Friday 27 May 2016

Afro Leo

Appeal Court Decision in Africa's First Adword Case Provides Clarity

News just in from Bloemfontein is that M-Systems successfully defended the appeal by Cochrane Steel creating clarity that keyword bidding on a competitor's trade mark (on its own) is not passing off or unlawful competition in South Africa. The case will make it difficult to run an infringement suit on the same facts. It brings South Africa in line with worldwide jurisprudence on this issue, is Africa's first case on keyword use and will benefit Google's Adword program and other search engines. The appeal was dismissed with costs.

The history of the saga between market leader Cochrane Steel against new entrant M-Systems in respect of the keyword CLEARVU is outlined in this post here. The decision, handed down in just over a week from hearing, can be obtained here. Breaking news of Google's developments on their Adword service for mobile devices and native advertising is located here.




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Monday 23 May 2016

Afro Leo

Africa is @INTA




From the madness that is INTA, here is a short synopsis of Monday and Tuesday events, table topics and panels that include Africans or cover African related issues.
 
You can also follow the INTA through twitter on #INTA16 where you can enjoy tweets from the likes of @Kisch_IP, @RouseIP, @AdamsAdamslaw, @ManagingIP, @WTRmagazine @WorldIPReview, @INTA, @AfroIP, @Ivoryblossum, @KellyThompsonSA, @DarrenTOlivier amongst others   

Monday, May 23

CM02 Utilizing Regional IP Attachés Representing the U.S., Europe, & Japan Abroad: For Brand Owners and Policy Makers
Intermediate Level

Many national IP Offices station IP Attachés in regions throughout the world to advocate for sound international IP policy and to help protect their respective commercial interests abroad. Learn about the valuable resources and support provided by these IP Attachés and how to utilize them as both sources of information and as allies in trademark protection and anticounterfeiting enforcement activities. Speakers will discuss:

  • As a brand owner or brand owner representative, what can IP Attachés do for me?
  • How do IP Attachés initiate and take part in anticounterfeiting efforts? 
  • What types of policy matters to IP Attachés promote? 
  • What types of outreach and education to IP Attachés provide to the public and to local governments?
  • How do IP Attachés coordinate with their respective home offices and other government agencies? 

Moderator:
Aisha Salem, USPTO IP Attaché for Middle East and North Africa (Kuwait)

Speakers: 
Gerardo Munoz de Cote, Televisa, S.A. de C.V. (Mexico)
Leila Equinet, INPI French PTO (United States)
Riki Kishimoto, Ministry of Foreign Affairs (Japan)
CM21 Anticounterfeiting Strategies in South East Asia and Africa 
Intermediate to Advanced Level


This interactive session will present a case study where brand owners and regulatory bodies are informed of strategies for effectively combating counterfeits in any industry area. Speakers will discuss highlight issues and offer perspectives from each region represented. 

Moderator:
Lara Kayode, O. Kayode & Company (Nigeria)

Speakers:
Kingsley Ejiofor, The National Agency for Food and Drug Administration and Control (NAFDAC) (Nigeria)
William Mansfield, ABRO Industries, Inc. (United States)
Nick Redfearn, Rouse & Co. International LLP (Indonesia)

 CM51 Where Am I? Transporting Your Trademark Career to a Different Country
Beginner Level

It is often said that the world is a global village, and in the world of trademarks this is now truer than ever. This session highlights the benefits to corporations, service providers and law firms of having expats, with their unique skills and experiences, on their team. It will also address the feasibility of transferring licenses to practice in other countries and ways to continue your career without a local license. Expats who have successfully transferred their careers cross border will share their experiences. Challenges and pitfalls to such a professional move are all part of the journey and will also be discussed.

The panel consists of a lawyer from the US who started his own firm in Brazil, an Australian lawyer who immigrated to the US and worked initially in law firms and now is with an international legal service provider, a lawyer from South Africa who is now in-house counsel in Europe and a New Zealand lawyer who is now partner in an international law firm, with her office located in Dubai.

Discussion points will include:
  • What are the unique skills that expats bring to corporations, firms and service providers?
  • Transferring and applying “local” trademark knowledge to a career in a different country.
  • Must one obtain a local law license to work in the trademark field in a country other than where they initially qualified?
  • Ethical considerations in being subject to two separate and possibly conflicting ethical guidelines. 

Moderator:
Kay Rickelman, Spoor & Fisher (South Africa)

Speakers:
Jayne Elizabeth Durden, CPA Global (United Kingdom)
Barry Gerber, Philip Morris International Management SA (Switzerland)  
 
Walter W. Palmer, Pinheiro Palmer Advogados (Brazil)

Africa Reception (5pm - 6pm - Convention Centre) 
(By invitation only)

This reception provides registrants from Africa with an invaluable opportunity to network with colleagues and share experiences concerning the benefits and challenges of doing business in the region. This reception provides an opportunity to meet with INTA’s CEO and other INTA staff.

Tuesday, May 24

RT20 Africa and Middle East Regional Update: Opportunity and Growth Amidst the Turmoil of the Middle East and a Rising Africa
Intermediate Level

An overview on trademark developments in the Gulf Cooperation Council (GCC)/Levant, Sub-Saharan Africa, and North Africa. This panel will discuss the impact of instability in the Middle East on the trademark regime, the GCC Trademark Law, Kuwait accession to the Paris Convention, well-known marks and online enforcement. Experts will look back at the effects of OAPI joining the Madrid Protocol at the end of 2014, and strengthening ties with the power houses of Asia. 

Moderator:
Hoda Barakat, Hoda Barakat Legal Consultancy (United Arab Emirates)

Speakers:
Elie Atallah, Brand Owners' Protection Group (United Arab Emirates)
Karim El Helali, Oracle Systems Limited (Middle East)
Charles Webster, Spoor & Fisher (South Africa)
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Friday 13 May 2016

Afro Leo

FridayLite by Nic Rosslee

It’s the ten year anniversary since the most humorous moment in trade mark law

Ten years ago, Guy Goma arrived at the BBC in London for an interview.

Standing around, waiting to be interviewed for a position in the BBC’s IT department, the conversation between a representative and Guy probably went something like:

Are you Guy?

Yes, I am Guy.

Please come with me.

Minutes later, Guy Goma was being interviewed. However, he was being interviewed on BBC News as the tech expert Guy Kewney commenting on the trade mark dispute between The Beatles’ record label, Apple Corps and Apple Computers.


We were happy to see that Guy saw the bright side of the situation and later made a series of celebrity appearances on a number of television shows including Friday Night with Jonathan Ross.

Thank you Guy for bringing us one of the greatest moments in the age of the internet.

We think you did a good job and sometimes feel the same way about the latest trade mark law judgments: surprised.

-----------------------------------------

This FridayLite was brought to you by the pen of Nic Rosslee (Associate at Adams & Adams). Follow him on twitter @nicrosslee. If any reader wants to share a humorous moment on IP for FridayLite, please email us here. For wayback FridayLite's click here.
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Afro Leo

More on Please Call Me - Not Out of the Woods Yet (Guest Post by Graeme Gilfillan)

Copyright Lawyer: Graeme Gilfillan
Readers will recall this recent post on the recent Please Call Me con court decision which is now followed up by a guest contribution from copyright lawyer Graeme Gilfillan highlighting some key and interesting questions including whether Mr Knott-Craig can now be sued by Vodacom or by Mr Makate (or perhaps  by its shareholders says Afro Leo), the conduct of Vodacom after Mr Knott-Craig's departure, the interface between copyright law and idea protection, and the possibility that the determination of a reasonable payout may still endure for some time. Read his guest post "Not out of the woods yet – a copyright lawyer take on the Concourt’s judgement in the Please Call Me caseby clicking here

The podcast discussion of the case on Power FM on Victor Kgomoeswana's show with Maclean Sibande (CEO of the Innovation Hub) and Darren Olivier (Adams & Adams) is now up and can be located here.
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Thursday 12 May 2016

Caroline B Ncube

The USTR Special 301 Report 2016 - Africa in review

Afro-IP regularly reports on how Africa fares in the Special 301 Report issued annually by the USTR (see links to some previous posts below). The 2016 Report was released at the end of April 2016. The generation of the report through a unilateral US process and its goal have been protested by several countries. For instance, as noted by Mike Palmedo in his post on the 2016 report, both India and Chile have registered their displeasure. Palmedo writes:

  • Indian Commerce Minister Nirmala Sitharaman gave a statement to the Lok Sabha (Lower House of the Legislature): “The Special 301 Report issued by the United States under their Trade Act of 1974 is a unilateral measure to create pressure on countries to enhance IPR protection beyond the TRIPS agreement. Under the WTO regime, any dispute between two countries needs to be referred to the Dispute Settlement Body of the WTO and unilateral actions are not tenable under this regime.”

Similarly, some law professors and civil society groups have sounded the same caution about the listing of WTO member states  being a probable violation of  "either the WTO’s dispute settlement understanding or GSP enabling clause." Following the filing of their Joint Special 301 Comment by Law Professors and Civil Society Groups, several scholars and activists participated at the Special 301 hearing (see here for a post hearing report by Sean Flynn and here for the transcript of the full hearing).

Two African states are listed in the priority watch list  (Algeria) and the watch list (Egypt) and several others are mentioned in the 2016 report as summarized, in alphabetical order, below -  

  • pp 23 and 45: Algeria's promotion of local pharmaceutical products and medical devices is cited as the reason why she remains on the Priority Watch List.  For a contrary view, see the AU's comments on Algeria's approach in its Pharmaceutical Manufacturing Plan for Africa: Business Plan at p41. 
  • p9: Burundi's becoming party to the WCT is noted.  
  • p53: Egypt remains on the Watch List because of her "failure to combat reportedly widespread usage of pirated and counterfeit goods, including software, music, and videos, and the failure to implement a transparent and reliable patent registration system."
  • p9: Kenya receives praise for boosting her anti-counterfeiting efforts and preparing draft trademeark and copyright amendments which "strengthen IPR protection and enforcement" (see here for commentary).
  • p9: Nigeria and  other Sub-Saharan states are encouraged to "similarly to address the factors that undermine effective IPR protection and enforcement." Nigeria is also mentioned at p 15 where it is noted that she is "reported to have [an] ineffective or inadequate IPR enforcement system". She is also mentioned at p20 in relation to her government procurement regulations and their impact on the trade secret protection of source code. Her final mention is at p22 where her 2013 Guidelines for Nigerian Content Development in Information and Communications Technology (ICT) are cited, with disapproval, for their promotion of local production or the utilization of Nigerian material and labor across a broad range of ICT goods and services "at the expense of of foreign firms, investors, and multinational enterprises."
  • p10-11: South Africa's participation with the US and Brazil in the WIPO Re:Search Consortium is lauded as enhancing access to medicines. (For fundamental reform suggestions to enhance access to medicines see here for a post on the UN's High Level Panel on Access to Medicines (HLP) hearings on Johannesburg).   A note is also made of US-South Africa engagement on GI-related concerns at p24. 
  • p9: Tanzania's joining of UPOV 91 is noted with approval. For a robust discussion of the merits this development see Chidi Oguamanam Breeding Apples for Oranges: Africa's Misplaced Priority Over Plant Breeders' Rights (2015).
The USTR's views are not the last word on what is appropriate for African IP regimes and each state would do well to consider other views and its own context in arriving at its response, if any, to the above US Special 301 statements. In the words of South Africa's Minister of Trade and Industry at the WIPO International Conference on Intellectual Property and Development in April:
  • "While generalized conclusions can offer insightful guidance, it may not be applicable at all         times to all countries ... it is vital that research is undertaken in a manner that context specific,   taking into account the level of development of the country under consideration, with a clear     focus on its industrial profile and capabilities.” (For a full report on his comments see W New    South African Trade Minister Opens WIPO Conference With Call For Appropriate IP  IP-          Watch, 7 April 2016.)


------------------------------------------------
The U.S. is watching you.... Monday, 3 June 2013
USTR Special 301 Report - Monday, 4 May 2009
African Countries Suggested for the USTR Special 301 Report - Saturday, 21 February 2009
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Tuesday 10 May 2016

AfroTwiga

Crowd-sourcing information on CMOs

From Ifeoluwa Olubiyi, a Phd Research Fellow at the University of Ilorin, Nigeria, we have received the following survey questions:

1. Does the copyright law in your jurisdiction prohibit multiple collecting management organisation or collecting societies for a class of works?

2. Section 39(3) of the Nigerian Copyright Act provides that the Nigerian Copyright Commission shall not approve another collecting society (CMO) in respect of any class of copyright owners if it is satisfied that an existing approved society adequately protects the interests of that class of copyright owners. This provision has led to litigations in Nigeria by a CMO, Musical Collecting Society of Nigeria, which was unable to get the approval of the Commission to operate as an approved collecting society for musical works where it sought to invalidate this provision.
Is there such similar provision in the copyright law in your jurisdiction?

3. Are there any judicial decisions on or interpreting this provision or relating it to other legislations such as the constitution in your jurisdiction?

4. How justifiable is such a provision in the light of international copyright treaties particularly the TRIPS Agreement and the Berne Convention?

You can answer in the comments to this blog or, if you email this blogger, an email exchange can be arranged.
Thanks in advance!
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Afro Leo

Zimbabwe rejuvenates Zimbabwe Institute of Patent and Trade Mark Agents (ZIPTA)

Exciting news from Zimbabwe is that ZIPTA has been unzipped!

A thriving local IP community has got together to resurrect their institute. It has an impressive logo and new Facebook page (like them!) under the new and energetic leadership of Brenda Matanga. According to the tip-off:

"The New Council held its maiden Event at a local hotel on 7 April launching its new brand and website.

Discussion was to inform members of this association of IP attorneys on its mandate - The Role and Function of ZIPTA, the vision of the New President and ways in which the association can fulfill its objectives,work together with other like minded organizations in the region and internationally and become the Voice of the IP profession in Zimbabwe.

The President encouraged the institute to look at SAIIPL,CIPA,ITMA etc and learn a thing or two from them,as they seem to be well established.

ZIPTA is an institution statutorily created- in terms of Sec 59 of the Trade Marks Act ( Chapter 26:04)and Sec 64 of the Patents Act(Chapter 26:03)"

Here's wishing that they can establish a real voice for Zimbabwe and perhaps set a model for the rest of Africa to follow. They have Afro-IP's support.

Let's see how many likes we can get for the FB page!

The New Council: Chris Kimberley,Alec T Muza,Tafadzwa R Mugabe,Dorothy Pasipanodya,Yeukai Kundodyiwa and Brenda Matanga.

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Tuesday 3 May 2016

AfroTwiga

The "Sharing Economy" - in perspective

For practitioners and academics in IP law in Kenya, the following questions are asked all the time: "Isn't IP fairly irrelevant in Africa? After all, African societies are based on sharing and community." It's an uncomfortable inquiry, and has been a struggle to answer, perhaps until now.

At a recent party, this Leo observed from a distance his 7-yr old cub playing with friends. At one point a ball changed hands between children, and Mama Leo smiled to me and said "Look how well he is sharing!" I walked over to praise him and, to my surprise, found him crying. "That kid stole my ball!"

A sharing economy is fine, if it's voluntary sharing. Involuntary sharing is more properly called theft. The difference between "sharing" and "theft" can be obscured by distance or ignorance.

When people look at Kenya and say we should forget traditional types of IP because of our sharing traditions, almost invariably such people are not inventors who have had their own ideas taken and commercialized with no beneficial return for their efforts. In theory, we would all love to have a sharing economy, but in practice, when it is your hard work that is "shared" without your permission, IP law starts to sound pretty necessary. In matters of IP, perspective matters.

This is not to say that there is no place for sharing. The Fremium model is well known as a successful business model for music, software, and other items. Open source and Creative Commons licenses have been successfully used to build large and thriving businesses. These models work in Kenya just as well as they work in the US and EU. The important point is that such sharing should be voluntary and intentional, rather than imposed because of an expectation for a particular society.

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