Thursday, 28 June 2012
Monday, 25 June 2012
in the Republic.".
Effectively, this means that IP transfers from locals to non residents require exchange control approval. But is the amendment lawful? At least one commentator (Webber Wentzel's Benjamin Cronin) thinks not - see here:
"The reason is that the empowering provision to make the Regulations themselves, which is contained in section 9(1)(a) of the Currency and Exchanges Act 9 of 1933, refers to the ability of the President to "make regulations in regard to any matter directly or indirectly relating to or affecting or having any bearing upon currency, banking or exchanges“. This empowering provision does not cover Intellectual Property, making any purported regulation dealing with Intellectual Property potentially unlawful. [ed - but is it - the IP seems incidental and the IP acts have not changed?]
Even if one were to accept the proposition that Intellectual Property could be the subject of Regulations under the Currency and Exchanges Act 9 of 1933, then the section 9 power to create this restriction may itself be unconstitutional. This is because the power to legislate is given by the Constitution exclusively to Parliament, which in turn may prescribe circumstances in which secondary or delegated legislation (such as Regulations) may be issued. The potential for the issuing of Regulations does not, however, mean that the President can usurp from Parliament the power to legislate [ed - what if that is what Parliament had already legislated in the empowering provision ie it had empowered the President?] ...
While on the face of it, this amendment is a positive step in that it attempts to create certainty by legislating a partial definition of the term "capital" and of the phrase "exported from the Republic", neither is in fact fully defined. Further, the new phrase "any intellectual property right" is itself not defined. Consequently, this amendment creates substantial uncertainty not only because of its doubtful legality, but also because of the lack of definitional detail." [ed - agreed. to take it to the absurd - if a well known local sports star is transferred to Europe, does he need excon approval - after all he/she possesses unregistered image rights, could be brand or have valuable know-how ... and what if a humble lawyer decided to do the same]
Afro Leo is more interested though in whether a protectionist regime so clearly advocated by RSAincentivise innovation & tech transfer in the country ie job creation and growth by creating a rule that IP generated in the country cannot be transferred outside the country without permission? Surely not but then again I am not an economist - comments welcome.
Zimbabwe 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. It is also a Member of ARIPO.
• The Zimbabwe Intellectual Property Office (ZIPO) is the competent office responsible for copyright and related rights in Zimbabwe.Industrial Property Office
• This online address of this office is www.justice.gov.zw.
• The Zimbabwe Intellectual Property Office (ZIPO) is the competent office responsible for the administration of intellectual property rights in Zimbabwe.Social Media Presence
• The website for this office can be found here.
Intellectual Property update in Zimbabwe
Afro-IP has reported various developments and/or updates of practical significance in recent times including here, here and here.
Just about a week ago, Afro Leo was excited by what he discovered in Zambia; today, he is a bit disappointed to learn that Zimbabwe has no dedicated website for its intellectual property office.
This generic website which belongs to the Ministry of Justice and Legal Affairs perhaps promises so much that it is unable and/or yet to deliver on; for example, we found that the Department of Deed, Companies, Trade Marks and Patents and Industrial Designs’ mission statement is “To register, protect and facilitate easy access to information on proprietary rights in land, formal business organizations and Intellectual Property.....” while its vision is “To be the best service provider in the protection of proprietary rights in the region.”
While Afro-IP can understand that in some countries, inter alia, budgetary constraints might hamper the progress of intellectual property rights administration and/or sensitisation; it is quite difficult to muster excuses in this case considering that Zimbabwe hosts ARIPO, including various IP training programmes (here and here) for the region.
Who should assist with this issue: the government of Zimbabwe or ARIPO? Kingsley tweets as @IPinAfrica. He currently has 292 followers.
Wednesday, 20 June 2012
There's going to be a delay, though. Since Benin is a Member State of the African Intellectual Property Organization (OAPI), the Treaty will enter into force in Benin three months after the date on which OAPI deposits its own instrument of accession, in accordance with Articles 26 and 28 of the Treaty.
More on Benin (but not very much more ...) here.
Tuesday, 19 June 2012
The case was instigated by the Chartered Institute of Patent Attorneys in the UK when their mark IP TRANSLATOR was rejected because their class heading (41) spec was deemed to cover all services in the class which included “translation services”.
The ruling by a Court of 12! (CIPC would love that type of attention right now)
|Collapsible Ballot Boxes|
In the words of his Lordship:
“That by virtue of Sections 1, 2, 6 (1) and 13 of the Act, the plaintiff’s Certificate of Registration of Patent Rights RP16642 and Registration of Industrial Designs Rights Number RD13841 issued to the plaintiff on November 27, 2006 in and over the invention, named Electronic Collapsible Transparent Ballot Boxes by the first defendant, takes priority over subsequent registration of Industrial Designs, especially the registration of Industrial Designs Rights Number NG/RD/2010/708 to the fourth defendant , and subsequently registered by the first to the fourth defendants on October 14, 2010 in and over the same invention renamed Collapsible Transparent Ballot Box, and thereby precluded the defendants and other persons from infringing on the plaintiff’s exclusive right, as the fourth defendant’s invention is not new to the express provision of Section 13 (3) (a) of the Patent and Designs Act.
That by virtue of Section 1, 2, and 6 (2) of the Act, the Certificate of Registration of Patent Rights No: 16571 and Registration of Industrial Designs Rights Number RD13610 issued by the first defendant to the second defendant in and over the purported invention named Envopak Ballot Boxes on August 31, 2006 was done contrary to the provisions of Section 6 (2) of the Patent and Designs Act.
That by virtue of reliefs 1, 2, 3, 4 and 5 and Sections 1, 2, 3 and 6 (2) of the Patent and Designs Act, any action or actions taken or purportedly taken by the defendants relating to the said products without the prior and express license, consent and approval of the plaintiff is unconstitutional.”
It would be recalled that the plaintiff in this case has in the past successfully injuncted INEC and the other defendants, from awarding any contract for the manufacture, sales or distribution of any product/invention covered by these design rights, thereby stalling the conduct of the upcoming general elections in Nigeria. However this injunction was subsequently discharged on public interest considerations by his Lordship, Justice Ibrahim in the hearing of the substantive suit.
My general concern is that the Patent and Designs Act should be amended to require the patent registrar to conduct an examination as to patentability of the invention. This should reduce incidence of patents where the subject matter claimed already anticipates a prior art. For instance under § 13 (1) (a) of the Patent and Designs Act, for a design to meet the threshold of registrability, it must be “new” among other things. The section of the Act granting patent provides that “an invention is new if it does not form part of the state of the art,” this meaning is consistent with the plain meaning of “new” as used under § 13 (1) (a).
In interpreting “state of the art,” Nigerian courts should in my view not be restricted to only evidence of the state of the art available within Nigeria neither should it be limited to evidence of a prior Patent/Design grant obtained in Nigeria as the standard of been made available does not necessarily entail the prior grant of a Patent/Design right but rather that information concerning the claimed invention or design has been previously disclosed to the public by way of a written or oral description, by use or in any other way.
Though case laws in this area of law is still developing, I would very much like to see how Nigeria courts would decide when the issue of patentability comes before them.
Afro Leo wishes to thank Chukwuyere Izuogu for his synpopsis of the case an insightful comments. It is good to see that hard IP rights are enforceable in Nigeria, and also that local companies are using them.
Monday, 18 June 2012
"Intellectual Property, Innovation and Management in Emerging Economies" edited by Ruth Taplin and Alojzy Z. Nowak published by Routledge.
The book seeks to argue that IP management development and innovation are fundamental to economic development, especially in newly emerging economies, which often hold vast reserves of natural resources and human knowledge that remain unprotected. It highlights countries that are realising this situation and provides case studies through a number of authors across a number of territories including Eastern Europe, Africa and especially Asia where there is a conscious link between creating innovation and IP to stimulate economic growth.
The book explains different types of innovation models, highlights success stories and explains some of the barriers to developing an innovation culture that understands IP and how to use it. The Africa chapter is written by Dario Tanziani and Nthabisheng Phaswana who illustrate, quite effectively, countries whose GDP and IP filing statistics reflect one another suggesting that IP infrastructure and GDP growth are linked although, because of a dearth of information, the authors admit that is not exactly clear whether IP development leads directly to economic growth.
There are several other excellent chapters that highlight how certain developing countries have embraced innovation and effectively created models that are driving growth. The emerging theme is that an "independent judiciary coupled with thoughtful and thoroughly understood implementation of IP laws within the context of cross border IP" is key.
The book is available from Amazon for $131.00.
Zambia 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. It is also a Member of the ARIPO.
• The Copyright Administration (Ministry of Information and Broadcasting Services) is the competent office responsible for copyright and related rights in Zambia.
• This office currently has no website.
Industrial Property Office
• The Patents and Companies Registration Agency (PACRA) is the competent office responsible for the administration of intellectual property rights in Zambia.
• The website for this office is www.pacra.org.zm
• The Intellectual Property Unit (IPU) of the Zambian Police is responsible for intellectual property enforcement in Zambia.
Social Media Presence
Intellectual Property update in Zambia
Afro-IP has reported on various developments of practical significance in recent times including here, here and here.
ConclusionKingsley tweets as @IPinAfrica
Afro-IP found a very neat website for the industrial property office (PACRA) in Zambia. This website succinctly explains the different types of IP and how to obtain registration for each one of them in Zambia – including forms and fees. Other good features on the website include the business names search facility, the news/events page to keep users informed, and key opposition decisions which are on how to register a trade mark page.
Our discovery is very encouraging when compared with other ARIPO member states such as Swaziland, Liberia and Malawi -- but there is always that bit of room for improvement. Afro Leo would have fancied a search facility for registrable intellectual property rights and some social media presence which could help PACRA with intellectual property sensitisation".
Friday, 15 June 2012
Thanks to a Jeremy Speres tip-off on Wednesday Afro Leo was able post a note entitled Wine, Grapes and Trade Marks as an aperitif to Jeremy’s unedited, full bodied and somewhat cheeky summary below.
"In a judgement that’s bound to get the talking heads a-jabbering, Adv. Alasdair Sholto-Douglas SC has pulled off quite a feat by convincing Davis J, sitting in the Western Cape High Court, that near identical trade marks used in relation to wine and grapes are not confusingly similar. You can download the judgement here: Adv. Sholto-Douglas’s fancy footwork is available here and that of Adv. Morley SC (for the applicants) is available here.
The First Applicant owns the registered mark ZONQUASDRIFT in class 33 in respect of alcoholic beverages (except beer) and the Second Applicant, a company owned by the First Applicant, owns a wine producing farm called ZONQUASDRIFT and sells wine under that mark. The First Respondent runs a business from a farm 1 kilometre away and is, as far as the applicants are concerned, a rather naughty neighbour. According to the applicants, the First Respondent’s use of the trading name ZONQUASDRIFT WINEYARDS CC in relation to farming services and grapes amounts to trade mark infringement, which name is also “undesirable” in terms of the Close Corporations Act. The First Respondent, in turn, counter claimed for the expungement of the First Applicant’s mark on the basis that, amongst others, it consisted exclusively of a geographic term.
Regarding trade mark infringement, the applicants relied on section 34(1)(b) of the Trade Marks Act which extends infringement of a mark to situations where the respondent employs the mark, or a similar mark, in respect of similar goods or services, and not just identical goods or services, provided deception or confusion in the marketplace is likely. The Court accepted the approach, laid down by the same Court in New Media Publishing (Pty) Ltd v Eating Out Web Services, that the appropriate test is to consider whether the combined effect of the resemblance of the marks on the one hand and the goods or services on the other results in a likelihood of deception or confusion. The Court appeared to accept that the marks were essentially identical and was effectively left with a decision as to whether a mark registered in relation to alcoholic beverages would be infringed by the same mark used in relation to grapes.
In deciding against a likelihood of deception or confusion, the Court applied the well-known factors established in the British Sugar case, being 1) the respective uses and users of the goods or services; 2) the physical nature of the goods or services; 3) the respective trade channels; 4) whether in practice the goods are likely to be found in supermarkets; and 5) the extent to which the goods or services are competitive.
Strangely, regarding factor 3, the Court considered the trade channels the Second Applicant had actually utilised instead of considering the general trade channels for the type of goods as registered. Accordingly, the Court weighed this factor against a likelihood of deception or confusion given that the First Respondent sold its grapes on the local market to cooperatives, whereas the applicants exported their wine to Germany.
Regarding factors 4 and 5, the Court also appeared to weigh these against a likelihood of deception or confusion given that the First Respondent does not produce wine but sells grapes which do not appear in supermarkets and which do not compete with wine. Adv. Morley however argued, for the applicants, that there is no clear delineation between farms producing and selling grapes or selling grapes and wine or selling wine exclusively, and that this link between the source of grapes and wine supported an argument for a likelihood of deception of confusion. The Court however didn’t really address this and proceeded to dismiss a likelihood of confusion on the basis that the public would not be confused into believing that ZONQUASDRIFT wine was produced using ZONQUASDRIFT VINEYARDS grapes.
Regardless of whether the public would assume that ZONQUASDRIFT wine was produced using ZONQUASDRIFT VINEYARD grapes, the finding on this point is likely to be controversial given that it appears to be a narrow interpretation of the deception or confusion test. Even if the public would not be believe that the wine was produced from the grapes, they may well, upon encountering the grapes, believe that there is at least some connection in trade between the producer of the grapes and the producer of the wine. For instance, the buyers at the wine cooperatives that the First Respondent sells its grapes to may well consider the grapes to originate from the producer of the wine. This is particularly so in light of the initial interest confusion doctrine.
Interestingly, the Court placed much significance on the geographic nature of the mark in arriving at its decision. The Court appeared to accept that Zonquasdrift is apparently an area surrounding a crossing of the Berg River in the Riebeek Valley where grape farming does in fact take place. This the Court found to operate against a likelihood of deception or confusion in that the public would associate the First Respondent’s ZONQUASDRIFT VINEYARDS mark with a geographical place and not with the Second Applicant’s wine. Perhaps then this judgement is not as controversial as it is being made out to be and that in another case, also involving wine and grapes where the mark has no geographic meaning, a court may be willing to find a likelihood of deception or confusion despite this judgement.
Even more interesting is the fact that, despite apparently considering the mark to be geographic, the Court refused to consider the counter application for expungement of the registered mark. The reasoning appears to be that because expungement was advanced as a defence to the main application, which was shown to have failed, there was no need to consider further defences. I suspect that this may have been the result of the respondents arguing that should the main application fail, then the counter application should not be pursued, with a view to avoiding costs.
Afro Leo's espresso
|No man[e] - Afro leo's trim|
I agree with the clean-living-crew-cut Jeremy who seems to infer that this case does not mean that wine and grapes are not similar goods. So it gets down to the strength of the mark ZONQUASDRIFT, which remains registered, and this tips the balance for me. Although the global appreciation test allows one to consider the strength of the registered mark (and therefore also its weakness) in assessing a likelihood of confusion, there is a point beyond which the Court logically cannot go unless the court invalidates the mark, which it was not prepared to do here. In other words, unless grapes and wine are regarded as dissimilar goods which the Court did not appear to say (in my view correctly), there must be a likelihood of confusion if an almost identical mark remains registered.
Thursday, 14 June 2012
For those who happen to find themselves in Geneva in two-weeks time, WIPO is presenting a 1.5 hour program on pharmaceutical licensing. Titled “WIPO Global Challenges Seminar on Licensing and Prices: New Approaches in the Pharmaceutical Sector,” the program aims to share new breakthroughs in “the field of IP licensing and pricing in the pharmaceutical sector.” Afro Leo hopes these breakthroughs in licensing and pricing increase access to much needed medicines like ARVs, and that looks likely.
The speaker list:
- Dr. Chan Park, Executive Director ad interim of the World Health Organization’s UNITAID Medicines Patent Pool. Dr. Park presented an idea to WHO back in 2010 (pdf, p. 6) that outlined the Medicines Patent Pool’s goal of increasing the development of fixed dose medicine combinations through the creation of a large patent pool. Perhaps Dr. Park will share some updates on this project.
- Mr. Shailesh Pednekar, General Manager, ARV Business and Global Therapy Management, Ranbaxy Laboratories Limited. Mr. Pednekar has been involved in research related to the costs of and access limitations to ARVs for some years, and Africa has been a big part of that work.
- Mr. Gregg Alton, Executive Vice President, Corporate and Medical Affairs, Gilead Sciences. Mr. Alton hails form this Little Leo’s current stomping ground in the San Francisco Bay Area. Like the Medicines Patent Pool and Ranbaxy Laboratories, one of Gilead’s main focus areas is treating HIV/AIDS.
With these speakers on the bill, this program is sure to tackle many issues relevant for IP in Africa. If any readers are able to attend the program, please let us know how it goes!
Full meeting details here: http://www.wipo.int/meetings/en/2012/wipo_gc_lic_ge_12/index.html (Afro-Leo could find nothing on cost)
Registration here: http://www.wipo.int/meetings/en/registration/form.jsp?meeting_id=26822
Wednesday, 13 June 2012
In the last Afro-IP post, Kingsley wrote about Uganda’s coming ability to manufacture medicines in-country and its plans to maintain the current importation of generics from India and China. Kingsley also mentioned that Uganda is a member of a number of international IP treaties. Uganda is able to manufacture and import generic medicines without violating those international treaties because of the exceptions in TRIPs. Exceptions like these are allowed for all developing countries, but Uganda remains one of the very few taking advantage of them. Why?
This is part of the question explored in Carolyn Deere’s fabulous book The Implementation Game: The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries. Little Leo admits she’s a bit behind as this book was published a few years ago, but it is still an excellent read and highly relevant.
Deere explores not only the different manners in which countries implemented TRIPs in their own laws, but also the reasons behind these choices. In the book’s own words, “this book gives substance to the view that developing countries’ policies are often set by others.”
The book concludes that a number of different factors contributed to the economically-strange high level of IP protection put in many local laws when implementing TRIPs. From national politics, to international trade, Deere shows just how many pieces of our global interactions are intertwined in determining IP laws and norms.
One of the highlights of the book is an entire chapter dedicated to Francophone Africa. This is a region often overlooked in English IP writings and Deere does it justice. Unlike many other IP and developing country writings, The Implementation Game doesn’t focus solely on pharmaceuticals or access to medicines. The book covers all forms of IP in TRIPs, although the Francophone Africa chapter does only touch on copyright briefly.
Deere’s predictions in the last chapter are also very interesting to read because of the time that’s passed since the book was published. A few of her predictions are already proving true; others look likely but we’ll have to wait and see. The only slightly negative thing to be said about the book is that the editing isn’t great. There’s a number of typos throughout.
One benefit of Little Leo’s pokiness is that the cheaper ($35.00) and lighter paperback version is now available. Amazon.com also has a Kindle version.
Oxford University Press, 2009
ISBN: 978-0-19-955061-6 (hardcover)
Pages: 342, including charts but excluding bibliography.
List Price: US$95
Sunday, 10 June 2012
"OverviewKingsley tweets as @IPinAfrica
Uganda is a Contracting Party to a number of treaties on intellectual property, excluding the Berne Convention for the Protection of Literary and Artistic Works. It is also an ARIPO Member State.
• The Ministry of Justice and Constitutional Affairs, Uganda Registration Services Bureau (URSB) is the competent office responsible for copyright and related rights in Uganda.
• The website for this office is www.ursb.go.ug
Industrial Property Office
• The Ministry of Justice and Constitutional Affairs, Uganda Registration Services Bureau (URSB) is the competent office responsible for the administration of intellectual property rights in Uganda.
• The website for this office is www.ursb.go.ug
Social Media Presence
Intellectual Property update in Uganda
Afro-IP has reported on various developments including those of practical significance in Uganda including here, here, here and here.
On other IP-related news, we learn that Ugandans now have a chance to manufacture essential medicines in their own country rather than have it imported from China or India. This is good news for technology transfer in Africa and should be an area to which all the energy of health-care NGOs should be directed. On the other hand, we also learn that the medicines advisor at the Health Promotion and Social Development (HEPS) has urged the Ugandan parliament to ensure the unfettered import of cheaper generics drugs until the capacity to manufacture in Uganda is achieved. This is equally right, provided there is no room for complacency and procrastination.
Finally, Afro-IP often discovers something to remind us of the legal history between the United Kingdom and some of the countries in Africa. This time we now learn that only UK design registrations are automatically extended to Uganda.
Uganda is another ARIPO member but, this time around, we found a live and functional website to comment on. As the name implies, the URSB’s website contains basic information relating to various registrable matters including business assets in Uganda. After the visit, Afro-IP took this recurring gloomy view – since the start of the A-Z tour - that the URSB’s website does not sufficiently cater for IP: for example, though it appears to educate on various IP rights, we only found forms TM1 and TM2 as the only forms for IP available online.
But don’t despair just yet; the URSB is very customer-oriented and it is currently conducting a poll on the quality of the services it has on offer. To participate, just visit the website and you will immediately find this on the right-hand side of the website. We hope you can click on all things IP".
Friday, 8 June 2012
Tuesday, 5 June 2012
|Pic cred here|
Well, the ruling has now gone on appeal and the Supreme Court of Zambia has surprisingly agreed with the decision of Mrs Bando-Bobo of the Registry!
Afro Leo is pleased to know that he is not the only commentator who feels that the decisions are at odds with the Zambia legal system - Alan Smith and Nicole Howarth recently published an analysis of the judgement (DH Brothers Industries (Pty) Limited v Olivine Industries (Pty) Limited) in which they describe the situation as "worrisome and perplexing" and conclude that:
"The rationale behind that judgement is that, although Zambian law recognises a proprietor’s rights associated with an unregistered mark, the Zambian Trade Marks Act does not offer any protection in respect of those rights."
For trade mark owners, the position is clear - if you want protection in Zambia for your trade marks then register them! Afro Leo adds that one should use the national registration system to do so - although Zambia is a signatory to the Madrid System allowing Zambia to be designated using an International Registration, the local laws have not been domesticated to give effect to the Madrid arrangement meaning that there is some doubt as to whether IRs are protectable in that country. Indeed, recently he was advised by a local agent that they were not protectable.