Showing posts with label WIPO. Show all posts
Showing posts with label WIPO. Show all posts

Thursday, 11 December 2025

Afro Leo

Africa achieves a landmark outcome: WIPO’s historic new Treaty to combat biopiracy


By Wend Wendland[1]

 

African plants, marine life and microbes have frequently been targeted by companies bioprospecting for new medicines, cosmetics and agricultural products – often without prior and informed consent, acknowledgement and benefit-sharing, a practice known as ‘biopiracy’.[2]


It was for this reason that African countries were at the tip of the spear in a decades-long struggle to introduce an important change to patent procedure that resulted finally in a new Treaty adopted by all the members of the World Intellectual Property Organization (WIPO) at a Diplomatic Conference in May last year: the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge.


For many years, an intergovernmental committee of WIPO (known as the ‘IGC’) conducted the negotiations that led ultimately to the Treaty’s adoption.[3]


What the Treaty says

The most significant change brought about by the Treaty is that it requires patent applicants to disclose the origin or source of genetic resources and associated traditional knowledge their inventions are based on.

 

This new disclosure obligation will lead to greater transparency about the commercial use of a country’s biodiversity and what benefits are being created and for whom, triggering inquiries into whether national access and benefit-sharing regimes have been complied with – and, if not, this information could lead to benefit-sharing that might not otherwise have occurred. Provider countries, Indigenous Peoples and local communities will then stand to gain a greater share of the monetary and non-monetary benefits that arise from the commercialization of their resources. 


In this way, the Treaty contributes to environmental justice.

 

Further, specific language proposed by Indigenous Peoples’s representatives resonates throughout the text, and they will play a role in the Treaty’s implementation. In this way, the Treaty contributes to social justice and procedural equity.

 

This new transparency requirement will also help reduce uncertainty about the validity of patents over bio-based inventions. This will lead to higher quality patents and greater trust in the patent system.

 

Africa’s leading role

 

A stand-out feature of the Treaty is that it is the first intellectual property treaty for which developing countries were the proponents. For one of the first times in the history of international intellectual property law, they were not policy-takers but policy-makers. This may be intellectual property’s first truly pro-development treaty.

 

Indeed, developing countries, as well as Indigenous Peoples and local communities, called for such a new patent disclosure requirement for over 25 years and they in particular have hailed its adoption.

 

Africa played a leading role in the long and winding journey to the Treaty. I am reminded in particular of the contributions over the years of figures like Philip Owade from Kenya who chaired the IGC from 2009 to 2011, Vivienne Katjiuongua from Namibia who chaired one of the two key negotiating tracks at the Diplomatic Conference and negotiators such as Yonah Seleti, the late Tom Suchanandan and Shumi Pango (South Africa); Pierre du Plessis (Namibia); Catherine Bunyassi Kahuria (Kenya), Chidi Oguamanam and Ruth Okediji (Nigeria); Paul Kuruk (Ghana); Amadou Tankoano (Niger), Mohamed Bakir (Algeria) and Georges-Rémi Namekong (African Union), to name only a few.

 

Prospects for the Treaty’s success

 

Africa is leading the charge too in bringing the Treaty into force.

 

Among the 44 countries that signed the Treaty within the one-year period allowed for signing, the majority are African.[4]

Signing the Treaty does not mean countries are bound by it, however. Countries become bound by treaties when they either ratify or accede to them.

 

This Treaty will come into force three months after 15 countries have either ratified or acceded to it.

 

So far, two countries have joined the Treaty (Malawi and Uganda).

 

The influence of the Treaty on the continuing negotiations in WIPO on the protection of traditional knowledge more broadly and traditional cultural expressions is at this stage unclear, yet expectations are high.

 

It is too soon to make predictions about the success of the Treaty – however that may be judged.

 

While the Treaty’s adoption last year was a momentous milestone in the evolution of the patent system, it is critical that the Treaty comes into force as soon as possible.

 

Countries should therefore now show their commitment to the Treaty by joining it and bringing it to life.

 



[1] Wend Wendland was for many years a Director of the World Intellectual Property Organization (WIPO). He is now an independent expert working at the intersection of intellectual property and global issues such as biodiversity, cultural heritage, agriculture, health and Indigenous Peoples. He is also an Adjunct Professor at the Law Faculty, University of Cape Town, South Africa. He is contactable at wend@wendwendland.com and his website is at https://wendwendland.com

[2] African Centre for Biosafety, ‘Pirating African Heritage: The Pillaging Continues’, 2009; Jay McGown ‘Out of Africa: Mysteries of Access and Benefit Sharing’ (Edmonds Institute, 2006).

[3] WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (the IGC)

[4] See https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/gratk.pdf

 

 

The author’s book The Journey to the WIPO Treaty on Genetic Resources and Associated Traditional Knowledge: Policy, Process and People (Edward Elgar, November 2025) provides an insider’s account of the colourful and eventful journey to the Treaty’s adoption from the first proposal at WIPO for a new patent disclosure requirement in 1999 to the adoption of the Treaty 25 years later. It analyses the Treaty and its negotiating history, lifting the curtain on how its adoption by consensus was achieved, identifying the key individuals involved and providing insights into how the Treaty’s ultimate success may be judged and achieved. The book is now available on the Edward Elgar Publishing website. For a limited period, get a 35% discount by using the code WEND35 at checkout.


Read More

Monday, 3 December 2018

Chijioke Ifeoma Okorie

Can a foreign professional institution successfully maintain an action for passing off of its name and grades in Nigeria?

Can a foreign professional institution, which is not incorporated as a Nigerian company, successfully maintain an action for passing off of its name and grades in Nigeria?


This is the principal question that the Federal High Court was asked in the case of The Chartered Institute of Arbitrators v. The Chartered Institute of Arbitrators (Nig.) Gte/Ltd and the Corporate Affairs Commission FHC/L/CS/341/09 decided recently on 22nd October 2018. The Chartered Institute of Arbitrators (CIArb UK) is an arbitration institution incorporated as a charity in the UK. The Chartered Institute of Arbitrators (Nig.) Gte/Ltd (NCIArb) is an arbitration institution registered as a company limited by guarantee in Nigeria.

Background

Chartered Institute of Arbitrators UK
The CIArb UK instituted an action at the Federal High Court against the NCIArb for passing off. CIArb UK claimed that by using the name “Chartered Institute of Arbitrators (Nigeria)”, NCIArb was passing itself off as the Nigerian branch of CIArb UK. It also claimed that by using the logo and membership grades of CIArb UK such as “Associate”, “Member”, “Fellow” and “Chartered Arbitrator”, NCIArb is passing off the logo and membership grades as those of CIArb UK. Prior to trial in the suit, the name of the Corporate Affairs Commission (CAC) was struck out as a party to the suit, whereupon NCIArb filed a preliminary objection challenging inter alia, the locus standi of CIArb UK to institute the suit.  

In its judgment, the Court dismissed the preliminary objection and held that CIArb UK had the requisite locus to institute the action. The Court also granted CIArb UK the declarative reliefs sought as to passing off and granted an order of perpetual injunction restraining NCIArb from using its current name or using the logo and membership grades. NCIArb was also directed to deliver up all books, letterheads, certificates etc. bearing “Chartered Institute of Arbitrators (Nigeria)” to the Deputy Sheriff of the Federal High Court for destruction. See page 22 of the Judgment.

Issues raised for determination
In his judgment, Justice C.M.A Olatoregun adopted the issues raised by the Defendant. Page 12 of the judgment. The key issues were:

Whether or not CIArb UK’s act is void ab initio by virtue of section 54 of the Companies and Allied Matters Act.
In resolving this issue, the Federal High Court considered section 54 of the Companies and Allied Matters Act (CAMA), which stipulates that a foreign company which intends to carry on business in Nigeria must be registered as a Nigerian Company otherwise its actions as such company operating in Nigeria, are void. The Court held that as the reliefs sought related to passing off, section 54 was not relevant to the case of CIArb UK and there was no contravention of section 54 of the CAMA. See page 15 of the Judgment. In the Court’s view, if CIArb UK were to be registered as a Nigerian company, such registration would have been undertaken pursuant to Part C of the CAMA, which deals with incorporated trustees. [NB. Charities may also register as a company limited by guarantee].

Whether or not the Defendant is liable for passing off
The Court identified three components of the common law tort of passing off as follows: (1) that the name, mark or sign in contention has become distinctive of the plaintiff’s goods and is regarded by relevant members of the public as coming from a particular source; (2) that there has been a misrepresentation by the defendant that has caused or could cause the public to think that the goods of the defendant emanate from the plaintiff; and (3) that the plaintiff has suffered or is likely to suffer loss by reason of the defendant’s misrepresentation. See pages 15 and 16 of the Judgment.


The Court held that the CIArb UK established the first component to succeed in its action for passing off as it was an arbitration institution founded in 1915 with branches all over the world and is globally known to offer training and education to arbitrators. See page 16 of the Judgment. On the second component involving misrepresentation, the Court found that NCIArb advertised itself in several Nigerian newspapers using the CIArb’s logo. It invited the public to a seminar on ADR processes and members of the public were misled into attending the event. See pages 17 to 19 of the Judgment. The Court also found that NCIArb had membership grades similar to that of CIArb UK. See pages 19 and 20 of the Judgment.

On the issue of damages or loss from the misrepresentation, the court held that actual damage or deception need not be proved and that it was sufficient that the misrepresentation had the potential to deceive. See page 21 of the Judgment.

Comments  
The Federal High Court correctly identified the elements that must be proved in an action for passing off. However, the Court did not (sufficiently) explain why an action in passing off involving a foreign company (a charitable organisation) operating through a Nigerian branch, had nothing to do with section 54 of the CAMA.

Section 54 provides thus:
(1) “…every foreign company which before or after the commencement of this Act was incorporated outside Nigeria, and having the intention of carrying on business in Nigeria shall take all necessary steps to obtain incorporation as a separate entity in Nigeria for that purpose. But until so incorporated, the foreign company shall not carry on business in Nigeria or exercise any of the powers of a registered company and shall not have a place of business or an address for service of documents or processes in Nigeria for any purpose other than the receipt of notice and other documents as matters preliminary to incorporation under this Act.
(2) Any act of the company in contravention of subsection (1) of this section shall be void.

Accordingly, whenever a foreign company is instituting an action in Nigeria, it is opined that section 54 of the CAMA is relevant as it goes to the question of locus standi – the capacity to validly maintain an action. As a tort, passing off envisages that the owner of the name, logo or getup being passed off must have acquired the reputation around its name, logo or getup in the course of trade or in a business capacity. In other words, an action in passing off may only be maintained by a person (natural or artificial) who is carrying on business with the name, logo or getup being passed off. If an entity is doing business in Nigeria, section 54 of CAMA then becomes crucial to its locus standi to maintain an action.

A crucial part of CIArb UK’s claim was that NCIArb’s use of the name “Chartered Institute of Arbitrators (Nigeria) Ltd/Gte” amounted to the latter passing its institution off as the Nigerian branch of CIArb UK. See page 1 of the Judgment. Expressly stated in the Statement of Claim albeit without reference to the reliefs sought is the fact that CIArb UK had a Nigerian branch operating in Nigeria with its permission and support. In these circumstances, it is opined that the business of the Nigerian branch authorized by CIArb UK and the relationship between these two bodies (the authorized Nigerian branch and CIArb UK) makes section 54 of the CAMA relevant to the suit. By extension, it cannot be said that there was no contravention with section 54 of the CAMA. Nor can the irrelevance of section 54 to passing off actions be stated without some rigorous explanation.

It is also known that common law precepts such as “passing off cannot override clear terms of statute where there is conflict. Hence, It would have been helpful if the learned trial Judge laid down in clear terms why an ordinarily relevant law (i.e. the CAMA) would be inapplicable. For instance, would it be because of Nigeria’s international obligations to recognise well-known brands under certain treaties and agreements such as the TRIPS Agreement as urged in the case of The Procter and Gamble Company v Global Soap and Detergent Industries Ltd and the Registrar of Trade Marks (2013) 2 NWLR (Pt. 1336) 409 CA? Are the treaties domesticated as demanded by Nigerian law to enable their application? If not, on what legal basis may a court, whose duty is to interpret the law rather than make it, sidestep the clear words of a statute? It would have been helpful if the court raised and addressed these questions.

Afroleopa opines that the appropriate question should have been: whether a foreign company, which does business in Nigeria without the requisite incorporation, can validly maintain an action in passing off in Nigeria? Put differently, is non-compliance with section 54 of CAMA a bar to an action in passing off by a foreign company or entity?

The status of CIArb UK and its authorised Nigerian branch shares some similarities with the position of the Institute of Chartered Secretaries and Administrators (ICSA), originally founded in England in 1891. For several years, ICSA’s members in Nigeria operated in associate capacity. The Nigerian Chapter was granted autonomy in 1988 and incorporated under the Companies Act 1968 as the Institute of Chartered Secretaries and Administrators Nigeria (ICSAN). It became chartered in Nigeria by virtue of Decree 19 of 1991 (now Institute of Chartered Secretaries and Administrators of Nigeria Act, Cap I13 Laws of the Federation of Nigeria 2004). In 2014, ICSA and ICSAN signed a Memorandum of Understanding (MoU) to inter alia, clarify the treatment of their respective members and students.

In the case of CIArb UK, the authorized branch comprising of its members in Nigeria was granted Branch status since 1999. See page 9 of the Judgment. It was only after NCIArb (which was incorporated in 1988) had changed its name to the Chartered Institute of Arbitrators (Nigeria) Ltd/Gte that the Nigerian branch of CIArb UK applied to the CAC to be incorporated as a company. Juxtaposed with the history of ICSA and ICSAN summarized above, it appears that CIArb UK may have been negligent in securing the position of its Nigerian branch when it granted it Branch status.

By holding that section 54 was irrelevant to the suit, it appears that unless its decision is overturned on appeal, the court has provided a (temporary) leeway for the CIArb UK to address its seeming inadvertence. However, this leeway may not be sufficient as the present orders merely restrain the NCIArb from using its registered name. The orders do not affect the certificate of incorporation issued by the CAC to NCIArb. In the present circumstances, there may yet be need for the parties to explore other arrangements that addresses the needs and interests of the each party. In AfroLeopa’s experience as a Chartered Mediator, Alternative Dispute Resolution (ADR) mechanisms such as mediation may better serve those needs.

For advantages of ADR mechanisms, see WIPO’s take, here. 
Read More

Friday, 16 February 2018

Afro Leo

Calling all IP Teachers and Researchers in Africa!

Afro Leo is very excited to learn that the World Intellectual Property Organization (WIPO) and the World Trade Organisation (WTO) are organising the first Regional WIPO-WTO Colloquium for IP Teachers and Researchers in Africa.

This WIPO-WTO Colloquium will be held from April 9 to 12, 2018 followed by IP Scholars Africa Conference, hosted by University of South Africa (UNISA) on April 13, 2018, both held at UNISA in Pretoria, South Africa. 

The Colloquium for IP Teachers and Researchers in Africa will:
  • provide IP academics in the region with a greater understanding of current international developments in IP law and policy, and the status of WIPO and WTO agreements and ongoing work with bearing on IP, focusing on current activities of particular relevance to the African context; 
  • map existing IP teaching and scholarship in Africa, promote cutting edge research focused on the region, and encourage the publication of high quality research as a means of building domestic capacity for adapting and applying policy options within the framework of international IP standards and the broader legal and policy context;
  • provide a forum to build academic collaboration, including on current teaching methodologies in the area of IP law, with a view to strengthening collaborative networks and academic exchanges across Africa so as to build sustained policy and legal capacity in African developing countries; 
  • identify how WIPO and the WTO can improve their support for teaching and research capacity on international IP law in Africa, on IP teaching, academic exchanges, and a stronger network of African IP scholars and teachers; and
  • prepare for the publication of presented research papers in the "WIPO-WTO Colloquium Papers: 2018 Africa Edition".

The Colloquium will be linked with the Works-in-Progress Conference “IP Scholars Africa” hosted by the SARChI Chair, UNISA, in order to:

Provide a platform for IP teachers and researchers selected by WIPO, the WTO and UNISA to present their research work in progress to a larger audience of experts at the Conference.  WIPO and WTO officials will participate in plenary panels to offer information about work in the WIPO and WTO, including on areas of capacity building and technical assistance, to a larger audience of IP scholars in Africa and beyond.
  • Offer the opportunity for WIPO and WTO to identify IP teachers and scholars in the region and create a more comprehensive database of IP scholars and their institutions, including for their future contribution to the delivery of technical assistance in the region. 
For more information please contact Karen Zaayman at zaaymcj@unisa.ac.za or wipo-wto-ipsacolloq@wipo.int


Scholarships

Between 15 to 20 scholarships are available from WIPO and the WTO for IP teachers and researchers preparing a paper for publication in the 2018 Colloquium Papers Edition.

Scholarships cover: return ticket; fees related to the Colloquium; full board and lodging.

Successful applicants for WIPO and WTO scholarships will be notified by the WIPO Academy and the WTO Intellectual Property, Government Procurement and Competition Division. Thereafter, they will be provided with relevant information, including travel arrangements.

Kindly inform your colleagues and friends who qualify to participate in the Colloquium and IP Scholars Africa to apply online. All applications are done online: WIPO Academy (link no longer available). Deadline for applications is: February 25, 2018.



Read More

Thursday, 5 October 2017

Afro-Hip

Japan ups its game for Africa IP infrastructure assistance

As long ago as 2009 this blog reported on Japanese funding of IP infrastructure on the continent. A few days ago Afro-Hip wallowed over to this post on the Intellectual Property Watch hailing the efforts of the Japanese, in conjunction with ARIPO, to train 1000 people in IP systems across Africa. They will be spending over $1.6 million per annum according to the article; $1600 per person. 

Fellow blogger Jeremy Phillips was critical in 2009 lamenting that flying IP officials all over the place and staying in luxurious hotels etc was perhaps not the most fruitful use of funding and that technology could be better used for the purpose. There is no doubt that IP systems have improved on the continent since 2009 and this blogger was hoping for some data on the progress of the Japanese initiative over the last decade or so. His call was answered not by the IPW post but by this report (link no longer available) from WIPO in 2016.

The initiative has received steady funding (recently topped up from $1.1million) over the years and there is evidence of various training and funded projects across Africa, digitisation of records, training in IPAS, scholarship and textbooks, and ministerial dialogue. The focus has now turned more to training it appears. The report, while short on the actual spend and financials, does indicate progress which is corroborated by various articles on this website and elsewhere about the increasing reliability of IP systems in Africa and the increase in IP jurisprudence. One suspects therefore, without knowing the finer details, that this program is working and should be commended for that.

It is interesting though that South Africa's place in the program is but for a few meetings here and there, largely ignored. This could be because they have long been regarded as being the pre-eminent IP system in Africa (still accounting for most of the registered IP on the continent) and hence there is more need elsewhere in Africa or it could be that it is WIPO and others are preferring direct access to Registries in Africa. Perhaps South Africa does not see itself as the custodian of Africa IP or lacks resources to assist in Africa where, in truth, there is lots to be done in its own country. 

Whatever the reason, collaborating with South Africa has benefits which include training courses already on offer for both patents and trade marks under SAIIPL as well as its infrastructure, relative ease of access for travellers on the continent and accommodation. In turn South Africa should make itself available for more collaboration otherwise it will lose out on the advantages of not being part of the continent's slow but steady maturity. There are already systems in Africa far more efficient than its own.




Read More

Wednesday, 4 October 2017

Afro-Buff

Two Patent Collaboration Initiatives - WIPO & IFPMA and the EPO & Africa IP Offices

WIPO and IFPMA have teamed up on a project that is due to revolutionise access to information on patent protection scope related to healthcare. Their announcement yesterday explains:

Pat-INFORMED will clearly link public patent information to registered medicines in a new online global gateway, helping health professionals to navigate the medicine-procurement process for the benefit of their citizens. 

“Pat-INFORMED will make it easier for procurement experts to assess the patent status of medicines, underlining how a well-designed and implemented patent system incentivizes innovation while making available and accessible key information about patented inventions,” said WIPO's Mr. Gurry. “I welcome the engagement of IFPMA and its membership in this initiative, which responds to real needs in the public health community.”

The online initiative is expected to be operational by mid-2018 and will provide patent information for small molecule products within oncology; hepatitis C, cardiovascular, HIV, diabetes, and respiratory therapy areas; and any products on the WHO Essential Medicines List that are not within these therapy areas.

Access to this type of information will be critical for Africa and hopefully will spur on our own innovation and patenting rate, which is dismally poor. Law firm Adams & Adams in conjunction with the EPO recently held a very well attended Patent Examination Summit. The invitation was extended to the heads of IP offices throughout Africa.


Inaugural Africa Patent Examination Summit attendees (source: Adams & Adams)


Adams & Adams Partners Danie Dohmen described the meeting as a platform for an “honest and open discussion between the Registrars, regional organisations and the EPO” in assessing the status of patent examination in Africa and prospects for future co-operation. 


Mr François-Régis Hannart, Principal Director for European and International Co-operation at the EPO, stated: “It is evident that the worldwide patent system is becoming more connected and integrated as a result of globalisation, and that Africa will play an important role in this system. This meeting offered a valuable platform for forging new partnerships in the region, both bilateral and multilateral, thereby strengthening the ties between Europe and Africa even further.”


Both of the initiatives are very encouraging. Nicky Garnett of Adams & Adams explained that their joint initiative with the EPO is an inaugural event which bodes well for future patent examination on the continent. It is also positive that law firms are becoming engaged in facilitating structural changes on the continent.
Read More

Tuesday, 19 September 2017

Afro-Gore

Egypt enables e-filing system for patents

Good news from WIPO is that Egypt has enabled the e-filing of patents via PCT.

Applicants can file in Arabic or English and competant examining authorities include Austria, USA, Egypt and the EPO. There is a sliding scale on the fees depending on whether one is part of a research institute, company of less that 10 employees or larger company and it is cheaper to file electonically. An agent is required if the applicant is not local and a power of attorney is required to complete the filing. More information can be obtained off the WIPO website here.



Click here for the action

WIPO also reports that patent examiners from 8 African countries have recently completed the WIPO Academy/ASRT search and examination course in Egypt.


Brought to you by your correspondent in Rwanda, Afro-Gore.


Read More