Afro-IP

Appetising address at LES SA AGM

2012-01-27T07:39:00.000Z

Those with an interest in the progress of South Africa's initiative to commercialise IP from publicly funded institutions are in for a treat at the AGM of the South African Chapter of the Licensing Executives Society (LES SA) next Thursday 2 February.

LES SA has invited the head of the (National Intellectual Property Management Office) NIPMO, Dr Jonathan Youngleson, to deliver their keynote address at the AGM.

His address is expected to cover issues such as the 'Status of the Implementation of the IPR Act, the Primary Nightmares with the Implementation of the IPR Act as Experienced by NIPMO and/or Others, the IPR Act’s Influence on Contract Research, etc.' according to the invite.

Afro Leo had a chance to catch up with LES SA president Theo Doubell (Bouwers) about the meeting invite which is only addressed to members but Theo says everyone is welcome - just make sure to RSVP here to Kevin Dam (DM Kisch) for catering. Cocktails and drinks follow the AGM and, who knows, you just may join the Society which is all about commercialising IP.

Finer details then:

Thursday February 2
AECI offices - AECI place 22/23, The Woodlands, Woodlands Drive, Woodmead
4pm for the Keynote address

See you there!

A to Z of African official IP websites no.32: Mauritania

2012-01-23T08:19:00.002Z

This week Afro-IP's A to Z trek through the official websites of African nations reaches the sandy expanses of Mauritania, where Kingsley Egbuonu has little to cheer us up with. Kingsley reports:

Overview

Mauritania is a Contracting Party to a number of treaties on intellectual property (IP) including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also an OAPI member.

Copyright Office

• The Cultural Cooperation and Intellectual Property Department is the competent office responsible for copyright and related rights in Mauritania.

• The office has no website.

Industrial Property Office

• The Directorate of Industry (Ministry of Industry and Mines) is the competent office responsible for the administration of intellectual property rights in Mauritania.
• This office has no website.

Social Media Presence

None.

Intellectual Property update in Mauritania

No recent update.

Conclusion

A Mauritanian citizen turned his business idea into a success story, thanks to intellectual property. Yet Mauritania -- like some members of the OAPI-- does not have a web presence for its IP office(s) to enlighten its citizens on the use of IP.

Afro-IP hopes that Mauritania can see IP as a tool to economic and social development.

Kingsley tweets as @IPinAfrica

IP Merger in RSA

2012-01-20T14:51:00.002Z

Afro Leo normally tries avoid posts about law firms (unless the information is truly scandalous) but makes an exception because the news involves two very long standing IP firms/practises based in South Africa. For more information click here.

Fridaylite

2012-01-20T08:30:00.001Z

Hypothetically you act for NOKIA and this is KIA's new ad (I have no idea whether it is) - is this legal use of your name, not use of your name, trade mark infringement, unfair advantage, detriment, passing off, or just plain funny (or not) or .. a very very long road? Poll here.

A$A funding crisis and Frankies v Woolies update

2012-01-18T08:37:00.001Z

Those scales need $ fast

Disturbing news of the possible demise of the Advertising Standards Authority (South Africa) for lack of funding has been circulating for a few weeks now with no immediate respite in sight.

Afro Leo was on the phone to the ASA this morning who confirmed that there was "no change in the situation".

The ASA is the regulatory body that protects consumers from unethical and misleading marketing and referees disputes between competitors. This latter function often involves disputes over packaging, slogans and advertising goodwill which is where it overlaps with intellectual property, especially passing off and unlawful competition.

The ASA has, to a large extent, through its efficiency, relatively cheap cost, transparency (eg an up-to-date website complete with decisions) and engaging manner, shown up our courts by attracting disputes which otherwise might have been heard before them. In doing so, it has fulfilled a vital function for business and the consumer, generally.

An example of a recent dispute handled by them is the Frankies V Woolies look-a-like packaging saga that erupted in the press just before Xmas. News on the development of this case is that Frankies has filed its complaint. It took some time before monies reached the ASA and no doubt the Xmas holidays delayed the matter. In any event the ASA is now awaiting Woolies' reply before taking the matter further. For Afro Leo's grilling by Bruce Whitfield about the dispute (702 and Cape Talk) click here.

A to Z of African official IP websites no.31: Mali

2012-01-16T05:35:00.000Z

From Malawi to Mali is only a short journey for a blog editor, since you can get there just by deleting the "aw". For Africa's online globetrotter Kingsley Egbuonu, the trip from the 30th to the 31st country on his schedule is rather more of a culture leap, from ARIPO to OAPI. So what did Kingsley find in Mali? Read on:

Overview

Mali is a Contracting Party to a number of treaties on intellectual property, including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. Mali is also an OAPI member.

Copyright Office

• The Malian Copyright Office is the competent office responsible for copyright and related rights in Mali.

• The website for this office is www.bumda.cefib.com and it is in French.

Industrial Property Office

• The Centre for the Promotion of Industrial Property in Mali (Ministry of Economy, Industry and Trade) is the competent office responsible for the administration of intellectual property rights in Mali.

• This office has no website.

Social Media Presence

None.

Intellectual Property update in Mali

No recent update.

Conclusion

Unlike some of OAPI members seen so far, Mali at least has a website for its copyright office. It is our hope that Mali can build on this towards a better presence for its offices.

Kingsley tweets as @IPinAfrica

First the strike, then the backlog: grim news from Nigeria

2012-01-15T12:49:00.000Z

Afro-IP thanks Bolanle Olowu (Partner, IPI Watch Services, Lagos) for the following information concerning the national strike in Nigeria and its effect on trade mark, patent and design filings:

"The Nigeria Labor Congress, Trade Union Congress and Coalition of Civil societies embarked on a nationwide strike to protest the recent increase in the price of premium motor spirit (petrol) in Nigeria on 9 January, 2012. As a result of the nationwide strike, 98% of offices were shut down including Government offices, as well as the Trademarks, Patent and Design registry.

This action automatically translates to huge loss of commercial revenue generated daily from Trade Marks, Patent and Design filings, renewals and all other antecedent processes that emanate from intellectual property transactions. It is been widely reported that the resultant effect of the strike on the country’s economy is a loss of about 617 Million dollars per day since the strike started.

In relating this to the income generated by the registry daily, it may not be possible to give you precise figures, but it is on record that we have increased filings of intellectual property rights yearly with an estimated filing of about 98,000 or more applications filed last year.

This current impasse brings to mind amongst others the question of how the registry will deal with the issue of convention applications claiming priority which falls between the days of the strike. That is a decision for the Registrar to make upon resumption as the Nigerian Trade Marks, Patent and Design Acts do not make provisions for such circumstances.

In all of this, one thing that is clear is that the registry will be inundated with new applications and matters to deal with in addition to the existing backlog.

Trade mark agents and registry officials will certainly not be looking forward to dealing with the excess work upon resumption".

Bolanle promises to keep us updated on further developments.

Anti-Counterfeit Friday

2012-01-13T14:15:00.002Z

Stun Grenade downtown Joburg (Pic Adrian De Kock)

From one of South Africa's leading newspapers - the Star is a front page story about one of IP's greatest challenges:

"Parts of Joburg [ed Africa's commercial capital] resembled a war zone yesterday as the SA National Defence Force, the SAPS Tactical Response Team and customs officials took part in Operation Festive Season for a second day."

"Two army Rooikat trucks stood at both ends of Delvers Street as officers focused their efforts on counterfeit clothing, and shopowners looked on helplessly as their stores were raided and their goods confiscated."

The tone and content of report is highly critical:

"A taxi driver was dragged into a puddle and ordered to swim because he laughed at a police officer. A woman was pepper-sprayed and beaten with a stick because she wanted to close her shop. And a human rights worker had his phone confiscated and was arrested for taking photographs of a soldier beating a shopkeeper with the butt of his R4 assault rifle."

Comment:

At the risk of repetition, it is almost a year to the day that a Custom offical was murdered for being too effective at his job. The statistics on counterfeiting are at appalling levels - taxes do not get paid, jobs and revenue are lost, counterfeit spare parts and drugs are deadly and counterfeiting has been linked to organised crime and perhaps even terrorism. The effects of counterfeiting cannot be underestimated and whilst Afro-IP does not condone brutality or abuse of powers in any way, it supports all efforts against counterfeiting. One must question whether, but for the alleged abuses mentioned in the report, the news would have made the front page or the newspaper at all. Probably not. And what does that say about the mindset of the public against dealers in counterfeit goods, when such news does not (on its own) sell papers?

Africa and the INTA: no excuses allowed

2012-01-13T11:35:00.000Z

2012: time to put Africa
on the map at INTA

This year's International Trademark Association (INTA) takes place in Washington DC from 5 to 9 May. After last year's furore over the disappearance of Africa from the programme, Afro Leo is delighted to announce that it has been restored for 2012: an African Regional Session will be held on Wednesday 9 May, from 10.15am to 11.30am.

Now for a growl from Afro Leo.

It's no good saying that there ought to be an Africa Session, complaining when it's dropped -- and then not bothering to turn up for it. There are plenty of other opportunities to do your shopping (and don't pretend that you're not disappearing off to the shops ...) -- and if you aren't clubbing and overdoing it on Tuesday night you shouldn't have any problem getting up in time for a 10.15am meeting.

Don't say either that there's no point in going because you only meet other Africans there and you know them already. Apart from the fact that it's simply not true -- I spotted a couple of big corporate non-Africans at the session two years ago, one of whom even asked a question -- you can make sure that the event is better attended by people from outside the Continent by dragging them along. If each African attending INTA were to bring in one non-African, imagine how impressive the session would be.

This is a big year for Africa. The May session is the first since the Arab Spring and the first since the founding of South Sudan. It coincides with a time when the once-prosperous markets of North America and Europe are looking shabbily recessional, and where entrepreneurs are seeking new opportunities. An article in The Economist recently pointed to the increasing growth potential which has sprung from the emergence in much of Africa of a large, educated and relatively affluent middle class with matching aspirations. But there's not much hope of persuading people of this if all they see at INTA is a largely empty room with a sign saying "Africa" hanging on the door.

First January Post

2012-01-11T21:14:00.000Z

This Afro Leo's First January Post (delayed due to a xmas break) is, as usual, Janus-like in its glance over some of the major issues in 2011 and forthcoming projects in 2012.

Some highlights in 2011 include :

Really a lowlight but a very significant incident was the murder of customs official Johan Nortje which provoked well over 300 concerned readers to vote on the Afro-IP poll for an urgent investigation and which lead to World Trade Mark Review's grilling of Ronald Noble and Kunio Mikuriya of Interpol and WCO, respectively, about the incident - highlighting the stakes in the counterfeiting business in Africa.
INTA's response(s) to the omission of the Africa focus for the 2012 INTA meeting following an outcry from readers, are greatly appreciated - Africa remains firmly on INTA's IP agenda.
Jeremy's Monday posts from roving cyber reporter Kingsley Ebgonou whose efforts in highlighting the the online presence (sadly, mostly absence) of African IP Registries have started to elicit change and a great deal of interest. His most recent excursion to Malawi must have felt like fishing for shark at their stunning Monkey Bay.
South Africa's TKgate (click here) exposed by Professor Dean in his new post as the Anton Mostert Chair of Intellectual Property at Stellenbosch University. If the name of the post is mouthful its vision to be "the custodian of South African IP law" is certainly not.
The retirement of probably the most active and well respected IP Judge in South Africa, if not the continent - Louis Harms. His departure leaves a worrying gap on the South Africa bench. If only the South African public paid as much attention to its judicial bench as it did to Bismark Du Plessis' worrying presence on bench at last year's Rugby World Cup.
The IP interest in Africa's 55th country - South Sudan - which has given rise to a great number of online hits as did the Libya update by Spoor and Fisher on the Afro-IP Linkedin group.
The rise of new African IP blogs such as IPKenya and social media tweeters with an African bite such as @IPinAfrica and @cr8veDesignLaw (Adams & Adams) to name a few, apart from @afroip of course.
ARIPO's newsletter content that is excellent in depth and breadth - long may it last.
Nigeria embracing the role of IP in nation building and the role of overseas base institutions such as WIPO, CLDP and PIPRA in promoting African IP together with the constant and appreciated support of the IPKAT weblog.
The launch of the Anti-Counterfeit Friday posts to promote the extent of the problem on the continent.
Recognition of Afro-IP by:

the SAIIPL president Tshepo Shabangu for its role in promoting African IP.
LexisNexis as one of the top 25 international law blogs (see alongside)

Although Afro-IP is extremely appreciative of the support from its readers, contributors as well as acknowledgements and notes 2011 highlights above there is still a considerable amount to do. Africa is a continent with around 1 billion people and 55 odd countries full of innovation, yet its worldwide contribution to IP is estimated to be under 1%. Whilst the first WIPO report on the state of worldwide IP recognises advancements on the continent, the numbers come from such a low base that one cannot but help feel that progress remains slow. Afro-IP appreciates that there are considerable constraints to IP growth and recognition such as poverty, education and war but sends this rallying call to those in the know to take some (extra) time out (and continue) to contribute, and make a difference by sending contributions here or by commenting on the blog.

Best wishes for 2012!!

Calling all African IP practitioners in London

2012-01-11T17:50:00.001Z

"Lyons": not quite what Afro Leo
has in mind, but he's sure that
a suitable venue can be found

I get the impression that there are quite a lot of African intellectual property practitioners in London and its catchment area and it struck me that it might be fun to organise a late afternoon or early evening meeting under the auspices of the Afro-IP weblog that would (i) facilitate a little networking and (ii) possibly have some solid IP content to it if we could find a speaker on a subject of genuine pan-African interest to the IP fraternity.

At present, I've no venue and no idea concerning dates, but I'd like to find out how many readers of this blog might like to attend. If the response is good, I'll organise something. So if you'd like to attend, email me here with the subject line "Afro-IP London". Don't expect an immediate reply, but I'll get back to you in time. And if you can offer a venue or hospitality, let me know!

Mozambique to discuss PCT annuity payment dates

2012-01-11T11:07:00.000Z

You'd be surprised where discussion of African IP topics occurs. From its name, the ECTA Group on LinkedIn sounds fairly Eurocentric: is ECTA not a leading body of trade mark practitioners, so what concern might it have with matters of an African nature? Well, this blogger, a member of the ECTA LinkedIn Group, happened to spot the following from Mozambique-based IP practitioner Wanda Honwana:

"PCT - MOZAMBIQUE: In Mozambique, when we file the national phase of a PCT [Patent Cooperation Treaty] application it is necessary to pay the 1st and the 2nd annuities. So, is the term of protection calculated from first priority date or application filing date? Which is the date for calculating subsequent annuities? We have started a discussion with the PTMO [Patent and Trade Mark Office] regarding this matter which can result in a alteration of the PCT procedures in Mozambique".

If you are involved in PCT applications involving Mozambique and fancy a discussion, now you know whom to contact!

A to Z of African official IP websites no.30: Malawi

2012-01-09T03:47:00.000Z

Back on terra firma again after his trip across the water to Madagascar, Afro-IP's e-emissary Kingsley Egbuonu finds himself in Malawi, the 30th country he has visited in his search (often fruitless!) for official intellectual property office websites. This is what he found there:

Overview

Malawi is a Contracting Party to a number of treaties on intellectual property (IP) including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member state of ARIPO.

Copyright Office

• The Copyright Society of Malawi (Ministry of Youth, Sports and Culture) is the competent office responsible for copyright and related rights in Malawi.

• The website for this office is www.cosoma.org but it is not functional.

Industrial Property Office

• The Department of the Registrar General (Ministry of Justice and Constitutional Affairs) is the competent office responsible for the administration of intellectual property rights in Malawi.

• This office has no website.

Social Media Presence

None.

Intellectual Property update in Malawi

No recent update.

Conclusion

Like some members in ARIPO, Malawi’s IP offices do not have an online presence. However, Afro IP hopes that Malawi can make effective use of its links [for example, the Scottish Law Commission at http://www.scotlawcom.gov.uk/news/malawi-link/] to advance IP as a tool for development.

Kingsley tweets at @IPinAfrica

A to Z of African official IP websites no.29: Madagascar

2012-01-02T06:39:00.000Z

Ever-restless as he roams the vast continent of Africa in search of official intellectual property websites, Afro-IP's e-emissary Kingsley Egbuonu indulges in a little off-shoring this week as he travels across the water to Madagascar on the 29th stop in his A to Z tour. This is what he found there:

Overview

Madagascar is a Contracting Party to a number of treaties on intellectual property (IP) including the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.

Copyright Office

• The Malagasy Copyright Office (Ministry of Information, Culture and Communication) is the competent office responsible for copyright and related rights in Madagascar.

• The website for this office is the Ministry’s www.omda.mg and it is in French.

Industrial Property Office

• The Malagasy Industrial Property Office (Ministry of Economy, Trade and Industry) is the competent office responsible for the administration of intellectual property rights in Madagascar.

• The website for this office is www.omapi.mg and it is also in French.

Social Media Presence

None

Intellectual Property Update in Madagascar

No recent update found.

Conclusion

Madagascar seems to have effectively utilised the opportunities and assistance on offer -- especially from the World Intellectual Property Organization (WIPO) -- to advance IP as a tool to its development. One of the ways in which it can demonstrate this is through its useful and updated website.

This is a wake-up call -- if not a challenge – for the larger and wealthier countries in the continent.

Kingsley tweets as @IPinAfrica

A to Z of African official IP websites no.28: Libya

2011-12-26T04:45:00.002Z

Kingsley Egbuonu's 28th visit to an African jurisdiction takes him to Libya, where the highly-publicised civil war and change of government has inevitably resulted in the country facing higher priorities than getting its intellectual property offices online. This is what he says:

Overview

Libya is a Contracting Party to a number of treaties on intellectual property including: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.

Copyright Office

• The Intellectual Property Division (National Bureau for Research and Development) is the competent office responsible for copyright and related rights in Libya.

• Currently, this office has no web presence.

Industrial Property Office

• The Intellectual Property Division (National Bureau for Research and Development) is the competent office responsible for the administration of intellectual property rights in Libya.

• Currently, this office has no web presence.

Social Media Presence

None

Intellectual Property Update in Libya

The industrial property offices in Libya were not damaged during the recent civil war, but they are all expected to be fully functional soon (http://bit.ly/tuTGAt).

Until a government is elected and a new constitution adopted, the Constitutional Declaration currently issued by the Transitional National Council ensures intellectual property rights. Article 8 of the Declaration states that: “… The State shall also guarantee the right of work, education, medical care, and social security, the right of intellectual and private property …”

Comment

Afro-IP wishes the new government of Libya the best of luck in bringing the country together. Hopefully, it will do better on IP than its predecessor.

Kingsley tweets as @IPinAfrica

Frankie's v Woolies: Good old fashioned media

2011-12-21T13:42:00.000Z

pic: facebook

Frankie's story

Goes like this: Frankie's and Woolies meet to discuss a distribution arrangement for their successful Frankie's range of products. After being "declined" by Woolies, Frankie's notice the launch of Woolies' own range of beverages sharing similarities in the retro packaging, range of flavours, descriptions and tag lines. They launch an immediate media attack and an ASA complaint against Woolies. Click here and here for more background information and thanks to Jeremy Speres for the link.

Unlawful - does it matter?

As interesting as the legal aspects are (and they are - you can indulge in the poll alongside if you like) the greater force at play here must be the media. For that reason and for the time being, we'll let the adjudicators and the lawyers (and you, if you wish) settle out the finer aspects of whether this is passing off, unlawful competition, misuse of advertising goodwill and/or breach of confidence by Woolies or defamation by Frankie's (you will note that the youtube video has been removed from the Timeslive site). This post will concentrate on reputation management, media and their place in IP disputes.

Frankie's did not need to go to Hollywood, they simply went to the press. And, in just a few days, social media has done the rest in creating what is no doubt a big headache for Woolies. Consumers appear to be up in arms regardless of whether Woolies are legally in the clear, and there are greater risks if they are found to be in breach of the law. Woolies, though, have handled this type of situation effectively in the past (see here for example) but this seems a steeper challenge to overcome and turn to its advantage?

Zuckerberg has heard this before

There is an irony and lesson that Facebook, itself the subject of a idea theft dispute, has been used as a platform to garner a petition and aire public views (see link above) as it illustrates just how common these types of allegations (theft of an idea shared with a possible business partner) are and also the viral effect of social media . Whether by design, intuition or luck, Frankie's reaction has enabled them to very quickly exploit several advantages open to a popular home grown niche brand and in doing so they have won further publicity (eg #frankies was apparently trending on Twitter). Before social media existed this would not have been possible or, at least not possible at the lightning speed at which it has occurred.

The relationship between media and IP is also illustrated in ambush marketing disputes where an arrest (which, by nature, attracts media attention) has been made, bringing into question the effectiveness of an arrest to curb ambush marketing (which feeds off media attention). It can have quite the opposite result.

It is palpably clear that anyone involved in IP litigation is required, now more than ever before, to be aware of the media (and in particular, social media) as an influencer in the resolution of a dispute. The Coca-Cola Company's handling of an "infringing fan site" is an example of such sensitivity and anyone who has had their cease and desist letter posted on a site for ridicule will also know only too well. Even, a run-of-the-mill trade mark opposition may require PR input before, during and after the decision as Virgin Enterprises found out.

Here's a thought

Social media is also not just open to the small guy. A colleague, Craig Shapiro, recently mooted the idea of using it as a tool to positively influence known infringers - what are the possiblities of a brand using its followers to help others respect their trade mark rights by spurring support and ostracising an infringer. Clearly cheaper than litigating, educational and properly done could deepen brand loyalty.

A to Z of African official IP websites no.27: Liberia

2011-12-19T08:07:00.000Z

Undeterred by previous experiences and impervious to such trivialities as end-of-year breaks, Afro-IP's favourite web-trooper Kingsley Egbuonu soldiers on. In this, his 27th visit to an African jurisdiction in his alphabetical sequence, Kingsley arrives in Liberia. This is what he tells us:

Overview

Liberia is a Contracting Party to several treaties on intellectual property which includes the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. Liberia officially became a member of ARIPO on 24 March 2010.

Copyright Office

The Liberia Copyright Office is the competent office responsible for copyright and related rights in Liberia.
Currently, this office has no website.

Industrial Property Offices

The Liberia Industrial Property Office is the competent office responsible for the administration of intellectual property rights in Liberia.
Currently, this office has no website.

Social media presence

None.

Latest intellectual property update/law

None.

Conclusion

Based on what we have seen so far in the series, some member states of ARIPO have not bothered to enhance their domestic IP office and/or regime. Again, many will –rightly or wrongly- argue that IP is not currently on Liberia’s development agenda.

Kingsley tweets as @IPinAfrica

South Sudan opts for interim reservation scheme for trade marks

2011-12-18T18:52:00.000Z

Afro-Leo has received the following information via a circular from SMAS Intellectual Property, Khartoum, Sudan:

"Following separation of Southern Sudan, and its emerging as a new State, and the absence of legislation and laws regulating Intellectual Property field which resulted from it, the Ministry of Justice in Southern Sudan has issued directives to officials at the Trade Mark Office that they adopt certain procedures known as “Reservation of a Trade Mark” until issuance of a trade mark law. These procedures may be summarized as follows:

1. A written application is submitted to the Registrar indicating the trade mark sought to be protected, as well as prints of the mark in question.

2. The Registrar will conduct search in the data base of the Registry to ascertain whether the mark is registered or not.

3. If it turned out that the mark is not registered, it will be “reserved” in the applicant’s name , and no other person will be allowed to use that mark.

Please note that no official fees have been fixed yet for such procedure".

This weblog is grateful to SMAS Intellectual Property for this information and hopes to be able to update it in due course.

RSA: Adidas v Pepkor - four stripes do not infringe

2011-12-13T04:10:00.000Z

decorative or a trade mark?

IP livewire from Cluver Markotter, Jeremy Speres, has kindly provided Afro-IP with a summary of the very recent Adidas v Pepkor judgement handed down earlier this month in the Western Cape. Afro Leo feels that this is another High Court IP case which is ripe for appeal, but what do you think?

"In a judgement that is somewhat challenging to read at times, the Court touched on issues that have been quite topical in the local IP industry recently, including use as a trade mark as opposed to mere decorative use, the doctrine of acquiescence, survey evidence and, interestingly, the argument that where the complainant’s mark is well-known, likelihood of confusion is diminished.

Here the respondent, Pepkor Retail Limited, the operator of popular local retailers Pep Stores and Ackermans, had been selling various shoes bearing either 2 or 4 parallel stripes contrasting in colour to the material upon which they are placed.

Adidas sought interdictory relief against Pepkor on the strength of its various registered trade marks consisting of three, equally wide, equally spaced, parallel stripes contrasting in colour to the material upon which they are placed, as well as on the ground of passing off.

It was common cause that the only differences in question between Adidas’s marks and Pepkor’s shoes were the number of stripes and the device and label of origin used (Pepkor used various other marks on their shoes beside the stripes).

One of Pepkor’s defences was that the stripes on its products are used purely decoratively and that they do not function as a trade mark. The court accepted that it was open to Pepkor to make this argument (at para 43) although ultimately the court appeared to decide the matter on the basis that Pepkor’s marks were not confusingly similar to Adidas’s. In accepting that Pepkor could raise decorative use as a defence, the court relied on the remarks of Judge Harms in Puma v Rampar Trading (discussed by Afro-ip here) at para 27:

One also cannot use a trade mark and then argue that it was used as ornamentation. It could be different if one is dealing with changes to the mark, for instance, if the registered mark consists of three stripes it would be a question of fact whether the use of two or four stripes would be perceived as decorative or as trade mark use but one could not, I would think, use the same argument in relation to the use of three stripes.

Unfortunately, the court did not consider the judgement of the European Court of Justice in Adidas AG v Marca Mode CV (Case C-102/07) where it was found that generally, the public’s perception that a mark is used decoratively cannot limit the registered proprietor’s protection where that mark is so similar to the registered mark that the public is likely to be confused.

Pepkor also sought to argue that Adidas had acquiesced in the use by others of branding consisting of two and four parallel stripes.

It is to be noted that some have forcefully argued that the doctrine of acquiescence does not form part of our law, most notably Adv. Alasdair Sholto-Douglas SC in New Media Publishing (Pty) Ltd v Eating Out Web Services CC 2005 (5) SA 388 (C) where the question was not ultimately decided. In this case however, the court seemed to accept that the doctrine is applicable (at paras 44 and 114) but found that it had insufficient evidence before it to show that Adidas had in fact acquiesced.

Regarding survey evidence, Adidas commissioned a market survey which seemed to find that consumers form a general impression of Adidas’s marks and that quite a few participants gave “stripes” as opposed to “three stripes” as their answer for identifying an Adidas product (at para 38).

Highlighting the difficulties involved in survey design and the great weight given to proof of actual confusion, the court gave the survey short shrift, finding that Adidas could have attempted to show actual confusion by showing the survey participants Pepkor’s shoes, which was not done.

Finally, and most interestingly, the court appeared to accept an argument that has generally not found favour in the courts (see Webster and Page at para 6.6.7), providing a rare example of the renown of a complainant’s mark actually counting against the complainant’s case!

Pepkor argued (see pg 35 and para 80) that the renown of Adidas’s three stripes excludes the possibility of less or more than three stripes causing confusion, i.e., where a mark is renowned, likelihood of confusion is diminished.

Here the court appeared to accept this argument (at paras 116-119) in combination with the doctrine of imperfect recollection. The reasoning of the court appeared to be that Adidas could not rely on the imperfect recollection of consumers (i.e. consumers failing to recollect that the Adidas mark consists of three stripes as opposed to two or four) given that Adidas’s three stripes are so well-known.

One gets the sense though that this finding was informed more by the fact that potential decorative use was involved and the “requirement of availability” (in the words of the ECJ in Marca Mode)."

------------------------------------------------------

Afro Leo's two cents worth:

* This is another judgement that fails to appreciate that markings on shoes (other than word marks) are more valuable than word marks when it comes to protecting a brand and are very strong source identifiers. Copycats should clearly use their marks decoratively if they want to escape infringement.
* It is interesting that Adidas did not rely on the unfair advantage or detriment provisions when pleading trade mark infringement but did do so under the heading of passing off.
* Afro Leo feels that these types of cases are better suited to arguments that well known brands are diluted under the infringement provisions, interested that passing off is considered wide enough to include dilution at common law and wonders why the Judge did not appear to address the passing off dilution arguments in more detail.
* The Judge, on the other hand, has been very bold to fly in the face of local decisions using arguments that generally mean that less protection is given to reputable marks because they are known, and that the South African public is less likely to be confused in the post economic sanction period!
* As far as acquiescence is concerned, Afro Leo had the privilege of listening to Adv Burt Bester try to persuade Judge Harms in the KG footwear SCA matter that it formed part of RSA law, to no avail.

A to Z of African official IP websites no.26: Lesotho

2011-12-12T08:07:00.000Z

Afro-IP's dedicated web-explorer Kingsley Egbuonu has visited some desperately depressing jurisdictions in his time, as he searches for websites and online services offered by intellectual property offices in our favourite continent. In the 26th in the series, Kingsley -- fresh from a good experience in Kenya -- is cast back into the gloom again after a visit to a country which was once thought to have great IP prospects, Lesotho. Kingsley reports as follows:

Overview

Lesotho is a Contracting Party to several treaties on intellectual property which includes: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member of ARIPO.

Copyright Office

The Ministry of Law and Constitutional Affairs is the competent office responsible for copyright and related rights in Lesotho.
Currently, this office has no website.

Industrial Property Offices

The Ministry of Law and Constitutional Affairs is the competent office responsible for the administration of intellectual property rights in Lesotho.
Currently, this office has no website.

Social media presence

None.

Latest intellectual property update/law

None.

Conclusion

To date, it appears that where IP apathy exists — in a given country in Africa like Lesotho — it is highly unlikely for one to find a website or web trails for that country’s IP office or activity. Based on what we have seen so far in the series, some member states of ARIPO have not bothered to enhance their domestic IP office and/or regime. Again, many will —rightly or wrongly —argue that IP is not on its government’s development agenda.

Kingsley tweets as IPinAfrica

Calling all Africans! INTA's on the way

2011-12-08T09:03:00.000Z

Following last year's crushing disappointment that the International Trademark Association -- the world's biggest and most influential body of intellectual property owners and practitioners -- could find no room for a regional session on Africa (see Afro-IP here and here), I've just spotted that the organisation is calling for hosts in Africa for its Roundtable topics. This can be a great way to promote greater understanding of IP in Africa and to generate more involvement, perhaps leading to an increase in Africa's presence at INTA. The request for Roundtable hosts is here:

INTA seeks Roundtable hosts in Europe, Africa and the Middle East

INTA's International Roundtables are the perfect vehicle to trade thoughts with your peers, compare and learn new strategies, and address common issues and challenges facing the trademark and
intellectual property community, both globally and/or locally.

INTA is seeking hosts in Europe, Africa and the Middle East to participate in the Roundtable program. To volunteer to host a Roundtable or to obtain a copy of the host guidelines, email
roundtables@inta.org.

Learn more at www.inta.org/roundtables

Meanwhile, does any reader of this blog know what provision has been made for an Africa session in the 2012 INTA Meeting which takes place next May in Washington DC? It would be good to hear from anyone who has been asked to give a paper. The earlier Afro Leo gets to hear of the Africa session, the sooner he can start campaigning for readers (from inside Africa and outside it too) to support it.

WIPO's report on the Changing Face of Innovation

2011-12-07T04:48:00.000Z

WIPO recently released its first publication on the state of health of the world IP economy and the changes within it.

Francis Gurry's Forward (copied below) is a very useful summary - the findings of the report make the case for greater investment in IP by governments (RSA's Maclean Sibanda is quoted several times) and service supporting firms. It also has some excellent data on University patenting (eg universities are the highest patent filers in RSA and responsible for 75% of basic R&D spend).

"Innovation is a central driver of economic growth, development and better jobs. It is the key that enables firms to compete in the global marketplace, and the process by which solutions are found to social and economic challenges.

The face of innovation has evolved significantly over the last decades.

First, firms are investing historically unprecedented amounts in the creation of intangible assets – new ideas, technologies, designs, brands, organizational know-how and business models.

Second, innovation-driven growth is no longer the prerogative of high-income countries alone; the technological gap between richer and poorer countries is narrowing. Incremental and more local forms of innovation contribute to economic and social development, on a par with world-class technological inventions.

Third, the act of inventing new products or processes is increasingly international in nature and seen as more collaborative and open.

Fourth, knowledge markets are central within this more fluid innovation process. Policymakers increasingly seek to ensure that knowledge is transferred from science to firms, thereby reinforcing the impact of public research.

Moreover, ideas are being co-developed, exchanged and traded via new platforms and intermediaries. In this new setting, the role of intellectual property (IP) has fundamentally changed. The increased focus on knowledge, the rise of new innovating countries and the desire to protect inventions abroad have prompted a growing demand for IP protection.

IP has moved from being a technical topic within small, specialized communities to playing a central role in firm strategies and innovation policies.

Understanding these innovation trends and the associated role of IP is important in order for public policy to support new growth opportunities. The essential questions to ask are whether the design of the current IP system is fit for this new innovation landscape, and how best to cope with the growing demand to protect and trade ideas. To move beyond polarized debates on IP, more fact-based economic analysis is needed. In addition, it is crucial to translate economic research in the field of IP into accessible policy analysis and messages. "

The report -184 pages of analysis - plots the link and development of IP and productivity in high income countries relative to low and middle income countries, the effects of collaborative innovation, growth rates of technology exports (notably from China) and records that Africa has increased its technological and knowledge share of its GDP. As with most statistic based analysis it will be open to criticism but it's a valuable start.

A to Z of African official IP websites no.25: Kenya

2011-12-04T17:07:00.000Z

Afro-IP's dedicated web-explorer Kingsley Egbuonu has visited some desperately depressing jurisdictions in his time, as he searches for websites and online services offered by intellectual property offices in our favourite continent. But this week, in the 25th in the series, Kingsley finds something to cheer about. There is definite evidence of official life online in Kenya. Kingsley explains:

Overview

Kenya is a Contracting Party to several treaties on intellectual property which include the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member of ARIPO.

Copyright Office

• The Kenya Copyright Board (KECOBO) is the competent office responsible for copyright and related rights in Kenya.

• You can visit this office at http://www.copyright.go.ke

Industrial Property Offices

• The Kenya Industrial Property Institute (KIPI) (Ministry of Trade and Industry) is the competent office responsible for the administration of intellectual property rights in Kenya.

• You can visit this office at http://www.kipi.go.ke

Social media presence

You can follow Kenya’s copyright office on twitter @KenyaCopyright and on Facebook with the username Kenya Copyright Board. The industrial property office is not on Facebook or Twitter, but the interactive facility (for comments) on its website is better than nothing.

Latest intellectual property update/law

The Copyright (Amendment) Regulations (2011) amending the Copyright Regulations (2004). Also the Competition Act No. 12 of 2010 which came into force on 1 August 2011 makes provisions concerning the protection of intellectual property rights.

Conclusion

Both IP offices in Kenya are currently doing a fantastic job in terms of accessibility. Their websites are well updated and loaded with useful information and documents any IP devotee would love to see.

All Afro-IP can say is: “keep it up”!

Anti-Counterfeit Friday

2011-12-02T04:47:00.001Z

On the morn of ex top cop and head of Interpol, Jackie Selebi's (right), appeal decision in South Africa against his corruption charge that could see him sent to jail, Afro-IP brings you their regular post highlighting the damaging problem of counterfeiting on the continent. Corrupt cops and border officials are partly to blame ... For previous ACF posts, click here.

Counterfeit goods: Where to go for a Chinese BlackBerry
Financial Times (Subscription based)
Similar counterfeit brands exist for other phones in similar markets across east Africa's towns and cities. They sell in the thousands to lower income consumers, unable to afford the real thing, but seduced by big brand names. ..

Africa: Western Union Offering Support for Diaspora Entrepreneurs
AllAfrica.com
Look at SPROXIL in Nigeria addressing the issue of counterfeit pharmaceuticals prevalent throughout Africa. SPROXIL has generated deals with pharmaceutical companies where they put a code behind a scratch-off label and consumers can SMS the number to ...

East Africa: Regional Parliament Wakes Up to Fight Counterfeits
AllAfrica.com
The East African Parliament has demanded that the five partner states implement and operationalise laws against counterfeit products, which have continued to flood the regional markets. Officials also want states to enforce stiffer penalties for ...

Counterfeits Dragging EAC Single Customs Plan
Middle East North Africa Financial Network
Counterfeit goods menace is slowing down the implementation of the East Africa Community single customs territory because of some porous borders within member states, a new report has ...

Nokia Fights
Middle East North Africa Financial Network
Nokia, one of the leading mobile phone manufacturers, has intensified its war against counterfeit products on the market. This was revealed by Nokia's Head of marketing East and Southern ...

Honeywell extends fight against fake refrigerants
ACR News
We are taking the necessary actions to protect that investment and ensure that users get the high-quality product they need," said Paul Sanders, Managing Director for Honeywell Fluorine Products in Europe, Middle East, Africa and India. ...

Microsoft: Highlighting Dangers of Counterfeit Software
THISDAY Live
... Microsoft's Corporate Attorney for Anti-Piracy for the Middle East and Africa region. “People all over the world are making quick money from pirated and counterfeit software and their actions are adversely affecting local and global economies. ...

Pirated software leads to infection
Gadget
The trade in counterfeit goods is costing South Africa millions of rands annually in lost revenues, says Mandla Mnyatheli, chief director of company and IP enforcement with the Department of Trade and Industry (DTI). “Every day we strive to compete in ...

Kenya sees local criminal networks driving counterfeit crime
Xinhua
Kenya's two main cigarette manufacturing companies, the BAT East Africa and Mastermind Tobacco have previously reported high levels of counterfeiting. The official said so far, most of cases in court on counterfeit involve selling of counterfeited ...

XXXXXXXXX Breaking news @ 10am

Cape Verde publishes first IP Bulletin

2011-11-30T16:59:00.000Z

Via Inventa International and a tweet from the excellent @filemot comes news that Cape Verde [on which see Kingsley Egbuonu's profile here] has issued its first ever IP bulletin. According to this news item:

"... This is the first big step for the new IP Office (IPICV – Instituto da Propriedade Intelectual de Cabo Verde), which will soon be installed as a separate Office from the ministry of commerce and industry, and focused only on Trademark, Patent and Author’s Rights registrations.

This new bulletin comprises the publication of the first 1,200 trademark applications that were filed in the country, along with several copyright registrations for artistic and literary art work".

Sadly this bulletin does not yet appear to be available online -- but at least it's a start.

Morocco - local company taken to task by TM Registry

2011-11-30T10:26:00.000Z

The Intellectual Property practice at NJQ & Associates based in Amman, Jordan, has alerted Afro Leo to a cancellation action filed in Morocco on behalf of one of their clients:

"Planette Battery SARL, a Moroccan Company, filed a trademark application for "Platin Battery" in class 9 No. 122427 on 17 March 2009, which was published on 11 June 2009.

Acting on behalf of our client, YİĞİT AKÜ MALZEMELERİ NAKLİYAT TURİZM İNŞAAT SANAYİ VE TİCARET ANONİM, a Turkish company, we filed a cancellation action against the above application based on:

• Bad faith of the defendant, since he was our client's local distributor in Morocco.

• Filing the subject trademark by the defendant lead to unfair competition and harm our client's interests.

• Our client is the sole and legitimate owner of the trademark "PLATIN BATTERY" around the world.

• Prior use and registration of "PLATIN BATTERY" by our client.

• The registration of the mark by the defendant violates the provisions of Paris Convention and local laws.

• The trademark "PLATIN BATTERY" is well-known and is associated with the name of our client.

• Due to the fact that our client's trademark is well known, then accepting the registration of the defendant's identical trademark will lead to public confusion.

• Considering the above, the Registrar has issued his decision in favor of our client by canceling the registration of the defendant Planette Battery SARL.

For more information please do not hesitate in contacting us at morocco@qumsieh.com"

Social media and IP

2011-11-30T04:21:00.000Z

On Friday Afro Leo spoke at the Social Media Branding and Marketing conference co-ordinated by the super effecient Japhet Mushinge of the Conference Hub and chaired by Cindy Davidson of Feedback Media Afro Leo's slides can be located here. The conference was well attended and the twitter feedback unnervingly, instantaneous. These are a summary of the Leo's thoughts:

Do not ignore social media infringements – those that infringe your content and you/your employees infringing others
Register trade marks and copyright (where applicable)
Develop social media watches
Register relevant handles and user names
Take prompt action but be aware of alternatives eg legitimising infringers

don’t be whipped by the long tail by, for example, by being overly aggressive
don’t forget traditional solutions to online infringements

Develop a social media user policy
Engage your social media program with your domain name and bricks and mortar infringement program
Make use of the self help features on YouTube, Twitter and Facebook but seek advice before making a complaint

During his research Afro Leo was particularly impressed by YouTube's Content ID program which can be viewed here. Unfortunately the Leo only had time to listen one of the talks before him but it was a very good one presented by Greg Comline - Executive, Digital Channels, Deloitte Consulting Pty Ltd - who explained how Deloitte had made considerable savings on recruitment using Linkedin, and how their sophisticated analytics around social media have enabled the company to get quality content into the right conversations, and ulitimately lead to more exposure and work.

Please stay in touch, next week Afro Leo (with the help of two local university students and some recent WIPO stats) considers 12 African Registries, and which one would be the most appealing to invest in.

A to Z of African official IP websites no.24: Guinea-Bissau

2011-11-27T05:56:00.000Z

In this, the 24th week in which Afro-IP's intrepid web-explorer Kingsley Egbuonu has gallantly trawled the internet in search of an online presence for the intellectual property offices of Africa's many and varied nations, Kingsley reaches the little-known region of Guinea-Bissau. Sadly, G-B is not a fertile ground for official online IP services. Kingsley reports his findings here:

Overview

Guinea-Bissau is a member of the OAPI and a contracting party to the Paris Convention, the Berne Convention and the Convention Establishing the World Intellectual Property Organization.

Copyright Office

The Guinean Copyright Society (Ministry of Education, Youth, Culture and Sports) is the office responsible for copyright and related rights in Guinea-Bissau.
Currently, this office has no web presence.

Industrial Property Office(s)

The General Directorate of Industrial Property (Ministry of Trade and Industry) is the competent office responsible for the administration of intellectual property rights in Guinea-Bissau.
Currently, this office has no web presence.

Social Media Presence

None

Conclusion

Like most members of the OAPI club, Guinea-Bissau is yet to establish a web presence for its IP office(s). Perhaps, IP is not on its development agenda and it is also often the case that a lack of web presence means less activity in the area of IP on the ground.

Kingsley tweets as @IPinAfrica

Africa, Social Media, the Internet and IP

2011-11-24T03:59:00.001Z

Afro Leo is preparing for a talk on IP issues at the Social Media Branding and Marketing conference tomorrow at the Monty. With luck he'll have time to share his talk in a series of posts but in the meantime his research has lead him to some fascinating information. The implications for those of us living in Africa are just starting. Should be fun ... as Africa gets wired up.

Source: African undersea cables by 2013 (maybe)

IPRs and Competition Law: a Nigerian Opportunity?

2011-11-23T11:22:00.001Z

What does Kingsley Egbuonu do when he's not writing Afro-IP's A to Z features on official online connections to Africa's multifarious nations? Here's part of the answer: he focuses his thoughts and his research powers on African IP issues such as the one which Afro Leo is pleased to host below. Do please let us -- and Kingsley -- know what you think!

"IPRs and Competition Law: a Nigerian Opportunity?

The essence of intellectual property rights (IPRs) and the need to protect them as far as practicably possible is well documented. Although these rights are recognised “monopolies”, they are good for society but, when misused, they are detrimental to consumers and to the public interest. There is an interface between IPRs and competition law and this is recognised in the TRIPS agreement. [nb this is a vast subject in itself, far too big for a single blog post. This article just addresses some salient points]

TRIPS and Anti-Competitive Practices

Article 40 of the agreement recognises that certain exploitation of IPRs (eg licensing and/or its conditions) may restrain competition and impede technology transfer. While it essentially allows Member States to legislate against anti-competitive practices, this is not a mandatory requirement. However, it is rather unusual for a country to have an IPR system without a competition regime acting as a counterbalance to limit IPRs.

In the context of IPRs, the sectors which normally come under competition scrutiny are pharmaceuticals, IT/telecommunications and entertainment & media, while patents, know-how and copyright are the usual corresponding suspects. Practices that have been considered anti-competitive include (a) grant-backs of improvements relating to a licensed technology (b) no-challenge clauses; (c) tying-in or illegal bundling; (d) refusal to license IPRs; (e) extending the life of an expired patent in order to stifle competition or unduly profit from it; (f) charging discriminatory royalty rates; (g) control or refusal to supply interoperability/compatibility information; (h) standard-setting/compliance organisations and “patent ambush” risks; (i) mergers resulting in concentration of IPRs and (j) over-zealous brand extension strategies. The anticompetitive consequences of any or a combination of these practices include price collusion, market foreclosure and competitor exit.

The Need for a Competition Regime in Nigeria

A competition regime in a free market benefits consumers through lower prices, better quality and greater choice. It drives economic growth, ensures that wealth is not concentrated in the hands of the few and lifts millions out of poverty. Crucially, it also provides businesses with the opportunity to compete on price and quality, in an open market and on a level playing field without anti-competitive restraints. The only available means by which businesses can compete and showcase the quality of their goods is by the use of trade marks (this is yet another interface).

A company (including an IPR holder) with significant market power and dominant position operating in a jurisdiction without standard competition law rules and an overarching competition authority can in effect engage in any of the above deemed anti-competitive practice(s) without fear. Unfortunately, Nigeria is one of those jurisdictions and according to sources there are “hard-core” cartels operating there at this very moment.

According to a Reuters news report last week, British Airways and Virgin Atlantic were fined a combined total of $235 million in Nigeria. The report adds: "We are charging British Airways $135 million and Virgin Atlantic $100 million for abuse of a dominant position, fixing prices, abusing fuel surcharges and taking advantage of passengers. We have been investigating for the last six months, Lagos to London has the highest route yield in the world. Our market is open for exploration, not exploitation." said Harold Demuren, Director General of Nigeria Civil Aviation Authority (NCAA).

According to The Nation, the NCAA in essence relied on the investigations/findings of the UK and US competition authorities in reaching its own decision. A statement from BA said: “We reject the allegations made by the Nigerian Civil Aviation Authority and we are vigorously defending our position….” while Virgin responded: “I don’t think we have violated Nigerian law in any way. We hold the Director-General of the NCAA and the agency in high esteem. We respect the laws of the land. A full response will be coming from our office later” (here). Is there a subtle message in both responses?

According to available information, the NCAA serves as the regulatory and competition body for the aviation sector in Nigeria. This is also similar in other sectors of the Nigerian economy. Perhaps, if it had a stand-alone competition authority, Nigeria might have had the benefit of information-sharing with its counterparts in the UK and/or the US since 2004 and could have acted swiftly on such information. At least, this would have avoided the inevitable suspicion that this was a politically motivated decision considering the fact that Nigeria and the UK had a recent dispute over their bilateral aviation agreement (here).

Now back to IPRs and competition law. Nigeria (like other African countries) needs foreign direct investment (FDI) in its key sectors -- for example, the oil and gas, pharmaceutical and telecommunications sectors. The players in these sectors rely heavily on IPRs (patents or know-how) which will be exploited (by way of licensing and/or technology transfer). Without a stand alone anti-competition law and a competition authority to deter the practices cited above, how can Nigeria expect to benefit effectively from FDI as well as encourage a healthy competition in its economy? How does it ensure that smaller indigenous firms are not unfairly excluded from a market by dominant firms?

Overdue

An economy like Nigeria is now overdue for a competition regime: a dedicated law and a competent authority to enforce it judiciously. Most state-backed monopolies or state aid in key sectors are failing or have failed and it is the case that there is still inefficient allocation of resources in its economy. A competition regime will protect the interests of millions of consumers as well as create a level playing field for all kinds of businesses to flourish.

Looking to other developing countries, both India and South Africa have a competition regime and are taking significant steps in building their own unique jurisprudence by adapting this legal transplant to fit their socio-economic development needs. It is also impressive to see that they both follow best practices seen in Europe and the US, for example, the authorities have functioning websites packed with information about competition law/rules, their powers/jurisdiction, guidance for businesses and news updates.

If the lawmakers in Nigeria are not remotely convinced with the “IPRs argument” for a competition regime, then bribery and corruption must be obviously convincing. Anti-competitive practices can also be seen as a form of corruption (see United States of America v Abb Middle East & Africa Participations AG, CR-01-N-135-S, where the defendants pleaded guilty to conspiracy to rig contract bids on a United States-funded waste-water construction project in Egypt. Bribery and corruption in Nigeria is also well-documented.
Although sectoral regulatory authorities can enforce competition-like laws in their respective sectors, their competence and expertise cannot match those seen within a dedicated competition authority.

I can see the attitude of the parties (NCAA, BA and Virgin) involved and it is not remotely surprising to me. The benefit of putting one’s house in order is that, when you speak, you speak with authority and you command respect. Once your house is in order, only a fool would disrespect your authority or decision.

If this is the wake-up call for Nigeria to put in place a competition regime, so be it! It can only go hand-in-hand with the IPR system that it already has in place - according to TRIPS".

Further reading

British Airways and Virgin Atlantic fined in the UK and the US here and here
Neat little list and summary of recent price fixing and contract bid rigging cases here
Monopoly in the power sector in Nigeria here
Monopoly and collecting societies in Nigeria here
Cartels in Nigeria and the need for anti-trust law in Nigeria here and here
Overview on the current state of competition in Nigeria here
Handy analysis of the interface between IPRs and competition law here
ECOWAS competition policy framework in West Africa here
Why Nigeria needs a competition regime here
Presentation on regulating the telecommunication sector in Nigeria and the need for competition law here

IP Strategist and Afro-IP supporter gives evidence today

2011-11-22T04:59:00.000Z

I try not to duplicate posts on other blogs but today there is reason to share information about a regular contributor of material to this blog who is testifying before the Leveson Inquiry into phone hacking by the News of the World today:

Yesterday famous actor Hugh Grant gave evidence in the Leveson Inquiry. Today it is the turn of IP Strategist Mary-Ellen Field. If you ever wondered how IP licensing attracted the attention of News Of World then her evidence should be enlightening. But it is more than that - it is the story of how the reputation and health of professional business person and consultant is ruined by over zealous press seeking a story about her famous client. It could happen to you.

For a previous post and some background please click here.

A to Z of African official IP websites no.23: Guinea

2011-11-21T05:36:00.000Z

Can this really be the 23rd week that Afro-IP's intrepid web-explorer Kingsley Egbuonu has battled through the undergrowth of the internet in search of an online presence for the intellectual property offices of Africa's many and varied nations? Well it is, and this week it is the turn of Guinea to reveal, sadly, that its IP office does not appear to be plugged into the internet. Kingsley reports his findings here:

Overview

Guinea is a member of the OAPI and a contracting party to a number of international agreements on intellectual property; these include: the Paris Convention, the Berne Convention and the Convention Establishing the World Intellectual Property Organization.

Copyright Office

The Guinean Copyright Office (Ministry of Youth, Sport and Culture) is the competent office responsible for copyright and related rights in Guinea.
Currently, this office has no web presence.

Industrial Property Office(s)

The National Service of Industrial Property (Ministry of Trade, Industry, Small and Medium Enterprises) is responsible for the administration of intellectual property rights in Guinea.
Currently, this office has no web presence.

Social Media Presence

None

Conclusion

Like most members of the OAPI club, Guinea is yet to establish a web presence for its IP office(s). Perhaps IP is not on its development agenda and it is also often the case that a lack of web presence means less activity in the area of IP on the ground.

Kingsley tweets as @IPinAfrica

IPRs in developing countries

2011-11-16T05:03:00.000Z

Ever wondered about the role that IP plays in developing countries? Whether it is simply a system developed by those that have and imposed on those that do not (really for the benefit of those that have)? Or wondered what role trade marks have in IP or its role in incentivising innovation? Two posts yesterday may give you more food for thought:

The first, brought to Afro Leo's attention by proclaimed special agent Kingsley Egbuonu, is a post in the Guardian entitled 'The WTO has failed developing nations' citing 10 examples. Notably, at least two examples involve IPR policies and protection. The post is written by trade policy advisor Aurelie Walker. Incidentally, despite the title of the article, African governments have themselves been dilatory (useless in some cases) in implementing threshold requirements for proper IPR protection thereby contributing to the failures.

The second is a thought provoking post on the excellent IPKat weblog by Nicola Searle dealing with the economics of trade marks in which it considers the elusive link between trade marks and innovation. Readers interested in the subject should also consider Adam Smith's article in WTR entitled 'Locating the missing link between Trademarks and Innovation'?

The two articles re-affirm Afro Leo's view that IPRs are fundamental to the economic progress of developing countries (whether they are imposed or not). As for the link between trade marks and innovation and whether trade marks really are intellectual property, an apple immediately comes to mind; it symbolizes innovation and by doing so incentives it. Employees who wish to be associated with innovation or find a culture of innovation are attracted to the company. Executives who wish to maintain the culture of innovation (and market share) are forced to innovate. The brand is protected by the trade mark thereby creating the link between the trade mark and innovation. Innovation is of course crucial to developing economies as well as those developed countries trying to get out of a recession reaffirming, to this Afro Leo at least, that IPRs are fundamental to both developing and developed countries.

Thoughts welcome.

Addendum: Braai salt case and thanks

2011-11-15T06:15:00.001Z

Thanks to reader Alicia Louw who is preparing a presentation on the recent "braai salt" case for a seminar, Afro Leo now has the correct picture for comparison. The amended post can be viewed here.

Also, just a public thanks to outgoing SAIIPL president Tshepo Shabangu for acknowledging Afro-IP's contribution at the annual Institute dinner at the weekend which is much appreciated. Unfortunately Afro Leo could not attend. Sad Lion.

And, a notice to readers that the SAIIPL AGM is to be held on Wednesday 16 November 2011 at the Pretoria Country Club, Sydney Street, Waterkloof, Pretoria.

RSA: latest passing off decision - not just any old NaCl

2011-11-15T03:36:00.001Z

Most readers will know that very few IP disputes ever reach a court decision. Like newborn turtles on a Mozambican beach, most never make it to the shoreline. They perish because of costs, delay, settlement, sanity and the ever increasing threat of ADR. This latest case out of the South African High Court of the Eastern Cape is an exception and its longevity is due to its subject matter - braai salt.

There is a specific culture around the "braai" that one needs to appreciate before reading this case and understanding its longevity. To the uninitiated please click here and here to get an insight into the institution of braaing and the strict cultural rules that apply. When one man's braai salt packaging begins to look like another, it is serious. Backing down is simply not an option.

The packaging in dispute looks something like this:

The applicant Swartkops' (represented by Adv Marriott at the hearing) packaging is named Marinas braai salt and the respondent has its manufacturer Cerebos' (represented by Adv Morely SC at the hearing) mark Buffalo above the words "braai salt" on its packaging. Swartkops' packaging (or its similar packaging) had been in existence for many years and Cerebros had received an earlier objection letter and had changed its packaging as a result. But not by enough apparently.

There are no registered trade marks protecting the packaging so this is simply a dispute over look-a-likes. Swartkops therefore relies on passing off which is a common law action.

Acting Judge Rorke sets about deciding the case with a useful, if not simplified, analysis of the law and finds that Swartkops indeed has a reputation in the get-up of its product. However, he dismisses the case on finding that there is no likelihood of confusion between the get-ups, citing with approval:

“These cases make it quite clear that a trader has no monopoly in the “get up” of his goods. However great the advantage and merits of his “get up” may be over that of his trade rivals, how ever much money, time and thought he may have expended over the designing of the particulars, when once he has used and published them they do not become his property but are common property, which can be appropriated by his rivals provided they do not mislead the public but make it perfectly clear that the goods in the “get up” are not his but theirs. When once this principle is clearly born in mind much confusion is, I think, avoided which in many cases of “passing off” arises. Assuming that there has been no infringement of the trademark, the question in “passing off” actions is whether the respondent, where he has imitated the applicant’s “get up”, has sufficiently differentiated his goods from those of the applicant. Under such circumstances the respondent is bound to make it perfectly clear that although he has adopted the applicant’s “get up”, the goods are his and not those of the applicant. If he succeeds in doing this then no liability rests upon him and no legal right of the applicant’s has been invaded.”

Rorke AJ reasons are set out in para 33-44. He also dismisses evidence of confusion by concluding that one of those confused was simply a careless buyer and not the average consumer, and that the other was not confused.

He also dealt with an interesting point argued by Marriott that the decision by Cerebos to change its packaging following an earlier objection had placed upon them a greater obligation to 'keep a safe distance away from the margin line'. This argument has been commented on by this blog before. Rorke held that the change had occurred without a 'conviction' and done on a without prejudice basis and therefore the earlier change by them had not placed any greater burden on Cerebos.

Although the packaging is close and not having had sight of the evidence of actual confusion, Afro Leo tends agrees with the decision. Unsurprisingly, he notes that the robust applicant does not and so looks forward to the appeal decision suspecting that it might be well like err umm... rubbing salt.

Amended the same day, from the original post.

A to Z of African official IP websites no.22: Ghana

2011-11-14T05:51:00.000Z

Afro-IP's A-to-Z series of visits to the official IP websites of African states reaches episode 22 with the arrival of Afro Leo's special agent Kingsley Egbuonu in Ghana. It seems that Kingsley has quite a bit to say about that jurisdiction, as he reports:

Overview

Ghana is a Contracting Party to several treaties on intellectual property including: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member of ARIPO.

Copyright Office

The Copyright Office (Ministry of Culture) is the office responsible for copyright and related rights in Ghana.
This office website can be found at www.copyright.gov.gh.

Industrial Property Offices

The Registrar General's Department (Ministry of Justice) is the competent office responsible for the administration of intellectual property rights in Ghana.
Currently, this department has no web presence.

Co-operation with foreign IP Offices/WIPO

“On 19 November 2008, Switzerland and Ghana launched a project on intellectual property rights technical assistance in Ghana. The Swiss Federal Institute of Intellectual Property (IPI) is responsible for implementing the project on behalf of the Swiss State Secretariat of Economic Affairs (SECO), who is financing the project. The project has a duration of three years beginning 1 January 2009” (here)

“The Attorney General and Minister for Justice, Betty Mould Iddrisu on the 12th of July 2010 launched Ghana’s Intellectual Property Development Plan at the World Intellectual Property Organization in Geneva.
Mrs. Betty Mould Iddrisu also secured an agreement between the World Intellectual Property Organisation and Ghana by which Ghana will benefit from financial and technical assistance to develop its intellectual property industry”(here)

Social media presence

The copyright office’s website has links to various social media but they don’t appear to be connected.

Latest intellectual property update/law

The Copyright Regulations (2010) came into force on February 15, 2010 to implement the Copyright Act, 2005, No. 690 (GH012). The regulations cover various aspects of copyright including: registration, use of security device on copyright works and collecting societies.

Miscellaneous findings

During my exploration, I came across this book, “The Copyright Thing Doesn't Work Here: Adinkra and Kente Cloth and Intellectual Property in Ghana (University of Minnesota Press, March 16, 2011) by Boatema Boateng. Although you don’t judge a book by its cover or introduction, a preview using Amazon’s Click to LOOK INSIDE tells me that it is an interesting book on a highly debated topic - the protection of traditional knowledge and cultural expressions under the intellectual property regime. Students/researchers keen on intellectual property issues in Africa may find it insightful.

Conclusion

Ghana appears to be utilising its partnership with organisations such as: WIPO and the Swiss Federal Institute of Intellectual Property (IPI) to make intellectual property a tool in its economic development.
The Ghanaian copyright office’s website looks good, simple and instructive. A similar website for the industrial property office will perfect their efforts.

Kingsley tweets as @IPinAfrica

Anti-Counterfeit Friday

2011-11-11T04:30:00.001Z

Singing against counterfeits

This post is a regular post every other Friday to highlight counterfeiting and piracy on the continent. For previous posts please click here. If you wish to send material for posting, please email us at afroipmail@gmail.com.

Chinese Engagement Brings Heightened Interest (AllAfrica) An excellent, if not condescending, look at US v China interest in Africa. Counterfeiting highlighted as a major concern, IP (tech transfer) stated as one of the (only) advantages for the US but a collaborative approach is suggested by the author. Afro Leo says: with 1/7th of the world's population, it is such a pity that Africa (or more likely, a group of the African states) cannot itself respond and use the opportunities more effectively.

Kenya: Chaka Chaka Launches Anti-Counterfeit campaign (AllAfrica) Interpol and signers Yvonne Chaka Chaka and Yousso N'Dour launched a music campaign to fight counterfeit medicine in Africa. Apparently 700 000 die each year from fake TB and malaria drugs alone. True story. You can listen to it and an interview with Chaka Chaka, herself a victim of extensive music piracy, here.

Seizedcounterfeit goods donated to charity - another example of charity from the UK which may actually do more harm than good for the African fight against counterfeits.

Police have arrested a truck driver after he was caught with counterfeit cigarettes worth R4 million at a border post between South Africa and Botswana. Eyewitnessnews

Last but certainly not least Afro Leo received an alarming message that Microsoft is losing up to 80% of its revenue in Kenya because of pirated software. And the percentage is higher in other African states. This follows a "cut price" strategy reported on by Afro-IP in 2008 here together with comments from Paul and Aurelia.

Dean savages poorly-conceived TK law as "mindless arrogance"

2011-11-10T17:36:00.000Z

It is no exaggeration to say that that the venerable Professor Owen Dean is "Mr Africa" when it comes to intellectual property law. Owen has been around a long time: he is one of the most seasoned experts on IP matters within Africa. Indeed, he is older than all but two (Ethiopia and Liberia) of the independent nations in that continent. Accordingly, when Owen says something it's worth taking careful note.

"The Mad Hatter In Wonderland: South Africa’s New TK Bill" is the title of a piece which Owen has just authored for the highly-respected Geneva-based Intellectual Property Watch. You can read it in full here. If you have no time to do so, do at least take note of this:

"So, the Department of Trade and Industry (“DTI”) has ... caused the South African Government to pass the Intellectual Property Laws Amendment Bill (the so-called “Traditional Knowledge Bill”) despite vociferous objections from all quarters. It has rushed headlong into terrain where no angel would venture through acute trepidation. It has entered Wonderland and assumed the role of the Mad Hatter.

... By seeking to protect traditional knowledge as species of copyright, designs, etc. and to attempt to apply the existing laws in these areas to it, it has purported to create rights which are simply incapable of being enforced. ...An enormous edifice of bureaucracy, councils, funds, trusts, databases and registration systems is to be created at inordinate expense and all to no avail since the system is not capable of being operated. What an exercise in futility and a waste of innumerable hours on the part of stakeholders, Government Departments and the Parliamentary process!

... The IP profession, academics, the judiciary, the intellectual property industries, the World Intellectual Property Organization (WIPO) are but a few of those that have tried to show the DTI the folly of its ways. Even a Regulatory Impact Assessment commissioned in 2009 by the State President opined that the legislation was ill advised and that, apart from any other considerations, the cost of implementing it would outweigh any possible benefits that might flow from it. Alas, the DTI has been undaunted and unwavering in its purpose. It takes a special form of mindless arrogance to shrug off, nay be totally impervious to, such a strong body of informed opinion. Such obduracy is difficult to fathom ...".

A to Z of African official IP websites no.21: The Gambia

2011-11-07T05:48:00.000Z

Afro-IP's A-to-Z series of visits to the official IP websites of African states reaches episode 21 with the arrival of Afro Leo's special agent Kingsley Egbuonu at The Gambia. We took an editorial decision to include this jurisdiction under "G" rather than "T" though, if we left it till 'T', Kingsley's conclusions might well have been more positive.

Overview

The Gambia is a Contracting Party to a number of treaties on intellectual property including: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a Member of the African Regional Industrial Property Organization (ARIPO).

Copyright Office

• The National Centre for Arts and Culture (Ministry of Culture) is the competent office responsible for copyright and related rights in the Gambia.

• Currently, this office has no web presence.

Industrial Property Office

• The Office of the Registrar General, Attorney General’s Chambers (Ministry for Justice) is the competent office responsible for the administration of intellectual property rights in the Gambia.

• Currently, this office has no web presence.

Social Media Presence

None.

Intellectual Property Update in Gambia

The Gambian Industrial Property Regulations, 2010 ("the Regulations") came into effect on 1 January 2011. The Regulations incorporate prescribed forms and fees and supplement the Industrial Property Act (Chapter 95:03) ("the Act"). Section 46 of the Act has the effect that the Gambian Registrar will no longer be re-registering any UK or EP (UK) Patents, Trade Marks and Designs, therefore, applications should be made in The Gambia (for details see here)

Conclusion

The Gambia seems to be taking charge of its intellectual property regime and recent legislation demonstrates at least a keen interest in intellectual property. Having said that, a web presence is highly desirable, if not essential, to enable the Registrar communicate any developments in law and/or procedure -- for the benefit of local IP practitioners and foreign IP rights holders -- and also connect with the wider IP community.

Kingsley Egbuonu tweets as @IPinAfrica. If you like his series, tell him what you think!

Cloud computing and IP management

2011-11-03T05:11:00.003Z

Rain or Thunder?

If yesterday's news put Afro Leo on cloud 9 then it is no coincidence that today his thoughts remain in the cloud. Cloud computing that is and its effect on IP management.

Afro Leo has long thought it an opportunity for firms based in Africa to make use of their low cost base and the increasing speed and accessibility of Internet access to make themselves available for the growing IP outsourcing (or more appropriately offshoring) market. Some of his thoughts were published by MIP here.

For in house counsel, in Africa and abroad, there are considerably more options for efficient IP management. For IP attorneys, the landscape is changing - tech savvy silicon valley firms have turned the filing market on its head in the States (and that trend will spillover into other jurisdictions as registry offices go online), there is now formidable competition from non legal service providers and there is worldwide competition for certain areas of IP management, especially from India. In short he feels that whilst there is good growth in IP filings worldwide, making IP business a healthy place to be, the nature of the business is changing. The increasing attractiveness of cloud computing is likely to accelerate the changes.

Cloud computing effectively allows for greater and more efficient collaboration which means that certain aspects of IP management can be more effectively achieved. In particular cloud computing has the capacity to (increase) change in the way databases are managed and updated for the protection of worldwide IP rights. For example, provided security and liability concerns are addressed (and there is no reason why they cannot be), a company's world-wide IP portfolio can be updated and maintained directly by those who protect the portfolio locally, using a cloud based service. This also means that in-house counsel (and their internal clients) can access that database too and not be so heavily reliant one a single external counsel or firm. Cloud computing has the capacity to stress out the middlemen, especially those who just maintain data.

Collaborative IP management is not an entirely new phenomenon to the way in which IP is managed. Afro Leo is aware of at least one external service provider that has used this type of thinking to sell it services but its database has been very expensive and the reports he has received have been lukewarm eg difficulties training and co-ordinating local lawyers and overcoming a resistance to the way in which those lawyers have, for decades, done their work. These drawbacks will continue but one feels that as cloud computing catches on, as we see a new era of students come into the workplace (whose education is based on collaborative learning), as costs decrease due to fierce competition amongst cloud service providers and as forward thinking firms respond or industry demands, the shift seems inevitable.

Your thoughts, as usual are welcomed.

Afro-IP nominated! Top 25 International & Foreign Blogs

2011-11-02T05:38:00.000Z

Afro Leo is delighted (and a little astounded) to announce that Afro-IP has been nominated by LexisNexis as a candidate for the Top 25 International & Foreign Blogs for 2011.

LexisNexis is inviting practitioners to comment on their list of nominees in their International & Foreign Law Community and you can do so by clicking on their icon which is alongside (if you receive this by email, then please click here to get onto the Afro-IP).

They explain:

To "talk up" or nominate your favourite Int'l & Foreign blog, you'll need to be a registered community member and be logged in. If you have not registered previously follow this link to create a new registration or use sign in credentials from your favourite social media site. Registration is free! Once you are logged in, scroll all the way to the very bottom of this page. You should see a comment box.

Your support is much appreciated. If this is the first time you have logged onto Afro-IP, here is a little bit of what we are about.

LexisNexis will announce their final list after November 11, when commentary closes.

Best wishes
Afro Leo

Legalization Requirements for Power of Attorney in Sudan

2011-11-01T08:16:00.013Z

The Sudanese Registrar has announced that, with effect from the beginning of October, an ordinary duly signed power of attorney will be accepted instead of a legalized power of attorney for the purpose of filing trade marks, designs, patents and for applications for renewal. A legalized copy of the commercial register is, however, still required for new applications.

Source: NJQ & Associates news letter. For further details email NJQ here.

Nigeria: PINS ON PILLS!

2011-10-31T10:48:00.006Z

Africa is one of the largest markets for mobile technology in the World, it has been said that more people have started using phones in Africa since the year 2000 than in the prior century. Nigeria is one of the largest Countries in West Africa and the telecoms market is hugely successful. The rise in mobile technology (whether real or fake) has taken off beyond the expectations of all. Nigeria is commonly known to be the largest African market for the sale of mobile phones, ahead of South Africa and Zimbabwe along with all other African jurisdictions.

Today’s installment however is not about the correlation between IP rights and mobile communication, it is about something else entirely which I’ll come to in a second.

Nigeria has a large and escalating problem with the sale of counterfeit drugs. These products are often much cheaper than the originals but also often of a much lesser standard, this particular issue can have wide reaching health repercussions. One can categorize the different types of ‘fake’ drug which can be found in the market into 4 groups. First is the total inauthentic, whereby you buy an aspirin and end up swallowing chalk, then you have the mimic, whereby the counterfeiter has attempted to copy the chemical formulation of the original and (usually) failed, you also have the sale of expired products and lastly where they again mimic the chemical formulation but use a much weaker (read- cheaper) dose. Any of these four are extremely dangerous to the consuming public, and I won’t waste all our time be telling you why. Basically take them and you’ll probably die.

So now we come to the great reveal (and I’m not kidding, I really think it’s’ great) GSK has teamed with a company called SPROXIL alongside NAFDAC to see if it is possible to combine the issue of consumption of fake drugs and the booming mobile phone industry in Nigeria. The result is a technology known as- SMS consumer product verification.GSK products will now contain a scratch off pin on the packaging. Upon purchase of the pills, the pin number should be sent via text to the number provided which is the NAFDAC health desk. Please reserve all comment about how the NAFDAC registration number can be faked because this pin IS NOT the NAFDAC registration number. It is a special formulation of numbers thought up by SPROXIL. After the text has been sent, within ten seconds you will get a reply saying either- Genuine NAFDAC product with the serial and NAFDAC registration number provided, or you will receive a text saying- FAKE, DON’T USE and instructions on what to do next. It is also possible that the text will say- this pin has been used before or pin not recognized.

In this author’s opinion, this could go a long way into curbing the issue of consumption of fake and also sub-standard goods on the market place in Nigeria. There are plans to expand into food stuffs and electrical items as well and it is my belief that it is a much needed initiative that Nigeria desperately needs. So what does everyone else think? All comments after the jump please…

A to Z of African official IP websites no.20: Gabon

2011-10-31T08:10:00.000Z

Afro-IP's A-to-Z series of visits to the official IP websites of African states reaches episode 20 with the arrival of Afro Leo's special agent Kingsley Egbuonu to Gabon. This is what Kingsley finds there:

Overview

Gabon is a member of the OAPI and a contracting party to a number of international agreements on intellectual property; these include: the Paris Convention, the Berne Convention and the Convention Establishing the World Intellectual Property Organization.

Copyright Office

The National Agency for the Promotion of Arts and Culture (ANPAC) is the competent office responsible for copyright and related rights in Gabon.
Currently, this office has no web presence.

Industrial Property Office(s)

The Center of Industrial Property of Gabon (CEPIG) is responsible for the administration of intellectual property rights in Gabon.
The official website for this office is http://www.cepig.net/ and the language is French.
Relatively, CEPIG’s website is informative and functioning; however, there is still much work to be done to bring it up to a reasonable standard.

NB: The CEPIG’s patents and trade marks database redirects you to Esp@cenet (France).

Social media presence

None

Conclusion

Unlike some in the OAPI club, Gabon has at least made an attempt to maintain the presence of its intellectual property office online. Perhaps, this could be the result of its link and/or co-operation with the French Intellectual Property Office, Institut National de la Propriete Industrielle (INPI). This itself raises the question whether IP Offices in developed countries can play a meaningful role in the developing ones?

Kingsley tweets as @IPinAfrica

ARIPO's latest newsletter

2011-10-31T01:01:00.002Z

Afro Leo received a welcome email containing ARIPO's third newsletter publication for this year. Previous issues are available on the ARIPO website under "publications".

Catching this Leo's eye is a fascinating article on the potential protection of Shea-butter as a geographical indication in Ghana and beyond and an excellent summary and commentary on the impact of the Anti-Counterfeiting Trade Agreement for IPRS from an African perspective, both by Mcdave Appiah.

The call from the editorial is a strong one too - the promotion of access to free online patent databases among African universities and development institutions.

Morocco: ORKIDE ... or ORKIDE?

2011-10-30T14:47:00.000Z

Moroccan company Ruby Rough applied to register as a trade mark in Morocco the word ORKIDE (Classes 3, 5 & 35). The application was opposed by a Turkish company, ORKİDE PARFÜM VE KOZMETİK SANAYİ ANONİM ŞİRKETİ, which was itself the proprietor of the trade mark ORKIDE.

The opposition was based on prior use of the trade mark, the fact that the opponent was the sole and legitimate owner of the trade mark in its country of origin (in addition to other countries around the world), priority of registration in Morocco and Turkey, the fact that it was considered a well-known trade mark worldwide, including Morocco, as well as asserting the Ruby Rough's application was made in bad faith.

In the face of this imposing array, the presiding Registrar issued a decision in favour of the opponent and rejected the application.

Source: NJQ & Associates news letter. For further details email NJQ here.

Anti-Counterfeit Friday

2011-10-28T04:45:00.002+01:00

Quote of the day: "Counterfeiting is a monster. You cut one hand and another one grows…" Tina Rose, an anti-counterfeit programme manager for aftermarket sales at HP.

"If you view counterfeit products as illegal competition that means we have helped our partners and retailers who sell our genuine products to operate in a much more fair environment by re moving those counterfeit products from the market." Tina Rose in The National. And, HP’s raid in South Africa here.

Practical difficulties spotting fake intellects

A good story about counterfeits: innovating to stop it. Pharmasecure secures funding for its anti-counterfeiting technology. Marketwatch

Afro Leo’s fun pick of the day: Zimbabwe’s problem with Counterfeit Intellectuals

The Chinese have endorsed a culture of copying (all about sharing) which is why they are such prolific copiers and why one has to understand their culture before being over critical about their IP regime. Heard that before? This fascinating short history of money published by Businessweek describes how the Ming Dynasty in China denounced counterfeiting several centuries ago “To counterfeit is death…” Buck up.

Counterfeit toys confiscated in England to be donated to children in Africa BBC Afro Leo says Santa Claus, this sounds kind but it is promoting an accepting culture for counterfeits in Africa, creating demand and perpetuating the problem.

Ethiopia and Samsung to collaborate against counterfeits

The Tobacco Institute of South Africa said over the past month, more than 160 million counterfeit cigarettes have been confiscated in the country. EyewitnessNews

On the Health Affairs blog Daniele Dionisio makes the case for a stronger regulatory regime to curb “bad medicines” and strikes at the confusion caused by bad drafting of anti-counterfeit legislation in East Africa, particularly. A slightly different but equally persuasive take on the problem revealed by this piece on AEI on sub-standard (as opposed to fake) medicines.

The workshop organised by the Assembly's Committee on Communications, Trade and Investment (CTI) took place on October 16-19, 2011. The topics ranged from: avenues for Private Public Partnerships (PPP) to curb imported sub-standards and counterfeit goods in the EAC region, the EAC's outlook on the counterfeits and anti-dumping. Plenary discussions on the how to strengthen quality infrastructure to prevent entry of sub-standard goods in the EAC region are also envisaged. StarAfrica

ICANN says it hasn't forgotten Africa after all

2011-10-25T09:13:00.000+01:00

A media release, "ICANN Dakar Meeting Opens with Calls for Greater Internet Access for Africans", makes reference to what it describes as "support for Generic Top Level Domain Applicants from Developing Countries". Speaking from Dakar, Senegal, ICANN President/CEO Rod Beckstrom is quoted as saying:

“There has been tremendous progress toward greater connectivity. In ten years, the number of Internet users has grown 25-fold,” said Beckstrom. “That is rapid growth, yet it still represents only 11.5 percent of the African population.”

Beckstrom made his comments during the kick-off of ICANN’s 42nd public meeting in Dakar, Senegal. He told the conference that discussions will take place during the week on how to best provide financial and logistical support to applicants of new generic Top-Level Domains (gTLDs) from developing countries.

“ICANN’s global community is already taking steps to help needy applicants apply for new gTLDs,” said Beckstrom. “A joint working group has spent many hours working on a proposal that the Board will consider this week on how best to provide that support.”

The new gTLD program will vastly expand the number of generic Top-Level Domains from the current 22, which includes such familiar endings as “.com”,”.net” and “.gov.”

Afro Leo, who has noted that even the developed world is largely reluctant and unexcited to fork out US$ 185,000 for the privilege of applying for a gTLD which it might never get, wonders how many African governments, businesses and organisation will see any advantages to paying out and jumping through ICANN's hoops in order to get their own new gTLDs. Perhaps a reader can enlighten him.

A to Z of African official IP websites no.19: Ethiopia

2011-10-24T05:36:00.000+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states visits Ethiopia -- a country whose policy regarding the protection and exploitation of rights in the reputation of its coffee may be regarded by some as a template for other producing countries to copy. Kingsley Egbuonu writes:.

Overview

Ethiopia is a contracting party to the convention establishing the world intellectual property organization. It is signatory to most IP-related multilateral treaties and regional economic integration treaties.

Copyright Office

The Ethiopian Intellectual Property Office (EIPO) is the competent office responsible for copyright and related rights in Ethiopia.
This office was formed in 2003.
The office website is www.eipo.gov.et.

Industrial Property Office

The EIPO is also responsible for the administration of intellectual property rights in Ethiopia.
The office website is www.eipo.gov.et.
The EIPO’s website appears useful but there is room for improvement.
Key sections of the website lack content and among other things, a section dedicated to EIPO’s rules and procedures would be a great enhancement.

Social Media Presence

None

Comments and conclusion

Intellectual property might not be considered a priority for most African countries, especially those in the horn of Africa; however, Ethiopia has embraced IP and made effective use of it. This is indeed significant that intellectual property can become a vital tool for growth and sustainable development for African countries.

Established in 2004, the Ethiopian Coffee Trademarking and Licensing Initiative (ECTLI) is a fantastic commercialisation project aimed at ensuring a win-win solution for all stakeholders -- including Ethiopian coffee farmers. Although funding is a necessity, without dedicated legal technical assistance, projects like these often fail. Therefore, it is crucial that law and IP-oriented organisations firms (as part of their pro bono and/or CSR schemes) emulate the likes of Arnold & Porter LLP and Light Years IP in supporting beneficial intellectual property regimes in Africa.

For more details on the ECTLI, visit www.ethiopiancoffeenetwork.com

Kingsley tweets as @IPinAfrica

PRE –GRANT ENTITLEMENT ACTIONS IN KENYA – WHO SHOULD FILE A PATENT APPLICATION?

2011-10-20T04:15:00.000+01:00

Last week Afro Leo promised a summary of a groundbreaking patent decision to come out of Kenya from John Syekei (Coulson Harney, who represented the requesting parties, Vestergaard Frandsen). Here it is - thanks John:

"The Kenyan Industrial Property Tribunal, a judicial body established under the Industrial Property Act (“the Act”) with powers, inter alia, to determine disputes related to Patents and Industrial designs, handed down a ground breaking decision on pre- grant entitlement actions in relation to patent applications pending grant at the Kenyan Patent registry.

In the decision, IPT No 50 of 2010, Reference of a Matter to the Tribunal by the Managing Director under Section 118 of the Act between Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd on one hand and Intelligent Insect Control S.A.R.L and Ole Skovmand, the Tribunal dealt with a material question on the recognition of and manner of procedure involved in the conduct of pre- grant entitlement proceedings in respect of a patent application in Kenya. The significance of the matter before the Tribunal was twofold in that, while on the one hand while section 30 of the Act impliedly recognized this right as being available to an aggrieved person, on the other hand it was silent as to form, costs, timelines and procedure.

Section 118 of the Act entitles the Managing Director, on his own motion or upon application by an affected person, to refer an unusual and /or complex point of law in relation to the interpretation of the Act to the Tribunal for directions. This is because the Tribunal is empowered to provide guidance on key issues as relates Kenyan patent law which is modeled on English patent law. The reference in this matter was based on section 118 and related to the question of whether pre-grant entitlement actions were recognized under Kenyan patent law and if so, what forms and procedure would apply.

The background of this matter, where the author represented the requesting parties, M/s Vestergaard Frandsen SA, Vestergaard Frandsen Group SA and Vestergaard Frandsen EA Ltd, global manufacturers of insecticide impregnated textiles, was that the requesting parties laid claim to a pending patent application filed into Kenya by M/s Intelligent Insect Control S.A.R.L ( applicant) and Ole Skovmand (inventor) on the basis that the inventor was employed by the requesting party during the time that he came up with the invention relating to the patent application. It was his job description to develop new processes and formulae in the development of the technology surrounding fabric impregnation with insecticides.

On instructions from the requesting parties, we filed the reference under section 31 of the Act arguing that under Rule 37 of the rules subsequent to the Act, a party was entitled to approach the Tribunal to determine the appropriate mechanism, procedure and forms for the prosecution of a pre grant entitlement proceeding as the law was silent in this respect. As such we invited the Tribunal to take charge and create a forum for such actions which it was empowered to do, thus developing this important aspect of Kenyan patent law as it allowed an entitled aggrieved party some respite before grant. Normally, without such a forum, a party would have to challenge a granted patent by way of a revocation proceeding which is not only costly but also ineffective in the sense that there is a time lag between the time a patent application is noticed by an affected party and the time that it is published which may be 2 to 3 years. This would have implications on an affected party justly entitled to the patent in that no action can be taken on the patent for that period because of this lacuna in the law and may affect the effectiveness of the entitled party to consolidate and derive commercial benefit from its patent rights, including its entitled patent pending grant.

In arriving at its decision, the Tribunal rightly considered the nature of patent filings in Kenya and their examination. As noted by the Tribunal, examination of patents is important but the question as to the legality of an applicant in filing a patent is one best suited for determination by the Tribunal and not a patent examiner. The Tribunal cited Indian patent law in this decision and reached the conclusion that under Section 30 of the Indian law, the right to a patent is subject to a determination on the point of ownership. In Kenya, as is the case in many Commonwealth jurisdictions, the practice is that “the first to file” rule applies such that the person who files for a patent first normally obtains the rights to the patent upon grant as against the world and can enforce this limited monopoly. The mischief to be cured by a pre grant action would be to correct an anomaly where a patent application and related rights accrue to a person who lacks the legal rights to claim ownership yet maintains them until challenged via revocation, entitling such a person to enforce the rights as against third parties including the rightfully entitled party. In short, the Tribunal was of the view, and correctly so, that the question of ownership cannot be left to a patent examiner as they do not possess the requisite knowledge of patent law. This is further compounded by that fact that key legal questions would arise where an applicant to a patent was an employee of a third party and it was part of his job description to originate inventions that would be patentable. In addition, substantive examination of patents is limited to the technical issues of novelty, disclosure in prior art and possession of an inventive step and as such ignores the material issue of ownership.

The Tribunal held that pre grant proceedings are in aid of an examination of a patent application and must be conducted expeditiously to ensure that the entire process of prosecuting the patent application is not disrupted. Such actions must not be time consuming and expensive to prosecute.

Thus, in issuing directions by adopting a “purposive approach” to statutory interpretation, and in an effort to embrace international best practice, the Tribunal held that a pre grant proceeding which primarily deals with the question of ownership should be canvassed within 2 months before the Tribunal prior to grant by an affected party and shall be undertaken by use of a form similar to the one used in post grant proceedings (referred to as Form PR/IPT) such as revocation actions albeit with changes to reflect the nature of the proceedings. A claimant in such actions is now mandated to file its pre-grant arguments in written form within 10 days of written notice to the Tribunal and submission of the aforementioned form. It must annex supporting affidavits and documents in its possession as indicated in its Form PR/IPT.

In conclusion, this determination by the Tribunal was welcomed as it developed Kenyan patent law and provided a legal exception to the first to file rule at pre grant stage where questions of ownership arise. In effect, a party filing for a patent in Kenya must be the rightfully entitled party, through invention or otherwise."

A to Z of African official IP websites no.18: Eritrea

2011-10-16T16:12:00.000+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states visits one of Africa's more recent states, the State of Eritrea. Again, Afro-IP's intrepid e-explorer Kingsley Egbuonu finds little to be cheerful about.

Overview

Eritrea is only a contracting party to the Convention establishing the World Intellectual Property Organization. However, it is signatory to most IP-related multilateral treaties and regional economic integration treaties.

Copyright Office

The Department of Culture (Ministry of Information and Culture) is the competent office responsible for copyright and related rights in Eritrea.
Currently, this office has no web presence.

Industrial Property Office

The Domestic Trade and Intellectual Property Office (Ministry of Trade and Industry) is responsible for the administration of intellectual property rights in Eritrea.

Currently, this office has no web presence.

Kingsley tweets as @IPinAfrica

Anti-Counterfeit Friday

2011-10-14T05:13:00.000+01:00

Chillin out after a raid

Customers who came in for a good deal ended up having a bad day.

"Doors were kicked open. Sheriff screaming, 'Everybody get down, get down,' and I was about to like dart out, but I had a sheriff behind me with a gun," customer Cleo Jackson said.

Customer Tim Yates said he was ordered to the ground.

"They said get on the ground, and I thought they were being robbed. We started walking away, and the sheriff said, 'Get over to your car,' and I guess they're selling false stuff," Yates said.

Investigators thought Trevor Reddhi was a lookout.

Investigators had him facedown on the sidewalk in seconds. "They pulled around ... two SWAT trucks pulled right around the corner, and they told me to get right on the ground -- that it was a search. So I got on the ground and listened to what they said. Wrong day, wrong time. I picked the wrong time," Reddhi said.

A description of an actual raid this week in the US with links to Africa or the new movie script for Die Hard complete with cliches? Read on...

Counterfeit drugs targeted by technology in India BBC News
The majority of fake drugs available are said to originate in India and China. India is also one the world's fastest-growing hubs for generic drug production. A majority of the medicines available in Africa come from Indian generic drug laboratories. ...
Largest Identity Theft Ring Busted In Queens, 111 Indicted! Post Chronicle
Five organized crime organizations in Queens with ties to Europe, Asia, Africa and the Middle East were broken up after a credit card counterfeit operation netted more than $13 million over 16 months, WABC-TV, New York, reported. ...

Police Smash Tyre Imports Racket Involving KEBS Officials Middle East North Africa Financial Network
Oct 07, 2011 (Nairobi Star/All Africa Global Media via COMTEX) -- DETECTIVES in Nairobi yesterday smashed a fake Kenya Bureau of Standards rubber stamps racket and arrested four suspects. The police also impounded containers with suspected counterfeit tyres ...

WIPO Assemblies Call for Diplomatic Conference on Audiovisual Performances Bridges Weekly Trade News Digest
Similarly, member states also discussed the work of the Advisory Committee on Enforcement (ACE), paying special attention to its research on counterfeiting, piracy, and the motivations for intellectual property infringement. Speaking at the closing of ...

And, finally Die Hard..

Eastland Mega Flea Market Raided For Counterfeit Goods NBC4i.com
We have not linked this one to terrorism at this time, but the only thing I know for sure is that some of these monies have been going back to Africa," Scott said. There are 57 booths at the flea market, and 54 of them are illegal, authorities said. ...

Kenya: KIPI onwards and upwards

2011-10-12T06:00:00.001+01:00

Courtesy of John Syekei (Coulson Harney) we have news that the Kenyan Industrial Property Tribunal (KIPI), a judicial body established under the Industrial Property Act with powers to determine disputes related to Patents and Industrial designs, has handed down a ground breaking decision on pre- grant entitlement actions in relation to patent applications pending grant at the Kenyan Patent registry. More on that case will be published very shortly on Afro-IP. In the meantime, KIPI has gone online with a neat website that will excite Kingsley (@IPinAfrica) together with user ratings, new logo and commentary options that can all be located here - check it out and rate them (impressive). Afro Leo has also come across new blog IPKenya (not to be confused with David's blog by the same name hosted on blogspot) complete with interesting insights on IP developments in Kenya, particularly copyright.

Cameroon: Collecting Societies the subject of litigation

2011-10-11T07:12:00.002+01:00

Christian Djomga (Cabinet Isis - see full profile on the blog) has sent in this contribution from Cameroon:

Le Cameroun, c’est décidément le Cameroun.

Nous ne cesserons jamais de le dire. La honte ne tue pas au Cameroun ; cela ne cesse de se vérifier.
Il ya quelques jours la Cour suprême siégeant en séance plénière donnait une fois de plus raison à la Cameroon Music Corporation (CMC) sur le différend qui l’oppose au Ministère de la Culture chargée de la supervision et du contrôle du Fonctionnement des Société s de gestion collective.
La chambre administrative de la haute institution judiciaire du pays a ainsi annulé les décisions prises par cette institution, à savoir la décision de retrait de l’agrément de la CMC, six mois avant l’expiration de cet agrément et une autre décision désignant un comité ad hoc pour gérer les affaires de la CMC en attendant la mise sur pied d’une nouvelle société de gestion collective.

Mais la SOCAM, société créée et agréée pour remplacer la CMC se défend d’être concernée par cette décision.
Pourtant la loi est claire : Il ne peut exister QU’UNE SEULE SOCIETE DE GESTION COLLECTIVE PAR CATEGORIE DE DROITS D’AUTEUR. La CMC et la SOCAM ne peuvent donc concomitamment exercer la gestion collective dans la catégorie « Art musical » où elles sont compétentes.
La réhabilitation de la CMC par l’annulation de la décision ministérielle signifie donc ipso facto retrait de l’agrément de la SOCAM.
L’autre précision, et non la moindre, est que la décision d’annulation, pour la haute juridiction, est rétroactive ; ceci mettant en cause l’ensemble des actes posés par la SOCAM depuis son agrément en 2008.
Et que fait Madame le Ministre de la Culture, prise dans l’étau de ce contentieux ? Pour l’heure ce qu’on sait, c’est qu’elle a fait appel de la décision. Qu’espère-t-elle de ce énième acte de défense, quand on sait que les décisions de la haute juridiction sont restées constantes depuis le début du contentieux ? A notre avis, il ne s’agit ni plus ni moins que d’une manœuvre dilatoire, la Ministre n’entendant, du moins en apparence, pas vouloir donner droit au ordonnances de la justice de son pays, ce qui aura pour effet collatéral de remettre en cause, aux yeux du public, son jugement et sa capacité à

Et comme pour l’heure l’appel suspend l’exécution de la décision de la haute juridiction, la Ministre en profite pour repousser l’échéance d’un clash inévitable, à moins que le Président de la République n’intervienne pour expier le péché qui entache l’âme de la République.
En attendant… Qui vivra verra !

- Posted by Darren

A to Z of African official IP websites no.17: Equatorial Guinea

2011-10-10T08:14:00.000+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states has run aground again, as yet another OAPI member state appears to have no online presence. This time Kingsley Egbuonu visits the Republic of Equatorial Guinea:

Overview

Equatorial Guinea is a Contracting Party to the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. It is also a member of the African Intellectual Property Organisation (OAPI).

Copyright Office

The Council of Scientific and Technological Research (Presidency of the Government) is the office responsible for copyright and related rights in Equatorial Guinea.
Currently, this office has no web presence.

Industrial Property Office

The Council of Scientific and Technological Research (Presidency of the Government) is the competent office responsible for the administration of intellectual property rights in Equatorial Guinea.
Currently, this office has no web presence.

Conclusion

This is yet another example of an OAPI member without any presence online for its national office. The curiosity continues: is the OAPI system creating complacency among its members?

Kingsley tweets as @IPinAfrica

RSA: Amarula decision on unfair advantage

2011-10-09T21:18:00.003+01:00

The latest trade mark related High Court case from South Africa finds unfair advantage and a likelihood of confusion based on the use of a descriptive term.

The facts are relatively straightforward. The case is between Southern Liqueur Company ("SLC"), owner of the IP in Amarula cream liqueur, and a competitor product Black Horse Marula cream liqueur ("Competitor"). SLC claims that Competitor infringes (on the basis of likelihood of confusion and unfair advantage) its registered trade mark 84/2496 AMARULA covering goods including liqueurs and is passing off. The relevant products (as close as Afro Leo could find to those attached to the judgement) are depicted from the left in diagrams 1. and 2. below. Diagram 3 represents a further product sold by Competitor. Click on each Diagram to enlarge.

Competitor counterclaimed that the registered AMARULA trade mark should be cancelled or failing that endorsed with a disclaimer or admission because the mark consists of the word "marula" which is descriptive of the flavour or contents of the liqueur (being a fruit of the Marula tree). The notoriety in the AMARULA trade mark was not denied by Competitor and Judge Goliath reasoned that the mark's reputation had saved the mark from cancellation because it had "acquired distinctiveness through extensive use". This must be correct.

SLC rather astutely offered the following endorsement against the registration:

"Registration of this mark shall not debar others from the bona fide descriptive use in the ordinary course of trade of the word 'Marula'."

There is a subtle difference between this endorsement and the typical wording of a disclaimer; this wording does no more than iterate one of the limitations to the rights of a trade mark.

The arguments are summarised in paras 6-12 of the judgement. In short, the Judge felt that the main question for determination was whether the use of MARULA in the diagrams was bona descriptive use of the term MARULA. If so, the claims would not have succeeded. The relevance of diagram 3 is explained because the the Judge felt that an intimate comparison of the two Competitor labels was required to establish good faith, or not (see para 24).

"[25] A critical evaluation of the two labels clearly demonstrates inconsistent use of the principle trade mark "Black Horse". It is evident that there is a dilution [really, how exactly?] of the trade name on the Marula product due to the indistinct print of the trade mark, the deliberate adjustment of the principal trade mark by reducing font size, and the removal of the horse figure. Clearly the Dark Horse trademark should be used in conjunction with the horse figure in order for the public to recognise and associate its product with a particular trade origin as illustrated in its strawberry product. [this cannot be correct]"

The Judge has conflated the issues here too. Instead of first analyzing whether infringement had taken place and then considering the limitations, he has taken a short cut to the question of good faith descriptive use concluding that there is infringement, essentially because the descriptive term is used in a manner that is more prominent than the principle trade mark and inconsistent vis a vis other products in Competitor's stable and in the marketplace.

The Judge appears to make a mistake in quoting Harms that "Use will not be bona fide, however, if the user does not unequivocally make it clear that his goods are not connected in the course of trade with the proprietor of the trade mark [that is being used ie the identical trade mark, which MARULA (a descriptive term) is not]. It follows that bona fide use in sec 34(2)(c) means honest use of a trade mark, without the intention to deceive anybody and while unequivocally making it clear that the goods are not connected in the course of trade with the proprietor of the trade mark." at para 26 citing Harms in Commercial Auto Glass v BMW.

At para 28 "...The flavour variant of respondent's Marula product is reflected in such a position on its labels that the principal trademark becomes irrelevant and invisible [MARULA is dominant but the principle trade mark is visible to consumers of liqueurs (the nature of the consumer does not appear to have been considered)]. There are several ways to draw to the attention of the consumer that the product's flavour is "Marula". Respondent chose to do so by using the word "Marula" in red bold capital letters and bold gold capital letters which bore a deceptive resemblance to applicant's trade name [for infringement or passing off purposes?]. The only distinctive feature [how can it be the "only distinctive feature" if it is an inherently descriptive term?] on the Marula product that is given prominence on the main, neck and back labels is the word "Marula" Furthermore, by reducing the size of the Marula label, in comparison with its strawberry label [is this not also because the word "strawberry is just longer?], the respondent effectively gave more prominence to the word "Marula" on the Marula product. This fact, coupled with the eye catching red and gold bold lettering, leads one to conclude that respondent intended to align its product with that of the applicant's [using an ordinary descriptive term].

In finding on all claims including unfair advantage infringement Goliath held that "The parties have similar products with a general African theme [which is not uncommon for African drinks]. I am satisfied that there is a reasonable likelihood that members of the public may be confused into believing that there is some trade connection between the goods of the parties [disagree, bring to mind SLD's mark perhaps but confuse based on a descriptive term?]. The difference in the shapes or sizes of the bottles and labels are not sufficient to overcome the general visual impression of similarity. The nature of the confusion or deception is likely to divert business away from the applicant, which could result in a loss of its market share [typical of a passing off conclusion but no apparent evidence]. It was clearly established that "Amarula" is a well-known brand in South Africa. The applicant has established itself as a market leader with its award winning "Amarula Cream Liqueur" and presently holds a dominant share in the overall Marula Cream Liqueur market [but this does not mean that they should retain it through exclusivity over its description] . Its reputation was created at enormous advertising costs. Consequently, respondent's conduct is likely to take unfair advantage of the distinctive character and reputation of the "Amarula" mark in a manner that is unfair. [a link to AMARULA yes perhaps but even if that link is intentional is it unfair if this advantage is based on the use of a descriptive term? Can it be an advantage if it is based on a descriptive term? Apparently so.]"

Afro Leo hopes this decision is/was taken on appeal but wonders who will adjudicate it, as Harms retires shortly.

Anti-Counterfeit Friday

2011-10-07T15:49:00.001+01:00

This is the thirds post in Afro-IP's ACF campaign designed to increase awareness of the problem in Africa.

The fake BlackBerry is surrounded by dozens of other shanzhai, or “bandit phones.” These cheap imitations of brand-name products, bearing names such as J-Max and Eurocell, are manufactured in mainland China and shipped in the hundreds of thousands across South Asia and Africa - Chungking Mansions, home of the ‘bandit phone’

Gallup surveys in sub-Saharan African countries underscore the growing health threat that counterfeit drugs pose - click here

Kenya is the biggest market for counterfeit goods and contraband in East Africa, says a new report accoprding to the Daily Nation here. The counterfeit industry, according to Termites at Work: A report on Transnational Organised Crime and State Erosion in Kenya, is worth Sh70 billion and rivals key foreign exchange earners tourism, tea and coffee.

Zimbabwe: Opposition party ZAPU SA has lambasted counterfeiting of its t-shirts by some unknown people in South Africa. The party's publicist also warned the public against being duped into buying fake party regalia and cards, as reported by the Zimbabwean here.

Two raids by the Nigerian Police and the Nigerian Copyright Commission at the behest of Microsoft Corporation have been reported in Nigeria:

The premises of IPS Plus Solution Limited, a computer reseller at Veterans Plaza, located in Yaba, were raided following a consumer tip-off, an undercover test purchase and a subsequent petition to the local law enforcement authorities by Microsoft Corporation. The raid took place on 14 September 2011 and the matter has been handed to the Nigerian Copyright Commission (NCC) for further investigation.

Separately, officials from the Nigerian Copyright Commission (NCC) raided the premises of a local software reseller in Port Harcourt following a complaint made to Microsoft by a consumer after he was sold counterfeit software. The raid resulted in the seizure of 269 units of suspected high and low quality counterfeit products, ranging from computer games, music, anti-virus software, and Microsoft Windows and Office. Microsoft have an educational portal on how to detect if you have counterfeit software, located here.

The South African counterfeit industry is estimated at approximately R362bn and is viewed as one of the world's fastest growing industries, with seizures of fake goods up 46% annually according to litigator Nishan Singh at attorneys, Adams & Adams. News24

Brazil scores!

2011-10-06T10:37:00.003+01:00

The debacle around the issue of a visa to the Dalai Lama is not the only reason for bad press about South Africa this week. The Brazilian president, Ms Dimla Rousseff, has also referred to South Africa in less than flattering terms. She is being taken to task by FIFA for failing to ignore the Brazilian constitution, and other existing legislation, so as to accede to FIFA’s requirements for the staging of the 2014 Soccer World Cup. According to a report in Monday’s Irish Times, available here http://www.irishtimes.com/newspaper/world/2011/1003/1224305145366.html
she made it clear that ‘Brazil will not let Fifa impose its demands on Brazil in the same way it did with South Africa ahead of the 2010 tournament’.
In particular, she refused to accept state liability for any damages suffered by Fifa and its executive during the tournament, she has not guaranteed the sale of alcohol in stadiums during the tournament (this falls under state not national legislation), she has refused to raise the prison terms for counterfeit merchandise to the levels demanded by Fifa, and she has respected national legislation that grants reduced admission rates to pensioners and students.
Maybe women’s priorities are less focussed on TV sport?

A to Z of African official IP websites no.16: Egypt

2011-10-03T08:12:00.001+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states has taken a turn for the better, now that Afro-IP's intrepid e-explorer Kingsley Egbuonu visits Egypt. This is what he found:

Overview

Egypt is a Contracting Party to several treaties on intellectual property including: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.

Copyright Office

• The Permanent Office for the Protection of Copyright (Ministry of Culture) is the office responsible for copyright and related rights in Egypt.

• The Ministry’s website (http://www.ecm.gov.eg/) is in Arabic and it utilises social media such as: facebook and twitter to reach its audience.

• At present, visitors in search of legal materials (on copyright and/or allied matters) may not find the website particularly useful.

Industrial Property Offices

Trade Mark Office

• The Commercial Registry (Ministry of Trade and Industry) is the competent office responsible for the administration of intellectual property rights (in particular trade marks and designs) in Egypt.

• The Ministry’s website (http://www.mfti.gov.eg) is in Arabic (with English option), but unlike the copyright office, it doesn’t employ the use of social media.

• At present, this website does not appear particularly useful for visitors in search of intellectual property materials – although there is an intellectual property unit section on the website.

Patent Office

• Egyptian Patent Office (Ministry of Scientific Research) is the competent office responsible for the administration of patent rights in Egypt.

• The office website (http://www.egypo.gov.eg) is a very good resource tool for IP practitioners – in particular, its patents database.

• The website is in Arabic, but it also has an English language option.

Kingsley tweets as @IPinAfrica

Anti-Counterfeit Friday

2011-09-30T06:22:00.000+01:00

This is the second post in Afro-IP's ACF campaign designed to increase awareness of the problem in Africa.

Ghana: Hewlett Packard has announced a significant local seizure of counterfeit printing supplies destined for HP printers. The company supported Ghanaian law enforcement officials who confiscated nearly 1,100 illegal items in a highly coordinated strike. Over the last four years, HP has assisted in the seizure of nearly nine million pieces of fake printing supplies products and components in Europe, the Middle East and Africa. (GhanaWeb)

"If there is one thing that we all recognize, it is that intellectual property crime is a problem of global dimension," said U.S. Department of Justice Assistant Attorney General Lanny Breuer in late September at the 2011 International Law Enforcement Intellectual Property Crime Conference. Voanews

East Africa: The Ugandan Daily Monitor reports that the National Drug Authority warned that counterfeit antiretroviral drugs – used to manage HIV infections – could find their way into the Ugandan market. The authority's Executive Secretary warned that the World Health Organisation had already found counterfeit Zidolam-N drugs on the Kenyan market.People living with HIV/Aids who take counterfeit antiretroviral drugs could suffer diminished immunity or develop resistance to the genuine drugs.

Each year more than half a million people worldwide die while using bad drugs to treat malaria and tuberculosis alone. Now a group of start-up companies, including Sproxil, is offering consumers a more reliable way to make sure their pills are genuine. The new method relies on two technologies that are ubiquitous in the third world: text messaging and scratch-off labels. Nigeria has reported some successes using the technologies. (New York Times) “For tuberculosis and malaria alone, up to 700,000 people die every year due to fake products,’’ he said. “That’s four jumbo jets full of people dying every day.’’ (Boston Globe reporting on the same development)

Tanzania: In a bid to decrease the counterfeit imports in the country, the government will start linking local traders to Chinese supplier who produce genuine goods. According to the article traders in the country do not know when they are dealing with rogue traders and the government initiative is designed to reduce this risk. (The Citizen)

Update: TK Bill, Brand Africa and China

2011-09-27T08:09:00.002+01:00

With only four days left to vote on the TK Bill almost 50% of the voters believe that the Bill needs serious re-drafting while 25% believe that TK is not even worthy of protection. Nobody believes that the Bill is "nearly ready". Afro Leo's attempts to email the head of the Portfolio Committee accused of "bulldozing" the Bill through - Joan Fubbs (pic) - for comment have been ignored. Please take a moment to cast your vote alongside here. For those interested in how other countries have dealt with TK, WIPO's website here is a very useful resource.

For the first time, pan-African consumers have been given an opportunity to vote for their most admired and valued brands. The continent’s most valued brands will be revealed at the inaugural Brand Africa100 Awards to be held in Johannesburg on September 29, 2011, at the Sandton Convention Centre. Brand Finance plc is responsible for the valuation work. More information here.

Meanwhile, the Chinese government recently made this statement in connection with the plight of people living in the Horn of Africa. "The international community should actively support African countries in realizing food security and development, provide greater assistance to Africa's agricultural development, and adopt more favorable policies toward African countries in terms of intellectual property, market access and technology transfer." Clarification required here please: the problem of asking for a relaxation of IP laws is that it may facilitate the spread of counterfeit goods, which mainly come from China, risking food security and general health even further.

A to Z of African official IP websites no.15: Republic of Djibouti

2011-09-26T05:24:00.000+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states has now moved from C do D with the visit of Kingsley Egbuonu to the Republic of Djibouti. At least this week Kingsley has a domain name to report -- even if it turns out not to be a particularly useful one.

Overview

Djibouti is a Contracting Party to the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.

Copyright Office

The Copyright and Neighbouring Rights Office (Ministry of Communication and Culture) is the office responsible for copyright and related rights in Djibouti.
Currently, this office has no web presence.

Industrial Property Office

The Industrial Property Unit (Ministry of Commerce, Industry and Handicrafts) is the competent office responsible for the administration of intellectual property rights in Djibouti.
The Ministry has a website (www.mci.dj). However, the intellectual property section is still under construction, hence not currently useful.

Kingsley tweets as @IPinAfrica

Anti-Counterfeit Friday

2011-09-23T08:34:00.000+01:00

but, are those fake?

During the Rugby World Cup fans based in South Africa are encouraged to wear their teams rugby jerseys. It's known as Rugby Friday and it is a massive boost to the counterfeit goods industry. At almost every traffic light fake rugby jerseys are sold with a smile and most customers are simply unaware that they are supporting the biggest IP problem in Africa. So, Afro-IP has decided to launch an Anti-Counterfeit Friday campaign with news and views on counterfeiting in Africa. Enjoy ... oh, and beware those Springboks - yesterday's performance didn't look fake to me.

Nigeria: "Nokia last week revealed that consistent media campaign and other related activities in the Nigerian mobile market has significantly checkmated the spread of counterfeit mobile phones dropping the market share from 15 percent in July 2010 to 6 percent by July 2011." Vanguard [interestingly, the report does not mention any enforcement successes highlighting the effectiveness of alternative options]

Director General of the National Agency for Food and Drug Administration and Control Dr. Paul Orhii, has said that "the agency has adopted sustained media campaign, training and retraining of its officials, reviewing NAFDAC laws, grassroots sensitisation, improved collaboration with national institutions, as well as establishing closer working ties with international drug and food regulatory agencies [in a bid to stop counterfeit medicines in Nigeria]." (AllAfrica report)

"Eaton and other manufacturers have been successful in conducting searches and seizures of counterfeit electrical products in China, the Middle East and Africa. These programs have identified hundreds of thousands of breakers and electrical components that have been seized and destroyed." EON "Counterfeiting has become a growing problem worldwide for more than a decade and has increased by 10,000 percent over the past 20 years." Eaton anti-counterfeit portal.

and, loved this one:

"Ecopark facilities in Torrevieja (Spain) last week welcomed the destruction of counterfeit items seized by police this summer from unauthorised street vendors." A vast number of vendors come from sub-saharan Africa, according to the report. Not all counterfeit dvds were destroyed though "During the past years, growers of La Mata Vines have been hanging counterfeit CD’s on poles and when the grape are ripe, so that, with the reflection of the sun, they scare away the birds from their crops" see full report here.

Accelerating IP and Innovation - Cape Town

2011-09-22T06:24:00.000+01:00

Speaking at the at a conference on accelerating intellectual property and innovation in Cape Town, "South Africa’s Companies and Intellectual Property Commission [patents and designs] registrar Elena Zdravkova said that while there were problems with the pure registration system of South Africa, a full examination system was likely to be onerous. A more attractive option would be a partial recognition system, where examinations that have been undertaken by other patent offices around the world would be taken into account to avoid duplication of work." [Couldn't agree more.] Underlining the point, the USPTO believes that "our point of stability will be approximately 10 000 examiners.” and "most USPTO examiners have multiple degrees not only in the sciences, but also in law." Engineering News

Nigeria : the role of IP in nation building

2011-09-21T03:05:00.000+01:00

Every September 13 has been set aside by the African Union in 1999 to commemorate the African Day for Technology and Intellectual Property (IP). [Afro Leo admits that he was not aware of this]. Chinyere Amalu writes on the significance of the celebration and the role of IP in nation building in Nigeria for LEADERSHIP here.

"..recent global developments have made it evident that natural resources endowment is no longer the prime source of national wealth or prosperity. Science and innovation have become the key driving force for propelling national economies,”

"..have to start from the primary schools and not only at the research institutes and universities, where you get innovations,”

"The Nigerian government has, through the creation of NOTAP under the federal ministry of science and technology, demonstrated its determination to promote and acquire technology, especially encouraging the entrepreneurs, researcher and inventors to protect their intellectual property by putting a lot of structures in place, including establishing of 30 Intellectual Property and Technology Transfer Offices (IPTTOs) in research institutes and institutions of higher learning across the country."

TK Bill reprieve .. but don't forget to vote

2011-09-20T06:40:00.003+01:00

The debate in the National Assembly on the TK Bill due today has been postponed (see tweets (below) from Portfolio Committee member Tim Harris over the past week).

timharris Tim Harris

The IP Amendment Bill has also been withdrawn from the order paper. Good day for traditional knowledge & press freedom. http://www.businessday.co.za/Articles/Content.aspx?id=153725

timharris Tim Harris

1-way traffic in committee on the IP Amendment Bill today. Opposition proposals to better protect traditional knowledge bulldozed by the ANC

timharris Tim Harris

Not as sexy as the Secrets Bill, but my 2 wk fight in committee just extended protections in the IP Amendment Bill to all communities in SA

The Bill is expected to be referred back to the parliamentary committee for errors to be corrected. (Die Burger)

For those interested in how legislation is passed in RSA, there is a useful summary on page 6 of this report.

Please don't forget vote on the Poll alongside. Your views are important.

PS: amidst the deluge of updates you received yesterday (apologies) Afro Leo is concerned that fellow blogger Paul's post that Rwanda has joined ARIPO may have gone unnoticed. Check it out.

TK Debate - your views needed

2011-09-19T10:58:00.000+01:00

Afro Leo has just heard from the Office of the Anton Mostert Chair of Intellectual Property that the controversial Intellectual Property Laws Amendment Bill (the "TK Bill") is being debated tomorrow and over the coming weeks.

The debaters urgently need your views!

The Chair has provided all of the background information in a motivational post here. For further information and previous Afro-IP posts, please click here or type in "traditional knowledge" in the search function.

Could you please take a few minutes to vote on the Poll alongside or enter your comments at the bottom of this post?

Is TK worthy of protection?
Should RSA wait for the WIPO model?
Does the Bill need serious re-drafting?
The Bill is nearly ready, push on!

A to Z of African official IP websites no.14: Republic of the Congo

2011-09-19T08:29:00.000+01:00

Things are still grim in Afro-IP's A-to-Z series of visits to the official IP websites of African states. It seems to be ages since the intrepid Kingsley Egbuonu has come across any credible web presence on the part of the continent's IP offices, and this week's visit to the Republic of the Congo is no exception.

Overview

The Republic of the Congo, not to be confused with its neighbour the Democratic Republic of the Congo (DRC), is signatory to international agreements on intellectual property such as the Paris and Berne Convention. It also belongs to the African Intellectual Property Organization (OAPI) – a regional system based on the Bangui Agreement.

Copyright Office

The Congolese Copyright Office (Ministry of Culture and the Arts) is the office responsible for copyright and related rights in Congo.
Currently, this office has no web presence.

Industrial Property Office

The National Industrial Property Unit, Directorate General of Industry (Ministry of Industrial Development and Promotion of Private Sector) is the competent office responsible for the administration of intellectual property rights in Congo.
Currently, this office has no web presence.

Conclusion

Similarly to its neighbour, the DRC, recent civil wars and militia conflicts have stifled economic development in Congo. As a result, there isn’t much enthusiasm for legislative conformity and/or strong enforcement of IPRs in line with (minimum) international standards.

Kingsley tweets as @IPinAfrica

Stellenbosch IP Conference: Part 4

2011-09-19T05:33:00.000+01:00

Part 4: For links to Parts 1, 2 and 3 click here.

Harms started the morning session with a paper entitled “The Ossification of IP Law in South Africa”.

RSA laws are not adapting at the rate appropriate for sustainable development. This is not the first time Harms has said so and Afro Leo was able to scribble down notes of his discontent over “misfiling and lost files”, “delays in processing trade marks at CIPRO”, the “state of our legislation” eg Counterfeit Goods Act conflicts with the Customs Act. Yet we carry on regardless … “on the rims” and his view that the proposed Traditional Knowledge legislation “will kill IP as we know it”.

Harms was critical of the Government’s apathetic attitude toward IP and their perception that it is “for rich countries” citing several examples that illustrate the direct relationship between patent applications and economic growth. He felt that there is only a reaction when “parochial issues hit Government in the eye” eg the latest ant-counterfeiting Government initiative.

He also pointed out that practitioners are failing to create arguable cases on the issues. His talk was peppered with interesting personal anecdotes and examples but was not intended to be “profound”. He concluded that there is a “vital role in revitalising the subject [IP in RSA]”.

Next up was SAIIPL president, Tshepo Shabangu speaking on "Future Challenges [for SAIIPL] for Intellectual Property Law and its Practice in South Africa".

She focused on three key areas; the lack of appropriately skilled IP specialists in the judiciary [and what can be done about it, highlighting an international trend toward specialist courts, and possibilities of lawyers and advocates sitting as adjudicators]; the need for SAIIPL to train and educate [which it does] and its ability to assist draft (or have an impact on) new legislation [blunted by a lack of trust and perception that it serves only its self interest i.e. mainly law firms].

Mr P Siemsen (Danneman Siemsen) shared his thoughts on IP and its relationship with sport as an instrument that could be used for economic growth in developing economies. Essentially, “IP is a very important tool to ensure possibilities that sport can deliver to developing countries”.

The next slot could have sparked debate for a week. Ginsburg, Gielen and Bereskin took us to that feint edge between trade mark rights and freedom of speech using RSA’s famous Laugh it Off case as a main reference. All three speakers were a treat and the presence of Harms (who gave the AD Laugh it Off decision) in the audience caused a natural and at times, humorous, tension. In a few words, dilution is only reserved for a very limited set of circumstances and the panel was, perhaps surprisingly, split as to whether Laugh it Off had been correctly decided by the Constitutional Court.

Congrats to the Chair on their first effort.

Afro Leo departed with a sense that there is much frustration and dismay at where IP is going in South Africa. In order to influence future changes he feels that those skilled in IP will need to figure out a new way of working with Government, a way that takes IP (and more specifically, the changes required within it) from its esoteric (a word used by a recent past SAIIPL president when describing the profession) and perceived elitist perch to a point where it can be understood by Government (eg measurable job creation), and from a Group that they trust. Government though does not appear to be totally ignorant of what IP and innovation can deliver (as this blog has noted) but needs to trust, engage and implement changes effectively.

Rwanda Joins ARIPO

2011-09-19T03:43:00.004+01:00

Rwanda has finally joined ARIPO (Africa Regional Intellectual Property Organisation), having deposited its instrument of accession on the 24th June 2011. According to the ARIPO web site, "the Harare Protocol will enter into force with respect to the Republic of Rwanda on the 24th of September 2011".

This will bring the member states to 18. This is a significant step as Rwanda continues to set the pace as a the lead country in reforming its business environment, policies and legislation. Acceding to the Harare Protocol will assist Rwandan businesses to use the ARIPO system to file Patents, Trademarks and Industrial Designs within the 18 member states in an easier manner than before. More importantly, if the Rwandan Intellectual Property registry can show itself to be more efficient than other registries within the ARIPO system, it stands to reap more in terms of fees, as applicants may use it as the registry of choice.

This will continue to shed a positive light on Rwanda in the World Bank Doing Business index, as well as in the East African Community(EAC), where it continues to attract great attention as a good destination for investments in the services sector.

We welcome you Rwanda, thanks to the change makers at the Rwanda Development Board (RDB) and wish you all the best!

Stellenbosch IP Conference: Part 3

2011-09-14T05:36:00.000+01:00

Mr Chen

Part 3. For the first part click here and the second here

A smile and sense of humour are incredibly disarming. Mr Chen entertained as he explained that the Chinese copy (hence they are prolific producers of counterfeit goods) because it is part of their culture of knowledge creation through sharing. Philosophically, this aspect of their culture is diametrically opposite to the idea of exclusivity created by intellectual property laws. Understanding this is important in dealing with the problem.

Some of the audience mooted that China was in a transformation stage and would eventually become big supporters of IPRs as their knowledge based economy grew (like South Korea). Campinos (OHIM) was quick to point out though that China was beyond the transformation stage and that its influence and power was already far greater than most thought. He felt the change may come as the country moves to an "import model".

Some take home tips from Mr Chen’s talk:

1. spend your budget on filing in China – “as far and as wide as possible”;

2. the “famous mark” recognition procedure in China is “disappointing”;

3. translations and transliterations should be registered but seek advice; and

4. lobby government if your company is investing in China to aide your rights protection program but remember China is “huge”.

The afternoon started with a thorough analysis of the overlapping mechanisms for protecting “icons” ie expensive handbags in Europe and if Afro Leo is able to obtain a copy of Helen Newman’s (Olswang) slides he will share with them with you. She also discussed the current UK debate on “initial interest confusion” – something that was considered in RSA in an article by Momberg & Els - see Afro-IP post here and general analysis on IPKat here.

Fred Mostert was then back at the podium with Mr J Monahan (who worked/s at eBay) discussing the possibility of take down notices for trade marks (ie in addition to copyright). The two had obviously worked very closely together implementing the take down procedure for copyright infringements in the USA. South Africa, of course, already has its own take down procedure for trade marks which is very effective – perhaps too effective? However, an interesting insight into how big brands are forming relationships with companies like eBay (as opposed to suing them) to assist them fight against counterfeiting.

Day 2 was just a morning but a cracker: Harms, Ginsburg, Bereskin and the fresh face of SAIIPL - stay tuned for the final part 4.

Copyright Offices in Africa: has anyone got a list?

2011-09-13T20:10:00.000+01:00

Denise Nicholson (Copyright Services Librarian, University of the Witwatersrand, Johannesburg) is no stranger to this weblog, having provided numerous leads and tip-offs (or should that be tips-off?) in the past. Now she asks a question and it would be good if we could help her. She asks:

"Is there by any chance a list of Copyright Offices in Africa, or at least the contact details of some of them? I would like to add this to my Copyright Libguide which you can find here".

Come on, readers, can you help? If there isn't a list already, we should compile one, building on Kingsley Egbuonu's work on the A to Z project which this blog is pleased to host each Monday.

Stellenbosch IP Conference - Part 2

2011-09-12T18:09:00.001+01:00

Part 2 for those who could make the International IP Conference in Stellenbosch. For Part 1 checkout the link here.

Dr Frederick Mostert, whose job in London is to look after the IP for luxury company Richemont (founded by Rupert) and son of the late Judge Mostert, paid tribute to his dad and thanked the University for creating the Chair, describing it as "a great honour for the family". Don Macrobert then regaled us with tales of the Ruperts and their creation of brands in the tobacco and drinks industries under the title "Drs Johann and Anton Rupert - The Doyens of South African Intellectual Property" - a title that nobody (even ardent TK proponents) dared question.

These two talks were important in contextualising the new Chair and unwittingly telling of its challenges - for example, Richemont's IP is held and run outside of RSA. This fact was driven home in the next talk by Antonio Campinos, OHIM's president, as he told us that RSA based companies file less than .05%! of EU trade marks. The statistic obviously excludes big filers from homegrown giants like SABMiller and Richemont, and even our re-engineered Portuguese chicken favourite, Nandos, whose international trade marks are held offshore. So, OHIM's stats are not a true reflection of South Africa's place in the international IP community but one wonders how South Africa can develop as a true hub for innovation when the related IP (as well as associated R&D centres, revenue streams etc) are likely to move away.

Antonio's talk was refreshing. One forgets that OHIM's huge success comes at a time when most companies are struggling. It really is a beacon - paperless, profitable and increasingly, influential. Their statistics reveal "shifts in power" from West to East and the (re-)emergence of Germany within Europe as a top filer. Campinos also highlighted a significant rise in counterfeiting and music piracy, which neatly lead to the next talk, from WIPO's Louise Van Greunen, director of WIPO’s building respect for IP division.

WIPO’s commitment to analysing the different methods of stopping counterfeiting endorses a multi-faceted approach which seems impressive. Louise spoke of a number of different initiatives including an IP outreach program that they are involved in. She stressed that Governments and companies have a “social responsibility” toward stopping it. Touché. For further comment, please see WTR's post here.

Next up was Mr Xuemin Chen from China. It is difficult to address an audience after two speakers have intimated that most counterfeit product comes from your home country. Part 3 of this report will explain how he fared.

A to Z of African official IP websites: no. 13: Democratic Republic of the Congo (DRC)

2011-09-12T08:20:00.000+01:00

Afro-IP's A-to-Z series of visits to the official IP websites of African states started going from bad to worse and now seem to be trailing along at rock bottom. On behalf of Afro-IP, Kingsley Egbuonu has travelled through cyberspace from Côte d'Ivoire to the Democratic Republic of the Congo -- where the position is equally bleak.

Overview

The Democratic Republic of the Congo is a contracting party to most international (including regional) agreements on the protection of intellectual property rights. At national level, the main IP laws are: the Ordinance-Law No. 86-033 of 5 April 1986 on the Protection of Copyright and Neighboring Rights (1986) and the Industrial property. Law No. 82-001 of January 7, 1982.

Copyright Office

The Secretariat General of Culture, Directorate of Research, Planning and International Cultural Relations under the Ministry of Culture and the Arts, is the competent office responsible for copyright and related rights in DRC.
Currently, this office has no web presence.

Industrial Property Office

The Directorate of Industrial Property, Secretariat for industry and small and medium enterprises (IPMEA) under the Ministry of Industry and SMEs is responsible for the administration of intellectual property rights in DRC.
Currently, this office has no web presence.

Conclusion

Like most developing countries, DRC lacks a strong, bespoke regime for the protection and enforcement of intellectual property rights (IPRs). But, considering its recent history of armed conflict, the current state of affairs can be excused – and it is fair that reasonable time should be allowed for it to comply with requisite standards.

Kingsley tweets as @IPinAfrica

Hope for Zimbabwean Sculptors

2011-09-08T00:37:00.001+01:00

Zimbabwe newspaper The Herald recently ran a column by Dr. Tony Monda, an expert in Art and the business side of art, entitled “Is Zimbabwean art safe on the Internet?”. Within this interesting and informative article is a highly charged plea for international protection of Zimbabwean sculpture.

Reading Dr. Monda’s post, one might think that there is no protection available for Zimbabwe artists. Indeed, it may seem that way to many of them and Dr. Monda, but it is not the case. The issue is not a lack of protection, but only a lack of enforcement. And, the really good news, enforcement is available. The problem is likely few artists know about the protections granted or how to enforce their rights under these protections.

Dr. Monda asks a number of questions:

What mechanisms do we have at our disposal for the defence and protection of our intellectual property?

Have the local legislation, patent and copyright laws been amend to include the international protection of Zimbabwean cyber-images on the Internet?

Who will monitor or marshal these international cyber felons and the colonial looters?

What punishment can be meted out to these invisible, virtual, foreign gorgons?

Mechanisms

The Zimbabwe Copyright Act protects sculpture as an artistic work. Granted the 1967 act is a bit old and could probably use some updating, but that doesn’t mean Zimbabwe artists are left out in the cold.

Zimbabwe is a member of the Berne Convention and TRIPs, which means that Zimbabwean artists’ copyright rights are protected in other Berne countries the same as they are in Zimbabwe. Dr. Monda is mostly concerned with infringements occurring in the US and Europe. The United States and the majority of European countries are also members of Berne, so Zimbabwean artists’ rights are protected there as well.

Local Legislation

Dr. Monda asks about the protection of “cyber-images on the Internet.” However, he’s really concerned about the protection of sculptures where the means through which the sculptures are being copied is pictures available on the internet. The sculptures themselves are protected by the 1967 Copyright Act (Sec. 2). Copying the sculpture by looking at the sculpture or by looking at a photo of the sculpture is still copying the sculpture and this little Leo suspects that shouldn’t be a problem in an infringement case. Photographs are also protected by the 1967 Act and whether that photo is posted online or printed on a piece of paper should not matter either.

Zimbabwean artists will also be protected by the local legislation in any Berne member-countries via national treatment.

Monitoring Cyber-felons

Ah yes, the part that seems to drive all intellectual property owners bonkers. While there have been many changes such that governments are getting involved in copyright enforcement, copyright is at heart a personal right, owned and maintained by the person or entity in possession of the copyright. It’s probably not the answer Dr. Monda would like, but it’s not a bad answer. From Dr. Monda’s article, we see that some artists do become aware of infringements of their works. “This writer has been approached by several prominent Zimbabwean artists with complaints of seeing replicas of their work on the Internet on Euro-American websites.”

Artists can police websites themselves, work together to help each other spot infringements and ask supporters of their work to keep their eyes open. There may also be other ways to look for infringing items or to work on authenticating the real artwork, thus building up its value over infringing copies.

Punishment

And now we get to the real meat. Perhaps in the country’s current state, the Zimbabwe courts may not be the best places to try to bring a copyright infringement suit. But remember, the infringements of which Dr. Monda speaks are occurring abroad, in Berne member countries. Most courts (as far as this Leo knows) grant jurisdiction in the place where the infringement occurred. Punishment would be either under the local or Zimbabwean Act as decided by the court.

The best scenario is one in which the artist knows who the infringing party is, where the infringing copies are being made and where the infringer resides. In cases where this is not known, a lawyer can help find the answers through various domestic legal tools.

Of course, the natural response to the suggestion that Zimbabwean artists bring suit in the countries where the infringement is occurring would be that the Zimbabwean artists are likely short on cash. This Little Leo suggests starting in places that allow contingency fees. (In the United States, whether an attorney can accept contingency fees for a case is governed by state law.)

So, Dr. Monda and Zimbabwean artists, don’t give up yet. You don’t have to “vow[ed] never to have an image of [my] art on the Internet.” You just need a lawyer, and there are probably many foreign lawyers who can help you enforce your rights in their jurisdictions.

Photo: 205_0597 (Sculpture on the grounds of the Embassy of Zimbabwe) cc-by dbking available at http://www.flickr.com/photos/bootbearwdc/24228763/in/photostream/

Insuring against disparagement? - Santam v Dial Direct

2011-09-07T09:50:00.000+01:00

Cluver Markotter's Jeremy Speres has very kindly sent through this thought provoking guest post, with interesting questions over the recent Santam V Dial Direct TV ad dispute:

"It’s not very often that we South Africans get treated to a spat of robust comparative advertising, let alone one that ends up in court, which is why local IP practitioners will be licking their lips at the recent dispute between insurers Santam and Dial Direct.

Beginning May 2011, Santam began airing their “Real McCoy” TV ad (available here and here) featuring the Oscar winning Sir Ben Kinglsey strolling down Noordhoek beach in a grey suit, lamenting the inequities of some insurance policies (because, naturally, this is what Sir Ben Kingsley concerns himself with when strolling along the beach). The advert then ends with Santam’s “Insurance good and proper” tagline.

In response, Dial Direct, as part of its “Yada Yada” talking hands campaign (that may be responsible for a recent surge in self-immolation), aired a brilliant parody (available here) featuring a man dressed in a similar suit strolling along a similar looking stretch of beach. Only this time, the man’s head is replaced with a talking hand that repeatedly blurts out “yada yada”.

Dial Direct, no doubt anticipating Santam’s displeasure, rather cunningly began airing the parody over the weekend of 2 July 2011. Santam, clearly not amused, fired off the usual salvos alleging copyright infringement and unlawful competition. Dial Direct refused to relent and Santam proceeded to obtain an urgent interim interdict in the Western Cape High Court requiring Dial Direct to remove the ad from circulation pending the return date for the final hearing (the founding papers can be downloaded here).

Now what’s particularly interesting here is that there was no reproduction (whether mechanical, digital or otherwise) of the actual footage of the Santam ad – Dial Direct filmed an entirely new ad. So it seems that Santam may be claiming copyright over an idea, and not the material expression of the idea (being the footage itself). Apart from claiming that the parody ad reproduces the Santam ad, Santam also claims that it is an adaptation which, in respect of cinematographic films, is not defined in the Copyright Act.

In terms of copyright law then, this case raises all sorts of rather tricky points surrounding the idea/expression divide; the definition of “adaptation”; whether Dial Direct could squeeze its ad into one of the rather limited exceptions provided in the Copyright Act and whether the right to freedom of expression should temper copyright law in the face of parody (think Laugh It Off). I can do no better than to refer readers to Andrew Rens’s (previously of the Shuttleworth Foundation and Creative Commons, currently pursuing an SJD at Duke University) excellent blog on these issues and more, available here. For a great analysis of the applicability of the ASA code to this matter, see Delene Bertasso’s piece here .

Regarding the unlawful competition angle, Santam appears to be relying on disparagement as the cause of action. This is a recognised form of unlawful competition in South Africa (see ch 11 of Van Heerden-Neethling’s Unlawful Competition) requiring, amongst others, proof that damage in the form of lost custom is probable. What isn’t clear is the extent to which our courts will be prepared to assume that damage is probable where all that is clear from the papers is that the material in question is disparaging and that many people will be exposed to it. Our courts have been willing to assume that damage will follow in passing off cases where the two elements of reputation and deception have been proved – perhaps our courts will follow the same route in relation to disparagement?

One can’t help but get the feeling that there may have been a third way for Santam that may or may not have yielded more productive results. Perhaps, with all the creative talent we have in this country, all those billable hours could have been spent on devising a tasteful retort? The South African public tends to respond well to that sort of thing – remember BMW’s brilliant “Beat the Bends” come back? (see here). No doubt the Streisand effect is about to kick in, hopefully thanks (or not) to this post!"

One wonders too what the basis of a claim by Sir Ben Kingsley might be either contractually against Santam or against Dial Direct. Is this the same as Zapiro's parodies of another bald gent we all know? Does Sir Ben also have a claim under unlawful competition for disparagement to his own brand or perhaps one based on defamation? Is it his reputation or that of Santam's that is at stake or both? Sir Ben is clearly recognisable and the concept of the advert revolves around him and look-a-likes. His involvement also endorses the Santam policies. Indeed the difficulty in getting Ben to sign up for the add is (rather prophetically) explained here:

“You also have to keep in mind that these people are brands in their own right and won’t do anything they don’t like or that’s puts them in bad light. We were very lucky with Sir Ben...".

This may explain the action taken by Santam but one cannot help feel too, that Jeremy has a point: what would you do if you were Santam or Ben for that matter?

Nigeria, UK to cooperate -- but exactly how?

2011-09-05T15:35:00.000+01:00

The UK government's News Distribution Service announces a development that may be of some long-term significance to one of Africa's most important markets. According to the text:

"A landmark copyright agreement has been signed between the Intellectual Property Office (IPO) and counterparts from Nigeria. The agreement is the first of its kind between the IPO and an African country, and will improve international cooperation on copyright issues between the two nations.

The move follows the UK Government’s acceptance of the recommendations made in the Hargreaves Review of intellectual property and growth. The review highlighted that the UK should continue to pursue international interests in intellectual property.

Minister for Intellectual Property Baroness Wilcox said:
“Effective copyright law in the UK and Nigeria is essential for the future growth of both nations’ creative industries. Businesses need to have confidence in the intellectual property systems of other countries if they are to prosper in international markets.
“This agreement will create opportunities for information sharing as well as opportunities for training and development in the UK and Nigeria.”
The agreement was signed today (5 September) in London by the IPO’s Chief Executive John Alty and Chief Executive of the Nigerian Copyright Commission, Afam Ezekude".

Afro Leo wonders (i) what is the international cooperation that will be improved by this agreement, (ii) what sort of information is going to be shared and (iii) what sort of opportunities for training and development the two countries have in mind. Do any readers know?