Tuesday 1 October 2013

Darren Olivier

RSA's Draft IP Policy - Trade Mark Notes

If the recent Microsoft/Nokia deal provided a backdrop to make a few notes on the copyright aspects of RSA's draft national IP Policy then yesterday's industry level analysis report by the EPO and OHIM on the contribution of IPR intensive industries to the European economy is as good as any to consider the draft IP Policy on trade marks.

This is because, in the European report, trade marks (as a single form of IPR) outperformed patents, designs, copyright and geographical indicators in its contribution to both jobs and output in the EU and is relevant to RSA.

The European report is also a strong reminder of the potential strength of IPRs to an economy. As gentle nudge to our DTI, according to the study, IPR intensive industries account for 26% of employment and 39% of GDP in the EU. Trade marks weigh in with a whopping 20.8% of employment and 34% of GDP contribution.

Moreover, the study is relevant to RSA's policy makers, especially for trade marks:

  • trade marks is a form of IP that has taken traction in RSA (over 30000 filed per year, a significant enough proportion of which are filed and enforced by locals).
  • the rise of the middle income economy in Africa means that consumer industries, that are trade mark dependent, are becoming more important. 
  • the European report indicates that trade marks pervade 277 of the 321 industries that were analysed (see page 56). 
  • there is a link between trade marks and innovation, empowerment and job creation. This is explained in this links in this post here and in the report - see page 21.

So what does the IP Policy contain?

The good:

  • It recognises that trade marks facilitate licensing and franchising and therefore investment. 
  • It recognises the potential for trade marks to create wealth in rural areas and to stimulate SMEs.
  • It recognises the need to facilitate registration of trade marks nationally and internationally ("where RSA has a footprint"? - see note below under "unclear") 
  • It encourages trade marks as a means of protecting "sporting events". This may be controversial given the abuses that occurred during the World Cup 2010 although the recommendations on page 42 seem to attempt to strike a balance between the level of investment in the tournament eg (>20000 spectators) and local empowerment. 
  • It states that the Trade Marks Act and Heraldry Act could work better together, suggesting an amendment insofar as state emblems are protected.
  • It suggests that the rules for trade mark enforcement (oppositions, cancellations etc) are too legalistic and highly technical. I agree that they can be simplified - see here and here, for example. See also Harms's notes here - page 12.
  • It suggests that capacity needs to be built at CIPC (this is urgent - see also comment below, under "bad").

The unclear:

  • It seems to say that we should consider joining Madrid and perhaps also ARIPO but the comments on page 17 are unclear or nonsensical. 
  • The link between traditional knowledge and trade marks seems to indicate that the trade mark system needs to cater for benefit sharing arrangements, consent, joint ownership and knowledge disclosure? It already does, in many respects and the principle (prior rights should be recognised) seems correct but does it mean more? Is this comment not supporting GI protection, rather? The wording is not typical trade mark speak and so it is confusing.
  • It is not clear whether "investment" in a sporting event will be a ground for overcoming a non use attack on a trade mark - see page 42 "renewal and investment or use".
The bad:
  • It indicates that the CIPC opposition body/Tribunal "is effective". This is quite simply wrong - see our analysis here - the backlog that has developed, due to lack of qualified resource and support for the Registrar, is so severe that it has forced CIPC to refer all oppositions to the High Court and would take until 2019 to clear at the current rate of decision making. The backlog is a major problem for trade marks in RSA.
  • The "Copyright Tribunal also functions as the Trade Mark Tribunal..."? (page 46). The word "Tribunal" does not feature throughout the entire Trade Marks Act and is not related to the Copyright Tribunal.

Afro Leo would have like to have seen more in the draft IP Policy on trade marks especially in making the system quicker, easier to use, easier to search and more available. He is aware that the current Registrar is working hard on these elements but she needs more support. The Policy also does not tackle to problem that a significant number of trade mark decisions in the High Court are overturned on appeal. Does this mean that judges need to be better trained in this area of law? Do we need a specialist court? However, the draft Policy recognises that a capacity building exercise is required at CIPC and this is very encouraging.

Darren Olivier

Darren Olivier

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