Monday 29 June 2015

Afro Leo

Uganda JAVA TM case in #SandtonDiscussion

Apologies for the late notice of this week's #SandtonDiscussion which focuses on the recent decision in the trade mark opposition by Mandela Auto Spares against the attempt to register trade marks in class 43 (restaurant services) containing the word JAVA by Nairobi Java House Limited on the basis of rights in the word JAVAS and CAFE JAVAS. It's a very interesting case that looks at the nature of the word JAVA for restaurant services in Uganda, the test for likelihood of confusion  and structure of opposition proceedings. It is also an example of the increasing sophistication of decision making on the continent. The Assistant Registrar references local and European law in determining the opposition.

The case can be found here and the discussion will be lead by none other than Lita Miti-Qamata. Tune in at 9CAT on Twitter -  #SandtonDiscussion.


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Friday 19 June 2015

Afro Leo

Etraction up next in #sandtondiscussion


Monday's #SandtonDiscussion arranged by Lita is lead by Stephen Hollis (@orcagunslinger) and covers the recent appeal court decision in Etraction and the detail over prior use defenses.

The case was neatly summarised here by Jeremy Speres who will also be joining the conversation. It should be another good one and you also are very welcome to take part over twitter using the #sandtondiscussion.

I must mention a word of caution though; speed tweeting during these sessions can easily lead to spelling mistakes so please be careful when using "etraction" and "use" or "prior use", the auto-correct combination can truly be scandalous (as I found out just a moment ago)!

Last week's discussion really was interesting. We were joined by none other then Julius Stobbs of Stobbs IP who provided some excellent insight into how UK practitioners are structuring their questionnaires and advertising to show/explain that shapes are not merely recognised as distinctive features but function as independent trade marks. John Ndlovu did a great job canvassing the tricky terrain between South African case law and that of Europe. Some highlights include:
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Friday 12 June 2015

Afro Leo

The Kit Kat shape mark opinion in the EU - #sandtondiscussion


Monday's discussion takes us north to the Court of Justice of the European Union which provided its opinion this week on whether the shape of Nestle's almost century old Kit-Kat bar is registrable as a trade mark. There's more to it then that (there always is) and there is also the recent SCA judgment in South Africa upholding rights in the famous three dimensional wafer, which has seemingly contradicted a line of English decisions on the point. Why is this so? Find out on Monday.

The case discussion, coordinated by Lita, is being lead by John Ndlovu and we have a special guest appearance from leading UK firm Stobbs to give some context from a European perspective. All in all it should be a good discussion between 9am-10am CAT on Monday 15th. As usual you can follow the discussion or tweet in questions using the hashtag #sandtondiscussion on twitter.

Some action from this last Monday's discussion:

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Caroline B Ncube

struggle images and copyright

I have struggle images and copyright on my mind as South Africa heads into into a long weekend. Tuesday 16 June is youth day and the fortunate amongst us will take Monday off  and enjoy a four day hiatus from the office.  The events that unfolded on the 16th of June 1976 were recorded in various ways, the most striking of which is Sam Nzima's photo of Hector Pieterson (below).
source: Hector Pieterson Memorial and Museum 

Sam Nzima
source: The Citizen 
Mr Nzima  took the photo within the course of his employment by The World which was then owned by the Argus Group, so copyright resided in his employer. It was only in 1998 when the Argus Group was purchased by the Independent Newspapers Group that copyright was assigned to him. By his own account here and here he did not, and does not, want to seek royalties from those who used his photo, particularly in the fight against apartheid. In any event, he could only seek royalties for post-1998 usage, when he acquired copyright. Prior to that date, the Argus Group had economic exclusivity over the photo. It appears that since 1998 Mr Nzima has received no royalties from the use of his photo. He continues to lead a modest life in Lillydale, where he fled in fear for his life in 1976, leaving his photojournalist days behind. His iconic photograph is usually attributed to him, but sometimes it is published without attribution. So when you see this photograph over the next few days, spare a thought for photojournalists, like Mr Nzima, who risk their lives whilst capturing these gripping images. And maybe we need to talk about copyright in the employment context, but wait, that's another post....




------------------------
For other photojournalist's copyright struggles read about Jurgen Schadeberg's long-running dispute with Little Brown here (1995),  here (2005) and here
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Monday 8 June 2015

Afro Leo

Kenyan IP update

Coulson Harney which is a member of the Bowman Gilfillan Africa Group have published their monthly IP newsletter packed with news on intellectual property in Kenya and abroad. Some nuggets from John Syekei's group this month include that:

  • members of the Kenyan Boys Choir successfully cancelled a registration for KENYA BOYS CHOIR in the name of Joseph Inzai on the basis that he had no legal claim to the trade mark
  • the High Court reached a controversial decision in Nonny Gathoni Njenga v Catherine Masitsa, Standard Group and Bauhaus ltd effectively extending copyright protection to TV formats, and in particular format shifting
  • the Nairobi High Court upheld the mandate of the Anti-Counterfeit Agency (ACA) to conduct investigations
  • the ACA is now chaired by Polycarp Igathe
  • that the Weetabix trade mark matter has now been settled out of court
  • Time Warner attempted to enforce a Madrid Protocol registration against a local sweet manufacturer using the Ben 10 trade mark, which ultimately lead to an out of court settlement
  • British America Tobacco has attempted stop the implementation of certain plain paper tobacco regulations in Kenya
  • there has been a study on patent, utility model and industrial design activity from 1990 to 2014 released in March 2015 by the Scinnovent Centre which highlighted certain "bottlenecks" to obtaining IP rights in Kenya, including that lack of responses by examiners at KIPI, failure to submit required fees, withdrawals by applicants and poor drafting of applications.
  • Ruma Lodge had sued the Music Copyright Society of Kenya for malicious prosecution, but lost
You can read it in full here.
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Friday 5 June 2015

AfroTwiga

Tales from a Kenyan Patent Agent: the Utility Model, friend or foe?

This blogger has taken a bit of a hiatus, but welcomes the inspiration to write about his favorite subject: Utility Model Certificates (UMCs). Specifically, from an IP practitioner perspective, let's investigate whether UMCs are the inventors best friend or the proverbial wolf in sheep's clothing.
Halt! Who goes there?
(Getty Images) 

Inventors seeking to patent are inevitably faced with a decision - go for a patent, or go for a UMC? Both options have pros and cons, and the decision is always case specific.

The great part about a patent (in Kenya, or ARIPO, at least), is that the patent office does a substantive examination. The patent is therefore very likely to be assumed valid by a court in infringement proceedings. Indeed, there are patent cases in Kenya where the judge refuses to address whether the patent is valid, stating that the patent office is the venue for such analysis. This, of course, is quite different from litigation in most developed countries, where patent validity is part of nearly every patent trial. It is also, in this blogger's opinion, a reasonable decision by any judge that does not have the technical or legal expertise to judge the validity of a patent.

The drawback about a patent application is, lo!, that the patent office does a substantive examination. Thus a patent applicant takes the risk that the patent office will reject the application, leaving him/her with absolutely nothing but a patent application publication (which, it must be said, discloses the invention and exposes the applicant to further copycatting!).

The great part about a UMC is that there is no substantive examination. (There used to be substantive examination in Kenya, but this practice has stopped.) So a UMC applicant is guaranteed to get a UMC. This is true for UMCs in most countries around the world, and is essentially equivalent to the registration system of patenting in South Africa.

The (huge) drawback about a UMC is (lo, again!) that there is no substantive examination. So, when the applicant gets the granted UMC, s/he has no idea whether it's valid and would stand up in a court proceeding. Should I sue an infringer? Will it be a waste of money since the UMC is likely invalid?  Is the court going to even address validity? These are the questions that will forever plague a UMC holder. A patentability search/analysis can give some idea of the likely outcome, but is by no means a guarantee.

Then of course is the option to apply for a patent, and convert the application to a UMC application if the examination is negative. This seems an attractive option but is quite risky - if the examination is negative, then the resulting UMC will have a file history explaining to any future judge exactly why the application was not novel and/or not inventive.

Decisions, decisions, decisions.....
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Afro Leo

Media24 V Oxford University Press - copyright and competing dictionaries


A fascinating copyright case involving the art of dictionary making has come before an African court for the first time and will form the next discussion in Lita's #SandtonDiscussion broadcast on Twitter on Monday between 9am and 10am (GMT+1) and covered by this blog.

"The question of plagiarism or infringement of copyright poses particular problems in dictionary publishing, distinct from those faced by the general publisher. Personnel at all levels of the dictionary-making process from the company’s lawyers to project managers and even low-level freelance compilers- may from time have to make decisions as to what constitutes, and what does not constitute, an unacceptable degree of copying from previously published dictionaries. Prima facie cases of plagiarism may manifest themselves in many different aspects of the dictionary text: conventions of presentation, the headword list, definition style, not to mention the actual content of particular definitions, examples, translations, and illustrations.

The core of the problem resides in the fact that all lexicographers working in a given language (or between two given languages) are covering essentially the same body of knowledge. Given that this body of knowledge is itself linguistic in nature, and that it is usually incumbent upon the lexicographer to produce a text which documents often by way of example typical meanings and usages, it is probably inevitable that dictionaries of broadly similar scope and aims will contain comparable stretches of text that show a degree of similarity unacceptable in other areas of publishing. Off course, some leeway is provided by the fact that dictionaries come in different shapes and sizes with different markets in mind, and each will carve out its own particular section of langue appropriate to its own purposes. However, the problem becomes particularly acute when a publisher sets out to produce a direct competitor to an already existing dictionary in terms of size, number of headwords, and general focus of coverage.

Given that most working lexicographers continually consult other dictionaries as a matter of routine it is important that all personnel involved in the dictionary-making process should be in a position to decide, on some kind of systematic and uniform basis, what kinds of copying, if any, are acceptable, and which are not. This is desirable not only in terms of the strict legal requirements of copyright, but also on professional and ethical grounds.” @para 75 of the judgment

Nic Rosslee
Nicholas Rosslee will be leading the discussion on Media24's attempt to halt Oxford University Press's competing bilingual Afrikaans/English dictionary, and the usual culprits ( ) will be supplying commentary. But of course, that could include you - please feel free to chime in before, during or after the Monday using the #SandtonDiscussion.

Some action from this week's discussion:

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Jeremy

New plant varieties in Sub-Sarahan Africa -- an article

Vol.14 issue 3 of the Bio-Science Law Review, published by Lawtext, contains an article of substantial relevance to readers of this weblog. It's "Intellectual Property Protection of New Varieties of Plants in Sub-Saharan Africa: Overview of Existing Regimes (Part 1)" by Marcelin Tonye Mahop, Aprinah Magarinah Shikoli and Alhaji Tejan-Cole. According to the abstract:
Innovation: getting hotter in Africa ...
"The 1994 WTO TRIPs Agreement requires WTO members, except least developed countries (for the time being if they do not want to) to provide some form of intellectual property protection to plant varieties, but does not oblige them to utilise a specific IP tool (between patents or sui generis Plant Breeders' Rights) for such protection. In this article, the African Agricultural Technology Foundation (AATF) has sought to provide an overview of the approaches adopted by 33 jurisdictions across Africa for the protection of new varieties of plants using either a sui generis system (UPOV-based or not) or the patent system. These jurisdictions include the two main African regional intellectual property organizations, the Organisation Africaine de la Propriété Intellectuelle (OAPI) and its English-language counterpart, the African Regional Intellectual Property Organization (ARIPO), and 31 national regimes for plant variety protection in Africa. Part 2 of the article will appear in the next issue of the journal".
The sequel, in Vol.14 issue 4, is unsurprisingly entitled "Intellectual Property Protection of New Varieties of Plants in Sub-Saharan Africa: Overview of Existing Regimes (Part 2)".

It's good to see a journal like the BioSLR carrying materials on Africa, since there is a feeling in some quarters that the continent is merely a repository for old varieties which pharma companies and others target for bio-prospecting purposes, rather than a place from which innovation springs.
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Jeremy

Egypt, Japan launch patent prosecution highway

Afro Leo learns from the latest (May 2015) AGIP Bulletin that the Egyptian Patent Office and the Japanese Patent Office have agreed to commence a Patent Prosecution Highway (PPH) pilot programme, in order to accelerate the patent grant procedures. The programme actually started this week, on 1 June 2015.

The PPH pilot programme will let Egyptian patent attorneys file requests for accelerated examination, upon request of the Japanese applicant, on the condition that the Egyptian Patent Office has acknowledged patentability of the invention, as well as receiving the necessary documents related to the patent application filed at the Egyptian Patent Office.
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Thursday 4 June 2015

Afro Leo

Can you help Kingsley?

Our good friend and dedicated purveyor of the African IP missive, Mr Kingsley Egbuonu, is currently researching an article which will highlight IP's most influential people for leading publication Managing Intellectual Property. He would love to have a case for at least 5 influential people from Africa, to put to his editor.  Typically he is looking for non private practice individuals of substantial standing and influence in the IP sector in Africa. All recommendations to Kingsley's contact details here.
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Tuesday 2 June 2015

Jeremy Speres

Guidance on trade mark prior use defence - Etraction v Tyrecor on appeal

Just over a year ago, we reported on a rather confusing trade mark infringement and expungement judgement of the Western Cape High Court in Etraction v Tyrecor. I also promised to report the appeal judgement once delivered, which I now regret just a little given that it meant I had to compile this report on the appeal in the early hours of a freezing Cape Town winter’s morn.
 
Nevertheless, the SCA’s appeal judgement was an interesting read, mostly for the things it did not decide, but also because of Judge Wallis’ apparent fondness for the phrase “There is not a jot or tittle of evidence…” which he’s used not once but twice in the space of two months.

Briefly, the appellant had claimed that the respondent was infringing its registration for INFINITY in respect of tyres and wheels.  The respondent relied on the section 36 “prior use” defence but also counter-claimed for expungement of the mark on the basis of, amongst others, section 27(1)(a) of the Trade Marks Act.

The most significant points to take from this judgement are:

1.   It appears to be the first time the SCA has weighed in on the debate about whether an unregistered mark is assignable separately from the goodwill of the business – see para 11.22 in Webster & Page.  The SCA (at para 14) sided with the High court in the Butterworths case where it was held that this is not possible, contra to indications in the Incledon case of the opposite position;

2.   In a footnote (10) the SCA questioned (without deciding) its previous finding in the Caterham case to the effect that only a reputation and not goodwill or custom in South Africa is required to found a claim of passing off. This was in light of the recent ruling of the UK Supreme Court in the Starbucks case reported yesterday on this blog by Ian Learmonth, where the contrary view was taken;

3.   The court gave credence to the statements in Webster & Page at para 15.18.1 to the effect that it is possible for a distributor (as opposed to the manufacturer) to acquire a reputation and goodwill in the name or get-up of the distributed goods in certain circumstances (see para 18);

4.   A broad meaning is to be ascribed to the words “predecessor in title” appearing in section 36. In particular, the SCA was prepared to accept in this case that the respondent was a predecessor in title of the previous user of the mark despite there being no apparent formal assignment of goodwill or sale of business documentation; and

5.   Without deciding the point, the court gave firm support to the view that one is not required to prove prior use giving rise to a reputation in order to rely on the section 36 prior use defence, but merely bone fide and continuous use.

All in all a great read touching on quite a few tricky issues.
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Monday 1 June 2015

Afro Leo

Starbucks v British Sky Broadcasting 2015 UKSC 31

Now... this is Ian (ed)
This is a guest post by Ian Learmonth, following the discussion he lead last week on the case (see further commentary using the hashtag #SandtonDiscussion) especially as it relates to South Africa and other common law jurisdictions heavily influenced by developments in English law.

"This case considers whether a passing off claim in the United Kingdom requires the plaintiff to show that it has customers in the territory concerned, or whether simply having a reputation is sufficient. The plaintiff is the operator of an Internet based television company in Hong Kong, under the brand NOW TV. The services they offer require hardware which is not available in the UK and it was common cause that its core services could not be accessed from the UK. However, a large number of members of the Chinese speaking community in the UK are aware of the brand through past exposure while abroad. Some content generated by the plaintiff was freely available via the plaintiff's website and on YouTube, but this material is primarily intended to promote its services in Hong Kong.

Now ..,this is Sky (ed\)
The defendant launched an Internet based television service under the brand NOW. The Court accepted that the marks were likely to cause confusion, but noted that the plaintiff, despite having a reputation in the UK, had no customers and therefore no goodwill. It was held that the existing English common law required goodwill in the territory. However, the Court was called on to develop the common law to recognize that reputation could substitute for goodwill in light of modern communication and business practices.

The Court conducted a fairly thorough examination of the approach to the requirement of goodwill in other common law jurisdictions. It noted that in Ireland, New Zealand and Canada, the requirement for goodwill was still strictly applied. In Australia and South Africa courts have recognized that reputation alone is sufficient to support a claim for passing off. In Hong Kong and Singapore recent jurisprudence has wavered slightly but both have concluded that goodwill remains a requirement. It should be noted that in Singapore it has been held that reputation created through a large scale pre-launch marketing campaign may be sufficient to attract protection on the basis of passing off.
Now ...this is Starbucks (ed)

In reaching its decision the Court decided that a plaintiff must have customers in a jurisdiction, who access the service in that jurisdiction; in other words it is not sufficient for a plaintiff to show that individuals are present in the jurisdiction who make use of its services outside of the jurisdiction. However, the Court did recognize that customers who are able to book the services within the jurisdiction, should be considered as customers, even if the factual use of the service only occurs outside the jurisdiction.

The Court also noted that consideration must be given to issues of public policy. It specifically drew attention to the fact that a balance must be drawn between the public interest in free competition and the need to protect a trader from unfair competition. It was acknowledged that where a business has been advertised but not marketed no benefit has been provided to the public.

In interpreting the common law, the Court also considered the impact of legislation which protects foreign well known trade marks. It noted that such legislation is put in place precisely to protect foreign brands from abuse where they are not used within a jurisdiction, provided the necessary requirements are met. The defendant argued that the existence of legislative (provided certain criteria are met) militates against providing broader common law protection. The Court noted that this argument had strong force, although ultimately it was not required to make a decision on this argument.


Ultimately, the Court held that reputation, in the absence of goodwill in the form of customers, was not sufficient to sustain a claim of passing off. The Court explicitly left open the question of whether reputation generated by a marketing campaign in advance of an imminent business launch would attract protection."
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