Monday, 20 June 2016

What would BREXIT likely mean for IP in Africa?

On a limb .. pondering Brexit
Britain ranks very high on the trading partner lists of most African countries (especially Commonwealth influenced countries) as does the EU so how could a Brexit affect the continent from an IP perspective? A few thoughts.
  • The uncertainty caused by an exit is estimated to result in bureaucratic constipation and a slowing of trade as new agreements are forged between the EU and Britain, and Britain and the rest of its trading partners. This will not be good for African exports, possibly raising costs or restricting the market.
  • An expected initial depreciation of the pound will not be good for export prices but may increase demand and would likely decrease the cost of expensive British imports. The result could see a Africa becoming a greater market for more British brands resulting in more IP filings, and at the same time reducing the profit gap for potential counterfeiters or perhaps opening a counterfeit market for more goods.
  • It would become more expensive to trade with Europe (including Britain) from an IP perspective because ultimately Africa would need to treat them as two different national areas and hence add additional cost eg to protective filings or additional regulatory requirements such as customs recordals or regulatory mandates.
  • Europe trade agreements with Africa would need to be reconsidered and renegotiated with Britain. This would also raise cost and uncertainty. For example, trade agreements that give reciprocal protection for IP eg geographical indications within Europe would likely take time to renegotiate with Britain resulting in higher IP filings in the UK to obtain the additional protection.
  • The influence of the UK courts would also like increase again. For many years prior to Britain forming part of the EU common market these court decisions were highly influential in Africa but eventually gave way to European interpretation (though they are still highly influential). A Brexit would give the UK courts more freedom and African jurisdictions would either find themselves gravitating to them or away. Both options would create more uncertainty for interpretation of IP laws within Africa where there is still a dearth of jurisprudence.
  • Britain is the home of many African businesses wanting to trade in Europe. This would begin to change, resulting in new know how transfer exchanges between Africa and Europe.For example, Africans with British passports may now be restricted to work in Britain whilst businesses may be incentivised to relocate employees (including  Africans) to work in other parts of Europe.
  • The nationalistic fervour that seems to be making the polls as tight as as they currently are would, it seem (possibly as self justification even), perpetuate into  policy decisions and possibly law possibly making it far more difficult to trade freely with Britain or to live there. This could have an effect on everyone seeking a career opportunity including African sport stars. The transfer of knowhow would be affected.

Friday, 17 June 2016

5 Reasons Why You Need To Be At INTA's Building Africa With Brands Conference 1-2 September Cape Town


Why you need to be at INTA's first ever conference on African soil:

1. INTA is the single largest IP industry representative body on the globe meaning that a dedicated INTA conference on the African continent allows Africa and its unique issues, talent, innovation and creativity to be exposed to the largest worldwide IP network there is. This is for you.

2. The CEO of INTA, Etienne Sanz de Acebo, recently expressed the organisation's dedication to the continent at the 2016 INTA annual meeting in Orlando during his address at an invitation only meeting dedicated to Africa practitioners. This is therefore a dedicated attempt to mobilise African thought leadership and members on pan African IP issues. You need to be there.

3. The program has been designed to traverse material and speakers from across the continent, from industry and in house, and is lead and moderated by experienced practitioners.  You won't be disappointed.

4. It's not just a meeting for African practitioners to mix, mingle and network with other Africans but a chance to also meet with people and organisation based outside of Africa, who have an interest in Africa, in you. These could be future clients or contacts. Attendees could be future funders. They could be academics, business people, entrepreneurs, policy makers with useful insights. They could have solutions. You won't know unless you are there.

5. Have you ever been to Cape Town at the start of spring....?

Sign up here


Wednesday, 15 June 2016

IP policies in Africa no. 22: Ghana - update

Launch event 21 January 2016 source
In June 2014, I reported on Ghana's progress towards the development of a national IP policy with the assistance of  the Swiss Federal Institute of Intellectual Property (here).  Their work has come to fruition and Wayne Meiring reports on Managing IP (here) that the country published its policy in early 2016 which will be implemented from September 2016 - 2020.  However, the full text of the NIPPS document is not publicly available.
----------------------------
For further information see:
Government of Ghana Ghana's Intellectual Property Rights Launched
Ntrakwah & Company - Abena Ntrakwah-Mensah Ghana launches a National Intellectual Property Policy

Monday, 6 June 2016

Please Call Me Panel Discussion Thursday 9 June

Just a note that there are still places left to attend the PLEASE CALL ME discussion with Pavlo Phitidis (Aurik and well known Radio 702 guest) and Angela Cherrington (CEO of the Institute of Directors Southern Africa). Legal issues will be covered by Darren Olivier and Ashlin Perumall. The focus of the discussion will be on what the judgment means for businesses, of all sizes. Why is there such hype about this decision? Is it just a case of David prevailing over Goliath or is there something more fundamental that it teaches us?

You can sign up by clicking here for the hour discussion taking place between 8am and 9am, with breakfast and networking from 7am. There is no charge.



Friday, 27 May 2016

Appeal Court Decision in Africa's First Adword Case Provides Clarity

News just in from Bloemfontein is that M-Systems successfully defended the appeal by Cochrane Steel creating clarity that keyword bidding on a competitor's trade mark (on its own) is not passing off or unlawful competition in South Africa. The case will make it difficult to run an infringement suit on the same facts. It brings South Africa in line with worldwide jurisprudence on this issue, is Africa's first case on keyword use and will benefit Google's Adword program and other search engines. The appeal was dismissed with costs.

The history of the saga between market leader Cochrane Steel against new entrant M-Systems is outlined in this post here. The decision, handed down in just over a week from hearing, can be obtained here. Breaking news of Google's developments on their Adword service for mobile devices and native advertising is located here.




Monday, 23 May 2016

Africa is @INTA




From the madness that is INTA, here is a short synopsis of Monday and Tuesday events, table topics and panels that include Africans or cover African related issues.
 
You can also follow the INTA through twitter on #INTA16 where you can enjoy tweets from the likes of @Kisch_IP, @RouseIP, @AdamsAdamslaw, @ManagingIP, @WTRmagazine @WorldIPReview, @INTA, @AfroIP, @Ivoryblossum, @KellyThompsonSA, @DarrenTOlivier amongst others   

Monday, May 23

CM02 Utilizing Regional IP Attachés Representing the U.S., Europe, & Japan Abroad: For Brand Owners and Policy Makers
Intermediate Level

Many national IP Offices station IP Attachés in regions throughout the world to advocate for sound international IP policy and to help protect their respective commercial interests abroad. Learn about the valuable resources and support provided by these IP Attachés and how to utilize them as both sources of information and as allies in trademark protection and anticounterfeiting enforcement activities. Speakers will discuss:

  • As a brand owner or brand owner representative, what can IP Attachés do for me?
  • How do IP Attachés initiate and take part in anticounterfeiting efforts? 
  • What types of policy matters to IP Attachés promote? 
  • What types of outreach and education to IP Attachés provide to the public and to local governments?
  • How do IP Attachés coordinate with their respective home offices and other government agencies? 

Moderator:
Aisha Salem, USPTO IP Attaché for Middle East and North Africa (Kuwait)

Speakers: 
Gerardo Munoz de Cote, Televisa, S.A. de C.V. (Mexico)
Leila Equinet, INPI French PTO (United States)
Riki Kishimoto, Ministry of Foreign Affairs (Japan)
CM21 Anticounterfeiting Strategies in South East Asia and Africa 
Intermediate to Advanced Level


This interactive session will present a case study where brand owners and regulatory bodies are informed of strategies for effectively combating counterfeits in any industry area. Speakers will discuss highlight issues and offer perspectives from each region represented. 

Moderator:
Lara Kayode, O. Kayode & Company (Nigeria)

Speakers:
Kingsley Ejiofor, The National Agency for Food and Drug Administration and Control (NAFDAC) (Nigeria)
William Mansfield, ABRO Industries, Inc. (United States)
Nick Redfearn, Rouse & Co. International LLP (Indonesia)

 CM51 Where Am I? Transporting Your Trademark Career to a Different Country
Beginner Level

It is often said that the world is a global village, and in the world of trademarks this is now truer than ever. This session highlights the benefits to corporations, service providers and law firms of having expats, with their unique skills and experiences, on their team. It will also address the feasibility of transferring licenses to practice in other countries and ways to continue your career without a local license. Expats who have successfully transferred their careers cross border will share their experiences. Challenges and pitfalls to such a professional move are all part of the journey and will also be discussed.

The panel consists of a lawyer from the US who started his own firm in Brazil, an Australian lawyer who immigrated to the US and worked initially in law firms and now is with an international legal service provider, a lawyer from South Africa who is now in-house counsel in Europe and a New Zealand lawyer who is now partner in an international law firm, with her office located in Dubai.

Discussion points will include:
  • What are the unique skills that expats bring to corporations, firms and service providers?
  • Transferring and applying “local” trademark knowledge to a career in a different country.
  • Must one obtain a local law license to work in the trademark field in a country other than where they initially qualified?
  • Ethical considerations in being subject to two separate and possibly conflicting ethical guidelines. 

Moderator:
Kay Rickelman, Spoor & Fisher (South Africa)

Speakers:
Jayne Elizabeth Durden, CPA Global (United Kingdom)
Barry Gerber, Philip Morris International Management SA (Switzerland)  
 
Walter W. Palmer, Pinheiro Palmer Advogados (Brazil)

Africa Reception (5pm - 6pm - Convention Centre) 
(By invitation only)

This reception provides registrants from Africa with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

Tuesday, May 24

RT20 Africa and Middle East Regional Update: Opportunity and Growth Amidst the Turmoil of the Middle East and a Rising Africa
Intermediate Level

An overview on trademark developments in the Gulf Cooperation Council (GCC)/Levant, Sub-Saharan Africa, and North Africa. This panel will discuss the impact of instability in the Middle East on the trademark regime, the GCC Trademark Law, Kuwait accession to the Paris Convention, well-known marks and online enforcement. Experts will look back at the effects of OAPI joining the Madrid Protocol at the end of 2014, and strengthening ties with the power houses of Asia. 

Moderator:
Hoda Barakat, Hoda Barakat Legal Consultancy (United Arab Emirates)

Speakers:
Elie Atallah, Brand Owners' Protection Group (United Arab Emirates)
Karim El Helali, Oracle Systems Limited (Middle East)
Charles Webster, Spoor & Fisher (South Africa)

Friday, 13 May 2016

FridayLite by Nic Rosslee

It’s the ten year anniversary since the most humorous moment in trade mark law

Ten years ago, Guy Goma arrived at the BBC in London for an interview.

Standing around, waiting to be interviewed for a position in the BBC’s IT department, the conversation between a representative and Guy probably went something like:

Are you Guy?

Yes, I am Guy.

Please come with me.

Minutes later, Guy Goma was being interviewed. However, he was being interviewed on BBC News as the tech expert Guy Kewney commenting on the trade mark dispute between The Beatles’ record label, Apple Corps and Apple Computers.


We were happy to see that Guy saw the bright side of the situation and later made a series of celebrity appearances on a number of television shows including Friday Night with Jonathan Ross.

Thank you Guy for bringing us one of the greatest moments in the age of the internet.

We think you did a good job and sometimes feel the same way about the latest trade mark law judgments: surprised.

-----------------------------------------

This FridayLite was brought to you by the pen of Nic Rosslee (Associate at Adams & Adams). Follow him on twitter @nicrosslee. If any reader wants to share a humorous moment on IP for FridayLite, please email us here. For wayback FridayLite's click here.

More on Please Call Me - Not Out of the Woods Yet (Guest Post by Graeme Gilfillan)

Copyright Lawyer: Graeme Gilfillan
Readers will recall this recent post on the recent Please Call Me con court decision which is now followed up by a guest contribution from copyright lawyer Graeme Gilfillan highlighting some key and interesting questions including whether Mr Knott-Craig can now be sued by Vodacom or by Mr Makate (or perhaps  by its shareholders says Afro Leo), the conduct of Vodacom after Mr Knott-Craig's departure, the interface between copyright law and idea protection, and the possibility that the determination of a reasonable payout may still endure for some time. Read his guest post "Not out of the woods yet – a copyright lawyer take on the Concourt’s judgement in the Please Call Me caseby clicking here

The podcast discussion of the case on Power FM on Victor Kgomoeswana's show with Maclean Sibande (CEO of the Innovation Hub) and Darren Olivier (Adams & Adams) is now up and can be located here.

Thursday, 12 May 2016

The USTR Special 301 Report 2016 - Africa in review

Afro-IP regularly reports on how Africa fares in the Special 301 Report issued annually by the USTR (see links to some previous posts below). The 2016 Report was released at the end of April 2016. The generation of the report through a unilateral US process and its goal have been protested by several countries. For instance, as noted by Mike Palmedo in his post on the 2016 report, both India and Chile have registered their displeasure. Palmedo writes:

  • Indian Commerce Minister Nirmala Sitharaman gave a statement to the Lok Sabha (Lower House of the Legislature): “The Special 301 Report issued by the United States under their Trade Act of 1974 is a unilateral measure to create pressure on countries to enhance IPR protection beyond the TRIPS agreement. Under the WTO regime, any dispute between two countries needs to be referred to the Dispute Settlement Body of the WTO and unilateral actions are not tenable under this regime.”

Similarly, some law professors and civil society groups have sounded the same caution about the listing of WTO member states  being a probable violation of  "either the WTO’s dispute settlement understanding or GSP enabling clause." Following the filing of their Joint Special 301 Comment by Law Professors and Civil Society Groups, several scholars and activists participated at the Special 301 hearing (see here for a post hearing report by Sean Flynn and here for the transcript of the full hearing).

Two African states are listed in the priority watch list  (Algeria) and the watch list (Egypt) and several others are mentioned in the 2016 report as summarized, in alphabetical order, below -  

  • pp 23 and 45: Algeria's promotion of local pharmaceutical products and medical devices is cited as the reason why she remains on the Priority Watch List.  For a contrary view, see the AU's comments on Algeria's approach in its Pharmaceutical Manufacturing Plan for Africa: Business Plan at p41. 
  • p9: Burundi's becoming party to the WCT is noted.  
  • p53: Egypt remains on the Watch List because of her "failure to combat reportedly widespread usage of pirated and counterfeit goods, including software, music, and videos, and the failure to implement a transparent and reliable patent registration system."
  • p9: Kenya receives praise for boosting her anti-counterfeiting efforts and preparing draft trademeark and copyright amendments which "strengthen IPR protection and enforcement" (see here for commentary).
  • p9: Nigeria and  other Sub-Saharan states are encouraged to "similarly to address the factors that undermine effective IPR protection and enforcement." Nigeria is also mentioned at p 15 where it is noted that she is "reported to have [an] ineffective or inadequate IPR enforcement system". She is also mentioned at p20 in relation to her government procurement regulations and their impact on the trade secret protection of source code. Her final mention is at p22 where her 2013 Guidelines for Nigerian Content Development in Information and Communications Technology (ICT) are cited, with disapproval, for their promotion of local production or the utilization of Nigerian material and labor across a broad range of ICT goods and services "at the expense of of foreign firms, investors, and multinational enterprises."
  • p10-11: South Africa's participation with the US and Brazil in the WIPO Re:Search Consortium is lauded as enhancing access to medicines. (For fundamental reform suggestions to enhance access to medicines see here for a post on the UN's High Level Panel on Access to Medicines (HLP) hearings on Johannesburg).   A note is also made of US-South Africa engagement on GI-related concerns at p24. 
  • p9: Tanzania's joining of UPOV 91 is noted with approval. For a robust discussion of the merits this development see Chidi Oguamanam Breeding Apples for Oranges: Africa's Misplaced Priority Over Plant Breeders' Rights (2015).
The USTR's views are not the last word on what is appropriate for African IP regimes and each state would do well to consider other views and its own context in arriving at its response, if any, to the above US Special 301 statements. In the words of South Africa's Minister of Trade and Industry at the WIPO International Conference on Intellectual Property and Development in April:
  • "While generalized conclusions can offer insightful guidance, it may not be applicable at all         times to all countries ... it is vital that research is undertaken in a manner that context specific,   taking into account the level of development of the country under consideration, with a clear     focus on its industrial profile and capabilities.” (For a full report on his comments see W New    South African Trade Minister Opens WIPO Conference With Call For Appropriate IP  IP-          Watch, 7 April 2016.)


------------------------------------------------
The U.S. is watching you.... Monday, 3 June 2013
USTR Special 301 Report - Monday, 4 May 2009
African Countries Suggested for the USTR Special 301 Report - Saturday, 21 February 2009

Tuesday, 10 May 2016

Crowd-sourcing information on CMOs

From Ifeoluwa Olubiyi, a Phd Research Fellow at the University of Ilorin, Nigeria, we have received the following survey questions:

1. Does the copyright law in your jurisdiction prohibit multiple collecting management organisation or collecting societies for a class of works?

2. Section 39(3) of the Nigerian Copyright Act provides that the Nigerian Copyright Commission shall not approve another collecting society (CMO) in respect of any class of copyright owners if it is satisfied that an existing approved society adequately protects the interests of that class of copyright owners. This provision has led to litigations in Nigeria by a CMO, Musical Collecting Society of Nigeria, which was unable to get the approval of the Commission to operate as an approved collecting society for musical works where it sought to invalidate this provision.
Is there such similar provision in the copyright law in your jurisdiction?

3. Are there any judicial decisions on or interpreting this provision or relating it to other legislations such as the constitution in your jurisdiction?

4. How justifiable is such a provision in the light of international copyright treaties particularly the TRIPS Agreement and the Berne Convention?

You can answer in the comments to this blog or, if you email this blogger, an email exchange can be arranged.
Thanks in advance!

Zimbabwe rejuvenates Zimbabwe Institute of Patent and Trade Mark Agents (ZIPTA)

Exciting news from Zimbabwe is that ZIPTA has been unzipped!

A thriving local IP community has got together to resurrect their institute. It has an impressive logo and new Facebook page (like them!) under the new and energetic leadership of Brenda Matanga. According to the tip-off:

"The New Council held its maiden Event at a local hotel on 7 April launching its new brand and website.

Discussion was to inform members of this association of IP attorneys on its mandate - The Role and Function of ZIPTA, the vision of the New President and ways in which the association can fulfill its objectives,work together with other like minded organizations in the region and internationally and become the Voice of the IP profession in Zimbabwe.

The President encouraged the institute to look at SAIIPL,CIPA,ITMA etc and learn a thing or two from them,as they seem to be well established.

ZIPTA is an institution statutorily created- in terms of Sec 59 of the Trade Marks Act ( Chapter 26:04)and Sec 64 of the Patents Act(Chapter 26:03)"

Here's wishing that they can establish a real voice for Zimbabwe and perhaps set a model for the rest of Africa to follow. They have Afro-IP's support.

Let's see how many likes we can get for the FB page!

The New Council: Chris Kimberley,Alec T Muza,Tafadzwa R Mugabe,Dorothy Pasipanodya,Yeukai Kundodyiwa and Brenda Matanga.

Tuesday, 3 May 2016

The "Sharing Economy" - in perspective

For practitioners and academics in IP law in Kenya, the following questions are asked all the time: "Isn't IP fairly irrelevant in Africa? After all, African societies are based on sharing and community." It's an uncomfortable inquiry, and has been a struggle to answer, perhaps until now.

At a recent party, this Leo observed from a distance his 7-yr old cub playing with friends. At one point a ball changed hands between children, and Mama Leo smiled to me and said "Look how well he is sharing!" I walked over to praise him and, to my surprise, found him crying. "That kid stole my ball!"

A sharing economy is fine, if it's voluntary sharing. Involuntary sharing is more properly called theft. The difference between "sharing" and "theft" can be obscured by distance or ignorance.

When people look at Kenya and say we should forget traditional types of IP because of our sharing traditions, almost invariably such people are not inventors who have had their own ideas taken and commercialized with no beneficial return for their efforts. In theory, we would all love to have a sharing economy, but in practice, when it is your hard work that is "shared" without your permission, IP law starts to sound pretty necessary. In matters of IP, perspective matters.

This is not to say that there is no place for sharing. The Fremium model is well known as a successful business model for music, software, and other items. Open source and Creative Commons licenses have been successfully used to build large and thriving businesses. These models work in Kenya just as well as they work in the US and EU. The important point is that such sharing should be voluntary and intentional, rather than imposed because of an expectation for a particular society.

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. You can now view this here.

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.