Morocco presses on with EPO links

A media release from the European Patent Office (EPO) signals some activity in the field of enhanced cooperation between that office and the North African Kingdom of Morocco.  As the media release reports:

Munich, 20 June 2013 -- EPO President Benoît Battistelli and the Director-General of the Moroccan Industrial and Commercial Property Office (OMPIC), Adil Elmaliki, signed a set of co-operation agreements in Munich yesterday to strengthen the patent system in both Morocco and Europe [this is diplomatic: in reality, any strengthening of the patent system in Europe through cooperation is, sadly, going to be relatively small]. The agreements concern, in particular, renewed access to the EPOQUE Net search system for OMPIC examiners, plus various training programmes and exchanges of expertise between the two offices. 

President Battistelli paid tribute to "the vision that OMPIC has developed for the Moroccan patent system and is implementing with rigour and consistency." Director-General Elmaliki in turn stressed "the importance for Morocco of working bilaterally with the EPO; this co-operation is reciprocal and benefits the strategies of both partners." 

The EPO and OMPIC have been co-operating for ten years now, entering into a strategic partnership with the signature, at the end of 2010, of the first agreement on the validation of European patents. This agreement, now being ratified by Morocco, aims at making the country more attractive for investors while at the same time raising its capacity to support innovation. Its implementation will go hand in hand with capacity-building at OMPIC, in both the examination of Moroccan filings and in the dissemination of technological information in the country.

The validation agreement will enable users of the European patent system to validate their applications and EPO-granted patents in Morocco in addition to 40 European countries. European applications and patents validated for Morocco will have the same legal effects there as Moroccan ones and will be subject to Moroccan law. 

Uganda: Court battle over look-a-likes

This post has been updated from Uganda: Bottler goes to court on look-a-likes

Tony Kakooza reports from Kampala that "A new battle over trade mark rights is brewing in the Uganda beverage industry between the Coca-Cola and Riham Cola brands. Century Bottling Company (CBC) runs the Coca Cola brand in Uganda while Riham Cola is owned by Harris International Limited (HIL). CBC The Coca-Cola Company is seeking an injunction from court against further infringement by Riham over confusingly similar products on account of similarity in brand colours, packaging, content colour and so on."

According to Sunrise, who sourced the pics above:

,

"Business pundits had seen it coming for a long time. Riham Cola is a sensational at (sic)  has seen the new product taking supermarkets, bars and other outlets across the country by a storm.

At the moment thanks to its low price of Ushs1000 as well as its maker's aggressive marketing strategy that has seen the new product taking supermarkets, bars and other outlets across the country by a storm.

At funerals, Riham Cola is now replacing Mineral Water because it goes at the same price with  (sic) bottled water. Even the prestige of drinking soda as opposed to water among the village folks, is driving Ugandans into hooking to Riham soda.

Moreso, at a cost of Ushs2000, one drinks more soda with Riham Cola's 640mililiters (ml)--as compared to 500mililitres of Coca Cola at the same price.

For people on  the move, Riham Cola is also convi[e]nient as one can buy the soda and take the bottle, dri[n]king it later."

Aggressive competition is not new to The Coca-Cola Company who defend the world's most valuable brand over the last decade, across the globe, on a daily basis. What seems to be in issue for CBC, the bottler, The Coca-Cola Company is the look-a-like packaging which Riham have apparently been slow to change.

Tony observes that "Ugandan trade mark legislation was only recently reformed with the passing of the Trademarks Act No. 17 of 2010 which repealed and replaced the colonial era legislation. The fairly new statute made improvements on registration and enforcement procedures in the protection of trademark rights." 

He mentions that "according to sources from Harris International Limited (HCI), they are shocked by CBC  The Coca-Cola Company rushing to institute an infringement suit against them when negotiations between the two companies were still on-going. " 

Sunrise reports that HCI have filed their defence and that ".. the matter will proceed to an arbitrator, to see if the two parties can sort out their differences. If they fail to agree, the case file will go before Lady Justice Hellen Obura, who will kick off the hearing by framing issues that the two principals would want court to resolve."

Afro Leo looks forward to further updates. It is interesting that the bottler seems to have taken action, not Coca-Cola and also, that this appears to be more of a passing off case on look-a-like products than one strictly on trade mark infringement. [update - see comments below] HCI were apparently prepared to change their bottle packaging but are now counterclaiming for damages. It is a proper fight, in the market and, potentially, in the court.

A review of African official IP websites: no.50: Togo

As this Leo attempts to review the online presence of Togo's intellectual property (IP) office, he is nicely helped by one of our readers who goes by the name of Maria Georgieva - according to Google's translation. Maria has kindly directed us to this website www.innovations-togo.org which appears to have a searchable database for patents.

This Leo has had a look and he is not entirely sure where the owner, Ministry of Industry, Innovations and Technology, is going with this. Otherwise, the web presence of Togo's IP office has not changed since last year. He is conscious of the fact that Togo is one of the least-developed countries (LDCs) that has benefited from the TRIPS transition period extension reported earlier on this blog. Perhaps, they do not need to bother with a website for their IP office.

Same interests, one community, different locations.
Source: here

Well, this is not the first time Afro-IP's friend, Maria, has come to this Leo's rescue as he struggles to locate the existence of some of these websites. Afro Leo is always extremely grateful for any little participation or help from our ever-growing community because Afro-IP is here to inform us all regardless of where we are located. 

Thank you, Maria.

All the talk about TRIPS deadline extension …

Here's the final guest post from Chijioke Ifeoma Okorie, who has now joined the regular Afro-IP team:

The Least Developed Countries’ agitation for an extension of the deadline within which they must comply with TRIPS reminds me of the decision of Nigeria’s High Court affirmed by the Court of Appeal in CA/L/573/2008: Microsoft Corporation v Franike Associates Limited. In that case, Microsoft had sued Franike claiming, in the main, for an order restricting Franike from infringing Microsoft’s copyright in its software programs and products (“WINDOWS” especially). Franike provided no defence to Microsoft’s allegations. Rather, it challenged the jurisdiction of the Federal High Court to entertain Microsoft’s claims on the ground that Microsoft has not provided proof of reciprocal protection of copyright laws between Nigeria and United States of America. The Court of Appeal affirmed the ruling of the Federal High Court and agreed with Franike that the Federal High Court does not have jurisdiction to entertain suits relating to US copyrights in the absence of a certificate from the Nigerian Copyright Commission certifying that Nigeria and USA are co-signatories to an international agreement relating to copyright or a Gazette from the Minister in charge of copyright matters extending the provisions of the Copyright Act, 2004, to copyrights from the United States of America.

The Nigerian Copyright Commission was quick to the rescue and published a notice on its website stating that by virtue of the Schedule to the Copyright (Reciprocal Extension) Order of 1972, US works are protected under Nigeria’s Copyright Act. If the courts will not examine an alleged case of infringement of foreign copyright work unless a certificate showing reciprocity is produced, is an extension of compliance deadline any more favourable for other countries?

Hurray! LDCs offered 8 years TRIPS extension: Enough or not enough?

This blog has followed the TRIPS extension debate and development this year here and here since over 70% (25 out of 34) of WTO member countries categorised as least-developed countries (LDCs) are in Africa. Today, this Leo learns from the WTO press release (dated 11 and 12 June 2013), that a decision has been reached on TRIPS extension for WTO LDC members. 

The WTO Council for TRIPS have agreed to extend the transition period for LDCs to implement the TRIPS Agreement until 1st July 2021 - with an option to seek further extension beyond 2021 ('The 2013 transition period agreement') or until such a date on which they cease to be LDC, whichever date is earlier. Without this extension, LDCs would have been expected to provide for intellectual property rights protection stipulated under the TRIPS Agreement from 1st July 2013 pursuant to the initial extension in 2005.

This Leo highlights these key points although 2 and 3 are closely linked:

1. Patents for pharmaceuticals intact: The 2013 transition period extension agreement does not apply to the current expectation on LDCs to provide for patent protection for pharmaceutical products from 1st January 2016 ('The 2002 transition period agreement'). (Afro Leo notes that LDCs have the right, like they have successfully done this month, to seek for a further extension of the 2002 agreement)
2. Non roll-back provision: Unlike the stronger wording in the 2005 transition period extension agreement, LDCs have now only expressed a willingness not to reduce or do away with their current IPRs protection if they have already voluntarily implemented TRIPS. (Afro Leo thinks that most have voluntarily done so or probably coerced to do so by trading partners). 
3. May continue to implement and/or apply TRIPS: LDCs may continue with their progress in TRIPS implementation and fully utilise its flexibilities such as introducing compulsory licensing to get around patent rights and this does not count as rollback. Developed countries are also expected to offer incentives to support LDCs' technological base.

Comment

Basically, the 2013 extension agreement does not entirely exempt LDCs from implementing and/or applying TRIPS. They are free to implement TRIPS if they wish to do so and as a gesture of goodwill, have expressed an intention to take necessary steps in readiness for the 2021 implementation deadline. In addition to this kindness, they have also agreed to act in good faith by not reducing or scrapping the protection they already provide for under TRIPS.

Obviously, this news will not be all that positive or encouraging for some while others may well think it is a fair compromise. (Whichever side you sit on, even WTO's news headline 'The least developed get eight years more leeway on protecting intellectual property' sounds as if the extension is somewhat not enough or fair, says chuckling Afro Leo). 

Fikremarkos Merso argues, as reported by this blog here, that "...Extending the transition period under TRIPS is just one step. There is also a need to address the underlying issues beyond extension such as helping LDCs build their technological base and better integrating IP and development, rather than focusing on mere implementation and compliance. Comprehensive work is required to identify trends, gaps, successes and challenges facing African LDCs in this area. Finally, the issue of the LDC TRIPS extension should be considered in the context of LDCs that are in the process of WTO accession."

Considering that this Leo is not a development expert, he currently takes no firm view on whether an eight (8) year extension or an indefinite extension is the right or wrong solution. What he is eager to see is more transparent and useful IP technical assistance and capacity building initiatives which would enable both developing countries and LDCs develop sustainably and navigate TRIPS for their respective socio-economic development and needs. (Afro Leo finds it interesting that the enhanced technical cooperation provision has been dropped this time around. So back in 2005, developed countries were expected and eager to assist developing countries and LDCs in need of TRIPS implementation but this is now irrelevant or not needed in the 2013 extension agreement. How come and why? And, what about those LDCs who have been assisted to implement TRIPS considering that they agree not to reduce or scrap whatever IP regime they have put in place. Essentially, the lucky ones are those who have not put anything in place to begin with)

We welcome your general comments on WTO's decision, including on the following:

(a) Do you think 8 years is enough?

(b) Do you agree with Fikremarkos Merso's view? 

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For a history on TRIPS and LDCs, see here
For global academics's expert support for unconditional extension of TRIPS, see here
For ICTSD's commentary on this, see here and for IP-Watch, see here

Afro-IP at IPKat's 10th anniversary: Thoughts and afterthoughts......

Can you see this Leo on the left?

This Leo was glad to join the IP community to celebrate IPKat's 10th birthday party at Allen & Overy last Wednesday. The event was packed full of IP enthusiasts (practitioners, scholars and so on) from the UK and beyond with distinguished guests including notable members of the senior judiciary. The agenda focused on topical IP, and other related rights, issues in the digital age presented by the IPKat team.

He picked interest in some of the Eurocentric issues discussed or views shared at the event which, to his mind, serve as useful lessons when any other continental IP regime and/or institution is contemplated. These include complexities and questions surrounding whether important points of law or matters should be decided or handled by national courts or institutions or by a supranational entity and the impact of language and cultural differences.

One of the panellists on the panel discussion session was WIPO's Director General (WIPO DG), Francis Gurry. Fearing that Mr Gurry may escape soon after the event or engaged by others thereafter, this Leo jumped on the opportunity to put the following questions (as relevant to this blog, here and here) to him:

(1) What is WIPO's position on the establishment of PAIPO?

This Leo understands from the response that WIPO is playing a supporting role behind the scenes and that the main work of the new organisation would be policy-based. In his response, Mr Gurry also recognised and appreciated the role of OAPI and ARIPO but felt that more can and should be done if the continent is looked at as a whole.

(2) What are WIPO's priorities for developing countries - especially, in the African continent?

Mr Gurry started off with an upbeat message on the economic growth seen across the African continent. He then went on to tell the audience that WIPO continues to support African countries with IP technical assistance in areas that would stimulate their local economies such as in agriculture and technology (with a focus on access). This Leo also picked up from his initial response to Sir Richard David Arnold's question on the state of the global IP regime that WIPO's role, holistically, has significantly diminished due to, among others, bilateral arrangements. (Afro Leo wants to know whether this effectively means that WIPO has no influence across Africa)

Further conversation....

Luckily, Mr Gurry joined most of the Kats and other distinguished guests for a post-event dinner where this Leo furthered his conversation with him. This Leo was briefly told of the work and structure of the Africa Bureau and learned of, or perhaps confirmed, Tanzania's enthusiasm on the opportunities presented by IP regime as well as Kenya's rewards in the area of agriculture. Another point picked up from the chat between former Kat, Dr Nicola Searle (the Katonomist, as she then was) and Mr Gurry was that some countries are still in 'Transition' hence WIPO's dedicated support.

Further thoughts....
How Mr Gurry started his response to question 2 arouses one of those moments when this Leo often finds himself thinking deep about the correlation between economic development and IP (respect and enthusiasm about the latter). For example, China's WTO status depends on whose camp you are on but she surpassed the United States, a clear-cut developed country, in terms of IP fillings according to WIPO's report in 2012. Yet China is still perceived as lacking respect for IP. (Does it really mean anything tangible to have the most IP fillings in the world? As China becomes richer with increased admiration for quality, and more technologically advanced, would she end up becoming a staunch guardian and evangelist of IPRs like the U.S?) Finally, if this Leo had learned of the TRIPS deadline extension decision before now (see previous Afro-IP post here), he would have obtained the view of WIPO's DG as well.

Conclusion

Little Leo had a good time
Source: here 

This Leo was enriched at the event. He even managed to utilise the networking opportunity to get the thoughts of some IP practitioners and that of an IP judge (whom he is fond of) on a selfish matter - though the latter's view was a reality check. Most importantly, he is very grateful for the invitation and warm hospitality shown by his Kat friends (especially, his mentor and friend the IPKat himself, the AmeriKat, former Katonomist and Dr Birgit Clark). My fellow Leos would be glad to know that this Leo had a good time and felt like a Kat on the day.

Afro-IP wishes the IPKat blog many more anniversaries. Keep an eye on the IPKat blog for the informative but fun PowerPoint slides plus the recording from the IPKat's 10th birthday party.

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Before you import plants into Kenya read this here
For fair trade and flower farms in Kenya, see here
Is IP a power tool for economic development & wealth creation? see here
IP and access to clean energy technologies in developing countries, see here
For the African Court on Human and Peoples’ Rights, see here
Not everyone is a fan of the Unitary Patent system in Europe, see here

Anti-Counterfeit Friday - call for assistance

tackling counterfeet is much easier

It might be fish on Friday, lunch on Friday, movies on Friday or perhaps even, if you are really lucky, sex on Friday, but for Afro-IP it has always been a more serious pastime - Anti-Counterfeit Friday - a series of posts highlighting the plight of Africa's single largest problem affecting IP- counterfeiting.

Today, on the back of what the World Customs Organisation and the Institute of Research against Counterfeit Medicines are claiming, in a press release, as an operation of "unequalled scale across 23 African countries" in which "more than 1 billion illicit products [were] seized in 10 days, of which 550 million were medicines", this blog is calling for information to be sent here to help resurrect the weekly post. If you would like to volunteer to help compile and publish the post, please also let us know.

Virtues of the registered Trade Mark

As a post script to Mabel's post on Dean's inaugural lecture: Deprivation of Trade Marks through State Interference - plain packaging in South Africa, here are some reminders on the value of the trade mark that Afro Leo sent to the accounting folk at Accountancy SA, recently.

To many the registered trade mark is simply a document that records a business name at the local trade mark office. It's not compulsory to do and because it can take years to get registered, it is frequently dismissed as an irritation. So, it's relatively cheap, but why should we be paying close attention to the registered trade mark and those who administers them within a business?

Well, in short, it is the title deed (ie property) to a brand. The brand is, of course, everything that encapsulates and communicates a business, everything that keeps customers coming back. It may be a name, it could be a slogan, it could be colours, it could be three dimensional, it could even be a smell. All of these are capable of being registered as trade marks.

harping on, but still virtuous

So then, what's the fuss? Well, properly obtained, these title deeds can be listed in the asset register. They can be valued, used to raise finance and sold separately from the business. They can be let for cash or be allowed to sit passively, preventing others from communicating their offerings in a confusing manner. They protect the value generated by the brand. They protect market share both actively (in the hands of an attorney) and passively (just by sitting on the register).

But just like a Verimark ad - that's not all! The trade mark can be attached in legal proceedings or they can be used to transport goodwill into a diversified space that may just provide a hedge for a business, or enable it to grow.

They can be transferred to enable efficient tax planning or to reduce the exposure of assets to business risk and creditors. Brand protection using registered trade marks can be over 50% less costly than alternative methods such as passing off, and there is significantly less risk to the proceedings. Obtaining a registered trade mark reduces the risk of the dreaded urgent court order for a product withdrawal, considerably. In the growing social media space, the registered trade mark is frequently the only method of safely removing hijacked or rogue sites aimed at discrediting a business or someone holding a business to ransom for a fee.

Still not convinced?

Consider the recent ISO standard (ISO 10668) for brand valuation, which requires an audit of the legal protection of a brand as a fundamental step in the valuation of the brand. Skype's initial public offering (IPO) in 2010 disclosed an on going legal dispute with BSkyB as a material threat to its brand, which illustrates the correlation between proper trade mark management and the value of the business.

So, the next time a business finds itself assigning a junior administrator to look after a seemingly endless list of trade mark enquiries and small bills, or dismiss them as an irritant, please stop and reconsider. That person guards probably, the most important asset in the business

Open Educational Resources – a Nigerian perspective

From IP commenttator Chijioke Ifeoma Okorie comes another guest post, this time addressing a sensitive cultural and commercial issue with strong copyright overones: the deployment of open educational resources. Writes Chijoke:

Intellectual Property Watch has referred to the recent paper published by the International Publishers’ Association (IPA) which expressed concerns about the sustainability, quality and efficacy of Open Educational Resources (OERs). On sustainability, the IPA argues that there is no motivation to keep OERs updated because they are free to use and adapt. The IPA further contends that the quality assurance mechanisms, which are readily available to ensure that publisher-developed materials are thoroughly researched and designed, are not available for OERs. The IPA also takes the view that there is no reliable analysis which shows how much OERs have improved learning outcomes. 

Many reactions have trailed the IPA’s position paper, from arguments that publisher-developed materials and OERs are not mutually exclusive to arguments that publisher-developed materials are even more prone to error given that the primary aim of publishers is to get books to the market as quick as possible. 

While not denying the importance of sustainability and efficacy (quality is always very crucial) to any educational material, those are not in my view, the most important issues for Nigeria and I daresay, Africa. 

What are important issues for Nigeria? 

Access to affordable education: what is the age of recommended textbooks in Nigerian universities? I will provide an example. The recommended textbook for a third year law student taking Contract law in the university is the Second Edition of Professor Itse Sagay’s Nigerian Law of Contract, published around 1999, which costs about N2,000. Chitty’s Law of Contract used mainly by many established law firms costs about N125,000 (£495). Would students who have no choice but to read Sagay not be better educated if they had OERs to make up for any lapses in textbooks caused by changes in law? Court judgments can be made available for students to access on BAILII-like sites. 

Eradicating (Reducing) piracy: quite frequently, the Nigerian Copyright Commission (NCC) impounds thousands of pirated copies of textbooks imported by book marketers to sell in Nigeria. If educators and students were to make (greater) use of OERs, wouldn’t that reduce the incentive to purchase (or sell) pirated copies of commercial textbooks? 

Stage of development: the flexibilities of cost, freedom to distribute and adapt are more suited to Nigeria’s stage of development. If the main goal is to ensure access to education, then, OERs by virtue of the flexibilities mentioned above, would ensure just that and even more.In my view, OERs have not begun competing with publisher-developed materials in most of Africa. What should occupy our minds more than the IPA’s questions should be: how do we make OERs available and accessible to educators and students? How do we ascertain the quality of OERs available for use? 

UNESCO raises other issues in its Report here. 

In any event, the propriety or otherwise of how much OERs should be used would be better addressed by educators and also students, rather than the IPA which is an interested party. 

For anti-IPA Position Paper, see here. 

For the myth of commercial textbook reliability, see here.

Uganda’s Hip-Hop President wraps up rights in the Rap!

Another very interesting and thought provoking post from Tony Kakooza (Sipi Law) in Uganda who has now joined Afro-IPs blogging team:

Deriving Copyright from Folklore: Uganda’s Hip-Hop President and the battle for cultural ownership.

The Office of the Registrar of Copyrights in Uganda has been handling a rather interesting case involving the President of Uganda in what can be seen as a battle over ownership of culture. The history of this dispute goes back to the Presidential campaigns in 2010:

In October 2010, the President employed the music production prowess of Kampala music artist Richard Kawesa to record a rap song within State House that was titled: Do you want another Rap? This was an innovative technique to especially capture the hearts of the young voters before the looming elections the following year. The rap song achieved its purpose, with President Museveni taking more than two-thirds of the electoral vote (approx. 68%) in February 2011.

Conversant of his Intellectual Property rights and the huge success that would follow the song (See YouTube video here), the President decided to register his copyright much to the chagrin of the Ankole community of which he is a part of. Two senior members of the Ankole Community, Mr. Mwambusya Ndebesa and Dr. Katono Nzarwa Deo filed an objection to the registration of copyright in the Registrar’s Office at the Uganda Registration and Services Bureau. The basis of their objection, briefly, was that the rap song is not original, having been derived from Ankole folklore which is in the public domain and constituting public property. The argument was that the poems from which the song derives, had been recited in the Ankole community for hundreds of years and thus the President had no right to grab ownership of the poems through his rap song.

This matter is highly intriguing for a number of reasons: The Uganda Copyright and Neighbouring Rights Act of 2006 has a flimsy provision for Traditional Cultural Expressions/Folklore. Section 5 simply lists Traditional Folklore as part of the works eligible for Copyright protection without any appreciation as to the underlying differences between Folklore and works of copyright. Secondly, as this matter raised alarming bells over the appropriation of culture, again we find ourselves asking – who owns culture and who controls the means of production of culture such as through Cultural expressions? There have been on-going debates on related questions globally for over twenty years and WIPO is still tussling over the matter through the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore(IGC Committee) with little progress to date.

It is noteworthy that the very person appropriating cultural expressions in this matter was the President of Uganda, but would it have made any difference if it had been someone outside of the Ankole community? Eventually, in her ruling on the objection to Copyright registration (delivered February 14, 2013), the Assistant Registrar of Copyright, Ms. Mercy K. Kainobwisho granted the President’s registration of copyright as a derivative work.


Comment:
Afro Leo wonders how the two draft pieces of TK legislation competing for Zuma's pen in RSA would handle this situation? Would the community (assuming it could be identified) be able to enforce their rights (assuming they could be identified) under each piece of legislation and how would it work? And could it be recorded? It is interesting that President Museveni opted to have the work registered in his own name.
If you are viewing this on the blog (and not via email) you can listen to the Rap (presumably under licence or an infringement exception!) below:

Explained: South Africa's National Recordal System for Indigenous Knowledge

Last month, fellow blogger, Caroline Ncube, brought us the news that South Africa has launched a National Recordal System (NRS) for indigenous knowledge (IK). In her piece, Caroline raised some questions in search of thoughts or responses from readers on this development. Thankfully, a friend and ardent reader of Afro-IP, Tom Suchanandan (who is also perfectly placed to respond) has come to the rescue with comprehensive answers to Caroline's questions. Tom writes accordingly:

1. Will the NRS be used by the Companies and Intellectual Property Commission to verify or confirm disclosures made under s30(3A) of the Patents Act? 

The NRS has been designed as an [potential] interdepartmental instrument that will facilitate research and development, prior art for intellectual property administration, and management and examination of bioprospecting information on genetic resources associated with indigenous knowledge and communities.  The NRS provides for indigenous knowledge that are associated with biological resources and the documented data is linked to a person, a community, a geographical area, biological resources. The latter is supported by multi-media which is also geocoded to a specific area.

In terms of the Companies and Intellectual Property Commission (CIPC) under the Department of Trade and Industry,  CIPC can utilise the NRS for prior art searches as part of its a search and examination service, making the NRS critical element in  preventing the granting of patents in error and also biopiracy. In doing so, the NRS adheres to a strict set of rules in terms of granting access to the system. Firstly, all information that is documented on the NRS, must be accompanied by a prior informed consent agreements, information transfer agreements, and a Memorandum of Agreement that is signed between each community participating in the project and the Documentation Centre which facilitates the recording of IK with the communities.

The NRS [can] also serve as an indigenous knowledge hub for a number of government departments including the Departments of Environmental Affairs, Trade and Industry, Health, Agriculture, Forestry and Fisheries, and Rural Development and Land Reform. For the Department of Environmental Affairs, it will create legal certainty because the NRS will provide a legal benefit-sharing framework, ensure that minimum standards in Information and Material Transfer Agreements in respect of IK research are available, and assist in the identification and location of knowledge holders in the bioprospecting permits granting process.  The legal framework provided by the NRS makes it a suitable repository for the information they have been collecting. 

2. How , if at all, does the NRS fit into the IP protection of TK scheme provided for in the IP Laws Amendment Bill No.8 of 2010? In particular  how will it interface with the proposed National Database of IP protected TK? 

The National Recordal System  has been developed in phases with the first phase focusing on African Traditional Medicine (ATM) and Indigenous Foods (IF) for implementation because these two domains are most at risk in terms of Intellectual Property exploitation and bio-piracy. Mitigating this risk required careful design of the system, particularly in terms of security and the management of the data. Care was taken to design the National IKS Management System (NIKMAS) such that it will support, on a national scale, the recordal, management and protection of Indigenous  Knowledge with potential benefits, especially in the absence of relevant legislation (i.e. Sui Generis on IKS). The importance of securing confidential and secret information against unauthorised exploitation was also a major design consideration.

In doing the latter, the IP Laws Amendment Bill No 8 of 2010, are but one of the legislations that was considered in designing the system. Because of the holistic nature of IK, the NRS acknowledges the limitation s of Intellectual Property regimes, and considers the current copyrights, trademarks, buiodiversity and related legislation. The NRS therefore complement the Bill. For instance, the Bill focuses on IK that resides in the public domain whereas the NRS focuses on unrecorded or uncaptured IK, i.e. IK not in the public domain. The NRS has been designed to incorporate –and or link to similar databases in order to optimise its use and functionality. NIKMAS which is the ICT backbone of the NRS will therefore provide a single access point to IK captured at distributed points and will contain links to other resources and databases containing relevant IK information managed in various institutions or government departments.

3. Will the NRS be shared with foreign patent offices to prevent misappropriation of South Africa's TK? India's Traditional Knowledge Digital Library (TKDL), upon which the NRS appears to be loosely modelled, is shared with the EPO. This has reportedly resulted in the rejection of some patent applications (per WIPO Magazine ).

  Yes, the NRS has been designed to give access to International Patent Offices to conduct searches on IK that has been documented in the system in order to prevent misappropriation of South Africa’s IK. This is based on the requirements for allowing patent offices to search the NIKMAS, and developed specifications of patent offices to search the NIKMAS. For searches and examinations, approved scientists, researchers and Intellectual Property Offices are allowed limited authenticated access to confidential IK information as determined by adherence to the legal framework requirements.

4. Will the NRS be accessible to the public? 

Yes, the NRS will be accessible to the public. There are 3 levels of access:

(a) Open access: Community promotional information as well as recorded knowledge that is already in the public domain.

(b) Restricted access: Authorised access to limited detail on recorded IK that is classified as confidential.

(c) Confidential access: Authorised access to full detail on a specific IK entry.

The NRS initiative IP objective is to prevent placing undisclosed IK into the public domain. The levels of access is therefore determined by a strict set of rules for example:

(i) .      A member of the public can gain open access to information that is in the public domain for the purposes of education, tourism or awareness. Open and confidential information is preserved, but is made available to holders of indigenous knowledge and communities who will always have unlimited access to their own knowledge.

(ii) .      For searches and examinations, approved scientists, researchers and Intellectual Property Offices are allowed limited authenticated access to confidential IK information as determined by adherence to the legal framework requirements.

(iii) .      For development purposes, authenticated and approved scientists and researchers are given full confidential access to a single IK story on condition that all relevant legal agreements are signed, including a benefit sharing agreement.

Comment

Afro-IP is extremely grateful to Tom for taking his time to enlighten us all. This is sort of reader participation Afro Leo loves to witness. With the recent spike in activity on this weblog, one wonders where the next reader response to pressing and topical matters raised on Afro-IP would come from. We shall see. 

Deprivation of Trade Marks through State Interference - plain packaging in South Africa

We are very grateful to publish a guest post from Adv Mabel Jansen (Senior Counsel) on the inaugural lecture of Dr Dean in his capacity as the Anton Mostert Chair of Intellectual Property. 

Dean tackles a controversial and topical issue  around plain packaging for tobacco products making a case that any related legislation affecting trade marks in South Africa could be unconstitutional. The lecture is neatly summarised by Mabel below:

Dean

"With effect from 2011, Dr Owen Dean, author of the well known textbook Handbook of South African Copyright Law, was appointed as a professor at the Faculty of Law at Stellenbosch University, where he is the incumbent of the Anton Mostert Chair of Intellectual Property.  Dr Dean delivered his inaugural lecture as Chair on 21 May 2013 in the Conservatory at Stellenbosch. (Afro Leo says check here for background.)

The topic of his lecture was “Deprivation of Trade Marks through State Interference”. The focus of his lecture was the global war being waged against the use of tobacco products. The formal declaration of this war was issued by the World Health Organisation (WHO) in the WHO Framework Convention on Tobacco Control which was signed by 169 countries.

He pointed out that the objective of the Convention is far removed from trade marks.  It provides in article 11 for member countries to adopt effective measures to ensure that tobacco packaging and labelling do not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics, health effects, hazards, or emissions. Furthermore, any outside packaging should carry health warnings that should carry health warnings that should cover 50% or more of the principal display area.  The Convention further makes provisions for Guidelines to be issued in terms of which:

“Parties should consider adopting measures to restrict or prohibit the use of logos, colours, brand images or promotional information on packaging other than brand names and product names displayed in the standard colour and font style (plain packaging).”

The motivation for these Guidelines is that plain packaging may increase the noticeability and effectiveness of health warnings and messages.

Dr Dean emphasized that this stipulation is not peremptory and that it is open to member countries not to implement it.  Furthermore, he contended that the Guidelines have given rise to a faulty premise that legislation should be adopted allowing only brand names or product names, depicted in a plain manner, to be displayed on the packaging of tobacco products. Australia has followed this route and has adopted the Tobacco Plain Packaging Act 2011 (the TPP Act).  Dr Dean pointed out that other countries are following suit and that Namibia and New Zealand, for example, are working on legislation to restrict the use of trade marks on the packaging of tobacco products.

Dr Dean discussed the 2011 Australian case JT International SA and British American Tobacco Australasia Services Limited and others (WHO http://www.who.int) where it was held that the TPP Act was not unconstitutional because although the plaintiff had been deprived of its property, namely its trade marks and the get-up of its tobacco products, no acquisition of property by the state had taken place as envisage by the Australian Constitution.

Dr Dean pointed out that in the South African context; Health Minister Aaron Motsoaledi has expressed his enthusiasm to adopt plain packaging legislation in South Africa.  Fortunately the South African Constitution in section 25 enshrines the right not to be deprived of property and includes, in section 25(1) thereof, an internal limitation to the effect that “... no law may permit arbitrary deprivation of property”. Section 25(2) somewhat complicates the issue in providing that property may be expropriated in terms of law of general application for a public purpose or in the public interest.

Dr Dean referred to the Constitutional case of First National Bank of SA Limitedt/a Wesbank v Commissioner for the South African Revenue Service; FirstNational Bank of SA Limited t/a Wesbank v Minister of Finance 2002 (4) SA768 (CC) which held that deprivation of property is a genus of which expropriation is a species, and that deprivation of property is arbitrary when there is insufficient reason for such deprivation or in circumstances where it is procedurally unfair.

Dr Dean stated that it was unnecessary to rely on the further general limitation on deprivation of property contained in section 36 of the Constitution, namely the proportionality test, for the simple reason that a deprivation of property, if arbitrary, by necessity is also unjustifiable and irrational – an opinion also held by the authors De Waal, Currie and Erasmus in The Bill of Rights Handbook 3rd edition (2011) note 2 at 20.

Dr Dean espoused the doctrine of “constructive expropriation” which holds that one should not have regard to whether legislation is meant to expropriate property, but rather whether it factually results in expropriation. He concluded that any plain packaging legislation along the lines of the TPP Act will amount to an infringement of sections 25(1) and 25(2) of the Constitution.

Dr Dean analysed the essential nature and character of trade marks, which is to denote source and stated that, in addition to a legal dimension, a trade mark also enjoys a commercial dimension which is termed “brand equity”, and which refers both to the trade mark and its commercial impact.  He emphasised how valuable trade marks are and referred, by way of example, to the trade mark GOOGLE which represents 27% of the company’s overall value.

Given the fact that the aim of plain packaging legislation is to discourage the use of tobacco products , Dr Dean stated that it defies comprehension how destroying an item of property, namely a trade mark, could be brought into relation with the discouraging of smoking. A trade mark is an instrument for creating clarity in regulating the consumer’s ability to choose between competing products. He stated that it is a non sequitur to suggest that if the ability of the consumer to distinguish between producer A and producer B is diminished or taken away, it will have the effect of discouraging or inhibiting smoking.  Hence Dr Dean opined that plain packaging legislation will infringe section 25(1) of the Constitution. If such legislation were to be held to be in the public interest, in terms of section 25(2) of the Constitution, appropriate compensation would be payable – which could amount to a substantial sum of money.

Dr Dean, during the course of his lecture, also analysed concepts such as whether trade marks are “property” for purposes of section 25 of the Constitution, the meaning of the phrase “law of general application” as set out in section 25(1), the effect of non-use of trade marks, different types of trade marks  and the value of trade marks.

His lecture was well received by an enthusiastic audience which consisted of members of law faculties, legal practitioners and corporate and other bodies interested in plain packaging legislation for tobacco products. It was followed by a well organized and well attended cocktail function. We were all ad idem that we had gained valuable insight into the imminent plain packaging legislation and it’s potentially far reaching ramifications."

Mabel is a busy and respected senior practitioner in South  Africa and this contribution is appreciated.

Look out for a post on the Virtues of a Trade Mark which will be published soon.