Monday, 31 May 2010

Of Sports Emblems and Soccer Jerseys

Just in time for all the soccer frenzy, the Advertising Standards Committee (ASC) considered an appeal by Adidas South Africa against a decision that its advertisement for replica Bafana Bafana jerseys was misleading. The original consumer complaint was that the relevant advertising depicted three logos (an Adidas logo, a South African Football Association logo and the national Protea logo), but the shirt available for purchase did not include the Protea logo and was therefore misleading. The Directorate held that a reasonable person viewing the advertisement would assume that the replica jersey would contain the Protea logo.

On appeal, Adidas submitted that the images used are part of a campaign to unite South Africans and do not promote the sale of replica jerseys. Accordingly, the images forming part of the campaign do not constitute an advertisement for the jerseys. Furthermore it submitted that a hypothetical reasonable person would know that Adidas has been prohibited from producing the replica jerseys with the Protea logo.

The ASC dismissed these arguments. It pointed out that posters bearing the images with the Protea logo are placed at the point of sale of the replica jerseys which is intended to stimulate interest in and sales of the jerseys and thus constitute advertising. The advertising will also generate the expectation in the average reasonable consumer that the replica jerseys will contain all three logos. The appeal was dismissed and the Directorate’s ruling that Adidas is to remove the advertising stands.

Religious IP - latest RSA case

In the matter between George Mofokeng Mokabo and Presbyterian Church of Africa v Banile Bishop Nocanda and Presbyterian Church of Africa Ltd (Section 21 Company) the Eastern Cape High Court has made final an interdict/injunction against the Respondents from using the name "Presbyterian Church of Africa" based on passing off and awarded costs to the Applicants.

"...the name and epithets which have defined the separate identity of the church for a period of well over 100 years are under threat of being taken over by the respondents surreptitiously. The company and the first respondent have very unapologetically used the insignia of the church bearing its name and year 1898, the date on which the church was established, description and auspices of the church [which owns over R2 billion in assets]."

The cases touches on the difference between objecting to company names under the delict of passing off and the provisions of the Companies Act (which has distinct time limits). The case also discusses principles applied in instances when a party is accused of contempt of court.

As illustrated by this case, not-for-profit religious organisations own considerable goodwill in and to their names. There is a view that these types of organisations did not trade and therefore did not qualify for trade mark protection. Such a view, if it it still exists, must surely be outdated. Not outdated though will be the difficulty in protecting such names as trade marks because they so often contain descriptive words - nobody ought to get exclusivity to Presbyterianism, for instance. This interview with Holly Eddington of First Church of Christ, Scientist by Managing Intellectual Property's James Nurton is a useful insight into the trade mark issues affecting religious organisations.

Thursday, 27 May 2010

Divine intervention unifies collective copyright management in Nigeria

Via Dr Bankole Sodipo (Chief G.O.Sodipo & Co., Lagos) comes a press release, announcing consolidation of the collective copyright management sector in Nigeria. According to the press release, enthusiastically entitled "Government approval of COSON sparks wide celebration across the Music Industry",
"The announcement by the Director-General of the Nigerian Copyright Commission, Mr. Adebambo Adewopo ... that Copyright Society of Nigeria (COSON) has received federal government approval as the sole copyright collective management organization in the music industry has received wide support across the country.

Following the announcement, the COSON office in Ikeja has been inundated with congratulatory messages from music industry stakeholders from every part of the nation [Says Afro Leo, it is well known that Nigeria is a passionately musical country. This must have brought the national economy to a complete standstill ...]. Upon the receipt of the certificate of approval delivered to COSON by an official of the NCC, there was non- stop jubilation as members and staff of COSON joined in exceptional merry making [Hope the music they were partying to was properly licensed ...].

Among the many stakeholders who have expressed happiness at the historic development is juju music icon and former Chairman of the Nigerian Copyright Commission, Evangelist Ebenezer Obey-Fabiyi who described the COSON approval as “excellent” and “the work of the Almighty” [Let us hope that, having dealt with the apotheosis of COSON, the Almighty will turn his attention to counterfeits. But IP is not easy. It took just seven days to create the World, while rationalisation of collective copyright issues in Nigeria required "many agonizing years"]. Multi award winning sensation, 2Face Idibia portrayed the development as “sweet and lovely!” while his manager, Mr. Efe Omorogbe exclaimed, “wonderful… wonderful… wonderful!”. Alhaji Dan Maraya Jos who spoke on the phone from his Jos base congratulated musicians across Nigeria for what he called “a monumental victory”

Elegant stallion and Nigeria’s Queen of Soul, Ms Onyeka Onwenu was in Abuja when the news broke. She called in to express her joy saying, “it may have taken many agonizing years but ultimately the forces of unity within the industry have prevailed over the agents of divide and plunder”. Velvety voiced singer, Sunny Neji was ecstatic at the news describing the development, as the dawn of a new era. Mr. Edi Lawani, President, Association of Music Business Professionals (AMB. PRO) observed that with the instant celebration across the industry, it is clear that the decision of the government is in tandem with the wishes of the stakeholders [Government decision in tandem with the wishes of the stakeholders? European goverments, take note!]. Mr. Lawani called on all industry stakeholders to immediately join hands to make COSON a world class CMO. According to him, anyone attempting to fight the historic development will be swimming against a massive tide ...".
Afro Leo is checking out rumours that 20 April is in future to be declared National COSON Day, a national public holiday at which, amid due pomp and ceremony, Heads of State and leaders of the copyright industry will hold a parade at which a wreath will be laid at the Tomb of the Unknown Composer ...

Wednesday, 26 May 2010

TM Search Tool Growth for Africa: A Conversation with CT Corsearch

We are all familiar with the stereo-type of international companies that ignore Africa when it comes to protecting their trademarks. Searching is difficult, registration takes a long time and enforcement is impossible, so the argument goes. There are several countries in Africa that have good search tools, efficient registration systems and enforcement procedures in place. Yet, the stereo-types stick.

But there is good news. More companies are realizing the importance of African markets and seeking to register their trademarks. A larger desire to register means a more need for trademark tools. Afro-Leo had the opportunity at the INTA Annual Meeting to sit down with Stephen Stolfi of CT Corsearch. Stolfi explained what Corsearch is doing to develop trademark tools for international companies wishing to register in Africa and how attorneys in Africa can help. Here is a summary.

Three Approaches

Corsearch uses three different approaches to serve its client’s search needs: watching, searching and screening. Two of these approaches are fairly well developed for Africa and the third is being developed. For all three, Corsearch is building on its experiences and practices on other continents, especially South America.

Watching

Because a large number of African countries publish trademark gazettes with all trademarks recently submitted for registration, the watching approach is easily handled by Corsearch. The company reviews all the gazettes from across the country, watching them for marks that might infringe their clients’ mark.

Searching

The searching is a little more difficult. Most searching in Africa needs to be done manually, inquiring at the local trademark offices. For searching in Africa, a network of associates who can do on-the-ground searching and report back to Coresearch.

Screening

Screening, where clients conduct a search themselves through online databases, is the approach currently most difficult for trademarks registered in African countries. Few African countries have o add as many of the trademarks registered in Africa as possible to the on-line search database, Corsearch uses a hybrid of agents, physical trips to the trademark offices and law firms that have their own databases of country marks registered in the country.

How African IP Attorneys Can Help Build Search Tools for the Rest of the World

Corsearch is interested in partnering with attorneys for on the ground searches and with law firms that have databases of local trademark registrations. The more partners and databases involved, the more trademark registrations available during search. Attorneys who would like to work with Corsearch and firms who would like to licence their databases to Corsearch are invited to contact the company.

Stephen Stolfi has been with CT Corsearch for the past 10 years and is Vice President of Sales and Global Partnerships at CT Corsearch. Afro-Leo thanks Mr. Stolfi for taking the time to discuss the future of trademark searches in Africa.

Tuesday, 25 May 2010

A Guarantee to Beat Any Price: How Far Should It Extend?


In December last year, the ASA Directorate found a certain advertisement for Game stores to be misleading. The advertisement in question was the following price guarantee:

“...Found it cheaper? Tell us and we will BEAT that price we will not be undersold – if you’ve purchased any item from Game, and within 21 days find the same product at a competitor for less, tell us and we will refund MORE than the difference.
If you intend purchasing from Game and find the same item elsewhere for less at the same time – tell us and we will beat that price!”

The consumer complainant, seeking to purchase a Nintendo Wii console, obtained comparative prices from other dealers, including Amazon.com (a foreign based online store). The price from Amazon.com amounted to R1000.00 less than the console on sale at Game. She stated that Game would not beat Amazon.com’s price, as the price guarantee carried conditions not reflected in the advertisement. The Directorate found that the advertisement omitted a material condition of the guarantee, thus making it misleading.

On appeal to the Advertising Standards Committee (”ASC”), Game submitted that its price guarantee applies only to lawful sales by a competitor, which it contends Amazon.com is not, and that consumers cannot reasonably believe that the price guarantee applies to products bought online from foreign traders.

The ASC declined to rule on whether Amazon.com is acting unlawfully by offering products online to South African consumers. It did, however, find that on the ordinary meaning of the words of the price guarantee that an ordinary reasonable consumer would not read additional conditions into the advertisement. It stated that if the price guarantee was intended to be limited to local price comparisons only, then that should be expressly stated. The decision of the Directorate that the advertisement is misleading was upheld.

I find it difficult to agree with this ruling. I do not believe that an ordinary reasonable consumer would believe that the price guarantee applied to goods bought from foreign traders and would be interested in your comments on this.

Monday, 24 May 2010

Copyright Tool Helps Further Malaria Research

Copyright probably isn’t the first branch of intellectual property that comes to mind when thinking about malaria prevention.  The medication itself is covered by patents, the brand name by trademark.  But what many of us might not realize is that the information discovered during research, the data sets, diagrams and descriptions of findings, are often covered by copyright.

In a move to help facilitate anti-malarial research, GlaxoSmithKline has released its chemical structure and data findings under CC0 (Creative Commons Zero), a waiver that effectively places this information in the public domain. 

The dataset contains the structures and screening data for over 13,500 compounds confirmed to inhibit parasite growth by more than 80% at 2 uM concentration.

Novartis-GNF and St. Jude Children’s Research Hospital have also released antimalarial research data sets under other open access licenses.  Releasing the datasets under open licenses or into the public domain (in GSK’s case) should enable others to conduct research that builds off the work already done without having to redo what GSK, GNF and St. Jude already did.

More information on the released data here.

Saturday, 22 May 2010

Origins of Kenya's controversial legislation

"The international push behind Kenya's controversial Anti-Counterfeit Act of 2008 dates back as far as October 2006 when the World Customs Organisation held its first intellectual property rights (IPRs) seminar in Kampala, the capital of neighbouring Uganda, focusing on East African governments' enforcement of these rights." This AllAfrica report (Wambi Michael and Christi van der Westhuizen) gives some detail about the origin of the legislation that was recently suspended in Kenya. Was the agenda about enforcement of IPRS by global multinationals or about improving access to quality medicines?


For further background searching "access to drugs, Kenya" in the search box alongside.

Thursday, 20 May 2010

Swaziland Cabinet Approves New Copyright Bill

It’s had a long run, but the 98 year-old Swaziland Copyright Act may be on its last leg.  This week, the Swaziland Cabinet announced its approval of the Copyright and Neighbouring Rights Bill of 2010.  The Bill will now move on to the Parliament for further review.

As Times of Swaziland points out:

The Copyright Act No. 36/1912 did not address the development of the latest technology in the field of copyright – for example, the use of computers, satellite signals, compact disks, DVD’s etc.

Hard to address the development of technologies that could hardly be predicted.  When this Act was written, the big technology upset of the day was the replacement of the cylinder phonograph with disc-using gramophones.

The 1912 Act is based on the 1911 Copyright Act of the United Kingdom.  It cites a number of previous UK Copyright Acts, including all the way back to the Copyright Act of 1775.  The Swaziland Act was amended at least once to keep the Act in force through the transition from part of the Commonwealth to independent country.  (See Sec. 3 and Sec. 25(3).)

According to the Times story, the new Bill adds moral rights and neighbouring rights to the already existing economic rights held by copyright owners in Swaziland.  Presumably, it also raises the fines for infringement from the low penalties previously discussed by Afro-Leo here.  Unable to find a copy of the actual Bill, Afro-Leo is unsure whether the new Bill increases the term of copyright beyond the life plus 50 granted in the 1912 Act.

Perhaps most interesting, the Bill allows for the establishment of a Copyright Office within the Swazi government.  The Times is very optimistic about what this Copyright Office will mean for the Swazi entertainment industry.  Afro-Leo, having followed the adventures of some other copyright offices is a little less optimistic.

Monday, 17 May 2010

That Kenya litigation: some details

Afro-IP recently posted an item here on the suspension of the Anti Counterfeit Act in Kenya. Now we have some details. The case is Patricia Asero Ochieng’, Maurine Atieno and Joseph Munyi v The Republic, HCCC NO. 409 of 2009.

In brief, the Petitioners filed a Petition on 8 July 2009, seeking declarations that their fundamental rights under Sections 70 and 71 of the Constitution were likely to be infringed by the implementation of Kenya'a Anti Counterfeit Act (ACA) of 2008. They objected that it limited access to affordable and essential drugs, including generic medicines, for HIV/AIDS and that enforcement of the Act would infringe their right to life. They sought a stay of the coming into force of Sections 2, 32 and 34 of the ACA pending the hearing of the Petition, plus orders that the Anti Counterfeit (AC) Agency be restrained from enforcing those sections in so far as they related to generic drugs and medication as well as the importation of generic drugs and medicines.

This action was premised both on the notion that enforcement of the disputed provisions of the ACA would deny the Petitioners and others infected with HIV the right to access affordable and essential drugs and medication, thus jeopardizing the availability of generic drugs and medication and on the ground that Section 2 of the ACA failed to provide a clear definition of what a counterfeit is -- the problem being that generic medicines used by HIV sufferers can be misinterpreted to mean counterfeits. Additionally, it was maintained that the disputed sections of the ACA had taken no account of Section 58(2) of the Industrial Property Act, which allows importation of generic drugs.

Against this, the Attorney General argued that Section 2(b) criminalizes the mislabelling of medicines, not generic medicines in general or anti retroviral drugs in particular.

7. The Judge noted that the Petitioners had submitted evidence that generic drugs for HIV, bound for Brazil, were being seized in the Netherlands, and that other drugs manufactured in India bound for Vanuatu were being seized in Germany. He said that Sections 58(2) and 37 of the IPA and Section 2 of the ACA were inconsistent. The law, he noted, was that if an existing statutory provision is inconsistent with a latter statute, then the latter (Section of the ACA) will take precedence (over section 58 of IPA).

The Judge held, without giving reasons for his belief, that Section 2 of the ACA did not appear to distinguish medicines from other goods and that one needs to consider the right to life as enshrined in Section 71 of the Constitution. Taking into account that women and children are said to be most vulnerable to HIV and AIDS, the ACA has to be read in conjunction with the Children’s Act and other international instruments on the rights of the child and women.

Further, the Judge found that failure to get access to affordable ARV drugs and medicines will obviously affect adversely those infected with HIV and AIDS and many risk loosing their lives.

In conclusion, after finding that the Petitioners had sufficiently demonstrated that the Petition was not frivolous but disclosed an arguable case with a chance of success, he granted an injunction staying Section 2, 32 and 34 of the ACA as relates to the importation of generic drugs and medication and an injunction in the interim restraining the AC Agency from enforcing those sections as relates to importation of generic drugs and medication.

This decision has been criticised for its failure to analyze Section 2 properly and, more specifically, to discuss the issue of mislabelling visa-vis ARV drugs, which are generics. The issue would be whether, under Section 2, all legitimate generic medicines would be deemed counterfeits. At present it is a fact that one can find counterfeit generics circulating in a market which has legitimate generics.

Afro Leo thanks John Syekei (Coulson Harney, Nairobi, Kenya) for this information.

Grand Advertising

In August last year, the ASA Directorate ruled that an electronic billboard advertising The Grand strip club contravened Clause 14 of Section II (dealing with the potential effect of advertising on children)of the Code of Advertising Practice. The billboard showed woman dressed provocatively dancing up against poles while men watched and the Directorate was concerned that children would be confronted with images that they may not be mature enough to “correctly contextualise and interpret”. The advertiser was instructed to remove the billboard and not to use it again in the future.

More recently, a consumer complainant lodged a similar complaint regarding a second electronic billboard advertising the club. It appeared that the billboard complained of was the same as the one previously ruled against by the Directorate, who went on to consider the matter as a potential breach of the previous ruling, and not as a new complaint. It therefore did not consider the merits of the complaint. It appeared that the advertiser had merely relocated the first billboard instead of removing it from public view.

The Directorate ruled that the advertiser was in breach of the previous ruling and was again instructed to remove the billboard immediately and not use it again in future. In addition, the complainant has been afforded 10 working days to comment on whether sanctions are appropriate.

Wednesday, 12 May 2010

Franchise halaal - almost. The Wrap It Up decision

The facts of this latest case from downtown Durban, South Africa, are an example of what happens when it all goes wrong in a franchise relationship and exposes some of the risks in what the Franchise Association of SA describe on their home page as "one of the most successful business formats". It also gives us a clue to what you cannot do when relying on intellectual property rights eg you cannot sue for infringement if the registered trade mark has lapsed. Elementary, you may say, well...

The "Wrap It Up" halaal fast food franchise decision was ultimately decided on principles relating to passing off and that incredibly versatile and sometimes vacuous amoeba - unlawful competition.

When one does not have a full set of papers it is difficult to comment on the application of the law to facts but in this case it seems that the goodwill was found in the business represented by the trade marks, without proof of reputation but because it was "generated by their intellectual property" and with, apparently, none of the normal evidence to support this (see paras 33-36 and 42). At this juncture the case looked like one where principles of passing off would be applied. Not so it seems.

The Applicants’ case was then summarised by the Judge "that the Respondents intentionally misrepresented that they had a right to deal with Second Applicant’s intellectual property for their benefit". At para 51 it was then held that the Applicants had failed to show such intentional misrepresentation and hence that he could not find "unlawful competition". Since fraudulent intent is not part of the law of passing off it is not clear whether the Judge is distinguishing between the two legal heads ie unlawful competition and passing off or whether his finding turned on "misrepresentation".

The literal translation of the Arabic word "Halal" is "lawful" which almost transpired to be accurate in this case; the Applicants were not entirely unsuccessful as they became entitled to certain documents and information that had been withheld. Costs were accordingly shared.

Monday, 10 May 2010

Buttering Up

In an appeal against the judgment of the ASA Directorate where the claims complained of were found to be unsubstantiated, there appeared to be some disagreement between the parties as to what substantiation needed to be provided.

In the original complaint, Unilever had objected to various claims made by Cape Oil and Margarine (Pty) Ltd regarding its Sunshine D Lite product, inter alia that it “...offers more nutritional value: Calcium for building strong bones and teeth, Iron for improving memory and energy, Zinc for strengthening immunity and healthy skin..” . In support of these claims, Cape Oil submitted articles showing that calcium, iron and zinc served the purposes referred to, as well as a letter from a dietician who stated that a suggested 40g serving of the margarine would offer certain RDA allowances of the micronutrients. She concluded that the product, as part of a healthy diet, may help to increase the intake of the micronutrients. The Directorate held that Cape Oil was required to prove that the product, as a whole, would deliver the claimed benefits, not simply provide ingredient-based substantiation. As this was not provided, the claims were held to be unsubstantiated and the complaint was upheld .

Cape Oil believed that the issue in question was whether the micronutrients serve to achieve the benefits referred to, and submitted that it had provided substantiation in this regard. Unilever, however, submitted that what it and the Directorate required was proof that ingredients as used in the product deliver the claimed benefits. While it appeared that a 100g serving of the margarine would deliver the required percentage RDA of the micronutrients, the suggested serving size of 40g would be insufficient to contribute to the claimed benefits (and would not comply with the relevant food labelling regulations).

The Advertising Industry Tribunal considered the claims, how they would be interpreted by the hypothetical reasonable consumer and what their probable impact would be on such consumer. It determined that such consumer would assume that by using the product they would be consuming sufficient quantities to obtain some level of the benefits referred to and that the benefit would be derived from an average serving size.

From the evidence provided, however, it cannot be proven that the claimed benefits would be derived from an average serving size or daily consumption. There are also many other factors which may affect the efficiency of the product to deliver the claimed benefits (including the addition of other ingredients which may negate any benefits of the micronutrients, or the absence of other ingredients which may be required for the absorption of the micronutrients advertised). The claims are held to remain unsubstantiated and are furthermore determined to be misleading, as they create the false impression that by using the product consumers would obtain at least some level of the claimed benefits. The appeal was dismissed.

Friday, 7 May 2010

Booze and pills!

Finally two South African trade mark matters that have been heard in court, rather than before the ASA! Details on both are scarce, but possibly readers of Afro-IP can provide more information.
The first appears to be a passing-off matter. Simply Slim was a very successful slimming product, recently banned by the Medicines Control Council because it contained a banned substance. The producers/importers (?) alleged that the goodwill and reputation of the product was infringed by the redirection of consumers, who searched for the Simply Slim product on Google, to a website advertising another slimming product, Super Slim. The applicants alleged that they were ready to relaunch the Simply Slim product, and had enormous goodwill, based on figures of 320 000 purchasers and a turnover of thirty to forty million rands per month. (This despite the fact that the MCC, in a letter submitted to court, stated that Simply Slim was not permitted to relaunch its product.) The respondents countered by stating that the applicants had no goodwill because of bad press cover and the recall of its product, and appear to have raised a defence of ‘unclean hands’. Judge Legodi, in the North Gauteng High Court, held that the applicants could not rely on their reputation, as the product was currently banned, and was apparently appalled that the applicants announced their intention to relauch under the existing circumstances. If anyone has more details, please let us know – it would be very interesting to have another decision on the ‘unclean hands’ defence in South African law.
The second matter is one of trade-mark infringement. Does use of the word ‘marula’ on a liqueur label to describe the flavour of the contents, infringe the registered trade mark “Amarula’ used on a marula-based liqueur? The applicant alleges infringement, while the respondent appears to rely on s34(2)(b) – bona fide description. The respondent is also counterclaiming for the entry of a disclaimer of the word ‘marula’ against the applicant’s trade mark. Judge Goliath, in the Western Cape High Court, has reserved judgment, but once again, whatever the outcome, this litigation illustrates the dangers of descriptive marks.

Nigerian Films, Coming Soon Everywhere

nollywood-011The Nigerian entertainment industry is finally ready to take on the world, so reports the Vanguard newspaper (available at AllAfrica.com).  Nigeria boasts the second largest film industry in the world, ahead of the US, as well as an extremely vibrant music industry.  Yet while Nigerian films and music are found across the continent and the Diaspora abroad, the industries see more potential, especially for non-pirated copies.  A new coalition of Nigerian organizations has set out to find the industries’ true potential.

Backed by $20million from the World Bank, the Nigerian Export Promotion Council, National Film and Video Censors Board, Nigeria Film Corporation and Nigerian Copyright Commission are working on a project titled, “Harnessing the Nigerian Entertainment Industry for Formal Export.”  The title may not be catchy, but the goals are lofty:

“Earlier in his welcome remarks, Mr. M. O. Ibrahim, Area Controller, South, said the NEPC had identified entertainment industry as one with huge potential in terms of generating foreign exchange earnings for Nigeria.”

The project’s main goal is to increase the revenue coming to Nigeria from foreign countries.  It also hopes to “facilitate opportunities for entrepreneurs who wish to go into exports.”   While the Vanguard article talks a lot about how important increasing the flow of funds into Nigeria is, and how powerful the entertainment industry is in terms of dollars, the article says little about how the new project will actually increase revenue.  Afro-Leo assumes it will involve increasing the availability of legitimate Nigerian films and music in foreign markets.

Thursday, 6 May 2010

"A welcome initiative to enrich debate"

The May 2010 issue of Oxford University Press's monthly publication, the Journal of Intellectual Property Law and Practice (JIPLP), carries an article, "Africa rising to the anti-counterfeiting challenge", by Marius Haman (partner, Bowman Gilfillan). According to the abstract,
"Legal context and key points: The global trade in counterfeit goods is growing at an alarming rate. Africa is increasingly being targeted as a destination for counterfeit goods. A new trend has been identified by the World Customs Organisation's Counterfeiting and Piracy Unit. It indicates that Africa is being used as a transit route for counterfeit goods, posing an indirect threat to European and American markets. This new trend challenges existing African anti-counterfeiting strategies. Africa's response by way of legal reforms, national and international co-operation is explored in this article.
Practical significance: The disproportionate size of Africa's informal or "parallel economy" (compared to that of Western nations), coupled with its rising economic fortunes, impacts on the counterfeiting problem. By adopting creative business models, IPR owners are finding new ways to combat counterfeiting".
Gratifyingly for Afro Leo, the author kindly mentions the Afro-IP weblog as a welcome initiative in helping to enrich debate. Thanks!

Wednesday, 5 May 2010

"Economic sabotage" claim as NAFDAC destroys fakes

According to Punch on the Web, there has been another giant destruction operation in Nigeria, where the National Agency for Food and Drugs Administration and Control (NAFDAC) exterminated some Naira 220 millions of fake medicines and unwholesome foodstuffs in Kaduna, Kaduna State.

NAFDAC irector General Dr Paul Orhii described the faking of drugs and other consumable products as "an act of economic sabotage and terrorism against public health which should not be condoned", adding that NAFDAC had taken a proactive approach towards fighting this menace. While the article mentions various commodities that were faked, no details were given as to specific brands or product sources.

Tuesday, 4 May 2010

Augmenting the Augmentin patent?

In SmithKline Beecham plc and Another v Sandoz AG and Another (96/3472) [2010] ZACCP 3, SmithKline launched an application for the amendment of South African Patent No. 96/3472 ("the patent") relating to their famous antibiotic - AUGMENTIN. The application was opposed by Sandoz and Novartis SA (Pty) Ltd (the second respondent). The history appears to go something like this:

In 2006 it came to the notice of SmithKline that a product named Sandoz Co-Amoxyclav BD suspension was being sold on the South African market by Norvatis SA (Pty) Ltd and that an application had been made to revoke their patent. On the other hand, SmithKline believe that the product infringed/s at least some of the present claims of the patent.

The application to amend was hotly contested by Sandoz/Novartis, as summarised in the judgement, which concluded:

"After considering all the facts before me, the legal principles/ the authorities and the arguments of all the parties , I am satisfied that on the facts before me the applicants/patentees have made out a case for the amendment. In so far as costs are concerned I am of a considered view that in the circumstances herein it will be fair, and in the interests of justice that each party pay its own costs."
This dispute looks likely then to continue in its "amended" form. However, the judgment seems to illustrate how a delay in amending clerical errors is not advantageous to patent owners because of the resultant delay (and additional cost and scrutiny) when it comes to enforcement.

Monday, 3 May 2010

The limitations of ASA sanctions for certain advertisements


Last week the ASA Directorate upheld a consumer complainant, who submitted that an advertisement by an alleged traditional healer is misleading as it makes unsubstantiated claims. The advertisement in question is a flyer containing claims that the advertiser could, inter alia, “Bring back lost lover...”, and treat various sexually transmitted diseases.

The Directorate noted that it found the proliferation of charlatan healers in recent years concerning and that it has previously ruled against such advertisements. It expressed a hope that the appropriate authorities (and by this, I imagine it is referring to the Health Professions Council of South Africa and the Medicines Control Council) will address the issue as it is likely causing harm to the credibility of legitimate healers and practitioners.

In terms of Clause 4.1 of Section II of the Code of Advertising Practice, advertisers are required to hold substantiation for any direct or implied claims made. Despite this particular advertiser being offered the opportunity of supplying such substantiation, none was received and the Directorate found that the advertisement contravened the relevant clause of the Code and that the advertisement was likely to mislead consumers. The advertiser was ordered to withdraw the advertisement in its current format and it was stated that the ASA would issue an Ad Alert to its members in respect of the advertisement.

This may, however, be an empty victory for the complainant, as a ruling of the Advertising Industry Tribunal two days previously illustrates. In that matter, the same complainant had previously succeeded in her complaint against a similar advertisement which made claims of miracle cures to a plethora of problems. In contravention of the ruling, the advertiser continued to advertise and the question of sanctions was raised. It was found that sanctions were indeed appropriate but it was noted that the ASA does not have a representative member who has any control over advertising placed in mailboxes and the sanctions available would therefore have no material effect. Enforcement is virtually impossible. The only weapon in the ASA’s arsenal for advertisements that do not pass through conventional media such as self-printed flyers and advertisements distributed directly by the advertiser is that an Ad Alert can be issued (as it was in this case) to its members (including newspapers, magazines, radio, television and the Printing Industries Federation) that they are not to accept any advertising from this advertiser until further notice.