Monday, 13 April 2015

OAPI Suspend Agents

Aminou Ndala TITA based in Cameroon reports that there has been significant tension between OAPI and some its agents over OAPI's decision to join the Madrid Protocol. OAPI has responded banning certain members from practising. The full story:

"A month after joining the Madrid Union, the dust has not settled on why OAPI chose that option. The in house fighting between the Director General of OAPI and some of his accredited agents has raised so much doubt on the competence of the organization’s hierarchy.

Accredited agents are those who have been granted special license by the Director General of OAPI to represent clients. They are usually legal experts or those with a background in IP and have fulfilled special conditions laid down by the organization.

It should be recalled that the decision to join Madrid was arrived at the 53rd session of the Board of Directors of OAPI held in Malabo on the 14th December 2013. Resolution No. 53/25 of 14 December 2013, authorized the accession of OAPI to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Director General of OAPI was mandated to submit the instrument of ratification with WIPO which he did on the December 5, 2014. The official entry is dated March 5, 2015.

The accession of OAPI to the Madrid Protocol has not been welcome my most IP legal practitioners within the OAPI Jurisdiction. These legal minds who now branded themselves as « Collectif des Conseils en propriété industrielle » have labeled the OAPI accession to Madrid illegal and are bent on reversing this decision. The arguments advanced by these group are:

1.       That OAPI as an international organization does not have the mandate to ratify a treaty on behalf of member states.
2.       That the Bangui Agreement does not allow the Organization to ratify a treaty through a resolution of its Board of Directors;
3.       That only independent states have the power to ratify such a  Protocol;
4.       That accession to the Madrid Protocol will have negative economic and strategic impact on member States of OAPI.
5.       The professional / accredited agents of OAPI will experience a decline in the volume of their activities.

This action has been met by stiff resistance from the organization. The organization hierarchy has suspended ( all agents involved in this action which to him is an attempt to discredit and destabilize the organization. The communique from the D.G reads:

“The patent attorneys involved in this campaign and the firms they are attached to, will not be allowed to represent clients at OAPI for any action which include but not limited to Patent, trademark and design applications, opposition, appeals, recordals etc.;

 - They are also banned from advertising their firms as official agent / attorneys of OAPI”.

The list of agents and firm suspended by OAPI has not been made known to the public but one thing is clear, this will definitely be a long fight."

Thursday, 9 April 2015

International Firms Colonise Africa Big Law - Legal 500

African interest has created a real dilemma for African law firms that operate in the corporate, banking and mining spaces - big law.  Local legal powerhouses that have dominated their region for decades have been facing increasing international competition for their patch and the Africa opportunity. The latest (and first ever) Legal 500 listing for Africa illustrates that, in a relatively short space of time, the international firms have completely dominated the continent. In fact, of the top locally branded firms in Africa, only two make even the bottom tier,

For Africa based firms focusing on big law this means either merging with super firms or coming up with an alternative strategy, for example, by investing in firms on the continent to make them more attractive for corporate deals (that are not run by the mega firms on the continent) or focusing on specialist areas. However, both require major change, good leadership and a strong constitution.

Wednesday, 8 April 2015

Busy time for Africa at WIPO - Part II

Swiftly following Monday's post, here are further updates from our anonymous friend on WIPO-coordinated activities relating to African countries.

Image result for wipo
The fifteenth session of the CDIP will be meeting in Geneva from April 20th to 24th.  Unsurprisingly, there are a number of agenda items relating to Africa.  The committee will be reviewing, among others, the Director General’s Report on the implementation of the development agenda, evaluation reports on several studies and external review projects. 

Evaluating the CMO project
One of the evaluation reports, prepared by Lois Austin, was based on a project involving 11 African countries. The idea of the project was to make copyright work better in developing countries by empowering the collective management organizations (CMOs) to aspire to “international state-of-the-art standards” and to assist them learn how to “deliver timely, effective and efficient value-added service to national creators, copyright industries and consumers”.  Austin’s report reviewed the various objectives of the project and the extent to which they've been achieved.

The busy bees in charge of the project thought they had everything set up and ready go, but, as is all too common, they discovered that the technical infrastructure necessary to support their plans was lacking. Time and funding was spent on attempting to build this underlying infrastructure, particularly upgrading the WIPOCOS (WIPO Software for Collective Management Organizations or Societies). This was, however, accomplished, and the remainder of the original plan was “re-oriented”.  The re-oriented program was deemed complete, but it’s going to take quite some time to actually realise an increase in capacity and efficiency at CMOs in developing countries.

More related events to look out for in May and June
There will be an Inter-regional Expert Meeting on South-South and Triangular Cooperation for Access to Information and Knowledge, Innovation Support and Technology Transfer in Lima, followed by the WIPO-NORCODE training on Exercise and Management of Copyright and Related Rights for Developing Countries in Oslo. 

Stay tuned!

Algeria requires proof of use for trade mark renewals

An item in Abu-Ghazaleh Intellectual Property's most recent newsletter, "New Requirement for Trademark Renewal in Algeria", reports that the Algerian Trade Mark Office has issued new regulations relating to trade mark renewals in Algeria. These new regulations require that renewal applications be accompanied by proof of local use of the mark in the year preceding the renewal deadline.

This blogger wonders what the criteria for proof of local use will be. Will Algerian practice be influenced by current European Union case law on the subject? Will token use be sufficient or will it have to be genuine? How "local" can such use be, given the fact that much of Algeria's large territory is sparsely populated  -- and to what extent if any will importation be considered to be "local use"?

Tuesday, 7 April 2015

Nagoya: A headache just for developing countries?

Nagoya is not as sexy as TRIPS?
Afro-IP is lending its voice to a very important post, by Leofriend Darren Smyth, which sadly received little attention on our sister blog - despite the EU masters taking it seriously. It is important because it explains how the UK has decided to play its part in ensuring that organisations share the benefit of genetic resources with the countries from which they have been obtained.

When this Leo saw the post, his immediate thought was that it may well not be the cup of tea of the majority on IPKat (cf. here); but, on second thought, he doubts whether the subject-matter would've generated a great deal of enthusiasm here. Previous Afro-IP posts are here and here. [Afro Leo says: "Perhaps some see Nagoya as one of those charitable side dishes legal thingummies for the benefit of developing and least-developing countries."]

Afro Leo might have a point if one considers the context provided in a nice little piece by Elsa Tsioumani (University of Edinburgh). Ms Tsioumani says:

 The turnout looks like the blog interest
"...Most of the world’s biodiversity is found in developing countries; whereas developed countries usually host research institutes and companies that make commercial use of this biodiversity. In light of the asymmetries between States providing and using genetic resources, as well as growing expectations concerning the commercial value of biodiversity, ABS [i.e. the Protocol] was conceived as a tool for equity and as an opportunity for sustainable development. 

The idea behind it was quite simple: developing countries host most of the world’s biodiversity and thus genetic resources; commercial products developed on the basis of these genetic resources benefit mostly companies and consumers in developed countries; part of these benefits should flow back to the countries of origin of genetic resources."

It seems our friends at Spicy IP (e.g. here and here) are doing better on this topic. Please head over to the IPKat with any comments; alternatively, let's turn Nagoya into an attractive legal instrument right here on Afro-IP. 

Extra bits
Nagoya Protocol is here
Governments agree to make Nagoya work here
Study on the Implementation of the Nagoya Protocol in the EU and its impact is here
Nagoya implications for UNCTAD BioTrade initiative and BioTrade actors are here (draft copy)

Monday, 6 April 2015

Busy time for Africa at WIPO - Part I

Image result for wipo
An ardent and long-standing reader has sent Afro-IP this piece which somewhat chimes with Caroline's post on South Africa's long-awaited Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill (2014). Here is what our friend says:

There has been a lot of Africa-focused activity at WIPO this month; and with the Committee on Development and Intellectual Property (CDIP) meeting coming up in a few weeks, that activity isn't going to slow down any time soon.

Over the past few weeks, WIPO jointly hosted two separate programs on Africa and IP. Program no.1, involving the Japan Patent Office, ARIPO and the Government of Uganda, was titled “Strategic Use of the Intellectual Property (IP) System for Economic, Cultural, Social and Technological Development”.  The program, which was held in Kampala, featured speakers from all of the host organizations as well as experts from Kenya.  The topics covered the following:  Creative Industries for Economic Growth and Development (copyright); Use of Technical and Scientific Information for Technology Capacity Building (one of many focused on patents); and Significance of Trademarks, Industrial Designs, Utility Models and Geographical Indications for Commerce and Development (everything else).  Full agenda is available here

Program no.2 - which was held in Geneva, thanks to the generosity of Australian Aid - was titled “Seminar on Intellectual Property and Genetic Resources, Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs): Regional, National and Local Experiences”. The program featured speakers from Peru, Jamaica, Romania, Finland, India and Kenya sharing their experiences with protecting TK and TCEs.  Session topics also covered IP and development, the interplay of TK and TCEs with the concept of the public domain, and experiences on introducing IP legislation.  Full agenda is available here

It makes sense to see Australia in program no.2 since its Aboriginal culture laws (also here + New Zealandare often held up as examples in the fields of TK and TCEsSpecial mention goes to an IP expert in great demand Ms. Marisela Ouma (Kenya Copyright Board), who was a presenter at both of these programs.

If you were able to attend either of these programs and would like to report on them in more depth, please do let us know or post your comments below. Thanks.

Sunday, 5 April 2015

African Declaration on Internet Rights and Freedoms - 0% 'IP fat' content

Image result for i pledge
In a previous post, we saw how the current government in Nigeria plans to curb copyright piracy. It is not debatable whether a great deal of the infringement problem can be found online, when it appears the Nigerian Copyright Commission has a mammoth offline enforcement task to deal with.

Anyway, Afro-IP's attention has been drawn to a pledge drafted by a group of individuals who are concerned about the role of internet in the socio-economic development of African countries. 

From an IP perspective, unless this Leo's sight needs a serious eye checkup, here are the interesting parts: 

Principle 1: Social and economic openness, to support innovation and guard against monopolies, should be protected.

Principle 2: The cutting off or slowing down of access to the Internet, or parts of the Internet, for whole populations or segments of the public can never be justified on any ground, including on public order or national security grounds.

Principle 11: Everyone has the right to due process in relation to any legal claims or violations of the law regarding the Internet. Standards of liability, including defences in civil cases, should take into account the overall public interest in protecting both the expression and the forum in which it is made.

Access and Affordability

Access and affordability policies and regulations that foster unfettered and non-discriminatory access to the Internet, including fair and transparent market regulation, universal service requirements and licensing agreements, must be adopted.

Freedom of Expression
Filtering, blocking, removal and other technical or legal limits on access to content constitute serious restrictions on freedom of expression and can only be justified if they strictly comply with international human rights standards relating to limitations and due process requirements.

No one should be held liable for content on the Internet of which they are not the author. Furthermore, the State should not use or force intermediaries to undertake censorship on its behalf and intermediaries should not be required to prevent, hide or block content or disclose information about Internet users, or to remove access to user-generated content, including those that infringe copyright laws, unless they are required to do so by an order of a court.

Right to Information and Open Data
Copyrighted materials held by public bodies should be licensed for re-use in accordance with relevant access to information laws and licensing frameworks.

The existing obligation on public bodies to share all information produced with the support of public funds, subject only to clearly defined rules set out in law, as established by the Declaration of Principles on Freedom of Expression in Africa, shall extend to the proactive release of such information on the World Wide Web in openly licensed, freely re-useable formats.

Indeed, access to education is a key aspect of the Declaration, so is preservation of cultural heritage. (Though some might argue that there are contentious points to address) 

'IP rights in the digital age' and 'access to educational content online/copyright' discourse remain topical, globally. It would be interesting to see how or whether African countries would heed to the call.

Copyright infringement allegation which swirled around Nigeria's most lucrative blog is here and here
Mass digitisation of cultural heritage: Can copyright obstacles be overcome? Find out here
UK's latest exceptions to copyright are here

Monday, 30 March 2015

Nigeria: 'Copyright piracy is a cyber security matter,' says President Goodluck Jonathan

When you want to win an election (especially in Nigeria where unfortunately Boko Haram should be at the top of your agenda) the last thing you’d expect from the aspirant is a chat about IP and the creative industries. [Afro Leo says he has never heard the UK Prime Minster, David Cameron, mention IP - not even during his first pre-election TV debate]

Thanks to the youthful MTV Base, this Leo was delighted to watch President Jonathan demonstrating that he knows a thing or two about the purpose of IP and the bane of every entertainment industry, piracy. [For this you may just watch from 2:00 to 4:30]

President Jonathan was asked about the government’s plans to curb piracy and address the issue of royalties. In his response, the President first displayed an understanding of the economic rights aspect of copyright and appreciated the importance of Nigeria's entertainment industry. He then rightly acknowledged that piracy can only be minimised (not eradicated), and said his administration had just launched three security strategy documents, one of which considers piracy a security matter. [Afro Leo says President Jonathan has his vote, just for this. He hopes that the NSA will eventually post these documents online, somewhere, so IP/IT folk can have a look]

It isn't surprised that the President focused on (or, to be frank, could only refer to) the film industry. Why? Well, most importantly: (a) It helped catapult Nigeria’s GDP overnight under his administration; and (b) It has received the most attention and support (albeit with criticism) under his administration. In terms of solutions, the President also emphasised the need for more cinemas to help the industry move away from the direct-to-video model (see previous Afro-IP musings here and here).

However, this Leo didn't see the piracy vis-à-vis cyber crime angle coming. He thought it was for economies with better internet infrastructure and 'larger intangible assets to protect' such as the US (also here, here and here) or emerging software hotspots like India. In any case, Afro Leo is certain that the software industry will be very pleased with Nigeria’s foresight/preparedness considering its digital ambitions.

Are other African countries taking similar policy steps, particularly South Africa (see Afro-IP’s copyright piracy case in RSA)?

Extra reading
Curbing software piracy in Nigeria: Problems and solutions are here
Mcafee counting the global cost of cyber crime including piracy can be found here and here
Cyber crimes against property (Cyber squatting & Software piracy): An Indian perspective is here
The Philippines’ new cyber crime law, covering IP infringement penalties, is here

Wednesday, 25 March 2015

South Africa: Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014

The Minister of Science and Technology has published the long-awaited Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014 for public comment.  The bill covers quite a lot of ground and just a snippet of its coverage is given here.

Protection of the knowledge of indigenous communities from illicit use and misappropriation.
The bill [clause 10] provides protection to
(a) Indigenous knowledge;
(b) Indigenous cultural expressions; and
(c) Indigenous knowledge associated with natural resources.

Clause 11 of the bill set outs out the eligibility criteria for protection. To acquire protection, the indigenous knowledge or expressions must be:
(a) passed on from generation to generation and between generations in indigenous
(b) the result of the creative intellectual activity of indigenous communities;
(c) associated with the cultural and social identity of indigenous communities; and
(d) maintained, used or developed as part of the cultural or social identity of indigenous

Clause 12 of the bill grants holders of protected knowledge  and expressions exclusive rights to-
(a) enjoy, control, utilise, maintain, develop, preserve and protect their indigenous
knowledge, indigenous cultural expressions and indigenous knowledge associated
with natural resources;
(b) authorise or deny access to and use of their indigenous knowledge, indigenous
cultural expressions and indigenous knowledge associated with natural resources;
(c) receive a fair and equitable share of benefits arising from the commercial use of
indigenous knowledge, indigenous cultural expressions and indigenous knowledge
associated with natural resources based on mutually agreed upon terms;
(d) prevent misappropriation and misuse, including any acquisition, appropriation,
utilisation or practice of their indigenous knowledge, indigenous cultural expressions
and indigenous knowledge associated with natural resources without their prior
informed consent and the establishment of mutually agreed tenns;
(e) prevent the use of indigenous knowledge, indigenous cultural expressions and
indigenous knowledge associated with natural resources without acknowledgement
and attribution of the source and origin of the knowledge and its holders where
known; and
(f) ensure that the use of indigenous knowledge, indigenous cultural expressions and
indigenous knowledge associated with natural resources respects the cultural norms
and practices of the holders.

Clause 13 provides that the knowledge or protection is afforded this protection for as long as it meets the eligibility criteria.

The following remedies are provided for by clause 25:
(2) Indigenous communities possessing collective knowledge may bring infringement actions
against any persons who violate their rights as contemplated in subsection (1.
(3) An infringement action can also be instituted by indigenous communities possessing
knowledge where there is an imminent danger of the violation of their rights.
(4) An indigenous or local community may file a complaint with the Court to revoke a
registration over intellectual property right on indigenous resources that had been registered
unfairly or contrary to the provisions of this Act.
Further, it will be an offence to infringe indigenous' communities' rights [clause 25(1)] for which clause 26 prescribes the following penalties:
(a) Written warning by NIKSO as advised by the mediation committee.
(b) A fine as determined by a court.
(c) Seizure of all products and suspension of the sale derived from the indigenous
resource as determined by a court.
(d) Embargo of the activity as determined by a court.
(e) Loss or reduction of funding incentives and benefits granted by the government.
(f) Loss or suspension of the right to receive financing from an official funding
(g) Prohibition from entering into contracts with the government departments up to five

Many Afro-IP readers will have views on these and other provisions of the Bill. Please use the comment box to share these and send in any formal comments to the DST. 
SA's National Recordal System explained
National Indigenous Knowledge Management System (NIKMAS) website 

Tuesday, 24 March 2015

SONY case: Kenya Court of Appeal decision clarifies discretion of Registry

One of the latest developments in Kenya is news of a really strange case to have made its all the way to the Court of Appeal in Nairobi. Attracting the attention of a three judge bench to appeal against a High Court review of a Registry decision to allow an extension of time in an opposition, local company Sony Holdings sought to avoid an opposition against their trade mark applications including the word SONY by arguing the Registry acted ultra vires (outside its powers) in granting an extension of time to the opponent. Meanwhile, patiently waiting for their chance to argue the merits of the opposition is, you guessed it, Sony Corporation, owners of the reputable SONY mark.

Despite the oddity of pursuing a technicality under circumstances which seem impossible to have succeeded, the decision has brought some welcome insight into the degree of thoroughness of the Court of Appeal as well as providing clarity on the discretion of the Registry and extension of time proceedings in Kenya. You can read the full decision here.

The High Court had dismissed the review on the basis that:

1.      The allegation of excess jurisdiction could only be challenged by review proceedings;
2.      There was no legitimate expectation of a mark proceeding to registration once it had been advertised, more so if there has been notification of a third party owning similar marks;
3.      That the Registrar has wide powers to extend time periods under the Trade Marks Act and can provide as many as they like, provided they do not exceed 90 days at a time; and
4.      The Registry had exercised their discretion within the bounds of the law in allowing the extension of time.

The appeal was lodged on 14 different grounds argued in 3 clusters that:

1.      The Registry has now power to grant extensions of time following the lapse of 60 days after the period for commencing opposition proceedings;
2.      The Registry violated the Applicant’s right to a fair administrative action and legitimate expectation; and
3.      The Registry violated the Applicant’s right to a fair administrative action and freedom from discrimination.

The appeal court concluded that the single broad issue was whether the Registry had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.

It is settled law in Kenya that a higher court can only interfere with the discretion exercised by a lower court if the decision maker misdirected his interpretation of the law, misapprehended the facts, took into account matters which he should not have, and ignored relevant ones as a result of which an incorrect decision was made. In other words that one of the 3”I”s was present - illegality, irrationality or impropriety.  The court then dissected the relevant Section and Rules within the context of interpretation jurisprudence (local and from Australia) in coming to the conclusion that:

  1. Notices of opposition should be lodged within 60 days of the date of advertisement;
  2. The Registry has unfettered powers to extend the period beyond that, even beyond 90 days, for good reason.
The Judges then considered the purpose of trade mark law which is to “avoid unfair competition”, the public interest and the nature of the case, that the delay was not prejudicial and not necessarily, unreasonable. Also, that the appellant could not have suffered an adverse expectation because they were at all times aware that extensions were being granted. They also considered the law of review as it is applied in Kenya and concluded that like the High Court, the Registry had acted judicially and fairly.

Hence the appeal had no merit and was dismissed with costs.