Tuesday 23 December 2014

Jeremy

Good news for trade marks: now Zimbabwe signs up for the Madrid Protocol

By Madrid (Marks) Notification No. 204: Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, WIPO reports that the Republic of Zimbabwe has deposited its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, which will enter into force, with respect to Zimbabwe, on 11 March 2015.

93 countries have now signed up for the Madrid Protocol, as against just 55 for the old Madrid Agreement of 1891. You can check both lists here.
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Monday 22 December 2014

Jeremy Speres

RSA: Notional trade mark use and fish & chips

I’m happy to report that the finest trade mark judgement of 2014 originates in my back yard in the Western Cape!  We took a while, but as with our wine, good things come to those who wait. 

In Lucky Star Ltd v Lucky Brands (Pty) Ltd and others, Judge Owen Rogers, of the High Court at the foot of a mountain, deftly dealt with a claim of primary trade mark infringement, as well as dilution, of the applicant’s iconic LUCKY STAR word as well as device marks registered in respect of, amongst others, fish products, fresh salads and retail services.  The applicant’s mark is of course well-known in South Africa in respect of canned seafood products, especially its pilchards.

The respondent entities conduct business under the LUCKY FISH brand as a seafood restaurant and takeaway chain.  Incidentally, the chain is part of the same restaurant group as the unique Harbour House in Kalk Bay, where just yesterday this writer enjoyed (perhaps too much) chardonnay and yellow tail whilst observing some seals playfully unaware of the trade mark carnage afoot on their doorstep.  The applicant relied on the traditional likelihood of confusion / deception ground, as well as dilution, in an application for an interdict as well as an order declaring the respondents’ company names incorporating LUCKY FISH and LUCKY BRANDS in violation of section 11(2) of the Companies Act for being confusingly similar to the applicant’s registered mark.

I particularly liked this statement that tends to justify all those sophisticated principles us trade mark lawyers like to rely on in cases where others may think it’s simply a matter of common sense:
              
“It has been said that the question of confusing or deceptive similarity is very much a matter of ‘first impression’…Since the judge may not be representative of all the classes of persons who consume the relevant product or service, and since the judge will be seeing the marks as set out in court papers rather than in the market place, the judge will naturally need to test his or her first impression in accordance with the principles set out in the cases.”

Ultimately Judge Rogers found no likelihood of confusion or deception, having regard to the differences between the marks on the one hand and the goods and services on the other.  The following findings are noteworthy.

First, the Court considered the debate regarding the applicability of the doctrine of notional use to a defendant’s conduct in infringement matters.  Essentially, there has been some debate in our courts whether the way in which a defendant might notionally use its allegedly infringing mark (as opposed to the way in which it actually uses it) is relevant in an infringement matter (see para 12.8.4 in Webster & Page).  The Appellate Division in the Plascon-Evans matter commented obiter that the doctrine should not apply.  In this case the court however seemed to decide the issue, expressly rejecting the doctrine’s application to the defendant’s mark. 

Secondly, the Court adopted an approach similar to that of the Court of Justice of the European Union in the Specsavers v Asda saga.  There the court considered the fact that the claimant had made use of its registered mark in a particular way that differed to the form in which it was registered, as relevant to the likelihood of confusion assessment (as opposed to simply relying on the mark purely in the form in which it was registered).  In this case, the court considered the fact that the applicant always uses the LUCKY STAR mark in conjunction with other device elements as relevant, relying on this to distinguish the applicant’s mark further from that of the respondents (see para 46).  This approach does seem to be at odds with the traditional approach of comparing the mark as used by the defendant with the mark as registered by the claimant, and suggests an approach more akin to passing-off.  Perhaps, however, where the particular form in which the claimant has actually used its mark has become ingrained in the minds of the public, this should be taken into account so as to align trade mark law with the reality on the ground.  It is to be noted that the court in the recent EVOLYM matter adopted a similar approach (see para 22) – as pointed out to this writer by local trade mark sage Faan Wolvaardt.  Of course there’s a fine line between this approach and diluting the value of registered rights by allowing extraneous matter to be considered, a line which I’m glad I don’t have to decide on!

I know most of you will skip right past the company name objection bit, but on the off chance that you’re interested, here goes. The court indicated (in para 73) that when a company name objection is considered (at least in circumstances analogous to this case), the relevant public are not ordinary consumers, who do not generally see the company name as it appears on invoices, letterheads and the like, but those in the trade who do business with the company (landlords, bankers, suppliers etc) who are more knowledgeable of that particular industry and thus less likely to be confused.  I have my doubts about this as a general proposition for company name objections – yes, company names are very often different to the parties’ actual trading names, but they are likewise very often the same.  In this sense, company name objections are akin to trade mark opposition proceedings (where the notional use doctrine does apply to the defendant trade mark applicant’s mark) and regard should be had to how the defendant might use its company name if its registration is permitted.  I’d love to hear your thoughts on this, all three of you!


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Caroline B Ncube

IP policies in Africa no.48: Swaziland


Swaziland is a member of COMESA and thus subscribes to its IP Policy. According to a media report, the country has committed to finalising a national IP policy by 2020 (see here ). To this end, a workshop  entitled 'National Intellectual Property (IP) Policy Workshop: The Strategic use of IP for Technological Capacity Building, Economic Growth and Development' was hosted in Mbabane in May 2014 (see WIPO's Technical Assistance Database here). It is expected that drafts of the national IP policy will be publicly available in due course.

This is this Leo's last post of the year and since she's in jovial mood, she will share that she is on her way to visit her parents and the family's beloved matriarch in residence - her maternal grandmother MaNtshangase - who hails from the lovely pastures of Swaziland (what a lovely blogging coincidence). Merry Christmas and a blessed new year to all Afro-IP readers, or as granny would say, Sikufisela uKhisimusi lomuhle.
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IP laws see the WIPOLex entry here
Kingsley's review of Swaziland's official IP websites here
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Friday 19 December 2014

Afro Leo

More on OAPI and Biko

Following Jeremy's announcement on Monday that OAPI is joining Madrid, our colleague from Cameroon Aminou Ndala TITA also had this to say:


"...However, OAPI has not amended its trade mark law to recognize International Registrations, and it is unlikely to do so before 5 March 2015. Until the law is amended, International Registrations designating OAPI will not be enforceable until the law changes to recognize such trademarks. It is expected that the December session of its administrative council will address this pressing issue."

And, if you wanted an update on the Biko autopsy saga, local news channel ENCA has it here.

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Caroline B Ncube

IP policies in Africa no.s 46 and 47: South Sudan and Sudan

South Sudan 
Neither Sudan nor South Sudan have a national IP policy yet nor do they seem to be working on one, which is understandable for countries that have been mired in military conflict. Sudan is a member of ARIPO, the AU and COMESA and as such subscribes to the COMESA IP policy as well as benefits from any national IP policy initiatives from these three organisations.


Sudan 
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For IP laws see Sudan's WIPOLex entry here and South Sudan's here
Kingsley's overview of South Sudan's official IP websites here
Kingsley's overview of Sudan's official IP websites here 
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Thursday 18 December 2014

Afro Leo

Douala (Cameroon) hosts important OAPI meeting

This is a report by Aminou Ndala TITA based in Cameroon on developments at OAPI:

fancy new logo
The Board of Directors of the African Intellectual Property Organization (OAPI) held its 54th Ordinary Session in Douala, the economic capital of its host country on 14 December 2014. This expert meeting preceded the conference of Ministers which took place from 8 to 13 December 2014. The work of the assembly this time around was to address issues related to the management of intellectual property within the Organization. On the agenda was:

  • The creation of  an arbitration and mediation center for intellectual property disputes at OAPI;
  • The Regulation concerning the international registration of marks with OAPI heading for Madrid;
  • The accession of OAPI and its member states to the Singapore Treaty on the Law of Trademarks;
  • The adoption of the financial statements for the year ended 31 December 2013;
  • The adoption of the budget for fiscal year 2015.
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Monday 15 December 2014

Jeremy

OAPI accedes to Madrid Protocol


By Madrid (Marks) Notification No. 203: Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, WIPO informs us of the accession by the African Intellectual Property Organization (a.k.a. OAPI) to the Madrid Protocol.

This accession is made subject to two declarations. First
* in accordance with Article 5(2)(d) of the Madrid Protocol (1989), under Article 5(2)(b) of the Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months and under Article 5(2)(c) of the said Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

* in accordance with Article 8(7)(a) of the Madrid Protocol (1989), OAPI, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.
The Madrid Protocol (1989) will enter into force, with respect to the 17-state African Intellectual Property Organization, on March 5, 2015.

This blogger notes that the English-speaking Africans may be having some fun at the expense of their French cousins. If you conduct a Google search of the words "African Intellectual Property Organization" -- ie OAPI -- the first search result is the website of the Anglophone "Africa Regional Intellectual Property Organisation" (ARIPO). Does any reader have an explanation ...  ?
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Caroline B Ncube

IP policies in Africa no.45: South Africa

This is by far the easiest national IP policy overview to write in this series because Afro-IP has been providing a running commentary on South Africa's draft IP policy since its publication in September 2013. The links to these posts are far too many to list, to view them search for "South Africa IP Policy".  Much has been said about the merits (or otherwise) of the draft national IP Policy. Suffice to say that it has many hot under the collar for various reasons. All that remains to be said is that the policy has been way too long in the making and this Leo is disappointed that 2014 is fading out without the finalisation of the policy.

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WIPOLex entry here
Kingsley's overview of the official IP websites here

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Jeremy

Burundi Business, Industrial & Investment Forum: no IP on the agenda

This blogger learns that Euroconvention Global, under the Auspices of the Government of the Republic of Burundi and in collaboration with UNIDO and the National Federal Chamber of Commerce, is running a Burundi Business, Industrial & Investment Forum on 21 and 22 January 2015 in Bujumbura, at the Hotel Lake Tanganyika. According to the conference organisers' details:
The country is becoming a stable neighbor to all regional economies and, as such, is increasingly attracting international interest thanks to the favorable policy of its Government.As Burundi is rebuilding its economy, it welcomes foreign participation and partnership in all sectors of its economy, offering new business development and unlocking investment opportunities in almost every sector. That is what this unique Forum is all about, gathering under one roof senior Government officials, International Financial Institutions, business organizations and private sector decision makers.Key topics will include:
  1. Further structural reforms, privatizations and long term opportunities
  1. Liberalized foreign exchange regime, prudent fiscal policy
  1. Good governance and improved public financial management
  1. Industrial and manufacturing potential, export
  1. Infrastructure, transport, logistics, construction and real estate
  1. Energy, renewable, natural resources and mining
  1. Telecom, ICT and e-technology
  1. Agribusiness and livestock
Kindly be advised that the sessions, presentations and debates will be held in French and in English languages, with simultaneous translation.
This is an opportunity missed, an opportunity to mention the encouraging words "intellectual property". Just over a year ago, Afro-IP's Caroline Ncube reported on Burundi's intellectual property policy, which doesn't appear to have gone beyond a draft, and sadly there doesn't seem to be much news since then.  This blogger would feel more inclined to invest in Burundi's small but growing economy if he felt that IP investment was protected and that consumer confidence was strengthened by firm resistance to the importation of counterfeits.
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Friday 12 December 2014

Caroline B Ncube

IP Policies in Africa no.44: Somalia


Somalia does not yet have a national IP policy nor could this Leo find any information pertaining to the preparation of one. As a member of ARIPO, Somalia participates in annual round table sessions for Heads of IP offices on Topical IP Policy issues which are held in conjunction the Administrative Council and Ordinary Session of the ARIPO Council of Ministers (see here).


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For IP laws see Somalia's WIPOLex entry here
Kingsley's overview of official IP websites here
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Caroline B Ncube

RSA: Cabinet approves the introduction of the Plant Breeders Rights Amendment Bill to Parliament

Legalbrief Today reports here that on 10 December 2014 Cabinet has approved the tabling of the Plant Breeders Rights  Amendment Bill to parliament. The Cabinet media statement is available here for those who want to go directly to the official government source of this information. This Leo found all the other information contained in the statement, especially that pertaining to the recent goings-on in Parliament, rather entertaining distracting. In 2011 a draft Bill was gazetted for public comment and several parties such as SAIIPL submitted their comments. Further work was done on the Bill and a 2013 version of the Bill (available here) was then gazetted for public comment (Gen Notice 407 GG36392/26-4-2013). Again, several parties, such as Biowatch, submitted their commentsThe version of the Bill that will be tabled before Parliament will hopefully address the concerns raised by such comments. 



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Plant Breeders Rights Policy here
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Tuesday 9 December 2014

Caroline B Ncube

IP Policies in Africa no.43: Sierra Leone


WIPO reports (here) that it was involved in the launch of a national IP policy formulation process for Sierra Leone. The country's experience of the process was outlined at a WIPO Conference on the Role of Intellectual Property Offices (IPOs) in Promoting Innovation, Business Competitiveness and Economic Growth held in Tokyo, Japan in 2012 (read Osman KANU, Senior State Counsel's presentation here).  This Leo was unable to find any further information on the progress of this process. It is safe to say that it is as yet incomplete because WIPO's latest report on its national IP policy initiatives to the 14th session of the Committee on Development and Intellectual Property held on 10 -14 November 2014 still refers only to the launching of the process ( see report, dated 28 October 2014, here).

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Sierra Leone's IP legislation - WIPOLex
IP Office website - Intellectual Property Registry, Office of the Administrator & Registrar General - here
Sierra Leone's new IP legislation and ARIPO feedback (2012)
A review of African official IP websites: no.42: Seychelles and no.43: Sierra Leone (2013)
WIPO Conference on the Role of Intellectual Property Offices (IPOs) in Promoting Innovation, Business Competitiveness and Economic Growth  (2012) - meeting documents here 
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Thursday 4 December 2014

Afro Leo

Steve Biko Autopsy Case. A privilege.

This week I have had the real privilege of working on the Steve Biko autopsy case which has received much local coverage over the last few days and where my firm and the advocates (George Bizos SC and Paola Cirone) are acting without charge. 

It has been a privilege not only to understand and listen to the families and Steve Biko Foundation over a very emotional issue but to get to appreciate that when George Bizos SC (87) explains some of the moments that have made history in our country (including the circumstances of Biko and Timol’s death) he literally, at times, cannot speak with grief and emotion. It is very easy to forget and this is really what the case is all about – preserving RSA legacies and history (and IP) and .... doing the right thing. 

A quick snap after receiving the order yesterday with families and representatives. 


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