Tuesday, 30 April 2013
Natacha's clairvoyant post illustrated that trade marks are the primary means of protecting a name. The names of companies are not right generating in the same sense and although a failure to clear the company register can lead to loss of rights in a name (as illustrated here) they are nothing more than a name on a register. What matters is who uses the name, how it is used and who owns it on the national register. The alleged marriage in community of property (to Graca Machel) also does not necessarily mean that the rights in the name will automatically be owned by a surviving spouse, which seems to be the cause of what has been alleged.
Some of the rights in the name Mandela are simply incapable of being assigned or owned by anyone else as they are inextricably linked to his personality. However, the rights in the name MANDELA (and others) which symbolise that personality as a trade mark, are capable of being registered and have been so. These rights are capable of being transferred. If the owner of that trade mark is a trust, then the rights in that trade mark are governed by the legal agreement governing the trust.
The challenge with the Mandela brand is that it is so well known that in some cases it will have difficulty functioning as a trade mark. The late Elvis Presley and Princess Diana estates experienced this problem. However, properly managed, the Mandela brand is quite capable of being protected and if the family members are concerned, well they should be if they are infringing it.
Although there is some limited protection under the Trade Marks Act for family members using their own names, they need to ensure that they use their full name (Mandela is not enough) and that they are not guilty of passing off eg by creating a false impression that the services or goods purveyed by the company concerned are endorsed by the man himself.
What the owners of the Mandela trade mark need to do, is properly assert rights over the trade mark against the family members under appropriate company legislation, if that is what the situation requires. A failure to do so may not only devalue the brand but also create possibilities for non family members to use the name.In the event that the family name is entitled to be used, then this should be recorded in a licence with rights accruing to the owner of the trade mark MANDELA.
Two recent cases in RSA, involving the finance publication Bloomberg and the late Steve Biko, illustrate the comments made in this post and will be summarised for your consumption in a post in May.
If you will be attending and on twitter please share your experiences and updates using #INTAAfrica. The @afroip handle will be tweeting furiously during the Africa sessions that Afro Leo is able to attend. Guests posts after the sessions are also welcome - please send them here.
Table topic: 1:15 - 3:15
Challenges in the Enforcement of Trademarks in Regional Economic Integration in Africa
Saudin Jacob Mwakaje, NexLaw Advocates, Patent and Trademark Attorneys (Tanzania)
Darren Olivier, Adams & Adams (South Africa)
Table topic:1:15 - 3:15
Trademark Searching and Clearance in Africa
Kay Rickelman, Spoor & Fisher (South Africa)
Monday, 29 April 2013
Saturday, 27 April 2013
PIIPA, Public Interest Intellectual Property Advisors, recently released the slides from their seminar on the Role of Intellectual Property in Public Health.
Africare Suggests IP as an incentive for developing new, affordable medicines
The first set of slides was from Dr. Kechi Achebe of Africare. For those who are not familiar with Africare, it is a large non-profit organization that focuses on health, agriculture and water and sanitation projects in Africa. It is one of the oldest NGOs working in Africa and is currently active in 21 countries.
Dr. Kechi explained that “less than half of the patients suffering from infectious diseases are able to access medicine,” and the majority of these people are in Africa and India. Africare recognizes the benefits of trademark protection in preventing damages from counterfeit medications but has concerns about the higher costs of patented medicines. Dr. Kechi had a list of recommendations for the relationship of IP and public health:
- Intellectual property should be managed to promote the
development of new medicines
- Intellectual property should provide incentives for
investment into innovation – development of new
medicines to make it affordable to the poor
- All governments would be able to provide – or ensure
the provision of medicines within the reasonable
budgetary capacity of the nation
- Coming decade likely to be characterized by restrained
government spending, necessitating more efficient
- Multilateral institutions may assist by promoting
cooperation among diverse stakeholders
- NGOs should continue to play a role in drawing attention
to gaps in access to medicines
Dr. Kechi’s suggestion are such that everyone involved in public health and intellectual property could easily agree on them. Many of these goals have been long-established. The problems come when various stakeholders start attempting to plan for reaching these goals. Not only do stakeholders’ interests collide, but often the goals themselves collide. For example, intellectual property as a tool to promote development of new medicines and all governments ensuring provision of medicines within reasonable budgetary capacities may be at odds.
America Suggests Same Old Suggestion
Dr. Mark L. Rohrbaugh of the US Office of Technology Transfer at the National Institutes of Health presents, in this American Leo’s view, a very Western solution to IP and Public Health: tiered pricing. It’s not a new idea and is one that even appears within many IP-related treaties. Medicines should be introduced first in a developed economy where they can be subjected to appropriate scrutiny and testing and then, after a period of time, released or licensed for manufacture in developing countries at a lower price tier. Dr. Rohrbaugh acknowledges three countries in Africa that he felt had manufacturing capabilities: Egypt, South Africa and Kenya.
Dr. Rohrbaugh highlights a number of success stories of medications available at lower costs in developing countries and technologies licensed to manufacturing companies in developing countries. However, despite these examples, Little Leo has doubts about the sustainability of this method. Most of the problematic diseases in developing countries are tropical diseases found almost exclusively in those countries. Having tiered pricing systems where developing countries pay below market rates runs the risk of dis-incentivizing the development of the very drugs that are most needed. Perhaps there’s enough Western-based NGO’s buying medicines for their field workers to support a developed-world market. Perhaps Little Leo is too cynical…
NIH does participate in technology transfer programs and has an internship program to teach skills necessary for such transfer in developing countries. More about the program can be found here.
Note: Suzanne Seavello Shope of the Centers for Disease Control (CDC) also presented on technology transfers. Her slides are basically examples of successful technology transfers. There’s a link to the full slides above if anyone’s interested in seeing the examples.
Friday, 26 April 2013
Thursday, 25 April 2013
The Uganda Registration Services Bureau is hosting a day-long celebration for World Intellectual Property Day on Friday, April 26th. The celebration has a theme and a subtheme: Creativity - the next generation, Tapping wealth from within. It will feature several speakers, including the Chairman of the Board of Directors. Exhibition stalls will be open all afternoon for perusing while enjoying the accompanying entertainment. Afro-Leo is very curious what these stalls will feature and wonders if they’ll have as many freebies as INTA stalls.
This celebration is actually the final event in a week-long series of programs recognizing World Intellectual Property Day. The Bureau also held a media conference, co-sponsored a technology transfer workshop and IP policy forum with WIPO and participated in a radio talk show.
The Uganda Registration Services Bureau Intellectual Property Department is also the country’s National Intellectual Property office. It’s role is the promotion of creativity and IP awareness and to review IP registrations.
What: A celebration of Intellectual Property
When: 8:00-17:00 16th April 2013
Where: parking lot behind the Buerau’s offices, George Street, Plot 5
Why: To celebrate creators and innovators who have impacted Ugandan society
POLICE MATCHING FROM NATIONAL THEATRE
8:00AM - 9:30AM
PUBLIC INSPECTION OF STALLS AND ATTENDING IP CLINIC
9:30AM - 11:00AM
INSPECTION OF EXHIBITION BY CHIEF GUEST
11:00AM - 11:30AM
a) RG –REMARKS
b) CHAIRMAN B.O.D URSB
c) HIS LORDSHIP JUSTICE KAINAMURA
d) CHAIRMAN B.O.D URSB INVITES THE CHIEF GUEST
e) CHIEF GUEST’S SPEECH AND LAUNCH OF THE INVENTOR’S ASSOCIATION
11:30AM – 12:30AM
OPEN DAY EXIBITION AND ENTERTAINMENT CONTINUES AND IP CLINIC ATTENDANCE
12:45PM – 4:30PM
Wednesday, 24 April 2013
"NJQ Successfully Files the First Trademark Application in Libya since the EvolutionOn Monday of this week this blogger was greeted by quite different news:
TRIPOLI – NJQ would like to announce that our office in Libya has successfully filed a trademark application for registration in Libya yesterday 16 April 2013.
This will be considered as the first trademark application received by the Libyan Trademark Office since January 2011 when the unrest started.".
"Libyan Trademarks Office Will not Receive Applications prior to May 2013Today Afro Leo reads this riposte from NJQ:
TRIPOLI – Despite what has been circulated by an IP firm about the Libyan Trademarks Office having started accepting new applications, Abu-Ghazaleh Intellectual Property (AGIP) would like to strongly confirm that the Libyan Trademarks Office has not yet and will not accept any new applications before May 2013.
We shall keep you informed of any developments as soon as the Registrar issues an official notification in this regard or starts accepting new applications".
"The Trademark Office has Resumed Operations as of 16 April 2013It would be good to know exactly what is happening in Libya. There may be some logical explanation of all this, but foreign trade mark applicants -- who probably constitute the preponderant majority, if not an overwhelming majority, of brand-owners in need of protection -- are generally not in a position to see for themselves what is going on and it can make them feel quite insecure.
We are pleased to announce that the Libyan Trademark Office (LTMO) resumed its operations on 16 April 2013, after the closure of this office due to revolution. We are proud to announce that we have successfully filed the first application since the re-opening of the office for the mark "STEELMASTER" under No. 22102 in Class 2 on 16 April 2013.
According to the new regulations, all documents executed before or during the revolution need to be revised, e.g., any document bearing the consulate stamp of Great Socialist People's Libyan Arab Jamahiriya are no longer accepted. The stamp should now indicate the State of Libya ...
Additionally, the LTMO has revised the application requirements and they are now:
• Power of attorney legalized up to Libyan Consulate, and
• Certified copy of the commercial registrar legalized up to Libyan Consulate.
It's worth mentioning that a legalized copy of home/foreign registration certificate is not required anymore".
Briefly, Nestle purchased Pfizer's infant nutrition business across 15 countries. In 9 of those countries the merger was unconditionally accepted, in 1 the conditions were minor and in the remaining 5, conditional approval had to be sought. This ruling arose out of concerns raised by South Africa's Competition Commission which treated the transaction as a 3-2 merger, which means that approval is difficult to obtain because, in general terms, it may have the effect of materially reducing the competitive environment in RSA. Indeed the Commission wished for a complete divestiture of the business (including the trade marks) by Nestle as a condition to the merger so as to maintain the current competitive position.
The reason why this particular ruling is interesting is because the alternative remedy put forward by Nestle to the Commission to secure its approval entailed some fancy footwork around the trade marks. This remedy has its origin in Europe and involves an exclusive licence to a third party followed by a black out period by Nestle and a re-branding provision.
Most often the IP issues in a merger approval involve patents because it is a positive monopoly right that has the effect of totally excluding a party from a market. It is rare that brands are treated in such a way, generally because the view is that a trade mark does not prevent trading but simply using a brand name. In other words, rebranding is always an option and, from a competition point of view, therefore rarely a material concern. Afro Leo has always felt that such a view underestimates the value of a brand not only in lowering market entry but in establishing market entrance altogether.
The fact that almost the entire ruling centered around issues with branding, black out periods, licensing, split ownership and re-branding is therefore recognition that trade mark issues are important and relevant to merger approvals. That said, Afro Leo has several questions on the effect of the ruling (which approved the merger) that he hopes will elicit some discussion in his cameo this afternoon with the experienced and knowledgeable Dr Kleyn, who is leading the workshop. The workshop has been promoted through LES with this abstract:
"Without a doubt, critical failures and significant achievements can be made before, during and after an M&A transaction with regard to IP (technology and brands). The intention of this presentation is to point out some of the risks and opportunities that may arise. Too often the unforgiving deadlines and enormous workload characterised by an M&A transaction make it difficult to stand back from the activity and look at the so-called “big picture”; the benefits of being prepared and forewarned are inestimable. The presentation will include a discussion on practical implications of merging with another big brand including phase out and migration of goodwill – rebranding; running competing brands out of the same stable; splitting brands; co-branding issues and relevance of competition law"
Tuesday, 23 April 2013
Afro-IP received a welcome email from Craig Kahn, Spoor & Fisher reminding us of the good work that Gift Sibanda did in Office at ARIPO HQ:
Monday, 22 April 2013
This news comes from Nicky Garnett - Africa patent department head @ Adams & Adams. Merci Nicky!
Cheap flights available here.
Publishers Ashgate have this to say about the title:
"Africa is playing an increasingly more significant role in the domain of international intellectual property law, and this book underlines the contributions made by African countries as a group to the development of the current international IP system. It examines in detail their breakthrough proposals and initiatives at the WTO, WIPO and WHO with regard to IP and public health; IP and traditional knowledge, traditional cultural expressions and genetic resources; IP and biodiversity; and exceptions and limitations to copyright.
Using Botswana, Burundi, Egypt, Ghana, Kenya, Mauritius, Morocco, South Africa and Tunisia as examples, it examines the systems under which these IP subject matters are protected. From a regional perspective, the book also analyses some initiatives taken by ARIPO, OAPI and the African Union to protect traditional knowledge and traditional cultural expressions, especially in relation to protection of the rights of local farming communities and breeders, regulation of access to biological resources, genetically modified organisms and the proposed establishment of the new Pan-African Intellectual Property Organization (PAIPO) [on which Afro-IP has taken a not inconsiderable interest: see posts here].
Demonstrating how Africa is now an active player on the international IP scene, this book will be invaluable to those interested in intellectual property law, business and commercial law, and African and international law".
The author is described as an intellectual property researcher and a former Assistant Professor, Osaka University, Osaka, Japan, whose key areas of interest are International Intellectual Property Law and global IP challenges. The publisher's web page adds: "He has published widely on these areas in books and articles in renowned international IP journals". This would appear to be borne out by the bibliography, which consists almost entirely of the author's own writings (under the heading "Books, journal articles and chapters in books", 22 of the 26 works cited are those of the author. Is no-one else writing on the same subjects?).
One small point: although the book has a full and helpful contents list, it is not always easy to navigate. Perhaps more or better use could be made of headings and sub-headings, or even the introduction of numbered paragraphs, to enable the reader to recall more easily where he has got to in the author's scheme of things.
Bibliographic data: publication date, March 2013. Hardback, xx + 319 pages. ISBNs 978-0-7546-7740-6 and Short: 9780754677406. Book's web page here.
Monday, 15 April 2013
Sunday, 14 April 2013
With luck I will be able to share the slides but I am also hoping for an opportunity to interview Dario on what it is like to Chair a firm that has been operating in IP on the continent for over a century, at a time when there is unprecedented interest in Africa, including from competitors.
Friday, 12 April 2013
This link from WIPO, sourced from JAH & Co in Qatar explains that the
"The Trademark Office will start receive the search application from April 1, 2013 and filing new Mark applications will take place starting May 2013."
Tuesday, 9 April 2013
The presentations from the Africa IP Forum held on 26 and 27 February 2013 are as follows - click on the links:
- Bridging the knowledge gap in Africa: Role of Copyright Exceptions & Limitations
- Achieving Food Security, challenges and issues in Africa
- Benefits Of Patent Examination
- Challenges And Issues In Protecting Genetic Resources And Traditional Knowledge
- The Potential Impact of TRIPS Plus IP Enforcement Provisions on access to Medicines in Africa
- The Pharmaceutical Manufacturing Plan for Africa
- Intellectual Property: Substantive search and examination of Patents
- Crop diversity as life insurance
- Building Africa's Technological capacities: Innovation, technology transfer and IP
- The South African National Council for the Blind
- Benefits of Substantive Examination for Pharmaceutical Patent Claims
- Integrating Intellectual Property Rights (IPRs) and Development Policy
- WIPO Development Agenda: What it means for Africa
- Intellectual Property and Economic Growth and Development in Africa
- Incentivizing local generic production through TRIPS Flexibilities
- Challenges & Issues: TK,GR & TCE
- Benefits of Substantive Examination of Patents versus the Depository System
- Promoting Local Production of Generic Medicines in Small African Countries
- Intellectual property and indigenous knowledge systems/traditional knowledge and genetic resources
- Damages and Injunctions in the enforcement of IPR
- Contemporary Routes of Biopiracy
Monday, 8 April 2013
Former US Representative, Ron Paul, asserts his IPR, see here
Virginia Tech says "no" to political parties using trademark, see here
Branding of political parties, see here