Friday 14 October 2016

Afro Leo

RSA: Much Needed IP Training Manual For Enforcement Officials Launched

This post is a welcome contribution from Amanda Lotheringen (Senior Manager of Copyright and Enforcement) on the launch of their new training manual. Congrats!
 
"The Companies and Intellectual Property Commission (CIPC) recently launched a South African version of a "Training Manual on Intellectual Property (IP) Crime Prosecution for law Enforcement Agencies and Prosecutors" prepared by the Honourable Justice Harms, former Deputy President of the Supreme Court of Appeal, based on a similar manual prepared for the World Intellectual Property Organization (WIPO). This IP Manual was customized by Justice Harms for the South African legal landscape. The success of the project can be attributed to the close collaboration between CIPC and WIPO’s Building Respect for IP Division.
 
With the manual as a backdrop a training programme was conducted over two and a half days and was attended by senior Commercial Court prosecutors representing six of the nine Provinces and senior police officers from the Directorate for Priority Crime Investigation from all nine Provinces. 38 nominated officials from the above organizations were the first batch to benefit from this Train the Trainer programme. Training trainers has proven to be very effective as a mechanism to promote peer to peer practical training.
 
The objectives were to build capacity and foster inter-agency cooperation as cornerstones of effective enforcement of intellectual property rights (IPRs) in South Africa. Building partnerships and leveraging on the expertise of such partners greatly assist the CIPC to strengthen the regulatory environment and efforts geared at combating trade mark counterfeiting and copyright piracy.
 
The first day commenced after the Acting Commissioner for CIPC, Adv Rory Voller welcomed all participants and emphasized the successes associated with collaboration, especially in training and education initiatives. He also mentioned the political will and commitment that the Minster of Trade and Industry, Rob Davies, MP had expressed by way of listing combatting counterfeiting and piracy as a key priority area for CIPC.
Adv. Voller was followed by the Executive Manager for Innovation and Creativity, Ms Nomonde Maimela who highlighted cooperation between investigators and prosecutors as a crucial element of a successful criminal prosecution. She emphasised the linkages between the IP Manual and the international obligations and requirements contained in Part III of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement"). Article 61 of the TRIPS Agreement requires members of the World Trade Organization ("the WTO") to "provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale". South Africa, as a consequence, adopted the Counterfeit Goods Act 37 of 1997 (GCA) as part of the legal framework within which to deal with IP-related crimes.
 
Ms. Maimela further underscored the value of the IP Manual as a tool to assist investigators and prosecutors in identifying the essential elements of trade mark counterfeiting and copyright piracy and to analyse the requirements for successful prosecution. She closed by emphasising the link between effective enforcement of IPRs and economic growth.
Louise van Greunen, Director, Building Respect for IP Division represented WIPO. She commended South Africa as being the first Member State to have adopted a customised version of the WIPO Training Manual on Intellectual Property (IP) Crime Prosecution for law Enforcement Agencies and Prosecutors and thanked the CIPC for their commitment to build capacity in this important area.
 
The training was conducted at the highest level with most of the substantive lectures being presented by the author of the IP Manual, Justice Harms."
Read More

Friday 7 October 2016

Afro Leo

Similarity Tools, Bug Bears and Brexit

Readers may or may not be aware of the work that the European IP Offices have doing to establish a similarity tool for goods and services. This tool (see here) consolidates the practices of the offices to create a search that will establish the degree of similarity between goods & services. This is important for both prosecution (searches, citations etc) and litigation departments (oppositions, infringements, cancellations etc).  It is a very useful guide only they say - check out its disclaimers.
 
Similarity Tool Disclaimer
Some of you may have already used this tool, some not. Although it does not give you a practice on the similarity of wine & grapes, it does for just about every other good and service. This is useful because if there is no similarity there cannot be a likelihood of confusion under the European application of the test and probably since Due South in South Africa's application of the test too. There is also a handy section measuring the degree of similarity and the reasons for non similarity (mostly applying the well known Treat test and recent permutations of it).
 
Forgive me for the next paragraph but it has been a bug bear of mine since returning to RSA from Europe almost a decade ago:
 
Under the EU application of the Sabel v Puma test on "likelihood of confusion", there is a distinct requirement for the similarity of goods and services to be determined. In South Africa, the judgments still conflate the issues of similarity of goods/services, similarity of mark, nature of consumer, purchasing act, strength of mark and likelihood of confusion without first analysing each element. I believe that the current approach in RSA is the wrong approach. I jotted down my thoughts in several blog posts in 2012 (here, here and here) and more recently gave a presentation at UJ on this very topic. I still get very irritated when I read Yuppie Chef, Black Knight and the many others on the application of our test because it leads to incorrect decisions. At least in my opinion.
 
Incidentally, this week ARIPO renewed its co-operation with EUIPO, and one of the areas of collaboration involved the sharing of the similarity tool. I thought that the tool, very kindly made available on EUIPO’s website, was therefore already “free to air”. However, the sharing of this tool and the various areas of co-operation discussed by the two intergovernmental offices does indicate to me that European influence in the interpretation of the tests is likely to prevail in Africa as we go forward.
 
On this note, it will be interesting when/if Brexit occurs. Up until the mid nineties, RSA courts if unsure of the meaning of their trade mark legislation they would take a look at that was happening in the UK. As the European system has developed the gaze of the South African courts has focussed more on continental Europe and decisions of the Courts of Justice as they have been known. Now if Brexit occurs it will be interesting to see which courts will have our preference; we have seen much discontent over the years over on IPKat about how the Brits view some of the decisions in Europe.
 
Happy Friday!
 
Read More
Afro Leo

ARIPO & EUIPO shake hands as Marrakesh comes into force

Best mates: Campinos & Dos Santos
ARIPO, the intergovernmental organisation for co-operation amongst African states in intellectual property matters has, this week, signed a Memorandum of Understanding with the European Intellectual Property Office (previously OHIM). It aims to achieve the following:
  • renewing relationships between the two organisations that commenced formally in 1999
  • licensing ARIPO data for use in EUIPO's free to view trade mark, design and patent search platforms, and for statistical information
  • dedication to a process of harmonisation
  • co-operation on training (including secondment opportunities) with annual meetings to discuss major pending issues
  • extension of IT, automation and modernisation schemes
  • co-operating on research development and enforcement initiatives
The feature that caught Afro Leo's eye is the possibility of EUIPO exporting and sharing the EUIPO developed "similarity tool" and Afro Leo had dedicated a separate post to that.

For more on this please click here.

ARIPO also celebrated the coming of age of the Marrakesh Treaty on 30 September 2016 (thanks for reminding us!) but somewhat lamenting that only Mali had ratified the Treaty after nine African States had originally signed it. ARIPO urges other African states within its membership to come on board.

For more on Marrakesh including a tribute from Stevie Wonder click here.

Read More