Tuesday, 16 September 2014

COSON: Nigeria’s Private Copying Levy Scheme "gathering dust"

You don't need to tell Afro Leo that dust is a ubiquitous part of life! Back in 2012, Afro-IP enthusiastically covered the news about Nigeria’s decision to introduce a private copying (or copyright) levy scheme – a post which generated readers’ comments e.g. here and elsewhere. Today, this Leo can update you that the scheme hasn't yet cleared the final hurdle to become operational. 

According to COSON’s Chairman, Chief Tony Okoroji, the documents for the scheme can be found in a cabinet at the offices of the Federal Ministry of Finance (“FMF”) waiting for approval. [The ever-sympathetic Afro Leo says: at times, on matters of public interest, one might have no other viable option than to go public in order to get one’s voice heard or to influence another

Here are excerpts from COSON’s news article which reported what Chief Okoroji said at their flagship event, ‘No Music Day’, on 1 September 2014:

FMF might need this:
Quality ostrich feather duster
just £9.99 (Afro Leo brand) here,
much cheaper elsewhere!
 “…the Nigerian music industry is aware that the order to activate the Private Copy Levy has since been made by the Attorney-General of the Federation & Minister of Justice, Mr. Muhammed Bello Adoke and published in the Federal Gazette. The Nigerian Copyright Commission has held several public consultations on the levy and the stakeholders have since looked forward to the commencement of the scheme. [Afro Leo is assuming that FMF folks were invited. In any case, please don't lose faith!]

Unfortunately, for some inexplicable reason, the documents seeking the approval of the Finance Minister to activate the scheme remain trapped in some files in the office of the Director of Fiscal Policy in the Federal Ministry of Finance while the industry meant to benefit from it is suffocating.” [Basically, COSON is laying responsibility for the birth or death of the levy scheme at the Minister’s door]

 “…if the Honourable Minister has any questions on the scheme, we are ready to provide the answers. We believe that within a few minutes, this scheme which will provide some succour not just for the music industry but also for the movie and literary industries should be given an opportunity to make progress.”[Hopefully, the Minister can find some time, in her packed diary, to review and put forward questions]

Digressing for a moment. Last July, Afro-IP reported that the UK won’t be introducing a private copying levy as part of its copyright reforms. Essentially, the UK Government’s view was that levies “…are inefficient, bureaucratic and unfair, and disadvantage people who pay for content.” [Afro Leo believes that there is nothing wrong with having a private copying levy scheme, provided that it is transparent, fair and balanced to all concerned] As mentioned in the 2012 post, this Leo is still pondering how Nigeria came up with its levy scheme: was it based on an IP policy or did it just emerge like that? No need to guess because Caroline’s A-Z series will soon tell us if Nigeria has an IP policy (draft or otherwise). [Afro-Leo, a big fan of evidence-based policies with built-in review plan, mentions that there is a private use exception in Nigeria’s copyright law]

COSON’s news article also mooted the idea of government funding for Nigeria’s music industry - as seen in the movie industry through initiatives such as Project ACT-Nollywood. (On which see previous Afro-IP musings on Nollywood here, here, here, here and here) You see: the Nigerian Government has inadvertently opened the floodgates! Well, that's a subject for another post. 

Circling back to our main story, this Leo suspects that the reason for the current predicament might be because the FMF and Nigerian Copyright Commission (NCC) weren't on the same page from the start, or that lines of communication have broken down along the way. However, one would be forgiven to think (or to have expected) that folks at the FMF were aware and satisfied with the details of the levy scheme to the extent that it would only become a matter of rubber-stamping the Copyright (Levy of Materials) Order 2012. All suppositions!

Oh well, let's hope that the nice folks at the FMF can now decide to favourably make use of the duster (unashamedly plugged above for Afro Leo) so that the levy scheme can come to fruition to (again, hopefully) do what it's known for: compensating rightholders.
Further reading
WIPO's survey of private copying schemes around the world is here
Court of Justice of the European Union’s view on private copying levy is here
An empirical study of private copying levies across Europe is here
A case for and against private copying levy in Australia is here and here
General discussion on compensating rightholders for the private use exception is here
Latest update on France's private copying levy scheme is here

Sunday, 14 September 2014

South Africa's draft IP policy: a new article

"The draft national Intellectual Property Policy proposals for improving South Africa's patent registration system: a review", by fellow Afro-IP blogger Caroline Ncube (Associate Professor, University of Cape Town), has just been published online in the Journal of Intellectual Property Law & Practice (JIPLP). The print version will be available soon. According to the abstract:
This article discusses South Africa's draft Intellectual Property Policy proposed reforms. It considers how these may be practically implemented. In particular, it focuses on the phased sector specific introduction of substantive patent examination, possible co-operation with other national or regional patent offices to enhance examination capacity, the retention of non-examination for utility or second-tier patents and the involvement of third parties in the examination process. It also considers the re-introduction of opposition proceedings to further strengthen the patent system.

The article points to other jurisdictions that have implemented some of these options such as Australia's utility patent system, the successful implementation of the peer-to-patent project in countries such as the United States (USA) and the United Kingdom (UK) and opposition proceedings in Europe, the UK and Australia. It concludes that these are plausible and viable options that should be further explored for adaptation to the South African context.

The article will be of interest to those following policy and legislative developments in the developing world and particularly Sub-Saharan Africa, where change often begins in South Africa then extends throughout the region as neighbouring states follow South Africa's lead.

Saturday, 13 September 2014

IP policies in Africa no. 34: Morocco

Morocco does not yet have an IP policy nor was this Leo able to find any information on the development of such a policy. She decided to poke about to see what the country has been up to recently in the hope that this would reveal what a Moroccan IP policy is likely to prioritise.

Morocco is party to  a Free Trade Agreement (FTA) with the US (see full text here) and a co-operation agreement with the EPO (see here). Pursuant to her signature of the FTA,  Morocco has a TRIPS- plus IP regulatory framework. Presumably also linked to this relationship with the US, Morocco was the only African country involved in the negotiation and conclusion of the ill-fated Anti-Counterfeiting Trade Agreement, which she signed in 2011 (see here). All of this may be an indicator that the country favours a strong (read TRIPS plus) regime which this Leo fears may not be appropriate for a developing country. However, the country has shown some appreciation of the need to have a properly nuanced IP regime that caters for users through its signature of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled. It remains to be seen when the county will ratify the treaty and how her IP policy would balance her FTA obligations with user and societal rights.

WIPOLex entry here
for a discussion of the Morocco-US FTA see Omar Aloui 'Intellectual Property Rights' in Gary Clyde Hufbauer, Claire Brunel and Dean DeRosa (ed.s) Capitalizing on the Morocco-US Free Trade Agreement: A Road Map for Success (Policy Analyses in International Economics) (2009) pp147 - 162 ; full text here

Tuesday, 9 September 2014

Libya: closed for new trade mark applications

Abu-Ghazaleh Intellectual Property Group reports the sad news that, in consequence of the latest civil unrest in Libya, the Libyan Trade Mark Office has suspended its operations and will not be accepting new trade mark applications at this stage.

We at Afro-IP all look forward to a time when peace and good order will return to that troubled jurisdiction and that the most important thing to worry about will be trade mark oppositions ...

Monday, 8 September 2014

Cultural immersion - 30th Zulu Reed dance in pics

Zulu Chiefs in regalia

Maidens prepare to lay ceremonial reeds

Sun sets on Zulu maidens

Community building

Zulu chiefs perform

Maidens dance

and dance

and dance

King's minders


Queens look on

National pride

A King's speech

The Gambia ratifies ARIPO's Swakopmund Protocol

It kind of feels really nice like donkey’s years since this Leo wrote a blog post! There’s no better way to get back into the groove than with some good news from the smallest mainland country in Africa. 

Following on from Darren’s post, which informed us that The Gambia is keen on protecting traditional knowledge and folklore ('TK') for the benefit of its valuable tourism industry, this Leo understands that The Gambia has put its money where its mouth is by ratifying the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore (ARIPO). Read all about it, as reported by The Standard, here

The Gambia 1
Source: ARIPO
Readers may also wish to take note of what the Attorney General and Minister of Justice of the Republic of The Gambia said at the inaugural event of ARIPO’s IP roadshow seminar held in Banjul, The Gambia, last August. According to ARIPO’s press release: 

“…Hon. Justice Mama Fatima Singhateh highlighted the most significant achievements of the IP Office in the country namely the clearance of a backlog, [This is brilliant news! See Afro-IP’s post in 2012 which told us that they were working on it] the inclusion of IP in the National Science and Technology Policy and the drafting of the IP Policy and Strategy. [On which see Caroline’s report on IP policy in The Gambia here] Hon. Singhateh also indicated that the Government took the conscious decision of joining the Madrid System on Marks and is following up on latest developments on the Banjul Protocol reforms and the text of the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore in order to consider accession.”[Talk about persuasion and conversion! Well done, ARIPO]

Further reading
A primer on ARIPO’s TK protection regime is here
Afro-IP summarises the TK discussions at the 2013 Africa IP Forum here
India and WIPO partner to protect TK here
A report published by the UN on indigenous peoples is here (for IP rights & TK, see pp. 64 – 77)
The British Monarchy’s commercial value is protected under various laws, and in the world of advertising (As Darren mentioned in his post referenced above)

Thursday, 4 September 2014

Nigeria Welcomes Online Copyright Registration

capture 108 The Nigerian Copyright Commission has announced an online registration system called NCeRS, Nigerian Copyright e-Registration System.  The new system is available on the NCC website – in fact, when this Little Leo went to the usual http://www.copyright.gov.ng site, she was greeted by a nice big pop-up encouraging her to register her work at the NCeRS url http://www.eregistration.copyright.gov.ng/?.

The NCeRS site includes more than just a registration portal.  There is nice FAQ section that answers question about registration and copyright generally.  The searchable database is a great feature.  It’s unclear whether or not the database is already running (and Little Leo just couldn’t make any good guesses about already registered works to find) or if it will be populated as the digital registrations come in. The database search isn’t quite as user-friendly as the US Copyright Office’s.  For example, in the NCC database, you have to know whether the name you’re searching is the Author or the Copyright Owner.  In the US database, you can search one name in multiple fields at the same time.  Also, “Keyword” usually means searching for a word or phrase in any field.  In the NCC database, the “Keyword” field is a drop-down menu where you have to choose the work type, another category that would sometimes be nice to leave blank.

A few other links to additional services currently redirect to the home page, so it looks like NCC will be rolling out more features as the program continues to be built.

Little Leo Tries Registering a Work

Registering for an NCeRS account was pretty easy.  The free-form box for address is nice when dealing with registrants from multiple jurisdictions.  Beware: this is one of those systems that will email you your password once you register. Don’t use a password you use anywhere else.

Once you’re logged in, the site takes you to a Dashboard showing the status of all your applications.  This is pretty neat and a bit nicer than the US eCo system (with which Little Leo is more familiar), because it divides the cases by status for an easy glance-over.

The registration form is pretty simple and straight-forward, at least for a copyright attorney.  General creators may stumble a little on questions like “Medium of Fixation.”  The drop-down menu helps, although it has a limited list of mediums: CD, VCD, DVD, VHS, Audio Tape, Paper.  There’s nothing for other digital fixations such as hard-drives, which is particularly interesting since the Nigerian Copyright Act explicitly protects computer programs as literary works.  Does a computer program need to be saved on a CD before it can be registered?

For works already registered in another jurisdiction, the form allows inputting information about any existing registrations.  Obtaining the physical certificate from the NCC may be a little difficult for anyone outside of Nigeria.  The form suggests certificates must be picked up in person from one of the NCC’s 15 listed Zonal Offices.  But, that entry isn’t required and it’s not clear what happens if it’s left blank.

The Author Information page is a bit repetitive if the owner and creator are the same person, but it’s not a lot of info to retype.  The Nationality question is fun simply because the dropdown menu actually lists nationalities and not countries.  For those whose nationality name is very different than their country’s name (i.e. Dutch or American), it requires some thinking.  Re-entering information a third time for a Correspondence person is a bit tiresome.  It’d be nice if there were a checkbox option “Author is Correspondence person.”

Submission of the work may be done as an upload, by mailing the work to the NCC or by doing an office drop-off.  The office drop-off option is kind of neat.  Maximum file size for uploads is 20MB and there’s special instructions if registering a video work.

Once the registration forms are complete, you have the option to download a pdf via the “Print Application” button.  This is also a pretty neat feature.

The fees are listed as N10 (US$30) in Nigeria (versus $45 in the US).  However, the Nigerian fees are per relationship to the work, so if you register as both Author and Copyright Owner, it’s a $60 fee.  There is a processing fee for paying online, but it’s minimal.  Payments are done through a third-party site, and you do need to create a separate account for it.  Little Leo couldn’t get past this point and actually pay for the registration because the third-party site kept giving a server error.

When an application fee is not paid, the application stays in the “Pending Applications” area.  Clicking on the question mark at the end of the application row will check to see if payment has been made.  If it has not, the application will go to the “Saved Applications” area and can be edited there.  However, Little Leo could not figure out how to get back to the payment options screen.  Going through the whole app again and clicking “Save and Next” until the very end resulted in going to the pending applications screen instead of the payment screen.  Same thing with clicking on “Pay & Submit” in the side bar and with clicking through the link in the email saying that payment failed.  After 30 minutes of trying to figure this out Little Leo gave up.  (Guess it’s time to call some friends in Nigeria.)

Supposedly, registration has a very quick turn-around time.  Registration with the NCC is estimated to take about 10 days, shorter for registrations with payments and deposits made online.  By contrast, a US registration is currently estimated to take about 3-5 months for online registrations and longer for paper filings.  However, if the NCC doesn’t get the payment system working soon, it won’t matter how quick the turn-around time is supposed to be or how fancy the online registration system is.

NCeRS looks like it’s going to be great, but there are definitely still some kinks to work out.

Hat Tip to 9jaLegal (Facebook, Twitter) for info on NCeRS being launched.

Wednesday, 3 September 2014

New constitutions, new commitment -- but can Egypt and Tunisia deliver?

The August 2014 issue of the world Intellectual Property Organization's WIPO Magazine has just appeared online. It contains an article of obvious relevance to this blog, "Egypt and Tunisia Underscore the Importance of IP". Penned by Ahmed Abdel-Latif (Senior Programme Manager for Innovation, Technology and Intellectual Property, International Centre for Trade and Sustainable Development (ICTSD), Geneva), it draws attention to the commitment by both Egypt and Tunisia to the knowledge economy, as reflected in their respective new Constitutions. Commit is however nothing unless it is concretised in reality. As the author concludes:
The clauses relating to the knowledge economy in the constitutions of Egypt and Tunisia reflect the priority given to promoting innovation and creativity within the new socio-economic policies pursued since the Arab Spring. The reference to “building a knowledge economy” in the Egyptian Constitution is particularly revealing in this regard. The reference to private sector participation in research efforts reflects recognition of the weaknesses that have characterized the national innovation system and the need to address them. It remains to be seen whether and to what extent this priority will have a tangible impact on the ground, particularly in light of the difficult economic circumstances prevailing in both countries, the limited resources available, and competing public policy objectives.

The reference to IPRs in the Egyptian and Tunisian constitutions is part of a general trend towards the “constitutionalization” of IP protection within a human rights framework deriving either from the rights of inventors and creators or the right to private property. It also reflects higher levels of awareness and engagement with IP issues since the adoption of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

In light of the general wording of the IPR clauses in both constitutions, ultimately the manner in which these clauses are implemented through national laws and judicial decisions will be critical in ensuring that a balanced approach to IP protection is adopted; one which takes into account the level of development of each country and one which is supportive of their respective public policy objectives.
You can read this article in full here.

Monday, 1 September 2014

ULKER BISKREM: bad faith registration cancelled in Djibouti

A Djibouti company trading under the name of Mr Fuad Taha Ahmed Katen ('Fuad') registered the words ULKER BISKREM in December 2012 for goods in Class 30. The mark was published in the daily newspaper La Nation in 9 June 2011 subject to cancellation within five years from the publication date, there being no opposition stage.

A Turkish company, Yildiz Holding Anonim Sirketi ('Yildiz') filed a cancellation action before the Commercial Court, citing the following:
* prior registrations of ULKER BISKREM as word mark and in various designs by Yildiz in Djibouti, as well as the Czech Republic, Germany, Pakistan, Slovak Republic, Yemen, Kazakhstan, OAPI, Romania, Ukraine, Kosovo, Montenegro, Macedonia, Republic of Serbia, Turkey, Trinidad, Algeria, Albania, Bulgaria, Jordan, Lebanon, Iraq, 
Morocco, Russia and others (there was also a Community trade mark);
* prior use of the mark by Yildiz both in Djibouti and abroad.
It appeared that Fuad had been buying and distributing Yildiz's trade marked products in Djibouti, Ethiopia, Somalia and Eritrea for the past seven years, so his opposed mark was registered in bad faith.

Following a full hearing, the Court ruled in favour of cancelling Fuad's registration of the trade mark ULKER BISKREM.  Yildiz was also awarded reimbursement for the damages in the amount of DJF500,000 (US$ 2,795.34).

Since the decision was not appealed within six months from notification date, it has become final.

Source: NJQ & Associates August 2014 Newsletter.  NJQ & Associates acted on behalf of Yildiz in these proceedings.

Wednesday, 27 August 2014

Moneyweb vs. Fin24 - copyright infringement litigation

A Leo engrossed in pleadings
Moneyweb is suing Fin24 for copyright infringement arising out of Fin24's (re-)publication of eight articles which had been initially published by Moneyweb (see a Mail and Guardian report here). Moneyweb has created a dedicated website (here) where it has posted all of the pleadings filed to date and media articles. This Leo rarely has an opportunity to read litigants' court documents and is delighted that these documents are so readily available.

 Alas, the opening salvo of this battle, Moneyweb's Founding Affidavit, is not available  on the site (the link opens Annexure C1 instead). However, the answer, Fin24's Answering Affidavit , is available, as is Moneyweb's Replying Affidavit. This Leo finds it all very interesting and useful. Thanks to Moneyweb's website, she can share recent pleadings with her IP students and she is certain that many Afro-IP readers will find the documents interesting too. This will be a very interesting case to follow, as it is the first time a South African court has had an opportunity to consider whether news aggregation constitutes copyright infringement. Anton Harber succintly captured what's at stake, when he blogged
"This is a battle of our media giants, as Moneyweb is owned by Caxton and Fin24 by Nasper’s Media24. The elephants are fighting and the ants are watching, as always, nervously." (Read his full post here).

UPDATE - 2 September
Thanks to Ryk van Niekerk for letting this Leo know that the link to the Founding Affidavit has been fixed. Happy reading, all! 

For how other jurisdictions have resolved similar cases see-
 AP wins ruling in copyright case against news aggregator [2013 - The Associated Press v Meltwater U.S. Holdings Inc, 12-cv-1087, U.S. District Court, Southern District of New York]
UPDATE 1-Dow Jones wins injunction against Ransquawk over 'hot news' [ 2014- Dow Jones & Co v. Real-Time Analysis & News Ltd, U.S. District Court, Southern District of New York, No. 14-00131]

Tuesday, 26 August 2014

IP Policies in Africa no 31, 32 and 33 - Mali, Mauritania and Mauritius

 M is for Macaque, Mali, Mauritania and Mauritius


Many in IP circles have spent much of this month discussing the import of this lady Macaque's selfie-taking skills and whether they entitle her to copyright in the picture she took of herself (left). Over at IPKenya  (here) Victor Nzomo gave us David Slater's version of how this photogenic macaque got her hands on his camera and why he insists that he holds copyright in the photo. Our friends at the IPKat discussed the matter here and our other friends at the 1709 blog are running a poll here till 1 September to get readers' views on who holds copyright in the photo. If you haven't had your say yet, this Leo recommends that you head over to IPKat and cast your vote.


Mali is an OAPI and ECOWAS member state.
According to WIPO reports here  and here the country's national IP Policy has been under discussion and formulation since 2011. The draft policy is not currently publicly available.


Mauritania is an OAPI and African Economic Community (AEC) member state. This Leo was unable to unearth any information on work towards an IP Policy in this country.

Mauritius is an AEC and SADC member state. The country has had an Intellectual Property Development Plan in place since 2009 (see here and here). However, this policy is quite elusive and this Leo has been unable to get her paws on a copy. In March 2014, it was reported here that an IP Council would be set up to co-ordinate and lead national IP initiatives. The same report stated that a new IP policy will be formulated ' to mainstream IP into... economic and social development and to further promote innovation and creativity through a more holistic approach to IP matters'.  Hopefully this new policy will be easier to locate.

For more info, see -
Mali's WIPOLex entry here
Mauritania's WIPOLex entry here
Mauritius' WIPOLex entry here 

Africa's smallest country promotes IP

AllAfrica brings news of The Gambia's commitment to intellectual property protection following a road show initiative by ARIPO's Mr Dos Santos that is taking place over the next two years. .

Quoting from the article penned by Yunus Sailu:

"PS Momodou C. Joof was speaking recently at the opening ceremony of the National Roving Seminar on making better use of intellectual property for business competitiveness and development in Africa."

"Further in his remarks, the permanent secretary defined folklore as 'the literary, artistic and scientific work belonging to the cultural heritage of The Gambia, which are created, preserved and developed by ethnic communities of the country or by unidentified Gambian authors. Thus, he noted, the tangible and intangible aspects of Gambians folklore thus deserve protection.
"It is indeed obvious that what makes the tourist product unique are those aspects of cultural heritage which are distinctly Gambian; be they cuisine, costume, customs or carvings, or music and masquerades," he stated. "Our dances, songs, praise songs, traditional musical instruments, stories, legends and fables are other aspects of our folklore which make The Gambia a unique tourist attraction".
PS Joof informed that the NCAC, under the Ministry of Tourism and Culture, has under its custody over 6, 000 audio and video recordings dating to five decades on various aspects of Gambian traditional songs, performances, genealogies, linguistics and similar folklore materials. He described these materials as invaluable assets of folklore, which the Swakupmond Protocol seeks to protect when it is ratified.""
The Gambia, known in IP circles for the naming of the Banjul Protocol and more recently for its withdrawal from the Commonwealth (denouncing neo colonialism), is clearly seeing IP as means of protecting one its major economic assets, tourism. And so it should, the British Monarchy, for example, uses IP to protect its own national heritage in much the same way.

Monday, 18 August 2014

This week, first Adword hearing for South Africa and more

It is South Africa's turn to adjudicate on the legality of bidding on competitor marks as Google keywords in a groundbreaking case due to be heard this week. The results of the case will directly affect online advertising and search engine optimisation strategies in South Africa and perhaps be a precedent for Africa.

Cochrane Steel Products Pty Limited have sued M-Systems Pty Limited for bidding on the keyword CLEARVU/CLEAR-VU which they claim is unlawful competition. Unlike most international cases of this type, the mark CLEARVU/CLEAR-VU is not registered. M-Systems are defending on the basis that the evidence provided by Cochrane does not support the right they have claimed in the CLEARVU mark, that  bidding on keywords using marks of others is not per se unlawful and promotes competition especially when the mark does not appear in the ad text generated by the adword.  

The case is due to be heard this week Wednesday (20 August @10am) in the South Gauteng High Court by Judge Nicholls. Owen Salmon (briefed by Rademeyer Attorneys) appears for the Applicant and Gavin Marriott (briefed by Adams & Adams) is appearing on behalf of the Respondent. Afro Leo is involved in the case together with IP attorney, Ian Learmonth for the Respondent.

Meantime, breaking news on another IP case for Google, this time involving the appeal against a finding of patent infringement of Vringo's filtering an ad placement technology, has revealed that Google has successfully overturned the $30.5 million patent infringement verdict resulting in a 72% drop in Vringo's share value.

Afro Leo has just been informed that there are still spaces available for the Breakfast Seminar this week Thursday 21 August on IP Audits - what are they, why are they important and what do they cost? Register here for complimentary access.

Tuesday, 5 August 2014

Tuesday Tidbits: copyright reform and fashion design wars

(c) sometinytidbits.blogspot.com
This Leo has come across two pieces of copyright law related news that are both  interesting and significant.

First, thanks to Denise Nicholson, for alerting this Leo to the recent announcement by the Department of Trade and Industry that a Copyright Amendment Bill will be introduced in Parliament before the end of this financial year. The news was announced by the Minister in his annual Budget Vote on 22 July (see the full speech here and a brief note by SabinetLaw here). According to the Minister, these reforms will be informed by the  The Copyright Review Commission's recommendations (see full report here). There was no mention of (you guessed it!) the recommendations made in the draft  national IP policy (perhaps because its only a draft?) This Leo awaits the draft Bill with much excitement.

Murad's gown (left) Rajah's gown (r)
Second, the press has reported on allegations of copyright infringement being made against a leading designer Gavin Rajah in relation to his Fan Sunray Gown. It is alleged by Simphiwe Tshabalala that this gown is a copy of Zurhaid Murad's gown (see IOL report here). Rajah disputes this allegation and states that he created his gown independently and without ever having had sight of Murad's gown. He has instructed attorneys to represent him in a potential litigation against Tshabalala. This Leo has seen the letter sent by the attorneys on facebook but will desist from linking to it here.

This Leo will not engage in a full copyright analysis here but merely wants to make the comment that this incident turns on first principles of copyright law. Creating a work that is similar to another person's work does not automatically lead to a finding of infringement. An independently created work is original ( thus eligible for copyright protection) if  it is the author’s own creation and not copied from another source (see Appleton & another v Harnischfeger Corporation & another 1995 (2) SA 247 (A)  (on SAFLII here) at 262).  As to infringement by copying, it was held in Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd [2002] 4 All SA 67 (SCA) by Harms JA that- "In order to establish copying, a two-stage inquiry is conducted. It has to be established whether there is the necessary degree of objective similarity between the original work and the alleged infringement; then it must be established that the similarity is causally connected to the original work. The causal connection can either be direct or indirect". At (an admittedly superficial) glance, there seems to be some similarity between the gowns. Whether it is substantial, is a more meaty matter, for another time. Whether causal connection between the works could be proven is another critical matter.Only the copyright holder in the Murad design can bring an infringement claim against Rajah (s 24 Copyright Act). As far as this Leo can ascertain  Muraj has not made any public statements about this matter and it is not currently known if a copyright infringement suit is on the cards. Having placed the this tidbit before Afro-IP readers, this Leo is happy to return to her favourite sofa and hope for analysis of the prospects of an infringement claim (should it ever be brought) from one (or more) of them or her fellow-bloggers.
fancy a bite ... anyone? 

Diary of a Kenyan Patent Agent: agents per capita

Patent offices do more than register patents – they also register people. In order to represent other people before a national patent office, a lawyer or scientist must typically be registered with the patent office. In some countries such as the US and UK, registration involves passing an examination to show that the individual understands the patent system (and, in some cases, knows how to draft a patent). In other countries such as Kenya, registration does not require a test – the only requirements are a form and a fee.

In it’s 200+ year history, the United States Patent and Trademark Office has registered over 72000 patent agents (you can search their database here).  With a population in the US of roughly 313,000,000, and assuming about half of registered patent agents are “active” (e.g., are not dead)*, that equates to about 1 patent agent for every 8,700 people.

The Kenya Industrial Property Institute has registered about 340 patent agents (a PDF of the patent agent list can be found here). With a population in Kenya of roughly 43,000,000, and now assuming that all patent agents are “active”, that equates to about 1 patent agent for every 126,000 people.
"Is this the line to see a patent agent?"
Unknown Artist
This Leo would never suggest that the US system should be the ideal model for Kenya or for any other country. Nevertheless the numbers beg the question – are the low number of patents filed/granted in Kenya (and, presumably, elsewhere) due in part to the lack of agents to help inventors? Given that there is no exam to tell whether a patent agent has the necessary knowledge/skills to prepare patents, the number of “qualified” patent agents must be even lower – which means that good help is indeed hard to find!

The other option is that a lack of inventors and therefore a lack of demand (or perhaps simply a lack of interest in the patent system by inventors) has caused there to be very few patent agents. Anecdotal experience and stories tend to debunk these theories.

* a factor of 50% for “active” agents is a rough estimate. This Leo obtained a registration number in the 57,000s about 10 years ago, and his mentors (most of whom were over 50 years of age at the time) had registration numbers in the low 30,000s. Plus, in the last 10 years, an additional 15,000 agents have been added to the register! Clearly patents remain a booming business in the US.

RSA: Finance giants battle over limping trade mark – Discovery v Sanlam

Who says IP doesn’t happen in the Cape! In an intriguing High Court judgement, the court considered an issue one often encounters in practice but which hasn’t, as far as I know, been fully ventilated in our courts - that of the registrability of limping trade marks. Jacobs J (as he then was) coined the phrase “limping trade mark” in the Philips v Remington UK case.  The term denotes a mark that is weak in distinctiveness which is always used together with another, stronger mark, very often a house mark, so that the weaker mark relies on the strength of the stronger mark in order to act as a trade mark.

Unusually, the judgement is littered with references to American sources, which is a refreshing change from the usual European bias!

Discovery, the well-known financial services and insurance provider, owns a registration for ESCALATOR FUNDS covering insurance and financial services, and has used the mark in relation to constant proportion portfolio insurance (“CPPI”) share trading products.  Sanlam, another well-known provider in the same industry, has been using the mark SANLAM ESCALATING FUND in respect of its own CPPI products.

Discovery sued for infringement of its registered mark as well as passing off.  Sanlam counter-claimed for revocation of Discovery’s registered mark on the basis that it is not capable of distinguishing and is entirely descriptive and in common usage.  Ultimately, the court found that Discovery’s mark was liable to revocation on this basis, but still saw fit to consider the infringement issue nonetheless, finding that confusion or deception was unlikely.  Furthermore, given the descriptiveness of the mark, Discovery could not show a reputation in the mark and its claim of passing failed accordingly.

A few points are worth noting here.  Firstly, in determining whether the Discovery ESCALATOR FUNDS mark had acquired distinctiveness through use (so called secondary meaning), the Court found that the mark was always used along with Discovery’s house mark – DISCOVERY.  The court found that the failure to use the ESCALATOR FUNDS mark (product mark) in isolation from its house mark effectively meant that the consumer was not given an opportunity to disassociate the product mark from the house mark, and that the public cannot be said to recognise the product mark as an independent mark as a result.  The Court therefore refused to spare the registration for the product mark on the basis of acquired distinctiveness.  It should be noted that the judgement contradicts that of the then European Court of Justice (ECJ) in Nestlé v Mars in which it was held that use of a mark as part of or in conjunction with another mark is not a bar to the mark acquiring distinctive character in its own right.  Owners of limping marks in SA should take heed and should use the weaker mark independently of the stronger mark, lest it suffers the same fate.

Secondly, the Court did not follow the reasoning of the Supreme Court of Appeal in the ZETOMAX case, where it was held that patients’ involvement in choosing medicines should be given due weight (thereby increasing the likelihood of confusion) despite the fact that prescription medicines reach patients via medical professionals who are less likely to be confused.  Here, the Court found that, because the CPPI products are usually sold via brokers having intimate knowledge of the products, the likelihood of confusion is diminished.  In other words, the involvement of the end user was not given much weight, as in ZETOMAX.  I wonder whether the Court got this right – individual traders are becoming increasingly less dependent on brokers through online share trading platforms and the like.

Finally, and importantly, the Court confirmed that simply adding a house mark to an earlier mark will not necessarily suffice to avoid confusion between the two (in line with the well-known Medion decision of the ECJ).  However, the Court found that if the common element between two marks is weak in distinctiveness, it is unlikely that consumers will be confused unless there are other commonalities.  The addition of the dominant SANLAM element was therefore found sufficient to avoid confusion.