Monday, 18 August 2014
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
|Murad's gown (left) Rajah's gown (r)|
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  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?|
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.
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.
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
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.
Saturday, 2 August 2014
Ugandan business persons and the need to respect copyright interests of the local Entertainment Industry.
After a lengthy sabbatical away from Afro-IP pursuing a Doctorate degree in Intellectual Property and Internet Law in the U.S, this Leo returned a few days ago to Uganda. The first welcoming news on the TV screens was a report of the Ugandan Police firing shots in the air in Downtown Kampala as they dispersed a crowd that was wrestling with Copyright Enforcement Officers. The Law Enforcement officers were in the process of arresting an Asian “businessman” that had been in the business of trading in illegally reproduced DVDs. A large crowd gathered and was trying to fight off the police, under the assumption that the arrest was baseless.
It was interesting to see the “businessman” (there go those quotation marks again) clasp onto the iron bars near his store as he resisted arrest. The camera went on to show thousands of DVDs on display in his store featuring Ugandan movies popularly known as Ugawood movies.
As a Country, we probably still have a long way to go in preaching the bad about copyright infringement in the Ugandan circles. It is, however, quite encouraging to see that the Ugandan Copyright Enforcement Police Division is getting a grip of what it means to protect the copyright interests of our emerging Entertainment Industry.
Hollywood, Bollywood and Nollywood have been generating Billions of Dollars for the entertainment industries in the U.S, India and Nigeria respectively. This mainly leans on the fact that the enforcement of the law as well as market support against copyright infringements largely favors these industries (this is not to say that there are no copyright infringements of movies in any of these countries). Ultimately, not only the industry players, but the countries – as a whole – have benefitted economically and socially.
In Uganda, the Copyright and Neighbouring Rights Act of 2006 provides for civil remedies and criminal sanctions against those engaged in the acts of Copyright infringement (see Sections 45, 46 and 47 of the Act). Nonetheless, the Enforcement Police have constantly engaged in battles with those caught in the act of infringing or in possession of infringing products. What makes this interesting is not because the suspects are caught red-handed and try to flee from arrest, but the fact that they always try to resist arrest on the false believe that the arrest is not justified.
Is it the case then that dissemination of the law is still wanting – eight years after enactment, with a countless number of publications, seminars, media programs and so on, that have been passed out to various stakeholders – inclusive of the likes of the Asian “businessman”?
Or is it the case that we should continue fronting the age-old argument that as a Least Developed Country, we can’t afford original DVDs and the best way of appealing to the masses is by dealing in affordable duplicate DVDs?
What most people do not realize is that we have gone beyond disrespecting foreign works of copyright and are now also killing our own local entertainment industry before it even has the chance to grow effectively. The more we encourage illegal reproduction of Ugawood DVDs, the less profits will accrue to the Entertainment Industry. Ultimately, their incentive for further innovation as well as the financial capital to support more movie productions, will be eroded.
It is therefore only consistency from the Enforcement Police that will eventually crack the illegal practice of DVD copyright infringement in Uganda. More search and arrest operations are necessary to drive the point home that the law is here to stay and what may seem right as a business practice for the common man downtown is not necessarily what is right legally and morally.
Friday, 1 August 2014
What can one learn via Twitter? Well, sometimes you can learn about the meal your follower is about to have, or more importantly, a thing or two about geopolitics on the African continent. This Leo has been musing on the latter for quite some time.
According to Africa Check, “...there are 55 states that are internationally recognised and members of either the AU or the UN or both. Fifty-three of these belong to both the AU and UN lists. Morocco is not part of the AU but is a member of the UN. The Saharan Arab Democratic Republic is part of the AU”.
Where and what is Western Sahara ("territory")?
Afro Leo picked this up!
This Leo won't bore you with the convoluted details, as he can't even get his head around it. Wikipedia saves the day here. Basically, it's a disputed territory which is also referred to as 'the last colony in Africa'.
Review of 54 African official IP websites (2011 - 2013)
So, why didn't this Leo pick up this territory during this two-year project? Because he mainly relied on WIPO’s database, though he spotted it on Wikipedia.
Summary of how the territory is viewed
Skimming through the basic web information found, the widely held view is that Morocco claims and exercises sovereignty or jurisdiction (here and here) over a substantial part of this territory. To see what some say, click here.
A post by the FT argues that the EU-Morocco Fisheries Partnership Agreement - which neither mentions nor excludes the territory (also see EFTA, and take note here) - strengthens Morocco’s claim. For the views of a few EU countries, see below.
It seems no one is exactly sure of their official position; it’s almost like: let’s see what happens next. [cf. here where experts say that the Morocco-US free trade agreement excludes the territory] If interested, there might be valuable information on the U.S. position here and here.
For the sake of TRIPS, this Leo discovered that Western Sahara isn't a WTO member. He understands that a state or customs territory needs to have 'full autonomy' over its trade policies to be considered for membership.
Since the UN recognises Western Sahara as a non-self governing territory (also see here or here), how does its specialised agency handle it? A key discovery is that WIPO cautiously prescribes the two-letter country code 'EH' for this territory for international applications. Has any brave IP practitioner ever used it? [NB: Gibraltar has one too, 'GI'. At least, Gibraltar governs itself, albeit that IP rights covering its territory are administered by the UK IPO]
What some African IP law firms say
According to Smit & Van Wyk, the administration or adjudication of IP rights covering this territory is handled by Morocco's IP office or court, respectively. Other firms such as Adams & Adams and Hahn & Hahn Inc also tell us that prior to December 2004, Morocco had more than one zone which meant that separate IP applications had to be made to cover the entire Kingdom.
Going by the AU, one could be forgiven for thinking that Western Sahara is a separate territory to consider for IP protection. This Leo couldn't find any current and credible information to prove, or even suggest, that Western Sahara has its own IP regime. Rather, the finding is that IP rights granted by (or designating) Morocco covers all territories or regions to which it claims jurisdiction or sovereignty over.
Till September, enjoy the weekend and school holidays.
UK Government’s advice on business risks in Morocco (including Western Sahara) is here
Some UK Parliamentarians not happy over EU's trade deal with Morocco here