Wednesday, 30 April 2008

China blames Kenya for buying its fakes

Writing in Nationmedia ("China’s theory on counterfeits"), Kaburu Mugambi reports that the Chinese are pointing the finger of blame at importers who allegedly choose to buy low quality or counterfeit goods. This comes from China’s ambassador to Kenya, Zhang Ming, who asserts that his country also manufactures high quality products but that most traders in Kenya prefer to buy products “which are not of very good quality”. He was responding to queries raised by traders who said that they normally get good quality samples from Chinese manufacturers, but after placing orders, they are shocked to discover the products are of a much lower grade. China remains Kenya’s major source of imports, while Kenya’s exports to China remain far lower.

Tuesday, 29 April 2008

New disclosure requirements supported: genetic resources and TD

According to Martin Khor's column in Business Daily (Nairobi), a majority of WTO members are now supporting the proposal to amend the WTO's TRIPS agreement so as to include a disclosure requirement for patent applications relating to genetic resources and traditional knowledge. It would be mandatory for countries to have in their national patent laws a requirement for patent applicants to disclose the countries of origin of biological materials and traditional knowledge used in their inventions, as well as evidence of prior informed consent and benefit sharing arrangements with the countries of origin and relevant local communities.

"If Symptoms Persist" anti fake film launched in Ghana

AllAfrica reports that Germany's Goethe-Institut, together with mPedigree, launched a short film last week that is intended to kick-start a campaign against the circulation of fake drugs in Ghana. The short film, "If Symptoms Persist", is described as the first documentary on the subject to be commissioned, and produced in Africa. Lasting just three minutes, it probes the fake drugs situation, relying on expert testimony, stakeholder opinions and the reactions of ordinary consumers.

If any reader has a link to this film, can he or she post it below under Comments.

The ACA2K Network

Eight African countries have formed the African Copyright and Access to Knowledge network (ACA2K network) to investigate the relationship between copyright and education in Africa. The team will, between this year and 2010, gather research evidence and engage policy makers in efforts to ensure maximum use of copyright law flexibilities that have the potential to increase access to learning materials in the study countries. The countries which will provide the multidisciplinary team are Egypt, Kenya, Morocco, Mozambique, Senegal, South Africa, Ghana and Uganda.

Canada's International Development Research Centre (IDRC) and South Africa's Shuttleworth Foundation are supporting the ACA2K network through the LINK Centre of Wits University in Johannesburg.

According to the activities guidelines, researchers in the study countries will investigate the "copyright environment", namely, policies, laws, regulations, practices and perceptions, in the respective countries in relation to access to learning materials, with emphasis on university learning environments.

Who is the best person to lead WIPO?

Dalindyebo Shabalala (CIEL) recently wrote an open letter concerning the upcoming WIPO elections

"Dear colleagues,

On May 15, 2008, the World Intellectual Property Organization (WIPO) will be choosing a new Director-General. Historically, the selection process has been non-transparent and closed to civil society. In an attempt to open up the process, CIEL, Third World Network, and a group of civil society organizations invited all 15 of the WIPO Director-General candidates to meet with civil society groups on April 15, 2008 in Geneva. Candidates were also asked to respond in writing to 8 questions.

A Webcast of the whole meeting in five sequences is available below:

Video 1 - http://video.google.com/videoplay?docid=5093362967627971571&hl=en
Video 2 - http://video.google.com/videoplay?docid=1312827334844132820&hl=en
Video 3 - http://video.google.com/videoplay?docid=-8845402997045229188&hl=en
Video 4 - http://video.google.com/videoplay?docid=5105921436401561633&hl=en
Video 5 - http://video.google.com/videoplay?docid=8998862960353259859&hl=en

Further information on who attended the meetings well as the written responses that have been received so far, can be found on the CIEL website at: http://www.ciel.org/Tae/WIPO_DirGen_15Apr.html

News reports on the WIPO DG candidates race and on the meeting with civil society can be found at:
http://ip-watch.org/weblog/index.php?p=955 (Responses to 5 IP Watch Questions)
http://www.ip-watch.org/weblog/index.php?p=1016 (Report on meeting with Civil Society)
http://www.ip-watch.org/weblog/index.php?p=1002 (Report on Candidates meeting with member states)

We encourage civil society and other stakeholders to make their opinions and evaluations known and to engage as fully as possible in the discussion about who the best person should be to lead to WIPO."

Monday, 28 April 2008

7 reasons why Prof Odek should be the next WIPO DG

Peter Mwaura writing in the Saturday Nation column “fair play” cites a number of reasons why Prof Odek should be the next Director General for the World Intellectual Property Organization. He writes that:

“He [Prof Odek] is the only candidate from Africa. At 44, Prof Odek is the youngest candidate. But his credentials are impressive. He is likely to provide the organisation with the vision it needs. As an outsider, he is also more likely to effect changes to meet many of the challenges facing WIPO.

He has a doctorate degree in judicial sciences and a masters in law from Yale University, and he has chaired various WIPO committees.

He is also an associate professor of public law at the University of Nairobi and a member of the governing council of the African Regional Intellectual Property Organisation.”


Mwaura also believes that if all the 19 African countries in the coordination committee, including Kenya, vote as a block then Prof. Odek will carry the day.

However, as reported here the geography factor may come into play considering that the outgoing DG is from Africa and a European and an America has previously been at the helm.

SA piracy stats are unacceptably high, despite improvements

SA Federation Against Copyright Theft chief executive officer James Lennox released what he called "record statistics" for the first three months of the year, according to this report in IOL.

Comparing the first three months of this year to the same period last year, Lennox said enforcement action against pirate operations across the country was up from 62 last year to 170, arrests were up from 22 last year to 97, and convictions up from six last year to 44. While piracy levels in South Africa remained unacceptably high, he expected significant progress during the next two years.

Meanwhile, in Ray Hartley's blog (quoting Adams and Adams) in TheTimes.co.za "one in five South Africans are “quite unconcerned” about STEALING intellectual property. EXTRACT:

The firm [Adams and Adams] was citing the findings of a survey by TNS Research Surveys which it said was “shocking”.
“These buyers give no thought to copyright or other intellectual property rights and make a significant contribution to the problem.”
Chairman of the firm, Chris Job, said counterfeiting and piracy had increased across all product categories.
He said the prosecution of counterfeiters and pirates had also increased, but not in the same proportion.
“Whilst South Africa has excellent laws to protect intellectual property, its enforcement record can still be improved.”"

Microsoft settles with 21 infringing SA retailers

Cape Business News reports that Microsoft SA has reached settlements with 21 South African computer dealers, based in Cape Town, Johannesburg, Durban and Pretoria, as part of a global crackdown on counterfeit and illegal software. All 21 were found to be selling computers loaded with unlicensed Microsoft software.

This report also cites a recent economic study which shows that spending on hardware, software and IT services in South Africa was expected to reach R61 billion for 2007. For every R1 that Microsoft earned in 2007, partners working with Microsoft were estimated to earn R9.69.

Friday, 25 April 2008

Ocean Tomo opens Second Europe IP auction


Ocean Tomo has released its catalogue for its European IP auction due in Amsterdam in June 2008.

The auction that will be conducted by Ocean Tomo Auctions will have IP assets under 40 main lots. These include domain names, patents relating to wireless electronic payment systems, video compression technology and encryption technologies, among others.

The IP assets on auction will be "grouped into 15 categories including: online & mobile commerce; digital media systems & management; computer systems & software, lighting technology; information management & Data systems, Fluid handling: Location based systems & Logistics; Security & Authentication systems; Communications; Messaging: Electronics & Handheld Devices; Smart Cards; Manufacturing & Automation; telemedicine; and Domain names.

This mode of exchanging value for intellectual property has generated over US$ 70 million since 2003 which confirms its effectiveness as an IP exchange mechanism. For a long time, Governments in Africa have called for the transfer of technology to the continent in vain. The success of this model is one that business and government leaders on the continent should watch and learn from. Quite possibly, a variant of this auction system could stimulate the transfer of technology into and out of Africa.

Napier deal approved by shareholders

According to Marketwire, Napier Environmental Technologies Inc ("Napier") is pleased to announce that it has received shareholder approval for the previously announced sale (by Afro-Ip too) of its intellectual property outside of North America to Freeworld Coatings Global ("Freeworld") and the option grant to Freeworld to acquire the North American sales, marketing and manufacturing operations of Napier, including existing customers outside of North America, for $5.25 million in cash.

The transaction is expected to close in the second quarter, and is subject to definitive agreements, regulatory approvals in Canada and South Africa, including the acceptance by the Toronto Stock Exchange, and various other consents and approvals typical for this type of transaction.

Afro-Leo is pleased to hear that Napier's shareholders have approved the deal which, if it goes ahead, will see an inflow of IP onto the continent by acquisition (whether it is actually held there post acquisition or not), rather than the usual outflow he has become accustomed to reporting. Afro-Leo suspects that the $5.25 million price tag may have become more attractive to the South Africans, following recent exchange rate fluctuations in the past month since the deal was announced(assuming the deal is funded in Rands).

Thursday, 24 April 2008

Otieno-Odek receives African Union backing

With just three weeks to go before the fourth Director General of the World Intellectual Property Organization (WIPO) is elected, Business Daily Africa reports that the candidacy of Professor James Otieno-Odek -- the only African among the 15 runners -- has been endorsed by the African Union. Professor Otieno-Odek, who holds a chair at the University of Nairobi, has participated in a number of WIPO activities and is the managing director of Kenya Industrial Property Institute.

Given the tendency of top positions within international agencies to rotate between different geographical regions, the chances are that this position, currently held by an African (Dr Kamil Idris) and formerly held by a European and an American, will go to a candidate from the Asia-Pacific region.

Wednesday, 23 April 2008

Namibia: ASCO passing off appeal decision

In Gonschorek and Others v Asmus and Another (SA 11/2007) [2008] NASC 3 (15 April 2008), the Namibia Supreme Court last week dismissed an appeal by GUIDO-DIRK GONSCHOREK, PATRICK MARIA GEYSEN, ASCO CAR SALES CC and ASCO WORKSHOP CC (Guido) against an interdict/injunction for passing off in favour of ARNDT ASMUS and CONSTANZE ASMUS (Asmus). The case arose out of a business sale by Asmus of part of the ASCO branded business (car hire, panel beating, properties and yacht chartering) to Guido. The agreement of sale provided that the goodwill of the business, Asco Car Hire, would specifically include the name Asco Car Hire. In regard to the other businesses Asmus pointed out that they were not sold as going concerns and that the sale of the assets did also not include the names of the businesses. Towards the end of 2004 Asmus became aware that Guido was conducting business under the name and style of Asco Car Sales and Asco Workshop which were then, subsequently, registered as close corporations (ie small companies).

Asmus sued on the basis of passing off and under the Close Corporation Act 26 of 1988 and was successful. This appeal was then lodged. In dismissing the appeal the Judge considered the content of S20(2) of the Close Corporations Act and the meaning of an "undesirable name" and "calculated to cause damage", as well as the principles of passing off when applied to the sale of part of a business (including a name) and the subsequent use of that name by the purchaser for other businesses. A more comprehensive note on this case will follow at a later date.

Crocs bitten back in SA High Court decision

In MORESPORT (PTY) LIMITED v COMMISSIONER FOR THE SOUTH AFRICAN REVENUE SERVICE AND OTHERS (36853/2006) [2008] ZAGPHC 95 (27 MARCH 2008), the High Court has set aside a search and seizure warrant issued by a magistrate in respect of 5015 pairs of alleged counterfeit CROC beach model shoes. The search and seizure warrant had been issued ex parte and was set aside because Crocs had failed to disclose a defence raised by Moresport in correspondence with Crocs' attorneys. The Court held that the defence was relevant and material and should have been disclosed. The legal teams included Senior and Junior Counsel for both Moresport and Crocs.

The defence raised by Moresport was that its actions were lawful under Section 15(3A) of the Copyright Act 98 of 1978 (general exceptions from protection of artistic works). The judge relied on National Director of Public Prosecutions v Basson 2002 1 SA 419 (SCA): "where and order is sought ex parte it is well established that the utmost good faith must be observed. All material facts must be disclosed which might influence a court in coming to its decision and the withholding of such facts entitled a court to set aside an order."

Afro-IP reported on a similar Croc case involving Shoprite Checkers here. The earlier decision (in favour of Crocs) was handed down by the Cape High Court whereas this case found itself in the High Court (Transvaal Provincial Division). Afro-IP also notes that the supplier of Moresport, Holey Shoes is involved in litigation with Crocs Inc in other jurisdictions - one reason why this may have been an important strategic decision for both Holey and Crocs.

Tuesday, 22 April 2008

80% of trade marks counterfeited in Kenya


Daily Nation reports that 80% of local and international brands are counterfeited in Kenya, while 97% of local music is pirated. According to the report, these statistics were given by the American Chamber of Commerce Kenya (ACCK) in a ceremony held to install Dr Nelson Githinji, who also happens to be the head of public policy at Coca-Cola East and Central Africa, as the President of ACCK. ACCK is a non-profit organization founded by American investors in Kenya, with membership open companies having strong business ties with the United States.


In his acceptance speech Githinji said he would address the issues of counterfeits, piracy and intellectual property rights which are “crucial issues that the organization has been lobbying for”.

Monday, 21 April 2008

The Fabergé egg flip

Afro-IP has come across an article penned by Kevin Mutch, Group Legal Director of the newly formed Fabergé Ltd, in SA's Without Prejudice publication entitled: IN OUR DREAMS… THE PHENOMENAL STORY OF FABERGE. Aside from the very interesting story behind the brand and its ownership, is the strategy adopted to wrest ownership of the Fabergé trade mark portfolio from the Mugabe-like clutches of Unilever. The super luxury brand, in this blogger's view, was never a fit in the Unilever stable, which did not seem to be able to harness and properly exploit its appeal. Instead the brand found itself associated with mid market household goods which detracted from its exclusive heritage making it less marketable. The alluring aspect of the strategy was the that it was aggressive; it involved a process of systemmatically attacking vulnerable rights of Unilever's FABERGE trade mark portfolio in order to get to (and create leverage and eventual success) at the negotiating table. If anyone would like a copy of the article, which includes a synopsis of Fabergé Ltd's future gemstone business under the brand please send an email here.

Uganda - update from Paul Asiimwe

Uganda recently upped its efforts to become TRIPS compliant. With support from the ICSTD, SANAA Consulting has been working with stakeholders to set out priorities that can be submitted to the TRIPS council for possible support between 2008 and 2012. Some of the key priority areas include IPR administration, enforcement of IPRs, Innovation, technology transfer and IP for development. Once completed, this program will enable the country to be fully TRIPs compliant by 2016.

On another note, ICSTD reports that the TRIPS Council is once more divided over whether patent applicants should be obliged to disclose more about the origin of ‘biological resources’ or ‘traditional knowledge’ than has previously been the case. Wider disclosure requirements were supported by key developing countries such as Brazil, India, Thailand, Pakistan and Venezuela, while Uganda led the LDCs group. This continued disagreement highlights the persistent failure of WTO member states to resolve trade interests and environmental /conservation concerns as enshrined in the Convention on Biological Diversity (CBD).

More on São Tomé and Príncipe's accession to the PCT

Following Jeremy's post on the accession of the Democratic Republic of São Tomé and Príncipe to the PCT, Craig Kahn has added that in many instances when a developing country joins the PCT, there is a delay in amending the national law to allow for PCT national phase applications. This then leads to uncertainty as to whether or not any enforceable rights will be granted for applications filed before the national law is amended. However, in this particular case the law in Sao Tome and Principe already recognizes the PCT and provides that if there is any conflict between the national law and the PCT, then the PCT Rules prevail.

Kenya is still sleeping on its IPRs

...is the title of a piece in the Daily Nations by Peter Mwaura covering the recent Kikoi win and Kiondo loss as examples of why IPRs are so important to developing countries and stressing that Kenya still has much to do about protecting their rights in a first-to-apply-gets-the rights, world. Citing the fact that Kenya filed only three patents under the PCT last year and only 24 in the last five years Peter Mwaura believes that the answer lies with the Kenya Industrial Property Institute (KIPI) who "should educate the local communities to enable them to negotiate and use the international IPRs systems."

Peter Mwaura may not be aware that fellow blogger, David Njuguna's blog IP Kenya, is also doing its part to educate and highlight the concerns and issues around IP rights in Kenya, by creating a local forum for news and comment. Afro-IP hopes to help that cause too.

Friday, 18 April 2008

From KIKOY to “grown under the sun”


In response to the failed attempt by a British company to register the word KIKOY as a trade mark (earlier reported here, here and here ), a story in the Nation Newspaper has it that the government of Kenya is in the process of protecting the phrase “grown under the sun” as trade mark for marketing Kenyan products.

The slogan ‘Grown Under the Sun' was unveiled in Britain in July 2007 by Kenya's horticulture industry to market its fresh produce in UK. As a result of this initiative, as noted here, Kenya’s share of the European market grew from to 32% to 38%.

A search of the UK trade mark database shows existence of a community registered trade mark number E4549333 consisting of the slogan “NATURALLY GROWN UNDER THE CANARY ISLANDS SUN SINCE 1935” in class 31(Fresh fruits and vegetables) and 39(Distribution, transport, storage and warehousing of fruits and garden herbs of all kinds). The trade mark is in the name of JULIANO BONNY GOMEZ of Spain, the application having been filed way back in 2005.

São Tomé and Príncipe signs up for PCT

By PCT Notification No. 188, the Democratic Republic of São Tomé and Príncipe has confirmed that it has deposited its instrument of accession to the Patent Cooperation Treaty, which will enter into force there on 3 July 2008.

Thursday, 17 April 2008

Fridaylite

A colourful letter from a frustrated US attorney in 1970 arguing for the acceptance of the "offending" trade marks BUM and THE BUM SHIRT in which he "fear(s) very strongly for the intellectual level of (the) South Afrikaner" and describes the Registrar at the time as having "not yet climbed out of the slime in which he was spawned..". A delightful read.

"I have your letter of 16 October 1970 in the above and I am rather surprised that the Registrar would take such completely moronic view of the situation. Had the individual any intelligence, he would know that no business man in his right mind would use a term with vulgar meaning to sell reasonably high-priced merchandise. Where a word like “Bum” might possibly give offence to delicate Registrars of Trade Marks in the under side of the world when applied to such things as underpants, it has only a connotation of casualness and ease when applied to anything else.

With regard to the mark THE BUM SHIRT the situation is even more remarkable for it is utterly inconceivable that the term in THE BUM SHIRT can be related to what the Registrar obviously feels is the primary meaning of the work “BUM”. So far as I am concerned, the particular Registrar has not yet climbed out of the slime in which he was spawned to persist in such a completely idiotic decision. I see that both the Deputy Registrar and the Registrar have concurred in the idiocy reflected by their most recent decisions.

Our Trade Mark Office has at its disposal every English language dictionary in current use throughout the world. The definition of “BUM” which has an off-color meaning does not appear in relation to an individual’s backside. As a matter of fact, Webster’s Third New International Dictionary, Unabridged Edition, does not even give the slang definition. The Random House Dictionary of the English Language, Unabridged Edition, similarly fails to relate the word “Bum” to anything which might be offensive. The word “Bum” occupies over two columns in the “Dictionary of American Slang” published in 1960, copies of which are enclosed. Some sixteen definitions are given of the word as a noun and you will find the definition “the human posterior” as the very last.

It is inconceivable, therefore, for anyone on your side of the water to follow and accept the six percent view of the meaning of the word taken by the Deputy Registrar and the Registrar. I fear very strongly for the intellectual level of South Afrikaner who must continue to live subject to such thinking. Our Patent Office, operating under a law which prevents registration of offensive trademarks, has no difficulty in registering “THE BUM SHIRT” and a copy of Reg. No. is enclosed. No registration has been sought in any other nation of the commonwealth.

I wonder if you would dare to show the Registrar a copy of this letter. If nothing else, it might be a good mental cathartic. However, if in your timid judgment you fear reprisal for calling the shovel the shovel it is, you may limit Application No. 0585 to the device and THE B—SHIRT.

By the way, has the Registrar been able to overcome his delicacy to the extent of registering BEACH BUM? It would be interesting to know what happened to that trademark application and even more interesting for the Examiner to explain away the fact that more human posteriors are seen currently on beaches than any place outside houses of ill repute.

You will gather from all the above that I am a bit upset. If you reach this conclusion, you will be absolutely correct. I am annoyed as all get our with what I feel is narrow-minded stupidity bordering on outright illiteracy.

PS I am even use this letter as basis for a thesis on "Phobias of the World". I have a doctorate in law but a doctorate in philosophy might not be amiss if I could squeak through for one with a thesis on this general subject"


Needless to say, the letter did not appear to find success as AFRO-IP could not find either of the trade marks on the SA Registry website using his online login. AFRO-IP also tried to contact the attorney for his view on the UK Registry's rejection of TINY PENIS for shirts and to ask him for a copy of his doctorate(s) but sadly found that this colourful attorney passed away in the late seventies.

Interview with Dora Akunyili

The American Enterprise Institute carries an interview, "Cracking Down on Counterfeit Drugs", with Dora Nkem Akunyili (Director General of Nigeria's National Agency for Food and Drug Administration and Control (NAFDAC). In 2005, Time magazine named her one of its eighteen "global health heroes". After speaking about Nigeria's public awareness campaign she adds:
"We are not just working to protect Nigerians. It's also a responsibility for us to protect other countries in sub-Saharan Africa. These countries, most of them are poor. They don't have the capacity to help themselves. And more importantly, the criminals being chased out of Nigeria were relocating to these countries. In 2005, we instituted the West African Drug Regulatory Authorities Network as a platform for interacting and exchanging strategies. And it's working. East African countries are joining us. The level of incidence of fake drugs is coming down drastically, though we are not relaxing because we know these criminals are not relaxing. We always want to be ahead of them".
Presumably she can expect little help from the pharmaceutical industry: so many of the basic medicines in circulation are out of patent protection and are marketed in generic rather than branded formats. Additionally, IP rights are national--which makes cross-border activity easier for governments than for individual rights holders.

Wednesday, 16 April 2008

South Africa - new article on trade-mark use

The Comparative and International Law Journal of Southern Africa (CILSA for short) is not the first point of reference for trade-mark matters. However, the November 2007 issue (vol XL no 3), now out in print form, contains an article titled 'Limiting the trade-mark monopoly: the nature of infringing use' written by South Africa's most respected trade-mark academic, Professor Brian Rutherford from the department of Mercantile Law, UNISA. Non-subscribers can contact the journal editor at bothanj@unisa.ac.za for a pdf version of the article. The abstract reads as follows:
"Motivated by the concern of creating an unwarranted monopoly, recent decisions in Europe and South Africa have imported certain restrictions into the current trade-mark infringement provisions. These restrictions are intended to limit the infringement rights of trade-mark proprietors. This is particularly evident from the definition of infringing use adopted by the courts. This article compares the approaches adopted in Europe and South Africa. Like the British House of Lords, the South African Supreme Court of Appeal has adopted a narrow traditional approach in defining infringing use which is at variance with European jurisprudence and the TRIPS Agreement. Also in line with developments in the United Kingdom, onerous requirements for establishing trade-mark dilution have been imposed".

The value of "looted" cultural artefacts

A documentary film scheduled for release soon will raise key issues over Article 11 of the UNESCO 1970 Convention on cultural objects taken across borders according to Melford Ita ("Africa: The Crown Affair"). He makes an argument that the Nigerian government is owed £350million in back dated royalties for the use of IP rights from colonial looters, following his take on an editorial alluding to Markets and Investments grappling with the interpretation of a copyright law with the British Museum surrounding images of the Queen Idia mask.

Please bear with us whilst we search for the looted picture of the mask alongside

Mr Ita sets his version of facts in chronological form and summarises English law on copyright. His argument about invalidity of the copyright in the photograpgh based on a subsequent UK trade mark registration is not entirely correct, as it assumes that a trade mark registration "overrides" copyright. Similarly, the logic in coming to his royalty figure of £350million is not beyond reproach. However, his article, its style and its conclusion are indicative of the scale of the issue and the emotion which surrounds it.

Article 11 of the UNESCO 1970 Convention on cultural objects declares as illicit, “the export and transfer of ownership of cultural property under compulsion arising directly or indirectly from the occupation of a country by a foreign power.”

GSK presses Kenya to tighten up

Afp reports that UK-based pharma giant GlaxoSmithKline has urged the Kenyan government to crack down on imports of fake medicines, which are said to account for a third of the country's drugs trade. The company's east Africa head John Musunga said that, while GSK had no problem with parallel trade -- importation of cheaper products with the intent of charging less than the competitors in the retail market -- the authorities should tighten up their monitoring and enforcement procedures. Musunga goes furthe than that, though: "Exposing medicines to high temperatures or unfavourable conditions changes the composition of the drugs, rendering them ineffective"; this can be a problem with parallel imported drugs, regardless of whether the importation is legitimate.

Tuesday, 15 April 2008

Charges for ringleaders, warnings for the small fry

Dispatch Online records that police in East London, South Africa, have recovered 1,849 counterfeit CDs and DVDs, with a sale more than R200,000, arresting three suspects during raids yesterday morning. Hughes said the raids were sparked by complaints police received from the public, the Southern African Federation against Copyright Theft (Safact) and the Recording Industry of South Africa (Risa).

The two suspect ringleaders were to appear in the East London Magistrates Court today. The vendors who have been selling the counterfeits have been warned and their names taken, so that if they are apprehended again they will be unable to plead they didn't know they were selling fakes.

Monday, 14 April 2008

Two stripes and you're....


OUT

That may be the effect of the decision by the European Court of Justice (ECJ) this month in the long running effort by Adidas to enforce its three stripe device mark against the two stripe "decoration" by Marca Mode CV and others reported here. The ECJ was asked to adjudicate on the meaning of the Harmonisation Directive, in particular whether the requirement of "availability" (ie the need of others to use the sign in the ordinary course of their business) should be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark. The ECJ said NO, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

Article 6(1)(b) of the Directive provides that the proprietor of a trade mark cannot prohibit a third party from using, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services, provided he uses them in accordance with honest practices in industrial or commercial matters.

This case finds itself on Afro-IP because Anglophone African countries frequently use ECJ cases on the interpretation of the Harmonisation Directive, to help determine their own law. For example, under SA law, could this judgement spell the end of the relevance of the phrase "reasonably required for use in trade" to justify the rejection of a trade mark, thereby subtly broadening the right afforded by a trade mark registration (as the ECJ have done)? Article 6(1)(b) is repeated almost word for word in the SA Trade Marks Act, 1993 as Sections 10(2)(b) (Unregistrable Trade Marks) and 34(2)(b) (Defences/Exclusions to infringement).

Dar es Salaam protestors object to Chinese fakes

BBC's News in Pictures reports on the passage of the Olympic torch through Dar es Salaam, Tanzania. While there were no demonstrations against Olympic host China's occupation of Tibet, there were protests against the importation of counterfeit goods from China (shown here).

Transfer Pricing Focus Study by E&Y

Transfer pricing is the most important international tax matter after valued-added tax and double taxation [affecting SA multinationals], according to a study released by Ernst & Young at the weekend and reported by Business Day here. SA, Namibia, Kenya, Mozambique, and Tanzania have introduced laws dealing with transfer pricing. Other countries tax multinational companies’ transactions under anti-avoidance sections of their domestic tax legislation. About 40% of multinational companies in Africa prepare documentation on a single country basis, modified to meet the needs of specific jurisdictions, rather than on the co- ordinated basis. More than 20% of companies acknowledged that they did not prepare transfer pricing documentation. The research was based on independent interviews with 40 participants in Anglophone Africa in August and September last year.

Saturday, 12 April 2008

Kora to promote copyright values

The Sowetan reports that Nigeria is to host this year's Kora All Africa Music Awards 2008, for which entries close on 15 April. Categories for the awards are best male artist, female artist and best group, with the “Best Artist or Group of the Continent” receiving a US$ 1 million prize. Says the article:
"The Koras promote African artists and their music to a global audience, unite Africans through celebration of excellence in music, produce a world-class, live performance and television broadcast show that portrays the best of Africa and the diaspora to the rest of the world.

They also protect the intellectual property of artists and prevent unauthorised copy and reproduction of materials, unite and connect Africans in a spirit of unity through hosting of seminars by industry professionals ..."
but no details are given as to how this laudable (and, some would say, nearly impossible) objective is to be achieved through the hosting of seminars. Nonetheless, Afro Leo purrs with pleasure to see the protection of copyright being mentioned in the promotional literature: it shows how much prominence the unauthorised exploitation of others' works has now obtained.

Friday, 11 April 2008

South Africa - copyright review

The Shuttleworth Foundation has created a new website arguing for the reform of South African copyright law. The website can be accessed here
http://copyright.tsf.org.za/wiki/Main_Page
and makes for fascinating reading. In particular, it contains a list of what should be in the Act, but isn't. It is open to all for comments and suggestions.

Namibia Industrial Property Draft Bill - discussion sessions invite 15 and 17 April


Following on from an earlier post about the publication of the draft Namibia Industrial Property Bill, there were a number of people who emailed me asking for a copy. In order to facilitate the distribution of the draft Bill, Bowman Gilfillan have kindly agreed to host it on their website so that I could post the link here.

This blogger will also be involved in a number of discussions with colleagues concerning the draft Bill - for example, a rose grower wanted to know if the Bill made provision for plant breeders rights, which it does not appear to do.

The SAIIPL were hoping to get comments by the end of the month and if you would like to add yours to that list, please let me know here. In addition, if you wanted to take part in the discussions (which will take place on 15 April (Patents) and 17 April (Trade Marks and general)) I am happy to arrange to patch you in by conference call or if you are in the vicinity you are welcome to join in. If you are interested in joining us by call or in person please make it clear in your email. The sessions will be an hour long each starting at 16h00 GMT+2

Thursday, 10 April 2008

Fake 'CE' toys on sale in SA

Barry Bateman ("Playing with death"), writes on IOL that the lack of legislation in South Africa to ensure that toys are safe exposes children to the dangers of injury or death. The South African Bureau of Standards (SABS) is willing to test imported and home-grown products; if they are safe, the toys receive a compliance report; those which fail are returned, so that changes can be made to ensure the product is safe. At present SABS tests only about three toys a month, an insignificantly small proportion of the products on sale in the shops.

In March, SABS destroyed thousands of goods deemed unsafe for consumers, many bearing counterfeit CE markings (the markings that the European Commission requires for products that match the European Union's fairly stringent safety standards).

This blogger wonders whether, and if so to what extent, organisations like the European Commission are willing and/or able to police the use of their safety standard marks outside the European Union.

Gambia - Industrial Property Act now in force

Afro-IP has learned through several sources that Gambia (the smallest country on the African continental mainland) has introduced new legislation governing industrial property (including trade marks) as from 2 April. Notable changes are that:

There is provision for service mark applications
It has adopted the International Classification of Goods and Services
Licensing is recognised, subject to control provisions
Paris Convention may now be claimed
Trade marks are now registered for 10 years

The implementing rules and regulations have not yet been published and there appears to be some uncertainty over whether multi class applications will be accepted, the transitional provisions and the delays in publication of existing applications.

Gamibia is known for its significant tourism industry and the change in legislation is likely to be good news for tourist operators, who can now apply for protection in the service classes most relevant to their industry.

Wednesday, 9 April 2008

Will the real elephant please stand up?

"Attack on patents hurts the poor" is the title of a Business Daily article co-authored by Alec van Gelder (Network Director of the International Policy Network, London) and Franklin Cudjoe (director of Imani, an independent policy think-tank in Ghana). They argue that the "patients not patents" campaigners make a simplistic appeal which will only make things worse for the poor, as well as distracting attention from the real causes of ill health: poverty and corruption. The authors write, after citing an outspoken attack on patents by Kenya Minister of Health Ahmed Ogwell at a World Health Organisation meeting:
"... For poor Africans, intellectual property is not the issue and Kenya’s Ministry of Health should know better. Less than two per cent of the WHO’s list of essential medicines is protected by patents. In 2005, the head of the WHO’s Aids division, Kevin de Cock, said: “It is obvious... that the elephant in the room is not the current price of drugs. The real obstacle is the fragility of the health systems. You have health infrastructure that is dilapidated, a health workforce that is demoralised, labs that don’t work, supply chains that don’t exist and diagnostics that are missing.”

Without these things, you can give drugs away for free and they still won’t get to the most needy. But this doesn’t appear to matter to activist organisations like Doctors Without Borders and Oxfam ...".

Du café Ziama au...miel blanc Oku

Il paraît que les efforts récents de l'Ethiopie de faire valoir ses droits au sujet de l'utilisation des marques de café tel que Harrar et Sidamo aient inspiré d'autres pays africains à poursuivre sur la même voie, en allant même plus loin... Ainsi, l'OAPI, l'Agence française de développement et plusieurs ministères français, se sont mobilisés et ont débloqué les fonds nécessaires à la mise en place d'un programme de création de Indication Géographique Protégée (IGP) dans plusieurs pays de l'Afrique de l'ouest. Parmi ceux-ci, on retrouve les haricots verts de Sorou, au Burkina, le miel blanc Oku, au Cameroun, et le café Ziama, en Guinée...La liste complète est ici .

Tandis que les marques de commerce et les marques de certification garantissent dans une certaine mesure l'origine, la traçabilité et la qualité des produits qu'elles accompagnent, les indications géographiques restent les seules à être liées d'une manière indissociable à des attributs et à des critères de qualité liés à l’origine des produits.

Dans son rapport sur l'évolution de la marque ingrédient de café "colombien" jusqu'à la reconnaissance de la dénomination Café de Colombia comme indication géographique par l'Union européenne, au sens du droit communautaire, le magazine de l'OMPI note:

"Dans un monde où les consommateurs exigent de plus en plus d’être informés sur les produits qui leur sont proposés, conclut‑il, les systèmes d’indications géographiques, qui offrent des garanties quant à l’origine et aux méthodes de production, ne peuvent que prospérer."

Tuesday, 8 April 2008

Zambia opposition practice: extensions of time to file oppositions

In a letter from the Registrar of Patents and Companies Registration Office in Zambia to the profession, Mrs. A.M. Banda-Bobo makes it clear that the Zambian Registry will no longer be granting extensions of the two month time period to file trade mark oppositions.

She states that "this measure has been taken to rationalise the operations of the Office. We crave your indulgence on this matter as we strive to improve our service position to you our esteemed clients"

Monday, 7 April 2008

Focus on intellectual property is key for corporate survival

Writing for Business Report, David Kaplan (a professor at UCT Graduate School of Business) and Anhil Sinha (head of the UN WIPO research and development program) promote the new strategic intellectual property management course in a researched piece entitled “Focus on intellectual property is key for corporate survival”. According to the article nearly 80% of the value of firms in developed countries comprises intangible assets, most of which are protected in one way or another by IP. Afro-Ip reported on the relationship between UCT and WIPO a few months ago here. The course runs from the 15th-16th of April.

Just focussing can be tough at UCT:

Registered Design protection in South Africa

Dr Wim Alberts, writing for De Rebus (a South African legal magazine) explains the principles and legislation relating to “Registered Design Protection” in South Africa. A notable characteristic of the legislation is the inclusion of provisions for both functional and aesthetic designs. In addition he discusses the overlap and interplay between design protection and that afforded by other IP laws such as copyright and patents in South Africa.

R146m fine for Price Fixing

According to a Business Day report, the Competition Commission said yesterday it had imposed a R146m (approx $2million) fine on scrap metal company New Reclamation Group for its involvement in collusion and price fixing in the ferrous and non-ferrous scrap metal markets. The administrative penalty, which represents 6% of the unlisted company’s annual turnover in the affected market, tops the R98m fine imposed on food giant Tiger Brands in November for fixing the price of bread. The report notes that the fine is the highest uncontested fine to date that the Commission has imposed. Reclamation’s collusion, one aspect of which was to rig bids in the sale of wagons, tankers and coaches by Spoornet, was uncovered last July by the Commission during raids seeking information about a separate matter – the proposed merger between the company and a client, SA Metal and Machinery. At the time of the raids, the company said it ‘strongly’ denied any bid-rigging.

Malawi discusses legislation on access to state information

In an article in Nyasa Times ("Access to information: who benefits?") Sangwani Mwafulirwa (Advocacy Officer, National Media Institute of Southern Africa) writes at length bout Malawi's Access to Information Bill. According to this article, many people people think of a Bill that has been drafted for the benefit of journalists, so that they should easily get hold of information. In fact, it is intended to benefit all citizens. The 1994 Constitution provided a right to access to information by everyone. However, enjoyment of this right has not been fully realised. Section 37 states:
“Subject to an Act of Parliament, every person shall have the right to access all information held by the state or any of its organs at any level of government in so far as such information is required for the exercise of his rights.”
This includes all records held by a public body, regardless of how the information is stored, its sources, when it was produced or whether it is classified -- a broad category that is capable of embracing intellectual property that is protected by confidentiality. The article details the provisions of the proposed legislation and the various checks and balances it seeks to implement.

Sunday, 6 April 2008

Record income for the Ernie Els Brand

According to Golf Digest, a leading golf publication in South Africa, South African born golfer Ernie Els was a big mover on the GD 50 (a Golf Digest table of the top 50 earners in golf) in 2007. He added $10 million to his off course earnings compared to 2006. His endorsements, appearance fees and golf course design fees brought in $200 million which, when added to his $5 million prize money, make him the fourth richest golfer on the planet. Interestingly, his day job (playing golf) brings him only a sixth of his income. Further down the GD 50 list at 42 is another famous african golfer, the enduring Gary Player (aged 73), whose off course earnings bring in over $5 million, 20 times his current on course earnings.

Afro-IP wonders if the Ernie Els figures included any payments from a fan pub in Surrey which, during The Open last year, sold limited edition - Ernie Ales?!

5five go to prison ...

Ghanaian group 5five ("African Gurlz") has had some problems asserting the copyright in its songs, according to the group’s executive producer and manager, Lawrence Nana Asiamah Hanson (a.k.a. Bulldog). A recent item on Modern Ghana reads:
"An incident in Tamale, according to Bulldog, made them appreciate the hassles in trying to protect one’s own intellectual property.

“We were on tour of the three Northern regions last year with Castro and got wind of 5five material being pirated in Tamale. We tried to pursue it but rather ended up behind bars for some hours. We were not amused at all about the situation but we took it as part of the burden to bear in moving on with our work.”"

Saturday, 5 April 2008

Alleged South African Colgate surfaces in the US

US blog The Gary Baumgarten Report today covers here a story concerning fake Colgate toothpaste in Detroit, Michigan (US) that allegedly comes from South Africa. In January Afro-IP reported on fake toothpaste on sale in Botswana. In both instances the toothpaste was adulterated with anti-freeze, which can cause paralysis and kidney failure.

Thursday, 3 April 2008

Kenyans celebrate Kikoi win

Afro-Ip has learnt through this report and a telephone conversation with the ever helpful UK IPO that The Kikoy Company UK Limited's application in the UK for KIKOY has been deemed withdrawn through lack of filing of a Counterstatement (a form setting out a defence/response to a Notice of Opposition). The UK IPO letter confirming the withdrawal of the application was sent out on 20 March 2008. As is evident by the Daily Nation report, this is very welcome news for all concerned that exclusivity in the word KIKOY granted in favour of The Kikoy Company through a trade mark registration would have meant that users of the cloth termed "kikoi" may have infringed the registered trade mark, which covered clothing and other goods in class 25 of the International Classification.

The Afro-Leo actually doubts whether use of the word "kikoi" to describe kikois would have infringed the registered mark KIKOY (had it been registered) simply because Section 11 of the UK Trade Marks Act provides that a registered trade mark is not infringed by the honest use of a sign to describe goods or services. How else would one refer to kikois (which it appears everyone accepts as a generic term for a type of cloth or fabric, normally of Kenyan origin)? Afro-Leo is, however, surprised that the application for KIKOY slipped through the usually thorough UK IPO examination process, which would normally spit back a rejection letter for these types of applications stating something like "... the mark applied for is an obvious misspelling of a non distinctive/descriptive term for a type of cloth or fabric, and as a result is not registrable in class 25." He does wonder if the term "kikoi" is protectable as a cloth or fabric from Kenya in the same or similar way that "champagne" is protected for sparkling wines and if Kenyan law makes provision for such protection.

Traidcraft Exchange agreed to spearhead opposition to the application in the UK at the request of a Nairobi-based charity Co-operation for Fair Trade in Africa, according to the Daily Nation report. A previous report highlighting the controversy can be viewed here.

South Africa - new patent judgments

Two new patent judgments from the Supreme Court of Appeal are available. Both deal with the absence of an inventive step and, although marked unreportable, will no doubt be of interest to practitioners in the field, given the stature of the court. Provisional revocation was granted in both instances, providing the patentee the opportunity to amend the patent. See Buckman Laboratories v Bromine Compounds (655/06) [2008] ZASCA 37 (28 March 2008) and Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46 (31 March 2008).

"The agony and the entropy"

"Intellectual property and Africa: the agony and the entropy" is the title of the Editorial for issue 4 (April 2008) of the monthly Oxford University Press Journal of Intellectual Property Law & Practice. As editor, Afro-IP team member Jeremy has taken this opportunity to try to get the journal's subscribers and readers more aware of IP in Africa, particularly regarding the difficulties involved in finding out what's actually happening. The text of the Editorial reads as follows:
"In recent weeks, I have been considering the problems faced by those seeking to secure, protect, or exploit IP in the African continent. It seems that, despite the wide spectrum of cultural, ethnic, geographic, and economic differences demonstrated across that vast continent, there are some features which are so widely shared as to be virtually pandemic.

One problem facing Africa's 54 countries (or more, depending on how you count countries and which ones you recognize) is that it is difficult to obtain information as to what the law is and how it works. Most African countries have very small IP professions, which means that there is little or no economic incentive for any publisher to assume the financial burden of launching and selling specialist law journals, law reports, and practitioners' reference works. For the insider, this means an increased degree of reliance on one's own personal knowledge and experience, and of reliance on the assistance of one's closest colleagues; for the outsider it means that advice relating to the filing of a patent, an opposition to a trade mark or a defence to an action for copyright infringement cannot be found without making personal contact with an expert in the country or countries concerned. It also means that, where the same question is asked of several practitioners in the same jurisdiction, their answers are different not because they each analyse the application of the law to a set of facts in a different way but because they often seem to hold different pieces of their country's legal jigsaw in their hands.

A second problem relates to the relative difficulty in communication both within Africa and between Africans and the outside world. Levels of telecommunications penetration, and particularly the lack of broadband wireless internet access, place greater importance on slower and less reliable media such as the fax and the regular postal service. This means that, where IP information is available, it percolates slowly. It also means that much information which, in many developed countries, one simply gathers from an official website is far more difficult to access.

A further problem is that the general level of interest and excitement regarding IP rights which is found in those countries which own the most of them is far lower in those countries which either generate few such rights themselves or regard those rights as being matters of low priority. In many countries where IP is seen as an imported commodity that must be paid for, with consequences for their balance of payments, and where local need (in the case of patented healthcare products) or demand (in the case of branded fashion items and consumer goods) runs higher than the ability to pay for it, it is easy to see why local resentment of foreign IP runs high as well. Then there are countries in which the problems of internal security, external threats, environmental disaster, and demographic instability are so great that IP is viewed as a distraction from the immediate concern for survival.

The picture is not uniformly grim. South Africa has a vibrant and articulate IP community. Many of Nigeria's practitioners have studied the subject in depth in Europe and elsewhere and possess an impressive understanding of the field. Across the top of North Africa too, pockets of professional excellence can be found. But the overall situation remains bleak and two of the braver attempts to remedy it—the OAPI regional patent in Francophone Africa and the ARIPO system mainly English-speaking parts—have remained underutilized as IP owners display their indifference to the need to obtain protection or their lack of confidence that protection is what they will receive.

There is no obvious solution or quick fix to Africa's IP problems. In the short term, however, we must remember that we are dealing with human beings and not only with sets of rules. Before our brethren in Africa can improve the situation there, they must believe that they can do so. We must encourage them and support them, rather than confining our input to complaining about how things are and kicking out at those who have so far failed to put them right. Without the support of the wider IP community, the agony of Africa and its ensuing entropy will only continue, to the detriment of us all".
For the full contents of this issue of JIPLP click here.

Sanitam episode 2 - another injunction

In Sanitam Services Limited v Bins (Nairobi) Services Limited, civil suit 597 of 2007 (unreported,) Sanitam has obtained an interlocutory injunction against Bins restraining the defendant from a host of activities against Sanitam’s patent number AP 773. This High Court judgment, Kimaru J, is dated 20th February 2008.

The order states that, pending the hearing and determination of the suit, the defendant and its servants are restrained from,

  • Providing services using the patented bin
  • Offering for sale or selling the patented bin
  • passing off the foot operated bin as theirs
  • trading in Kenya in any manner likely to cause their business to be confused with that of Sanitam
  • trading in any manner as to infringe patent no, AP 773
  • passing off their business of foot operated sanitary bins as that of the plaintiff

This is the second injunction to issue for Sanitam. The first was against Rentokil in Sanitam Services (E.A.) Ltd v Rentokil Kenya Ltd & another [2006] eKLR, in which the Court of Appeal restrained Rentokil from infringing the same patent, AP 773. The said patent relates to a foot operated sanitary bin. Sanitam applied for the patent on 4th September 1998 in ARIPO and the patent was subsequently granted on 25th October 1999.

Sanitam has fought many battles before the Courts to prevent infringement of the patent. In April 1999, before the grant of the patent, it unsuccessfully sought temporary injunction against Rentokil. After the grant of the patent, it again unsuccessfully sought the same orders in 2000. Thereafter the matter went for full hearing in which the High Court ruled in 2002, Sanitam Services (ea) Limited V Rentokil (k) limited [2002] eKLR, that Sanitam had not proved infringement.

Sanitam appealed against the decision of the High Court and it partially succeeded in the Court of Appeal (in 2006) in obtaining an injunction for the lifetime of the patent with effect from 16th December 1999, the date when Sanitam submitted an amended plaint to take account of the granted patent. However, the Court of Appeal did not award damages, ruling that, “[h]aving so found on the issue of infringement, it was unnecessary to examine the hypothetical issue relating to damages.” It may not be surprising that this is the first case on patent infringement in Kenya to go through the ranks all the way to the Court of Appeal.

After the Judgment against Rentokil in 2006, ARIPO published an entry in its Journal to the effect that the patent had lapsed for failure to pay annual fees. Sanitam then sought the intervention of the Board of Appeal, which ultimately overturned ARIPO’s decision and reinstated the patent on the register.

The present case, against Bins, is quite interesting and demonstrates the complexity of resolving intellectual property disputes and it kind of echoes the sentiments expressed by the Court of Appeal in the Rentokil case that it is “…a branch of law which has scanty litigation and therefore minimal jurisprudential corpus in this country...”

For example, the orders sought by the plaintiff included passing off and damage of goodwill, which ordinarily are trade mark issues. It is telling that the counsel for the plaintiff made submission to the effect that “a case relating to patent was similar to that of protection of trade marks.” However, it is not clear how or to what extent that relationship holds but it may be because the practitioners are more conversant with trade marks disputes which are legion, and this probably explains the tendency to extrapolate from experience of familiar territory.

The defendant argued that:

  • The existence and efficacy of the patent was doubtful (perhaps alluding to the removal and restoration of the patent from the register).
  • The plaintiff had not demonstrated that it had invented the bin.
  • The patent was meant to muzzle the legitimate activities and honest business activities of the defendant.
  • The plaintiff had not demonstrated that the patent was its invention.
  • The plaintiff had registered the patent to achieve a technical result-to lock out other users of the sanitary bin from the market.
  • Similar bins were in use in many parts of the world and the defendant had imported the bin it was issuing to its customers.
  • It was in the process of challenging the registration of the patent.

As one would expect, this thread of argument by the defendant did not offer a lifeline, and the court was convinced that the law did not back the contention by the defendant that it was not bound to respect the patent.

The court concluded that the issue to be determined was not whether the patent was wrongly registered but whether the plaintiff had established a case to entitle the court grant the orders sought. As such, the court distilled three principles needed to support an injunction; namely, that applicant was required to demonstrate,
(1) probability of success at trial; and
(2) that damages would not adequately compensate for the loss suffered and
(3) consideration by the court balance of convenience in case of doubt on either (1) or (2).

In the circumstances, the court made a finding that the plaintiff had proved it had a valid patent, which was infringed by the defendant by the acts of offering for sale or hire foot operated sanitary bins without authorization of the plaintiff. Apparently, the Rentokil case considerably influenced the decision to grant the injunction, with the court holding that the two cases were similar.

The court further observed that if the defendant considered that the patent was wrongly registered it could apply for invalidation or revocation of the patent under section 103 of the Industrial Property Act, 2001(Act) and that it could also seek exclusion of application of the patent in Kenya under section 59 of the Act.

While the observation on revocation under section 103 is correct, it does appear that the court was wrong in stating that the defendant could seek exclusion, under section 59 of the Act, of the application of a patent in Kenya where the patent is registered by ARIPO.

Section 59 provides that:
A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act except where the Managing Director communicates to ARIPO, in respect of the application thereof, a decision in accordance with the provisions of the Protocol that if a patent is granted by ARIPO, that patent shall have no effect in Kenya.

First, the word “application” in section 59, does not mean “application of a patent in Kenya” as stated by the court, rather it is in reference to a “patent application”. This is so because once ARIPO makes a decision that an invention is patentable, before granting the patent, it has to communicate the decision to member states (meaning heads of the respective patent offices), who determine whether the patent will have effect in their country.

Secondly, under the section it is only the Managing Director who is mandated to communicate a decision to ARIPO that the patent if granted will not have effect in Kenya. There is no provision in the Act for an aggrieved person to seek exclusion of an ARIPO patent based on section 59.

Thirdly, section 59 is only applicable before grant of a patent not after grant, as is the present case.

RiSA blames pirates for falling sales of local artists

According to The Times, South Africa, the South African music industry is blaming piracy for the R14-million drop in sales of CDs and DVDs of local artists. Figures released by the Recording Industry of South Africa (RiSA) showed that, despite a growth of 2.4 percent in the industry’s total physical sales — from R996 million in 2006 to about R1 billion last year — there was a decrease in sales of CDs by local musicians, this being the first time in the past 10 years that local artists’ sales have dropped year-on-year. While the overall sales of music by international artists rose from R460 million in 2006 to R499 million in 2007, CD sales by local artists dropped from R339 million to R336 million over the same period, while cassette sales dropped by R12 million. Ivor Haarburger, chairman of RISA, said the drop could be attributed to piracy and rising costs of production.

The same article reports that, last year, artists including Mzwakhe Mbuli (above, left) and Richard Siluma took the battle against piracy to the streets, raiding shops and factories producing pirated music and confiscating millions of rands worth of counterfeit products.

Wednesday, 2 April 2008

Debranded fakes for Liberia: an update

Back in December Afro-IP reported on a haul of counterfeit goods, seized in Scotland, that was to be de-branded and sent to Liberia for humanitarian purposes. It has now been reported that the infringing articles have now been handed over to the charity that is taking the responsibility for debranding and redistributing them. Bedfordshire-based charity His Church is collecting similar hauls from five Scottish local authorities. His Church has apparently been fully accredited by the Federation Against Copyright Theft (FACT) to undertake the de-branding and re-badging process. As part of the agreement, His Church will provide full disposal schedules to show that the counterfeit goods do not return to the supply chain.

Tuesday, 1 April 2008

Embossing scheme on trial to deal with fake drugs in Ghana

Joy Online notes that a new technology that allows consumers to detect counterfeit drugs is currently on trial in Ghana. Mpedigree Network, supported by the African Development Corporation (ADC) based in Boston in the United States of America, are spearheading the trial, which involves embossing special codes on to genuine products; at the point of purchase, consumers scratch a panel to reveal the code number and then send it via SMS number 1393 to any of the networks to find out whether the product was fake.