights
Middle East North Africa Financial Network
Nokia, one of the leading mobile phone manufacturers, has intensified its war against 
counterfeit products on the market. This was revealed by Nokia's Head of marketing East and Southern ...



Honeywell extends fight against fake refrigerants
ACR News
We are taking the necessary actions to protect that investment and ensure that users get the high-quality product they need," said Paul Sanders, Managing Director for Honeywell Fluorine Products in Europe, Middle East, Africa and India. ...



Microsoft: Highlighting Dangers of Counterfeit Software
THISDAY Live
... Microsoft's Corporate Attorney for Anti-Piracy for the Middle East and Africa region. “People all over the world are making quick money from pirated and 
counterfeit software and their actions are adversely affecting local and global economies. ...



Pirated software leads to infection
Gadget
The trade in 
counterfeit goods is costing South Africa millions of rands annually in lost revenues, says Mandla Mnyatheli, chief director of company and IP enforcement with the Department of Trade and Industry (DTI). “Every day we strive to compete in ...



Kenya sees local criminal networks driving counterfeit crime
Xinhua
Kenya's two main cigarette manufacturing companies, the BAT East Africa and Mastermind Tobacco have previously reported high levels of counterfeiting. The official said so far, most of cases in court on 
counterfeit involve selling of counterfeited ...


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