Thursday, 1 April 2021

Afro Leo

Afro-IP is looking for you!


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Mauritian Lead Public Private Educational Targets Counterfeits in South East Africa

INTA, together with the Mauritius Revenue Authority (MRA) and IPvocate Africa, organised a first virtual Customs training for 24 south-east African countries that took place from 9 to 11 December 2020 (for English-speaking countries and on 17 and 18 March 2021 (for French-speaking countries). Customs officials from all around East Africa participated in the online seminar hosted on the secure virtual conferencing platform of INTA. The training sessions will be followed by a customs action targeting counterfeit goods in the region in the second quarter of 2021.

The initiative was born out of a virtual Customs training program with MRA during the lockdown in April 2020. MRA was pleased with the result of the online training and initiated this regional event. Online customs trainings are definitely the way forward, although they cannot permanently replace the personal contacts with the customs officials. Going forward, right holders and right holder organisations should push for online trainings in other regions of the world as a supplement to actual physical training events where personal contacts can be fostered.

Marius Schneider and Surishta Chetamun, IPvocateAfrica 
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Tuesday, 30 March 2021

Afro Leo

Scholarly Horizons - a new resource for all things copyright and more

Denise Nicholson, the specialist librarian in copyright and scholarly communication, has launched Scholarly Horizons, a resource and advisory service for publishers, researchers and academics and more! According to the website launched this week, Scholarly Horizons offers various web sessions which are particularly useful for academics, authors, postgraduate students, and librarians, but can also be tailored for corporates, government departments, specific interest groups, freelancers, NGO’s, authors, and/or secondary school teachers and learners.

In addition to this educational content, it has published its maiden informative ebulletin and they provide an array of related services which are described here

This new service addresses a neglected need in the field of copyright and related rights. Knowing Denise from her work at Wits University, the service is likely to be of high quality and affordable. Afro-IP will be tracking her progress with interest and with luck she will send a guest post for our readers when she gets a gap.

You can read more about Denise on this blog, here.


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Afro Leo

Mauritius joins ARIPO

Marius Schneider Nora Ho Tu Nam, IPvocate Africa Legal Advisers have informed Afro-Dodo that the Republic of Mauritius is now the twentieth African Regional Intellectual Property Organization (ARIPO) member state. Mauritius deposited its instrument of accession to the Lusaka Agreement which establishes ARIPO on 25 September 2020. Mauritius has however not acceded to the relevant protocols related to patent, trade mark or design. It is not possible to designate Mauritius via an ARIPO application. 

"We have not heard anything locally on the future accession of Mauritius to the relevant protocols related to patent, trade mark or design. It is therefore difficult to predict whether accession to these protocols is on the cards in the near future for Mauritius."

For more on the development of IP in Mauritius on this blog click here.

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Thursday, 18 March 2021

Afro Leo

INTA Webcast Series: Enforcement of IP Rights in Africa

INTA, the global association of brand owners and professionals supporting trademarks and related IP to foster trust, economic growth, and innovation, have teamed up with Marius Schneider and Vanessa Ferguson to broadcast a webcast series dedicated to Africa. It is available live or on demand!

The six-session webcast series, Enforcement of IP Rights in Africa, will highlight developments in Africa. The presenters include government officials, practitioners, and brand-owner representatives from key jurisdictions.

The series starts with an overview session focusing on the current economic climate, factors contributing to counterfeiting, and the robust anti-counterfeiting activities taking place across Africa. The four subsequent episodes focus on these topics in different regions of the continent. In the final session, local and international organizations will report on the initiatives they are taking to fight counterfeiting in Africa.

The series will be presented live during the six weeks and will subsequently be available on demand. Members and non-members can purchase a single session or the entire series.

Marius Schneider and Vanessa Ferguson are no strangers to this blog having launched their book “Enforcement of Intellectual Property Rights in Africa” published by Oxford University Press in May 2020.

 You can register for the events here. Today’s session covers IP Enforcement in West Africa:

"Being the number one economy and the country with the largest population in Africa, Nigeria is the focal point of investors in the West African region. At the same time, Nigeria has increasingly become a target destination and a significant transit route for counterfeit and pirated products. This has a significant impact on the neighbouring countries, including member states of the regional IP organization, OAPI and Ghana—another regional giant.

The event kicks off at 8:00am EDT. See you there! 

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Wednesday, 17 March 2021

Afro Leo


Cape Horn is a rugged headland that lies at the southernmost point of Terra de Fuego, an archipelago at the very tip of South America. It is notoriously difficult to navigate, with unpredictable weather, high seas, strong winds and turbulent conditions. It is where the Atlantic and Pacific oceans meet and it took a Dutchman Jacob Le Maire to first circumnavigate this cape in 1616. Fast forward 400 odd years and we have a case report of a South African judge navigating the turbulent waters of a trade mark dispute between a licensor and its former licensee involving the brands PACIFIC and ATLANTIC for cigarettes. Can these trade marks mix in the marketplace, was the essential question.

Judge Hughes of the Gauteng Division of the High Court was called upon to decide whether Carnilinx (PTY) Ltd, a former licensee of Open Horizon Ltd’s PACIFIC trade marks (whose license had been terminated for selling counterfeit PACIFIC BLUE cigarettes!), was infringing those trade marks through the use of the mark ATLANTIC. Illustrations of the marks in use are helpfully inserted in the judgment.

The application was launched claiming infringement under Section 34(1)(a) of the South Africa Trade Marks Act 194 of 1994. This section is the identical/similar mark, identical goods infringement provision. It was trite that the goods, namely the sale of cigarettes, were identical and so what lay before the court was to decide whether the use of ATLANTIC infringed one of more of the PACIFIC trade marks owned by Open Horizon. Although there are a number of trade marks to consider, the essential question was whether ATLANTIC was a similar mark to PACIFIC.  Not surprisingly, Judge Hughes, in a well-reasoned judgment, decided that they were not, noting in the process that a number of trade marks co-exit in the marketplace and on the register with “ocean/sea/water” type themes.

The interesting aspect of this case is not so much the decision – few would argue that the marks are too similar (except of course if this was your former licensee who had built up trading goodwill using your brand only to switch it to something arguably similar after selling counterfeit products of your own brand) – but the lessons for licensors.

 In the decision, there is reference to a standard clause in a license agreement requiring the licensee not to impair any right, title and interest in the intellectual property:

 Title to the Intellectual Property

5 1 The Licensee agrees that all right, title and internet in and to the Intellectual Property vests in the Proprietor and that it shall have no claim in and to the Intellectual Property.

5.2 The Licensee may not during or after termination or cancellation of this agreement:

5.2.1 dispute the validity or enforceability of these rights or the Patents;

5.2.2 do anything that contests; or

5.2.2 in any way impairs, any part of that right and title and interest of any of the intellectual property rights which may be the subject of this Agreement and will not direct or assist any other person to do so.’

Now knowing the outcome, the question is how this clause could have been strengthened to avoid such a situation. The good about this clause is that it contemplates that it would survive the termination of the agreement but it would have been better (for the licensor) had it also prohibited the use of marks that contained, for example, “ocean-like connotations” and made it clearer that it did survive termination of the agreement. Hindsight is an exact science but it does illustrate that care should be taken when considering standard clauses and adapting them to one’s brand. Too often short thrift is given to these clauses by licensors.

The second lesson of this case lies in the attempt by Open Horizon to introduce a claim for unlawful competition at the very last moment. The argument is contained in para 41 of the decision:

‘Bearing in mind the history of this matter and the fact that the Respondent was previously licensed by the Applicant and its predecessor-in-title, STIP, there can be no doubt that the only plausible explanation is that the Respondent deliberately adopted its confusingly similar ATLANTIC marks and get-ups in order to imitate the Applicant's successful PACIFIC range of products, thereby obtaining a springboard advantage and taking unfair advantage of the Applicant's fruits and labours. The Respondent is also unlawfully interfering with the Applicant's exclusive rights in its PACIFIC trade marks and PACIFIC get-ups.’   

This argument was not determined by the judge because it was relied on only after pleadings had closed but, in my opinion, is a stronger argument than S34(1)(a) trade mark infringement, especially as the optics do favour the licensor. However, it would have likely required considerably stronger papers to have had any chance of being successful (it is not a slam dunk by an means) and hence would have been more costly to bring. It is telling that the judge simply dismissed it on grounds that it was out of time and did not express a finding on the merits of it at all. This can signal that there is something in the argument.

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Thursday, 10 September 2020

Afro Leo

In the world of COVID-19, has the value of the Intellectual Property become an afterthought? Guest Post

Mergers: cautionary tales

Mergers and Acquisitions (M&As) are happy hunting grounds for lawyers

and accountants.

With the increasing numbers of distressed companies due to Covid-19 and the economic recession, the opportunities are increasing by the day. Add to this the weakness of the Rand and overseas investors, awash with cash, must be watching with heightened interest. Perhaps the main hurdle to inward investment is the ANC and regulatory issues which can be challenging. But while, as Michael Katz argued (“trade Carefully”, FM, July2), legal and financial examinations are always necessary, the metrics have changed.

Twenty years ago, an investor would focus on NAV and the 80% of the value that is tangible. Today the roles are reversed: intangible assets, like patents and brands sometimes make up 80% of a company’s value.

This is likely to accelerate. We live in a digital world turbocharged by Covid-19, a world of brands and reputation. As Microsoft CEO Satya Nadella put it, he’s seen more transformation in three months than the previous three years.

But this raises another challenge: figuring out if the assets are real, valued realistically and not in dispute. Nowadays, all major brands have their own profit and loss accounting. From this you can see that another option rather than a full-blown M&A is to buy or sell brands, provided they are separable from their owner. As companies review their strategies, they’ll ask which brands remain relevant, which are past their sell-by date and are there brands out there you would love to own that may be available? 

Take the explosion in video conferencing options as we all work remotely. For many Skype was the main option but now we have quite a few more, including options from Microsoft and Google. A newcomer that has taken the market by storm is Zoom. Canny investors piled into Zoom Technologies in April, pushing its share price up threefold in five weeks. Only, it was the wrong Zoom:  over the same period in April, Zoom Communications had risen a modest 30% until the US securities & exchange commission suspended trading in Zoom Technologies. Since then the right Zoom has soared on the market.

Egg on its face

One of the most publicised oversights when it comes to due diligence of brands happened when Rolls-Royce sold its car division. The original company was founded in 1904 as an engineering group, though today it is best known for supplying aero engines to Boeing and Airbus. In the early 1970’s the group was close to liquidation and the UK government bailed it out. In 1973, the automotive division became a standalone company, Rolls-Royce Motorcars  Limited, with its assets Rolls-Royce and Bentley cars. In 1998 Volkswagen won a bidding war with BMW to buy the car company for $790m. But unbeknown to Volkswagen, it had bought the plant, designs, a unionized work force and a car - but not the trademark Rolls Royce, which remained with the parent company.  That left it with spätzle on its face. So Volkswagen could build a car to all intents and purposes a Rolls Royce but no call it a Rolls-Royce. It though it had bought a car but ended up with a dog. But it didn’t end there, as BMW then bought the rights to the Rolls Royce trademark for $66m. The result today is that we have a Bentley produced by Volkswagen and a Rolls-Royce produced by BMW. 

Welcome to the new world of brands where Volvo is owned by the Chinese, Land Rover by the Indians and Mini by the Germans. It illustrates how, in most deals, the value of the intellectual property remains an afterthought. The world’s most valuable brand is Amazon, with the brand itself making up over 24% of total business value. Look at the S&P 500, and you’ll see that more than 77% of the value of these companies, in total, is made up of intangible assets. International investors are cognisant of these facts. It means that, for this new world, due diligence has to be far more rigorous than it used to be.

Jeremy Sampson is the managing director of Brand Finance Africa

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Afro Leo

OUP event: Enforcement of Intellectual Property Rights in Africa

Just a brief note to inform you that there will be a free webinar to mark the launch of ‘Enforcement of Intellectual Property Rights in Africa’ today 10 September at 3 PM UK time. Marius, Vanessa and Sarah  would be very happy if you could join this event. You can register here Afro Leo will be attending.

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