Wednesday, 26 September 2018

Darren Olivier

UK Guides on a no-deal Brexit - Africa Impact

The UK Government has published its guide to UK IP rights in "no deal" Brexit scenario i.e the UK leaving the EU on 29 March 2019 without concluding an agreement on its withdrawal. The handy guides are published as follows:

Trade Marks & Designs - here
Copyright - here
Patents - here
Geographical Indications - here
Exhaustion of Rights - here

As a general comment, the UK guides are re-assuring as they explain that very little will change in the near future following a no-deal Brexit. For designs (including unregistered community designs) and trade marks registered as EU rights, the guides explain that equivalent rights will be made available in the UK. Copyrights, which are largely unaffected by EU membership, are not expected to change except for the adoption of certain EU directives. Database protection in the UK will however, not have reciprocal protection in the EU. 

The UK has maintained its interest in the unitary patent system but it remains to be whether they will be allowed membership post Brexit but fundamentally the patent laws in the UK will remain unchanged. For GIs the UK will set up a separate register and this is likely to be of particular interest to African producers relying on GIs e.g the coffee bean industry. On exhaustion, in the short term, the UK will recognise the EU exhaustion principles but this is not likely to be reciprocal meaning that there may be restrictions on exporting goods from the UK to Europe (perhaps important for say SA wine producers using the UK as an entry point for Europe for new wine labels).

The UK and remaining countries in the EU are important trading partners for Africa. Despite that there Africa as a whole contributes very little to European intellectual property in the sense that Africa has the lowest percentage of formal IP filings into Europe. By contrast, European filings into Africa are second only to the US. Nonetheless, what happens to IP rights in Europe post Brexit is important to understand. Apart from the commodities sector and semi-manufactured goods, the wine, fashion, food, tech and sports industries are most likely affected.

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Saturday, 22 September 2018


ARIPO forges ahead with Regional Database

A new ARIPO Regional IP Database has been launched, and many bloggers and reporters have mentioned it (see here, for example). This blogger would like to add his two cents Shillings.

Developing a regional IP database is no small accomplishment, and ARIPO deserves hearty and numerous congratulations. The interface is convenient and easy to use. The coverage is broad, including patents, designs, and trademarks listed separately and segregated for each ARIPO member nation. It is therefore quite clear what sort of data are available (and what data are not available!) for searching, and this in itself helps us to see what types of IP are popular, and where they are popular.
Data available in ARIPO Database

This blogger began constructing national databases of Kenyan patents and trademarks several years ago, and can guess the incredible amount of work that must have been done to launch this ARIPO resource. It is now possible to study a far greater data set of IP in Africa.

Thank you ARIPO!!!
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Regional Novelty in ARIPO. Wait.... What??!

A previous post explored the possibility of a sui generis right for importation of a known technology into Kenya (or anywhere else, really) - a so-called "importation right" that would require only local novelty but would provide a very limited time period of exclusivity.

This blogger was very surprised to learn that ARIPO may have implemented (almost) exactly what was hypothesized. At a recent training session in Nairobi, sponsored by ARIPO and hosted by KIPI, an ARIPO official explained that Utility Model applications (of which there are, he admitted, very few) are subjected to a substantive examination, but that the novelty requirement is only based on a regional search of the prior art. If this is really the case, then anyone can obtain patent-like protection for up to 10 years for a technology that is well known outside of the region.  Insert appropriate surprised cat lion image here!
Excuse me? Did I hear correctly?
Source: Wikipedia (public domain)

Section 3ter of the Harare Protocol (implementing UMs in ARIPO, downloadable here) makes no mention of the scope of search for evaluation of novelty during examination. Similarly, in the Guidelines for Examination at ARIPO (see prior link), this blogger could not find any indication that novelty should be regional for UMs. It would be appreciated if any official from ARIPO, who might be reading this blog, could verify the situation (preferably on the record!). Or perhaps a reader has experience - e.g., has filed a UM application to a technology known elsewhere but not regionally?

One theoretical situation to consider. Imagine an inventor in the US or EU files an application on day X, and discloses the invention to the public in the US or EU on day X+1. Then a competitor, having seen the disclosure, files a UM application in ARIPO on day X+2. The inventor, following the normal PCT and national phase procedure to obtain ARIPO patent protection, would likely wait well over 3 years to receive any ARIPO patent. The competitor, however, would likely have obtained UM protection by then. How would this situation be reconciled?

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Thursday, 6 September 2018


Save the Buildings!! Or, How to Avoid Demolition?

This blogger's office is about 500 m from a mall that was built about two years ago, existed for two years and had tenants, and then was demolished over the last month. The demolition was conducted by NEMA, the Kenyan environmental protection authority, because the building was built on riparian land (i.e., built on or near a river). Several buildings in Nairobi have been similarly demolished or are about to be demolished.
Southend Mall, no more.
Photo Credit: Margaret Maina

Recalling a popular campaign from the 80s to "Save the Whales", this blogger got to thinking about creative ways of saving such buildings. (Please note, however, that this blogger is not arguing that illegal buildings SHOULD be saved, but only wondering how to do it creatively.) Finally, inspiration hit during an IP Law lecture to 3rd year LLB students!

The Copyright Act in Kenya provides for moral rights, including the right to prevent a work from distortion, mutilation, or other modification if prejudicial to the author's honour or reputation. So, perhaps a building owner wishing to avoid demolition should commission an artist to create a mural on a wall of the building. Demolition of the building and, consequently, demolition of the mural, would certainly be mutilation of the work. (Although, would it be prejudicial to the author's reputation or honour?  Hmmm.....) Then the building owner can request the author to sue NEMA for an injunction to prevent demolition!

Of course, NEMA could just cut the wall out of the building and deliver it to the author, so it would need to be a very carefully selected work of art. For example, a mural of a river running under a building - the author could claim that the location of the work provides critical context for the understanding of the work, thereby preventing destruction of the entire building.

This blogger loves the rule of law, and does not wish to justify illegal buildings, but would love to test the limits of copyright law and hopes that someone out there will try this approach......
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Wednesday, 29 August 2018


Another questionable Ad Campaign from KFC

Regular readers will recall this bloggers post, here, about KFC's ad campaign that was certainly tasteless and flirted with consumer protection laws. Well, the marketing team at KFC is at it again, this time flirting with trademark law.

On a street in Nairobi can be seen an ad encouraging customers to "Come in your shorts and crocs", with a signboard a few dozen meters down the road that reads "We won't judge."

The word mark "Crocs" was submitted by Crocs, Inc., a Delaware Corporation, for trademark protection at the Kenyan Industrial Property Institute (search for "crocs" at this link for more info about the advertised marks) in 2011.
Photo credits: Abdulmalik Sugow
Photo credits: Abdulmalik Sugow

So, KFC is using the registered trademark of another company in a commercial activity - i.e., their advertising campaign. This is not per se infringement, but it raises some issues.

1. Is KFC stating, implicitly or explicitly, that Crocs, Inc. has endorsed their product?  This blogger thinks the answer is probably "no" based on the context of the use. Nothing from the ads would seem to indicate that there is an endorsement.

2. Is KFC diluting or tarnishing the Crocs trademark? This question is a bit harder to answer. The implication by the ads is that you can go to a KFC in any state of dress, even wearing a super casual outfit or one that is not suitable for being seen in public (adults in Nairobi are almost never seen in public wearing shorts).  Is this disparaging on the Crocs trademark?  Certainly Crocs are known for comfort and are not generally considered formal attire, so perhaps it is in line with the brand that Crocs, Inc. seeks to portray. Nevertheless it seems that Crocs, Inc. should be the (only) one deciding the reputation they seek, independent of any advertising campaign of other companies.

3. Is KFC taking unfair advantage of the Crocs trademark? Perhaps here the answer is also "no" since there would seem to be no direct relationship between a croc and fried chicken (even if, as it has been reported, crocodile meat tastes like chicken). On the other hand, KFC is clearly trying to associate itself with the casual/relaxed reputation earned by the footwear at issue.

In conclusion, this blogger appreciates the activities of KFC only insofar as they allow speculation as to the limits of IP law.

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Tuesday, 28 August 2018

Afro Leo


This is a guest post from Prof Wim Alberts.

All trade mark lawyers are familiar with the first principles regarding the registration of colour marks – the most basic being, it is difficult.  Yes, we do have the pink stuff in the ceiling, the particular shade of green and yellow of agricultural implements which we hold dear, we also have the various conflicts regarding the colour purple for chocolate products, the colour purple for inhalers - Glaxo Wellcome v Sandoz [2017] EWHC 3196 here - the difficulty of how to represent the particular colour(s), the registrability of single colours and acquired distinctiveness etc (see the decision of the then European Court of Justice in Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, dated 6 May 2003 here).  So, about a single very plain colour - is it distinctive?  This was the first dilemma faced, over time, by the well-known designer Christian Louboutin in the process of enforcing the rights in his red sole trade mark.  A happy outcome in the United States was the decision here  in Christian Louboutin S.A. v Yves Saint Laurent America Inc., No. 11-3303 (2d Cir. 2012) 1 ‘…the Red Sole Mark has acquired limited secondary meaning as a distinctive symbol that identifies the Louboutin brand, and…it is therefore a valid and protectable mark…’ (page 25) here.

A second problem featured in the recent decision of the Court of Justice of the European Union in Christian Louboutin v Van Haren Schoenen BV (Case C‑163/16, dated 12 June 2018) here.  This ruling is discussed below.

At issue was the following legislative provision, being Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks here.

Article 3 of said directive, entitled ‘Grounds for refusal or invalidity’, provides:

‘1.      The following shall not be registered or, if registered, shall be liable to be declared invalid:

(e)       signs which consist exclusively of:
(i) the shape which results from the nature of the goods
(ii)       the shape of goods which is necessary to obtain a technical 
(iii)      the shape which gives substantial value to the goods;…’

The mark in question, a Benelux application filed by Mr Louboutin, in class 25, looked as follows:

In the application for registration, the mark at issue is described as follows:‘

‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’.

In terms of a later amendment, the mark was amended in such a way as to limit the goods covered to ‘High-heeled shoes (other than orthopaedic shoes)’.

An opponent attacked the mark on grounds in the Benelux Convention, similar to article 3(1)(e) above.  It was stated that the mark is a two-dimensional figurative mark that consists of a red coloured surface.  A specific question was referred to the court, interpreted by it as being whether article 3(1)(e)(iii) means that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, consists exclusively of a ‘shape’, within the meaning of that provision.  It was said by the court (paragraph 21) that the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned.  Further, it does not follow that a colour per se, without an outline, may constitute a ‘shape’.

The court made (paragraph 24) the following important observation:

‘In that regard, it must be noted that, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.’

It was added that in any event, a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code.  The court then concluded that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of article 3(1)(e)(iii).

It might not be putting it too strong to simply say that rational thought prevailed in this long-running dispute.  After all, a colour is fundamentally different from a shape, doctrinally and practically.  The shape issue was substantially a red herring.  

It is already established that the red sole mark is indeed distinctive, and the acceptance of the mark’s distinctiveness shows what acquired, in contrast to inherent distinctiveness, can encompass.  In view of the outcome of the case under discussion it is probably not controversial to state that the mark’s status is now, in most countries at least, beyond dispute.  Can restrictions be discerned though?  It was said, in the important ruling in Christian Louboutin S.A. v Yves Saint Laurent 29-30- that:

‘We conclude, based on the record before us, that Louboutin has not established secondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts with the “upper” of the shoe.’
The use of a red sole on a shoe that is wholly red, can thus not be prevented.

Are other restrictions possible?  It is well known that little girls are fond of wearing high-heeled shoes – albeit for short distances!  Now it seems that Mr Louboutin might himself be taking baby steps, as he plans to extend his red sole range to baby shoes.  It would be interesting to follow the possible search, if any, for trade mark protection for these ‘flat’ shoes, entitled the ‘Loubibaby collection’.  They might be similar goods in a sense, but the restriction of the specifications to high-heeled shoes is probably fatal.  What about the Pantone number?  Would the use of a darker red or maroon or slightly lighter red colour infringe?  Would the colour depletion doctrine feature here?  It would seem that other shades of red can still infringe having regard, for instance, to the wording of section 34(1)(a) of the Trade Marks Act 194 of 1993, which refers to ‘…an identical mark or…a mark so nearly resembling it as to be likely to deceive or cause confusion…’.  That would be the test for ‘off-colour’ marks.    

In conclusion, the tale of the journey for the achievement of trade mark protection for a mere red shoe sole (surprising to non-fashion experts) is perhaps best described by the famous statement of Ripley’s: ‘Believe it or not’!

Wim Alberts 

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