COLLECTIVE TRADE MARK REGISTERED IN KENYA | TAITA

The Kenyan Intellectual Property Institute recently registered the mark TAITA BASKET as a collective mark. A collective mark is a mark capable of distinguishing, in the course of trade, the goods or services of persons who are members of an association, from goods or services of persons who are not members of such an association.

The sisal Taita baskets which are produced in Kenya’s Taita Taveta County are made according to traditional art by local women who have passed down the age-old skill of basket weaving through the generations.

WIPO recently embarked on a training initiative for basket weavers in the many villages in the Taita Taveta County with a view to standardising the production and therefore the quality of the TAITA BASKETS.

Image Courtesy WIPO

The outcome of this project resulted in the formation of the Taita Baskets Association and the registration of a collective mark.

Intellectual Property registration, in this instance, has not only allowed the Taita Baskets Association to gain customer confidence and recognition in Kenya and abroad, it has also allowed a traditionally vulnerable group of people in the society to come together, commercialise their indigenous knowledge and become formidable players in their industry.

KELLY THOMPSON

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KIM RAMPERSADH

Senior Associate
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A&A PARTNERS NAMED IN PRESTIGIOUS GLOBAL IP LISTS

Managing IP recently announced their IP Stars lists for 2017 and Adams & Adams Partner, Mariëtte du Plessis, is featured in the IP STARS Top 250 Women in IP. This list recognises female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year. All the women listed here are also individual IP stars in their respective jurisdictions. Adams & Adams congratulates Mariëtte and all those who made this year’s list.

The Trade Mark and Patent Stars lists were also announced and a number of Adams & Adams professionals are again featured.

 

In making the announcements, Managing IP said “Adams & Adams retained its title as Managing IP’s Africa Firm of the Year (2017) and continues to spread its expertise across the continent but there is no doubt about its dominance in the South African IP market. The trade mark department, which is arguably the largest, is home to some of the country’s leading trade mark practitioners. They include Gérard du Plessis, Darren Olivier, Kelly Thompson and Mariëtte du Plessis, who is listed in Managing IP’s Top 250 Women in IP (2017).”

The firm nurtures young talent that others look to capture. Kareema Shaik is one associate to mention, while Nishan Singh is a rising star to watch. “I always see Adams as the best in the country. If we want to hire younger people we look at Adams. They’re the firm we look up to,” says one rival. Trade mark star Suzaan Laing is no longer at the firm.”

Recent case studies show the firm acting on trade mark and copyright disputes including one where Olivier advised M-Systems in the high-profile Google AdWords dispute with Cochrane Steel, which was the first of its kind in the country.

In respect of Patents, MIP offered, “The notable patent stars in its South African team are Russell Bagnall, Dario Tanziani, Alexis Apostolidis and Danie Dohmen. Bagnall and Apostolidis stand out. Colin MacKenzie and Louis Van der Walt are also mentioned.”

Recent patent work highlights show the team acting for companies such as MultiChoice South Africa, Inteletrack, Trustco Group International and Mantella Trading 310. One satisfied client says: “Adams put together a very efficient and lean cross-functional team to deal with a complex IP valuation and regulatory matter.”

MARIETTE DU PLESSIS

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GERARD DU PLESSIS

Partner & Firm Chairman
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DARIO TANZIANI

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DANIE DOHMEN

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ALEXIS APOSTOLIDIS

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SIMON BROWN

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RUSSELL BAGNALL

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KELLY THOMPSON

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DARREN OLIVIER

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LOUIS VAN DER WALT

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JOHNNY FIANDEIRO

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FLIRTING WITH CO-BRANDING | THE CONSIDERATIONS

At the supermarket a few days ago, I came across a pack of Stimorol chewing gum flavoured with Halls Menthol. I’m not an avid bubble gum-chewer, but being an ardent lover of Halls Menthol, I simply couldn’t resist buying a pack. Had it not been for the Halls Menthol “additive”, I’m sure I wouldn’t have bothered.

We are surrounded by examples of co-branding – it has become quite prolific and judging by my experience, can actually work. Co-branding is a marketing strategy that involves the collaboration of two or more brands to create a product or service that is representative of both. There are various forms or types of co-branding:

  • Ingredient co-branding: For example, the addition of OREO cookie pieces into CADBURY DAIRY MILK chocolate, KFC DORITOS crunch burgers, INTEL processors in DELL computers and of course, HALLS Menthol to STIMOROL chewing gum.
  • Same company or internal co-branding: For example, NESTLE COUNTRY FRESH ice cream with NESTLE BAR ONE sauce.
  • Joint venture co-branding: The athletic clothing range released by REEBOK and CROSSFIT, NIKE and APPLE’S NIKE+iPOD, SONY ERICSSON and ABSA VISA or MASTERCARD.

There are certainly advantages to co-branding. Co-branding can raise awareness about the brands; allow a business to introduce or expose its products or services to the loyalists of the other brand or penetrate another market; allow the business to benefit from the brand equity (or affection) held by another brand; and enhance the value or quality of the product or service in the minds of consumers.

In offering more choice to consumers; the ‘new’ product or service increases profits while reducing the costs involved in introducing new products or services as well as costs of marketing and advertising.

However, brand-holders should also bear in mind that there is a flip side to the co-branding coin. For example, co-branding could lead to the dilution of your brand. A smaller, new or less well-known brand risks being subsumed by the other more established or well-known brand. If one of the brand-holders has a greater say or hand in the co-branding exercise, this may result in a loss of control by the other brand-holder.

And if the co-branding strategy doesn’t work – if the product or service is of an inferior quality or one of the brand-holders suffers negative publicity – this could have a negative impact on consumers’ perception of the brands and consequently, the reputation and value thereof.

When deciding to co-brand, it is essential to bear the following in mind:

Choose your co-branding partner carefully.

Get to know and gather information about your potential co-branding partner. It is essential to choose a partner that offers products or services that are complementary to those that you offer.  There must be a natural link between the co-branding partners and at the end of the day, the product or service offered under the co-branding exercise must be relevant and offer value to consumers. Furthermore, the co-branding exercise must have advantages for both parties and add value to both brands.

Aside from this, the brand-holders should be compatible and have synergy to reduce the likelihood of conflicts arising and ensure a better working relationship.

It is also vital to consider the reputation of the other brand and the financial and market position and operations of the other brand-holder vis-a-vis the reputation of your brand, financial and market position and operations.

Communication and participation.

There are, of course, circumstances where one of the parties may be more involved in the co-branding exercise than the other due to its expertise, know how, etc.

However, it is important that both parties participate and are involved in one way or another and that they effectively communicate with each other.  Both parties should have a say in the co-branding exercise.

Agreement.

Most importantly, the parties must have a carefully drafted and detailed agreement (as well as guidelines or rules) in place, which sets out the parameters of their relationship and governs the co-branding arrangement.

The co-branding agreement is, in essence, a type of co-licensing agreement and should thus include provisions relating to the use of intellectual property.  It is important that the brand-holders are able to maintain their separate identities and exercise control over their respective brands to maintain the integrity thereof.

Some issues that need to be considered include the retention of the proprietary rights by each brand holder once the co-branding arrangement is terminated, ensuring that the use of the brand inures to the benefit of the respective brand holders and maintaining the distinctiveness of the brands.

Lack of quality control provisions and monitoring can result in dilution or loss of control by the brand holder and aside from this, there are other risks to consider such as liability for defective products.  Thus, it is imperative that the agreement contains quality control provisions.  Branding specifications setting out how (that is, in what manner and form) trade marks will be permitted to be used and the scope of such use (including territorial considerations) as well as a marketing strategy/ plan setting out how and through what mediums the product or service will be marketed and promoted and how all of this will be monitored are crucial.

Other provisions in the agreement should deal with the exclusivity, duration and termination of the co-branding arrangement.  Grounds for termination should be widely construed to cater for a variety of circumstances – for example, if targets are not met, if there is an infringement or misuse of intellectual property, if one of the brand holders suffers negative publicity, etc.  There should also be provisions dealing with warranties, indemnities and confidentiality.  In this regard, it should be noted that entering into a co-branding arrangement may necessitate the disclosure of certain confidential or privileged information such as customer data, technology and know how, market research data, etc and the agreement should ensure that this information is not disseminated to third parties or used when the co-branding arrangement has been terminated.

The agreement should also deal with any new intellectual property, whether it be trade marks or new technology, etc, derived from the co-branding exercise.

These are, of course, just some of the considerations to bear in mind when entering into a co-branding arrangement.  Co-branding is indeed a powerful tool and can certainly provide a competitive edge when properly structured.  However, it is essential that brand holders are diligent and exercise due caution when entering into such arrangements.

AMINA SULIMAN

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‘DROP-CATCHING’ DEFENCE TESTED IN SOUTH AFRICAN DOMAIN NAME COMPLAINT

The practice of drop-catching in the South African context (in the .co.za domain name space) was considered for the first time in a dispute concerning the domain name darling.co.za.

So-called “drop-catching” can be described as the automated registration of a domain name that has lapsed due to non-payment of the renewal fee. As a practice, it is neither lawful nor unlawful, as the circumstances of each case will dictate whether the conduct of the registrant of the domain name contravenes the regulations applicable to the dispute.

For instance, drop-catching is not expressly prohibited by WIPO’s UDRP regulations governing domain name disputes in generic Top Level Domains, such as .com. Decisions on the issue of drop-catching in terms of those regulations have been issued in favour of the complainant, but in all the decisions the complainant had established bad faith on the part of the registrant – an absolute requirement in terms of the UDRP regulations.

In terms of the ADR regulations governing disputes in the .co.za name space, bad faith (a subjective element) is not a requirement for a complainant to succeed. Rather, abusiveness is set as a requirement, which is an objective yardstick.

In the case of darling.co.za, the complainant had a registered trade mark for the word DARLING, covering synthetic hair extensions, and had used the domain name darling.co.za for an active website for many years on which it advertised its products. Due to an administrative oversight, it allowed the domain name to lapse. The registrant’s drop-catching software immediately registered the domain name and directed it to a landing page on which it was offered for sale. Before seeking legal advice, the complainant had approached the registrant with an offer to purchase/recover the domain name. The registrant rejected the complainant’s offer and made a counter-offer to sell the domain name to the complainant for a large sum of money – a sum exceeding the costs that the registrant had incurred in acquiring the domain name.

The regulations list a number of factors on which a complainant can rely to establish abusiveness on the part of the registrant. One of those factors is where the registrant acquired the domain name primarily with the view to selling it for a sum on money exceeding its reasonable out-of-pocket expenses directly associated with acquiring or registering the domain name. The registrant’s business model, founded on drop-catching, was to register or acquire domain names that could be exploited in a generic or fair manner. The registrant contended that it could have used the domain name darling.co.za in a geographically descriptive manner and, therefore, that the domain name had not been registered in bad faith. As such, the registrant contended the registration could not be abusive.

The adjudicator ruled that the effect of the domain name registration was abusive of the complainant’s rights, notwithstanding the registrant’s intention (or lack thereof) in registering the domain name. The adjudicator ordered the transfer of the domain name to the complainant.

It appears that the case was ultimately decided with reference to the proviso in Regulation 5(c). In terms of that proviso, where the domain name in dispute is identical to the complaint’s trade mark, the onus is on the registrant to prove that the domain name is not abusive. The adjudicator ruled that the registrant had failed to adduce sufficient evidence to discharge the onus.

Given that drop-catching will very often involve a domain name which is identical to a registered trade mark, the proviso to Regulation 5(c) is likely to come to the fore in such cases.

DALE HEALY

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KAREEMA SHAIK

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SOUTH AFRICA | COPYRIGHT AMENDMENT BILL 2017

A revised version of the Copyright Amendment Bill was introduced into the National Assembly on 16 May 2017 in terms of Section 75 of the Constitution.

The Copyright Amendment Bill, which was first published for comment in July 2015, both commended and criticised by stakeholders and experts in the field.  It appears that a lot of work has gone into putting together a revised version of the Bill that seeks to make much headway in addressing the concerns previously expressed.

In comparison with the first Bill, briefly, some of the revisions to the previous Bill include:

  • removal of the provisions relating to the creation of a new type of work, namely craft works; protection of performers’ rights; protection of rights of phonograms; and promotion of broadcasting of local content. Protection of performers’ rights and the promotion of broadcasting of local content are already dealt with in other legislation and policies, such as the Performer Protection Act, an amended version of which was published for comment in December 2016;
  • an amended definition of ‘orphan work’;
  • that there is no longer a substitution of the definition of ‘reproduction’;
  • removal of the provision that state copyright shall be perpetual;
  • it appears that the resale of royalty right is now limited to artistic works, no rate is prescribed in the Bill and instead provision is made for the Minister to publish the proposed rate in the Gazette. There is also a presumption regarding the identity of the user, performer, owner, producer or author and the duration of the resale royalty has been limited in line with the duration of the term of copyright.

What has also been retained from the previous Bill include the provisions surrounding parallel importation of goods, numerous exceptions to infringements, regulation of collecting societies and the establishment of a Copyright Tribunal.

The scope of copyright protection has been specified not to include ideas, methods of operation or mathematical concepts and, in the case of computer programs, interface specifications have been excluded.  Furthermore, copyright protection of tables and compilations shall not extend to their contents.

Various specific technology related provisions have been included.

As a Section 75 Bill, the next step is for the Bill to be considered by the relevant portfolio committee.  If there is great public interest in a Bill, the portfolio committee may organise public hearings to allow interested parties an opportunity to submit written comments or oral representations.

WERINA GRIFFITHS

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LISA VAN ZUYDAM

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GETTING THE DEAL THROUGH | PATENTS

Getting the Deal Through has published the fourteenth edition of Patents, which is available in print, as an e-book and online here. Getting the Deal Through provides international expert analysis in key areas of law, practice and regulations for corporate counsel, cross-border legal practitioners, and company directors and officers.

Throughout the latest edition, the same key questions are answered by leading practitioners in each of the jurisdictions featured. Russell Bagnall, Partner at Adams & Adams, provided content for the South Africa Chapter. Coverage this year also includes new chapters on Costa Rica, Norway and Saudi Arabia.

To read the full publication submission, CLICK HERE.

Patents-3D

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Patents 2017, (published in March 2017; contributing editor: Richard T McCaulley Jr, Ropes & Gray LLP) For further information please visit https://gettingthedealthrough.com/area/25/patents-2017

RUSSELL BAGNALL

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USE IT OR LOSE IT! CANCELLATION OF A REGISTERED TRADE MARK FOR NON-USE

A trade mark registration in South Africa gives the trade mark proprietor statutory rights in the mark registered.  These rights are governed by the provisions of our trade mark legislation and can be terminated on various grounds, including expiry of a trade mark registration for failure to renew the registration or cancellation of a trade mark registration due to non-use, in terms of Section 27(1)(b) of the Trade Marks Act, 193 of 1994 (hereinafter “the Act”).

Section 27(1)(b) of the Act provides that any ‘interested person’ may apply to have a trade mark registration cancelled on the ground that there was no bona fide (good faith) use of the trade mark for a continuous period of five years or more, from the date of issue of the registration certificate. The effect of this provision is that a trade mark registration is not vulnerable to cancellation, for non-use, within the first 5 years after issue of the registration certificate. This period is, therefore, often referred to as the honeymoon period by trade mark attorneys.  However, after the honeymoon period, trade mark proprietors need to be aware that a trade mark registration is vulnerable to cancellation for non-use.

In order to successfully defend a cancellation action, the trade mark proprietor is required to show that the registered mark was indeed used in the relevant 5 year period.  However, the alleged use must be in relation to the goods or services for which the trade mark is registered and, in addition, the use must constitute bona fide use.

In a recent judgment, Westminster Tobacco Co v Philip Morris Products SA (925/2015) [2017] ZASCA 10 (16 March 2017), the Supreme Court of Appeal (SCA) commented on what constitutes bona fide use, for the purposes of Section 27(1)(b) of Act.  The crux of the case turned on whether Westminster Tobacco Co (“WTC”), the registered proprietor of two PARLIAMENT trade mark registrations, made use of its mark, in good faith, during the relevant 5 year period.  If not, it was liable to lose its registrations because its competitor (Philip Morris Products SA, “PMI”) had applied for cancellation of its registrations on the basis of non-use, in terms of Section 27(1)(b) of the Act.

The facts of the case are uncomplicated.  WTC registered the trade mark PARLIAMENT in South Africa in relation to, essentially, cigarettes.  PMI, however, uses the trade mark PARLIAMENT internationally in respect of one of its premier brands of cigarettes.  PMI could, therefore, not register or use the mark PARLIAMENT in South Africa, in relation to cigarettes, due to WTC’s earlier trade mark registration in South Africa.  PMI, accordingly, sought to cancel WTC’s registration, on the basis that the PARLIAMENT mark was allegedly not used in good faith, by WTC, for a continuous period of 5 years, from the date of issue of the registration certificates.

In light of the above, PMI filed a cancellation application in the High Court on the basis of Section 27(1)(b) of the Act.  The onus to prove bona fide use rested upon WTC, in terms of s 27(3) of the Act. In defending the application, WTC alleged and was able to show that it had indeed used its PARLIAMENT mark in the relevant 5 year period.  PMI, on the other hand, acknowledged that the mark was used in relation to cigarettes, but contested that the use was in good faith because, on WTC’s own version, the mark PARLIAMENT was aimed at protecting the PARLIAMENT trade mark, disrupting WTC’s competitors in the low-price cigarette market and at protecting WTC’s premium cigarette brand PETER STUYVESANT.

The High Court found that bona fide use means that a mark must be used on goods solely with the object of promoting trade in those goods and that use for an ulterior purpose, such as disrupting the business of a competitor, or protecting the trade mark proprietor’s trade in other goods, does not constitute bona fide use. PMI was, accordingly successful in the High Court and, in turn, WTC appealed the decision to the SCA.

In the appeal judgment, the SCA had regard to its own 2005 judgment in A M Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) and the international case of Ansul BV v Ajax randbeveiliging BV 2003 (RPC) C-40/01, in the European Court of Justice. The SCA found that the enquiry into bona fide use is a factual enquiry and required:

  1. use of the registered trade mark in relation to goods or services of the type in respect of which the mark is registered;
  1. use of the registered trade mark as a trade mark, for the commercial purposes that the trade mark registration exists to protect; and
  1. use of the registered trade mark in the course of trade and for the purpose of establishing, creating or promoting trade in the goods or services in relation to which the mark is used.

The court indicated that the use does not have to be extensive, but that it must be genuine and not merely as a token.  In other words, the use must not be solely to preserve the rights conferred by the mark, but must be consistent with the essential function of a trade mark, which is to sufficiently distinguish the goods in relation to which it is used from other goods, which have a different origin.

In addition to the above, the court also found and that it is irrelevant if the use is motivated by the fear of removal from the register or protecting the proprietor’s trade generally or even from preventing the mark from falling into the hands of a competitor, as long as the use is bona fide and genuine and principally directed at promoting trade in goods bearing the mark.  The court, however, cautioned that it is not permissible to use the mark for an ulterior purpose, not associated with a genuine intention of pursuing the object for which the Act allows the registration of a trade mark and protects its use.

In the appeal case, PMI’s argument turned on the allegation that, on the evidence presented by WTC, it was evident that the intention for launching the PARLIAMENT brand in South Africa was based on three objectives, other than the launch itself, namely, to protect the trade mark registrations, to test the commercial viability of a low price offer in the cigarette market and finally, to gain insight into the low price segment of the cigarette market. PMI, therefore, argued that there was no desire or objective on the part of WTC to build up any commercial long term sales strategy in its PARLIAMENT cigarettes and the objectives of WTC for using the mark were counter to the functions of a trade mark as defined in the Act. It, accordingly, alleged that the nature of the use, as testified to by  WTC’s main witness, did not constitute use as a trade mark for the purposes for which trade marks are afforded statutory protection and was, therefore, not bona fide use.

WTC countered the allegations of PMI with evidence that the introduction of the PARLIAMENT brand of cigarettes was for several reasons, including dealing with low priced cigarettes.  WTC also argued that its use of the mark was for commercial reasons and that the launch of the PARLIAMENT mark in small towns was geared to investigate and learn how the brand would be received by consumers and was also aimed at disrupting the sales of low priced cigarettes by its competitors.  WTC further disclosed that the implementation of the PARLIAMENT brand was purposely conservative so as not to harm its premium cigarette brand PETER STUYVASENT.

In making a determination as to whether WTC’s use of the mark was bona fide and genuine, the court applied the test set out above. The SCA found that, in the circumstances, the use of the mark PARLIAMENT was bona fide because it was affixed by WTC to goods covered by its registration, i.e. cigarettes, for the purpose of identifying the source from which the goods were derived and distinguished it from its competitors.   The Court also found that there was a commercial purpose in WTC providing different offerings aimed at different sectors of the market and pricing them differently. Accordingly, the court expressed the view that because WTC’s strategy for the PARLIAMENT brand of cigarettes precluded a full-blooded launch of a competing product in the low price segment did not mean that the launch was not genuine.

In light of the above, WTC successfully defended the application for cancellation of its marks on the basis that it, in fact, did use its trade marks in good faith and that the use was genuine.  Although it was not relevant to the SCA case, it is worth knowing that in addition to using a trade mark, trade mark proprietors may also prevent losing a trade mark registration, for failure to use the registration, by associating related trade marks (that are in use).  However, associating trade marks places some limitations on how the associated trade marks may be dealt with.  It is, therefore, important to take a considered approach when dealing with registered trade marks and to bear in mind that when it comes to registered trade marks, beware to use it or you may lose it!

By Jameel Hamid | Associate

 

GERARD DU PLESSIS

Partner & Firm Chairman
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OAPI adopts 11th edition of the Nice Classification for the registration of trade marks

The Trade Marks Registry of the African Intellectual Property Organization (OAPI), based in Cameroon, announced recently that the 11th edition of the Nice Classification system is to be applied when filing new trade mark applications in OAPI.

OAPI is a regional trade mark registration system in Africa, which can be utilised to register trade marks in one or more of the following, 17 member states:

Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, The People’s Republic of the Congo, Ivory Coast, Mauritania, Mali, Niger, Senegal and Togo.

None of the member states maintain independent trade marks offices and registers and therefore trade marks need to be registered at the OAPI Registry if statutory protection is sought in any of the member states.  One registration covers all of the member countries and, although multi-class applications are possible, one multi-class application may not cover both goods and service classes.

All goods and services are classified in terms of the international Nice Classification system.  Generally speaking, the practicality of the classification system lies therein that trade mark proprietors are deemed to secure statutory trade mark rights in relation to the goods/services specified in their applications and contained in the class(es) in which they have registered their trade marks.

On 1 January 2017, the International Bureau of the World Intellectual Property Organization (WIPO) published the latest edition (the 11th Edition) of the Nice Classification system and the OAPI Registry allowed trade mark applicants to utilize this version with immediate effect, while still allowing Applicants to rely upon the previous (10th) edition as well.

The Registry announced that, from 30 April 2017, all new trade mark applications which are filed at the OAPI Registry, need to conform to the latest (11th) edition of the Nice classification system on the registration of trade marks.

OAPI acceded to WIPO’s Madrid Protocol on the international registration of trade marks, and although it is possible to designate OAPI in terms of an international (Madrid) registration, it is not recommended to do so, until such time as the underlying Bangui Agreement has been amended to recognize that international registrations have full force and effect in OAPI.  OAPI is considered to be a so-called ‘First-to-File-jurisdiction’, where common law and reputational rights are not formally recognized (except for well-known or famous marks as recognized for protection in terms of the Paris Convention) and where the first party to register a trade mark may be deemed to be the true proprietor thereof, despite the fact that this may not be the case.  In the light of this, it is important for brand owners to secure national registrations for their valued trade marks in OAPI in order to ensure that no question marks may exist in relation to the validity or enforceability of their trade mark rights.

At the OAPI Administrative Council meeting in December 2016, Mr. Denis Loukou Bohoussou of Côte d’Ivoire, was elected to the post of Director General for a period of five years, effective 1 August 2017.  Loukou Bohoussou’s predecessor, Dr. Paulin Edou Edou’s term of office ends on 31 July 2017. Under the leadership of Dr. Edou Edou, OAPI has acceded to a number of international treaties aimed at creating a modern and dynamic framework and to harmonise administrative procedures in the registration of titles.

For any information or queries in this regard, please contact africaip@adamsadams.com

By Stephen Hollis (Partner) and Lebohang Mosala (Associate)

 

STEPHEN HOLLIS

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REPORT | IP DEVELOPMENTS IN AFRICA

Intellectual Property Law Firm, Adams & Adams, recently published the latest version of the Africa Update journal – an annual publication presenting intellectual property developments, including legislative changes and recent judgments, from across the continent.

The Update also includes news about the extension of the firm’s network of offices in Africa, along with details of visits to various countries to meet with IP officials, and reports and analysis of recent legislative and judicial developments from across the continent.

Adams & Adams’ achievements and continued growth on the continent have again been recognised internationally and recently the firm was awarded the Managing IP ‘Africa Firm of the Year’ for the third year in a row.

READ THE AFRICA UPDATE ONLINE

DOWNLOAD THE AFRICA UPDATE (36 Mb)

GERARD DU PLESSIS

Partner & Firm Chairman
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SIMON BROWN

Partner
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REPORT | MADRID IN AFRICA

Memorandum on the effectiveness of International (MADRID) Registrations in Africa. 

  1. Introduction

The international trade mark registration system (known as the Madrid system) is administered by the World Intellectual Property Organization (WIPO) based in Geneva, Switzerland.  It is considered to be a one-stop solution for the registration and management of trade marks worldwide.  Brand owners from Madrid member countries can file one application, in one language and pay one set of fees to protect a trade mark in up to 114 countries (comprising 80% of world trade – and growing).

International (Madrid) Registrations allow for the centralized management of trade marks.  Licenses, registered users, changes of ownership and limitations of specifications of goods/services can be recorded in the International Register through a single procedural step.  The system is also flexible enough to cater for the licensing of rights or the transfer of ownership in a mark for only certain of the designated countries or for only some of the goods or services, or to limit the registered specification in respect of only some of the designated parties.  The geographical scope of an existing International Registration may be extended in the future by designating additional countries – even countries which only become Madrid members at a future point in time.

The Madrid system is available to a natural person who is a national of or domiciled in a Madrid member country or a legal entity which has a real and effective industrial or commercial establishment in a Madrid member state or region.

An International Registration needs to be based on a pending application or existing registration in a Madrid member country at the so-called ‘Office of Origin’ where that base application/registration is on record.  The national IP office will examine the application for the International Registration as to formalities only (i.e. whether the application for the IR corresponds with the base application/registration insofar as the mark, specification, ownership and other details are concerned) and, if found to be procedurally correct, the Registry will communicate the application to WIPO’s International Bureau in Geneva.  WIPO will examine the application for compliance with the requirements of the Madrid Protocol, which examination is also restricted to formalities only. If there are no irregularities with the application, the International Bureau will record the mark in the International Register; publish the International Registration in the WIPO Gazette of International Marks and notify each designated member country.  At this stage, no substantive rights have arisen.

Any matter of substance, such as whether the mark qualifies for protection or whether it conflicts with an earlier mark in a designated member country will be determined by that country’s national trade marks office in terms of applicable domestic legislation.  Any objection or opposition to the grant of the International Registration has to be communicated to WIPO by the national trade marks office within the strict, prescribed time limit allowed for in terms of the Madrid system (12 – 18 months, depending on the jurisdiction concerned), otherwise the International Registration will be deemed to be granted and effective by WIPO and the owner of the trade mark.

  1. Which African countries are Madrid members?

The following thirty seven (37) African countries are Madrid members:

Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI (The African Intellectual Property Organization, including the following member states: Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoros Islands, Republic of Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo), Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

  1. How effective is the Madrid trade mark registration system in Africa?

3.1 Recognition of International Registrations in terms of national laws

Of the 37 countries mentioned above, only nine (9) have properly “domesticated” the Madrid Protocol through appropriate amendments to their national trade mark legislation, together with the implementation of enabling regulations, namely Botswana, Gambia, Ghana, Kenya, Liberia, Morocco, Mozambique, Tunisia and Zimbabwe.  Even in these nine countries, practical issues exist with the processing of International Registrations which are discussed in more detail below.

One of the core issues with the national applicability of IP treaties such as the Madrid Protocol is that additional direction, procedures and mechanisms need to be put in place, on a national level, to ensure that the national IP Office is equipped to deal with and process International Registrations and also how to deal with objections, oppositions and so forth.  Even national trade mark legislation is not considered to be enacted properly until the so-called ‘enabling regulations’ have been promulgated. Enabling regulations supplement and complete trade mark legislation by formally determining the processes and procedures through which the provisions of the legislation can be practically implemented and fulfilled by the national trade marks office concerned.

Apart from procedural issues, it is important that national laws clearly recognize that International Registrations shall have the same force and effect as national registrations.  Without such express recognition, it will be up to the national courts to determine whether the rights arising from an International Registration should trump rights arising from national common law (in countries where common law rights arising from trade mark use are formally recognized) or prior trade mark registrations.

IP litigation is a growing practice area in Africa, but in virtually all of the African Madrid member countries, national Courts have not decided on many IP matters and precedents are few and far between.  More often than not, the presiding judge or adjudicator will not have the benefit of earlier judgements to rely upon when hearing and ruling on a dispute which may revolve around the national enforceability of an International Registration.  The presiding official may not even be experienced in IP law to begin with.  In a country where no formal domestication has occurred, the judge may find no reference to the Madrid system in the national IP laws whatsoever and this may pose a level of risk to the successful outcome of a litigation matter in the favour of the owner of an International Registration.

When involved in a trade mark dispute in a country where the Madrid Agreement or Protocol has not yet been domesticated, any IP-litigator would prefer to be able to rely upon nationally recognized statutory rights, rather than have to make constitutional arguments based on the applicability of international treaties through analysis of international law.

To illustrate how the lack of proper implementation of the Madrid Protocol can lead to difficulties arising on a national level, we now turn to some key African jurisdictions where the validity and enforceability of International Registrations remain in question.

In Ghana, full legal recognition was given to International Registrations in terms of a 2014-Amendment Act, but unfortunately this recognition was not implemented with retrospective effect, which casts some doubt over the validity of International Registrations designating Ghana from 2008 (when Ghana became a Madrid member) to 25 July 2014 (the date of enactment of the Amendment Act No. 876 of 2014).

In Algeria, a 2005-Amendment Act did make brief mention that trade mark registrations obtained through international treaties (to which Algeria is a member country) will be valid and enforceable.  No specific mention is made of the Madrid Protocol however and no regulations were enacted to inform the Registry how to process International Registrations or how to manage objections or possible oppositions.

In Egypt, national laws have not been properly amended and no enabling regulations implemented.  Although the Egyptian Registry has been accepting and processing International Registrations for many years, their enforceability against conflicting national registrations still has to be tested in their Courts.

In the regional system of OAPI, the Administrative Council (of the multi-country organization) ratified the Madrid Protocol unilaterally and on behalf of the organization’s 17 member countries in March 2015.  An amendment of the underlying Bangui Agreement was never attended to and uncertainty regarding the enforceability of Madrid marks designating OAPI exists.

  • Practical difficulties

3.2.1 Most Madrid members in Africa cannot process applications within WIPO’s timelines

Most African trade marks offices battle with logistical issues that have led to the development of crippling backlogs of cases which stretch back for many years.  As the records of most Registries have not yet been fully digitized, some of their records are contained in Register manuals.  In such instances, current status information can only be confirmed from the official file for a pending matter, which is often not immediately available.

Another hindrance is the lack of the regular publication of Trade Mark Journals (in some African Madrid member countries, an entire year could pass without a single publication occurring), which leads to backlogs of marks awaiting publication forming which can also stretch back for years.

One of the core obligations placed upon national trade marks offices through the Madrid system is that designations in terms of International Registrations should be examined in a specific time frame (a standard time frame of 12 months applies, which is extendable to 18 months upon application).  If the national trade marks office of a designated member country does not notify WIPO of an objection or opposition to the registration of a mark within the mentioned time frame, WIPO and the owner of the International Registration will consider the mark to be registered and enforceable in that member country.

Unfortunately, most African registries are incapable of complying with WIPO’s timelines for the processing of applications within 12 – 18 months.  Situations have therefore arisen where a national registry communicates an objection or opposition after the prescribed notice period expired has expired and by that time, WIPO no longer entertains such communications.  In such instances, WIPO and the brand owner believe that a valid registration was secured but in reality, the local Registry may have refused and removed the mark from the national register – without even communicating this properly to WIPO.  Several such instances have arisen in jurisdictions, including Kenya and Mozambique where the Madrid system is deemed to function efficiently and where the Registries’ records are mostly computerized.

3.2.2 A lack of user confidence and training on WIPO’s IPAS system

Before a country accedes to the Madrid Protocol, WIPO will typically assist the IP Office with the initialization of the process to digitize their records and they would implement their database management system, known as the Industrial Property Automated System (IPAS) which links the Registry’s digital database with WIPO’s systems.  This enables WIPO to upload all data relating to International Registrations on their systems in Geneva and to synchronize their database with those of designated member countries.  This reduces the risk of user error which could occur when staff at national Registries input data relating to International Registrations.

While this is a positive step to take, the difficulty is that the Registry officials in many African member countries often revert back to their previously utilized systems and manual records as a result of a lack of training on the electronic IPAS systems and difficulties in retaining skilled staff members and a resultant lack of user familiarity with WIPO’s systems at the Registries.  This does not bode well for the processing of Madrid designations, which depends largely upon the proper operation of the IPAS system at designated Trade Marks Offices.  Of course, this is a concerning situation as the owner of an International Registration designating a certain African jurisdiction may in the future, when they try to enforce their rights, find that an earlier conflicting mark was registered on a national level and not included in the IPAS system as the Registry reverted back to capturing national applications in a separate register.  This could lead to a situation where the owner of the International Registration might be restrained from using his mark in that jurisdiction, despite the fact that he secured a registration via WIPO/Madrid – especially in the so-called First-to-File jurisdictions.

Although WIPO is working hard to assist with training of Registry staff around the continent and to improve user confidence in the IPAS and Madrid systems, the practical reality is that operations at most registries in Africa are very rudimentary and simply nowhere near as streamlined and efficient as in more advanced jurisdictions in the rest of the world where the Madrid system works well.

At most of the Registries, the bulk of their records are still contained in manual records, despite ongoing digitization efforts, which could take many years to complete due to the sheer amount of records concerned.  Until the Registry’s records in an African Madrid member country have been fully digitized to ensure that Madrid designations are examined and compared with existing, similar marks on the national register, it remains recommended for trade mark owners to secure national registrations for their marks.  Especially when considering that many African (Madrid member) Registries are (according to WIPO) found to be reverting back to their formerly utilized and manual records due to various reasons.

To further compound these issues, knowledge of the procedural operation of the Madrid system has been found lacking at Registry level in many jurisdictions.  A lack of understanding of examination and opposition deadlines has led to many instances of confusion and miscommunication between the national trade marks offices and WIPO which, in turn, leads to situations where the holder of an International Registration is unaware that his rights were challenged successfully on a national level.  This has led to an increase in national filings in many Madrid member countries as international brand owners come to realize (after costly and risky litigation proceedings) that it remains the first prize in Africa to establish presences on the national registers for their core brands.

3.2.3 Practical examples

Some practical examples of situations leading to uncertainty and difficulties are set out below.

In Ghana, the Trademarks (Amendment) Act, 876 of 2014 entered into force in July of 2014, properly recognizing the Madrid Protocol in terms of its national legislation.  Reports were received that the Ghana IP Office was not aware of the publication of the Amendment Act and Madrid applications were not processed or recorded properly for quite some time.  Some doubt exists as to the validity of International Registrations designating Ghana between 2008 (when Ghana ratified the Madrid Protocol) and July of 2014 as the Protocol was not enacted with retrospective effect.  WIPO confirmed that the Ghana Registry had not communicated a single objection to an International Registration designating Ghana by December of 2014.  There is a concern that the Registry did not examine these International Registrations properly; that the registrations were granted by default and that they would not be enforceable.  Also, there is a concern that International Registrations were not properly captured on the records of the Ghana Registry as no regulations existed before July 2014 which informed the Registrar and his staff how to deal with Madrid applications.  To compound matters, the Ghana Registrar recently admitted that his office is not able to examine marks routinely within WIPO’s deadlines and he expressly reserved the right to refuse international registrations outside of WIPO’s timelines.  We are aware of situations where this has led to international registrations being refused or opposed outside of WIPO’s timelines and an owner of an international registration covering Ghana being left without any enforceable statutory remedy against infringement.

In Botswana, where appropriate legislative and regulatory amendments have been made to fully recognize international (Madrid) registrations, the Registrar of Trade Marks confirmed to WIPO at a workshop held in Gaborone in 2016 that they have not examined any of the 8 000 Madrid designations received in terms of the Madrid Protocol since Botswana became a member country in 2006.  The Registry officials were not sure how to examine and process these applications and simply allowed them to become registered by default.  The IPAS system was ignored by Registry officials and they went back to capturing new records in their Register books.  Additionally, once the Botswana Registry finally began uploading records onto the IPAS system in September 2016, they communicated in January 2017, that somehow all of the data that was entered and updated on the IPAS database has been lost.

In Gambia, the Registrar of Trade Marks recently confirmed that, due to backlogs of pending trade mark applications which stretch back until the early 1990’s, the current examination timeline in Gambia is 26 months.  The Gambian Registry clearly is not able to meet the strict 18-month examination timeline of the Madrid Protocol and it is expected to take many years before they might be in a position to do so.  The bulk of the Registry’s records are not computerized and Journal publications appear only once or twice a year (some years not at all).  In this jurisdiction, it is likely that international registrations may only be examined outside of WIPO’s timelines and possibly refused or successfully opposed at that time, which could leave the owner of the international registration with the mistaken impression that they secured statutory and enforceable trade mark rights in Gambia.

If the system is not functioning properly in African countries where appropriate legal amendments have been made and where the Registries are considered to be efficient (such as Kenya and Mozambique), no real user confidence can be established in other countries such as Lesotho, Madagascar, Namibia, Rwanda, Sao Tome & Principe, Sierra Leone, Sudan, Swaziland, Zambia where records remain largely non-digitized and where appropriate legal amendments are still outstanding and where Registries’ records are not yet computerized and they are struggling to cope with administrative backlogs stretching back several decades.

An additional cause for concern is that many African countries are considered to be so-called ‘First-to-file-jurisdictions’ where common law rights (arising from the use of a mark in trade) are not formally recognized and where the first party who successfully registers a mark gains exclusive rights to the use of that mark, notwithstanding that another party may have been using the mark in trade prior to the registration of the mark.  In these jurisdictions, it is vital for brand owners to ensure that their valued trade marks are registered on a national level.  We are aware of instances where the owners of international (Madrid) registrations were under the mistaken impression that they secured enforceable rights in some of these jurisdictions, only to discover at a later stage (when they try to enforce their marks) that the national IP office allowed an opposition or that the Registry refused their mark outside of WIPO’s timelines and that they in fact do not have enforceable rights.  To compound the issue, third parties (including local distributers, in some instances) have gone ahead and registered their marks locally, leading to costly and complicated legal battles to regain control of their brands from third parties.  Just as anti-counterfeiting is a scourge of commerce in African trade, so is the adoption of established brands by unauthorized third parties.   The following countries in Africa are considered to be First-to-File countries:

Algeria, Angola, Djibouti, Egypt, Ethiopia, Lesotho, Liberia, Libya, Madagascar, Morocco, Mozambique, OAPI (Cameroon, Central African Republic, Chad, The Republic of the Congo, Comoros, Benin, Gabon, Ivory Coast, Mauritania, Mali, Guinea, Niger, Senegal, Togo, Burkina Faso (formerly Upper Volta), Guinea-Bissau and Equatorial Guinea), South Sudan, Sudan, Swaziland and Zambia.

  1. Conclusion

The bottom line is that the Madrid system does not function as efficiently and effectively in Africa as in other parts of the world where Registries have clear legislative mandates and regulatory guidance on how to process International Registrations, not to mention more developed trade mark laws; digital records; the regular publication of Marks Journals and streamlined registration systems.  Also, in Africa, most countries are at differing stages of economic and legislative development and a one-stop solution which might work in a region such as the EU, where the member countries have similar laws and stages of development,  will not necessarily be a workable solution in Africa.  It will take many, many years before most of the African Madrid member countries have successfully digitized their records; implemented appropriate legislation and regulations to give full force and effect to Madrid registrations; improved examination and publication timelines; addressed issues relating to the retention of skilled staff members; dealt with their existing backlogs of cases and have established the efficient, streamlined and effective trade mark registration systems which are necessary for them to comply with their obligations in terms of the Madrid Protocol.  WIPO has identified that some African Registries revert back to their previous systems (including the keeping of manual Register books in preference to WIPO’s digital IPAS database system) which effectively results in the establishment of two separate registers (one national register which is updated manually and the IPAS database that receives data from WIPO).  As it stands, brand owners take a risk when relying on the Madrid system when attempting to secure enforceable trade mark rights in Africa.

STEPHEN HOLLIS

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SIMON BROWN

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MEGAN MOERDIJK

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CASHING IN ON MADIBA’S LEGACY

The City of Cape Town announced its plan to create the Madiba Legacy Route to enhance tourism in Cape Town.

Provincial MEC for Economic Opportunities, Alan Winde, said up to 100 000 jobs could be created as a result of this plan. This raises the question: Is Madiba’s name free for everyone to use?

Nishan Singh, attorney and partner at Adams & Adams says Madiba’s name is owned and protected by the Nelson Mandela Foundation.

NISHAN SINGH

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AESTHETIC OR FUNCTIONAL | PROTECT YOUR DESIGN

Adams & Adams’ involvement with Elle SOLVE is part of a drive to foster the uniquely imaginative capacity of SA’s creatives – and to help those gifted individuals realise real economic benefit in respect of their intellectual property rights. We see it as an imperative that this showcase of individualism is protected. In terms of the artist we also need to provide a solution to the problem of general devaluation and under-appreciation of artistic works. This begins with the artist who needs to know his or her rights in terms of creativity.

South Africa is home to many talented designers whose work is highly regarded both locally and internationally.  Design protection is, however – to their detriment – often underestimated by local designers.

Making design protection a part of your creative repertoire should be part of your creative course of action. Registered design protection provides protection for the appearance of articles intended to be multiplied in an industrial process.

Both aesthetic and functional designs can be registered in South Africa. Functional designs are those with features necessitated by the function of the article. Aesthetic designs, which are extremely important in creative design, pertain to appearance of the article including shape, configuration, pattern or ornamentation.

Examples of articles suitable for aesthetic design protection include, furniture, lighting, textiles, door handles etc.

In order to ensure your design is protected it must be new. This means that the design should not have been revealed to the public before filing an application for registered design.  Although novelty (or “newness”) is a requirement before filing an application, the South African Designs Act does allow you to disclose your design before a design application – provided you file a design application within six months of the disclosure.

Designers need to take cognisance of the process of design protection in foreign countries however.  Several countries will not enable design protection if it has been disclosed prior to filing.  It is preferable then that South African design applications be filed prior to any public disclosure of the design protection.

Intellectual property is a vital aspect of your balance sheet, and registering your designs has an important role to play in your financial well being.  A registered design may be traded like any other asset.  You can sell it, or licence it others.  It therefore allows you to prevent others from using, making, importing or selling articles which look the same or similar to yours – safeguarding your professional reputation against copycats.

Don’t donate your creative works to others – register your designs!

MARIËTTE DU PLESSIS

Partner
Trade Mark Attorney

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WHAT ARE TRADE SECRETS? HOW TO PROTECT THEM

A Trade secret is information that is useful in the industry and that is kept confidential. It is information that imparts value to its holder and one that provides a competitive edge over its competitors. Should information that constitutes as a trade secret be leaked, it could have a major negative effect on the business. Information such as customer lists, information received by an employee regarding business opportunities valuable to an employer and information provided to an employee in confidence in the course and scope of his employment could be identified as confidential[1].

Even negative information such as failed remedies or manufacture of products and failed research could be protected as a trade secret as it could save a competing business high costs if they have a what not to do guide.

 Article 39 of the TRIPS Agreement[2], provides that member states shall protect “undisclosed information” against the unauthorised use “in a manner contrary to honest commercial practices” as long as the information is:

  1. a secret in a sense that it is not generally known among or readily accessible to persons that generally deal with the type of information;
  2. has commercial value because it is secret; and
  3. has been subject to reasonable steps by the person in control of the information to keep it a secret.

This is the general guideline in determining whether information is a secret and if it can be protected as a ‘trade secret’. Member countries may have identified more criteria but Article 39[3] serves as a basis for the member states of the TRIPS Agreement[4]

The advantages of trade secrets are that trade secrets do not have to be registered and have no limited protection frame, there are no registration costs and there are no formal compliance requirements that have to be met. However, the disadvantages are that trade secrets can be reverse-engineered once the secret is made public and then anyone is at liberty to use the information.

The enforceability of the trade secrets is generally not easy and may prove to be costly – not ideal for small entities and start-ups. Nonetheless, trade secrets can still be a useful tool for small and medium businesses that do not have the resources to protect their intellectual property assets by other forms of protection such as trade marks and patents which require registration.

How to protect your trade secrets

A trade secret owner should employ as many precautions as reasonably possible such as:

  1. restricting access to confidential information physically and electronically to only those individuals that need to know the information;
  2. marking documents that they constitute confidential information;
  3. making use of non-disclosure and confidentiality agreements;
  4. maintaining information with password protection;
  5. disposing confidential information by shredding or other means designed to destroy the information;
  6. conducting exit interviews with departing employees to ensure the return of all confidential information in the employee’s possession and to emphasise confidential obligations;
  7. ensuring that there are restraint of trade provisions in the employment contracts;
  8. establishing due diligence and on-going third party management procedures;
  9. instituting and information protection team;
  10. make trade secret protection a priority[5].

It is important to note that confidential information not classified as a trade secret may be used by an employee for his own benefit or for the benefit of others after the termination of his employment to the extent that it was not copied and/ or deliberately memorized for use after   of the employment contract[6]. In this case[7], the applicant sought to interdict an ex-employee from joining a competitor on the basis that the respondent would unlawfully make use of the applicant’s trade secrets. The court held that the applicant had failed to prove that any of the information was confidential. It was decided that the audio and lighting production of the IDOLS TV show required little originality input since all the relevant information was already in the public domain.

In the event that it becomes apparent that trade secrets have been exposed, the trade secret owner can approach the courts to claim against the infringer on the basis of breach of contract which allows the wronged party could claim for damages from the infringer for breaching confidentiality agreements or based on unlawful competition which allows the wronged party to claim for an interdict in order to refrain the infringer from continuing the unlawful act. Furthermore the wronged party can claim for damages they have incurred due to the act of the infringer and claim costs they have incurred in instituting proceedings. Proof of damages and causation is imperative to succeed with an action under unlawful competition.

Proving damages can prove to be quite difficult. Below are different options that can be exercised in quantifying the economic harm in misappropriated trade secrets[8].

  1. Lost Profits and unjust enrichment calculations[9] – this involves determining how much more increased sales the company would have made had the trade secrets not been revealed;
  2. Reasonable royalty[10] – this remedy is suitable where it would be difficult to prove the extent of the patrimonial loss. This is determined by recovering the reasonable royalty that would have been paid by a licensee ; and
  3. Transaction specific Reasonable Royalty[11]– relates to the royalty that would have been paid for a specific product or service.

Trade secrets are an important form of intellectual property just like trade marks, patents, copyright and designs. It is imperative that any business takes the initial steps in identifying the trade secrets of the business and thereafter, incorporate protection mechanisms within the business such as ensuring that documents are stored securely and in places where there is limited access. Furthermore agreements with employees should be in place as well as education about what constitutes confidential information as well as the consequences of revealing the confidential information.

 by Maureen Makoko | Associate


[1] Meter Systems Holdings Limited v Venter and Another 1993 (1) SA 409

[2] Agreement on Trade-Related Aspects of Intellectual Property Rights

[3] Idem

[4] Idem

[5] WIPO MAGAZINE Eight steps to secure trade secrets (2016) http://www.wipo.int/wipo_magazine/en/2016/01/article_0006.html

[6] Strike productions (Pty) Ltd v Bon View Trading (Pty) Ltd & Others (10/21704) [2011] ZAGPJHC 1

[7] Idem

[8] Hoffman J, Ewing B and Thompson M.A.  How Much Are Your Trade Secrets Worth? Here’s how To Figure it Out 2014 https://eiexchange.com/content/30-how-much-are-your-trade-secrets-worth-heres-how-to-figure-it-out

[9] Idem

[10] Idem

[11] Idem

 

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

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BRANDS & SOCIAL MEDIA INFLUENCERS | ARE YOU AT RISK?

Although Andy Warhol proclaimed in 1968 that, in the future, everyone would be world-famous for fifteen minutes, it is unlikely that he could possibly have imagined today’s social media crazed world and the multiple platforms that exist to enable anyone, anywhere, to become a celebrity. In today’s world, being “famous for being famous” can be a full-time occupation and “Youtuber” would appear to be an acceptable career choice for many millennials.

One ramification of this has been the rise of the “social media influencer”. A social media influencer is someone with credibility in a particular industry and a wide reach, usually in the form of a large following on social media. Brands engage with an influencer who has reach in their particular industry, that person promotes the brand to his or her followers and the brand enjoys the benefit of what is effectively a personal endorsement to hundreds, thousands or even millions of persons directly in its target market. The social media influencer is, of course, generally paid to promote the product, either in money or in kind. It is not uncommon, for example, for clothing brands to gift free items to celebrities or established fashion bloggers with the expectation that they will then post photographs on social media of themselves wearing the items on Instagram or other social media, with an appropriate mention of the brand.

The use of social media influencers is but one form of what has been termed “native advertising” which is paid media that matches the form and function of the platform upon which it appears. The issue, as one might imagine, is that these endorsements, which constitute paid-for advertising, often appear among hundreds of other organic social media posts and may not be perceived as sponsored content by those who view them. Therein lies their very appeal to advertisers, especially in the modern consumer landscape that craves authenticity and personal connections. But, similarly, therein lies the potential to deceive consumers and fall foul of the law.

The USA’s Federal Trade Commission, which is tasked with tackling unfair business practices and consumer deception in the USA, is very clear on this issue. It has published detailed guidelines which spell out that any material connection between an advertiser and endorser must be disclosed in a clear and conspicuous manner. While wording such as “company x gave me this product for free” in a review would be ideal, it seems that using a hashtag such as “#sponsored” or even “#advertisement” might be sufficient for the FTC’s purposes. The FTC has even said that, given that a tweet is a mere 140 characters, commencing it with “#AD:” could get the message across.

An example from Kim Kardashian West’s Instagram Page. It is questionable whether merely thanking the brand would be considered a sufficient disclosure. This particular post was “liked” by over 1.4 million people.

An example from Kim Kardashian West’s Instagram Page. It is questionable whether merely thanking the brand would be considered a sufficient disclosure. This particular post was “liked” by over 1.4 million people.


Winner of South Africa’s Masterchef Season 2 competition, Kamini Pather, has attracted an Instagram following of over 26 000 people and has seemingly cashed in on the social media influencer scene, pairing up with various different brands. This post uses the hashtags “#sponsored” and “#ambassador” to disclose her relationship with the make-up brand MUD.

Winner of South Africa’s Masterchef Season 2 competition, Kamini Pather, has attracted an Instagram following of over 26 000 people and has seemingly cashed in on the social media influencer scene, pairing up with various different brands. This post uses the hashtags “#sponsored” and “#ambassador” to disclose her relationship with the make-up brand MUD.

But how will this issue be dealt with in South Africa where our regulators have yet to turn their attention to specific rules governing this form of advertising? The answer is likely to be found in the Consumer Protection Act 68 of 2008 (the “CPA”) and the Advertising Standards Authority’s Code of Advertising Practice (“ASA Code”) both of which set general standards relating to the advertising of products and/or services to ensure the public is not being misled.

Both the CPA and ASA Code provide very broad definitions of “advertising” and “advertisement” and these would likely apply to advertising by way of social media. When bloggers or influencers post on social media in relation to an advertiser’s products or services, those posts could also be regarded as advertisements, because they are intended to market, promote, advertise or publicise the advertiser or the relevant goods or services. Accordingly, this would also require compliance with the CPA and the ASA Code.

The CPA requires that advertising must take place in a fair and reasonable manner and that no misrepresentations be made. Goods or services must not be marketed in a manner that is likely to reasonably imply a false or misleading representation concerning those goods or services. Similarly, the ASA Code requires truthfulness and honesty in advertising. Could an argument be made that a paid-for advertisement which is not clearly labelled as one is misleading? Probably. After all, a consumer is far more likely to be induced to purchase a product that has been given a rave review by someone he or she knows or admires.

Although the CPA and ASA Code do not specifically deal with situations where influencers post content on social media in order to market or promote a brand or its goods/services, the ASA Code also requires that “advertisements should be clearly distinguishable as such whatever their form and whatever the medium used”.

The ASA Code also states that, in electronic media, particular care should be taken to distinguish clearly between programme content and advertising. Where there is a possibility of confusion, advertising should be identified in a “manner acceptable to the ASA”. While the ASA seems yet to have received any complaints regarding unidentified social media influencer endorsements, it seems likely that it will also insist on similar disclosures to those required by the FTC and that wording, whether in the form of a hashtag or something more substantial, will be needed to clearly identify a post as advertising content.

This being the current state of play, it is advisable that brands and social media influencers (both could be liable in the event of a breach) ensure that all posts contain an indication to the effect that the relevant posts are advertisements. This must be clear enough to avoid any misrepresentations or misleading of the public. One could insert the following at the end of the post: “(Sponsored ad)”. One could also consider using “#sponsored_ad”. Other wording may also be considered acceptable and ultimately, in the event of a challenge, it would be up to the advertiser to show that consumers in South Africa clearly understand that the wording used reflects the nature of the relationship between the brand and the influencer.

It is also important to bear in mind that any form of compensation or inducement, whether in monetary terms or some other form such as a discount, tickets to an event or free products, will likely trigger the need to disclose the relationship with the advertiser. Accordingly, in all of these circumstances, it is recommended that a clear message be inserted at the end of the post to the effect that the post is a sponsored advertisement.

The bottom line is that consumers have a right to know when something is a paid-for testimonial, rather than the personal and unbiased view of the endorser. And it is brands and social media influencers who bear the responsibility of making that disclosure clearly.

Kelly Thompson | Partner (Adams & Adams)

 

KELLY THOMPSON

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ZIMBABWE | RATIFICATION OF THE MADRID PROTOCOL

On 13 March 2017, the promulgation of implementing regulations in Zimbabwe set in motion the process of ratification of the Madrid Protocol, some two years after Zimbabwe became a member. Zimbabwe was announced as the 94th member of the Madrid system in December 2014. The regulations which give recognition to the Madrid Protocol were published in the Government Gazette Vol XCIV, No. 16 dated 13 March 2017 and are cited as the Trade Marks (Madrid Protocol) Regulations, 2017.  The effect of the regulations is that a trade mark registered by the Zimbabwean Trade Marks Office in accordance with the Madrid Protocol is accorded the same effect as a trade mark registered under the national Trade Marks Act.  The Trade Marks Act (Chapter 26:04) and Trade Marks regulations apply to the holder of an international registration designating Zimbabwe and to an applicant for an international registration originating in Zimbabwe.

Although the new regulations make it possible for owners of international registrations (obtained via WIPO’s Madrid system) to designate Zimbabwe, it is nonetheless to be recommended that brand owners continue to secure registration of their valued trade marks on a national basis in Zimbabwe. Trade marks filed through the Madrid system will remain speculative in Zimbabwe until such time as the Zimbabwean IP Office (ZIPO) has digitized all of their records (and uploaded them to WIPO’s IPAS system by which Madrid designations are recorded) and ZIPO is equipped to examine applications within WIPO’s strict timelines.  This process is likely to take some time owing to Registry backlogs, staffing issues and a lack of proper investment of funds by the Zimbabwean Government into the improvement of ZIPO’s operations.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Zimbabwe and across Africa, please contact africaip@adamsadams.com

SIMON BROWN

Partner | Co-Chairperson of Trade Marks Department
Trade Mark Attorney

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LAUREN ROSS

Partner
Trade Mark Attorney

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STEPHEN HOLLIS

Partner
Trade Mark Attorney

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ZIMBABWE | JUDICIAL LAWS AMENDMENT BILL. A MOVE WITH THE TIMES?

The Judicial Laws Amendment (Ease of Settling Commercial and Other Disputes) Bill of 2016 is currently pending Zimbabwean parliamentary debate. The purpose of the Bill is to amend sections of the High Court Act, the Magistrates Court Act and the Small Claims Court Act with a view to speed up and to facilitate the settlement of disputes, particularly disputes of a commercial nature.

The Bill proposes that the Intellectual Property Tribunal, which was constituted in terms of the Intellectual Property Tribunal Act, be declared a specialised division of the High Court. The Bill also provides for hearings in court or in chambers to be conducted by way of use of electronic devices or other means of communication subject to agreement between the parties, if a party cannot to be physically present at the hearing.  This is referred to in the Bill as “virtual sittings”. Provision is also made for  the electronic authentication of Court documents and electronic access to records filed with the Courts.

The Bill is perceived as an attempt to bring legal proceedings in Zimbabwe up to speed with the realities of the digital era and to facilitate the settlement of matters in a speedy and effective manner.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Zimbabwe and across Africa, please contact africaip@adamsadams.com

Contribution by

David Legge | Associate

Somayya Khan | Partner

SOMAYYA KHAN

Partner
Trade Mark Attorney

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TRADITIONAL KNOWLEDGE AS A TRADE SECRET

In June 2016, The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2016[1] (“the Act”) came into force in Zambia. The Act’s preamble indicates that the aim is to:

  • provide for a transparent legal framework for the protection of, access to, and use of traditional knowledge, genetic resources and expressions of folklore which also guarantees equitable sharing of benefits and defective participation of holders;
  • recognise the spiritual, cultural, social, political and economic value of traditional knowledge, genetic resources and expressions of folklore;
  • promote the preservation, wider application and development of traditional knowledge, genetic resources and expressions of folklore;
  • recognise, protect and support the alienable rights of traditional communities, individuals and groups over their traditional knowledge, genetic resources and expressions of folklore;
  • confer rights on traditional communities, individuals and groups;
  • promote the conservation and sustainable utilisation of the country’s biodiversity resources;
  • promote fair and equitable distribution of the benefits derived from the exploitation of traditional knowledge, genetic resources and expressions of folklore;
  • promote use of the traditional knowledge, genetic resources and expressions of folklore; and
  • to prevent the granting of patents based on traditional knowledge, genetic resources and expressions of folklore without the consent of a traditional community, individual or group

The Act has incorporated a new system into the law such as to register traditional knowledge. The registration does not require that the traditional knowledge be disclosed to the public[2] and   furthermore, much like with trade marks, the Registrar will issue an Intellectual Property Journal on protected traditional knowledge as well as include any licenses or contracts related to the traditional knowledge[3]. The Act has been well received in Zambia as it creates economic development in the country and will encourage international investors to invest in the community as well as to register their own traditional knowledge. Furthermore, the local people will have comfort knowing that their traditional knowledge is protected as well as knowing that there are mechanisms in place if there is misuse of their traditional knowledge.

What exactly is traditional knowledge?

Traditional Knowledge (TK) is knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its culture or spiritual identity[4]. TK can be found in a wide variety of contexts including: agriculture, scientific, technical, ecological and medicinal knowledge as well as biodiversity-related knowledge[5].

For example:

Mukundu

MUKUNDU

The Ila people, also called Baila, Sukulumbe or Shukulumba are Bantu speaking located in the area west of Lusaka being the capital of the Republic of Zambia. Most of the Ila grow food to feed their families and to cover physical and educational needs[6]. The Ila make use of natural plants and trees to make medicines such as the Acacia nigrescens tree (mukundu),  the bark of which is decocted and the lotion used for sore gums[7] and  the Julbernardia panuculata (mutondo)

 of which the leaves can be boiled and the steam inhaled to relieve colds.

TK can be afforded two types of protection namely:

  1. Defensive protection- which aims to stop people who are not a part of the community from acquiring the intellectual property rights over the TK; and
  2. Positive protection- which grants rights that empower communities to use and benefit from the traditional knowledge[8].

These skills and innovations of indigenous and local communities do not form a separate category of intellectual property law and as such, have to be protected by other means of intellectual property rights. Trade secret is one of the forms of intellectual property that can be used to protect TK.

MUTANDO

MUTANDO

What are trade secrets?

A Trade secret is information that is useful in the industry and that is kept confidential. It is information that imparts value to its holder and one that provides a competitive edge over its competitors. Should information that constitutes as a trade secret be leaked, it could have a major negative effect on any business. Information such as customer lists, information received by an employee regarding business opportunities valuable to an employer and information provided to an employee in confidence in the course and scope of his employment could be identified as confidential[9]. Even negative information such as failed remedies or manufacture of products and failed research could be protected as a trade secret as it could save a competing business high costs if they have a what not to do guide.

Article 39 of the TRIPS Agreement[10], provides that member states shall protect “undisclosed information” against the unauthorised use “in a manner contrary to honest commercial practices” as long as the information is:

  1. a secret in a sense that it is not generally known among or readily accessible to persons that generally deal with the type of information;
  2. has commercial value because it is secret; and
  3. has been subject to reasonable steps by the person in control of the information to keep it a secret.

This is the general guideline in determining whether information is a secret and if it can be protected as a ‘trade secret’. Member countries may have identified more criteria but Article 39[11] serves as a basis for the member states of the TRIPS Agreement[12]

The advantages of trade secrets are that trade secrets do not have to be registered and have no limited protection frame, there are no registration costs and there are no formal compliance requirements that have to be met. However, the disadvantages are that trade secrets can be reverse-engineered once the secret is made public and then anyone is at liberty to use the information. The enforceability of the trade secrets is generally not easy furthermore, it may prove to be costly.

Traditional knowledge as a trade secret

In conjunction with the requirements set out by Article 39, traditional knowledge can be protected as a trade secret if:

  1. The information is a secret

Customary laws of communities often require that certain knowledge should be disclosed to certain recipients. For example: A group of North American indigenous communities, the Tulalip Tribe, have an application under the Patent Cooperation Treaty (PCT) on the use of traditional Chinese medicine to reduce the level of fat in the blood which is a collection of their traditional knowledge. A part of the traditional knowledge has been exposed for the patent review and the rest has been kept a secret[13].

  1. Reasonable steps have been taken to protect it

The information must be reasonably protected. Even if the whole community knows about it, it does not lose its secrecy provided that the rest of the outside people do not have much knowledge about it such as in the example of the Tulalip Tribe.

  1. The information has economic value

Traditional Knowledge is seen as an asset as it could be used to develop products which would be profitable. It therefore has great economical value.

If the above requirements have been met, then traditional knowledge can be protected as a trade secret and any misappropriation of the information can allow the owner of the information to seek relief through various means such as obtaining an interdict to prohibit further misappropriation of the information.

Conclusion

Trade secrets are an important form of intellectual property and can be the better form of protection not only for TK but also any confidential information within a business. It is imperative that initial steps be taken in identifying the trade secrets of the business and thereafter, incorporate protection mechanisms within the business such as;

  1. making trade secret protection a priority;
  2. ensuring that documents are stored securely and in places where there is limited access;
  3. ensuring that there are non-disclosure and confidentiality agreements in place to protect the confidential information;
  4. educating third parties and employees about what constitutes confidential information as well as the consequences of revealing the confidential information;
  5. marking documents that they constitute confidential information; and
  6. restricting access to confidential information physically and electronically only to those individuals that need to know the information.

 

[1] Act No. 16 of 2016

[2] Section 15 of Act No. 16 of 2016

[3] Section 11 of Act No. 16 of 2016

[4] WIPO Traditional Knowledge http://www.wipo.int/tk/en/tk/

[5] Idem

[6]  Ila in Zambia https://joshuaproject.net/people_groups/12208/ZA

[7] Fowler D.G (2002) Traditional Ila Plant Remedies from Zambia 35-48

[8]  Pandey V Protection of Traditional Knowledge as Trade Secrets (2013) http://www.mondaq.com/india/x/279342/Patent/Protection+Of+Traditional+Knowledge+As+Trade+Secrets

[9] Meter Systems Holdings Limited v Venter and Another 1993 (1) SA 409

[10] Agreement on Trade-Related Aspects of Intellectual Property Rights

[11] Idem

[12] Idem

[13] Pandey V Protection of Traditional Knowledge as Trade Secrets (2013) http://www.mondaq.com/india/x/279342/Patent/Protection+Of+Traditional+Knowledge+As+Trade+Secrets

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE GAMBIA | DEADLINE FOR RENEWAL OF TRADE MARKS

In terms of the Gambian Industrial Property Act 12 of 1989 (“IP Act”), trade marks registered under the Trade Marks Act, 1916 (repealed) shall be due for renewal within 14 years from the filing date of the application for registration or 10 years from the enactment of the IP Act, whichever period expires first.  The IP Act came into force on 2 April 2007.

Registered and pending marks filed between 3 April 2003 and 1 April 2007 were due for renewal on 2 April 2017.

For further updates, information and queries on copyright law, trade mark, patent and design filings in The Gambia and across Africa, please contact africaip@adamsadams.com

MEGAN MOERDIJK

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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UGANDA | INDUSTRIAL PROPERTY REGULATIONS PASSED

On 10 February 2017 the Industrial Property Regulations were gazetted by the Ugandan government bringing the Industrial Property Act, 2014 (“the Act”) into full effect. Despite the fact that the Act came into force in February 2014, it has had a somewhat limping effect for the past three years due to the lack of implementing regulations. The effect of this is that patents have been filed with the Registry but until now there have been no provisions guiding the Registry on how to register industrial designs, utility models and technovations.

This article provides an explanation of the rights afforded to the new, somewhat less common categories of intellectual property protected by the Act in Uganda, namely: industrial designs, utility models and technovations.

Industrial designs

The protection offered by a registered industrial design is gaining prominence across the globe, admittedly in the shadow of its more popular forms of intellectual property law such as patents, trade mark and copyright. An industrial design is defined by the Act as “useful article which is ornamental or aesthetic that may consist of three dimensional features like a shape or surface of an article or a three dimensional feature such as patterns, line or colours”. Excluded from the definition is any design which serves solely to obtain a technical result which is within the realm of patents and utility models in Uganda.

Industrial designs must be new and afford the proprietor of the design to preclude third parties from performing certain acts such as reproducing, importing and selling the product in Uganda for a period of up to fifteen years.

Utility models

Where the definition for patents are defined as “the title granted to protect an invention” by the Act. Utility models seek to protect a much broader class of “inventions” such as appliances, utensils, tools, electrical and electronic circuitry, instruments, handicraft mechanisms or other objects that gives some utility, advantage, environmental benefit, saving or technical effect not previously available in Uganda.

In that the utility models are still required to be an invention in terms of the Act it is not clear how the overlap between patents and utility models will play out in practice. Utility models afford the proprietor of the design to preclude third parties from performing restricted acts for a period of ten years.

Technovations

Uganda is the first country that we are aware of affording rights to what they define as a technovation. Technovation is defined by the Act as “a solution to a specific problem in the field of technology, proposed by an employee of an enterprise in Uganda for use by that enterprise, and which relates to the activities of the enterprise but which, on the date of proposal, has not been used or actively considered for use by that enterprise”.

The effect of this new form of intellectual property protection is that an employee can protect their solution to a problem by filing a request for a technovation certificate with their employer which the employer grants to the employee if the requirements of the Act are met. If the employer uses the technovation (or communicates it to a third person) the employee (technovator) is entitled to a remuneration will be determined by collective bargaining agreement or by mutual agreement between the parties.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Zambia and across Africa, please contact africaip@adamsadams.com

Download Regulations Outline here.

ALICIA CASTLEMAN

Partner | Trade Marks Department
Trade Mark Attorney

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NICHOLAS ROSSLEE

Associate
Attorney

HAT-TRICK FOR ADAMS & ADAMS | AFRICA FIRM OF THE YEAR

London | At the recent Managing IP Global Awards banquet, held at The Savoy, South Africa’s Adams & Adams was confirmed as the leading law firm in Africa for 2017 – the third year in a row for the firm. Partner at the firm, Darren Olivier was on hand to accept the award and to celebrate the firm’s phenomenal achievements in uniting and advancing the business of good intellectual property in territories across the African continent.

“This is a fantastic accomplishment for us and we are immensely grateful to the members of MIP, who have recognised our efforts and our firm’s ascendancy in Africa,” says firm Chairman, Gérard du Plessis, of the award. “We are also indebted to our local and global clients who continue to trust our professionals with their commercial interests and intellectual property rights on the continent.”

Notwithstanding the spectre of a tumultuous 2016 worldwide, there is much to be optimistic about insofar as Africa’s rise on the world stage goes. While development obstacles abound, the World Bank’s Africa Pulse Report projects that annual economic growth for Sub – Saharan Africa will remain at an expected average of 4.5%, whilst the EY Global Attractiveness Study for 2016 highlights some economic “bright spots” on the continent. “In respect of intellectual property law in Africa, there are encouraging improvements in most territories, with laws and regulations constantly in the process of evolution and development,” adds du Plessis. “And allied to this, the development of intellectual property offices across the continent, including the automation and digitisation of these agencies, remains imperative. In our minds, Africa’s time waits for no one.”

Adams & Adams continues to expand its critical African Network with the establishment of an Associate office in The Gambia – also servicing Liberia and Sierra Leone. Plans are underway to open an office in Ethiopia, as well as Zimbabwe, in the near future. This will bring to 19, the number of Associate offices in the different African countries that form part of the Adams & Adams Africa Network.

“Our focus has always been to add value to our clients’ IP portfolios. We target strategic associations with local partners whose ethics and commitment to clients mirror those of our own,” explains Simon Brown, Partner and Chair of the Africa Strategy Committee. “The heart of this approach is to enhance the level of experience for our clients and to provide assurance to clients who entrust us with their work, knowing that their matters will be handled with the same expertise and oversight whether in South Africa or by our Associate firms.”

In 2016 Adams & Adams partnered with Managing IP to introduce the inaugural Africa Roadshow in New York, with the aim of updating clients and interested parties on economic and intellectual property developments on the continent. This was followed by the firm’s hosting of the successful BRICS IP Forum in London. In 2017, Partners will welcome colleagues and registrars from across Africa for the fifth annual Africa Network Meeting – a unique event on the IP landscape. Says du Plessis, “The year ahead offers much hard work for our teams, but much potential as well.”

GERARD DU PLESSIS

Partner & Chairman
Trade Mark Attorney

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SIMON BROWN

Partner and Chair of Africa Strategy
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE ART AND LAW OF PAINTING

Allegory.  Abstract meanings.  Colour.  Light.  Perspective.

Johannes Vermeer dedicated one of his works to The Art of Painting.  It has been called the most complex Vermeer work of all.

Paintings, like that of Vermeer[1], are protected by copyright in South Africa, in terms of the Copyright Act.  Paintings are expressly listed as a form of artistic work in the Act.

The Copyright Act reserves the right to copy.  In fact, it reserves exclusively for the owner of the copyright, various acts or dealings with the intention of rewarding the expression of creativity and embodiment of skill and effort.

In the case of artistic works, these reserved acts include reproducing the work in any manner or form, publishing the work, including it in a film or television broadcast and making an adaptation thereof.

Therefore, only the owner of the copyright in a painting may make a copy of it.  The making of a reproduction (or adaptation) in any manner or form, which is done without the owner’s authorisation, amounts to copyright infringement.

Who is the owner?  In the case of paintings, the artist generally automatically becomes the first owner of the copyright, unless one of very specific exceptions listed in the Act applies.

In order for copyright to transfer, an agreement to this effect needs to be concluded.  Copyright does not transfer with the physical object but remains with the artist unless or until he or she agrees in writing that the ownership of the copyright should transfer.

The result of this is that, when you buy a painting, you buy and acquire only the physical object.  You do not acquire any rights of copyright and you may therefore not do any of the acts reserved for the owner, including making copies.

Copyright infringement attracts liability, including a claim for damages.  Trading in such infringing copies, knowing that they are so infringing, attracts both civil and criminal liability.

If any work of art is to be copied in any way, the owner of the copyright should be approached for permission to do so.

Werina Griffiths | Partner

 

[1] Copyright in artistic works lasts only for 50 years following the death of the author

WERINA GRIFFITHS

Partner | Trade Mark Litigation
Trade Mark Attorney

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GLOBAL ADVERTISING LAWYERS ALLIANCE TO HOST ADVERTISING LAW SEMINAR IN BIG APPLE

The Global Advertising Lawyers Alliance (GALA) announced today that it will hold an international advertising law seminar, “Social Media in the United States and around the Globe” in New York City on 30 March 2017. The event, which will be held at The Penn Club, is taking place in conjunction with GALA’s 15th Annual Global Meeting which is taking place in New York City from 30 March – 1 April 1 2017.

The seminar, which will focus on best practices for social media marketing compliance around the global, will include two panels, “Social Media in the USA” and “Social Media Globally.”  The program will features speakers from seven countries.

“As the issues faced by global advertisers become more complex, we’re very pleased to be able to bring together two incredible panels of experts from around the world,” said Jeffrey A. Greenbaum, Managing Partner at Frankfurt Kurnit in New York and GALA’s Global Chairman. “During these sessions, we hope to be able to give insights to advertisers that will help them market to consumers more effectively in their own countries and across borders.”

The Social Media in the USA panel will feature:

  • Laura Brett, Assistant Director, National Advertising Division
  • Joseph Lewczak, Partner, Davis & Gilbert (USA)
  • Brian Murphy, Partner, Frankfurt Kurnit (USA)

The Social Media Globally panel will feature:

  • Jenny Pienaar, Partner Adams & Adams (South Africa)
  • Ariela Agosin, Partner, Albagli Zaliasnik (Chile)
  • Irina Anyukhina, Partner, ALRUD (Russia)
  • Michel Bejot, Partner, Bernard Hertz Bejot (France)
  • Hande Hancer Celik, Partner, Gun + Partners (Turkey)
  • Peter LeGuay, Partner, Thomson Geer (Australia)

For more information about the program, click here. Admission is free, but space is limited. To register, please contact sbess@galalaw.com.

JENNY PIENAAR

Partner | Trade Mark Litigation
Trade Mark Attorney

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THE CHALLENGE OF POLICING YOUR BRAND ONLINE

Seats are limited for the Advertising & Marketing Law Conference to be held in Johannesburg on 09 May and on 11 May in Cape Town – organised by Marketing Mix Conferences.

Partner at Adams & Adams, and AdLaw expert, Jenny Pienaar has been invited to join panel discussions and to brief the audience on the challenge of policing brands in the digital space. As part of her presentation, Jenny has elected to focus on the following relevant online adlaw subjects:

Hashtags: The popularity of using hashtags as part of advertising campaigns and the advantages and risks in registering hashtag trade marks.

AdWords: The commercial value of search engine AdWords, and the use of third party trade marks as part of paid advertising strategies.

Native Advertising: A discussion on the use of native advertising and consumer perceptions relating to promoted news items online.

Hyperlinks: Copyright in online news articles, and the use of hyperlinks to acknowledge sources.

The legal experts at Advertising & Marketing Law SA 2017 have selected what they believe to be the most topical and influential issues, be it interpreting latest regulatory guidelines, and recent court precedents.

Bryanston Country Club, Johannesburg | 9 May 2017| CLICK HERE TO BOOK

Sports Science Institute, Newlands, Cape Town | 11 May 2017 | CLICK HERE TO BOOK

Jenny PIENAAR

Partner 
Trade Mark Attorney

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SÃO TOMÉ & PRÍNCIPE | NEW INDUSTRIAL PROPERTY CODE

A new Industrial Property Code approved under Decree – Law 23/2016 is effective immediately in São Tomé & Príncipe. The new Industrial Property Code defines protection for, inter alia, patents, inventions, utility models, trade marks, geographic indications and designations of origin.

Following São Tomé & Príncipe’s accession to the Banjul Protocol effective from February 2016, the new Code also recognises and makes provision for regional (ARIPO) applications in terms of the Banjul Protocol and international applications in terms of the Madrid Protocol.

Kindly contact Adams & Adams for comments on the developments and changes brought about by the new Code.

Lisa van Zuydam | Senior Associate

Mandy Swanepoel | Partner

Mandy Swanepoel

Partner
Trade Mark Attorney

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EGYPT | INCREASE IN PATENT OFFICIAL FEES

On 13 February 2017, the President of the Academy of the Scientific Research and Technology issued Executive Decree, No. 1 of 2017. The Decree, effective as of 13 February 2017, affects the official fee that is levied for the examination of patent applications in Egypt – now increased from EGP 7000 to EGP 17 530. The official fees will be reviewed annually in light of the US Dollar currency exchange fluctuations.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Egypt and across Africa, please contact africaip@adamsadams.com

Nicky garnett

Partner – Head of Africa Patents
Attorney

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nthabisheng phaswana

Partner
Attorney

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ADMINISTRATION OF JUSTICE TRUMPS PROCEDURAL TECHNICALITIES IN KENYA

The Kenyan Industrial Property Institute (KIPI) recently had to consider the effect of a party requesting an extension to file its evidence some fifteen days after the deadline to do so had already expired.

The matter involved an application for the trade mark KINGSTONE in the name of Sichuan Yuanxing Rubber Co. Ltd (“the Applicant”) and an opposition by Bridgestone Corporation (“the Opponent”). The Applicant failed to file its statutory declaration within the prescribed period and, fifteen days after the missed deadline, filed an application for an extension of time to do so. The Opponent had already, by that time, applied for the KINGSTONE application to be abandoned.

The issue for determination was whether the Registrar of Trade Marks should exercise its discretion in terms of Section 102(6) of the Kenyan Trade Marks Act in favour of the Applicant. Section 102(6) allows the Registrar to extend the time for performing any act under the Trade Marks Rules even if that time period has already expired. The Applicant alleged that its failure to timeously request an extension to file its statutory declaration was due to an oversight on the part of its legal counsel, the effect of which should not be visited on the Applicant. The Registrar granted the extension, reasoning that fifteen days was not an inordinate delay and taking into account that the Opponent would not be prejudiced and that the interests of justice dictated that the matter should be heard on its merits.

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Attorney

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SANGE APPOINTED MD OF THE KENYA INTELLECTUAL PROPERTY INSTITUTE

The recent appointment of Mr Sylvance A. Sange as the new Managing Director of the Kenya Industrial Property Institute (KIPI) has been welcomed by industry professionals worldwide. Sange has been confirmed as the director for a three-year term, as published in the Kenyan Government Gazette on 20 January 2017. Adams & Adams have worked closely with Mr Sange from his time as a Patent and Trade Mark Examiner at KIPI. The Institute has been supportive of a number of the firm’s IP initiatives geared to developing and reinforcing IP professionalism on the continent, including the Adams & Adams Africa Network Meeting (AAANM) – an annual summit that brings together the top IP practitioners and administrators from over 25 African countries.

Mr Sange first shared his shrewd vision for Kenyan and African IP development when he attended the Africa Network Meeting in Pretoria in 2014, office and was able to share the vision that he has for KIPI and Africa. This followed the opening of the Adams & Adams Kenya office in 2013 – testimony to the importance of the Kenyan market, both economically and from an IP perspective. Kenya continues to be at the forefront of harnessing its IP laws and bringing them up to par with other leading international jurisdictions. On 11 November 2016 the Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016 was published with the aim of making minor amendments to the Industrial Property Act No. 3 of 2001, the Copyright Act No. 12 of 2001 and the Anti-Counterfeit Act No. 13 of 2008.

Darren Olivier & Menzi Maboyi (Adams & Adams South Africa) with Mr Sylvance Sange, centre, (MD of KIPI)

Darren Olivier & Menzi Maboyi (Adams & Adams) with Mr Sylvance Sange (centre), new MD of KIPI

Recently a team from Adams & Adams travelled to Kenya and was cordially received by Mr Sange at the KIPI offices.

For further information and queries on trade mark, patent, and design filings in Kenya and across Africa, please contact africaip@adamsadams.com

ARIPO | INCREASE IN PATENTS OFFICIAL FEES

With effect from 1 January 2017, patents official  fees have been increased by between 5 and 15%. The decision was adopted by the ARIPO Administrative Council at its annual meeting held in Harare, Zimbabwe from 5 – 7 December 2016. During the annual meeting,  the Administrative Council  also approved amendments of the Harare Protocol which regulates the filing and prosecution of patents, utility models and industrial designs,  and consequently  adopted  new fees for services  contained in the  amendment.

For further information and queries on trade mark, patent, and design filings through ARIPO and across Africa, please contact africaip@adamsadams.com

nicky garnett

Partner – Head of Africa Patents
Attorney

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nthabisheng phaswana

Partner
Attorney

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IP COMMENTARY | MAURITIUS DRAFT INDUSTRIAL PROPERTY BILL

The Mauritius Draft Industrial Property Bill is open for comment [Download Here]. We are in the process of studying the draft, but in the meantime we are able to offer the following initial comments pertaining to Trade Marks in the Bill. This is a Bill which seeks to consolidate all aspects of IP into a single piece of legislation.

A brief summary of the changes is outlined below:-

  • Definition of a trade mark has been extended to also cover collective and certification marks. Specific grounds for the invalidation of a certification mark were added, but no similar provisions for collective marks are included.
  • Grounds for refusal of a trade mark expanded, the most notable being that a mark shall not be registered if it consists exclusively of the shape of the goods or where the shape is necessary to obtain a specific technical result.
  • Registration of a trade mark on the basis of honest concurrent use or other special circumstances may be permitted.
  • The Bill provides that if a filing formality deficiency is notified, the applicant has two months to correct that deficiency.  The filing date then becomes the date of correction of the deficiency, rather than the original filing date.
  • The Bill also provides for the division of an application into two or more applications, which will then be treated independently, retaining the original filing date.  (Useful when facing citations)
  • A remedy for unregistered marks is provided – The earlier user of a trade mark that is neither registered nor the subject of a pending application, will entitle the owner to oppose a confusingly similar trade mark by presenting the relevant evidence of such use.
  • International exhaustion of rights – the right to be accorded by the registration of a trade mark shall be exhausted once the product is put in the market by the registered proprietor or with his consent in Mauritius or any other country in the world.
  • The Bill provides for additional defences to trade mark infringement, similar to the South African Act. The defences added include:
  1. Specific provisions dealing with exhaustion of rights.
  2. If a mark is used to truthfully indicate the goods or services originating from the owner of the trade mark.
  3. Use of a trade mark to provide information regarding the intended purpose, use of compatibility of the product or services, including spare parts.
  4. Indications of a descriptive nature
  5. Own name / place of business provisions similar.
  • The proviso to the defences is that:
  1. Use must be compatible with honest practice and the mark must not be used in a manner that causes confusion.
  2. The use must not take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark.
  • The Bill amends the provisions dealing with trade mark infringement. It seems that only use of the identical mark in respect of the identical goods / services is covered (section 98(1)). The provisions dealing with similar marks or goods / services where not retained. This seems to be an omission in the Bill.
  • The Bill makes provision for partial cancellation, and expressly states that a cancelled trade mark registration is void ab initio.
  • New terminology – The head of the IP Office will be the Director as opposed to Controller under the current Act. The Bill also provides for the establishment of the Intellectual Property Council to serve as a co-ordinating body between private and public stakeholders for the effective national IP policy and enforcement.
  • The scope and composition of the Tribunal for the adjudication of IP matters defined.
  • New provisions are made for registration of Geographic Indications, defined as an indication which identifies any goods as originating in the territory of a country, or a region or locality in that country, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin. The nature of the right, scope and duration outlined.
  • The provisions relating to International Registrations via the Madrid Protocol are set out, although Mauritius has yet to join the Madrid system.
  • The Bill introduces a statutory prescription period of 5 years for any proceedings in terms of the Bill.

For further information and feedback or advice, contact our team now.

Megan Moerdijk | Partner

Kagisho manyashi

Senior Associate
Trade Mark Attorney

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wensel Britz

Senior Associate
Trade Mark Attorney

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GULFTEX v GULF | TRADE MARK OPPOSITION IN KENYA

In a recent decision of the Assistant Registrar of Trade Marks in Kenya, an opposition to trade mark application no. KE/T/2012/76147 GULFTEX (depicted below) in class 4 by Gulf International Lubricants was upheld.

gulftex-logo

The opposition was based on prior registrations in Kenya for the GULF trade marks in class 4, in respect of the identical goods (being oils and lubricants), and the fact that these trade marks are well-known.

gulf-logoWhen assessing the similarity between the GULFTEX and the GULF and GULF logo marks, the Registrar took into account that while marks must be viewed as wholes, marks are identical where they reproduce, without any modification or addition, all the elements constituting the mark, or where when viewed as a whole, they contain differences so insignificant that they can go unnoticed by an average consumer.

The Registrar found that the dominant element of the marks is the word GULF and that the addition of the suffix “TEX” to the word “GULF” by the Applicant is insignificant and does not enable the Applicant’s mark to act as a badge of origin for the goods in respect of which registration is sought in class 4. This was found to be due to the fact that the Applicant had admitted that the term “TEX” is borrowed from the English term “texture” which had been incorporated in the Applicant’s mark to denote that texture of the products. The term was found not to distinguish the mark.

While the Registrar again recognised that the marks must be considered as wholes, without splitting them into their respective elements, the Registrar did find that the structure of the trade mark is key when considering the similarity of the two marks and that where prefixes are identical or similar, confusion or deception is likely to occur, as compared to where the similar or identical elements are suffixes.

In an effort to distinguish the goods covered by the application as compared to the goods covered by the prior registrations for the GULF and GULF logo marks, the Applicant argued that the parties’ products had different characteristics such as colour, dropping point, the soap type, texture, temperature range and viscosity.

The Registrar held that these type of characteristics are not relevant when assessing the similarity of goods and that the test established and applied in other cases, including the case of British Sugar PLC vs James Robertson and Sons Limited, is applicable.

Contrary to what the Applicant argued, the Registrar found that the mark GULF has nothing to do with the character of goods in class 4 nor is it descriptive of such goods.

The GULF trade mark was found to be a strong mark which should be afforded protection.

With regard to the second ground of opposition, the Registrar went through the exercise of discussing all of the factors and evidence which is required in order to prove that a mark is well-known, particularly in Kenya, but found that insufficient evidence had been adduced to prove that the GULF trade marks are well-known in Kenya.

Registration of the GULFTEX trade mark in class 4 was nevertheless still refused on the basis that it is so similar to the GULF trade mark that registration would be contrary to the provisions of Section 15(1) of the Trade Marks Act, Cap 506 of the Laws of Kenya, and results in a win for Gulf International Lubricants Limited.

By Lisa van Zuydam | Associate

Kelly Thompson | Partner

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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‘TIS THE SEASON OF COUNTERFEITING | BRAND HOLDER REMEDIES

Dealing in counterfeit goods is unlawful as set out in the Counterfeit Goods Act no. 37 of 1997.

Brandholders who wish to protect their brands against the importation, manufacture and sale of counterfeit goods may rely on their intellectual property in the form of trade marks or copyright in order to apply for a formal search and seizure warrant.

Once the warrant has been granted, a search and seizure operation will be executed by the relevant law enforcement agencies. The counterfeit goods found at the premises will then be formally seized, transported to a designated counterfeit goods depot and securely kept as evidence.

Brandholders may elect to pursue civil and/or criminal proceedings against the infringer. The remedies set out in the Counterfeit Goods Act can be far-reaching.

During the festive period, the sale of counterfeit goods is rife and we are in a position to assist brandholders with any concerns pertaining to the importation, manufacturing and sale of suspected counterfeit goods in South Africa.

For more information, please contact our anti-counterfeiting team.

godfrey budeli

Partner
Trade Mark Attorney

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ARIPO | 40th ANNUAL COUNCIL SESSION IN HARARE

 

 

ARIPO held its 40th Administrative Council Session in Harare, Zimbabwe from 5 -7 December 2016 . During the session,  the Administrative Council approved amendments of the Harare Protocol which regulates the filing and prosecution of patents, utility models and industrial designs. The approved amendments include new provisions regarding the following:

  • Inventions excluded from patentability
  • Requesting substantive examination .
  • Restoration of rights in respect of patents, utility models and industrial designs
  • Post grant  amendment  of the claims

The Administrative Council also approved an increase  of the  official fees in respect of patents and the introduction of new fees for certain patent related services.

We expect the  amendments  to  come  into effect from 1 January 2017. Should you require additional information on patent and design protection in ARIPO, please feel free to contact us.

nicky garnett

Partner – Head of Africa Patents
Attorney

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nthabisheng phaswana

Partner
Attorney

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simon brown

Partner | Co-Chairperson – Trade Marks Department
Trade Mark Attorney

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CHANGES TO TRADE MARK LAW INTRODUCED BY LIBERIA IP ACT

 

The new Liberian Industrial Property Act, 2014 (“the New Act”) was approved by the Liberian House of Representatives on 14 June 2016 and is now in force.  The new Act repeals both the Copyright Act of Liberia 1997 and the Industrial Property Act of Liberia, 2003 (“the 2003 Act”) and provides for the protection of Copyright, Trade Marks, Geographical Indications, Industrial Designs, Patent and Utility Models and lay-out designs of Integrated circuits.

The Regulations are still being drafted and there is, accordingly, still some uncertainty regarding a number of aspects.

Types of marks

Liberia acceded to the Madrid Protocol in 2009, although its national legislation did not make provision for the filing of international trade mark applications.  One of the most significant developments is that the New Act makes provision for the filing of international applications under the Madrid Protocol. Provision is also made for honest concurrent user applications, the registration of non-traditional trade marks, including colour and shape marks and Certification marks, which is defined as:

a sign that is used to indicate the specified standards or characteristics, including quality, origin or method of production, have been complied with in respect of goods or services as certified by or under the control of the holder of the registration of the mark”.

The New Act has also redefines a “collective mark” as:  “any mark that belongs to a collective organization such as a cooperative, an association or a federation of industries, producers or traders”.

Registrability and opposition

The New Act provides for a wide range of circumstances in which a trade mark cannot be registered.

After the examination of an application, the application will be published for opposition purposes and any interested person may, within the prescribed period and in the prescribed manner, file with the Director General a notice of opposition. The Act does not, however, prescribe the opposition term and no Regulations, in this regard, have been implemented as yet.  The opposition term is therefore uncertain.

Infringement

The New Act entitles the registered proprietor to prevent an unauthorised third party from carrying out the following acts:

  1. affixing an identical mark on goods in respect of which the mark has been registered, or on goods associated with the services for which the mark has been registered, or on the containers, wrapping or packaging of such goods;
  2. suppressing or distorting the mark for commercial purposes after it has been affixed;
  3. manufacturing, selling, offering for sale, distributing or stocking material bearing the relevant mark or may be used as labels, containers, wrappings, packaging, business paper or advertising;
  4. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or service, where such use may cause a risk of confusion or association with the registered proprietor, provided that were an identical mark is used in relation to the exact goods in respect of which the mark has been registered, a likelihood of confusion shall be presumed;
  5. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or services, where such use may cause unfair economic prejudice to the registered proprietor, or take unfair advantage of, dilute or otherwise be detrimental to the distinctive character or advertising value of the trade mark, or would take unfair advantage of the reputation of the mark or registered proprietor; and
  6. using publicly, a mark identical or similar to the registered trade mark, even for non-commercial purposes, where such use may dilute the distinctive character or advertising value of the mark, or would take unfair advantage of the reputation of the mark or registered proprietor.

It is interesting to note that use of an identical or similar mark to the registered trade mark, in the course of trade for non-commercial purposes may constitute trade mark infringement. The New Act also purports to protect the advertising value of a trade mark.

The New Act stipulates a number of acts which shall be regarded as use of the mark in the course of trade, including the use of a mark in oral communications, irrespective of the means of communication or media used.

The New Act sets out various acts which shall not constitute trade mark infringement, such as the parallel importation of genuine goods, provided that the goods and its packaging or wrapping have not suffered any alteration or damage.

Cancellation and invalidation of registered trade marks

According to the New Act, any interested person may request the Director General to invalidate the registration of a trade mark in relation to some or all of the goods or services for which the trade mark has been registered.  Invalidation proceedings based on prior rights may, however, only be filed within 5 years after the date of registration of a mark, unless the mark was registered in bad faith. There is no time limit on filing a request for invalidation on any other ground.

A registered trade mark may be vulnerable to cancellation if:

  1. the mark has not been put to genuine use in Liberia, in relation to the goods and services in respect of which it has been registered, within 3 years after registration of the mark, and there are no justified reasons for such failure to use;
  2. substantive use of the mark has been suspended for an uninterrupted period of three years and there are no justified reasons for such failure to use;
  3. as a result of any act or failure by the registered proprietor, the mark has become a common name or the only effective designation available for use in the ordinary course of trade in respect of the goods or services for which it is registered; or
  4. as a result of the manner in which the registered proprietor used the mark, or allows the mark to be used, the mark is likely the mislead the public, particularly as to the nature, quality or geographical origin of the goods or services in respect of which it is registered.

If use of a registered mark commenced or resumed after the expiry of the three year period referred to above and not less than one month before cancellation proceedings is instituted, the registration will no longer be vulnerable to cancellation. The onus is on the registered proprietor of the mark to show that the mark has been used during the relevant period

Well-known marks

A well-known distinctive mark shall be infringed by the unauthorised use of a mark identical or confusingly similar to that distinctive mark, where such use would indicate a connection between the goods and services of the owner of the well-known mark or the reputation of the mark or its owner is likely to be damaged by such use.

The Act lists the following factors which shall be taken into consideration to determine whether a mark is well-known:

  1. the degree of knowledge of the sign among members of the relevant sector of the public within Liberia;
  2. the duration, scope and geographical extension of the use and/or promotion of the mark, inside and outside of Liberia;
  3. the existence and age of any registration or application for the mark in Liberia or elsewhere;
  4. actions taken to defend the mark, in particular any decisions made by national or foreign authorities, where the mark was considered to be well-known; and
  5. the amount spent on promoting the mark, the establishment, activity or relevant goods or services to which the mark applies.

The New Act expressly states that a mark will be considered to be well-known if it is generally known in one relevant sector of the public. The various relevant sectors of the public are referred to as:

  1. actual or potential consumers of the relevant type of goods or services;
  2. persons involved in marketing or distribution channels of the relevant type of goods or services; or
  3. the entrepreneurs in the business circles relating to the relevant type of goods, services, establishment or activity.

Licensing and assignment

Licensing of a registered trade mark is recognized and licence agreements must provide for the effective control by the licensor, of the quality of the goods or services of the licencee in connection with which the mark is used. If the agreement does not provide for such quality control, or such control is not effectively carried out, the agreement will be invalid.

Assignments shall be in writing and duly executed.

by Lize-Mari van Dyk | Associate

EU IP DEVELOPMENTS AND THE IMPACT OF BREXIT FOR HOLDERS OF EU IP RIGHTS

EU IP DEVELOPMENTS

A number of changes, which came into force on 26 March 2016, were made to the EU Regulations, affecting EU trade marks and designs.

The Office for Harmonisation in the Internal Market (OHIM) is now known as the European Union Intellectual Property Office (EUIPO) and a Community trade mark (CTM) is now referred to as a European Union Trade Mark (EUTM).

Article 28 of the Regulations provides that trade marks registered for class headings will now only be protected for goods/services that fall within the literal meaning of the goods/services listed in the class heading (and any other goods/services specifically listed). This will severely limit the scope of protection of some EU trade marks and trade mark proprietors will now no longer be able to claim wide rights in an entire class heading. Owners of EU trade mark applications/registrations filed before 22 June 2012 and which were filed covering the broad class headings were allowed to amend their specifications to use more specific/precise wording by submitting a written Declaration between 23 March 2016 and 23 September 2016, in line with the requirements of the EU Regulations. No extension of the deadline of 23 September was allowed. The Regulations provide that the Declaration would be examined and published in the EU Bulletin. If no acceptable Declaration was filed in time, proprietors’ EUTM registrations are deemed to protect only the goods/services covered by the literal meaning of the class heading.

Changes to fees payable for trade mark applications were also implemented after 23 March. The official fee to file one application now only covers one class, where it previously covered up to 3 classes. A number of changes were also introduced regarding the enforcement of EUTM applications but I will not detail any here.

The Regulations also provide that “in order to allow for more flexibility while also ensuring greater legal certainty with regard to the means of representation of trade marks, the requirement of graphic representability should be deleted from the definition of an EU trade mark. A sign should be permitted to be represented in any appropriate form using generally available technology and thus not necessarily by graphic means, as long as representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective“.  The removal of the graphic representation requirement should make it possible to apply for the registration of non-traditional trade marks in the EU.

The European Commission has expressed clear intentions to reform and harmonise copyright law across the EU in terms of its Digital Single Market Initiative. It has been submitted that this will be the EU’s most significant copyright reform. On 14 September 2016, the President of the European Commission, Jean-Claude Juncker, at his State of the Union Address, addressed problems with current EU copyright laws. The most controversial of the proposals is a new reform to provide publishers with rights already afforded to authors, performers, film and record producers (similar to current copyright laws) for online use of their news publications, so that they would be fairly remunerated for their work made available online. The proposal would also allow publishers to benefit from possible future restrictions to hyperlinking, following the recent CJEU decision in GS Media BV v Sanoma & Others.  The idea is to allow publishers to secure license fees from search engines and other intermediaries who use their content for up to 20 years from publication and to place extra obligations on them for when users and third parties upload infringing content.

The proposed reforms have been welcomed by many news and media agencies, saying the proposal has addressed the unsatisfactory situation whereby high quality content produced by press publishers contributes to the success of many online platforms that do not make a significant contribution to the content and where publishers do not benefit from an appropriate share of the value produced. However, the proposals have also been heavily criticised and petitioned by many who feel that they are more of a regression in the digital area (rather than amounting to reform) and will have the effect of limiting access to information and/or increasing the price of content online.

Mozilla, the creator of internet browser Firefox has stated that the proposals will create an environment of legal uncertainty for online users/businesses and result in blocking of freedom of speech and innovation online and create unnecessary barriers of entry for small businesses. They also stated that clauses relating to fair dealing or fair use in a clearly defined way should have been included in the proposals and that it is up to the European Parliament and EU member states to review the proposals and make amendments. OpenMedia.com have said the proposals strike a blow at the very foundations of an open internet and if made law, the EU will fall behind when it comes to digital innovation. Concerns have mounted that what will follow will be similar to what happened in Spain when the introduction of a similar law led to the closure of many businesses who relocated to countries and markets outside of the EU. There are clear competing interests at hand but nevertheless, Mr Juncker expressed on 14 September that the EU Commission is on track to implement the reforms by the end of this year.

IMPACT OF BREXIT FOR HOLDERS OF EU IP RIGHTS

There is a general consensus that the UK’s decision to exit the EU has and will continue to affect how clients do business across various sectors in the UK and EU.  While we may have already witnessed some economic effects, we are yet to see the long term consequences that Brexit will have on the UK’s trade, imports and exports, banking and financial services, various areas of the law, etc. It is impossible to cover all the likely ramifications relating to Brexit in a simple article but I will say that the legal consequences are likely to develop and materialise over some length of time. Here, I discuss the possible impact Brexit may have on intellectual property rights, with a particular focus on trade marks.

Currently, a single trade mark application filed in the EU (EUTM) provides protection in 28 member countries of the EU, once it has proceeded to registration.  A registered community design (RCD) is similar in that it also provides protection in the EU by way of a single registration.  Brexit will not affect UK national trade mark and design registrations.  However, Brexit has sparked concerns regarding clients’ trade mark and design rights in the UK where they secured protection via an EUTM or RCD. In a recent Adams & Adams article by Claire Bothma and Simon Brown (dated 24 June 2016), it was stated that in the short term, a UK exit from the EU will have no effect on existing EUTM registrations but that once the UK’s withdrawal from the EU has been ratified, we believe that current EUTM registrations would no longer cover the UK. The article also states that we expect that appropriately enacted legislation will be implemented to ensure that such rights continue to have force in the UK and that there will likely be transitional provisions available to partially convert existing EUTM registrations into UK national trade mark registrations, which may also enjoy the same (earlier) filing dates.  As such, the mentioned article provides that, for now, clients’ trade mark rights in the UK, covered by an EUTM registration, appear to be secure.

However, uncertainties do remain until the UK formally exits the EU.  We hope that transitional arrangements will be implemented to partially convert registered EUTMs to national UK trade mark registrations, at the UK Trade Mark Office, while preserving their original filing dates, but there is speculation that this would be an enormous administrative undertaking and may not be feasible.  By contrast to EUTM applications, a national UK trade mark application requires the applicant to declare either that the mark is in use or that the applicant has a bona fide intention to use the mark in the UK.  As such, the UK Trade Mark Office might require proof of use before EUTM registrations can be converted into national trade mark registrations in the UK (if they are vulnerable to a non-use attack).  There are also questions regarding the validity of registered EUTMs whose geographical use is specific to the UK.  With regard to the latter, proprietors of registered EUTMs who have used their trade marks only in the UK for now, should consider operating in other EU member states to avoid cancellation actions on the basis of non-use.

As a result of the uncertainties present and in order to minimise any risks during the transitional period (where negotiations to exit the EU may be a lengthy process), it is advisable that owners of EUTM registrations which consider the UK to be an important market, to consider filing national UK trade mark applications now, rather than wait and see what happens when the UK formally exits the EU. One could also consider applying to extend an existing International Registration (in terms of the Madrid Protocol) to the UK, if that country was not originally designated at the time of filing an International Registration. For any new trade marks requiring protection, I recommend filing in both the EU and UK, if both territories are important to clients’ businesses.

By virtue of its current EU membership, the UK enjoys benefits of various Free Trade Agreements (FTAs) that the EU has negotiated with third countries, including the U.S.A.  The free movement principles currently provide that most goods can be traded and moved between EU member states without tariffs and customs duties, irrespective of the origin of the goods.  It has been submitted that after the ratification of Brexit, there is a strong likelihood that the UK will lose those benefits and will have to re-negotiate its own FTAs with various countries, separately from the EU, at the same time that it negotiates its withdrawal from the EU.  This will undoubtedly have an effect on clients’ UK IP rights as anything influencing trade, generally, influences IP rights.

Current EU legislation provides that judgments of a court in one EU country will generally be recognised in another EU country.  Having regard to the UK’s close relationship with the EU for many years, there has generally been a gravitation towards a “European” interpretation of its laws.  Now, the question is how will English judgments be treated post Brexit? Will there be a movement away from a “European” interpretation of the law?  Currently, it is not clear to what extent EU principles and laws will continue to apply in the UK.  Some commentators have advised that, in general, EU laws will no longer apply in the UK unless they have been implemented in the UK by Acts of Parliament.  Some commentators have expressed the view that if the UK remains part of the European Economic Area (EEA), most of the UK’s intellectual property laws are likely to stay closely aligned with EU law but if the UK steps out of the EEA, its laws may begin to depart from EU law over time. Clients enforcing their IP rights will most likely need to initiate proceedings in the EU and UK separately, once the UK formally withdraws from the EU, which will increase IP enforcement costs.

Since some of the UK’s copyright law is based on international Conventions (such as the Berne Convention and WIPO Copyright Treaty), the UK’s copyright law should remain unaffected by Brexit and it is unlikely that the UK will repeal its national copyright legislation (i.e. the Copyright Designs and Patents Act 1988).  In this regard, it has been submitted that the UK will retain EU law influences derived from the EU Copyright Directive and decisions of the CJEU (Court of Justice of the European Union). In the long term, however, UK copyright law might start to diverge from EU law.  This remains to be seen.  It is currently uncertain whether or not the UK will be involved in the EU’s Digital Single Market initiative (mentioned above).

UK patent law is based on national UK legislation, in the form of the Patent Act 1977.  Currently, patent applicants may secure protection for their inventions in the UK in 2 different ways: a) by filing a national patent application at the UK’s Intellectual Property Office (IPO) or b) by filing a European patent application at the European Patent Office (EPO).  On 2 August 2016 the IPO published its first official Statement since the EU referendum regarding the impact of Brexit on IP rights in the UK. The primary message in the Statement is that the UK remains a part of the EU until the negotiations to exit are concluded. Regarding patents, the IPO confirmed that the UK will remain part of the European Patent Convention system since this Convention was not established through EU legislation. As such, it will still be possible for applicants to apply for European patents designating the UK via the European Patent Office.  However, the UK’s involvement with the EU’s proposed unitary patents and Unified Patent Court (UPC) system has been the topic of much debate since the Brexit vote.

The EU member countries have spent over 40 years trying to establish a unitary patent that would cover multiple EU countries and a common Court for patent disputes. This, to simplify patent processes and reduce costs for businesses. Twenty five of the EU states signed the Unified Patent Court Agreement (UPCA) in 2013 in this regard. It was required for the UPCA to be ratified by 13 countries (including the UK) in order for the Agreement to come into force. 10 countries have ratified the Agreement so far and it was expected that the UK would do so before the end of 2016 and that the new unitary patent system would come into force in early 2017.  After the EU Referendum vote, much speculation followed as to whether the proposed unitary patent and UPC would happen at all (as the UK was a required signatory to the agreement and one of the countries needing to ratify the UPCA for it to come into force) or whether it would be delayed. Another question raised was whether the remaining UPC countries would possibly re-negotiate a new UPC Agreement specifically excluding the UK. On 2 August, the IPO advised that for now, while the UK is still a member of the EU, it will continue to participate in meetings regarding the proposed unitary patents and Unified Patent Court (UPC) system.  The Chartered Institute of Patent Attorneys (CIPA) has indicated a strong preference for the UK to participate in the proposed Unified Patent Court.

On 13 October 2016 at the London IP Summit, Alexander Ramsay (the chair of the UPC Preparatory Committee) said that delays to implement the UPC System on account of Brexit should be avoided and that the UK government should make a swift decision as to whether it still wants to be part of the UPC or not. He confirmed that the UPC will continue regardless of whether the UK participates or not and that if the UK opts out of the UPC, or cannot provide a definitive answer, the agreement would have to be re-negotiated. Another panellist at the summit, Dr Ben Grau (patent attorney), advised that he believes it could be up to 5 years before a decision is made and a solution is reached. It seems there will only be clarity on the issue once the UK formally withdraws from the EU and all Brexit related negotiations have been completed.

Various contracts involving IP rights such as, inter alia, license agreements and manufacturer and distribution agreements will need to be reviewed by clients in terms of Brexit implications, e.g. whether to identify the UK separately from the EU in certain clauses and whether to specifically identify UK laws associated with IP enforcement. If negotiating new contracts, clients should consider whether provisions should be included to cover the transitional period and likely changes after the UK’s formal withdrawal from the EU.

On 8 June 2016 following a proposal from the European Commission, the European Parliament and the Council adopted a Trade Secrets Directive that aims to standardise the national laws in EU member countries against the unlawful acquisition, disclosure and use of trade secrets. According to the European Commission, “a trade secret is a form of intellectual property that is a valuable piece of information for a business that is treated as confidential and which gives that business a competitive advantage”. Member states of the EU are required to implement the Trade Secrets Directive by 9 June 2018.  Following the Brexit decision, it is now unclear if the UK will implement domestic legislation to enforce the Trade Secrets Directive by the abovementioned deadline.

Brexit should not affect the UK’s membership of the World Intellectual Property Organisation (WIPO), set up under the WIPO Convention.

The UK and EU are also members of the World Trade Organisation (WTO) in their own right but the European Commission alone represents the EU and all EU member states (including the UK) in practically all WTO meetings. As such, the influence of Brexit on the UK’s membership of the WTO and how the UK will engage in future meetings will now need to be addressed.

Although EU intellectual property laws will remain in effect until the UK formally withdraws from the EU (i.e. at least another 2 years away), clients (including South African businesses) should be mindful of the anticipated changes in securing and maintaining their IP rights in the UK.  Feel free to contact us should you have any questions relating to the above.

By Catherine Wojtowitz | Associate

 

 

 

INTRODUCING | ADAMS ON AFRICA

Adams on Africa is a new quarterly digital publication by Africa’s largest IP firm and one of the continent’s most prestigious commercial, corporate and property law practices. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback.

Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

 

AFRICA | REGIONAL HIGHLIGHTS

Dr Kanayo Nwanze, President of  the International Fund for Agricultural Development, recently opened the Africa Together Conference at Cambridge University with the question: “When more than three hundred million men, women and children still live in poverty on the African continent, a land with so much wealth and potential, we must ask ourselves what our role (as Africans) is in engendering an inclusive Africa? Development starts with people, not structures. We must invest in our people.”

More than 8 000 miles to the south of the Africa Together Conference, the delegates at the Africa Network Meeting in Pretoria were tackling a similar question – how to preserve the legacies and intellectual capital of Africa for Africans.

Renowned actor, director, writer and playwright, John Kani, welcomed the intellectual property law professionals who had gathered for the 4th Africa IP Network Meeting at the offices of Adams & Adams in Pretoria. Kani, who was opening the meeting as guest speaker, captivated the audience with stories of his upbringing and his time in Hollywood – including his latest role as an African monarch in Marvel’s Captain America film franchise. “I was cast as an African monarch in a fictional North-African kingdom and I asked them very nicely whether I could speak Xhosa, instead of that ‘Tarzan’ dialect that Hollywood loves so much,” he joked. “We need to think carefully about how we protect and advance our continent’s rich history, legacy and inherent intellectual property.” It was a sobering thought for the delegates. Adams & Adams has been particularly active in the area of Legacy Intellectual Property rights, with recent work being undertaken for the Steve Biko Foundation by Partner Darren Olivier and his team.

In welcoming the attendees, both Gérard du Plessis, Chairman and Simon Brown, Partner, stressed the importance of IP law professionals and IP administrators in sharing their experiences and updates on IP developments and legislation as the firm and its associated offices continue to develop best practice IP strategies for clients.

Then it was down to business as the meeting discussed and debated industry matters such as IP commercialisation, the handling of opposition IP proceedings in multiple jurisdictions, and registry practices and search capabilities.

High on the agenda was the issues currently being experienced with the Madrid Protocol – a system of international registrations, administered by the World Intellectual Property Organisation that allows for the centralised registration and management of trademarks. Of the 37 African territories who are currently members of the Madrid Agreement/Protocol, only seven have properly “domesticated” the protocol through appropriate amendments to their national trademark legislation, together with the implementation on enabling regulations.

Speaking at a recent Madrid system think-tank at Adams & Adams, Stephen Hollis, Partner, noted that “one of the core issues with the national applicability of IP treaties, such as the Madrid Protocol, is that additional direction, procedures and mechanisms need to be put in place on a national level to ensure that the national IP Office is equipped to deal with and process International Registrations and also how to deal with objections, oppositions and so forth. Even national trademark legislation is not considered to be enacted properly until the so-called ‘enabling regulations’ have been promulgated. Enabling regulations supplement and complete trademark legislation by formally determining the processes and procedures through which the provisions of the legislation can be practically implemented and fulfilled by the national trade marks office concerned”.

Strategies to deal with Madrid, as well as the current implementation of the Industrial Property Automation System in registries across the continent, were also discussed, followed by regional updates from Associates from offices in Egypt, Ghana, Tanzania and Zimbabwe.

Queries regarding trademark, patent, design and copyright registrations, prosecution and litigation in Africa should be directed to mail@adamsadams.com  or through the website www.adamsadams.com

REGIONAL HIGHLIGHTS

NORTH AFRICA

Egypt

The Ministry of Supply and Internal Trade introduced a new system of enforcing the protection of trademarks and of limiting infringements. Through a smartphone application or text message, consumers will be able to verify instantly whether or not a particular product is genuine. The verification message would include the product’s name and expiration date. Trademark owners are able to place a sticker on all products that are sold in the Egyptian market and are registered with the Egyptian Trademarks Office.

Egypt’s Ministry of Trade and Industry also amended the rules overseeing the registration of factories qualified to export certain products to Egypt. The new decree requires factories and companies to export listed products and to register their trademarks with the General Organisation for Export and Import Control (GOEIC). egypt@adamsadams.com

Algeria

The North African state of Algeria became a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in the fourth quarter of 2015. It gives a trademark owner the possibility of having a mark protected in several countries by simply filing one application with a single office. Brand owners in Algeria will also benefit by gaining access to the territories covered by the Madrid Protocol for international trademark protection. However, Megan Moerdijk, Partner at Adams & Adams, encouraged brand owners to consult with her office first as the effectiveness of the Madrid Protocol – particularly referencing enforcement – has not yet been fully tested in Algeria. algeria@adamsadams.com

Tunisia

Tunisia became one of the latest African territories to ratify the WIPO’s Beijing Treaty on Audiovisual Performances. The Beijing Treaty on Audiovisual Performances, adopted in June 2012, deals with the intellectual property rights of performers in audiovisual performances. It grants performers four kinds of economic rights for their performances fixed in audiovisual fixations, such as motion pictures: 1. The right of reproduction. 2. The right of distribution. 3. The right of rental. 4. The right of making available. tunisia@adamsadams.com

Morocco

Effective March 2016, the official fees for trademark applications submitted online has been increased by 20%. Renewal official fees have also been increased by 20%. morocco@adamsadams.com

EAST AFRICA

IP developments in East Africa, especially the EAC will be significantly shaped in the near future by implementation of the EAC Customs Union protocol which permits free movement of goods. More countries in the region are adopting border measures to curb counterfeits, but brand owners need to remain vigilant, not only in registering IP rights, but also changes in user licenses or distribution agreements.

Kenya

In May 2016 the International Convention for the Protection of New Varieties of Plants (UPOV Convention revised in 19 March 1991) entered into force in Kenya. Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member in 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya through Seed and Plant Varieties Act Cap 326.

Kenya’s Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs). With regard to assignment and licenses, the draft seeks to modify the procedure for verification of assignment of copyright works from outside Kenya. The proposed procedure requires KECOBO to issue a certificate of verification upon successful application for verification with necessary supporting documents. Thereafter, the verified assignment shall be entered in the Copyright Register upon payment of a registration fee as set out in the Second Schedule. For queries in this regard, email kenya@adamsadams.com

Ethiopia

The Council of Ministers Regulation No. 273/2012 of December 2012 on Trademark Registration and Protection brought into force changes such as the application of cancellation and invalidation procedures and the extension of the renewal period from six to seven years. Priority claims are now recognised and the international classification of goods and services will be followed. ethiopia@adamsadams.com

Uganda

The Industrial Property Act, 2014 for patents, utility models, technovations and industrial designs is undergoing a review with respect to the employee/employer relationship on inventions. uganda@adamsadams.com

Tanzania

A new Industrial Property Act is being developed that will ensure the consolidation of patents and trademarks, and include industrial designs and trade secrets. tanzania@adamsadams.com

Rwanda

Rwanda became a member of the Madrid Protocol in 2013 and the IP registry is expected to be ready to start receiving and implementing new applications using the Madrid System. Related to this, Rwanda has also started using an Industrial Property Automation System, which has made filing of trademarks and patents easier and faster, while automatically keeping record of all applications submitted. Clients are encouraged to email rwanda@adamsadams.com for assistance and details of the effectiveness of the Madrid system in Rwanda.

WEST AFRICA

Ghana

Ghana has amended its Trademarks Act and has expanded the meaning of a “trademark” to now include: “…colours, numerals, shapes, holograms, sounds or a combination of any of these elements, or slogans, where they are not long enough to be protected by copyright”. The Trademarks Registry has not yet, however, recorded any applications to register sounds or holograms. ghana@adamsadams.com

The Gambia

Adams & Adams continues to synergise and expand its African network. Sub-saharan Africa’s largest intellectual property law firm, Adams & Adams, recently established an Associate office in The Gambia which also services Liberia and Sierra Leone. This brings to 18 the number of associated offices in different African countries that form part of the Adams & Adams Africa Network.

“Our focus has always been to add exceptional value to our clients’ experience,” says Simon Brown, Partner and Chair of the Africa IP Committee. “We target strategic associations with firms whose work ethic and standards mirror those of our own. At the heart of this approach is a desire to enhance the experience for the client and to add a high level of comfort to clients in knowing that the matter will be handled the same whether in South Africa or at our Associate firms. High standards are expected of our offices and we ensure continued adherence by a rigorous due diligence process that each Associate firms must undergo. Our strategy remains to empower our Associate offices by exposing them to our lawyers’ vast legal knowledge accumulated over the 109 years that Adams & Adams has been in operation.” thegambia@adamsadams.com

Nigeria

This year, Nigeria passed the Cybercrimes Act, which paves the way in finding solutions to the upsurge of cybersquatting and other internet offences that are currently increasing by the day in Nigeria. The Cybercrimes Act specifically criminalises the act of cybersquatting and therefore makes it an offence to register or use an internet domain name with bad faith i.e. with an intent to profit from the goodwill of a trademark belonging to someone else or to make a profit by selling the domain name to the rightful owner. nigeria@adamsadams.com

SOUTHERN AFRICA

Mozambique

The Mozambique Industrial Property Code was recently approved by Act No. 47/2015 – the most significant IP legislative development in the past decade. The code establishes specific rules applicable to the protection of industrial property rights, and defines the rights and obligations arising from the granting of intellectual property rights. mozambique@adamsadams.com

Zambia

Zambia has passed into law the new Industrial Design Act No. 22 of 2016 repealing the Registered Designs Act of 1958. The new Design Act came into force on 6 June 2016. Some of the new provisions contained in the new act are as follows:

  • Worldwide novelty requirements;
  • Grace period and exceptions in respect of disclosure of the design in order to comply with novelty requirements;
  • Restoration of rights lost due to non-payment of maintenance fees;
  • Amendment of a design application; and
  • Opposition of design registration by a third party, including the state.

The new act also introduced changes in respect of the term of a registered design. The 1958 Act provided for a registration term of five years extendable upon payment of renewal fees for two further five-year terms. According to the new act, the term of registration is five years from the filing date, renewable upon payment of renewal fees for a further period of five years. Furthermore, while the 1958 Act made provision for a foreign filing licence in respect of new foreign design applications by a person ordinarily resident or domiciled in Zambia, the 2016 Act is silent in this regard. zambia@adamsadams.com



ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

 

PURE WATER ON TAP

 

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

On 6 July 2016, the Intellectual Property Consultative Framework was approved by Cabinet, following the Draft National Intellectual Property (IP) Policy that was published for comment in 2013. Dr Charleen Rupnarain, Associate at Adams & Adams, delves deeper into what it means for intellectual property in SA.

The framework is the first step in a new process to develop a comprehensive IP policy for South Africa. Feedback from the previous Draft IP Policy focused on a lack of recognition of public comments and the new framework takes cognisance of this and seeks to remedy it by finalising the policy in a co-ordinated approach between both government and society.

The framework sets out that the IP Policy should promote the following objectives:

  • Engender the ethos of the Constitution
  • Align SA’s IP regime to the National Development Plan and industrial policy
  • Develop a co-ordinated intergovernmental approach to IP
  • Strike a balance between the creators and users of IP
  • Stimulate innovation
  • Facilitate developing key industries while balancing public interest
  • Adopt a co-ordinated approach to IP in sub-regional, regional and international forums
  • Promote public health

The new framework also recognises that there are a number of issues that will be affected. Key issues have been divided into “immediate”, “medium-term” and for “monitoring and evaluation” in order to prioritise urgent issues over ones that may require more in-depth consideration. IP issues surrounding public health (including medicines, vaccines and diagnostics) have been classed as an immediate priority in finalising the new policy, and the following are listed as immediate issues to be dealt with in the new policy:

  • Local manufacture and export in line with industrial policy
  • Substantive search and examination of patents
  • Patent opposition
  • Patentability criteria
  • Disclosure requirements
  • Parallel importation
  • Exceptions
  • Compulsory licences
  • IP and competition law

The framework also provides for the establishment of an Inter-Ministerial Committee (IMC) as an urgent need. Initually, this committee will serve as a consultative forum for formulating the IP Policy. With respect to the immediate concern of substantive search and examination of patents, the first group of twenty patent searchers and examiners has already been appointed and begun the two-year training programme. The goal is that training will be completed by December 2017 and that substantive search and examination will begin in January 2018, following the enactment of the IP Policy.

The CIPC aims to repeat this recruitment process every two years with candidates from technical fields, such as chemistry, biochemistry, biotechnology, electrical engineering, mechanical and mining engineering, pharmaceuticals, and information technology. It’s been proposed that initially substantive examination of patent applications will only be in respect of certain technical fields.

The Department of Trade and Industry provided the deadline of 30 September 2016 for the public to submit comments. See A&A Comments HERE. Following this, there’ll be continuous engagement between government and the public, including round-table discussions and workshops. The goal is that the IP Policy, which will address immediate issues and provide a framework for in-built agenda, will be finalised by March 2017.


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

PHILANTHROPY’S PURPLE RAIN

A few years ago, the front page headline of the Wall Street Journal stated boldly “Charity Brawl: Non-profits Aren’t So Generous When a Name’s at Stake” referring to the stinging criticism received by a celebrated charity for enforcing their rights over part of their name.

The palaver prompted a retort from Dan Pallotta, a renowned philanthropist who’s evangelical about the need to change the mindset of how we see charity, and for charities to change their perception of themselves. His response was followed by an insightful article published in Boston College Law Review by Lauren Behr entitled Trademarks for the Cure: Why Non-profits Need Their Own Set of Trademark Rules.

In short, the Wall Street Journal and its commentary illustrated the difficulties of protecting a brand name built up through sheer hard work in the philanthropic space, both from a legal and PR point of view. Without the brand, the philanthropic’s ability to communicate, mobilise and, ultimately, do good, can be severely compromised. Yet protecting it could threaten the integrity of the philanthropic altogether.

As Pallotta said in his response, referring to a reaction when his business decided to take legal action against another charity: “To say that public reaction was vitriolic would be an understatement. To give you a flavour, one anonymous critic wrote to me that I was evil, adding: ‘No wonder your partner killed himself.’ My partner had committed suicide a year-and-a-half earlier.”

It’s not just an issue in the US. Last year, the UK IP court adjudicated on who had rights in the name Open College Network and OCN between two educational charities. Prof Jeremy Phillips, respected IP academic, emotively describes the spat as: “The most perfect example of a disgraceful waste, of utter stupidity in branding and squandering of charitable funds for no constructive purpose. While I am a keen supporter of charities in general, and educational charities in particular, I would be most reluctant to see so much as a penny’s worth of my hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification.”

The lethargic but acrimonious fight between the WWF (wrestlers and the wildlife fund) over the last decade has been well documented and, in Romania recently, an international charity offering guidance and assistance in the areas of religion and relationships had to step in and protect its Alpha trade mark against Alpha Clinics. In Israel, a recent decision not to recognise the goodwill in a charity because it was not “in business” illustrates some of the thinking Pallota is guarding against and, closer to my own home, the position is no different.

Not long ago, it wasn’t possible to register a trademark in South Africa for a charity because trademarks had to be capable of being used in trade, and a charity was not considered a trade. This has changed, but there still exists a responsibility for the charity to police and protect the trademark. The National Lottery Board’s failures to manage the use of its trademark by others led to a Supreme Court of Appeal decision in 2009, invalidating its “lotto” trademark for becoming generic. The repercussion of this decision may well be that someone is gaming with a different lotto on the assumption that some of their funds are going to a charity.

This is why Behr, in her article, advocates for greater protection for trademarks in the non-profit sector because “the work of these organisations affects the greater public, as well as both potential donors and recipients”. I would agree with that.

So how exactly does one protect a brand in the philanthropic space?

Well, traditional forms of IP protection should be considered not only in protecting the brand, but also the creativity and innovation within the non-profit. Care should be taken in deciding where to house the IP because of the possible tax and structural challenges and advantages in using a non-profit or trust. Vigilance and deftness should be key in communicating, licensing and enforcing IP both from a legal and PR point of view. One needs to remember that the philanthropic may be in the business of giving, but that does not mean it’s for others to take.

It’s time for the non-profit brands, especially in the philanthropic space, to step out from the purple rain.


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

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KENYA RULING GIVES PARTIES TO TRADE MARK OPPOSITIONS A SECOND BITE AT THE CHERRY

A recent decision in Kenya means that parties in opposition proceedings can file evidence at any time before a ruling is made, even after all of their submissions have been made, effectively affording parties multiple chances to file evidence.

In Republic v Assistant Registrar of Trade Marks ex parte Strategic Industries Limited and another [2006] eKLR, the High Court in Kenya was petitioned by way of judicial review to determine whether the Registrar of Trade Marks, the Respondent in this case, had correctly exercised its discretion in allowing the filing of further evidence in an opposition to a trade mark application after the parties had made all their submissions and pleadings had closed.

By way of background, the Applicant in the High Court Case, Strategic Industries Limited (“Strategic”), had formally opposed the registration of the trade mark FREEDOM which was applied for in the name of Rebecca Fashion (Kenya) Limited (“Rebecca”), which was also an interested party to the proceedings before the High Court. After the Registrar of Trade Marks had issued confirmation of a date for handing down the decision in the opposition, Rebecca made application in terms of Rule 52 of the Trade Mark Rules for leave to adduce further evidence in support of its case. Rule 52 states that in any proceedings before the Registrar, he may at any time give leave to either party to lead any evidence upon such terms as to costs or otherwise as he may think fit.

Naturally, the application was opposed by Strategic. However, the Registrar of Trade Marks found in favour of Rebecca and granted it leave to file additional evidence. The High Court case emanated from this decision of the Registrar of Trade Marks.

Strategic argued that the Respondent could only exercise its discretion in terms of Rule 52 to allow for the filing of further evidence before the hearing or adjudication of a matter. Rebecca conversely made the arguments that:

  1. the filing of further evidence at that stage did not determine the parties’ rights, as Strategic would still have the opportunity at the main proceedings to contest the evidence filed;
  1. at the conclusion of the proceedings, Strategic still had the right to appeal against the decision reached in the opposition based on points of law; and
  1. if the High Court interfered with the decision of the Registrar of Trade Marks at that point, it would be interfering with the powers of an independent party and it would effectively be operating as a trial and appeal court presiding over the same issues.

The High Court agreed with the arguments made by Rebecca and found that Rule 52 allowed the Registrar to grant leave to file additional evidence at any time. Indeed, this is the wording of Rule 52. In addition, it held that the issue whether the Registrar had exercised its discretion correctly was one for determination by appeal rather than judicial review as it goes to the merit of the decision. Judicial review, the court found, rather dealt with the lawfulness of a decision. The decision confirms the position that a court on judicial review will not interfere in ongoing proceedings before an administrative body, unless those proceedings are unlawful.

The decision also extends the interpretation of Rule 52 of the Trade Mark Rules to mean that, in matters before the Registrar of Trade Marks, parties can make application to file further evidence even after final submissions have been made, but provided that a ruling has not yet been issued.

By

Kelly Thompson | Partner

Kim Rampersadh | Senior Associate

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
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A GOOSE EGG FOR A WILD TURKEY

An Australian court ruling on authorised use within a trade mark license agreement may affect South African brand owners.

The Federal Court in Australia recently handed down judgment in a protracted dispute between the ‘Wild Geese’ and ‘Wild Turkey’ brands in that territory. The court found that trade mark owners can lose their registrations if they fail to exercise proper control over their licensees – and provided much needed clarity on how Section 8 of the Trade Marks Act 1995 of Australia should be interpreted.

The judgment was handed down in an appeal by Lodestar Anstalt of a decision regarding the non-use of the ‘Wild Geese Wines’ and ‘Wild Geese’ trade marks owned by Campari America LLC. Lodestar sought to sell whiskey under the mark ‘Wild Geese’ and applied for the removal of the trade mark held by Campari on the basis of non-use.

Under Australia’s Trade Marks Act, a trade mark can be removed from the Register if it hasn’t been used for a period of 3 years and 30 days prior to any removal application, and the trade mark owner must show that the mark has been used by the owner or an authorised user (licensee) during the relevant period. Campari had entered into a license agreement with Wild Geese Wines producer, Mr. O’Sullivan.

In clarifying the Act’s definitions of ‘control’ and ‘use’ under the Trade Marks Act, the court had to decide to what extent a licensor must control the use of the trade mark for the licensee to be deemed an ‘authorised user’. In this case, while the agreement between O’Sullivan and Campari contained certain quality control provisions, they did not exercise any of the provisions before the non-use action was instituted.

The court held that ‘control’ means actual control in relation to the use of the trade mark. Besanko J, in delivering judgment stated that, “There must be control as a matter of substance. ‘Actual control’ is a question of fact and degree and will depend on the facts of the case. For example, a licence agreement may contain terms that set out in detail a quality standard to be achieved, and those details may be so extensive that it isn’t necessary for the registered owner to give further direction to the licensee throughout the term.”

“The Australian court’s decision has potential implications for owners of trade marks in South Africa and other African countries, and their licensees, in risk-proofing trade marks against removal for non-use,” says Partner with Adams & Adams, Kelly Thompson. “The South African Trade Marks Act contains similar provisions and refers to use by a licensee as “permitted use”. There is also a provision that allows for the cancellation of a trade mark where it has been used in a manner likely to cause deception or confusion. Uncontrolled licensing could lead to that. The reasoning applied in the Australian ruling may be relied upon in South African courts.”

Howard Rogers, also a Partner with Adams & Adams who specialises in licence agreements, says “Certain other countries in Africa contain specific provisions regarding quality control in their legislation and, where appropriate measures are absent from a licence agreement, it may be considered invalid. The Australian case has highlighted the importance of careful drafting of trade mark licences and ensuring that licence agreements contain explicit quality controls that are enforced meticulously.”

Contact Howard Rogers should you wish to discuss existing or future licence arrangements, or Kelly Thompson with queries regarding the non-use of trade marks in South Africa and Africa.

HOWARD ROGERS

Partner
Trade Mark Attorney

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KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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NAMIBIA’S PRESIDENT SIGNS BIPA ACT

The Business and Intellectual Property Authority Act no. 198 of 2016  (“the BIPA Act”) was passed by Parliament and signed by President Hage Geingob during a public signing ceremony  on 12 August 2016.

The BIPA Act provides for the establishment of the Namibian Business and Intellectual Property Authority (“BIPA”), a central body for the registration, regulation and administration of businesses and intellectual property rights. BIPA has already been up and running for some time now under the Companies Act. The establishment of BIPA is intended to improve service delivery and the administration of IP rights and and company registrations in Namibia. The President has expressed his hope this will attract the attention of foreign investors.

One of the most important changes BIPA has introduced is the online registration of companies and close corporations through its website. It also appears that electronic patent applications will be possible soon.

The BIPA Act is welcomed by local practitioners but there are some concerns regarding the effective implementation of the Act. The Act is not yet in operation and is expected to come into force in March 2017 together with the new Industrial Property Act 1 of 2012, which is still awaiting Regulations. Questions related to the BIPA or intellectual property rights in Namibia may be directed to namibia@adamsadams.com

Kareema Shaik | Senior Associate

DALE HEALY

Partner
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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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SAFEGUARDING SA’s HERITAGE AND ARTISTIC RIGHTS

Excitement is building for the annual BASA Awards on 19 September 2016, jointly sponsored by Hollard & Business Day – and the only awards ceremony that acknowledges business support of and partnerships in the arts in South Africa.

The BASA Awards recognise and encourage excellence and innovation in the field of business support for the arts.  Imaginative, innovative, and cost-effective partnerships between business and the arts are highlighted, demonstrating the potential for synergy, the window of mutual opportunity, and the far reaching benefits for business, for the arts, and for all South Africans.

The awards are judged by an independent panel of judges and the results are audited by Grant Thornton. A specially commissioned work of art is given to the winning sponsor in each Award category.

The event is attended by captains of industry, BASA members, and members of government. Adams & Adams, a proud member of BASA has, with its diverse partnerships, become integral to the concept of shared value in the arts sector. “To some, the partnership between a law practice and multi-disciplinary creative platforms such as BASA, Design Indaba and the Loeries may seem rather tenuous,” says partner with Adams & Adams, Mariëtte du Plessis. “But to us this is an integral part of years of promoting and protecting the intellectual property and commercial rights of the flourishing South African creative industry.”

Adams & Adams is currently providing advice to the Department of Arts and Culture in respect of setting up a trust for the benefit of all artists, whether born in South Africa, naturalised or with established links to the country, and who are 70 (seventy) years or older. A trust deed has already been drafted for The Living Legends Legacy Trust.

Of the Trust’s purpose, partner André Visser says, “The intention of the Living Legends Legacy trust is to identify, capture, preserve, protect and promote the body of work of the trust beneficiaries; provide youth leadership or development programmes in the arts culture and heritage industry; and to preserve indigenous knowledge systems and cultural practices in the arts, culture and heritage, among many other objectives.”

Each year, the BASA Awards venue is selected based on its socio-cultural importance and the theme of the Awards for that year, relevant to the current socio-political context in South Africa at the time.  Examples of previous BASA Awards venues include The Constitutional Court Foyer, The Market Theatre, Johannesburg City Hall, the Wits Art Museum, Turbine Hall Newtown, and Hollard’s Villa Arcadia.

This year the BASA Awards are seeing the inclusion of an African focus in one of the award categories, stemming from BASA’s growing engagement on the African continent to support members with operations outside of South Africa’s borders. This falls within the Beyond Borders Partnership Award, which will be awarded to a global-level partnership that builds brand reputation and audience for both the business and an arts organisation across international borders. Another exciting addition is the Cultural Tourism Award, supported by Nedbank, which recognises business support of arts and culture projects which contribute towards the growth of communities and jobs, and support the opportunities provided by local tourism.

“Adams & Adams aims to further build and develop relationships between the firm, the creative industry and Africa’s rich reservoir of heritage in the arts, by providing continual legal support and advice,” add Visser.

Release by: BASA, Adams & Adams

ANDRE VISSER

Partner
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Mariëtte du Plessis

Partner
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Nishi Chetty

Partner
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THE CURRENCY OF CERTAINTY

South African intellectual property law firm Adams & Adams is hosting this year’s conference of the BRICS Intellectual Property Forum in London, UK on 21 and 22 November 2016.  The conference is co-hosted by Forum members Daniel Advogados from Brazil, Gorodissky and Partners from Russia, Remfry & Sagar from India and CCPIT from China.  This year marks the eighth successive year of the conference and the first time that it will be presented in London.

Leading individuals from Europe-based industry and top legal practitioners of the above firms will be presenting a conference programme that has been carefully drawn up for delegates to learn, first hand, of actual experiences and strategies in BRICS IP prosecution and litigation, as well as of the latest developments in IP law and practice in the BRICS countries.  The conference promises to equip delegates with clarity and greater certainty in relation to some of the nuances that are often encountered, and sometimes tend to give rise to uncertainty and frustration, in navigating the BRICS IP landscape.

In the current economic climate, the well-developed but still developing economies of the BRICS countries, compounded by the prominent rise of their middle classes, present impressive opportunities for investment in their emerging markets.  It has been reported that in China alone the middle class is expected to increase more than 5 fold in size between the early 2000’s and 2030, while India’s middle class is also on the rise, with an expected start of explosive growth toward the early 2020’s.  The exploitability of the opportunities available in the BRICS was best reflected by the recent periods of rapid economic growth, especially in Africa and China, particularly while quantitative easing was intensively implemented by some of the developed economies.  However, as of late and far too often, continuing availability of commercial opportunities in the BRICS countries may be forgone in light of an impression of legal and political uncertainty, and concomitant risk.  This is regrettable in a time in which money is cheap.

Intellectual property protection is, indisputably, a critical foundation for technology-based companies to address their risks in launching into new markets, none more so than the emerging markets of the BRICS countries.  Offering the currency of certainty in this regard holds more value than ever before.

To join the forum members at the BIPF Conference in London (21-22 Nov), take advantage of the early-bird registration by CLICKING HERE.

DARREN OLIVIER

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Gérard du Plessis

Partner & Firm Chairman
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PHILIP PLA

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PIETER VISAGIE

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AN OMBUD FOR THE ADVERTISING AND MARKETING INDUSTRY

Section 82 of the Consumer Protection Act 68 of 2008 (“CPA”) allows the Minister of Trade and Industry to accredit industry specific ombudsman schemes, and to prescribe accompanying industry codes. To date, two industry ombudsman schemes have been accredited, namely the Motor Industry Ombudsman of South Africa (which enforces the South African Automotive Industry Code of Conduct), and the Consumer Goods and Services Ombud (which enforces the Consumer Goods and Services Code of Conduct).

On behalf of the South African advertising and marketing industry, the Advertising Standards Authority of South Africa (ASA) has approached the National Consumer Commission (“NCC”) with a proposed industry code, the Advertising and Marketing Industry Code of Practice (“the Industry Code”). The ASA has also requested accreditation as an ombudsman scheme in the advertising and marketing industry. The Industry Code was published for public comment in the Government Gazette of 26 July 2016, and interested parties have been invited to submit comments.

The Industry Code is designed to protect consumers against improper trade practices, and deceptive, misleading, unfair or fraudulent conduct in the marketing and advertising industry. It aims to ensure that all advertising and marketing in South Africa is informative, factual, honest, conforms to fair marketing practices and does not contravene any laws.

If the Industry Code is accepted, it will be compulsory for all advertising and marketing industry “participants or subscribers” to:

  • register with the ASA;
  • comply with the Industry Code;
  • place suitable notices on their websites and at their trading premises, advising consumers that they subscribe to, and are bound by, the Industry Code and providing the ASA’s contact details to consumers; and
  • contribute towards the funding of the ASA. It is proposed that a levy collection agency will be established for this purpose.

Advertising and marketing industry “participants or subscribers” is widely defined, and includes marketing and advertising agencies, media owners and their agents, media buyers and all other marketers and advertisers of goods and services in South Africa (such as retailers, suppliers, wholesalers, distributors, manufacturers, producers and importers).

Although the Industry Code overlaps, to a certain extent, with the ASA’s current Code of Advertising Practice (“ASA Code”), some changes were necessitated by the need to bring that Code in line with the CPA. The definition of “advertisement” has been given the meaning as set out in Article 1 of the CPA, but it has been made clear that editorial matter, for which no consideration has been given or received (such as news articles), does not fall within the definition of an advertisement.

The Industry Code appears to place more emphasis on consumer rights. Clause 1.4 of the Industry Code states that the Code:

specifically deals with the resolution of complaints of prohibited conduct and the failure to comply with required conduct in respect of advertising and marketing of goods and services to consumers as provided for and envisaged within the scope of the [Consumer Protection] Act”.

That being said, and similar to the ASA Code, the Industry Code provides a basis for dispute resolution between industry participants (i.e. competitor complaints), in addition to complaints between industry participants and consumers (i.e. consumer complaints). As is the current practice, consumers and organisations serving in the public interest will not be required to pay any fees when filing complaints before the ASA, or in subsequent appeal proceedings. Competitors will (or may) be required to do so.

The Industry Code’s complaints procedure overlaps with the current complaints procedure before the ASA. Initial complaints will still, in general, be considered by the Directorate, and appeals may be filed with the Advertising Industry Tribunal, Advertising Standards Committee or the Final Appeal Committee, as the case may be. The sanctions that may be imposed by these tribunals have been limited to (i) withdrawal or amending the contravening advert, (ii) submitting the proposed amendment(s) to the advert for pre-publication advice and (iii) ordering the advertiser to publish a summarised version of the ASA ruling in certain media. The Industry Code also provides that non-compliance with ASA rulings will be escalated to the NCC, and dealt with in terms of the CPA.

Only a few of the 19 general principles that are found in Section II of the ASA Code have been incorporated into the Industry Code, including those relating to truthful presentation and substantiation of claims, and the prohibition of misleading claims (which overlaps with Section 41 of the CPA, dealing with false, misleading or deceptive representations).

Many of the clauses in the ASA Code that often form the basis of competitor complaints before the ASA (including disparagement, imitation and exploitation of advertising goodwill) have been excluded from the Industry Code. In the circumstances, if the Industry Code is accepted in its current form, the grounds on which the ASA will be able to consider competitor complaints will be more limited.

Only some of the appendices to the ASA Code have been incorporated in the Industry Code, including those relating to alcohol advertising, the advertising of cosmetics, direct marketing and environmental claims. Provisions dealing, specifically, with advertising for slimming products, foodstuffs and beverages, breastmilk substitutes, baby feeding bottles and teats and collective investment schemes have been excluded from the Industry Code. Furthermore, Section III of the ASA Code, which sets out advertising requirements relating to specific categories of goods, services or other activities (such as the advertising relating to charitable causes,  property, cell phones, and the rental of televisions and other domestic appliances) have also been excluded from the Industry Code. These exclusions from the Industry Code are, presumably, due to the fact that the advertising and marketing of those goods and services are regulated in terms of other legislation, and should be enforced by other suitable bodies or Government departments.

As many of the important clauses in the ASA Code have been excluded from the Industry Code, it appears that, in certain instances where the ASA has been an appropriate dispute resolution forum in the past, other suitable Tribunals may have to be approached in the future. That being said, it remains to be seen which amendments, if any, will be made to the Industry Code before it is finalised and accepted.

Interested parties have until 20 October 2016 to submit comments to the Industry Code. After this date, the NCC will consider the submitted comments, and consult with relevant industry participants. The NCC may then revise the proposed Industry Code, to the extent that it deems this necessary, before making recommendations to the Minister of Trade and Industry relating to the recognition of the Industry Code, and the accreditation of the ASA as an ombudsman scheme in terms of Section 82 of the CPA.

Jeanette Visagie | Associate

JENNY PIENAAR

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THE GLOBAL PATENT PROSECUTION HIGHWAY

The Global Patent Prosecution Highway (GPPH) was launched on 6 January 2014 with the express intent of allowing patent applicants to request accelerated examination at any and all patent offices involved in the pilot programme. In ‘Born to be trialed’, IPProPatent investigates how the pilot programme has fared, and speaks to Adams & Adams Partner and Head of Africa Patents, Nicky Garnett, about the situation in Africa. Click here to read the FULL ARTICLE.

Extract :-

Highway to nil

Nicky Garnett, head of Africa patents at Adams & Adams, sheds some light on the concerns and issues that certain African countries might have with global patent projects such as the GPPH. “There is no such thing as an ‘African Patent’, she says, explaining that the continent doesn’t benefit from its own European Patent Convention model.

“We do have two regional systems in Africa, namely the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization, better known as its French name the Organisation Africaine de la Propriété Intellectuelle (OAPI).”

“Africa has 18 states which can be designated in an ARIPO patent application and OAPI has 17 member states. Both systems cater for English as a working language.”

“In addition, unlike a European Patent, no validation process is necessary, so once a patent has been granted it has automatic effect in all designated states in the case of an ARIPO patent and all OAPI member states in the case of an OAPI patent.”

These systems allow for African patents to be relatively easy to acquire in multiple patent offices in the continent. Despite a large patent programme in Africa, Garnett says that the majority of countries in Africa “do not conduct substantive examination of patent applications”, and those that do can have “serious capacity issues.” Africa’s problems with large-scale patenting seem to be mainly in Africa’s largest economies, which aren’t part of either organisation and require separate filings in each jurisdiction, causing problems with capacity.

“In South Africa, where moves to introduce substantive examination are underway and training of examiners has recently begun, it is expected that it will take several years before the South African Patent Office is able to effectively examine applications in all technical fields.” Citing Egypt as an example, Garnett says that its current PPH deal with Japan is the first step towards confidence in the GPPH in South Africa. But there are many countries left in Africa that are concerned about their registration type systems. Most are content with existing systems and, apart from those that have already introduced some form of examination, it seems there is little desire to change the status quo.

Extract courtesy of IPProPatent.com

NICKY GARNETT

Partner & Head of Africa Patents
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NEW DESIGN ACT FOR ZAMBIA

Zambia has passed into law the new Industrial Design Act no 22 of 2016 repealing the Registered Designs Act of 1958. The new Design Act came into force on 6 June 2016. Some of the new provisions contained in the new Act are as follows:

  • Worldwide novelty requirements;
  • Grace period and exceptions in respect  of disclosure of the design in order to comply with novelty requirements;
  • Restoration of rights lost due to non-payment of  maintenance fees;
  • Amendment of a design application and
  • Opposition of design registration by 3rd party including the state.

The new Act also introduced changes in respect of the term of a registered design. The 1958 Act provided for a  registration term of  five years extentable upon payment of renewal fees for two further five year terms. According to the new Act, the term of registration is five years from the filing date renewable upon payment of renewal  fees for a further period of five years. Furthermore, while the 1958 Act made provision for foreign filing licence in respect of new foreign design applications by  a person ordinarily resident or domiciled in Zambia, the 2016 Act is silent in this regard.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Zambia and across Africa, please contact africaip@adamsadams.com

NICKY GARNETT

Partner – Head of Africa Patents
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NTHABISHENG PHASWANA

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ALL THE LOERIES® 2016 WINNERS

The Loeries® Creative Week™ Durban 2016 drew to a close on Sunday 21 August 2016 at the Durban International Convention Centre with a raft of awards honouring the best creative work in the Africa & the Middle East being presented, along with four special awards.

A total of 316 awards were handed out over the two nights selected from 3112 entries from 22 countries across the Africa Middle East region. There were eight coveted Grand Prix winners with Nando’s the big winner of the awards scooping two.

The full list of Grand Prix winners include:

  • Nando’s “Global Visual Identity System”, by Sunshine Gun
  • Tusker Lager’s “Team Kenya”, by Net#workBBDO
  • Channel O’s “Youth Day” by Black River FC
  • Nando’s “Chicken Run” & “Heartfelt Celebration of South African Design”
  • KFC’s ‘’The Everyman Meal’’, by Ogilvy & Mather Johannesburg
  • Saudi Telecom Company – STC, “1st Branded Online Entertainment Hub” by J.Walter Thomspon KSA
  • Chicken Licken’s “Kung Fu” by Network BBDO
  • Ster-Kinekor’s “#OpenEyes” by Fox P2

Commenting on the standard of work Jury President Laura Jordan-Bambach Creative Partner, Mr President London said, “We have seen some beautiful pieces of work that have the spirit of a very modern Africa and the broader region; very different to what you see elsewhere and it doesn’t feel like it was made in London or New York“.

The full awards are broken down as follows:

ALLStudentProfessional
Grand Prix808
Gold32527
Silver821369
Bronze12121100
Craft Gold17116
Craft Certificate56452

Judged by 160 local and international experts in their fields, including international jury presidents Bridget Jung (Sydney), Susan Credle (New York city) Jimmy Smith (Los Angeles) and Laura Jordan-Bambach (London), the coveted Grand Prix, Gold, Silver and Bronze Loeries® statues remain the industry benchmark for creative excellence.

The Adams and Adams Young Creatives Award went to Katie Mylrea, art director at Ogilvy & Mather Cape Town and Amori Brits, head of design at Shift Joe Public who each received R60,000 and a South African Airways flight to New York City. The Loeries® Creative Future Scholarship went to four young Kwa-Zulu Natal Grade 12 students, Londeka Gumede, Roxanne Schoon, Mali Khuzwayo and Samkelisiwe Faku to study at Vega School of Brand Leadership and the Design School South Africa.

Mariëtte du Plessis

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Nishan Singh

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ADAMS & ADAMS NETWORK EXPANDS FURTHER IN WEST AFRICA

Adams & Adams continues to synergise and expand its African Network. Sub Saharan Africa’s largest intellectual property law firm, Adams & Adams, has established an Associate office in The Gambia which also services Liberia and Sierra Leone. This brings to 18 the number of associated offices in different African countries that form part of the Adams & Adams Africa Network (AAAN).

“Our focus has always been to add exceptional value to our clients’ experience. We target strategic associations with firms whose work ethic and standards mirror those of our own. At the heart of this approach is to enhance the experience for the client and to add a high level of comfort to client in knowing that the matter will be handled the same whether in South Africa or at our Associate firms. High standards are expected of our offices and we ensure continued adherence by a rigorous Due Diligence process that each associate firm must undergo. Our strategy remains to empower our associate offices by exposing them to our lawyers’ vast legal knowledge accumulated over the 109 years that Adams & Adams has been in operation.” Simon Brown, Partner and Chair of the Africa IP Committee.

group2

A&A ASSOCIATE OFFICE IN THE GAMBIA

A&A’s strategy has not only been to grow in Africa for the sake of expansion but to ensure any association is beneficial to its clients by aligning workflows leading to greater efficiency and more advantageous pricing to its clients. This new office continues to solidify the shift in Adams & Adams focus on Africa which began a number of years ago but gained traction and momentum with the emergence of the African economy’s growth potential.  In the past four years, Adams & Adams has also established associate offices in Kenya (2013), Nigeria and Ghana (2014) and Egypt, which also covers the other North African countries of Algeria, Libya, Morocco, Sudan and Tunisia, (2015).

As testament to its African influence and experience, Adams & Adams recently held its annual showpiece event, the Africa Network Meeting which took place at the Adams & Adams Head Office in Pretoria, South Africa from 11 – 12 August 2016. Now in its fourth year, this first of its kind event, continues to be the largest meeting of top IP practitioners and administrators in Africa.

Adams & Adams is an African institution and continues to be passionate about Africa and the role that IP will ultimately play in the sustained economic growth of the continent.

Nicky Garnett

Partner – Head of Africa Patents
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Simon Brown

Partner | Co-Chairperson – Trade Marks Department
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A&A AND FACEBOOK TEAM UP FOR LOERIES STUDENT EVENTS

Facebook has announced its sponsorship of the Loeries Student Awards, celebrating the achievements of the next generation of creative professionals who will define creativity in a mobile-first world, and supporting the Adams & Adams Student Portfolio Day.

“Our sponsorship for 2016 is an opportunity to celebrate the young professionals who are telling rich, creative brand stories using our platforms. We believe creativity unlocks the power of technology and young people in the creative community especially are at an exciting place to craft beautiful and relevant work. Young creatives can play an important role in solving bigger problems by building or creating for mobile as more people become connected,” says Rob Newlan, head of Facebook Creative Shop EMEA.

“The Loeries Awards are about celebrating great ideas and increasingly the Facebook platform is a canvas to bring great ideas to life and share it with millions of people. We want to support the young talent that is redefining the rules of creativity by exploiting mobile, the most important medium of the generation. In South Africa alone, Facebook has more than 14 million active users, 90% of them on mobile,” adds Nunu Ntshingila, head of Facebook, Africa.

On 19 August, Facebook will support the Adams and Adams Student Portfolio Day, giving students the tools to build online creative portfolios, and promoting these to the industry using Facebook Canvas Ads. The Student Portfolio Day has become an important part of the Loeries Creative Week.

“It has become incredibly hard to distinguish oneself in the creative world. The Student Portfolio Day has become a forum for displaying fresh ideas, landing a job and staying in demand in today’s creative business environment. Choosing the right way to develop one’s talent is crucial, and too often young people are left with no support to develop their potential,” says Mariëtte du Plessis, senior partner, at Adams & Adams.  “It is always fantastic to be part of an initiative that sets out to nurture talented young creatives, and to be partnering with Facebook in this way.”

IP EDUCATION

Besides helping to promote the apprentice talent, the firm’s involvement is also concerned with educating students on the importance of protecting their intellectual property as they prepare to enter the market.

Du Plessis adds that as a nurturer and protector of the intellectual property of local creative works for over 100 years, the firm is a perfect fit with the world of the creative.  “Apart from showcasing their work, it imperative that students are also empowered by providing them with the necessary tools to prevent the devaluation of, and under-appreciation of, the commercial value of their work.   Only once they have embraced this concept do they realise that the protection of their endeavours is vital to their financial success.”

“Whether it’s copyright, design, patent, or trade marks – we believe these should be concepts which form part of the lexicon of the new generation of creatives.  We encourage anyone in need of assistance with protecting their work, to give us a call, drop us an email or just tweet us,” she adds.

Adams & Adams is the exclusive legal advisor to the Loeries, as well as being the sponsor of the Young Creatives Award.

For more on the Facebook events and sponsorship, click here (Courtesy BizCommunity)

Mariëtte du Plessis

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Nishan Singh

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Nishi Chetty

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Vishen Pillay

Partner 
Patent Attorney

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AFRICA NETWORK MEETING | BY AFRICA, FOR AFRICA

Delegates meet to analyse the state-of-play of Intellectual Property management and legislation on the continent.

 

What are we as professionals doing to preserve the legacies and intellectual capital of Africa? This was the question that renowned actor, director, writer and playwright, John Kani, asked the intellectual property law professionals who had gathered for the recently held 4th Africa IP Network Meeting at the offices of Adams & Adams in Pretoria. Kani, who was opening the Meeting as Guest Speaker, captivated the audience with stories of his upbringing and of his time in Hollywood – including his latest role as an African monarch in the Marvel Captain America film franchise.

“I was cast as an African monarch in a fictional North-African kingdom, and I asked them very nicely whether I could speak Xhosa instead of that ‘Tarzan’ dialect that Hollywood loves so much,” he jokes. “We need to think carefully about how we protect and advance our continent’s rich history, legacy and inherent intellectual property.” It was a sobering thought for the delegates. Adams & Adams has been particularly active in the area of Legacy Intellectual Property rights, with recent work being undertaken for the Steve Biko Foundation by Partner, Darren Olivier, and his team. READ DARREN’S AFRICA NETWORK BLOG ENTRY HERE. 

In welcoming the attendees, both Chairman, Gérard du Plessis and Partner, Simon Brown, stressed the importance of IP law professionals and IP administrators in sharing their experiences and updates on IP developments and legislations as the firm and its associated offices continue to develop best practice IP strategies for clients.

Then it was down to business as the Meeting discussed and debated industry matters such as IP commercialisation, the handling of opposition IP proceedings in multiple jurisdictions, and registry practices and search capabilities.

High on the agenda was the issues currently being experienced with the Madrid Protocol – a system of international registrations, administered by the World Intellectual Property Organisation (WIPO) that allows for the centralised registration and management of trade marks. Of the 37 African territories that are currently members of the Madrid Agreement / Protocol, only seven have properly “domesticated” the protocol through appropriate amendments to their national trade mark legislation, together with the implementation on enabling regulations. Speaking at a recent Madrid system think-tank at Adams & Adams, Partner, Stephen Hollis noted that “one of the core issues with the national applicability of IP treaties such as the Madrid Protocol is that additional direction, procedures and mechanisms need to be put in place, on a national level, to ensure that the national IP Office is equipped to deal with and process International Registrations and also how to deal with objections, oppositions and so forth. Even national trade mark legislation is not considered to be enacted properly until the so-called ‘enabling regulations’ have been promulgated. Enabling regulations supplement and complete trade mark legislation by formally determining the processes and procedures through which the provisions of the legislation can be practically implemented and fulfilled by the national trade marks office concerned.” DOWNLOAD THE LATEST ADAMS & ADAMS MADRID MEMORANDUM HERE.

Strategies to deal with Madrid, as well the current implementation of the Industrial Property Automation System (IPAS) system in registries across the continent, were also discussed; followed by regional updates from Associates from offices in Egypt, Ghana, Tanzania and Zimbabwe.