Monday, 30 March 2009

Importers no match for Cameroon customs

African Manager reports that a consignment of three million counterfeit matchboxes has been seized at the port of Douala, the economic capital of Cameroon. The cargo, with an estimated retail value of 60 million cfa, was smuggled in 40-foot containers from Asia. According to one Cameroonian customs officer:
"What caught our attention is that the matchboxes carried the logo and features of UNALOR - which was made in Cameroon. We could not understand how matchboxes made in Cameroon could be imported here".
When the happy day comes that Cameroon can profitably outsource the manufacture of its matchboxes to other nations with lower production costs, the importation of legitimate UNALOR matchboxes might become quite normal. Till then, it's good to know that the local customs officials have their wits about them.

Friday, 27 March 2009

IPL move to RSA - IPright

In under a month the Indian Premier League (IPL) will be hosted in South Africa. IPL organisers moved the tournament from India to South Africa when the Indian government refused to sanction the match schedule because it clashed with federal elections causing security concerns. In just three weeks IMG (the sports marketing giant responsible for organising the tournament) will have the huge task of organising and selling 59 IPL games across eight SA cities.

Some of the reasons for moving the tournament to RSA (as opposed to other cricketing nations) are set out in this Guardian article . SA's ability to effectively protect the IP rights around the tournament is not cited as a reason for moving the tournament to South Africa but one feels that the absence of major discussion around this point is tacit acknowledgement of the confidence sponsors and organisers have in the IP regime in RSA. And there are good reasons why it has not been a reported discussion point (though it must be said that the High Court's delay in delivering the interim relief decision in the Servier case, now due today, is not one of them).

Right: The Rajasthan Royals celebrating RSA's IP rights regime

Despite the fact that not a single team is registered as a trade mark at the national office and only two main players have their names protected as trade marks (Gibbs and Kallis), there are a host of tools available to the rights holders. Take for instance, S15A of the Merchandise Marks Act under which IMG, as event organiser, could make representations to the Minister of Trade and Industry, to persuade him to authorise the forthcoming event as a protected event. Protection for "protected events" is extensive - no person may use a trade mark in relation to such an event in a manner which is calculated to achieve publicity for that trade mark and thereby derive promotional benefit from the event, without prior authority of the organiser of such event. S15A protects sponsors against ambush marketing.

An ‘event’ is defined ‘any exhibition, show or competition of a sporting, recreational or entertainment nature which is (a) held or to be held in public; (b) likely to attract the attention of the public or to be newsworthy; and (c) financed or subsidised by commercial sponsorship, and includes any broadcast of such exhibition, show or competition’.

In addition, as RSA is a member of the Berne Convention for the protection of copyright it recognises and protects international copyright. This may be a particularly useful tool as most of the names used by teams have logo elements regarded as artistic works and likely to attract copyright automatically. An unlicensed trader selling say T-shirts bearing the logos is likely to infringe to the copyright and be guilty of an offence entitling rights holders to conduct police raids to confiscate goods, and the State to fine perpetrators. Furthermore customs can be notified to police all borders for counterfeit goods bearing infringing logos. There are also constitutional rights that may protect the personality rights of individauls.

S15A of the Merchandise Marks Act, increased penalties under the Copyright Act and the existence of the Counterfeit Goods Act are all developments to toughen RSA's IP regime in the last 10-15 years, and are a good IP foundation for hosting tournaments such as IPL, Fifa's Football World Cup and IRB Rugby World Cup.

Wednesday, 25 March 2009

Southern Alignment?

See full size imageMark Schultz and Alec van Gelder published a paper late last year called "Nashville in Africa."  (Afro-Leo reported on it here and here.)  The pair are currently in Nashville, having spent two days presenting on their paper and working to build alliances in the Nashville music industry.  So far, the Country Music Association seems to at least be fairly open to Schultz and van Gelder's ideas.

The authors spoke Monday at Vanderbilt University Law School to a group of law students and professors, and Tuesday at the Leadership Music Digital Summit at Belmont to folks from the music industry.  The reason for focusing on Nashville: central Tennessee, in the early 20th century, was very much like many places in Africa - malaria cases and all.  The area's living standard was far below the rest of the country; hopes for development were placed on exploitation of natural resources like minerals; and various government aid projects were implemented to try to support the population.  Yet, there was music and creativity, untapped, low-overhead, resources.  With a little bit of ingenuity and risk, a few talents, and the cooperation of a lot of people, Nashville emerged as Music City USA.

Schultz and van Gelder believe that music industries in Africa can learn from and adapt this model.  They aren't just talking about piracy here, although that is an issue.  They are also talking about creating record labels, developing artists, producing music in the respective countries (instead of London or Paris) and utilizing collective management.  In sum, building creative clusters, areas to which all the different parts of a music industry can come and nurture each other and grow.

A lot of music industries in Africa are already doing these things, but not necessarily well, and few places have all aspects functioning properly.  That's where modern-day Nashville comes in.  Experts from Nashville's music industry can help their African counterparts build upon the skills they already have, focusing on the needs of the African industry but utilizing the knowledge of the Nashville experts.  (This Little Leo happens to think this model sounds very similar to the US Peace Corps model for work in Africa and other developing areas.)  Then African music industries will grow and establish vibrant creative centers for their country.  These creative centers will create jobs directly related to the music industry, as well as spark developments in ancillary industries in the area.

It's a grand idea, obviously fraught with hurdles.  But, Schultz and van Gelder recognize these hurdles; they are very common: corrupt government, lacking infrastructure, etc.  The authors hope to continue their research in Africa and explore possibilities for helping African music industries stabilize and become national and global economic players.  One piece of encouragement the authors find is in a similarity between Nashville's history and the history of Zambia's Mondo Music beginning after the Copyright Law revamping in the mid 1990s.  This could be the perfect place to start.

In Nashville, the biggest hurdle appears to be Americans' perceptions of Africa: war and poverty and nothing more.  A Summit participant from the music industry asked the authors if anyone in Africa even cares about copyright laws.  'After all', she said, 'Sudan doesn't even care that their people are dying from war.'

Tuesday, 24 March 2009

Kenya: Sanitary patent wars


As posted earlier here, the High Court of Kenya has declined to grant a temporary injunction to restrain the Sanitam (the defendant) from threatening Rentokil’s (the plaintiff) clients over a sanitary bin.

The plaintiff made the application for temporary injunction after the defendant wrote letters to the plaintiff’s clients warning them to stop using sanitary bins supplied by the plaintiff, which the defendant considered an infringement of its patent AP 773.

In an affidavit by its financial director, the plaintiff acknowledged the continuing dispute between the parties over sanitary bins. It will be recalled, as posted here that the dispute between the two started back in 1999 when Sanitam sought but was denied by the High Court an injunction against Rentokil for infringing the patent. The injunction was finally granted by the Court of Appeal in 2006, and Rentokil was restrained from infringing the patent for “the life of the patent”.

In the present dispute, it would appear that Rentokil developed a new bin by changing certain features in its bin to distinguish it from that of Sanitam. In its application before the Court, the plaintiff focused on the features of the new bin to argue that the two bins were different and that the defendant was seeking to enforce a patent over a completely different bin.

After reviewing the “conditions for grant of an interlocutory injunction in East Africa”, Kimaru J dismissed the application pointing out that the plaintiff had failed to establish a case.

The ruling brings out a number of issues. First is the way the parties presented their arguments. It would seem that the plaintiff set the ground for what seemed like a case of threat of infringement proceedings, but then proceeded to base its argument on differences between the bins, in essence arguing that the defendant was seeking to enforce a patent over a product that was completely different from the patent one. It would seem that the plaintiff by design or inadvertently shifted attention perhaps from what would have been the main thrust of argument i.e. the threatening letters issued by the defendant. Instead, the plaintiff focused on the defendant’s patent.

From there on the issue before the court was whether the bins were similar or not. This line of argument seems to have worked in favour of the defendant who presented evidence that was accepted by the Court that the bins were similar.

It is debatable whether the court would have arrived at a different opinion if the plaintiff had pursued the matter under section 108 of the Industrial Property Act (the Act), which provides for injunction and damages against a party issuing threat of infringement. Interestingly the defendant swore that it wrote to various entities, warning them of consequences they were likely to face for infringing the patent!

The defendant presented an expert report to substantiate that the two bins were similar to the extent that all the plaintiff had done was to change the external angles of the bin to suggest a change but the working of the mechanism was the same as that of the defendant’s patent. The Court seems to have been persuaded by this report, and agreed with its finding that the two bins perform the same function in the market place!

The previous dispute between the parties culminating in the Court of Appeal decision in 2006 in favour of Sanitam seems to have also worked against the plaintiff. The Judge noted with approval the recognition given by the Court of Appeal on the validity of the patent, and it seems that the court was not ready to entertain any contradicting view. In the end the modifications made on the plaintiff’s bin were termed as cosmetic.

At some point the court made a number of pronouncements that do not seem to be clear or relevant to the issue under consideration. In dismissing the application the Court was of the view that although the plaintiff claimed that its sanitary bin was different to the patented one, the plaintiff did not present evidence to suggest it had attempted to patent its modified bin. The relevant of this pronouncement is not clear, as it is not necessary for one to have patented a rival widget to have it recognized as being different from an existing one. It is also true that a second patented widget may also infringe on an earlier patented widget.

While acknowledging that the plaintiff could have designed its bin to be different from that of the defendant, the Court was however of the view that the only institution capable of determining whether the two bins were different is the patent office- KIPI.
According to the Court, it is not its duty to determine whether the invention that is the subject of litigation conforms to the patent or not, rather the duty of the Court is to uphold a registered patent. These statements seem to contradict the final opinion of the Court whilst dismissing the case on the ground that the plaintiff had failed to establish that its bin is different to the patented one!

It is also not clear why the plaintiff pursued the matter in the High Court rather than with the Industrial Property Tribunal. The Tribunal, established under section 112 of the Act is mandated at first instance to hear matters such as infringement and threats of infringement. It is upon the decision of the Tribunal that a party can appeal to the High Court. Under section 115 (2) of the Act, the High Court, upon hearing of the appeal, may confirm, set aside or vary the decision of the Tribunal.

From the foregoing, it follows that contrary to its view that it can only uphold a registered patent the Court also has the mandate to determine whether a patent is infringed or not. In doing so, it is necessary to determine whether the accused widget falls within the ambit of the claims under the patent. The extent to which KIPI could determine whether the two widgets are the similar or not is during the patent granting procedure, and once a patent is granted the mandate of the patent office ends. If any dispute arises thereafter as in the present case, it is incumbent upon the Court to make that determination. A patent office is hardly equipped to determine issues of patent validity. Suffice to say that a big number of granted patents are routinely invalidated by the courts.

New US Trade Representative - Afro implications

Ron Kirk steps into the role of United States Trade Representative, sworn in by Vice President Joseph Biden on Friday. Kirk is the first African American to assume the position. Kirk’s office is responsible for the development and oversight of U.S. trade policy, including strategy, negotiation, implementation and enforcement of the country’s trade agreements. He will also oversee the country’s trade policy involving agriculture, industry, services and investment, intellectual property, environment, labor, development and preference programs. (afro.com)

Insight into Obama's campaign pledges (which Kirk is likely to implement) are summarised on "Eyes on Trade that, according to Obama, trade agreements will not "stop the government from protecting the environment, food safety, or the health of its citizens; give greater rights to foreign investors than to U.S. investors; require the privatization of our vital public services; or prevent developing country governments from adopting humanitarian licensing policies to improve access to life-saving medications." This provides a starting place for Kirk's formulation of a new policy as well as answers to some of Joff Wild's questions posed recently on Afro-IP here.

Monday, 23 March 2009

Kenya: Sanitary patent wars episode IV: No hope for Rentokil



In the matter of Rentokil Initial Kenya Ltd v Sanitam Services (E.A.) Ltd, civil case no 702 of 2008 (unreported), the High Court of Kenya has declined to restrain the defendant from threatening, intimidating, harassing, embarrassing and confusing the plaintiff’s clients and customers over sanitary bins provided by the plaintiff.

The plaintiff made the application for temporary injunction after the defendant wrote letters to the plaintiff’s clients warning them to stop using sanitary bins supplied by the plaintiff, which the defendant considered as infringement of its patent AP 773.


More detailed analysis of the case will be posted later.

Boom time ahead for Egyptian generics?

TradeArabia reports that the Eastgate Capital Group,a private equity fund management arm of NCB Capital of Saudi Arabia, has aquired a key stake in Egypt-based Sigma Pharmaceutical Industries for EGP220 million ($40 million). The funding will let Sigma expand into other regional markets including Algeria and Sudan. Egypt represents one of the largest and fastest growing pharmaceutical markets in the Mena (Middle East/North Africa) region, growing in value on average at approximately 15 per cent per annum over the past eight years.

Afro-Leo wonders whether any African country that starts off with a booming generics industry will ever acquire a proprietary pharma patent base too.

Friday, 20 March 2009

As predictable as...

a Fritzl guilty decision .... is AJ Da Silva's decision to postpone judgment in the Servier v Medpro case for a further week. It is fortunate that the facts are not remotely as shocking but it is farcical that an interim relief decision takes so long.

NCC Tackling Piracy through Partnerships

image The Nigerian Copyright Commission held a one day workshop to launch a program that will educated optical disc replicating plant owners about copyright law and their responsibilities under the Copyright Law and Optical Disc Regulations.  The workshop included various stakeholders from the copyright related industries and resulted in a list of resolutions for both the government and the replicating plants.  At the workshop, the Director General of the NCC also reminded those in charge of the optical disc plants that many plants are not yet in compliance with the Optical Disc Regulations and of the need to be in compliance.

The NCC has also teamed up with the Nigerian Minister of Aviation.  The Minister is allowing NCC officials into normally off-limits sections of Nigerian airports in order to conduct searches of transported goods for pirated materials.  (Full story.)

Thursday, 19 March 2009

Nigeria: domain name development

Afro-IP has learnt via several sources that the Nigeria Internet Registration Association has announced a new policy for the registration of ".ng" domain names. The new policy amends the eligibility criteria for domain names and introduces a procedure whereby accredited registrars will act as intermediaries between NIRA and applicants.

Presently, trademark owners seeking to register a '.ng' domain name are required to show that have a presence in Nigeria and demonstrate that they intend to use the domain name on a regular basis. Under the new policy it will not be necessary for a brand owner to have a presence in Nigeria provided that they have a registered trade mark which is identical to the domain name. This development is expected to reduce incidences of cybersquatting (presumably by local Nigerians) and should increase filings in the region by encouraging non local brand owners to file trade marks to obtain domain names. The new policy is scheduled to take effect in the near future and Afro-IP looks forward to hearing from anyone with further information.

Rwanda: New Industrial Property Act

According to an email from Mr. Armand CIAMALA the "Parliament of Rwanda has adopted a new Industrial Property Act. A new structure named Rwanda Development Board has been set up to take over from the Ministry of Industrial and be in charge of Registration of Industrial Property rights. The Rwanda Development Board is already operating but still according to the former legislation as the new one is still to be published in the official gazette and the Ministry is still drafting the Regulations. Main changes in regards with trademarks are that registration is valid for ten years indefinitely renewable and the introduction of advertising and opposition proceedings." Afro-IP looks forward to further updates.

Wednesday, 18 March 2009

South Africa: The Century City Case

Afro Leo had the recent delight of reading Judge Davis’s decision in The Century City case[i]. Briefly, Century City Property Owners’ Association (“Applicant”) sued Century City Apartments Property Service CC (“Respondent”) for use of the trade mark CENTURY CITY on the grounds of trade mark infringement, passing off and under close corporation legislation. Respondent defended by claiming that the registered trade mark for CENTURY CITY should be cancelled because it is a place name and that its use of Century City constitutes bona fide use of the name of its place of business and/or is descriptive and not likely to deceive or confuse. Century City is an imposing development which dominates Northern Cape Town. Davis J held in favour of the Applicant on all counts but not before illustrating the issues with a reference to a humorous letter from Groucho Marx to Jack Warner following a threat by Warner Bros. Studio to stop use of the title of the film A Night in Casablanca on the basis of alleged rights in the name Casablanca.


Quoting from the Century case:

“the meaning of Century City flows directly from the development of a piece of land located in Montague Gardens. The meaning of Century City is inextricably linked to this particular development. The right that flows therefrom emerged from the nature of the development rather than from a dictionary meaning or a geographical location.”

“The essential characteristic, for which he [Respondent] contends, is they are ‘Century City Apartments’ not that they are necessarily located in Century City. The descriptive power is connoted in the words ‘Century City’. Hence this phrase seeks to exploit the value which is inherent in the trade mark belonging to applicant.”

The decision endorses the importance of registering trade marks. If this case was brought on passing off alone it would have been more difficult for the Applicant to succeed and more risky to prosecute. The decision also highlights that developers have an ongoing need to ensure that names of their creations are properly used, on a continual basis. That said, with all the name changes and new developments in South Africa over the last decade there must be a fine line between what is actually a geographical location and a proprietory development. For example, what if Century City was in fact a government funded housing development for the re-settlement of a shanty town, which gave birth to a Century City Estate Agency. In the same way that a Johannesburg Estate Agency would not infringe trade mark rights in the word Johannesburg, Century City Estate Agency would surely not infringe trade mark rights in Century City (in that example)?

It is not clear whether the case has been appealed.


[i] Century City Property Owners Association (A Section 21 Company) v Century City Apartments Property Services CC and Others; Century City Apartments Property Services CC v Century City Property Owners Association ( A Section 21 Company) and Another (17225/2005) [2008] ZAWCHC 63

Tuesday, 17 March 2009

Refreshing

An eight word post and a single link.

Database on African Theses and Dissertation (DATAD) programme

Heads of tertiary institutions and academic researchers in Africa are meeting in Accra to deliberate on providing regional and national data base systems to improve the management and access of African scholarly works according to Ghana News Agency.

The three-day seminar organized by the Association of African Universities (AAU) to discuss policy guidelines for the operation of Institutional Repositories in Africa for the creation of a common platform to manage and disseminate theses and dissertations of African Universities electronically. Among other objectives the organisers seek to facilitate the development of copyright procedures and regulations to protect intellectual property rights of African university graduates and researchers.

Afro Leo recently enjoyed an enlightening discussion with Denise Nicholson and is interested in her views on this development.

Monday, 16 March 2009

Zap in trouble!


Zain, the Kuwaiti based telecoms giant may be sued over its use of the Zap trademark in Kenya. Zap is the flagship brand that is chasing Safaricom's 'MPESA' in East Africa's Mobile money business.

Zain
is challenged by Ngoko Enterprises, a small company trading in cleaning agents and has given the registrar of trademarks 14 days within which to respond to its notice, after which it intends to take legal action.

This development is positive in as far as small firms are willing to assert themselves and protect their brand rights. It would be interesting to see what Zain would do if its use of the name Zap was deemed unlawful, either by the registrar of Trademarks or the High Court. The Zap challenge also underscores the importance of companies carrying out due diligence on trademarks before launching important products as such an oversight could lead be mortally fatal to the product. The other issue that arises is, if Zain is disrespectful of other companies' brands, why should the public respect its brand?!

Uganda's Phone tapping bill, a ruse for IP infringement?!


Uganda's Minister for Security, Amama Mbabazi recently presented the "Regulation of Interception of Communication Bill, 2007 before parliament. As one can see from the title, the ominously named Bill is intended to legalise the tapping of phones that the Minister has been going on surreptitiously. A copy of the bill that has raised the ire of Lawyers and privacy advocates is available upon request.

The issue for this blogger is whether this law, also known as the 'tapping' bill can be used to 'tap' people's intellectual property. Uganda recently passed the Trade secrets Bill which is pending Presidential approval. As soon as this law is available, it will be posted. One wonders whether intellectual property advocates cannot successfully challenge this bill if it threatens the essence of the Trade secrets Bill.

Microsoft launches BizSpark project in Tunisia

Africa News reports that Microsoft introduced Microsoft BizSpark in Tunisia at the end of February. The programme, which is already running in a number of countries, seeks to support and accelerate the development of small businesses in several Tunisian regions, establishing businesses and young promoters of projects in the field of computers, software creation and web design. The project offers low cost access to technology, with a specific focus on entrepreneurial enterprises and startups. It also aims
"to allow the beneficiaries to benefit for three years, applications, "Microsoft" and their technology support programs, while helping them to market their projects through their inscription on the portal of Microsoft".
Every time I tried checking out the BizSpark terms and conditions in order to see whether Microsoft took any licence or greater interest in software developed by young Tunisians, my browser kept freezing. Perhaps some kind reader will check them out for me and post the results below.

IP News clips

The World Health Organisation has condemned the Dutch Government’s “farcical” detention of HIV medication destined for Sub-Saharan Africa, which it says flouts world trade rules – and will endanger patients’ health. (Pharma Times)

"New law paves way for war against fakes" -more commentary on Kenya's Anti-Counterfeit Legislation.

The World Intellectual Property Organization said it received a record number of complaints on cybersquatting -- or abusive registration of trademarks on the Internet (AFP).

For the full articles click on the links above.

And finally....Afro-IP is offering AJ Da Silva a free course in Managing Expectations after his umpteenth postponement of his own deadline for handing down the judgment in Servier v Cipla Medpro. Apparently, it will be now ready on Friday this week....

Friday, 13 March 2009

Question for Our Readers: African CROs

Afro-Leo is looking for some missing information.  How many African countries have collecting societies to manage copyrights?

Perhaps some Afro-IP readers know.  If you have an idea of how many countries have collecting societies or if you know of collecting societies in a specific country, please leave a comment.  Maybe we can get enough responses to add Africa to the Wikipedia list.  (The whole continent's been left off!)

Help add to our collective knowledge of collecting societies.  Here's what Afro-Leo has so far:

  • South Africa - RISA and SAMRO
  • Nigeria - MCSN and PMRS (debated)

 

Thank you!

Friday firm up

Nigeria: Brand Nigeria - Do We Really Need a Re-Branding? A fascinating opinion by Jideofor Adibe on Nigeria's efforts to change a perception and why, perhaps, it is not necessary.

Having needled through needletime rights, Nokia Music Store is coming to South Africa in April and promises to deliver millions of digital tracks from global hits to local artists.(News24)

Right: Afro-Leo catching some shut eye in the long wait for the Servier v Cipla Medpro judgment

New Denel chief speaks on the impact of economic turbulence, sustaining its restructuring plan, prospects for further State aid and forging new alliances, including leveraging SA owned IP and attracting inward investment. (Engineering News)

The ICTSD reports that Developing countries ramped up their criticisms of the EU last week, saying that its recent seizure of a shipment of generic drugs en route from India to Brazil violated trade rules on intellectual property and had significant implications for the availability of affordable medicines in poor countries. The criticisms were made at a meeting of the WTO’s Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS Council) in Geneva on 3 and 4 March. Participants at the gathering also broached long-standing disagreements on three issues: extending to all products the strong protection currently accorded to geographical indications of wines and spirits (GI extension); making it mandatory for patent applicants to disclose the origin of any genetic resources and/or associated traditional knowledge involved in their inventions; and the establishment of a register for geographical indications (GIs) of wines and spirits.

South Africa is planning to invest R80-million over the next three years in the acquisition of a high-resolution transmission electron microscope (HRTEM). to ensure that the country will be interna- tionally competitive in the fields of nanoscience and nanotechnology. (Engineeering News).

Durban-based light aircraft engine manufacturer Adept Airmotive has been named 2008 Autodesk Inventor of the Year for its development of a revolutionary aviation engine with the help of digital prototyping technology. Runner-up positions in the Inventor of the Year poll went to US-based company Sound Devices LLC and British Antarctica Survey (BAS).

Thursday, 12 March 2009

Next big thing award 2009


Innovic, an Australian not for profit organization is running a global competition to find and showcase innovations and new technologies with the potential to become the “next big thing”. According to their promotional catalogue, the award scheme was started three years ago to help commercialize viable new ideas.

The 2009 award was launched in November 2008 and for those who would like to apply, the deadline is 16th March 2009.

Further information on the award scheme can be obtained at http://www.innovic.com.au/ or http://www.nextbigthingawrd.com/

Wednesday, 11 March 2009

Intellectual Property and Anti-Counterfeiting Forum


A conference on intellectual property and Anti counterfeiting will take place on 23rd – 24th April 2009 in Nairobi at the Intercontinental Hotel.


The two-day forum organized by Marcus Evans will focus on intellectual property and anti counterfeiting strategies. The forum will also define the way forward in protecting brands of the region and using the most effective technologies in combating the counterfeit menace.


The forum will draw a panel of speakers from diverse organizations involved with intellectual property, anti counterfeiting, anti-piracy and brand protection from the African continent and the rest of the world.


There will also be a plenary session to discuss and debate the current issues facing the integration of East Africa into the global markets through private enterprise and innovations.


More information on the conference here.
To participate in the conference, the contact person is Hennie Potgieter, Email: henniep@marcusevanssa.com

CapeMic workshops

The Cape Music Industry Commission is hosting a series of workshops on IP facilitated by the Cape MIC CEO, Peter Theunissen and staff, at Mitchells Plain on the 14th March and Langa on 28th March. Discussions will range from registration with collection houses (royalties) to IP in emerging digital media and beyond, and will give participants a clearer understanding of how South African composer’s IP is protected in a local and global music economy. To register click here and follow the prompts.

Tuesday, 10 March 2009

Nigeria to Have One Commission for IP?

Lawmakers and stakeholders have been tossing around a proposal to unite Nigeria's various intellectual property bodies under one roof for many years.  The Nigerian Intellectual Property Commission, or NIPCOM for short, would combine the Nigerian Copyright Commission (NCC) and the Trademark and Patent Office.  NIPCOM was originally approved in 2006 by the former president, Olusegun Obasanjo.  Nothing happened to further the creation of the commission.  (Although many people started referring to NIPCOM as an existing agency.)  The Punch reports that a draft bill to form NIPCOM is now before the "appropriate government."

It is unclear how well such a merger between the two bodies would work, since there is a lot of animosity between them.  There is also the possibility that combining the two could involve more logistical issues than meet the eye. Of course there is the regular set of ego-problems, needing to turn two DGs and two Secretaries, and two of everything else into one each.  But, there is also the problem that the two agencies may currently be under the auspices of different Federal Ministries.  Afro-Leo knows for sure that the NCC is under the Ministry of Justice, but was unable to find out if the Trademark and Patent Office was also moved.  (If not, it may still be under the Ministry of Culture and Tourism.)

Afro-Leo is a little curious about the development reported by The Punch.  Does a draft bill in front of the executive really mean an already approved agency is any closer to actually existing?  Afro-Leo would be interested to hear thoughts, especially from Nigerian practitioners or members of the current IP agencies.

Monday, 9 March 2009

Tanzania FCC reports on 2008 import seizures

East African Business Week brings news that Tanzania's Fair Competition Commission (FCC) is not purely ornamental. The FCC says that last year it impounded and destroyed imports worth US$ 1.2 million (TShs1.6 billion) from some 25 local businesses. FCC Director General Godfrey Enock Mkocha unsurprisingly said most of the counterfeits came from China and other Far Eastern countries, thus confirming what appears to be a general pattern not just in Africa but in Europe too.

Right: on the lookout for counterfeit imports?

While the FCC had not conducted a comprehensive study of the extent of counterfeiting in Tanzania, Mkocha estimated that fakes could add up to 30% of imports -- a volume that would be technically and logistically impossible for the FCC to check individually at the point of entry. Random sampling is therefore deployed. This depends on co-operation from the Tanzania Revenue Authority (TRA) and the general public through tip-offs. While those involved in importing counterfeits face fines or imprisonment, most it seems just pay the fines.

Sunday, 8 March 2009

Uganda anti-counterfeit legislation under scrutiny

Indian generic manufacturers are very concerned about the proposed Uganda anti-counterfeit legislation which,if enacted, would threaten their market in Uganda and surrounding territories. An article entitled "Ugandan move on patented drugs' import worries Indian companies" published by India's Business Standard describes the situation:

"Uganda, the fourth-largest importer of Indian medicines in Africa, is discussing a draft proposal to prevent entry of drugs defined as “counterfeit” for breaching intellectual property claims, which analysts here say will impair Indian firms’ ability to export drugs into that country."

"The proposed law also intends to make transit or trans-shipment of counterfeit goods illegal and allows border measures against such goods."

Readers may recall that a similar concern was raised against Kenya's draft anti-counterfeit legislation reported in Jeremy's post "India up in arms over Kenya's anti counterfeit bill".

What is your view - should generics be excluded from anti-counterfeit legislation?

Further south Les Laboratoires Servier is applying for an interim interdict to prevent Cipla Medpro from selling its generic perindopril medicine in South Africa. Afro Leo has now been told that the decision is postponed again! - this time "by no later than" 13 March. It is now over a month since the case was heard by acting Judge Da Silva. If you have forgotten what that case is about click here.

Friday, 6 March 2009

Purcellin mark put to the test in RSA

Adams and Adams reports on a recent decision, Union-Swiss v Medpro Pharmaceutica (Pty) Ltd, where the High Court of the Western Cape found that the applicant’s mark, Purcellin, had been infringed. Purcellin is a synthetic version of the oil found in the preen glands of waterfowls, and is the ‘magic’ ingredient in Bio-Oil, a very popular skin care product. (This Post by Roshana Kelbrick)

The applicant was the registered proprietor of the mark Purcellin and the respondent acknowledged that it used the mark without authority on a similar product. The respondent alleged that the applicant had no bona fide claim to proprietorship, as the original proprietor had abandoned the mark, after which the applicant registered the mark in South Africa. As proof, the respondent submitted a number of internet searches that showed patent specifications referring to Purcellin Oil, and alleged that this was now in common use as a descriptive term for synthetic preen gland oil.

The court found that the mark was distinctive in South Africa, as the respondent had failed to show that other manufacturers sold products in South Africa that used the term Purcellin to describe the relevant ingredient, and that the existence of patent specifications did not prove that the term Purcellin was used in a generic sense in South Africa. Also, the applicant could claim to be proprietor, as it appropriated the mark with the consent of the original proprietor.

What is of interest here is the fact that the applicant also filed a complaint with the ASA (Advertising Standards Authority). Much has been written recently about the advantages of raising trade mark issues in this forum, rather than embarking on litigation, and this ASA ruling illustrates some of these advantages. The ruling appeared at least a year before the judgment (December 2007), and, while the ASA did not find that the advertising goodwill of the applicant had been breached by package copying, it did find that the claims made on the respondent’s packaging conveyed the message that the product was a medicine, rather than a cosmetic, and that the claim had to be withdrawn (and so the packaging changed). Also, in proceedings before the ASA, outside counsel may not appear for the parties, in contrast to High Court proceedings.

But one problem experienced before the ASA was the fact that infringement litigation had also been instituted – the ASA ruled that, because action had been instituted on substantially the same subject matter (the trade mark infringement), clause 2 of the ASA Procedural Guide prohibited the ASA from considering this aspect of the complaint. This did not disadvantage the applicant, as the respondent had to change its packaging, but it is possible that an earlier (and less expensive) ruling on trade mark infringement could have been obtained.

Guest Analysis: THE DISTELL DECISION (Kenya)

By John Syekei, LLB, Partner and Head of Intellectual Property, Muriu Mungai & Company Advocates.

In a recent decision the High Court of Kenya has reinforced rights of foreign proprietors over their Trade Marks from adverse claims by local distributors of their products bearing the disputed Trade Marks in the case of Distell Limited Vs Southern Brandy Liquor Company Limited Vs Distell Kenya Limited, the plaintiffs filed suit against the defendant seeking a permanent injunction to restrain them from continuing to carry on business in the name “DISTELL” which was the 1st Plaintiff’s registered service mark.



The facts of this case were that the 1st Plaintiff was registered as a foreign company in 1996 as Distillers Limited. In 2002, the name was changed to Distell (pty) Ltd. It was again changed in 2005 to Distell Limited. Since 1996 it had been using the service mark “DISTELL” and registered the “DISTELL” mark as a service mark in 2006. According to the Plaintiff’s, and rightly so, it had been granted exclusive use of the name DISTELL in the sale and marketing of alcoholic and non-alcoholic beverages, wines and spirits.

In 2006, the defendant was registered as a company under the name Distell Kenya Limited by a fellow who was previously the Managing Director of Kenya Wine Agencies Limited, a distribution agent of the 1st Plaintiff and who was therefore aware of the existence of the company and its use of the “DISTELL” name.

The judge noted that the Plaintiffs were producers and marketers of alcoholic drinks that have established a market in Kenya through local distributors. It did not trade in its name in the retail market of alcoholic drinks in Kenya. The problem with this is reasoning that he does not say how he reached his conclusion that a market had been established by the Plaintiffs as such a conclusion can only be drawn from evidence supplied. What evidence establishing existence of goodwill did he review?

The judge was erroneously of the view that correspondence exchanged by way of email between the managing Director of the Defendant and the East African representative of the Plaintiff was not official communication between the parties. This is to my mind a very strange position as emails can form a contract in law and what is official communication? It is not a defined term of art. What makes up official communication? He stated that it was clear that the Managing Director of the Defendant company set up the company for speculative purposes with a view to entering the Plaintiffs into a business relationship. There is no way one can read such a position without hearing oral testimony. It is surprising that the judge could reach this conclusion based on affidavit evidence. His reasoning that the 2 shareholders of the defendant were relatives and therefore could not be contemplated that the company would be a joint venture between the parties on that basis alone is not sound. It is common for a company to be set up and a joint venture agreement entered into afterwards, a position that can be regularized by a change in shareholders structure.

An interesting and useful observation by the Judge was on the ownership of the trade names. He correctly in our view held that the Registrar of Companies was right to recall the registration of the Defendant company by the name DISTELL as there was already in existence in the register of company registered as “DISTELL Limited” in line with the provisions of Section 20 of the Companies Act.

The position taken by the Judge was that as the Plaintiff was first in time in registering the name it had the exclusive right to use the name DISTELL as a trade name to the exclusion of the Defendant. The Judge further noted that the court is required to accept the fact of registration of trade mark as prima facie evidence of the validity of the original registration. The fact that the Plaintiff had obtained a trade mark registration over the DISTELL mark was crucial. The Judge was of the opinion that the promoter and director of the Defendant incorporated the Defendant with a view to pressurizing the Plaitiffs into having a business relationship with him. When it appears that the Plaintiffs were not interested in any dealings with him, he used the fact of incorporation and registration of the Defendant company to obtain a substantial sum of money from the Plaintiffs. This was in our view a remarkable twist in the case as this fact played against the Defendant in this matter.

The Judge correctly found no merit in the Defendants claim that it would be put out of business if he granted the Plaintiffs an injunction as it could conduct its business under any name other than DISTELL. This decision while fraught with some illogical reasoning and assumptions was overall solid in its recognition of the prima facie validity of a trade mark registration and it emphasized the principle in law that in Trade Name registration priority rights ought to be accorded to the first registrant.

For further information contact John Syekei on jonsyekei@wakili.com.

Wednesday, 4 March 2009

Renaming of the High Courts in South Africa

For special attention of all litigation lawyers, the 13 High Courts in RSA have changed their name with immediate effect according to the Renaming of the High Courts Act, 2008 which came into force on 1 March. The Cape High Court has apparently issued a notice advising that it would not accept any papers with the incorrect name. The Witwatersrand Local Division and Transvaal Provincial Division (rather, the South Gauteng High Court, Johannesburg, and the North Gauteng High Court, Pretoria) may adopt the same approach. (source: Miles Carter, Bowman Gilfillan)

Tuesday, 3 March 2009

Unilever enforces 1924 OMO mark in RSA

In Unilever Plc and Another v Salma Traders (7507/2008 ) [2008] ZAGPHC 401 Judge Pretorius adjudicated on whether the use of FOAM-O by Salma Traders in respect of detergents infringed Unilever's OMO trade marks, which included Trade Mark No. 24/00986 OMO dated 13 October 1924 under Section 34(1)(a) and 34(1)(c) of the SA Trade Marks Act 1993. Unilever was successful under Section 34(1)(a) and Pretorius J, regrettably, did not make a finding under Section 34(1)(c). The case is worthwhile reading for those interested in the application of the traditional infringement test in the FMCG environment.

Section 34(1)(a) is the traditional identical/similar goods/likelihood of confusion infringement test, whereas Section 34(1)(c) is the dilution or unfair advantage/detriment to distinctive character or repute infringement test.

Pretorius J held that it was common cause that the OMO trade mark enjoyed a substantial reputation in South Africa. Interestingly, despite the reputation in the OMO mark, Unilever decided not to pursue a ground based on passing off. Afro-IP suspects a number of reasons for the omission which could include Unilever's confidence in their registered rights and the cost associated with preparing for an additional ground. In any event, their sniper-like approach paid off.

Douglas J held, correctly in Afro-IP's view, that "both OMO and FOAM-O are aurally similar in sound and both are washing powders. It is clear that the respondent has pitched the product at the lower end of the market. To my mind it exacerbates the problem as unsophisticated, uneducated and rural people will be more prone to confusion than the upper end of the market. It is also more likely that these customers at the lower end of the market will be confused or deceived due to the reputation that OMO has as a washing powder amongst ordinary customers". As a consequence Salma infringed under Section 34(1)(a).


It is regrettable that the Judge did not make a finding under section 34(1)(c) because it was an opportunity to adjudicate on whether the potentially far reaching ECJ decision in Intel v CPM (decided a few days earlier) was applicable under South African law and, in particular, whether the requirement to prove the likelihood of a change in the economic behaviour of the consumer was part of the dilution test. For more on that debate click here.


Salma traders were injuncted/interdicted from infringing the OMO marks, requested to remove the infringing mark from material or deliver it up to Unilever and ordered to pay costs, including Counsel's costs.

Monday, 2 March 2009

Monday Roundup

John Syekei (MMC Advocates, Kenya) has sent Afro-IP the newly enacted Biosafety Act 2/2009 in Kenya which is "An Act of Parliament to regulate activities in genetically modified organisms, to establish the National Biosafey Authority, and for connect purposes."

John also explained that "This is a good development for Kenyan biotechnology law. Great steps being made in development of IP legislation, coming in the wake of the recent Anti Counterfeit Act, we are all encouraged by the Kenyan Government's initiative in protection and enforcement of Intellectual property rights."

Tim Ball (Brian Bacon & Associates) has informed us that the attorneys for the parties in the Servier v Cipla Medpro dispute were contacted by Da Silva AJ last week, and told his judgment would be handed down on Friday 6 March. Readers may recall that Tim's firm is acting for Cipla Medpro.

In Kenya, the Daily Nation has reported on a row that has broken out as a result of an attempt to patent the Maasai's genetic capacity to drink lots of milk. The row broke out a fortnight ago when South African researchers complained that the University of Maryland in the US had patented gene mutations collected from Kenya, Tanzania, Sudan and South Africa. The application, filed in 2007 and published last year, records Prof Sarah Tishkoff – then with the University of Maryland – and Floyd Allan Reed as the inventors and sole applicants. You can read about it here.

Ghana Business News reports that speakers at the ECOWAS Intellectual Property (IP) protection workshop have proposed a common policy framework and guidelines for a more effective implementation and enforcement of IP rights in member countries.

Meanwhile, Afro-IP reached 200 email subscribers over the weekend and wishes to thank you for your continuing support. You can see how the real cricketers are doing in their gripping encounter, ball-by-ball here.