Thursday, 28 April 2016

A pronouncement on image rights in Uganda – finally.

Following in the heels of Al Hajji Nasser Sebagala versus MTN, H.C.C.S No. 283 of 2012 (see here) and Agaitano versus Uganda Baati, H.C.C.S No. 298 of 2012 (see here), the High Court has come out in Asiege v. Opportunity Bank (U) Ltd & Maad Ltd H.C.C.S No. 756 of 2013, to set a precedent on image rights in Uganda, carefully steering away from the law of Copyright.

In the Sebagala case of 2012, the plaintiff sued MTN claiming that the defendant had used his voice in creating call/ring tunes without his authorization. Although it was apparent that it was his voice on the call tunes, as Justice Madrama rightly held, the Plaintiff did not own copyright to the creativity. This is because he was not the author of the call tunes. Nonetheless, the case left ordinary folks puzzled as to how different persons can gain from an individual’s personality and still get away with it. In the various classes that I teach copyright law, the issue that resonated with everyone was as to whether Sebagala would have had a better case if he had avoided relying on copyright law and sued for unfair enrichment derived from his image rights. There are no clear legislative provisions that can help one establish a claim in that category of rights. Some have been arguing that celebrities have a better right to their images than ordinary Toms, Dicks and Harrys. Others argue that even a non-celebrity should have the right to stop anyone from using his or her image for personal gain. Agaitano as opposed to Sebagala (a Ugandan celebrity in his own right), is such an ordinary person. He sued his employer, Uganda Baati Ltd, for using his image on their brochures and other promotional material. But, just like Sebagala, he too lost the case because he was not the author of the expression of the work. Agaitano had actually been informed by his employer that they would be taking pictures of staff members for promotional purposes. These two cases clearly spelt out that copyright law and image rights are not necessarily the same thing.

In comes Asege Winnie v. Opportunity Bank (U) Ltd & Another, H.C.C.S No. 756 of 2013. In this case, the matter of image rights in Uganda has been put to rest. Briefly, the plaintiff sued the defendant for using her image in     large promotional billboards, advertising flyers, brochures and calendars that the Bank used in different parts of the country. Her claim was for a breach of her constitutional right to privacy, passing off, misrepresentation and false endorsement, breach of confidence and unjust enrichment in the unauthorized use of her image.

She argued that she had never commissioned or licensed the defendant to use her image on their promotional materials and that the same was obtained without her authorization hence invading her constitutional right to privacy. The Bank denied the Plaintiff’s claim and stated that it obtained her images from the second defendant (a third party in the proceedings) whose professional services had been sought as an advertising company. Maad Limited, on its part, claimed that it lawfully obtained the plaintiff’s photo images from an internet based website known as Shutter Stock Inc as well as from the New Vision Printing and Publishing Company Ltd. The Plaintiff rebutted these arguments by pointing out that the New Vision and Shutter Stock Companies did not acquire any copyright in her image because when the picture was taken, it was for a single usage only and not transferable for recurrent usage.

Justice Henry Adonyo pointed out how the issue of image rights is a grey area in Uganda hence the reliance on common law principles of personality rights. He opined that publicity rights fall under the tort of “passing off” with the notion that every individual should have a right to control how, if at all, his or her “persona” is commercialized by third parties who intend to help propel their sales or visibility based on such product or services. In his wisdom, basing on the common law jurisprudence, Justice Adonyo established three basic elements that have to be present for one to succeed in an action for infringement of image rights:

a)     The Plaintiff must be identifiable.
b)    The defendant’s action was intentional.
c)     The defendant must have acted for the purpose of commercial gain.

In addressing these elements, Justice Adonyo navigated outside of copyright law in stating that the Plaintiff’s claim is not established under the Ugandan copyright Statute but under a common law remedy resulting from the unlawful use of her image.

Relying on evidence adduced during the court proceedings, all three elements were proved to the satisfaction of court. As for the third element, it was also evident that the plaintiff’s image was used by the Bank to promote their so called “Agro Save Account” hence commercial promotion.


Justice Adonyo concluded by asserting that “every individual has a right to his/her personality which extends to the name of the individual and image and has a right to control the use of either.” The Defendant and Third party were thus found to have infringed upon the Plaintiff’s image rights and damages, totaling 150,000,000 (One hundred and fifty million Uganda Shillings) were awarded in her favor. Corporations and individuals will now think twice before unauthorized usage of other people’s images.

Wednesday, 27 April 2016

Lessons from "Please Call Me" Concourt Judgment

Trending yesterday on Twitter in South Africa on World IP Day were two entrepreneurs, each with a great idea. One had just spent fifteen years trying to get compensation from a large telecoms company that had stolen it and had made billions of Rand, and the other was launching three new brands to sit aside alongside a record breaking success in 2015. Both were celebrating.

One’s success highlights what can happen when there is little or no IP or contractual protection in place for an idea, the other the advantage of having a strong sense of IP. Afro-IP blogged on Ali Gregg’s success on Sunday here. Now for Mr Makate and his fight against Vodacom.

The almost hundred page judgment from the constitutional court yesterday makes for exciting, and laborious reading. Exciting in the sense that it documents a brilliant idea coming from a modest yet determined man in the accounting department of a telecoms behemoth and his fifteen year battle for justice all the way to constitutional court, and laborious to anyone not interested in 80 pages dedicated to the difference between estoppel and ostensible authority, if indeed there is one.

In short, Mr Makate invented a concept whereby one could send a message on a cell phone to someone to “please call me” at little charge and which was especially useful in the lucrative prepaid mobile phone market especially when one ran out of airtime, which was often the case. He relayed that to his manager and then to his head of product development asking for 15% of profits compensation for the idea. The company agreed to let the CEO determine the compensation, if there was no agreement on that.

The company then celebrated his idea and made billions then refused to pay him claiming that the idea was theirs, that his claim had prescribed and that the head of product development had had no authority to bind the company.

The case was dismissed in the High Court in an equally exciting and laborious judgment (see earlier Afro-IP post here), leave to appeal to the Supreme Court of Appeal was rejected and Mr then sought justice in the Constitutional Court. Yesterday that court handed down a decision vindicating Mr Makate, castigating Vodacom and ordering that the company abide by its agreement to pay Mr Makate, and negotiate in good faith to determine the exact amount necessary to be paid.

Despite the very long judgement and the hype around this case the lessons to be learnt from it are fairly simple. If you have a great idea outside the course and scope of your employment:

a. document it
b. get an sense of whether it can be patented or how the five different forms of IP can be used to protect it (most lawyers will not charge you for this)
c. use a properly drafted NDA when you disclose it
d. speak to the right person (and even take your attorney along)
e. don’t be naïve – sense the opportunity to reveal your entire idea at the right time

This post here provides further tips for entrepreneurs seeking to protect and exploit their idea. A link to this blogger's discussion on this case on PowerFM on Victor Kgomoeswana's show with Maclean Sibande (CEO of the Innovation Hub) will be inserted as soon the podcast is on their site.

Sunday, 24 April 2016

Philanthropy's Purple Rain as Africa's Pallotta Launches 2016 SleepOut™ Event

Last year Ali Gregg founder of the SleepOut cause in South Africa invited this blogger to be a trustee of the CEO SleepOut Trust which is appointed by her company to monitor the SleepOut record-breaking philanthropic concept in South Africa. Part of this responsibility entails preserving the intellectual property associated with that cause, a task that requires one to carefully navigate the business of brand building in the philanthropic space.

On Tuesday the CEO SleepOut Trust reports at the media launch for the 2016 event. Well over 200 people have signed up to attend and that daunting fact alone is causing me to reflect a little deeper on the nuances associated with the role. Why was it that a trade mark lawyer was the very first person that Ali called when she returned from Australia to launch her brand in South Africa? True story. Oh and then, I am almost certain, followed up by a call to her priest.

The front page headline in the Wall Street Journal a few years ago stated boldy “Charity Brawl: Nonprofits Aren’t So Generous When a Name’s at Stake” referring to the stinging criticism received by a celebrated charity for enforcing their rights over part of their name. The palaver prompted a retort from Dan Pallotta, renown philanthropist who is evangelical about the need to change the mindset about how we see charity and for charities to change their perception of themselves (see his post in Harvard Business Review entitled “Is it Wrong To Sue a Charity? and his fabulous Ted Talk here). His post was followed by an insightful article published in Boston College Law Review by Lauren Behr entitled Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules.

In short, the WSJ and its commentary illustrate the difficulties of protecting a brand name built up through sheer hard word in the philanthropic space, both from a legal and PR point of view. Without the brand, the philanthropic’s ability to communicate, mobilise and ultimately do good, can be severely compromised. Yet protecting it could ultimately threaten the integrity of the philanthropic altogether.

“To say that public reaction was vitriolic would be an understatement. To give you a flavour one anonymous critic wrote to me that I was evil, adding, “No wonder your partner killed himself.” (My partner had committed suicide a year and half earlier.)” Dan Pallotta (left) in his post in HBR, referring to reaction when his business decided to take legal action against another charity.

...enough to turn anyone to prayer.

It’s not just an issue in the States, last last year the UK IP court adjudicated on who had rights in the name OPEN COLLEGE NETWORK and OCN between two educational charities. Prof Jeremy Phillips emotively describes the spat as “..the most perfect example of a disgraceful waste of utter stupidity in branding and squandering of charitable funds for no constructive purpose this Kat has yet to see it.   While this Kat is a keen supporter of charities in general and educational charities in particular, he would be most reluctant to see so much as a penny's worth of his hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification.”

www,wrestlingforum.com
The lethargic but acrimonious fight between the WWF (wrestlers and the wildlife fund) over the last decade (and more) has been well documented and in Romania recently an international charity offering guidance and assistance in the areas of religion and relationships had to step in and protect its ALPHA trade mark against ALPHA CLINICS. In Israel, a recent decision not to recognise the goodwill in a charity because it was not “in business” illustrates some of thinking that Dan Pallota is guarding against and closer to home the position is no different.

Not long ago, it was not possible to register a trade mark in South Africa for a charity because trade marks had to be capable of being used in trade, and a charity was not considered a trade. This has changed but there still exists a responsibility for the charity to police and protect the trade mark. The National Lottery Board’s failures to manage the use of their trade mark by others lead to a Supreme Court of Appeal decision in 2009, invalidating their LOTTO trade mark for becoming generic (see Afro-IP here). The repercussion of this decision may well be that someone gaming with a different lotto on the assumption that some of their funds are going to a charity.

This is why Behr in her article advocates for greater protection for trade marks in the non-profit sector “because the work of these organisations affects the greater public as well as both potential donors and recipients”. I would agree with that.

Back to the CEO SleepOut event, the rights in the trade marks SLEEPOUT and its associated marks eg CEO SLEEPOUT, RISE TO THE CHALLENGE, #SOUTHAFRICAMUSTRISE, STUDENT SLEEPOUT, SCHOLAR SLEEPOUT and others are protected through the CIPC, the Advertising Standards Authority, through an application to the DTI for the event to be determined a protected event and at common law. The sponsor’s rights are protected through their own trade marks and the Sponsorship Code against ambush marketing. These rights are in the hands of a tremendous IP Commercialisation team at Adams & Adams including Lita Miti-Qamata,John NdlovuIan Learmonth  Maureen Makoko, and Nicholas Rosslee,

So, not everything’s on a wing or a prayer. 

Here’s wishing Ali - Africa's Pallotta - a fantastic launch on Tuesday. It’s truly time for the SLEEPOUT brand get charity brands out of their purple rain.

Oh and here's also a formal challenge to all IP firms in South Africa to participate....

Thursday, 21 April 2016

Aggregator site needs to get permission to use trade marks says judge in RSA

illustrative use!
Car Find (Pty) Ltd ("Car Find") successfully approached the high court in Johannesburg on an urgent basis to restrain Car Trader (Pty) Ltd ("Car Trader") from using the trade mark CAR FIND on their website to denote a link to Car Find’s website. The two aspects of interest are the case for urgency and the finding of the court on trade mark use.

Car Trader has an aggregator site listing a range of different sites linked to the sale of motor cars and related services. They describe their services as “software products designed to assist car dealerships maximise efficiencies and profits through the leverage of market data and systems”. The court describes their services as follows:
“In summary, the website provides for direct access by dealers to multiple portals simultaneously, without having to access each such portal separately”.

non-enhancing use!
Car Find has two trade marks; CARFIND in class 38 covering telecommunication services including portals and CARFIND.CO.ZA in class 35 covering advertising services in particular. So the services are identical, satisfying this element of the S34(1)(a) infringement test.
 
Infringement  
The applicant relied only on S34(1)(a) of the Trade Marks Act which is relatively straightforward. You can review the provision here
 
Identical trade marks - no likelihood of confusion required
 
The judge held that the mere use of an identical trade mark of necessity causes confusion and hence it is not necessary to show a likelihood of confusion. Afro Leo has no problem with the statement as it stands. However, it needs to be appreciated that not all forms of use of another's identical trade mark is an infringement or actually causes confusion. For example, it is not necessarily an infringement to say "I am selling Coca-Cola, Sprite and Pepsi" if you are a corner café or for a blog to have a useful list of other blogs, denoted by name or if you run a comparison site. Indeed all cases are quite common. The reason why one is not likely to infringe in these circumstances is because the trade mark is not used in the sense contemplated by the infringement sections of the legislation (so called trade mark use requirement) and/or because it is a pure descriptive use to denote the goods or services of the other (S34(2)(b) defence).
 
Was the use identical?
 
It is not altogether clear from the decision whether the identical mark was being used because the registered trade marks take two different forms; one being the word mark CARFIND and the other CARFIND.CO.ZA. However, one cannot infringe both marks by using a single mark that is deemed to be identical because logically that is not possible. As a result, it seems that there is an error in reasoning on the infringement of one of the marks, most likely the CARFIND.CO.ZA mark. We know that because of the wide ambit of identical trade mark use infringement, the test for "identity" is interpreted strictly (LTJ Diffusion) and one would have expected the same to apply in this case.
 
Is this trade mark use?
 
On the question of “use” the court relied on the dictionary definition of "use" perhaps not realising that "use" is defined in the Act as "use in relation to the performance of services". Regardless though, there is a need to also establish whether that use affects one of the functions of the trade mark (Interflora) ie trade mark use. These functions include the origin function, the investment, quality or advertising function of that trade mark. In cases where there is bona fide descriptive use, there is not likely to be so-called "trade mark use" and vice versa. Harms touches on this relationship, and the need to show trade mark use in (Century City at para 18 and in Verimark at para 7). However, there is very little argument or reasoning on which functions of the trade mark were affected in the Car Find judgement.
The closest is the reasoning that "the direct access to portals [provided through the use of the trade mark in the link], including that of the applicant, in fact enhances the website and therefore the services offered by the respondents. It moreover, implies that some link in the course of the trade exists between the respondents and the applicant. The respondents deny any connection with the applicant or that the website implies as much. No factual foundation for the latter denial exists and I am satisfied that the objective dealer, upon accessing the website, may well infer a link between the respondents and the applicant."
Afro Leo's difficulty with this conclusion is that:

  •  the use of a link to enhance the site eg make it richer or more accessible and user friendly does not necessarily imply trade mark use affecting one of the functions of the trade mark. Consider a blog portal listing other blog portals by name or the comparator website, for example.  The link enhances the sites but does this imply a link between the portals. Could the link simply not imply that the blogger or comparator has gone to the trouble of linking to another blog or site? Could it not be that the CAR FIND link enhances the site simply because it makes it easier to recognise the services provided through that link?
  • the relevance of "enhancement" is perhaps more appropriate to whether there is an advantage to using the trade mark and whether this advantage is unfair. However, this is a factor under the dilution provisions and not S34(1)(a) infringement.
  • what is there to imply some sort of link between the websites? If the trade mark simply points to the site of that other party, why would it necessarily create a link between the aggregator and the services on that site, especially if competitor sites are also referenced. Is there not an also an argument that the dealer is a businessman, acutely aware of his market, and that he would not imply an economic link between the two without something more? It is, of course, not to say that an economic link could not be present but given the nature of the decision (a final interdict in a reported case likely to set a precedent for these increasing disruption businesses ie aggregator sites that are ultimately pro consumer), Afro Leo would have expected to see some guidance as to why the judge comes to that conclusion.
Urgency 
The court heard the matter despite the fact that Car Find had known of the alleged infringing use for three months before launching the application. The judge reasoned that:

“…the infringement of a trade mark is at stake, which by its nature implies some urgency, as ‘The life of a trade mark depends on the promptitude with which it is vindicated…’ (Kerr on Injunctions 363, quoted in Tullen Industries Ltd v A de Souza Costa (Pty) Ltd 1976 (4) SA 220 (W) 220B).”

The judge went on to say that as:
-          no prejudice was alleged,
-          the matter was relatively straightforward (factually)
-          it was succinctly set out in the papers with arguments fully ventilated
-          certainty was important on an issue relevant and important in the industry
the court was prepared to hear the matter on an urgent basis. 

This is great news for trade mark owners enforcing their rights. Typically courts are loathe to hear matters as urgent if there is a delay by the applicant, even of a few days. It seems that the case was presented in a simple way and the judge felt it necessary and expedient to deal with it immediately. Again, this approach is to be celebrated. However one does wonder if it may have been perhaps a little bold given some of the complexities in a case like this and the fact that it is a first of its type case in RSA.

It is understood that the case is going on appeal. The decision can be found here.

Original post updated with format changes and to include link to case.
 
 

Wednesday, 20 April 2016

IP Policies in Africa -No 36: Namibia - update

Since blogging about Namibia's IP policy developments in 2014 (here) as part of the A-Z series, there have been some recent developments in that country. A team of consultants has been working with Namibian  stakeholders to craft an IP policy under the auspices of WIPO's technical assistance program. An IP Policy Workshop: Elaboration of a National IP Strategy and policy for the Government of Namibia was held in September 2015 (see WIPO technical assistance database entry here).

The formulation of the IP Strategy has been completed and a Multi-Stakeholders Workshop for the Validation of the National IP Strategy for Namibia was held on 13 April 2016 in Windhoek (see program here).  The strategy itself is not publicly available but the Intellectual Property Audit Report of Namibia which serves as the basis for the strategy is available here. The audit report sets out the purpose of its recommended IP policy as follows (at pp14 -15)

to enable [Namibia] to use IP in order to meet [her] development goals and objectives, ensure policy
 coherence and provide guidance on:
a) the integration of IP into national and sectoral development policies,
b) the generation and exploitation of IP assets, and the provision of support and promotion
of local creative, inventive and innovative activities as well as the transfer of technology;
c) prevention of the loss of valuable assets and absence of benefit sharing such as those
relating to the misappropriation of traditional or indigenous knowledge and biological
resources;
d) the revision of existing and drafting of new IP laws in compliance with the requirements
of international and regional IP agreements to which the country is a party while exploiting 
flexibilities in meeting national needs and protecting public interest; 
e) maximising benefits from membership to regional and International IP agreements and
trading arrangements; and
f) negotiations at bilateral, regional and international levels involving intellectual property
issues or matters that may affect the generation, protection and commercialisation of IP
assets as well as transfer of technology.

These appear to be laudable goals, particularly the mention of national needs and the public interest in paragraph (d). It will only be possible to evaluate whether the resultant policy (validated on 14 April 2016) meets these goals once it becomes publicly available.


-------------------------
For a news items on the validation workshop see Lela National Intellectual Property Strategy under review
For a news item on the first workshop (September 2015) see Windhoek Observer Windhoek hosts intellectual property workshop

Wednesday, 13 April 2016

New TK Bill - South Africa

The Minister of Science and Technology intends introducing the Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2015 into Parliament during the 2016 calendar year. The TK Bill aims to provide for:

  • the protection, promotion, development and management of Indigenous Knowledge Systems
  • the establishment and functions of the National Indigenous Knowledge Systems Office
  • the managements of rights of IK holders
  • the establishment and functions of an Advisory Panel
  • for access and conditions of access to knowledge of indigenous communities
  • for the registration, accreditation and certification of IK practitioners
  • the facilitation of IK based innovation
The Bill (see page 40 onwards) was open to public comment last year (see this post here). 

Readers will be aware that the Intellectual Property Laws Amendment Act (IPA) was signed in December 2013 and we are still waiting for regulations before it will come into force. This Act alters the existing IP legislation to protect IK. How this Act will sit alongside the Bill is not entirely clear. Indeed, readers may recall the significant controversy over the Act with many suggesting that a stand alone piece of legislation would be preferable. The question which Afro Leo has is will we ever have the regulations to the IPA (its been over two years) and are the critics satisfied with this Bill?

Afro-IP will be following the progression of this legislation with interest. One thing for sure is that if you are using any traditional knowledge in your business, including traditional or cultural expressions, you need to stay up to date because the legislation will affect your business.

Tuesday, 12 April 2016

Reminder: Unisa's The Patent Declaration Research Seminar

Readers may recall that Prof Tana Pistorius is organising a workshop to be held in Pretoria on 14-15 April on The Patent Declaration - "The Patent Declaration was drafted by numerous academics worldwide under the leadership of Max Planck ... [which] mainly relates to TRIPS flexibilities... As part of this project workshops have been held in various countries to address the different themes. Panels are comprised of representatives from academia, government, the bench, practitioners and industry" 

There are still a few seats available for a red hot line-up including

  • Professors Hilty and Lamping from the Max Planck Institute, 
  • Profs  Coenraad Visser, Klaus Beiter, Esme Du Plessis, Andries van der Merwe, Eddie Hurter, Steve Cornelius and Frantzeska Papadopoulou from around the country (and globe), 
  • Attorneys Jaco Theunissen, Alexis Apostolidis, At Van Rooy, Danie Dohmen, and Ralph Van Neikerk,
  • Industry representatives Morne Barradas, Andre Kudlinksi, Catherine Tomlinson, Madelein Kleyn, Tumelo Tshaya and Thokozani Simelane,
  • Government representatives Macdonald Netshitenzhe, Jetane Waters and Amanda Lotheringham,
  • Judges Louis Harms and Mabel Jansen  
The person to contact is Nomagugu Hlongwane at this address here.

Wednesday, 6 April 2016

MIP and A&A team up for Africa Roadshow in New York


Afro-IP has just been notified of an Africa Roadshow co-sponsored by Adams & Adams and Managing Intellectual Property happening in New York today. You can read more about it here including how you can participate online.

Just a reminder if people want to inform this blog of African IP events, please send an email here with information, which we will edit and publish as appropriate.


Monday, 4 April 2016

Upcoming events: a book launch and UJ seminar

Afro Leo is delighted to announce that blogger Prof Caroline Ncube is launching her new book on IP, and it involves Africa. The venue is UCT Faculty of Law, Kramer Building, Faculty Common Room 4th Floor on 14 April at 5pm-6pm and the invitation is open to YOU! RSVP to Abigail.Calata@uct.ac.za.



Don't forget the UJ seminar tomorrow Perspectives on Intellectual Property. Over 100 have already signed up but there are still a few places apparently.

Date: 5 April 2016
Time: 08:00 – 15:30
Venue: University of Johannesburg, Council Chambers, Madibeng Building, Auckland Park Campus
To register, please contact Mrs Morgan Buntting
Download full event


South Africa's appeal court adjudicates a whisky war

The Supreme Court of Appeal in South Africa recently handed down the appeal judgement in the Distell case, a decision of the Kwazulu Natal High Court. Appeal Judge Lewis wrote the judgement and four other SCA judges concurred.

Briefly, Distell Limited produces and sells cheap whisky under the brand KNIGHTS (website here). The most relevant trade mark that they own is trade mark registration number 91/3863 KNIGHTS (it is unfortunately not clear from the judgement but this is actually a device mark where KNIGHTS appears on a plain black label together with the crest and five circle device) registered from 30 October 1990 covering alcoholic beverages. It was also common cause that Distell had a reputation in the mark.

KZN Wine & Spirits CC import BLACK KNIGHT whisky and sell it in the midlands of Kwa-Zulu Natal. It is also relatively cheap.

Distell make a claim for trade mark infringement S34(1)(a) and passing off and lose in the high court, and are refused leave to appeal. The SCA then grants them leave to appeal.

The labels as they appear in the marketplace, according to the judgment, are as follows:

                           
Citing relevant local (including Plascon Evans and Cowbell) and international case law (Sabel v Puma) the court analysed the various tests to be applied for trade mark infringement. Distell argued that the lower court had erred by placing emphasis on a consumer that was discerning and, as a result, that there was no likelihood of confusion. Both whiskys are relatively cheap and not necessarily purchased by connoisseurs.

The SCA dismissed the appeal deciding that:

"In my view, one cannot ignore the use of the word black to describe KZN Wines’ whisky. Knight is used as a noun, and the adjective describing the knight is black. Whether the colour black is used to describe a mythical figure (as in the Black Knight of King Arthur’s round table) or to express some quality which many whisky brands use (the example given being Black Label, describing a whisky in the Johnny Walker range, but others abound)  does not matter. It simply cannot be ignored. Although Distell tried to argue that knight is the dominant word even in Knight’s Gold, it is hard to see why. Just as black cannot be ignored, nor can gold. As the high court said, the word black was as significant as knight in KZN Wines’ mark."

The Judge makes the bold move that the marks are not even similar:

"The sound, sense and appearance of the respective marks are different. Even the consumer with an imperfect recollection, and in a noisy pub or crowded bottle store, is not likely to be confused as to the origin of BLACK KNIGHT whisky."

Comment:

If the court cites Sabel v Puma it means that it ascribes to that test for comparison on marks. The court then has simply not applied the infringement test correctly. The test for "similarity of marks" under the Sabel v Puma test (as applied) has very little to do with a man in a noisy pub; it simply involves a consideration as to whether there is any level of similarity (as opposed to "likelihood of confusion" - which comes later in the test) between the marks. The question is whether there is any similarity between the marks (as registered by Distell and used by KZN Wines) visually, conceptually and/or orally.

If there is any level of similarity (both marks contain the word KNIGHT, for example), the judge should then because the goods concerned were identical, consider the reputation in the mark KNIGHTS (label) as marks with a reputation have a greater degree of protection. He then should have considered the likelihood of confusion taking into account all relevant factors, including that he had decided that the mark "black" was common and descriptive, the man in the noisy pub, the relevant consumer, the degree of similarity in the marks etc. Had he approached the test in this way, it is difficult to believe that he would have reached the same conclusion.

Having decided that there is no infringement, passing off was hardly entertained. The logic of this seems reasonable in the circumstances but the test for infringement, as explained above, does not appear to have been correctly applied.

edited to reference the mark KNIGHTS as registered.



Wednesday, 23 March 2016

South Africa hosts UN High Level Panel on Access to Medicines

Judge Cameron 
On the 16th - 17th March 2016, the UN's High Level Panel on Access to Medicines (HLP) convened hearings, a thought-leaders' forum and a dialogue in Sandton, Johannesburg (see the program here). This follows similar engagements in London on the 9th - 10th March. The Johannesburg hearings were held on the 16th. They were private and entailed an audience with the Panel for some of those who had submitted written comments to the panel. On the evening of the 16th, the thought leaders' forum was chaired by the Director-General of South Africa's Department of Health and HLP member, Precious Matsoso. Judge Edwin Cameron and Dr Sikhumbuzo Ngozwana addressed the gathering. Their talks were followed by lively discussions prompted by questions from the floor.


participants at the Joburg Dialogue
On the 17th, a five-hour global dialogue was conducted with remote participation from Bangkok. The entire proceedings were recorded and may be viewed from the HLP's website.  IP-Watch has posted a comprehensive account of the day's deliberations here and many participants were live-tweeting using the hashtags #JoburgDialogue and #UNSGAccessMeds, so I will only comment on two highlights of the day. The first was the consistent and constructive engagement by patients in the dialogue. This gave a much-needed human face to discussions and impressed the plight of patients on the HLP members. The second highlight was the TAC's picket which was staged outside the dialogue venue. Panel members went outside during the tea-break to receive a petition (the Johannesburg Declaration) from the picketers.

The HLP will now deliberate on written submissions and the oral interventions made at its hearings and dialogues held in London and Johannesburg. According to its timeline, the HLP will present its final report to the UN Secretary-General in June 2016. Whatever position this report takes and however the UN chooses to take its recommendations forward, the global dialogues presented a very welcome opportunity for most stakeholders to express their views and propose solutions to enhance access to medicines. 

Tuesday, 8 March 2016

Upcoming INTA Meetings in Africa

International Trademark Association: PowerfulNetworkPowerfulBrands
Pre-Annual Meeting Reception
INTA cordially invites you to attend its Pre–Annual Meeting Reception and Roundtable in Pretoria.
This Pre-Annual Meeting Reception is planned exclusively for you and your colleagues to learn more about INTA’s 2016 Annual Meeting in Orlando, FL. Feel free to bring a friend, co-worker or prospective member to find out about INTA’s Annual Meeting in Florida and to discover all the benefits INTA offers. We hope to see you there!

Why you should attend:
Exchange valuable learning experiences and success stories from past Annual Meetings.
Network and meet new professionals with a common interest in trademark law.
Mingle with friends and peers.
Date:
March 17, 2016
Time:
4:30 pm–6:00 pm, followed by a reception
Location:
Spoor & Fisher
Building No. 13
Highgrove Office Park, Oak Avenue
Centurion, Pretoria
South Africa
Hosted by: Spoor Fisher

Roundtable:Intellectual Property

Guest Speaker:
Justice Louis Harms, Retired Deputy President of the Supreme Court of Appeal. View his full CV here.

Admission: Everyone is welcome. Bring a friend, co-worker or prospective member to learn about this meeting and all the benefits INTA offers. We hope to see you there

To confirm your attendance, please RSVP by Thursday, March 10. If you are not currently an INTA member, you will need to create a username and password to register for this event. If you have any questions, please contact Gwynneth Goodspeed.
INTA’s 2016 Annual Meeting in Orlando, Florida, USA, takes place May 21–25. The Annual Meeting is the trademark community’s premier event for networking, continuing legal education and committee and client meetings. Last year’s Annual Meeting was attended by 10,000+ IP professionals from 140 countries. Learn more at www.inta.org/2016AM.

Save the date for two great events in South Africa later this year!

INTA–BASCAP Workshop: Intermediaries and Rights Holders—Working Together to Stop Counterfeiting and Piracy
August 31, 2016, Cape Town, South Africa

Building Africa with Brands Conference
September 1–2, Cape Town, South Africa


And...

Afro-IP blogmeister Darren Olivier will also be speaking at next week's Brands and Sports Conference in New York City 15-16 March 2016

Monday, 29 February 2016

Exceptional Authorship: The Role of Copyright Exceptions in Promoting Creativity - A seminar by Jane Ginsburg

[reposted from UCT's IP Unit website]
On the 24th of February 2016, the IP Unit hosted a CopyrightX:UCT special event and staff seminar at which Professor Jane Ginsburg of Columbia Law School presented a paper entitled ‘Exceptional Authorship: The Role of Copyright Exceptions in Promoting Creativity’ [available for download at SSRN]. The seminar was well attended and a lively debate followed Prof Ginsburg’s presentation. On the previous day Prof Ginsburg gave a guest lecture to LLB and LLM IP students during which she spoke about the reversion of copyright, which is  one of the proposals included in the Copyright Amendment Bill, 2015.
 

Thursday, 25 February 2016

Slanted Trade Marks and Permitted Disparagement - Prof Alberts' Guest Post

Prof Alberts
Afro-IP is delighted to receive a guest post from Prof Wim Alberts on a recent decision out of the United States on the registration of potentially disparaging words as trade marks. If you like this post, don't forget that you can hear more from the Prof at his seminar in April.

Date: 5 April 2016
Time: 08:00 – 15:30
Venue: University of Johannesburg, Council Chambers, Madibeng Building, Auckland Park Campus
Attendance fee: R500
To register, please contact Mrs Morgan Buntting before 30 March 2016 – 
Download full event

Slanted Trade Marks and Permitted Disparagement

The Slants

Ex Americana semper aliquid novi.  This may be an apt description for the ruling of the United States Court of Appeal for the Federal Circuit in In re Tam, case 2014-1203, decided on 22 December 2015.  This 114 page decision makes for interesting reading for a South African in particular.  The casus belli simply was a trade mark application for THE SLANTS, filed in relation to entertainment in the nature of live performances by a musical band.  Section 2(a) of the Lanham Act prohibits, amongst others, the registration of disparaging marks.  Examples of marks that have been refused on this ground include:

STOP THE ISLAMISATION OF AMERICA

THE CHRISTIAN PROSTITUTE

DEMOCRATS SHOULDN’T BREED

FAGDOG

N.I.G.G.A. NATURALLY INTELLIGENT GOD GIFTED AFRICANS

Analogous “positive” marks that have been granted include:

THINK ISLAM

NEW MUSLIM COOL

MORMON SAVINGS

JEWISHSTAR

PROUD 2 B CATHOLIC

In the Tam matter, the Trademark and Trial Appeal Board refused the application for THE SLANTS as it was considered to refer negatively to Asian-Americans.  On appeal, the court stated the following on page 13:

“Although the term “slants” has several meanings, the panel found that substantial evidence supported the Board’s finding that the mark likely refers to people of Asian descent. This included an article in which Mr. Tam described the genesis of the band’s name by explaining: “I was trying to think of things that people associate with Asians. Obviously, one of the first things people say is that we have slanted eyes. . . Moreover, the band’s Wikipedia page stated that the band’s name is “derived from an ethnic slur for Asians.” The Wikipedia entry quoted Mr. Tam: “We want to take on these stereotypes that people have about us, like the slanted eyes, and own them. We’re very proud of being Asian—we’re not going to hide that fact. The reaction from the Asian community has been positive.”

Also noteworthy was Mr Tam’s statement that he named his band to “reclaim” and “take ownership” of Asian stereotypes.  Two important statements by the court were that strict scrutiny is used to review any governmental regulation that burdens private speech based on disapproval of the message conveyed. It was then held that section 2(a), which denies important legal rights to private speech on that basis, is such a regulation.  Accordingly, it is subject to strict scrutiny. It was said that it is undisputed that it cannot survive strict scrutiny (page 17).   Of particular importance though is the finding that the disparagement provision, which was held to discriminate based on disapproval of the message of a mark, is not content or viewpoint neutral.  Earlier (page 4) it was stated that it is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys. That principle, so it was said, governs even when the government’s message-discriminatory penalty is less than a prohibition.

The court mentioned that another rejected mark, STOP THE ISLAMISATION OF AMERICA, proclaims that Islamisation is undesirable and should be stopped.  The court also expressed the view that many of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities.  “  However, the First Amendment protects even hurtful speech” (page 4).  The important conclusion was reached that the part of section 2(a) that prohibits registration of “disparaging” marks was unconstitutional (page 4).


The question that immediately arises is what the impact of this decision will be on the famous WASHINGTON REDSKINS dispute, where the REDSKINS mark was expunged for being disparaging? There it was held in one of the various cases that a court must look at the views of Native Americans, not the general public(page 36)).  The basis of this decision is of course that the part of section 2(a) is constitutional.  In the Tam ruling the court stated that what the Patents and Trademarks Office does is to look at what message the referenced group takes from the applicant’s mark in the context of the applicant’s use, and it denies registration only if the message received is a negative one (page 22):

“Thus, an applicant can register a mark if he shows it is perceived by the referenced group in a positive way, even if the mark contains language that would be offensive in another context. For example, the PTO registered the mark DYKES ON BIKES…after the applicant showed the term was often enough used with pride among the relevant population.”

In a South African context, an outcome such as that in the Tam case would be unthinkable.  A plethora of legislation would see to that.  What would be interesting is how an “us” mark, that is, a mark filed by a particular disparaged group would be approached here.  Would the “reclaim” notion be accepted?  In the United States it would seem that an application filed by an outsider cannot be refused, as the disparagement bar no longer exists.  Therefore, even speaking as a non-American, one can perhaps predict that the Supreme Court will find grounds to overturn the ruling.

Professor Wim Alberts

University of Johannesburg

Wednesday, 24 February 2016

Is IP a thread in Gordhan's Gordian knot? Comment

Gordhan
Over on Adams & Adams' IP commercialisation microsite "IP Live" blogger Darren Olivier provides a pre- speech comment on the Budget due to be delivered in about an hour in South Africa.

"This article entitled “What can we expect in Gordhan’s Budget” published by Independent Online and citing Bloomberg as author predicts a difficult speech for the Finance Minister who needs “must contend with dwindling revenue as commodity prices plunge, the worst drought in more than a century and slowing economic growth”.
There is of course no mention of intellectual property, a trade mark, copyright, patents, designs, brands etc so one would be forgiven for thinking that this is not about IP but you would also be mistaken if you thought that IP was not a component at all"
Read more about it here.

Vitriolic IP disputes - Mr Harris's rehabilitaton and the request to intervene by Fairhaven

Often, in the world of an IP attorney, solutions in litigation are limited to the area of law in which that IP attorney practises. For example, a patent dispute is normally resolved using the relevant legislation and a trade mark dispute normally involves the same, often with passing off thrown in too. Copyright is no different. Sometimes, there is a also a contractual dispute eg in theft of knowhow cases or use of companies legislation where company names are involved. Occasionally though, the dispute becomes more complicated either because the potential litigation traverses unique or different areas of law or because the IP attorney or his/her client wants it to or because his opponent does. A deliberate move into a "non traditional" form of litigation can often be extremely effective against a specialist IP litigator and his/her client but should be considered carefully.
 
disputed: www.fairhavenestate.co.za
In a recent case decided in the Cape High Court, we see an example of litigants using (and ultimately abusing) insolvency laws to resolve a domain name dispute. The letter below between litigants directly, disclosed by the court in rehabilitation proceedings for a certain Mr Dave Harris, reveals, quite alarmingly, both the frustration of litigation and the tactic:
 
Hi Dave
Hope all is well your side and that your health has improved. I have received your attorneys notice of withdrawal as attorney of record. He reminds me of the skipper on the Oceanos who made it to shore first when he saw that the tide had turned. Clever man, I will definitely be using him in future.
Dave, I have been keeping you fully informed of my actions from day one i.e
1) When you ‘stole’ the website, I told you that all I wanted was the website back or I would go to Brian Shaw (your curator) and fight ‘dirty’. I gave you a full copy of the documents and my reasoning that I would use to institute a 152 investigation. I did this as I did not want your money and did not want to fight. I wanted our website back. Your actions or lack thereof left me with no alternatives;
2) You gave me the middle finger and simply chose to ignore it. Your comments to certain of your staff was that it would just ‘create a bit of admin’ for you.
3) My repeated comments to you that the website is starting to cost you a fortune, fell on deaf ears. Even the blind could see that you had come to a gun fight with a water pistol with so much water that it could possibly keep you ‘in liquidation’ for a long time. If you dont settle we will ensure that you dont rehabilitate;
4) My last text to you on the 29 April in which I made it clear that you should pay our legal costs to date and return our website or else it would consume you, also fell on deaf ears. It was at this point that I started buying up the claims in your estate and realised that once I start spending serious money on claims any chances of a throwing you a life raft was over. At the moment the life raft that you holding onto is unfortunately tied to the Titanic with the captain having left by helicopter.
5) Your sneaky little move to try and rehabilitate before we could stop you was very feeble to say the least. Reading your application brought me to tears…. I thought I was reading the story of the Dalai Lama…. A good guy that had been handed a terrible hand. You should consider writing fairy tails and not commit your imagination to court papers;
6) I am in the final stages of negotiating the purchase of two more BIG claims in your estate that are going to cost you a fortune. I dont want to pay as much as I am about to but unfortunately they have come to realise that there might be some money in it for them. They are greedy…. Sorry I am trying my best not to blow more than another 5 million rand of yours on claims;
Looking at the crystal ball:
1) You will in all likelihood choose to ignore this email once again and hope that it goes away. It will not. This website will become your Bermuda Triangle. It will swallow everything you have and spit you out the other side… Please don’t ignore it;
2) If you don’t settle quickly, I am going to commit purchasing the next two large claims in your estate. I have got them down to 70 cents in the rand (you are welcome to use your stash and pay them a bit more and become my fellow creditor in your 152 enquiry…. You can ask yourself questions and answer them, which would be easier on you because you don’t have to ask yourself the difficult ones, I will ask those. At this point there will be no settlement at all and I will come for every last cent that you have. You have also spread so much negativity and false information that I will be left with no option but running a series of advertorials to rectify the situation. I am already thinking of the headlines…’Dave Harris spends his hidden treasure on a website’….’ Dave Harris web of deceit finally sinks him’… could be fun… or on Twitter ‘Twit overpays for website’.
My suggestion to you is as follows: (I am typing slowly)
1) Let’s settle this thing. I believe that your health has taken a turn for the worse that could possibly positively effect your judgement. Dont let this website become your epitaph www.fairHEAVENestates.now
2) Its costing you more and more daily….STOP IT
3) Even if you happen to get the website (which we don’t think will happen), you will be the loser….BIG time. We will use our gain on your estate to change Fairhavens name at YOUR COST;
4) We have put an offer to you that you must seriously consider. I cannot believe that after all this water under the bridge, you think it is remotely possible to continue at Somerset Lakes with Otto? Is it the nice Dave that works there? The bad one stole the website? We only know one leopard with one set of spots…. Let me once again tell you what I will be doing…. Your shareholding in Somerset Lakes is an asset in your estate. I will be bidding up to the amount of the shortfall in the claims that I will own (I intend to own about R7,8 million in claims shortly. Presently I only own R 1 million for that shareholding i.e I will be paying your estate, who will pay me out on the claims I have (less their 10% commission) I am even sure if I settle your curator his 10% commission he will net my offer and my claim off. I am not sure if Otto has a pre-emptive right on the shares? Possibly I will become Ottos partner…. exciting times;
A FINAL FINAL FINAL FINAL attempt at settling. I dont want to talk to you but dont mind if it will help to resolve the situation. I suggest that you sit with Otto and agree on a deal so that this utter madness can stop. I will be committing another approximately R 6 million of your money on Tuesday. I dont believe that it is too late to stop the ‘Slow train coming’ It has unfortunately cost you a fortune to date. It has the potential to cost you everything. Its in your ability to stop it. If you dont accept this generous olive branch, we will see you in court and I suggest you see a psychologist….and o yes… if you want me to send you the list of questions we will be asking at the 152 I will gladly do so…. You can take crib notes.
Your call….
THIS EMAIL IS SENT TO YOU WITHOUT PREJUDICE AND I RESERVE ALL OUR RIGHTS IN THIS REGARD IN TOTO “
This was followed by a series of threats by phone and through intermediaries.
Hi matey, I know that we no longer associate on a social basis but I’m sure you know why! I do however care about you and Carin. If you are even aware of today’s email from Dennis and the extent of the problem you should swallow your pride and consider it carefully. You and your dad have so picked the wrong guy to piss off. He is prepared blow millions just to get even with you. We really don’t want to see you guys burn. Think about yourself and Carin mate.”
 
If anyone still thinks that IP litigation cannot become vitriolic, they should think again. Ultimately the court found the tactic to be an abuse and ordered a punitive cost order against the litigant. Mr Harris successfully rehabilitated - though, one suspects, only in a legal sense.