Wednesday, 30 October 2013


Alliance for Food Sovereignty in Africa warns ARIPO over drift to UPOV 91

"Farmers’ Groups Warn ARIPO About Implementing UPOV 91 In Africa" is the title of a piece posted by Catherine Saez to Intellectual Property Watch, here, today. In brief:
A collective civil society group has raised concerns about a draft Africa Regional Intellectual Property Organization (ARIPO) plant variety protection law, which is based on the 1991 version of the International Union for the Protection of New Varieties of Plants (UPOV). The draft law, which may come up for adoption in November, would criminalise farmers’ rights and undermine the seed systems in Africa, they said.

The group is the Alliance for Food Sovereignty in Africa, which includes networks and farmers’ organisations working in Africa, such as the African Biodiversity network, the Coalition for the Protection of African Genetic Heritage, Friends of the Earth Africa, La Via Campesina Africa, Community Knowledge Systems, and the Network of Farmers’ and Agricultural Producers’ Organisations of West Africa.

In their 18 October statement, ... the groups say they are “gravely concerned” about the draft law ... As part of an effort to harmonise seed laws in Africa, the regional legal framework is “designed to facilitate the transformation of African agriculture from peasant-based to inherently inequitable, dated and unsustainable Green Revolution/industrial agriculture,” they said.

It is also designed to push African countries into joining UPOV 1991, they added. The new framework would “make it illegal for farmers to engage in their age-old practice of freely using, sharing and selling seeds/propagating material; a practice that underpins 90% of the smallholder agriculture systems in sub-Saharan Africa.”... ”
More on the Alliance for Food Sovereignty in Africa here.
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Tuesday, 29 October 2013

Darren Olivier

Counterfeit drugs illustrates need for tough enforcement

"Counterfeit drug syndicates are flooding the Zimbabwe market with consignments of fake anti-retroviral drugs (ARVs), expired medicines and sex enhancers, putting the lives of thousands of people at risk" the Zimbabwe Independent reveals through AllAfrica on 25 October. Some of these drugs are being supplied from South Africa.

The Economist - Poison Pills
The news is horrific but nothing unusual to this blog (see here for example) which regards counterfeiting as Africa's single largest IP problem. The Economist recently highlighted the global problem citing how difficult it is for "poor countries" to take advantage of technologies that help identify and track fake drugs (see article beneath pic alongside). 

Against that backdrop, Afro Leo was dismayed to read some of the comments over the weekend in the "Academics" submissions on RSA's draft IP policy regarding IP enforcement. 

"Special care should be taken to avoid customs/border enforcement of patents and civil trademark 
violations, especially with respect to medicines." (ed: patent enforcement is of course not part of our anti-counterfeit legislation but fake (and even generic drugs) frequently infringe registered trade marks which, as illustrated by article require effective customs enforcement)

"Improving IP enforcement through, for example, reducing the availability of certain enforcement mechanisms such as interdicts, which may actually benefit the general populace, (ed - certainly not when it comes to counterfeit drugs) whereas strengthening enforcement will almost always work to the advantage of rights holders, often at considerable cost to the public purse. (ed, we are all rights holders. The cost of enforcement can be expensive (often borne by the enforcer because damages are so difficult to prove or recover, and cost awards inadequate) but without it, the potential benefits of IP protection (fostering innovation, wealth and job creation etc) become useless. It may be interesting to note that the cost of enforcement in RSA is significantly cheaper than in other parts of the world)

"In our view, the issue of enforcement – while being important – is a subsequent issue to creating  topical and progressive IP regimes in our country." (ed - this cannot be. A topical and progressive IP regime is ineffective without proper enforcement - the two are at least equally important. The article illustrates this as much as a death caused by a motorist with fake brake pads.)

"once copyright enforcement begins in earnest, then, without well-developed mechanisms in place to secure non-infringing channels of access to knowledge, many learners will be in a precarious situation." (ed the reality is that copying is endemic to our society and copyright enforcement inadequate. One in every three businesses uses infringing or pirated software or is under licensed because they are using "learner" licenses, specifically available by software providers to facilitate access to knowledge. That said, this Leo is agreement that several non infringing channels/exceptions need to be made available eg the blind).
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Tuesday, 22 October 2013

Darren Olivier

RSA's draft National IP Policy - Gilfillan's and SACCI's notes

Graeme Gilfillan of NISA has filed his response to the draft national IP Policy which can be located here. Nisa is an organisation devoted to the local entertainment industry and Graeme's comments are based on his wealth of experience negotiating royalty and distribution agreements for local talent based, primarily on copyrights and performing rights. He is also a forensic investigator in this field.

"There is a dire and overdue need for an IP policy for South Africa, as there is for a co-ordinated 
approach. However to be effective South Africa needs to drop the ‘one size fits all’ approach to IP. The requirements and challenges for copyright are not the requirements for patents, trademarks and 
designs. Whilst a lenient approach to limitations and exceptions with generic medicines may be 
appropriate as policy, the same applied to copyright has disastrous outcomes."

Meanwhile, in a press release yesterday, the focus of The South African Chamber of Commerce and Industry (SACCI) is quite different. Graeme's concern is primarily local creatives whereas SACCI's focus in on the effect of the draft policy as an incentive for foreign investment.

"SACCI welcomes the policy document in principle, as it is necessary to have a discussion on the long-term plans for IP. However, it is also necessary to keep in mind the highly sensitive nature of IP and its potential effect on investor confidence and innovation across business sectors. The single most important consideration in IP law is the impact any amendments might have on investor confidence. This is because IP is by its very nature forward-looking and needs to continue to consider future scenarios. So whereas it may seem tempting to impose restrictions on IP rights due to "public interest" considerations, any such intrusion is likely to significantly damage the origination of future IP in South Africa. In turn, this will mean that South Africa loses out on investments, job creation, technologies and business opportunities associated with the life cycle of IP creation. The ultimate end-point of such a situation is that South Africa will not only lose essential opportunities, but also be cut off from end-user technological opportunities."

The two, at times, contrasting standpoints illustrate just how difficult a co-ordinated policy is to achieve. At the very least DTI should be congratulated on attempting to do so. It has galvanised thought on the topic as these comments and other listed below explain.

Additional commentary:

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Aurelia J. Schultz

Tunisia joins Madrid

The Protocol, of course.  The country of Tunisia did not simply hop over the Mediterranean and plop down in the center of the Spanish capital, though that is quite an amusing image.

africa outline map with madrid protocol members WIPO announced this week that Tunisia has joined the Madrid System for international trademark registrations.  As explained in the WIPO press release, the Madrid System allows a trademark owner to register their mark in many countries around the world with one application, one set of fees (the fees do go up the more countries you add to your list), and one currency (because we all love Swiss Francs).

Tunisia is the fourteenth country from Africa to join the Madrid System.  The most recent prior entry was Rwanda this past August. Perhaps the two most surprising omissions from the list of Madrid Protocol signatories are South Africa and Nigeria, especially since nearly all of South Africa’s neighbors have joined.  (Zimbabwe is the odd one out there.)

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Monday, 21 October 2013

Darren Olivier

5th Annual IP Crammer - book your seat

This year Adams & Adams is hosting the fifth annual IP Crammer. It takes place this Thursday morning at the Michelangelo Hotel and is a packed program devoted to IP in 2013, with a special focus on IP commercialisation and domain names among the usual trade mark, patent and counterfeiting updates.  It coincides with the launch of the Adams & Adams' IPLive service, features two regular contributors to this blog as speakers, and is chaired by Philip Ginsburg SC.

There are a few seats left so if you are interested in attending, please contact Karabo Moloi by emailing her, here. If the invitation is unclear click here.

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Sunday, 20 October 2013


Why aren't there CMOs for software?

Most countries have a copyright law that provides for Collective Management Organizations. These are typically non-profit or state-run organizations that act on behalf of copyright holder members. The CMO collects royalties from copyright users, usually by issuing fee-based licenses that give users access to a broad selection of copyrighted works.
We are stronger together than apart...
The Fall of Poland, Jan Matejko, 1866

The Nigerian Copyright Act provides a good definition of a CMO: “an association of copyright owners which has as its principal objectives the negotiating and granting of license, collecting and distributing of royalties in respect of copyright works.”

Computer source code is subject to copyright, so programmers constitute a class of "copyright owners." Why, then, has this Leo never heard of a CMO for software developers?

CMOs are particularly common for music-related copyrights. In Kenya, there are three such CMOs, one each representing: music authors/publishers; sound recording producers/owners; and music performers.

Music is ideal for a CMO because users typically use a wide variety of copyrighted works, but each work is used relatively infrequently. For example, a retail business may have background music provided by a radio playing a wide variety of music from many musicians. Thus a typical user owes a large number of small royalty payments to a large number of authors. The CMO enhances efficiency by centralizing collection of such royalties.

On the face of it, software seems quite different. Most people typically use a relatively small number of software programs, and use them quite frequently. There is also no equivalent of radio (i.e., a legitimate source of entirely freely distributed music) for software. The standard model is for users to purchase an ongoing license to use software, and the user receives a personal or business copy for such use.

Nevertheless, might there be some similarities between software distribution and music distribution? Or, might a total re-design of the current software distribution model - a re-design that looks more like music distribution and makes use of CMOs - make sense for the software industry?

Some software developer companies (particularly those making mobile phone apps) have literally hundreds of independent pieces of software on offer, much like some musicians have vast repertoires of music. Furthermore, cloud computing is already changing the standard model of software distribution, by allowing users to access programs and data stored on remote servers (rather than being stored locally).

Perhaps a pizza or chicken restaurant would benefit from having access to thousands of video games sourced from hundreds of developers, all of which is licensed for a set fee from a CMO. Or perhaps individuals could buy a license from a CMO to gain access to thousands of apps for their mobile phone. Or perhaps businesses could buy a license from a CMO and gain access to hundreds of types of business software from different providers.

Readers, do you know of any CMOs (or similar collective rights organizations) for software?
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Friday, 18 October 2013

Caroline Ncube

RSA's National IP Policy - academics' joint submission

Following UCT's invitation to crowd-source comments on the draft national IP policy (here), several scholars jointly submitted comments on the draft IP policy yesterday (disclosure: this Leo is one of the contributors). It is couched in a sympathetic and constructive yet critical manner as its authors applaud the initiative to begin national dialogue on the IP policy while calling for an extensive and rigorous engagement with the process going forward. The submission (available here) is in the nature of an outline document – it comments on the broad issues of principle, and indicates where its authors find the draft policy desirable or undesirable. It also contains some recommendations which it suggests should be enacted through the amendment of  relevant IP legislation.

It concludes by calling upon government to ensure that the resultant IP policy is informed by the following principles-

  •  IP policy must be development-oriented, aimed to benefit all sectors of society, particularly the most vulnerable, and consistent with the fundamental rights under our Constitution.
  • The policy should not under any circumstances endorse any more than the minimum requirements of the TRIPS Agreement and other international obligations to which South Africa is a party.
  • All available flexibilities (drawn from TRIPS, Doha Declaration, and other international, foreign and domestic law sources) should be incorporated into the policy.
  • In view of the severe public health impact of unexamined pharmaceutical patents, an express commitment is needed to the establishment of a patent examination system.
  • IP laws and administration should comply with the requirements of the Bill of Rights.

It also calls for the following urgent measures to be taken:

  • Further extensive public-wide consultation on this IP Policy, and on each legislative and policy draft emanating from this process.
  • The establishment of a working group comprising government, academia and civil society, to advance the objectives of this policy process.
  • The necessary investigations, and cost and impact assessments of the institution of an examination system.

The authors of the submission are:
Dr. Tobias Schonwetter, University of Cape Town
Professor Yousuf A Vawda,University of KwaZulu-Natal
Associate Professor Caroline Ncube, University of Cape Town
Mr. Andrew Rens, Duke University, U.S.A. & University of Cape Town
Prof. Brook K Baker, Northeastern University, U.S.A. & University of KwaZulu-Natal
Dr. Andre Louw, University of KwaZulu-Natal
Dr. Bernard Maister, University of Cape Town
Dr. Bram de Jonge, Wageningen University, The Netherlands & University of Cape Town

Other comments available on or reported upon on Afro-IP - 

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Monday, 14 October 2013

Darren Olivier

RSA's Draft National IP Policy - Stellenbosch Uni notes

Stellenbosch University has produced a 72 page document commenting on the draft policy. The commentary consists of:

1.   An overview of the DNPIP, as a whole, prepared by Professor OH Dean, Chair of IP Law.
2.   A commentary on those aspects of the DNPIP dealing primarily with copyright, trade marks and related issues prepared by Professor OH Dean.
3.   A commentary on primarily patents, design and technology transfer matters prepared by Dr M Kleyn, a Fellow of the CIP.
4.   A commentary dealing primarily with matters pertaining to the internet prepared by Mr C Jooste, a Fellow of the CIP.
5.   A commentary dealing primarily with computer programmes prepared by Dr S Karjiker, a Fellow of the CIP.

It is well constructed, comprehensive and damming, and well worth a read even if just to understand where South Africa stands in terms of its international obligations. Without wanting to single out any one of the authors, the conclusion of Dr Kleyn is a consistent message throughout the read:

"The concept of a national IPP has merit. Although there are many aspects raised that are encouraging and can be supported, the presentation, form and content of the IPP are of poor quality, contains substantial material errors of fact and law, provides no substance and is without any empirical data or proper studies. The IPP should be referred for redrafting and it is strongly recommended that proper public consultation with the relevant IP role players and experts is done."

For a collection of commentary, please check these out:

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Friday, 11 October 2013


Marius Schneider calls for an African IP practitioners' association

Here is Marius Schneider's guest editorial for the November 2013 issue of the Journal of Intellectual Property Law & Practice (JIPLP, here). Apart from being a founder-member of the JIPLP Editorial Board, Marius heads IPvocateAfrica, a Mauritius-based IP boutique firm catering for clients' needs for IP protection and enforcement in Africa.
Call for an African IP practitioners' association

It is impressive to see the list of associations to which some IP professionals belong. This is particularly the case in the EU. Europe is complex and diverse and so are the IP right-holders' associations. It is not unusual for EU colleagues to be members of national (eg GRUR, APRAM) and regional (eg ECTA and MARQUES) associations; for niche sectors there are niche organisations (eg the Pharmaceutical Trade Mark Group); for the ‘IP intellectuals’ there is AIPPI; and then there is the inevitable INTA. Even small IP boutique firms will often be members of several associations, while large law firms use a considerable proportion of their business cards and letterheads to list all associations to which they are affiliated. Sometimes I get the impression that some colleagues ‘only’ go to conferences and never deal with any files (but that is a topic for another editorial …).

African IP practitioners have less opportunity to be active in IP associations. There is no pan-African right-holders' association. However, some colleagues belong to local groups or attend INTA meetings. The latter is especially the case for colleagues from ‘competitive markets’ for IP services, such as South Africa, Kenya and Nigeria. INTA provides a forum for meeting clients, foreign associates and forging new contacts. However Africa is not a top priority for INTA and its members: in the recent past the annual ‘INTA Africa Session’ has been dropped and the sessions remain sadly neglected, judging by the number of attendees (allthough there seems to be a tendency amongst some colleagues to attend INTA without attending any of the sessions - but this is again another editorial topic …).

Many African colleagues attending INTA face various challenges: both the event itself and annual membership are expensive, and so is travelling to the general meeting. The visa requirements are also burdensome and it is possible to spend more time lining up in embassies to obtain travel authorisations than at the actual conference. Nor is the annual general meeting the kind of place where one can spontaneously meet new business contacts: in order to be ‘efficient’ each meeting must be planned meticulously (although some have developed their specific strategy to meet ‘almost everyone’ – for example the JIPLP Editor in Chief, who stations himself at the booth of Oxford University Press – but INTA meeting strategies are yet another subject for those desirous of writing a JIPLP editorial).

So would there be room and need for an African IP practitioners' association and who would benefit from it? IP practitioners, right-holders, national and regional IP offices would all benefit: colleagues could exchange information and experiences in order to promote and foster best practices, comment on and shape new IP legislation and more generally raise awareness for IP. The association would allow practitioners to create synergies and networks with other African colleagues and to promote local African IP lawyers - even from less familiar jurisdictions. With ‘Africa rising’ (the title of The Economist on 3 December 2011 and Time Magazine on 3 December 2012, echoing the new dynamic on the African continent) there is a rising need for IP protection; the promotion of IP practices from all over Africa can only benefit practitioners and, where practitioners' skills and understanding improve, their clients will also benefit from the promotion of best practices and direct contacts with local lawyers. African IP offices could also use feedback from the association and its members. Like its ‘sister-associations’ such as ECTA or MARQUES, the African IP practitioners' association could also participate in working groups and stakeholder dialogues with national and regional IP administrations and enforcement bodies.

With the help of modern technology (e-newsletters, collaborative websites, video-conferencing), volunteer work and a minimum of permanent staff, the association could be efficiently run and operate with a minimal membership fee. This would make the association attractive and accessible to many African and non-African practitioners and right-holders. Conferences could be held in major African cities easily accessible by plane. Enough destinations for the first few years immediately spring to mind. So what are we waiting for …?
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Darren Olivier

RSA's Draft National IP Policy - Moubray's notes

With only 6 days to go before the deadline to comment on RSA's draft national IP Policy, Hugh Moubray of Spoor & Fisher has shared his thoughts on the interface between innovation and patents in South Africa. His article The Importance of innovation and the patent system in South Africa can be located here. What Afro Leo likes about Hugh's article is that it is not simply a critique of the draft policy, it proposes a solution and, in doing so, articulates a basis and reasoning for his approach.

He addresses and provides cogent arguments for the patent system as a means of "leveraging the power of self interest [which] leads to innovation, growth and prosperity", why RSA's current system is more than just a deposit system, the virtues of the system as it works in RSA, why it does not produce "weak" patents and why so-called "evergreening", in principle, is not necessarily bad though he explains how the effect of unwarranted "evergreening" could be limited so that they are not a barrier to generics, and why "evergreening" would not be eliminated, even with an advanced merit based examination system. In doing so, he explains how our current law caters for public concerns in requests for interim relief.
Hugh Moubray

He believes that if the patent system is to be improved, the "focus should be on improving the patent litigation system" and to that end he supports a specialist patent court which he feels is supported by the existing Patents Act. He also feels that the "most encouraging" aspect of the draft IP Policy is on the topic of IP enforcement.

".....there are therefore three factors which, in my view, contribute to
South Africa having a prosecution system which has the best of a deposit based
Examination system and a merit based examination system. As mentioned these
three factors are the legal requirement that a patentee is not entitled to any
relief on an invalid or partially invalid patent, the practice of amending patents,
and the examination of international patent applications"

".....I believe that a merit based patent examination system would be
very costly and would be likely to lead to significant delays in the grant of
patents. In addition resources would be wasted examining patent applications
which have no commercial value. On the other hand, a properly functioning
specialist patent court would provide a very focused and effective approach to

the issue of patent validity."

For previous notes on the draft IP Policy see:
·         Harms’ notes
·         Patent notes
·         Copyright notes
·         UCT’s notes

·         Trade Mark notes

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Thursday, 10 October 2013

Caroline Ncube

IP policies in Africa: No 5 - Burkina Faso

This week the African IP policies series stops in Burkina Faso. An IP policy is not listed on WIPOLex with the country's other IP texts. In an interview in April 2012, the Minister for Scientific Research and Innovation, stated that the country was developing an Innovation policy. This Leo could not find any further information on the development of the Innovation policy and it would be safe to say that it is still in development.

For an interesting overview of Innovation policy issues for developing countries, this Leo recommends the OECD's Innovation Policy: A guide for Developing Countries, which is available to download in pdf, for free. It discusses the link between innovation and intellectual property and states (at p50):
      "The key innovation priority for developing countries is to acquire and use
        knowledge that already exists, which is less costly and less risky than creating
        new knowledge. While some of this knowledge is protected by intellectual
        property rights and therefore would have to be purchased, an enormous
        amount is in the public domain. Therefore, policies that facilitate access to
       global knowledge are critical."
An approach this Leo heartily endorses.

For a note on the Burkina Faso's official IP websites see Kingsley's post here.
To date this series has visited Algeria,  Angola , Benin and  Botswana and found that none of them have IP policies. 
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Tuesday, 8 October 2013


Safaricom's thin line

Just the other day, this Leo caught himself telling a colleague, "Let me MPesa you the money". Immediately, a blog post was born.
Holding the line between popular and generic
(The Thin Red Line 1854 Richard Simkin)

Trademarks, unlike copyrights and patents, are granted primarily as a means for consumer protection. Valid and enforceable trademarks allow consumers to be more confident in the source of that product. If a trademark fails to identify the source, then it fails its primary function, and should not continue to receive trademark status.

This is the rationale for the revocation of trademarks that become "generic". A good example is the previously trademarked term "thermos". A thermos was once a product of a single company, but the term became generic as people referred to all similar goods (regardless of manufacturer) as thermoses. Once generic, the term no longer qualified for trademark protection.

A common way for trademarks to become generic is when they are commonly used as verbs. Xerox (the company) fought hard to stop people from using "xerox" as a verb (e.g., "I'm going to xerox this document"). When used as a verb, it's easy to see that a trademark can be used generically. One can imagine "xeroxing" a document on a Ricoh photocopier, for example. This situation is deadly to a trademark.

In the case of MPesa, it is extremely (and should be worryingly, at least to Safaricom) common for people to use "MPesa" as a verb, as exemplified above. This Leo has even heard people say they will MPesa some money over Airtel, a competitor service. Such use of the trademark is improper and diminishes the ability of the trademark to indicate a product source.

The proper use of a trademark is as an adjective - e.g., "I'm going to send you money using the MPesa mobile money system." Quite a mouthful, but it clearly indicates the source of the product.

Brands that pioneer a product/service such as MPesa must always walk the thin line between being popular and becoming generic. 
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Darren Olivier

E-Tolls - bringing IP to the top table

There are two guarantees in life - death and taxes. Whilst Afro Leo is trying to get IP included in that exclusive list, he must concede that death has been with us forever and heated discussions over tax started well before copyright or the first registered patent or trade mark. 

Right now, in the busy hub of one of Africa's financial centres - Gauteng - is an emotive discussion and legal action over a proposed tax on highways (E-tolls) that will considerably affect its commuters. The latest development in the saga are billboards that take the mick out of the leading party:

The African National Congress have claimed that they did not erect them and the identity of the advertiser was until yesterday, unclear. As the general view is that the tax is sadly just as inevitable as death is on these roads, Afro Leo was delighted when Alicia Louw (Adams & Adams) sent him her article, reviewed by Debbie Marriott, bringing IP into the conversation. 

"Once I recovered from my initial chuckle, I wondered whether there is any action that the African National Congress (“ANC”) can take to have the billboard removed, should it not violate any of the laws and regulations enforced by Independent Electoral Commission (“IEC”).

From my initial reaction and that of the callers into the morning talk show that I was listening to when I first heard about the billboard – driving along the soon-to-be-tolled N1 highway, it appears that no one believes that the billboard emanates from, or is endorsed by the ANC.  If so, the advertisement is unlikely to be regarded as ordinary infringement of the ANC trade mark which would require that motorists be confused into thinking that the advertiser is the ANC.  Further, although it clearly disparages the ANC, the information can hardly be regarded as false. To my mind, it falls squarely in the realms of satire or parody - it certainly catches the eye and is amusing.
Alicia Louw

In case the ANC is not amused, the question then becomes ‘is the statement on the billboard likely to dilute or erode the reputation that has been established in and to the name and trade mark ANC, and can the ANC approach a Court for the additional protection against infringement that is afforded to well known trade marks?.

The statement on the billboard reminds me of the Laugh it Off case. In this case the Constitutional Court found that a parody of a well known beer slogan did not infringe trade mark rights that had to be balanced against the T-shirt makers constitutionally protected right to freedom of expression.  The parody was therefore permissible.  Similarly, I believe that the ANC will be hard pressed to persuade a Court that use of this slogan infringes any of their well known trade mark rights. 

It seems that whoever is responsible for the billboard may have managed to colour within the lines, as far as trade mark law and the Advertising Standards Authority’s code is concerned."

Afro Leo notes that Alicia's thoughts were penned at a time when the identity of the advertiser was not known. Now that the DA have claimed that it emanated from them, the impact of the parody is immediately reduced and it seems that the DA could simply rely on the fact that the use of the ANC trade mark is descriptive, which is a defence to infringement. However, the massive coverage that the billboard (and hence the DA) received was because, by not disclosing their identity, the DA had caused great interest (not, it seems, confusion) over the origin of the billboard. In order to do so, they had used the IP of the ANC. It does raise the question then as to whether the initial interest confusion doctrine should form part of our trade mark law (to the extent that it does not already) but also, to what extent - mere interest does not seem to be enough, as Alicia has commented?

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Friday, 4 October 2013

Darren Olivier

Could Specsavers mean TM savings?

Reading through this month's edition of the increasingly bulky World Trademark Review, Afro Leo was drawn to the discussion by RPC's Jeremy Drew and Ben Mark of the recent Court of Justice of the European Union (CJEU) decision involving Specsavers International (not to be confused with the local shop having the same name) and Asda Stores. IPKat has a good piece on the decision here.

One of the findings of the CJEU was that where a mark that is registered in black & white but used in a colour combination that is associated in the minds of the public with the proprietor of the mark (as is the case with the Specsavers mark), that colour combination is relevant for determining whether a likelihood of confusion takes place. In other words, relevant in deciding infringement or whether a mark should be successfully opposed. Why this question was put to the Court will be relevant if you consider some of the marks in issue below:

registered mark
Asda's mark                              

mark in use

The effect of the decision, as noted by Drew and Mark, is that "brand owners [will] continue to benefit from the broad protection afforded to logos registered in black and white, but now they will also benefit from the enhanced distinctiveness of a particular colour through use without the need to register the logo in that colour".

Although Afro Leo would recommend to any proprietor to file for logos in colour or with claims to colour where colour is important, he does recognise that this can become an expensive exercise. Consequently, the decision is also good news for African proprietors (eg RSA's wine industry labels) who typically find European trade marks quite costly at current exchange rates. However, the decision, also bodes well for brand owners protecting their trade marks locally.

Under local practice there has been some confusion owing to the fact that a mark can be filed in black and white and protect all colour combinations (as in Europe), in colour (with no colour endorsement) and in colour with a specific endorsement that a particular colour or colour combination is an integral part of the mark. This has meant that it is unclear what the scope of the protection of the colour marks is.

In addition, local practice has not been to file evidence of use of the registered trade mark (to show enhanced distinctiveness or protection in a colour) when claiming infringement, due to a belief that such evidence was only relevant in passing off proceedings.

Afro Leo has already expressed his view in these posts here and here, that evidence of use is relevant for infringement and opposition proceedings because the European approach to the infringement/opposition test outlined in Sabel V Puma has been adopted by our Courts. He feels that it is a matter of time before we see oppositions and infringement claims not based on passing off, including evidence of use. However, it follows then that the Specsavers decision is also likely to be good news for local brand owners with colour marks and a limited filing budget. As always, your thoughts appreciated.

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Thursday, 3 October 2013


Approaching a software patent cliff?

“Is software patentable in Kenya?” This was a question posed at a conference held in Nairobi last year. In this Leo’s opinion, the answer is “yes”, primarily because of a change in the Kenyan patent law in 2001. The old law explicitely excluded software from patentable subject matter, but the revised law conspicuously omitted the exclusion (conspicuous because other exclusions were maintained). If it was once prohibited, but is no longer, then it must be allowed, right?

driving buffalo over the cliff

charles marion russell 

“Should software be patentable in Kenya?” The same conference also posed this question, which is decidedly more difficult to answer. This post focuses on one aspect of the question, namely, whether the current system is likely to replicate the mess that patents have made in the software industry in the United States.

Software patents in the US are hard to define, are numerous in number, and are the subject of endless debates about patentable subject matter. The US courts have completely changed their treatment of such patents at least three times, making it difficult to know at any given time whether a patent is valid or invalid. More problematic is the contention that, during the ‘90s and 2000s the USPTO issued a large number of broad patents that cover many of the most basic online or mobile operations. Furthermore, such patents are frequently categorized as “weak” patents – i.e., patents that barely pass (or probably do not pass) a requirement for patentability such as non-obviousness. Nevertheless, or as a result, such patents are often used by Non-Practicing Entities (i.e., “patent trolls”) to sue large numbers of defendants, confident in the belief that most defendants will prefer to settle out of court for just less than it will cost to litigate.

Is Kenya heading in this direct? The potential is serious for two reasons. The first reason is the importance of the software industry to Kenya. The phenomenal growth of the industry in the last 5 years is unmatched in any other sector, and ICT offers substantial opportunities for high-paying jobs and entrepreneurship.

The second reason is the existence in Kenyan IP law of Utility Model Certificates. “Normal” patents are granted for inventions that are novel, useful, and, critically, non-obvious (or, if you are in Europe, involve an inventive step). Thus any patent system can theoretically weed out “weak” patents before they even become patents simply by rigorously enforcing the rules for granting patents. Weak patents tend to be for obvious inventions, so enforcing the non-obviousness criteria should limit their number.

Utility Model Certificates, on the other hand, are granted for inventions that are merely novel (and useful) – there is no requirement for non-obviousness. Almost by default, then, they are granted for obvious inventions; if the invention is non-obvious the applicant is more likely to file for a regular patent. A Utility Model certificate provides exclusionary rights for “only” 10 years. In the software industry, 10 years is still much longer than the useful lifespan of most inventions.

So, by design of the law, Kenya is destined to have a collection of intellectual property rights granted to novel but obvious inventions, including inventions in software. These are key elements in building a system ripe for exploitation by Non-Practicing Entities.

To date, the number of software-based utility model (or patent) applications filed in Kenya is very low. Nevertheless it took decades for the US to reach its current position, so a bit of crystal ball gazing may be valuable.

Incidentally, the IPKat recently posted on whether Patent Trolls are universal, and observed that they seem to be largely a US phenomenon. This Leo has a similar experience – virtually every time I ask a Kenyan audience whether they have heard of Trolls or NPEs, not more than one or two hands are raised. Let us hope it stays that way!

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Tuesday, 1 October 2013

Darren Olivier

RSA's Draft IP Policy - Trade Mark Notes

If the recent Microsoft/Nokia deal provided a backdrop to make a few notes on the copyright aspects of RSA's draft national IP Policy then yesterday's industry level analysis report by the EPO and OHIM on the contribution of IPR intensive industries to the European economy is as good as any to consider the draft IP Policy on trade marks.

This is because, in the European report, trade marks (as a single form of IPR) outperformed patents, designs, copyright and geographical indicators in its contribution to both jobs and output in the EU and is relevant to RSA.

The European report is also a strong reminder of the potential strength of IPRs to an economy. As gentle nudge to our DTI, according to the study, IPR intensive industries account for 26% of employment and 39% of GDP in the EU. Trade marks weigh in with a whopping 20.8% of employment and 34% of GDP contribution.

Moreover, the study is relevant to RSA's policy makers, especially for trade marks:

  • trade marks is a form of IP that has taken traction in RSA (over 30000 filed per year, a significant enough proportion of which are filed and enforced by locals).
  • the rise of the middle income economy in Africa means that consumer industries, that are trade mark dependent, are becoming more important. 
  • the European report indicates that trade marks pervade 277 of the 321 industries that were analysed (see page 56). 
  • there is a link between trade marks and innovation, empowerment and job creation. This is explained in this links in this post here and in the report - see page 21.

So what does the IP Policy contain?

The good:

  • It recognises that trade marks facilitate licensing and franchising and therefore investment. 
  • It recognises the potential for trade marks to create wealth in rural areas and to stimulate SMEs.
  • It recognises the need to facilitate registration of trade marks nationally and internationally ("where RSA has a footprint"? - see note below under "unclear") 
  • It encourages trade marks as a means of protecting "sporting events". This may be controversial given the abuses that occurred during the World Cup 2010 although the recommendations on page 42 seem to attempt to strike a balance between the level of investment in the tournament eg (>20000 spectators) and local empowerment. 
  • It states that the Trade Marks Act and Heraldry Act could work better together, suggesting an amendment insofar as state emblems are protected.
  • It suggests that the rules for trade mark enforcement (oppositions, cancellations etc) are too legalistic and highly technical. I agree that they can be simplified - see here and here, for example. See also Harms's notes here - page 12.
  • It suggests that capacity needs to be built at CIPC (this is urgent - see also comment below, under "bad").

The unclear:

  • It seems to say that we should consider joining Madrid and perhaps also ARIPO but the comments on page 17 are unclear or nonsensical. 
  • The link between traditional knowledge and trade marks seems to indicate that the trade mark system needs to cater for benefit sharing arrangements, consent, joint ownership and knowledge disclosure? It already does, in many respects and the principle (prior rights should be recognised) seems correct but does it mean more? Is this comment not supporting GI protection, rather? The wording is not typical trade mark speak and so it is confusing.
  • It is not clear whether "investment" in a sporting event will be a ground for overcoming a non use attack on a trade mark - see page 42 "renewal and investment or use".
The bad:
  • It indicates that the CIPC opposition body/Tribunal "is effective". This is quite simply wrong - see our analysis here - the backlog that has developed, due to lack of qualified resource and support for the Registrar, is so severe that it has forced CIPC to refer all oppositions to the High Court and would take until 2019 to clear at the current rate of decision making. The backlog is a major problem for trade marks in RSA.
  • The "Copyright Tribunal also functions as the Trade Mark Tribunal..."? (page 46). The word "Tribunal" does not feature throughout the entire Trade Marks Act and is not related to the Copyright Tribunal.

Afro Leo would have like to have seen more in the draft IP Policy on trade marks especially in making the system quicker, easier to use, easier to search and more available. He is aware that the current Registrar is working hard on these elements but she needs more support. The Policy also does not tackle to problem that a significant number of trade mark decisions in the High Court are overturned on appeal. Does this mean that judges need to be better trained in this area of law? Do we need a specialist court? However, the draft Policy recognises that a capacity building exercise is required at CIPC and this is very encouraging.

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