A bumpy ride for BMW

The South African public is fond of BMW – in fact, some parking lots look like BMW dealerships. But the South African IP community is equally fond of the brand – thanks to BMW we have a number of valuable decisions on the limits of IP protection. The most recent decision can be described as merely the first heat in a Grand Prix event, as appeal will no doubt be noted. The eventual prize for the winner will be the control, or otherwise, of the supply of spare or replacement parts. Given the expertise of South African road users, the market for vehicle replacement parts is enormous, and growing. The history of attempts to use various provisions in IP legislation to prevent the unauthorised manufacture and sale of spare parts stretches over three decades, and can be traced in decisions from Schultz v Butt 1986 (3) SA 667 (A) onwards.

In this most recent decision, BMW AG v Grandmark International (Pty) Ltd and another (available here), the High Court was asked to make a number of orders, dealing with different areas of law. In the first instance, BMW requested an order declaring that Grandmark was in contempt of an earlier court order. This failed, the court finding that, for contempt, wilful mala fide non-compliance had to be proved.

Secondly, BMW alleged infringement of its registered designs. Most of these registrations could not be relied on, as the registrations were not properly before the court. However, four registrations for a specific vehicle, referred to by its BMW code as the E46, were before the court. These registrations were for ‘aesthetic designs’ (unlike the position in most jurisdictions, the South African Designs Act 195 of 1993 distinguishes between functional and aesthetic designs, but section 14(6) excludes protection for spare parts from the protection granted by functional design registration). The court felt that the registrations, for the configuration of a bonnet, headlight, grill and fender for the E46 BMW model, were of a functional nature, and that the registrations as aesthetic designs were merely to circumvent section 14(6). In addition, the designs failed the novelty test, because they were anticipated by previous designs for BMW automobile body parts. This blogger is no design expert, but, to put it bluntly, the court seemed to find that the designs were merely progressions on existing BMW body part shapes, and were purely functional as they all served a specific purpose – they had to look and fit a certain way to serve their purpose.

The third aspect of this decision that is of interest is the allegation of trade mark infringement. BMW alleged section 34(1)(a) primary infringement. Here, the court could turn to previous BMW litigation for assistance. Our Supreme Court of Appeal has already held that section 34(1)(a) only protects the registered mark as a badge of origin (BMW AG v Verimark (Pty) Ltd 2007 (6) SA 263 (SCA) at 268), and that use of a mark in a descriptive manner does not constitute infringement. What is use ‘in a descriptive manner’? Fortunately BMW came to the rescue again: in Commercial Auto Glass (Pty) Ltd v BMW AG 2007 (6) SA 637 (SCA) para [9] the court held that, while a phrase like ‘BMW spare part’ by a third party would infringe, a statement such as ‘spare part for BMW vehicle’ would enjoy the protection of section 34(2)(c) - a trade mark is not infringed by ‘the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories …’. So, thanks to previous litigation by BMW, the court had no hesitation in finding that no trademark infringement took place.

Will another court come to a different conclusion? Possibly in respect of the designs – one man’s object of beauty is another’s car grill. But the trade mark infringement claim looks like a flat tyre, thanks to the previous BMW cases. It does not appear that a claim for unfair competition was included in the prayers. Might this have been successful? In Schultz v Butt the court held that using the actual mould of the complainant, and then selling the competitive product, did constitute unfair competition. On the other hand, Grandmark threatened a counterclaim for referral to the Competition Tribunal, so a successful appeal might not be the end of the saga.

Peter Fahrenheim in historic victory

If you mention "South Africa" and "world record" today the next few words would most likely be Cameron van der Burgh. However, the IP community also has reason to celebrate the success of Peter Fahrenheim who last week won a historic 4th World Masters Squash title and became the sport's oldest world champion in the process.

At 81, Peter Fahrenheim took the historic title and an incredible fourth World Masters title, with a 3-0 victory against Scotland’s Alex Hamilton.

“I felt a bit lucky! No, I was fortunate to catch Alex on an off day. I watched him on Tuesday and thought I didn’t stand a chance of beating him. It has been a fantastic tournament and a pleasure to be involved,” said Fahrenheim.

Peter is well known to the local and international IP community where his contributions to IP and the people who work in it have been immense. This Afro Leo remembers a time 14 years ago when "Mr Fahrenheim" took the effort to arrange a job interview at a London law firm. I had already resigned when he approached me to help set up in a new country.

Read more about his effort here. Pic creds here.

A review of African official IP websites: no.3 Benin

 

The Olympic Games including its spectacular opening ceremony is obviously the talk of the town as we speak. For this little Leo, “Mr Bean” was outstanding with his trade mark performance with the London Symphony Orchestra at the ceremony. Afro Leo obviously kept an eye on the African countries as most of their athletes jubilantly marched out dressed in elegant attires. However, he isn’t sure why Benin didn’t put in much effort in their attire. Little Leo thinks he knows why: they were not happy that their intellectual property (IP) office still has no website as Afro IP discovered last year. In fact, the only functioning website – although not for its IP office - found last year, does not even exist and/or function any longer.

Benin was one of the countries implicated in this Leo’s opinion summary in which he argues that the two regional IP systems in Africa may be creating a nonchalant attitude amongst members in their respective countries. But before we think it is all bad for IP, Benin recently showed its interest by acceding to the Singapore Treaty on the Law of Trademarks (also reported here on Afro IP). Although this may not mean much, it is a step in the right direction – at least from an outsider’s point of view.

Afro Leo wishes Benin well at the Olympics; and in return, would be happy to see the Ministry of Ministry of Industry and Commerce set up, at least, a basic website for its IP office.

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

For Benin’s Olympic ceremony entrance see here 

According to this report, Benin’s flag bearer was sent packing in less than 5 minutes in Judo and was the first athlete to be eliminated from the event although this report says otherwise 

For a clip of Mr Bean at the ceremony see here 

For the Olympic ceremony theme see here

And finally, Jeremy Hunt enthusiastically reminds the government to table a Health and Safety Bill for town criers 

BMW go spare over imported parts: can you help?

Afro Leo wonders if you
can still get spare parts for
this BMW Isetta ...

"BMW 'astonished' by defeat in South African design infringement case" is the title of this article in Business Day which appears to be as much a trade mark infringement matter rather than a design dispute. The defeat follows a 13-year battle regarding the importation of spare parts into South Africa and an associated design infringement case launched by BMW which it lost last week and presumably may appeal.

Writing on the Automotives + IP LinkedIn Group, Lee Curtis (Harrison Goddard Foote, England) asks if anyone has any further information about this case. If you can help him, please do. You can post information below or email him here.

Finally there is life online in Nigeria

The Commercial Law Department, Trademarks Patents and Designs Registry, Ministry of Trade and Investment of Nigeria (Afro Leo says: "gosh! what a mouthful") announced in a press release earlier this month - precisely, Monday, 09 July 2012 - that it expects to start accepting online registration of trade mark, patent and designs from 16 July 2012. Consequently, the Registry will no longer accept manual applications and bank drafts for payment as these can now be done online. The statement also talks about an online search facility for registered intellectual property (IP) rights - this little Leo's favourite - stating that that would also go live soon (Afro Leo feels that this would be exclusive to accredited agents, so not free to the public).

Interestingly, the opening paragraph of the release said: "In its commitment to providing prompt and excellent service delivery consistent with modern innovation and technology, the Federal Ministry of Trade and Investment, recently engaged an indigenous Technology Consultant to automate itsTrademark, Patent and Designs (TP&D) Registry. This is to ensure convenience and efficiency in its operations, as well as discourage corrupt practices, necessitated by the cumbersome nature of the old process."(Corrupt practices? Afro Leo is thinking whether they are the type reported here  here  here and here on the IPKat weblog or perhaps, some people were claiming to be rights-holders when they are not. Hmmm, he has no idea.)

Digressing for a moment, this little Leo is curious about the new accreditation scheme, (which sounds like customer/user registration to Afro Leo as he has seen here in South Africa), however, he does understand the idea of professional face-to-face or telephone advice from the office (Although Afro Leo doesn't get the point of accreditation in the first place) and even payment of a fee (Okay, fair enough, Afro Leo has seen something like the latter in South Africa). So, what is this accreditation all about? According to the information on the Registry's page:

"Accreditation is a mandatory process for law firms, stakeholders and potential IP practitioners that wish to act as agents. Accreditation helps to identify a legal practitioner or agent in the area of Industrial Property Registrations in Nigeria. By Being an Accredited agent of the Registry, you have an edge over other attorneys and stakeholders that are not accredited. Requests will be treated from accredited agents as a matter of priority and provided with full customer support." 

"...After your accreditation form has been received, the approving officer will certify that you are qualified to act as an agent of the Registry."

To this Leo, the above infers that the Registry is almost acting like the USPTO or even IPReg by appearing to create a separate profession, despite a fused one in Nigeria. He is also aware that Kenya seems to have a similar scheme. (Slightly optimistic Afro Leo says that this is not generally a bad idea, but wishes that it can be done effectively and at least, there must be tough IP exams, not just filling a form and paying a one-off fee. As for the fee, he is not sure if it would be sustainable for whatever it was intended for. Anyway, they know what is best for them.) Taking all that in, this little Leo would like to know whether this is in accordance with the Legal Practitioners Act or with any other enabling law, and would be grateful if readers in Nigeria can comment generally on the issue.

Back to the press release, which ended with this: "In conclusion, this new project is expected to raise the profile of Nigeria in the area of Intellectual Property protection, in a way consistent with best practices across the globe. It is therefore expected that all relevant Stakeholders should ensure a quick buy-in by getting accredited using the online procedure as directed." ("Maybe, Afro IP touched hearts and minds", says Afro Leo)

So what do we learn from this? Well, at last, the Registry in Nigeria has come to the conclusion that having an online presence has its unique benefits ("at least, in their view, it would curb corrupt practices" says Afro Leo). This development is great news indeed considering last year's findings in our A-Z series; but we all know that there is no room for complacency if the office is to keep up with international best practices in IP administration. Commendable progress, excellent vision.

PS: a few suggestions from little Leo:

(a) Tighten up the website as it has an odd space below pages

(b) Upload materials in the publication section under Patents, Trade Marks and Designs (for example, see Kenya's here)

(c) Upload current legislations, regulations, practice manuals, IP case law and policies under the Laws & Policies page

(d) Tried Twitter or Facebook? Trust me, you won't be alone, for example meet @ZARRSO, @COSONNG, @RDBrwanda, @kipikenya and @NOTAPdesk.(Embed on the website too)

Give that girl a ...

Two good friends have sent me the Jack Daniel’s cease and desist letter dubbed the nicest ever! And you can see why here.

If diplomacy is the art of letting someone have your way, then this letter is a trade mark litigator’s Van Gogh. It has ensured that JD’s IP has been respected and at the same time won over a fan and through the viral reaction, very much more. But before we exclaim “Give that girl a ...!”, is this the way in which all cease and desist letters should now be written?

Afro Leo attended two presentations at INTA in May by brand owners of well known marks who strongly advocated a more engaging approach much like the one illustrated by the JD letter. They emphasised tone, less threatening language and the use of persuasion to curb the infringement. Hell, one even suggested a telephone call!

But attorneys chatting in the hallways afterwards expressed their disquiet. There are times when you need to be more forthright.  Some infringers are crooks and wasting time on niceties is costly, inefficient and may even promote the infringing behaviour; the infringer just senses hesitation and weakness which is then exploited. In short, Jack Daniel’s often works better straight up, not diluted. Afro Leo agrees.

However, the trend to be more diplomatic and user friendly has been coming for some time:

1.    In jurisdictions such as the UK and Ireland there are provisions against unjustified trade mark threats precisely to curb abuses, especially by big brand owners. There are also guidelines on what must be contained in letters enforcing trade mark rights.

2.    Big brand owners and attorneys have become more cautious too. The power of the infringer has increased significantly because of social media and the web. An ill conceived cease and desist letter is easily published for the world to see, to the detriment of both the brand owner and lawyer.

3.    The role of the brand is also changing. It needs to be far more communicative and engaging now than it has ever been. Consumers are attracted to brands because they associate with them and an overly aggressive trade mark lawyer is often a turn-off. Who wants to date the steroid fuelled bouncer at the door?

4.    The public is also more aware. It is not difficult to research case law on infringement and it is very satisfying to draft a snorting retort to a letter that is not spot on; and

5.    The persona of IP is also experiencing a shift. Copyright, for example, is at risk of being perceived as an outdated inhibitor in an age where collaboration and sharing has become the rage. In Africa, the perception is more acute because the vast majority of enforcement is by foreign brand owners, and access to information/education that much more expensive, allegedly because of copyright.

So, kudos to JD’s attorney for raising the profile of us lawyers and for becoming the only IP attorney that I know to become famous for a job for which we are infamous. Now go on “Give that girl a hug”.

A review of African official IP websites: no.2 Angola

Last year, this little Leo found a bare cupboard in Angola ; neither the copyright office nor the industrial property office had a website. Twelve months later, the cupboard is still empty. 

The only website found on both trips was that owned by the Ministry of Industry www.mingmi.gov.ao, but it carries no information on intellectual property (IP) in Angola. Browsing this site, - as if he understood a word of Portuguese- this Leo came across this news of an ongoing construction of advanced technology centres with the support of the Republic of South Korea. 

Angolans keen to protect the knowledge in its traditional medicine

On other developments, this Leo has also learned that Angola is taking its intangible cultural heritage seriously as reported this month here,  here , here and here  by allAfrica.com.  Here are some excerpts: 

From the first report: "....The protection of knowledge and practice of traditional medicine in the cultural aspect, the protection of knowledge and practice of traditional medicine in the aspect of intellectual property protection and legal mechanisms and the importance of the drafting of the law on the protection of traditional medicine and property rights of traditional knowledge on the agenda."

From the second report: "More than 400 medicinal plants, root samples and other products are displayed to the public in Luena city, eastern Moxico province ahead of the opening of the Regional Forum on national policy on traditional medicine and complementary practices" 

From the third report: ".....Therefore, to ensure the recovery of the traditions of the Angolan people, as part of their cultural heritage, the Executive intends to establish necessary legal tools for promotion of good practice and guarantee equitable access."

In attendance at these events were senior government officials.

Comment

Afro Leo is disappointed that a year on, nothing has changed for Angola - despite sound economic growth and considerable oil revenues.Where a country has a functioning and reasonable website for its IP office, it is foreseeable - although not guaranteed- that it would also be working hard behind the scenes to promote IP or to make the IP system work in the interest of its people.

Both news on the technology centres and traditional medicine raise critical issues in IP or of similar nature, including technology transfer, IP spin-out and intangible cultural heritage protection. It is crucial that the Angolan government or the relevant Ministry show some desire by ensuring that its IP office is seen to be playing an active role in innovation, entrepreneurialship and creativity by going online. Also, by putting the current IP regime into effective use, lessons would be learned and these could be applied to the current projects at hand.

Protecting Madiba's legacy

Natacha Rey

Afro Leo is pleased to post this guest piece by Natacha Rey on how to protect famous personalities using IP:

When is asked to think of a famous brand they are likely to answer quickly with names such as Coca-Cola, Nike and Virgin. However, the name Nelson Mandela is not likely to feature at all. The reason for this is not that Nelson Mandela is not “famous” or well-known, but rather because people have not been educated to understand that Nelson Mandela is in fact a brand. This is why it is difficult but not impossible to protect his name as a “brand”. The brand “Nelson Mandela” is of course much more than just his name. It includes every association with him, including his legacy.


So, how does one go about protecting the value of his brand?

Quite simply, its value is protected in the same way that one would protect any other brand – through trade mark registration, copyright, design and patent laws, in addition to rights in personality.

1.       Trade mark protection could be sought for the word marks “NELSON MANDELA”, nicknames such as “MADIBA” and “TATA”, associations such as “46664”as well as his signature and possibly a portrait image of Nelson Mandela. Some difficulties can arise because he is so famous so it is important that the names are controlled as trade marks. This appears to have been achieved through licence agreements between the Trustees of the Nelson Mandela Trust and organisations such as the Nelson Mandela Foundation, the Nelson Mandela Children’s Fund and the 46664 Organisation.

2.       The historical speeches that Nelson Mandela has delivered to the public, the literary works he has authored, the photographs of him and various artworks depicting him are all protected by copyright. To the extent possible, he should try to obtain ownership of such copyright.

3.       Contrary to what one might think, the law of designs is not completely irrelevant to the Nelson Mandela brand. The new and aesthetic designs of paraphernalia (such as key-rings, t-shits, caps, shoes and accessories) bearing the Nelson Mandela brand may be protectable by design registration.

4.       From a patent perspective, while the jury’s still out on the patentability of a human being and their DNA, one wonders whether the idea of cloning a person as remarkable and unique as Nelson Mandela might tip the balance in favour of the protagonists.

The most important thing to remember when building a personal brand that you wish to protect is the necessity to educate the public that is in fact a brand. Your personal brand is an asset and if protected correctly, it can grow to be a valuable one

Slippery slope for unregistered Zambian soap mark

In D H Brothers Industries v Olivine Industries (Appeal No. 74/2010, Judgment No. 10/1912 of 29 February 2012) the Supreme Court of Zambia decision held that a national trade mark application could not be opposed on the basis of an earlier, similar, but unregistered trade mark; even where the earlier non-registered mark is well known.

In short Olivine, a Zimbabwe company, applied to register the word mark DAILY for goods in Class 3, including soaps. D H Brothers, a South African company,  opposed and cited its earlier use and reputation in Zambia of the unregistered word DAILY as a trade mark for soaps. The Registrar accepted that D H Brothers had established a reputation and goodwill in the Zambian soap market, connected with its trade mark and found the parties’ marks to be confusingly similar. Nevertheless, she dismissed the opposition and her decision was affirmed on appeal to the High Court.Without giving detailed grounds for its conclusions, the Supreme Court concluded that the decisions of the Registrar and High Court were properly based and dismissed the appeal.

The inability of the proprietor of the earlier mark to oppose is not, however, the end of the story since an action for passing off is still available against the use of the later, registered trade mark.

Source: "ZAMBIA: Well-Known But Unregistered Trademarks Do Not Provide Grounds for Opposition", INTA Bulletin, vol 67, no.13, 15 July 2012

Timbuktu sites: 'cultural' properties in desperate need of preservation

Afro IP doesn't just carry topical issues on trade marks, patents, copyright and designs from Africa, we have also hosted pieces on proprietary issues in African culture, see here, here, here and here. To this end,  this blog is delighted to republished this guest post by Mohamed Jallow, a former interdepartmental associate at the Council on Foreign Relations, and now a program development specialist at IntraHealth International. Mohamed came to the United States as a refugee from Sierra Leone in 2003. This post, which was originally published here on the CFR's blog is entitled, "The Sack of Timbuktu". Here is what he said:

As a history buff, I have always been fascinated with the mystics of the ancient African city of Timbuktu. The city is renowned for its historical significance as the crossroads of civilizations. It is among the few places on the continent that still conjures up nostalgic images of Africa’s intellectual history and achievements. The great African empires of Songhai, Macina, and Mali all had roots in the city. In fact, most of modern West Africa can draw on Timbuktu’s long history of education, religion, and diversity.

So one would think Timbuktu is a city that all of Africa should be proud of.

But not the al-Qaeda linked militants of Ansar Dine. Since taking control of the city following the military coup, and subsequent breakaway of northern Mali (Azawad), the militants have gone on the rampage, destroying musoleums, monuments, and shrines that date back hundreds of years. They claim that the sites are not only un-Islamic, but that they encourage idolatory. They have vowed to continue their campaign to rid the city of all its “ungodly treasures.” Though the focus of the militants for now had been on shrines and musoleums, fears are growing that they might expand their crackdown to libraries that contain rare manuscripts that chronicle the region’s rich history and religious tolerance.

With Mali in disaray, the rest of the world watches in disgust and helplessness. UNESCO has called on the militants to stop the destruction of world heritage sites in what it called “repugnant acts,” and placed most of the city’s revered monuments and shrines on its most endangered list. The United Nations and the regional grouping ECOWAS continue to balk at military intervention after repeated attempts to resolve the political crisis. All the while, the senseless sacking continues.

Since the coup d’état that ousted the democratically elected government of President Amadou Toumani Toure, Mali has been plunged into turmoil, and the country split in two. Tuareg militiamen have declared independence in the north, while Ansar Dine has capitalized on the turmoil to not only desecrate northern Mali’s historical sites, but also to declare a strict interpretation of Sharia law in the territories it controls. Until the coup d’état, Mali was considered a bastion of African democracy, and was hailed as one of the few countries that “got it right.” That adage is now history.

Nevertheless, what continues to amaze me is the lack of outcry at Timbuktu’s desecration. I am not sure why the whole continent is not in uproar; after all, the city and its treasures are part of our collective African history and heritage, not just Mali’s. We in Africa are quick to dismiss western imperialism and the post-colonial plots to dilute Africa’s intellectual greatness, but muted in the desecration of a city that perhaps carries as much important historical significance than any other on the continent. What a shame.

 

From CFR.org. Reprinted with permission. For more analysis on terrorism and foreign policy, visit CFR.org.

Comment 

Afro Leo thanks the Council on Foreign Relations for its permission to republish this unfortunate but thought-provoking piece. He adds that it is equally a shame that this incident was not given appropriate coverage by well-known international media outlets. Digressing from the pertinent message, this little Leo was particularly drawn to the words, 'intellectual' and 'heritage', and how they were used by the author. If put together, the term conjure up the sort of discourse as highlighted in the introduction on intellectual property (IP) and intangible heritage such as, traditional knowledge, genetic resources and expressions of folklore. 

Cultural heritage and IP have one or two things in common: they can be regarded as property - either owned by a community of people or by one or two individuals - and are creations of the human mind or intelligence. The author's disappointment is shared by this Leo, who himself has witnessed IP apathy in most African countries. However, he is not quite sure whether there would be an uproar around Europe - in growth or in recession and with 24/7 media - if for example, Stonehenge and Avebury - although not comparable with the sites of Timbuktu- were to be violated.

So should African countries respect and value their cultural heritage -including intangible ones- more than the widely recognised IP?

Africa IP community pays tribute to Madiba

Thank you very much to those who wrote in with tributes and content following this post. Unfortunately, space on blog posts does not permit us to upload all of the content you sent in so we have chosen a pic per tribute. Hope that's ok. We also have a volunteer post on how IP can be used to protect his legacy, coming up next.

In alphabetical order then:

“You are still the same great person you have always been, selfless and bold. Happy Birthday Nelson!” ( ACC - The Anti-Counterfeiting Collaboration, Nigeria.)

A&A Choir

"Adams & Adams celebrated Mandela day with  tea and cake and an address from the Chairman Dario Tanziani and then we listened to the staff choir singing. After that a group of 48 volunteers are going to Vukuzenzele Primary School to paint and repair their bathrooms. The staff are overjoyed  for the opportunity to recognise a living legend who sets an example for the entire African continent.

Viva Mandela!"

"Happy Birthday Nelson from Coulson Harney, Kenya, you are a great inspiration on determination and self belief "

Appreciative smiles for DMK

"DM Kisch was involved in an amazing upliftment program which included painting and fixing classrooms in the hamlet of Rhodes in the Eastern Cape (not to be confused with the academic establishment in Grahamstown). Notwithstanding the freezing conditions, DM Kisch gave back to the community in true MADIBA style!!

Happy Birthday Nelson!"




Spoor & Fisher wrote in to say:  "Dear Tata, thank you for being such an inspiration to us all. Happy Birthday Madiba! From the partners and staff at Spoor & Fisher"

"Congratulations on reaching 94! We thank and admire you Madiba!"  - Werksmans IP

Calling hands-on authors!

Telena Cassell (Howard University School of Law) has written to tell me about a publication opportunity in an upcoming issue of the African Journal for Science, Technology, Innovation and Development (AJSTID). She says:

"The journal's editorial board welcomes submissions on Intellectual Property from lawyers and scholars that have hands-on experience with IP issues in Africa. Short statements are also being gathered for a paper that addresses the lack of sufficient health-related Intellectual Property Rights framework in Africa".

If you are interested in submitting a brief statement for inclusion in a paper on health-related IPRs in Africa, please email Telena as speedily as you possibly can. Statements or brief suggestions for solutions need not be longer than a few sentences.

Paying tribute to a legend

The most important thing to come out of Africa over the past century is not food, resources, or the first heart transplant but a person who turns 94 today. His name is Nelson Mandela. As 48 million people in South Africa and many more worldwide celebrate his birthday, we invite material, footage or anything that can be posted on this blog to pay tribute to the legend. And, if anyone wants to do a guest post on how the Madiba legacy can be protected using intellectual property, please email us here.

Copyright Licensing brings you Youtube Senegal

The power of a licensing agreement, or thousands of licensing agreements managed through a single entity. That’s what brings entertainment to the masses, well brings it legally anyway.  And the African masses are getting access to more local entertainment, most likely thanks to a new licensing agreement.

Earlier this week, Youtube Senegal launched, bringing the total number of localized Sub-Saharan African Youtube channels to six.  As one of the top stories on telecom news-site Balancing Act emphasizes, these local Youtubes wouldn’t be possible without licensing deals with local content owners via collecting societies.

Before Google goes through the trouble of handling the appropriate licensing agreements, the company gauges whether there is enough interest for a local Youtube.  There could be lack of interest in the remaining 40-some countries.  However, the relatively small number of localized SubSaharan African Youtube channels is also likely a symptom of difficulties finding the proper rights holders or collecting societies.  What to Afro-Leo readers think?

Currently available Sub-Saharan Africa Youtube Channels:

• Youtube.co.za launched May 2010
• Youtube.co.ke launched October 2011
• youtube.co.ug launched December 2011
• youtube.com.ng launched December 2011
• youtube.com.gh launched June 2012
• youtube.sn launched July 2012

(all dates and urls from the Google Africa Blog)

Minilab drug testing noble but not olympic - Tanzania

Tanzania: Pharma company Merck donated four minilabs to the Tanzania Food and Drug Authority last month to help boost control measures of counterfeit and sub-standard medicines, particularly in rural areas. (AllAfrica)

Due to the compact nature of the Minilab (all the devices and resources required for drug testing are contained in two transportable units, each the size of a standard suitcase) and its independence from external energy supplies, the tool is well suited for testing in the field. Currently around 470 Minilabs have been provided to 78 countries, more than half of which are located in Africa and a third of which are located in Asia. (Merck)

where does Minilabs finish? 

The cost of a Minilab is around 4000 euros each which equates to a 2 million euro investment worldwide with 1 million for Africa. The article quotes from WHO stats that in some countries in Africa between 30%-50% of all prescription and over-the-counter medicines sold to consumers are counterfeits, often leading to death.

Afro Leo appreciates that Merck and other pharma companies spend a lot on anti-counterfeiting initiatives and that the Minilab project is just one of many, but it is still worth noting that the cost of the drug testing facility used to preserve the integrity of the Olympics 2012, a single event, is 25 million euros - over ten times the cost of the Minilab project. (The Telegraph)

An opinion summary plus a review of African official IP websites: no.1 Algeria

First, Afro Leo would like to use this opportunity to thank readers for joining with him in sharing moments of excitement as well as enduring despair throughout the A-Z series. On a personal note, this Leo is grateful for the emails and Twitter messages that he received during his tour across this continent, which is endowed with natural beauties and resources; extremely diverse, even within each country, and home to some of the world's fastest growing economies.

It is now just over 12 months since this Leo took on the challenge to tour all 54 countries in Africa -beginning with Algeria  and ending with Zimbabwe - in search of their intellectual property (IP) offices online. Over these months, you would have gathered that each week's conclusion was clearly inconsistent with conclusions drawn from other weeks: one week may be exciting, while another is clouded with despair and/or perhaps, measured, when other factors are put into consideration.

All Afro Leo wanted to experience on this tour was a 'decent' website. ["So what do you mean by a 'decent' website?", Afro Leo asks] Basically, this Leo is thinking of a website which is not only instructive to users --be it IP owners or their representatives-- but also treats them like customers. Another feature which this Leo particularly admires is a functioning database of registered IP rights which generally helps in IP due diligence.

Without naming them, certain countries disappointed -- in particular, those that are well-positioned in economic and social terms, to accrue the benefits of a better tailored but organised IP regime – one or two met the required expectation, and a handful exceeded expectation. But the key observation in the series was the apathy among most members of the two regional IP organisations, OAPI and ARIPO, to ensure their IP offices own and/or maintain a 'decent' website. This, Leo hopes, is not complacency on the part of these member countries or a national office decline due to the existence of the regional system. And, for those that disappointed, one can only speculate as to the reasons why we found no website at all for some and, where we found one for others, it appeared inadequate. Are these offices not just bothered at all to own and/or maintain a decent website? Or is funding and/or human capital an issue?

This Leo is not just aware that you trust computers or IT in general at your peril (see recent examples here and here), but also that having a website is not a panacea for the state of IP in these countries. In addition, we must never lose sight of the fact that advanced economies once had IP offices without websites [Afro Leo thinks this is providing the ammunition of 'unwarranted' excuses or defences and even complacency]; so, perhaps, this Leo might have to make himself a bit more useful by finding out how these advanced economies coped before the advent of the internet [Afro Leo says, "good luck with that"]. Nevertheless, he hopes readers can agree with him that since we now live in the digital era, a website for the IP and business names registry should be seen as a necessity in order to ensure an orderly and fair environment for commerce.

Coming soon: a detailed analysis and consolidation of my findings, but for the moment, what do readers think?

For the European experience on regional IP protection, see here, here and here 

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Algeria: a year on and what has changed?

Last year, we found functioning websites for both the copyright and the  industrial property offices in Algeria. Nothing has changed on National Office of Copyrights and Related Rights’ (ONDA) website apart from visitor numbers to the site which has grown from 601,000 to over 657, 000.

As for the Algerian National Institute of Industrial Property (INAPI), an update is that the domain for this office will soon change from www.inapi.org to www.inapi.dz.

Afro Leo continues to admire how INAPI keeps its users informed with changes, seminars and so on; but he would also like to see either office or both, utilise social media for user interaction.

Trade Mark checklist for infringement and oppositions - Part 2

This is the third post in a series that looks at the European approach to the test applied to the most common of the trade mark infringement/opposition provisions. The first post argued for closer alignment with the  systematic European approach to increase the quality of first instance decisions (amongst other things), the second analysed the "principles" as applied in Europe and their relevance in RSA, and this post looks at how these principles are applied  as a checklist by both the European Community Trade Mark Office as well as the UK Intellectual Property Office.

The OHIM Office has a very useful set of guidelines (updated on 1 June 2012) for applying the test and links are supplied along the way. This guide should be accompanied by the trusty South African Law of Trade Marks - Webster & Page.

Examples of where this checklist, with slight variations, has been applied in judgements (June 2012) can be located here (UK) and here (OHIM - check decision under miscellaneous).

The checklist:

1.       Comparison of the marks/signs concerned

This involves an analysis of whether the marks concerned are similar a. visually, b. phonetically or c. conceptually bearing in mind the marks viewed as a whole and having regard to the distinctive and dominant components.

The conclusion reached here is not whether the marks are confusingly similar just whether they are similar. If they are found to be similar then it is useful to assess what degree of similarity they share eg a high or low level of similarity. This aspect of the test has some important nuances for countries where, for instance, there is diversity in language and accents.

If the marks are not similar that is the end of the enquiry. OHIM Guideline here.

2.       Comparison of the goods/services concerned

This involves analysing:

1.       The respective uses of the respective goods or services;

2.       The respective users of the respective goods or services;

3.       The physical nature of the goods or acts of service;

4.       The respective trade channels through which the goods or services reach the market;

5.       In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;

6.       The extent to which the respective goods or services are competitive. This enquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.

If the services/goods comparison finds that they are dissimilar the enquiry stops there. OHIM Guideline here.

3.       Strength of the earlier mark

This involves an analysis of the strength of the earlier mark relied on either because of its inherent distinctive character or as a result of the use made of it. This analysis should conclude that the more distinctive the earlier mark, the greater the likelihood of confusion ie wider protection is given the stronger trade marks. This also means that even where a trade mark is registered, evidence of use of the trade mark should be considered to show that the mark is a strong mark.

4.       Nature of the consumer

The average consumer is deemed to be reasonable observant and circumspect but one who does not consider the marks side-by-side and who suffers from a degree of imperfect recollection. However, one must decide if the consumer/end user of the mark is in fact an average consumer or, for example, a less sophisticated person or perhaps a more discerning customer. These factors influence whether a likelihood of confusion may occur. They are particularly important in a country, like RSA, which is so diverse.

5.       Other factors - global assessment

The global appreciation test requires one to appreciate that a low degree of similarity between the marks/signs may be offset by a high degree of similarity or the goods/services and vice versa. Other aspects to consider may be whether there is evidence of actual confusion or previous decisions to consider.

OHIM Guidelines on the global assessment may be found here.

Olympic springboard beckons for Brand Kenya

Brand Kenya is to make the most of the forthcoming London Olympics as a way of projecting the country in a bright, positive manner before a global audience.  The country is to be showcased in Kenya House,

As the official home to the Kenyan National Olympic Committee during the games, Kenya House is a window into the wealth of unique opportunities the country has to offer, from visionary investments and trading ideas to its rich cultural heritage and dominance in tourism to Africa. The House will be open to the public for a number of events reflecting trade, tourism and export opportunities in the country. Visitors will also be able to watch live coverage of the Kenyan team competing in their various disciplines on the House’s big screens.


this sounds to Afro Leo like a great initiative and he wishes it well.  Are other African nations making use of the London Olympics as a springboard for trade promotion, he wonders?

Registering a trade mark in Sudan? Then read on ...

You don't need to go to extremes
like this in order to get your
trade mark registered on Sudan

Afro Leo has been prowling around Sudan, and has picked up the scent of Trade Mark Circular No. 1 for 2012, which the Registrar of Trade Marks has issued addressed to local trade mark agents and brand owners.  They are requested to observe the following conditions for the purpose of organization of work and procedures:

1. If the Registrar of the opinion that the filed application is incomplete, he will request the applicant to complete or correct the application within one month, otherwise the application will be considered abandoned.

2. After expiry of opposition term (maximum 8 months), the applicant must complete registration procedure and issuance of registration certificate within 2 months, otherwise the application will be considered abandoned.

3. Application for renewal of a trade mark registration should be filed within six months before expiry of registration term with a grace period of six months after expiry date for late renewal with penalty. The Registrar has allowed a six months from 8 July 2012 for renewal of trade marks that have already expired and not renewed on time, otherwise the registrations will be considered lapsed.

4. The Power of Attorney stamped by the corporate seal of the company and notarized by Notary Public will be acceptable without legalization up to the Sudanese Consulate. However, the Extract from the Commercial Register and the Certificate of Incorporation are still required to be legalized up to the Sudanese Consulate.

The Registrar has also issued an internal circular to the staff of the Trade Mark Office, telling them to accept applications only when the notarized Power of Attorney and the legalized Certificate of Incorporation are submitted along with the application.

So now you know what you have to do!

Source: news bulletin from SMAS INTELLECTUAL PROPERTY, Khartoum, Sudan