Wednesday 30 April 2014

Caroline B Ncube

IP policies in Africa no. 20: Gabon


Having recovered from Freedom Day and World IP Day festivities, this Leo is back with a brief report on Gabon. Gabon does not have an IP policy nor does one seem to be on the cards (see WIPO's technical assistance database here and here).

In the post on Equitorial Guinea here, this Leo mentioned that there had been some indication that OAPI, of which Gabon is a member, had initiated work on an IP policy, which seems to have stalled. Any information on this from Afro-IP readers would be very welcome.

------------------
IP Laws on WIPOLex 
Kingley's official IP websites series - 20112012, 2013
Adams and Adams Africa IP Law Guide - Gabon
WIPO Magazine 'Health Research in Africa: Sharing IP Resources to Deliver Results' (2007)
Read More

Tuesday 29 April 2014

Jeremy

Polin fends off Polin in Morocco

Here's some news from Morocco.  A Turkish company with the striking name POLIN SU PARKLARI VE HAVUZ SİSTEMLERI ANONIM SIRKETI (in English, "Pole Water Park and Pool Systems Joint Stock Company"), was the original proprietor of the trade mark "Polin stylized in color", International Registration no. 1061615, registered on 14 May 2010 in many countries for goods in Class 28. This company discovered to its dismay that a Moroccan trade mark application had been filed for the word POLIN (application no.194155 on 9 January 2013 by a local applicant, RUE IBN KATIR RESIDENCE AL MAWLID IMMEUBLE, for goods in Classes 28, 37 and 41.

An opposition was successfully filed against this application in so far as it affected goods in Class 28, based on the opponent's prior registrations. In the absence of an appeal, the decision is now final.

This blogger notes with satisfaction that it is possible to file an opposition and eliminate a confusingly similar mark within a reasonable time-frame, which suggests that the trade mark administration side of Morocco's IP office, OMPIC, is running smoothly.

Source: news item frm NJQ & Associates, who acted for the successful opponent.
Read More

Saturday 26 April 2014

Jeremy Speres

South Africa: Three new trade mark judgements

After being punished by a gorgeous yet savage Two Oceans Trail Run, I was hoping that a read of the three High Court trade mark judgements discussed below would take my mind off my aching limbs.  The first did just that, the second was moderately interesting and the last made Bastard Hill seem rather pleasant in comparison!     



Presto produces cellular confinement systems used for soil stabilisation and erosion control.  In the 90s, Presto licensed certain patents, know-how and its GEOWEB trade mark to PRS.  The parties ultimately fell out, proceedings were instituted and settlement was reached in 2001.  The settlement expressly repealed most of the original licence and provided a new, altered licence to PRS for a limited period.  Unfortunately, the settlement did not expressly retain the acknowledgement of Presto’s proprietorship of the mark nor the provisions forbidding PRS from adopting or registering the mark other than in terms of the licence.

After expiration of the settlement licence, PRS filed an application for the mark in SA.  Presto then sought revocation of the registration on the basis that PRS had no bone fide claim to proprietorship (s 10(3)) and that its application was made mala fide (s 10(7)).

The court found that implicit in the settlement licence was an acknowledgement of Presto’s proprietorship of the mark.  The court also adopted a wide interpretation of mala fides and accepted that bad faith in relation to claims of proprietorship does not necessarily involve breach of a legal obligation (in this case, a contractual obligation).  Accordingly, even though the express provisions acknowledging Presto’s proprietorship of the mark terminated upon settlement, the court still found that reliance on that state of affairs fell short of “the ethical standards of acceptable commercial behaviour.”  

Importantly, the judgement highlights the flexible nature of objections based on lack of bona fide proprietorship and mala fides, emphasising morality and ethics (things that perhaps us trade mark lawyers aren’t too bothered by!).  It also emphasises the need for clearly drafted settlement agreements – implicit terms are notoriously difficult to prove and one is left with the feeling that this dispute might not have arisen if the settlement agreement contained express proprietorship provisions.


Aloe Vera owns trade mark registrations for an eagle device in classes 5 and 32 and has established a reputation in the device in respect of its health and wellbeing products.  Taisho applied to register its own eagle device in the same classes.  Aloe Vera opposed Taisho’s applications on the basis of a likelihood of confusion or deception arising from Aloe Vera’s reputation (s 10(12)) and its prior registrations (s 10(14)).

The court cited two contentious aspects of the recent Foschini v Coetzee judgement with approval.  Firstly, the court favoured the approach of using the classification system as the starting point for assessments of similarity.  Secondly, and perhaps most contentiously, the court cited the comments in Foschini regarding the need to limit monopolies in light of a general policy against anti-completive practices.  In Foschini, that approach was used to limit the goods/services scope of Foschini’s monopoly.  In this case however, the court used the same reasoning to limit Aloe Vera’s monopoly in respect of the similarity of the marks.  The court found that Aloe Vera cannot claim a monopoly in respect of an eagle irrespective of the manner in which it is depicted.  Having regard to the dissimilarities between the devices viewed as wholes, the court dismissed the opposition. 

This case emphasises the difficulty in proceeding on the basis of conceptual similarity alone and is in line with the reasoning of the Registrar in the Sun International v La Chemise Lacoste case, also incidentally involving a depiction of an animal, where it was reiterated that “trade marks do not create monopolies in relation to concepts or ideas” (cited in La Chemise Lacoste v Rong Tai Trading).  It is also noteworthy that the anti-monopoly sentiment first expressed in Foschini has now spread to another court, albeit in the same division.


This judgement had me scratching my head a fair bit.  Luckily I’m not the only one; one learned commentator, who shall remain anonymous, mentioned that the judgement seems “confused and confusing on more than one level.”  Many thanks to Adv. Mark Seale (who acted for the applicant and is not the anonymous commentator!) for very kindly sharing his heads (here and here) and the notice of application for leave to appeal, which is to be heard in May.

The applicant claimed that the respondent was infringing its registration for INFINITY in respect of tyres and wheels.  The respondent relied on the section 36 “prior use” defence but also counter-claimed for expungement of the mark on the basis of, amongst others, section 10(3).

The court apparently disregarded the express wording of section 36 in allowing the defence.  Section 36 requires the party raising the defence to show use predating the date of first use or the application date of the registered mark, whichever is earlier.  Having apparently accepted that the applicant began using the mark before the respondent, the court strangely went on to hold: “Nothing turns on the date Applicant commenced using the trade mark…as it bases its claim squarely on the registration…”

Regarding the counter-application for expungement, the court adopted a rather harsh interpretation of what constitutes “sharp practice” vitiating a bona fide claim to proprietorship.  The court found that simply because the applicant had applied to register the mark two weeks after discussions with the respondent, had delayed enforcing the mark and had only filed its application sometime after it began using the mark, the applicant’s conduct approached “sharp practice”.

Finally and most interestingly, the court considered the tricky question of whether a distributor, licensee or some other party besides the source of the goods/services can claim proprietorship of the mark (See Wilkhof Trade Mark Licensing at p 154 onwards for a full, fascinating discussion).  The court found that in order for an applicant to have a bona fide claim to proprietorship, it must intend to use the mark in respect of its own goods.  Given that the applicant in this case imported its goods (as opposed to manufacturing them itself), it was found to lack such intention and its registration fell to be expunged accordingly.  In support of this stance, the court relied on the definition of “trade mark” in section 2(1).  This despite the authors of Webster & Page writing that “It is clearly arguable that as the distinguishing function is given more weight in the 1993 Act, it should be possible for a distributor in the absence of a person claiming greater title to the mark to register such mark as his trade mark. Such an interpretation would give full meaning to the words “any other person” in the definition.”

What makes this aspect of the judgement so interesting is that typically the manufacturer or the original source of the goods/services would be the one claiming that the trade mark applicant (usually an errant distributor or licensee) lacked bona fide proprietorship.  Interestingly in this case, a third party succeeded in raising this ground.  Watch this space for a report on the appeal judgment!
Read More
IPcommentator

2014 World IP Day reminds us about Nollywood - A Global Passion we 'really' do not know

This Leo shamefully feels a sense of relief that the 2014 World IP Day has come to his rescue for Part II of 'Copyright-based industries boost Nigeria's latest GDP: Time for a comprehensive study (Part I)'. [Afro Leo says that the title also meant: enough said, no need for a Part II] Yes, a blog post wouldn't do justice to this complex subject-matter; hence, this Leo will often rotate between Nollywood and entertainment industry in general. WIPO has helped him cut to the chase in fulfillment of his promise for a Part II

Background
WIPO's  decision to go with the theme, 'Movies – A Global Passion', was eloquently explained by its Director General, Mr Francis Gurry. Mr Gurry, obviously, had mention the three dominant global cinemas: Hollywood, Bollywood and Nollywood; but he didn't ignore other candidates with active film industries.

Nollywood - A Global Passion we 'really' do not know? Not really though. 

Call it 'hypothesis', 'hearsay', 'guesswork' or whatever, what we (or let's just say, I) know about Nigeria's entertainment industry, in general and as referenced in Part I, include the following:

(1) Officially, we do know that it represents 1.42% (circa 7 billion USD in value) of the country's GDP. How and where the baseline figure of 0.88% (2010) was plucked, only Afro Leo knows. 

(2) We know that the world's hottest hedge fund got involved in raising millions of dollars for a new business model in the industry. [Some serious business opportunity. Have you also noticed that this hedge fund currently holds shares in Netflix? Nice plan, says Afro Leo].

(3) We know that the content is increasingly consumed (e.g. in the UK herehere and here) or exploited outside Nigeria  - it is even topical at business conferences, according to sources including this Afro-IP post or others here and here. About time! Do you know how much Hollywood content is consumed in Nigeria? Afro Leo won't be shocked if the figure is high. Have a feel by looking at this cinema listings here

(4) Considering the size of the country and Nollywood, the number of cinemas is quiet lamentable. Indeed, distribution still remains Nollywood's biggest headache since the majority of its movies are churned out straight onto DVDs - a low-cost model praised or supported by some (e.g. here and here). Based on this Leo's limited geographical knowledge and online research, he understands that the available ones are concentrated in Lagos and a few others scattered around in other parts of the country. If power supply and security can be improved across the country, Afro Leo expects to see more investors pouring money into the cinema business. This may help raise the bar on film quality to a higher level to the extent that Nollywood will officially match Bollywood and Hollywood toe to toe - maybe not in terms of box office losses profits.

(5) It is obvious, when you visit the Nigerian Copyright Commission (NCC), that anti-piracy headlines are all over the place (also see this previous Afro-IP post). What about IP research materials or statistics? Shouldn't the NCC also be responsible for conducting or commissioning various research projects into copyright-based industries? Should the focus always be on anti-piracy?

(6) With a great deal of international recognition of Nollywood's potential, the Nigerian Government seems to have put something in place to support the industry albeit that it is reported to be in chaos

What we (or I) don't actually know about Nigeria's entertainment industry include:

(1) The number of people employed or commercial entities engaged in this industry
(2) The actual breakdown, into subsets, of this industry as well as the whole copyright-based industries and  how they interact or should interact with one another
(3) The value when broken down by trade i.e. imports and exports
(4) Any correlation between copyright infringement activities and the success or decline of the industry
(5) Whether existing IP legislation or policy tools were based on informed evidence including a costs vs benefits analysis
(6) Whether Nollywood, as an example, has an easily identifiable structure right from the development of the idea (script) down to the selling of the finished quality product (the film)
(7) Who benefits, the most, from the industry [At least Afro Leo knows that these entertainment stars are relatively similar to their Hollywood counterparts since they also secure lucrative brand endorsement deals every now and then]
(8) What are the emerging business models and how do they affect the market including its legal landscape

Why should we or anyone know? Not difficult to tell; reasons include:
  • It would help the Government decide if it needs to implement the international treaties which it is already signatory to
  • It would equally help decide on the apparent copyright reform - which has since somehow disappeared from the radar - or how best to support the industry
  • The research would attract and better direct more investors, of all shapes and sizes, into the industry e.g. invest in internet infrastructure for online distribution?
  • It would help industry participants realise their real value and hasten a reasonable formalisation of the industry as a whole
Conclusion
One can almost imagine how gruelling Nigeria's overdue GDP re-basing exercise must have been, together with the inevitable and generous margin of error. Credibility is paramount in this sort of exercise - this  was why Nigeria had to stress that the World Bank, among others, endorsed it. Similar to other African countries (e.g. Kenya and South Africa) who have assessed the economic contributions of their copyright-based industries, Nigeria will report data integrity challenges. One only has to look at the GDP data sources in Part I for the telltale sign. Nonetheless, Nigeria's own study will have learned from the experiences of others to most likely conclude that its copyright-based industries significantly contribute to the economy (the employment potential is huge) albeit not in comparison to traditional sectors such as agriculture and natural resources.

Entertainment industry participants, themselves, are not even sure of the true economic value of the industry. For example, Yewande Sadiku, Executive Producer of the expensive Half of a Yellow Sun film, tells us about the key challenges facing Nollywood as well as the untapped opportunities. Similar views about Nigeria's entertainment industry, in general, can also be found here and here. Therefore, it is imperative that Nigeria finds the means and will to conduct this first-ever economic assessment together with the overall societal costs and benefits of the IP regime that it currently uses to promote creativity and innovation. If need be, WIPO is available to provide the technical assistance or research service and/or even fund the project itself - like it did with Kenya. Furthermore, Nigeria might consider taking advantage of its IP cooperation agreement with the UK - a country that is currently reforming its copyright regime for the digital age.  [Is Nigeria not capable of commissioning this study with its own resources?]

The entertainment industry, largely, showcases Nigeria's culture and people across the world seem to be gradually buying into it. Thus, it should be afforded appropriate attention by government just like the traditional sectors of the economy. Nigeria should also start learning from the mistakes and successes of others: for example, the UK not only has something called a 'Creative Industries Council', it also has a supportive financial and tax regime in place, and an annual review of the sector.

Perhaps, more time is needed to gather sufficient data sets for a comprehensive study of the industry. Let's hope that WIPO can use this opportunity to urge Nigeria to prepare something basic for the time being.

-----------
Lobato Ramon, Creative industries and informal economies: Lessons from Nollywood is here
Global Trends in Creative Economies in Africa, here
Creative Africa: how can the arts drive development? - podcast here
South Africa's Henley Business School now offering  MBA in Music & Creative Industries here
Is GDP still relevant in today's world? The answer may lie here
UK's introductory guide to the creative economy is here, while a toolkit to map out the sectors is here
Read More
Afro Leo

Afro-IP team announcement


Afro-IP is very pleased to announce that Jeremy Speres has accepted an invitation to join the blogging team. Jeremy has contributed as guest of this blog on many occasions and his posts have proved popular, even though he confessed to being a Liverpool supporter. Jeremy's real job is as an attorney at Floor Swart based in lovely Stellenbosch. The firm focuses on entrepreneurs, assisting them take their IP to IPOs. You can also follow Jeremy on twitter using the handle @JeremySperes

If you wish to write for Afro-IP please feel free to send an email here.

Saturday fact: there are two Jeremys on the Afro-IP team, both sporting leolike manes.
Read More

Wednesday 23 April 2014

Caroline B Ncube

RSA: Criminal conviction for sharing local movie on Pirate Bay

Source: (c) NuMetro
In December 2013 (possibly) the first arrest for copyright infringing file-sharing online was made in South Africa (see report here).  IOL News reported yesterday that the arrested Capetonian man was convicted of criminal copyright infringement  for posting a copy of a local movie, Four Corners, (currently showing at Nu Metro cinemas) on Pirate Bay. The file-sharing site reportedly 'processed its ten millionth torrent upload' on 21 April (see report here). According to the IOL News report, the Bellville Specialised Commercial Crimes Court sentenced the man to a three-year suspended sentence for contravening the Copyright Act, 98 of 1978 and  fined him R3 000 or a six-month suspended sentence for contravening the Films and Publications Act 65 of 1996.


The news report does not specify which sections of the legislation the man was charged under and what follows are this Leo's best guesses. The man would have been charged under section 27 of the Copyright Act which provides for the following offences:
(1)  Any person who at a time when copyright subsists in a work, without the authority of the owner of the copyright—
(a) makes for sale or hire;
(b) sells or lets for hire or by way of trade offers or exposes for sale or hire;
(c) by way of trade exhibits in public;
(d) imports into the Republic otherwise than for his private or domestic use;
(e) distributes for purposes of trade; or
( f ) distributes for any other purposes to such an extent that the owner of the copyright is prejudicially affected, articles which he knows to be infringing copies of the work, shall be guilty of an offence. 
(2)  Any person who at a time when copyright subsists in a work makes or has in his possession a plate knowing that it is to be used for making infringing copies of the work, shall be guilty of an offence.
(3)  Any person who causes a literary or musical work to be performed in public knowing that copyright subsists in the work and that performance constitutes an infringement of the copyright, shall be guilty of an offence.
(4)  Any person who causes a broadcast to be rebroadcast or transmitted in a diffusion service knowing that copyright subsists in the broadcast and that such rebroadcast or transmission constitutes an infringement of the copyright, shall be guilty of an offence.
(5)  Any person who causes programme-carrying signals to be distributed by a distributor for whom they were not intended knowing that copyright subsists in the signals and that such distribution constitutes an infringement of the copyright, shall be guilty of an offence.

It would seem that the man was convicted of the offence  in s 27(1)(f) as the other offences are not directly applicable. Section 27(6) provides that the penalty for the first conviction under section 27 is a fine not exceeding five thousand rand or to imprisonment for a period not exceeding three years or to both such fine and such imprisonment, for each article to which the offence relates. The fact that the penalties attach to each infringing article mean that they can be quite harsh where one is convicted in relation to numerous articles. The court selected the sentence of imprisonment but suspended it because, according to the IOL News report, he acknowledged his guilt  and 'had helped with the removal of the film from Pirate Bay and had co-operated with investigators' and 'was remorseful for his actions and had apologised to the court and the filmmakers'.

In relation to the Film and Publications Act, it seems that the man was prosecuted for distribution or exhibition of a film without prior registration under section 24A(1) (1) which provides:
Any person who knowingly distributes or exhibits in public a film or game without first having been registered with the Board as a distributor or exhibitor of films or games shall be guilty of an offence and liable, upon conviction, to a fine or to imprisonment for a period not exceeding six months or to both a fine and such imprisonment.

This conviction raises the vexed question of whether criminal prosecution is an appropriate way to sanction copyright infringing file-sharing on the internet. A question Adam Oxford grapples with eloquently in his piece entitled 'Three years for Four Corners: How will South Africa choose to punish filesharing?' (available here).

-------------
Four Corners piracy sentence “draconian” [commentary on the sentence by Adam Oxford of htxt.africa based on an interview with Dr Tobias Schonwetter] 
Read More

Friday 18 April 2014

IPcommentator

Friday safaris

Innovation and IP Management
Open innovation is the use of “purposeful inflows and outflows of knowledge to accelerate innovation internally while also expanding the markets for the external use of innovation”. That is the definition in the second research paper by the International Chamber of Commerce Commission on Intellectual Property titled, 'The Open Innovation Model'.

The authors conclude, among others, that: (a) open innovation is expected to dominate the innovation model in the 21st century; (b) companies should comfortably use patents to share knowledge, technology as well as demonstrate the value of R&D; and (c) policymakers can encourage open innovation by taking steps such as improving the quality of patents. [Can one ever improve that with a deposit system?] Afro Leo thinks that this paper is ideal for both private and public sector policymakers. Anyone interested in IP management will equally find it instructive.

Copyright
LogoThis news report tells us that Nigeria's indefatigable collecting society, COSON, has signed up to the Interested Parties Information (IPI) system which is administered by the Swiss collecting society, SUISA. The IPI system - endorsed by CISAC (a network which lists COSON as its member) -  is used to trace the owner of various copyright works used worldwide. COSON is equally interested in the 'WAR AGAINST CANCER' in Nigeria.

Patents I
Patents for Humanity logoYou might have already heard this somewhere else (e.g. here); but just in case, a loud high five to the U.S. Commerce Department’s United States Patent & Trademark Office (USPTO) who recently announced that its Patents for Humanity initiative is being renewed as an annual competition. The programme recognises businesses, inventors, non-profits, and universities who leverage their intellectual property portfolio to tackle global humanitarian challenges. Winners receive an accelerated processing of select matters at the USPTO. For more details, click here and here.

Patents II
ViiV HealthcareThe ever-reliable IP Watch informs us that the Medicines Patent Pool (MPP) has announced two new licencing agreements with the private sector joint venture ViiV Healthcare. This deal is expected to see an increase in the access to a new antiretroviral drugs in countries hardest hit by HIV/AIDS. (Previous Afro-IP posts citing MPP include here and here. Another source for this news is here). 

IPRs and domain names
HomepageThe representatives of South Africa's ZA Central Registry (ZACR) and the Internet Corporation for Assigned Names & Numbers (ICANN) have signed an agreement that would see the launch of the .africa internet domain name (gTLD) in May 2014, reports dot Africa. Bursting the happy bubble is WebTechLaw director, Paul Jacobson, who warns domain owners that the warranties they agreed to when signing up for a .co.za domain (which will apply to .africa) are overly onerous and could leave them with serious IP infringement liabilities and associated costs. [Afro Leo kindly asks readers to shade light on this matter including, if publicly available, directing us all to the actual agreement] What do Nominet (.uk ccTLD registry) and  Neustar (.us ccTLD registry) say in their T&Cs?

Plant Variety Protection 
UPOV HomeFinally, and better late than never, a Leo roar to Afro-IP's friend, Tom Suchanandan, for alerting us to this strongly-worded letter (by concerned groups) against ARIPO's Draft Protocol for the Protection of New Varieties of Plants - which has since received a stamp of approval by the UPOV's council. [Did ARIPO receive assistance from UPOV in drafting this, in the first place?]. In summary, the alliance wrote: "The Draft Protocol clearly lacks credibility and legitimacy. We strongly urge you to reject the Draft Protocol and that the Draft Protocol should be sent back to the drawing board; that ARIPO consult with smallholder farmers and civil society in all ARIPO member states; and, especially, that it discusses appropriate and equitable PVP regime that reflects conditions and realities prevailing in ARIPO countries, the obligation of protecting biodiversity, incorporates farmers’ interests and rights and safeguards to protect public interests and prevent biopiracy." The proffered benefits of plant variety to farmers and growers can be heard here 

Read More

Tuesday 15 April 2014

Caroline B Ncube

PAIPO: ARIPO AND OAPI SPEAK

source: ARIPO 

After a long time since we've heard concrete news about PAIPO, this Leo learnt this morning via Prof Yousuf Vadwa that ARIPO and OAPI held a consultative meeting in Harare last week, following which they released a communique on the establishment of PAIPO (available in full here).
The meeting attendees are pictured on the left. They were:




(i)  Honourable (Retired) Major General Kahinda Otafiire, who is the Chairman of Council of Ministers of ARIPO and Minister for Justice and Constitutional Affairs of the Republic of Uganda;
(ii) Honourable Anacleto Olo Mibuy, who is the President of the Administrative Council of OAPI and  President of the Scientific and Technological Research Council of Equatorial Guinea;
(iii) Honourable Emmerson Mnangagwa, who is the Minister of Justice, Legal and Parliamentary Affairs of Zimbabwe;
(iv) Honourable Fortune Chasi, who is the Deputy Minister of Justice, Legal and Parliamentary Affairsof Zimbabwe;
(v)    Dr. G. Gandawa, who is the Deputy Minister for Science and Technology, Higher and Tertiary Education of Zimbabwe;
(vi) Mr. Bemanya Twebaze, who is the Chairman of the Administrative Council of ARIPO and Registrar General, Uganda Registration Services Bureau (URSB);
(vii)   Mr. Fernando Dos Santos,  who is the Director General of ARIPO; and
(viii)  Dr. Paulin Edou Edou, who is  the Director General of OAPI.

 The meeting addressed the following requests to the AU (verbatim text of the communique in blue] :
(a) to convene the Stakeholders Meeting as a matter of urgency to enable the participation of all stakeholders including ARIPO, OAPI and WIPO,  [this resonates with various calls for a more transparent and inclusive approach to discussing PAIPO] and
(b) for the Ministries/competent authorities responsible for IP to play a leading role in the process of establishing PAIPO [to date PAIPO has been the province of ministers of Science and Technology] .

The communiques also highlights the following issues, as being amongst those that must be discusses at the Stakeholders Meeting:
 a) development of a roadmap for the implementation of the decisions of the Heads of State and Government on the establishment of PAIPO; [this Leo has found that the lack of detail surrounding the establishment of PAIPO very frustrating as it makes it difficult to engage with the process and to make contributions]
b) review of the Final Draft Statute of PAIPO [a number of concerns have been raised about the wording of the statute and its review is essential] .

Finally, the communique ends with the following recommendations:
 i.That Ministers responsible for IP in the various African countries should form the political organ that will provide political and policy orientation to PAIPO and oversee the gradual and systematic implementation of the decisions taken by the Heads of State and Government regarding the implementation of PAIPO [what would be the role of Ministers for Science and Technology, this Leo asks? Not to mention Trade & Industry  and Arts & Culture?].
 ii.In view of the fact that ARIPO and OAPI have gained enormous experience in the registration and granting of industrial property titles, the Heads of State and Government should create a unit [with OAPI and ARIPO representation and/or leadership?] within the African Union Commission whose mandate should be policy and political direction and orientation on intellectual property matters for Africa.
 iii.That unit should also oversee and coordinate the harmonization process between ARIPO and OAPI [this harmonisation process is one to watch. What will it entail?] .
iv.That since both Organizations have a total of 35 member states out of 54 African countries, a united African Intellectual Property Office could emanate from the amalgamation of both Organizations [confirmation of the merger rumours?].
 v.The joint committee recommended that ARIPO and OAPI should continue to be the two organizations to register IP in Africa.
 vi.That the Heads of State and Government should be sensitized on the role ARIPO and OAPI play in the management and coordination of IP in Africa.

Certainly lots of food for thought for this Leo and Afro-IP readers! further thoughts or comments, anyone?

Read More
IPcommentator

Don't you dare blame TRIPS again - Max Planck Institute declares

Although this Leo has an inherent bias towards another, he must say that any IP research by Max Planck Institute (MPI) does carry enormous weight across Europe when unleashed. (Also see MPI's work on European collective rights management and here + here on European trade marks). 

You may have already seen the IPKat's post, but it seems that this blog might be the first to lead you to the actual text of the research or Declaration (as they prefer to call it). You can read the summary here or just dive straight into it here. The Declaration document is neatly laid out and would serve as a reference point for national IP policymakers or those working with developing countries (including the least-developed) on IP law reform.

To this Leo, instructive in MPI's research are as follows:

(1) IP problems are not exclusive to developing countries
(2) Make effective use of the TRIPS flexibilities (especially, compulsory licensing) but challenges posed by trade deals are recognised
(3) States must regularly revisit IP laws and are allowed to implement TRIPS taking their socio-economic interests into account (e.g. have a look at this OECD report in 2004 titled: Patents and Innovation: Trends and Policy Challenges)

Commentary
This Leo cannot remember the number of times that he has cautiously hinted on MPI's key observation, regarding the TRIPS flexibilities, in his posts (maybe, here, here, here, here or here. Other Afro-IP posts pointing to this observation include here, here, here, here and here). To his young mind, IP discourse (in relation to developing countries and like in all similar issues) have somewhat been polarised - with each group legitimately fostering their respective interests. The middle ground, albeit existing and relevant, seemed not interesting enough. (Says Afro Leo: "MPI should tread carefully before the 'IP maximalist' mark is firmly stamped on its forehead. That stamp is easily and readily available for use")

One cannot honestly say that making effective use of TRIPS flexibilities is a panacea. However, it is a meaningful step towards mitigating the identified problems we have at hand; no? Joseph E. Stiglitz (an advocate of pro-development IP regimeargues that poorly designed IPR regimes is a major problem; there should be a 're-think' of patents; and that TRIPS still remains an unbalanced global regime - with the U.S, in particular, foisting far stronger rules on others (see herehere and here). 

China and India are good examples of countries which have played the IPR regime game quite well to get to where they are today. African countries may well have woken up too late; the hope is that they can still readjust. To do so may require growing a backbone - albeit that most neither have a choice nor bargaining power. In an ideal world, it may even be better to call for the suspension of patent law in order to allow developing countries to emerge on a reasonable level playing field. That is not the world we live in and,  how can one determine what is a level playing field? Moreover, what would be the impact on creative individuals or businesses in terms of competing with one another and consequentially, creating IP? There are no easy answers or solutions.

He prefers to sit on the fence on these matters (maybe, call him an IP minimalist). This is what he believes in: the people in most, if not all, African countries are capable of creating all things which (generally speaking) the prevailing IP regimes are designed to protect.

Over to you for your thoughts.

------
MPI's Proposals for Amendment of TRIPS are here
Tired of IP maximalists? See them here, here and here
Read More

Monday 14 April 2014

IPcommentator

World Moto Inc. 'looking forward' to another quick patent: The benefit of a deposit system

Fussy Lion Cub
Always fussing about the office. 
Source: here
This young Leo has learned that World Moto Inc. are about to lay hands on another patent for its Moto-Meter™ technology. This latest patent comes from South Africa - who is expected to issue on 30th April. (If interested, the certificate will be posted on the company's facebook page). [Another publicity round for them?" asks Afro Leo]. Yes, Afro Leo; you will soon understand why, in a moment.

Background
As this Leo currently understands: World Moto filed a PCT application (probably with the USPTO) seeking to protect the Moto-Meter™ technology in 61 countries, including some in Africa. Several forward-looking statements (including here for Mexico) inform the public that Nigeria was the first to grant (see Moto-Meter Granted a Patent in Nigeria -- Monopoly Guaranteed Until 2033hereinafter, 'Press Release for Nigeria'). For the purposes of this post, here are crucial excerpts from that article: 

Excuse me, what are you looking at?
Source: World Moto Inc
"Nigeria is the first locality to complete its investigations and issue a patent. The patent was granted as filed, with no changes or office actions required on any of its 28 claims, and will remain in force until February 8, 2033. The remaining 60 countries are currently in the substantive evaluation period and are expected to complete their investigations within the next 4 years. Based on its success in Nigeria, and its original favorable review from the Patent Cooperation Treaty Examiner, the Company expects ultimately to be awarded a patent in every targeted jurisdiction."

"World Moto CTO Chris Ziomkowski stated, "The Moto-Meter will greatly affect billions of lives and we are pleased that the Nigerian Patent Office has so quickly recognized its novelty and industrial applicability. Having a patent on an innovation of this magnitude will allow us to fully develop the market for everyone's benefit."


Afro Leo, can you now see the minor reason for this post: Nigeria was the first to investigate (or according to the CTO: "...quickly recognised its novelty and industrial applicability") and issue a patent? South Africa is next. Is there something in common in respect of patent law and practice in these two countries? This Leo, as usual, will pick on Nigeria. 

Commentary
It is often good news when foreign investors or entities see growth opportunities in various parts of the continent. This technology may well help improve - at least, in terms of motorcycle transportation cost - the lives of many. However, this Leo is unsure about the advertising part of it: glowing wheels in the dark? [Afro Leo may well need a cool Ray-Ban sunglasses]

Winning hearts and minds
Based on experience - in working with tech entrepreneurs, especially those looking for funding and partners - this Leo gathered that some investors are somewhat easily pleased to hear or see the phrase, 'patent pending'. Same may be said for potential distributors, licensees and dealers eager to pounce on business opportunities - subject to terms such as IP infringement indemnity. 

On the macro level, this Leo would be interested to know how World Moto (including their distributors or dealers) assessed last year's news which reported that the Nigerian Federal Government urged States to ban the commercial use of motorcycles. [Obviously, market research was conducted to reveal that opportunities outweigh risks. Confident Afro Leo continues by guessing that one of World Moto's counter strategies may involve lobbying certain States not to follow orders or even to introduce meters. Moreover, he also sees the lucrative side of the personal use market. At the end of the day, investors/business people need a decent level of certainty in order to participate in a market. World Moto sitting comfortably]

Having secured some distributors, one has to feel that World Moto has, at least, won some business hearts and minds in their target markets. 

The PCT route to market
At the heart of patent regimes is novelty. It is commonly held that patent owners, with global ambitions, tend to tend to take advantage of the provisions of the Paris Convention or  PCT system (provided targets are members thereof) than bear the burden (e.g. costs and priority date) with individual applications for every target. The PCT system is common and notable, not least, due to features such as: a single application (in-country or directly with WIPO), initial basic formalities, and coverage in up to the current 148 members.

From a strategic viewpoint, one of the beauties of the PCT system is that its examination/reporting system assists an applicant in reaching a decision on countries to proceed with in the national phase. This, more often than not, means that - again, provided basic formalities are met - countries operating a deposit system (e.g. Nigeria and South Africaquickly grant - with or without a favourable search/opinion report

Sorry, no substantive examination in Nigeria and South Africa
The main point in this Leo's commentary is this: reading the Press Release for Nigeria, one would be forgiven to think that Nigeria's IP office currently conducts substantive examination on patent applications; the reality is otherwise (see herehere and here).

According to available sources, sub-section 4(4) of Nigeria's Patent Act states: "Patents are granted at the risk of the patentee and without guarantee of their validity." When one reads the whole of section 4, what Nigeria's IP office must not do with any given patent application becomes very clear. The same can also be said of South Africa's Patent Act (in particular, see Chapter V).

Indeed, the global authority on the $500 billion dollar moto taxi industry is feeling smug has done well with its patent strategy and media publicity. After grant, comes enforcement. World Moto, this Leo wishes you the very best with the press releases African venture.

-----------
World Moto files a patent application for Wheelies™ technology in the U.S. here
What are forward-looking statements? see here
See the benefits of substantive examination for pharmaceutical patent claims in South Africa, here
Challenges and options in substantive patent examination are here

More fussiness from Afro Leo:
(1) 'World Moto, Inc. Opens North African Regional Office in Lagos, Nigeria -- a $150 Million Market for Moto-Meter'. Is Nigeria also becoming the hub for North Africa? Wow, so much good news for Nigeria.

(2) Why did this press release, 'Moto-Meter(TM) Patent Clears Final Hurdle in South Africa -- Africa's Largest Economy') dated 7th April, not pick up (from herehere and here) that Nigeria is now the largest economy on the continent? This Leo knows why they may well be right in doing so: because the great majority of Nigerians do not care about this new-found status and the World Bank, for example, is yet to update its website with this new GDP figure. Does it mean that Nigeria is, probably, living in its own dreams?


Read More