Wednesday, 29 September 2010

New Ugandan Trademark Act Published!

For those who have been anxiously waiting for Uganda's Trademark Act to be passed and published, all is done!

The Trademark Act 2010 was published as Act 7 of 2010 and has as its effective date, the 3rd of September 2010. This law is timely as service providers have waited for a long time for protection of their brands, which was not permitted under the old Trademarks Act.

For the time being, the new law saves use of the trademark form, fees and regulations. Some of the other new changes include the following:
* Mandatory requirement for applicants to conduct searches under S.5. Many applicants would prefer to avoid this altogether but in practice, it may save the applicant in two ways. First of all, once fees are paid, the applicant can not get a refund if it is discovered that another proprietor has already filed an identical or closely similar mark. They can only file for removal of the mark on grounds such as non use etc. Secondly, Conducting a search before filing (although it is currently imperfect as the electronic database is still being constructed) gives the applicant an idea of the likelihood of oppositions based on marks already on the register. The search results should not in themselves act as an absolute bar for an applicant to proceed, particularly if existing marks can be distinguished from the intending applicant's goods. A good case in point is where there may be some similarity but the class of goods differs. 
*Another new provision is the option for an intending applicant to seek preliminary advice by the registrar as to distinctiveness under S.6. This provision seems not to apply to pending applications which could have been another way of reducing opposition proceedings and expense to all parties in such matters. 
*Publication period is maintained at 60 days. 
*Under Section 24, the new Act protects the bona fide use by a person of his own name or place of business as well as any description of the character of his goods or services. This is particularly important as it was not clearly provided for under the old Trademarks Act. 
*The new Law also provides for Concurrent use under Section 27. Under this provision, 'the registrar or court may permit the registration by more than one owner, in a case of honest concurrent use or other special circumstances'.
The Trademark Act, 2010 contains many new provisions that clarify issues such as non use, revocation and others. A more extensive article will highlight these new developments and be posted on this blog. Request for a scanned copy of the Act here.

Tuesday, 28 September 2010

confiscation confusion

Counterfeiting and confiscation
While some members of Afro-IP can spend every Friday in a different African country, others have to be satisfied with reading the travel supplements. This member always enjoys the (usually enraged) readers’ letters in the Saturday Star, and two of last week’s letters dealt with customs authorities at OR Tambo Airport. Both writers had their bags searched, and one had a number of handbags bought in Singapore confiscated. Most unusually, a reponse to her complaint was received from SARS, (SAA and ACSA are seldom heard from) who stated that the writer had attempted to import counterfeit leather handbags and that ‘Customs has every right to confiscate counterfeit goods and destroy them in terms of the law.’ It continues ‘People who buy counterfeit goods should not complain when goods are seized by Customs as SARS has a legal duty to protect our borders and our economy from the trade in illicit goods.’ All good and well. But the Counterfeit Goods Act 37 of 1997 only prohibits dealing in such goods, and specifically excludes goods that are ‘imported or exported for the private and domestic use of the importer or exporter’ (s 2(1)(f).
I do not venture an opinion on the morality or correctness of buying counterfeit goods here (for a fascinating discussion, see this article in the October JIPLP here). But it is not an offence to buy such goods, and if there is not clarity as to whether the goods are for personal use or for trade, I think that better control of the confiscated goods is necessary. (The letter writer says that when she tried to find her goods, she was told that they were lost, as was her case number!)

Monday, 27 September 2010

Franchising in Egypt: a tale of tactics

One of the easiest and cheapest ways for the owner of a business brand to develop it is through the establishment of a business format franchise, licensing the use of its trade marks, know-how and sundry other IP rights to any number of non-exclusive licensees who, as franchisees, own and finance their own businesses and are subjected to a rigorous regime of supervision and quality control -- if the franchisor is any good, that is.

In "Trade Law hurdles and solutions for franchisors", published online on International Law Office and written by Ayman S Nour (Nour & Partners Law Firm), the Egyptian legal set-up which governs business format franchises is reviewed and explained. The current law favours what are presumably principally local franchisees against what are likely to be foreign franchisors, the law's provisions being "in favour of franchisees in order to protect importers of technology and know-how". However, as the author informs Afro Leo, there are ways for franchisors to overcome such limitations.

Businesses franchising their IP into Egypt should note that their contracts will be unenforceable if the franchisee must
* accept modifications to the technology and pay for the privilege of doing so;
* refrain from improving the technology so as to adapt to and conform with local conditions;
* use specific trade marks to distinguish the commodities for which the technology has been used;
* refrain from obtaining analogous or competing technologies;
* allow the licensor of the technology to run the licensee's establishment or interfere in choosing its permanent employees;
* purchase raw materials, equipment, machines, apparatus or spare parts for operation of the technology exclusively from the licensor or from specific entities dictated by the licensor; or
sell the product exclusively to the licensor or persons determined thereby.
Nullity does not apply if any of these limitations was provided for in the agreement in order to protect consumers or a real and legitimate interest of the technology provider (ie, the franchisor).

Franchisors can do something to protect themselves, though by
* obtaining from franchisees advance letters of credit guaranteeing substantial cash sums if the franchisee breaches any term of the franchise agreement;
* obtaining from franchisees advance initial franchise fees in substantial amounts, to be depleted over the duration of the franchise agreement; and
* acquiring shares in the Egyptian franchisee by virtue of a conditional sale of shares agreement.
These methods are effective because they circumvent the option to litigate against the franchisee locally.

Friday, 24 September 2010

Where in Africa is Afro Leo?

Guess what?

It’s Friday and Afro Leo has decided to take a break from it all. What better than to float on a felucca using the old testament as a guide. Here are some clues:

· It uses a pound as its currency;
· It has a single class trade mark filing system and strict labeling requirements for imported goods;
· The ancient name of the country means "black land" referring to fertile soil;
· The building of its waterway had a significant impact on the use of ports around Africa;
· It became a republic in 1953 and is home to 79 million people on a land mass the size of Texas and California combined;
· It's legal system is based on Islamic and civil law;

If you liked the Bangles in the eighties you should have no problem guessing this one!

Wednesday, 22 September 2010

Fake drug progess in Kenya! and compulsory licensing

Kenya's Daily Nation reports that efforts to curb counterfeit drugs in the region are bearing fruit alongside some disturbing news about how Kenyans are being diagnosed with incorrect drugs:

"The minister [Medical Services minister Anyang’ Nyong’o], however, said counterfeit drugs were no longer a big problem in the country because of a cross-border effort to reduce their prevalence."


“Working closely with the police, CID and Interpol in these countries, we have been able to reduce significantly the prevalence of fake drugs,” says Chief Government Pharmacist Kipkerich Koskei.


Afro Leo wonders whether just the one significant push against counterfeit drugs (see Afro-IP post here) has made that much impact or whether there is indeed a glimmer of light. Perhaps readers will comment below.


Meanwhile Alec van Gelder has written in to Afro Leo defending his article in the WSJ reported here and informing us of a paper that will be published soon explaining in more detail his position.


Alec has also directed us to this article published just recently: Epstein, Richard A. and Kieff, F. Scott, Questioning the Frequency and Wisdom of Compulsory Licensing for Pharmaceutical Patents (August 17, 2010). U of Chicago Law & Economics, Olin Working Paper No. 527. Available at SSRN: http://ssrn.com/abstract=1660702 :


"Any need to help poor people gain access should not rely on CL, but instead should rely on tools precisely aimed at that purpose, including direct government purchases of patented drugs from their manufacturers at negotiated prices."

Thanks Alec.

Tuesday, 21 September 2010

Somali domains up for grabs

The Republic of Somalia doesn't often feature in Afro Leo's reports, but there is some news from that sadly troubled corner of the Continent -- it's the relaunch of Somalia's .so country code as an unrestricted ccTLD. It is proposed to offer the following:
.so – general purposes
com.so – commercial entities
net.so – network use
org.so – not for profit organisations
The planned sunrise period for trade mark proprietors, assignees and licensees is 1 to 30 November, with an auction (1 to 15 December) to take place if two more more eligible trade mark holders seek the same domain.  The Landrush period runs from 16 December to 9 February 2011, with an auction from 10 to 28 February where two or more credible applications are made for the same domain.

Source: email Newsletter from Lexsynergy

Monday, 20 September 2010

LAST WEEK’S BURNING ISSUE

Judge Harms, Deputy President of the Supreme Court of Appeal, had a busy week. The ink had barely dried on his Woodlands Dairy judgment (available here http://www.saflii.org/za/cases/ZASCA/2010/104.html) in which he spelt out the extent of the powers that the Competition Act granted to the Competition Commission, when he was faced with one aspect of the ongoing kettle grill saga.
Weber has litigated extensively to protect its trade marks relating to the shape and configuration of barbeque kettle grills, and here it objected to Cadac’s new kettle grill model. First came correspondence alleging trademark infringement, which was denied by Cadac. Weber then alleged counterfeiting, to which Cadac provided a ‘detailed refutation’. Despite this, and without notice, Weber laid a compliant in terms of the Counterfeit Goods Act 37 of 1997. An inspector appointed under the Act then obtained a warrant for seizure of the Cadac kettle grills, and confiscated a number of these grills during the 2004 December Christmas shopping rush. Cadac understandably alleged a loss of profits due to this confiscation. It managed to have the warrant set aside in February 2005, and Judge Schwartzman, hearing the application, found that the warrant had been obtained irregularly and ordered return of the goods. He did not consider it necessary to make a finding on whether the Cadac product was counterfeit.
Cadac had also asked for an inquiry into damages in terms of s17(1) of the counterfeit Goods Act, which entitles a person who suffered loss caused by wrongful seizure to claim compensation. Schwartzman J postponed this prayer sine die, and only three year later did Cadac take further steps, by applying for directions for the conduct of the inquiry. Weber replied that, until a finding was made that the goods were not counterfeit, Cadac had no claim for damages.
Harms dealt with the distinction between infringement and counterfeiting in a passage that will no doubt be quoted in all future such matters. He states, in para [6]:
Counterfeiting involves deliberate and fraudulent infringement of trademarks and ‘counterfeit cases involve an infringer attempting to reproduce – and substitute for – the goods (not just the trademark) of the trademark owner.’ That is why the Act is concerned with trademark and copyright infringements that are criminal in nature. The Act does not permit a rights holder to steal a march on an alleged infringer in order to settle a bona fide dispute about the boundaries of rights. Those disputes should be litigated under either the Trade Marks Act or the Copyright Act.

This warning is timely and valuable. In the recent decision Commissioner, South African Revenue Service and others v Moresport (Pty) Ltd and others 2009 (6) 220 (SCA), the SCA dealt with the duties of the officials acting in terms of the Counterfeit Goods Act, but not with the liability of the complainant. Here, allegedly fake Croc shoes were the subject of a confiscation order. Again, the respondent had alleged that it had a defence, and, after grant of the order, applied to have the warrant set aside. This was upheld by the judge in the court of first instance, who held that the defence raised in the first respondent’s letter was relevant and should have been disclosed to the magistrate who granted the warrant. The court confirmed that all material facts must be disclosed to a court when an order is sought ex parte, and that failure to do so entitles the court to set aside an order (National Director of Public Prosecutions v Basson 2002 (1) SA 419 (SCA) ).
Although the rights owner and the alleged infringer had settled their dispute, the CSARS persisted with its appeal to the Supreme Court of Appeal as it considered the matter of importance in the execution of its duties. On appeal, Tshiqi AJA reaffirmed the principle that an applicant in an ex parte application must disclose ‘relevant and material facts’ (para [9] 223G-H). But he distinguished from this the necessity to disclose that the respondent claimed to have a defence. This he viewed as possibly ‘an ethical duty to bring to the attention of the judicial officer issues of law that might affect his or her decision’ (para [9] 223H-I) but clearly not as a legal duty. His reasoning was that when a warrant is sought, the presiding officer is not required to determine whether the goods are counterfeit, but merely to decide whether there are reasonable grounds for believing that an act of dealing in counterfeit goods has taken place. So the CSARS need only satisfy the court that a prima facie case exists, but need not prove on a preponderance of probabilities that the goods are indeed counterfeit. (This is difficult to reconcile with a decision by the same court the previous year, referred to in this judgment. In Commissioner, South African Revenue Service v Saleem 2008 (3) SA 655 (SCA) (para [14] 662 C-D), Combrink JA said as follows: ‘The case is an important one for the appellant dealing as it does with the conduct and duties of his officials … the powers, like any other administrative powers, must be exercised fairly and reasonably in accordance with the purport and spirit of the Constitution and with due regard to the rights of the individual’.)
Fortunately, in the Cadac decision, the focus shifted to the complainant. Even if it is only ‘an ethical duty’ to disclose any alleged defence, the grant of permission by Harms DP to hold an inquiry into damages might make complainants more cautious about alleging counterfeiting as a shortcut, rather than instituting infringement proceedings.
Harms DP also dealt at length with aspects of the’ inquiry into damages’ procedure, the basis of Cadac’s claim and possible prescription of such claims.
For those who want to study this further , the judgment is reported at http://www.saflii.org/za/cases/ZASCA/2010/105.html

Friday, 17 September 2010

Where in Africa is Afro Leo?

It’s Friday and Afro Leo has decided to take a break from it all. What better than to bungie jump over one of the seven wonders of the world. Here are some clues:

· The name of the country is derived from the Shona equivalent of "House of stone";
· It is the biggest trading partner of RSA on the continent;
· It boasts a 100 billion dollar banknote;
· The country has won eight Olympic medals;
· Given the media restrictions Afro Leo may have to leave his camera behind but etched on his mind will undoubtedly be some beautiful forgotten images of a country once labelled the "bread basket of Africa";
· It is home to ARIPO.

Wednesday, 15 September 2010

Séminaire OMPI/OAPI des 7, 8 et 9 septembre 2010

Les 7, 8 et 9 septembre 2010 s’est tenu à Yaoundé au Cameroun un séminaire régional relative à « la mise en œuvre du plan d’action de l’OMPI pour le développement ».

Ce séminaire, organisé conjointement par l’OMPI et l’OAPI a été animé par des experts venant de l’OMPI, de l’OAPI, des structures nationales de Liaison avec l’OAPI et des professeurs d’Universités.

Son objectif avoué était de présenter l’intérêt du plan de l’OMPI dans le sens de la poursuite des objectifs du millénaire. Pour les experts, la Propriété intellectuelle, qui est au cœur du plan de l’OMPI, peut apporter des solutions innovantes aux problèmes de santé publique, d’environnement, d’accès aux ressources génétiques, des savoirs traditionnels et de transfert de technologie.

Pour la mise en œuvre de celui-ci, les experts ont encouragé les Etats représentés au séminaire à mettre en place des plans nationaux de propriété intellectuelle cohérents et efficaces, ceux-ci devant s’intégrer dans les programmes nationaux de développement.

Pour l’OMPI, la propriété intellectuelle doit être perçue et utilisée par les Gouvernements comme un instrument de politique publique pour l’atteinte des objectifs du millénaire pour le développement.

Tuesday, 14 September 2010

Kenyan SCA case and CPT IP Workshop update

IP livewire John Syekei (Coulson Harney) has reliably informed Afro Leo of a Court of Appeal decision just out of Kenya:

"This is an interesting case- hot off the Court of Appeal bench.

The genesis is a High Court Judgement issued early in the year which ruled that the current applicant's trademark be disallowed for registration on the basis that it is confusingly similar to another mark on the register by taking judicial notice that pronunciation of the two marks in certain communities /tribes in Kenya would be phonetically similar.

The Court of Appeal is of the view that the High Court should have asked for evidence /facts ( possibly a report, and oral testimony from people who would pronounce the words because of the dialects in the same way) in support of the assertion that there are communities that would pronounce the words in a similar manner- ZINACEF and SYNERCEF.

I agree."

Readers may recall that we have a very similar decision in the High Court in RSA, explained by this Afro-IP post here. Does anyone know if the chameleon controversy has been taken on appeal?

Meanwhile Afro Leo has just finished an absorbing day at the PIPRA/USPTO/UCT IP workshop in Cape Town attended by some powerful minds in local IP. One highlight was moderator Kyle Jensen's wrap-up-request for a "few last quick fire questions" which was met with a paradigm shifting idea on open access raised by Dr Tobias Schonwetter, that could have stoked discussion to last a week! Tomorrow's program looks even better.

Friday, 10 September 2010

African Highlights from Access to Knowledge A Guide for Everyone

The 1709 Blog has a post giving an overview of the 2nd Edition of Access to Knowledge A Guide for Everyone (large pdf file), but Afro-Leo wanted to make special mention here of a number of portions of the book specifically highlighting Africa.

Anti-Counterfeiting in East Africa

The book discusses the EAC Anti-Counterfeits Bill, Uganda’s Counterfeit Goods Bill and Kenya’s Anti-Counterfeit Act of 2008 in terms of the Millennium Development Goals,

“East African countries were facing the risk not attaining the millennium development goal (MDG) on universal treatment of people living withHIV and AIDS, malaria and other diseases if the region’s parliaments adopted the anti-counterfeits policy and bill under consideration in the region, the IPS report also noted.”

Afro-Leo recommends reading the excellent coverage by fellow Lions on Kenya’s Anti-Counterfeit Bill with follow-up.

Internet Access

Intellectual property laws are not the only barrier to accessing knowledge.  When resources are legally available but physically unattainable, they knowledge remains as inaccessible.  In relation to this, the book discusses the recent improvements in internet access across the continent (p. 110).  But, as the book points out, internet without opportunities to access it or an understanding of how to use it is useless.  The Kenya Education Network Trust is given as an example of good institutional support for use of the internet, and promoting information and communication technologies. [Another source, Technology Times reports that Nigeria is also working nationally on this issue, potentially appointing a Minister of ICT.

In addition to national programs like the one in Kenya, many people in African countries also have the opportunity to learn about and use the internet through the large number of non-governmental organizations operating across the continent.  As connection points and knowledge about how to utilize the internet increase, the cost of computers are decreasing, resulting in more opportunities for people to actually use the internet on a regular basis.

New Types of Patents

The book address three types of patents with distinct ramifications for Africa and other parts of the developing world: pharmaceutical patents (p. 51), agricultural patents (p. 53), and biopiracy-based patents (p. 55).  Most people following intellectual property issues in Africa are familiar with the debates around pharmaceutical patents: Preventable diseases go untreated because patented medicines are expensive, but if drug developers aren’t rewarded with patent rights, will they make the huge investments required to discover new breakthroughs.  The book discusses the history of patents and phrama and puts for some alternative systems.

“One view on the abuse of pharmaceutical patents is that perhaps patents were the wrong mechanism for funding pharmaceutical production all along.”

Agricultural patents, like pharmaceutical patents, deal with an important component of daily survival, food security.  As new types of seeds are patented, seeds that produce sterile plants, farmers are faced with the possibility of having to pay large amounts of money for seeds they used to just keep from the previous year’s harvest.  Although most African farmers still save their seeds and replant, these countries may move closer to the industrialized country model of planting sterile-plant seeds as companies develop seeds specifically for the various unique growing conditions across Africa.

Biopiracy-based patents are patents generally obtained by companies in industrialized countries who have ‘discovered’ some new compound or plant that a local community has been using for a very long time.  This is an area that overlaps greatly with Traditional Knowledge and Genetic Resources.  While the book acknowledges this as a problem - “The failure to address issues related to traditional knowledge and bioresources even whilst ratcheting upward the protection granted to new inventions doubly jeopardises developing countries.” – this is one place where there’s no potential solutions offered.

Broader Level Points

Other areas of the text that may be of interest with respect to Africa (page numbers or of the pdf, not the printed numbers on the page):

  • Background discussion of the Doha Declaration and Development Agenda, p.23.
  • Libraries as players in Access to Knowledge, with mention of Bibliotheca Alexandria in Egypt, p. 28
  • Academia as a player in Access to Knowledge, with mention of the Wits University LINK Centre in South Africa, p. 29
  • Section 2.1.1 Copyright law and developing countries, p. 41
  • The United State’s Special 301 Report’s effect on developing countries, p. 63
  • Open Access activities in developing countries, p. 78
  • Electronic libraries in developing countries, p. 76

Where in Africa is Afro Leo?

It’s Friday and Afro Leo has decided to take a break from it all. What better than to seek forgiveness (for snacking on that tasty baby waterbuck midweek) in the world’s largest church. Here are some clues:

· If you export your product to the 15million odd population you will need to abide by some strict labeling laws;
· However, you can save money on the patent and trade mark protection by filing one application for each to get effective protection in the surrounding countries too, plus their reported intent to sign an EPA in 2008 may encourage you;
· You are bound to hear about the good old days under Felix whilst sipping coffee in this cocoa bean mecca;
· You will find “shimmering skyscrapers” contrasted by beautiful beach houses where you can enjoy another cup of coffee watching the sunrise (strange on this side of the Africa coast) over the sea;
· If you were a politician or diplomat you would not use the English version of the name of the country due to a government request in the 1980s;
· It would be a lifetime’s work to learn all 85 languages but you can watch football with the locals and that language will, at least, be common - as will their famous players.

Thursday, 9 September 2010

Seeing red

The popularity of the Advertising Standards Authority as an alternative forum for what are essentially trade-mark and unlawful competition disputes is growing steadily. This is understandable from a practitioner’s point of view – it is much quicker, much less expensive, and tedious legal formalities can be dispensed with. From a more general perspective, two issues stand out.

The first is that the decrease in trade-mark litigation results in fewer decisions which could be valuable future precedents (understandably, this is not a point to run past a client when discussing which route to take).

The second is more important for all concerned – the possible conflation of legal precepts with a non-binding code of practice. A perfect illustration of this is the recent Henkel AG v Trefoil Manufacturing (Pty) Ltd ruling by the ASA final appeal committee (available here).

Henkel is the manufacturer of the Pritt glue stick - the judgment refers to sales of 2.5 billion such sticks worldwide over the past 40 years, which translates to a scary number of school projects! Since it was patented 40 years ago, the tubular shape and red colour have remained unchanged. Although other companies produced tubular glue sticks after expiry of the patent, none used the same red colour on their products.

Trefoil has marketed a glue stick for about ten years, first in a green/yellow colourway, but for the past two years in a red colour. According to the ruling, this is not the only similarity between the two glue sticks. The general get-up is similar, as both have similar packaging, are the same shape and size and contain characters (Mr Pritt? and an equivalent). Paragraph 9 of the ruling identifies three prominent visual features; the red cap, the red tubular packaging and a character. Paragraph 13 also refers to intentional copying of ‘in-store point of sale pillar boxes’. The committee was clearly correct in finding that clauses 8.1 Exploitation (advertisements may not take advantage of the advertising goodwill relating to the trade name or symbol of the product or service of another … ) and 9.1 Imitation (an advertiser should not copy an existing advertisement, local or international, or any part thereof in a manner that is recognisable or clearly evokes the existing concept and which may result in the likely loss of potential advertising value…) of the ASA code had been breached.

The facts also show that, had passing-off proceedings been instituted, it is likely that the court would have granted an interdict against Trefoil.

So far, so good. The problem arises when the ruling ventures into the field of single colours as registered trade marks. In paragraph 5 of the ruling, the committee refers to their previous decision where they held that only in very exceptional circumstances could adoption and use of a single colour be ‘a creative advertising concept which will result in advertising goodwill’. This appears to be such an instance (paragraph 9). Then, in paragraph 11, the committee confirms that, while this is not a trade mark or passing off case, authorities in these areas are useful in deciding whether there has been a breach of the ASA code. It then cites a number of trade-mark decisions in various jurisdictions about registrability as trade mark of a single colour.

This seems completely inappropriate. Eligibility for registration as trade mark requires that completely different criteria be met to those for either ‘creative advertising concepts’ or ‘advertising goodwill’. It also seems an unnecessary excursus. The ASA finding did not rest on colour alone, but on the general get-up of the two products.

Giving Consumers Power in the Battle Against Counterfeits

image First reported on by Afro-Leo over two-and-a-half years ago, the Ghanaian developed MPedigree is getting some international attention via the Associated Press.

MPedigree allows consumers to check the authenticity of their medicines via SMS. Each package of medicine contains a special code that the consumer sends to centralized number. The consumer then receives a reply stating whether the medicine is authentic, and thus safe, or a potentially harmful counterfeit.

This not only gives consumers some control, it also relieves some of the burden placed on strapped governments who do not always have the resources to fully monitor the large amount of genuine and counterfeit medicines moving throughout their countries.

MPedigree has the potential to be more powerful than increased IP protection and anti-counterfeit laws because it directly affects the one thing the counterfeiters really care about, the market. Imagine what happens when a consumer purchases a medicine and finds out via the MPedigree SMS the medicine is counterfeit. Likely, the consumer is going to return to the place where the medicine was bought and complain to the clerk that he is selling counterfeit medicine. The consumer will also probably tell others that the store has counterfeit medicines. The shop keeper will in turn complain to his supplier and quite possible refuse to purchase from that supplier again. As supply lines tighten for counterfeit medicines, less and less of the fake drugs will appear on the market. Well, one can hope it works this way.

Trials of MPedigree began in Ghana. Later, Nigeria picked up the program for anti-malaria drugs and is now expanding it to other types of medicines. According to the Associate Press, the EAC is looking into using mPedigree and has begun trials in Rwanda and Kenya.

The full story is available here.

WSJ article under fire - access to drugs - what's the problem?

Afro-IP recently highlighted an opinion by Alec Van Gelder in the Wall Street Journal (see here) that has attracted the attention of the excellent SpicyIP blog in this piece here, entitled "WSJ mixing up issues in Access to Drugs debate", and by Doctors Without Borders here.

Whilst admitting that the opinion raises a number of valid points the Spicy IP author, Berkeley School of Law student Swaraj Paul Barooah, feels that the WSJ gets it wrong in a number of respects. He feels that lack of compulsory licensing is due to political pressure and raises an issue that access to drugs is hampered by a fact that, for example, some drugs do not exist at all. In short he appears to feel that the WSJ article is too simplistic in its approach to the "multi-faceted" problem. Michelle Childs, writing on behalf of DWB, feels that the debate has moved on highlighting DWB's efforts to provide innovative access. She feels that "[the opinion] posits a false choice between keeping the price of medicines affordable and ensuring that the medicines actually reach patients in the developing world".

The opinion is available on subscription only and Afro Leo is hoping Alec will respond for the benefit of our readers.

Wednesday, 8 September 2010

Ghana to Prosecute Illicit Uses of Folklore

While South Africa debates the introduction of the Traditional Knowledge Bill (Afro-Leo coverage here), Ghana is working to enforce the traditional knowledge protection granted by the Ghanaian Copyright Act.

Under the Copyright Act of 2005, a person wishing to use folklore must apply to the government, in the form of the National Folklore Board, for permission and pay a fee. (Section 64.) However, even though the law requires permission and payment, few folklore users in Ghana go through the National Folklore Board.

In order to address the low number of people following instructions, and more importantly, the lack of funds going to the country for the use of its folklore, the director of the National Folklore Board announced plans to start prosecuting those who use folklore without going through the proper procedure. The hope is not to actually prosecute most of these users, but rather to encourage them to “comply with the regulations and register with the NFB to avoid embarrassment.”

Full story, including comments from the Minister of Chieftaincy and Culture available at Ghana News Agency.

Tuesday, 7 September 2010

New push for legislation - the San people

The Guardian carries an article entitled "South Africa's forgotten bushmen fight for recognition" mostly focusing on issues other than IP. However, the paragraph and link below caught Afro Leo's eye because it explains some of the pressure on the government to push through legislation designed to protect traditional knowledge:

There are further demands for "recognition of all our indigenous knowledge systems and the protection of all our intellectual property including medicinal remedies derived from plants such as hoodia" – an attempt to ensure the Khoisan benefit from commercial exploitation of their traditions.

The Hoodia plant and related IP issues over which the San people achieved an historic benefit sharing agreement are also discussed in this piece The Hoo-Ha about Hoodia by Frank Joffe. Alison Baker reported recently too on another example of biopiracy in RSA here. Meanwhile, attempts to encourage innovation in RSA saw the new publically funded IP rights legislation come into force last month. Dina Biagio provides a useful summary here.

Despite the significant criticism that has followed the legislative solutions designed to protect indigenous knowledge and foster innovation, changes and progress persist. With those changes come opportunities, fresh interest in IP and for the advisors, new streams of work. It is no surprise then that Kyle Jensen's (PIPRA) IP workshops next week on innovation are both sold out!

Monday, 6 September 2010

A stinging rebuke?

The Supreme Court of Appeal confirmed the territoriality of IP rights on Friday in Gallo Africa v Sting Music. The judgment is not yet available on-line but should make for interesting reading when posted.
According to Business Day, Gallo sued Sting for copyright infringement in respect of a musical Umoja, which Sting allegedly performed without permission in South Africa and a number of other countries. Gallo relied on the South African Copyright Act 98 of 1978 for infringement locally, but then also alleged infringement in nineteen other jurisdictions in terms of their own copyright legislation. Sting excepted to the summons as being bad in law, and, on appeal, Harms DP confirmed that the exception should be upheld.
He stated that registered IP rights were territorial in nature, and that the same principle applied to unregistered rights such as copyright. As he pointed out, Gallo must have appreciated this, as the particulars of claim described the various acts of infringement with reference to the law of each particular jurisdiction. The appeal was dismissed because local courts did not have jurisdiction in respect of foreign copyright issues, despite the fact that both parties were resident in South Africa.
Pistorius states that (in Pollak on Jurisdiction 2ed at 111), unlike other registered rights where the forum rei sitae has jurisdiction (where the right is registered), the forum domicilii has jurisdiction in copyright matters, and cites Bieber v Columbia Pictures Inc 1981 (2) SA 405 (W) as authority. However, Dean (Handbook of South African Copyright Law Service issue 13 at 1-88D read with 1-90A) appears to consider it possible that a court could enforce a foreign copyright.
The judgment by Harms DP will no doubt clarify the situation, and be of value from both a procedural and a substantive perspective.

Searching in Africa

While not directly related to intellectual property, Afro-Leo thought this list compiled by Online Africa might be useful to lion readers.  Uniquely African search engines includes 26 country-specific websites, 1 regional site and 1 continent wide site. 

Each of these sites offer geographically focused searches for websites and internet content.  As Online Africa points out, “Google often overlooks smaller (but useful) African sites that have  a low Page Rank.”  So next time you just can’t find any information on that Botswana law, or you want to see if your client’s idea for a business name is already in use in Mauritius, try the search engines on Online Africa’s list.  You might find something Google or Yahoo! might have missed.

Note: Online Access has a low bandwith version available here.

Friday, 3 September 2010

Where in Africa is Afro Leo?

It's Friday and Afro Leo has decided to take a break from it all. What better than to explore a country described as "having some of the continent's most gracious people". Here are some clues:

  • it is nearly twice the size of Texas and five times the area of the UK
  • it has the fastest growing economy in Africa and one of the fastest in the world
  • it gained independence in 1975 after 400 years of colonial rule
  • it was a flashpoint during the cold war
  • it has a single class application system for trade marks and you get charged according to the size of the specification
  • inventions need to be worked within a period of three years from date of grant to avoid compulsory licensing provisions
  • the chip off the old block has been described as the "Kuwait of Africa"

Thursday, 2 September 2010

Contralesa on RSA's Traditional Knowledge Bill

Contralesa met recently to discuss a number of developments including South Africa's Intellectual Laws Amendment Bill (Traditional Knowledge Bill). The following was minuted according to this article in Daily Dispatch:

"1. Contralesa supports the introduction of the Bill by government because it seeks to give legal protection to indigenous knowledge systems in the same way as western systems of knowledge. [the intention is noble but the Bill has received much criticism of being unworkable and badly drafted (see links below)]

2. As custodians of African customs, cultures and traditions, traditional councils, local, provincial and national houses of traditional leaders must constitute the structures envisaged in the Bill to accredit and register traditional knowledge practitioners to regulate and arbitrate disputes and to collect and distribute funds generated from royalties paid by those who make a profit through indigenous knowledge belonging to verified communities.

3. Contralesa welcomes the fact that State departments such as Arts and Culture, Science and Technology, Water and Environmental Affairs, Trade and Industry, Agriculture, Fisheries and Forestry are busy developing a policy which will consolidate the government’s common approach towards the development, promotion and protection of indigenous knowledge systems.

The organisation will make further submissions to Parliament to enhance the value of the Bill in the lives of rural and traditional communities."

For more on Contralesa click here. For a short history and taste of the controversy surrounding the Bill, Denise Nicholson provides good summary here and here. For more information from this blog please try the search function and traditional knowledge tag on the right hand side of the blog.

Wednesday, 1 September 2010

A new Protocol and a sheepish lion

Last night Afro Leo was prowling around in search of a copy of the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore. He has now received links to the Draft Protocol and the draft implementing regulations, thanks to the thoughtfully efficient Denise Nicholson (University of the Witwatersrand).

This rather sheepish lion confesses that it never even occurred to him to look for the Protocol on the ARIPO website, since so many of his previous visits to it have ended in abject failure -- but it was working most effectively five minutes ago, a big improvement!

Swakopmund Protocol: history made, but have you got a copy?

An excited media release from the World Intellectual Property Organization (WIPO) pressroom proclaims that WIPO Director General Francis Gurry "welcomes moves to enhance protection of traditional knowledge and folklore in Africa". The occasion for this is the adoption by member states of the African Regional Intellectual Property Organization (ARIPO) of a new legal instrument that seeks to protect African traditional knowledge and folklore -- the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore. This is seen as “an historic step for ARIPO’s seventeen member states, and a significant milestone in the evolution of intellectual property.”

The Protocol, designed to preserve and protect the use of Africa’s diverse knowledge systems and cultures for the continent’s sustainable development, will enter into force following ratification by six ARIPO member states.

Says Afro Leo, I've searched the WIPO website under "Swakopmund" (Namibia) but have yet to locate a copy of the Protocol. Does anyone have one which they can share with us?