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.

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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
Attorney

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Simon Brown

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

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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

Partner
Trade Mark Attorney

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Nishan Singh

Partner
Trade Mark Attorney

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Nishi Chetty

Partner
Trade Mark Attorney

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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.

GOVERNMENT DECLARES THE CEO SLEEPOUT™ A PROTECTED EVENT

The Sun International CEO SleepOut™ Event is officially a ‘Protected Event’. Following an extensive application and thorough consideration, the Minister of Trade & Industry, Rob Davies, has declared the 2016 CEO SleepOut™ Event a protected event, under S15 of the Merchandise Mark Act 17 of 1941. This elevates the status of The CEO SleepOut™ Event to the equivalent of the 2010 FIFA World Cup South Africa™. It is the first time a non-sporting event has been declared a protected event.

The CEO SleepOut™ Trust satisfied government that the staging of the event is in the public interest, and that organisers have created sufficient opportunities for small businesses – in particular those from previously disadvantaged communities. In terms of the Act, the protected status gives the event special protection against ambush marketing which may occur by intrusion or association with the event. The use of certain marks are also prohibited. Specifically, no person may use a trade mark in relation to the event in a manner which is calculated to achieve publicity for that trade mark**, thereby deriving special promotional benefit from the event, without the prior authority of the organisers of The Sun International CEO SleepOut™ Event.

Through the application process, Stakeholder Partners and legal advisers to the Trust, Adams & Adams also confirmed a list of marks [VIEW] that are related to the event and that are covered by the SleepOut™ ‘s raised status. These marks include SleepOut, CEO SleepOut, CEO Cook Off, images related to the event, names of sponsors and beneficiaries as well as other distinctive features related to the event. Any contravention of this protected status is a statutory offence which could lead to imprisonment and/or a fine.

In announcing the confirmed status, Trust member and Adams & Adams Partner, Darren Olivier, said, “The raised status by government of this event not only affirms the philanthropic impact of the event in South Africa, but also the globally-recognised relevance of the CEO SleepOut.” The area of protection from ambush marketing by intrusion is a two kilometre radius of the location of the event at The Nelson Mandela Bridge. Otherwise, the area of protection is nationwide.

The CEO SleepOut™ and related events takes place on the evening of 28 July 2016. Over 200 CEOs, sympathy sleepers and students will brave the icy Nelson Mandela Bridge in an effort to raise more than R30-million for various designated charities and trusts. The South African Weather Service is forecasting that the overnight temperature will be as low as 4-degree Celsius, and a predicted 10-knot breeze will surely add insult to injury.

Leading intellectual property and commercial law firm, Adams & Adams, proudly announced its participation, as Stakeholder Partner, in The Sun International CEO SleepOut™ for the second year in a row. In making the announcement, Adams & Adams’ Chairman, Gérard du Plessis explained the firm’s rationale for extending its involvement in the innovative campaign; “In a recent global CEO survey, more than three-quarters of the CEOs interviewed worldwide agreed that business success in this century would be defined by more than just financial profit. Big business can help solve some important problems in the world today, and we believe we have found the ideal platform and partner in The CEO SleepOut initiative – a drive that helps us balance our bottom-line objectives with the need for responsible business practices.”

As a Stakeholder Partner since the first CEO SleepOut in 2015, Adams & Adams has been profoundly involved in both the fundraising and outcomes aspects of the initiative. The firm’s involvement last year, which included participation by clients, suppliers, staff and partners alike, resulted in it raising a contribution of well over R500 000 – the third highest contribution of all participants.

To pledge you support for The CEO SleepOut™, visit the WEBSITE to donate or to find out more about related events and initiatives.

ABOUT THE CEO SLEEPOUT™

The Sun International CEO SleepOut™ is part of a global movement, effecting positive social change for vulnerable and homeless communities. It asks current and future business leaders to spend a winter’s night on the streets, raising funds and empathy for the homeless, resulting in real change, around the world. Founded in Australia ten years ago, The CEO SleepOut™ is now a global initiative, with SleepOut™s taking place in Australia, New Zealand, Canada, the United States and the United Kingdom. It is leading the new wave of philanthropy and social entrepreneurship, where profits are being used for purpose, and leaders are inspiring others to find compassion and sustainable solutions for those who need it most.

The inaugural CEO SleepOut™ in South Africa took place in 2015, where 247 CEO and C-Suite members raised over R26million for Girls & Boys Town. In 2016, The CEO SleepOut™ is focusing on supporting education as a means to eradicate homelessness. On 28 July, C-Suite members, along with a colleague, student and matric learner with notable leadership qualities, will Rise To The Challenge and spend the night on The Nelson Mandela Bridge. The funds raised will be awarded to the 2016 Beneficiary Partners; ASHA Trust, Columba Leadership and the Steve Biko Foundation, all of whom work tirelessly to educate our youth. There is also a national call to action for the rest of the country to get involved; #SouthAfricaMustRise. Companies, universities and schools can SleepOut™ in solidarity at their own Sympathy, Student and School SleepOut™s.

For more information:
Visit: www.theceosleepoutza.co.za

**USE OF TRADE MARKS

The use of a trade mark includes:

a) any visual representation of the trade mark upon or in relation to goods or in relation to the rendering of services;

b) any audible reproduction of the trade mark in relation to goods or the rendering of services; or

c) the use of the trade mark in promotional activities, which in any way, directly or indirectly, is intended to be brought into association with or to allude to an event.

Darren Olivier

Partner
Attorney

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Gérard du Plessis

Partner & Firm Chairman
Trade Mark Attorney

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Lita Miti-Qamata

Senior Associate
Trade Mark Attorney

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AWARD RECOGNISES TRAILBLAZING JEWELLERY DESIGN COMPANY

Leaders of South African design were honoured on Saturday evening at the fourth annual Southern Guild Design Foundation Awards ceremony, held at Southern Guild Gallery in Woodstock, Cape Town. The awards acknowledge the industry’s top achievers as trailblazers in local design, manufacture, monetisation and innovation.

Pichulik, a bespoke range of accessories designed by Katherine-Mary Pichulik, was conferred the Adams & Adams Maker to Market Award. The award recognises artists or designers who tangibly understand the value of marketing, consumer interaction, packaging and delivery.

“A Design Foundation Award is one of the most prestigious accolades a South African design company can receive,” said Guild board member Trevyn McGowan. “It’s not solely about recognising immense success and awarding new talent – the awards are part of the foundation’s greater goal of supporting the industry and aiding in its global growth.”

Patent Attorney and Partner at Adams & Adams, Philip Pla, presented the Maker to Market Award to Pichulik. “South Africa’s rich heritage of solving problems and creating solutions is celebrated in the Southern Guild Design Foundation Awards, and as a leading IP firm with interests in protecting and commercialising our country’s design genius, Adams & Adams is proud to be part of this celebration of talent,” he said.

Pichulik’s elaborate jewelry items are regularly featured in global fashion titles, with Vogue Magazine naming her as one of Africa’s ‘top ten fashion brands to watch’ in 2015. “Besides being a trained artist, Katherine-Mary is also a qualified pâtissière,” added Adams & Adams Partner, Mariëtte du Plessis. “If thousands of reality cookery shows have taught us anything, it’s that a world-class pastry chef is able to take fairly humdrum ingredients and, with vision and attention to detail, synthesise them into a delicious dessert that everyone ‘just has to taste’!” Her patisserie skills have very obviously given Pichulik an advantage in understanding her market and product delivery.

Besides the award, Pichulik’s ‘sugar rush’ in jewellery design will also receive professional legal assistance from Adams & Adams, Africa’s leading intellectual property law firm. “Katherine-Mary’s products are already available in 14 territories across the globe, so it is imperative that we evaluate, protect and plan for the growth of the Pichulik IP portfolio,” says du Plessis.

Adams & Adams, South Africa’s largest Intellectual Property law firm, is a proud partner of the Southern Guild Design Foundation. For assistance and advice with trade marks, designs, copyright and patents, email mail@adamsadams.com

BUT FIRST COFFEE | NISHI CHETTY

Trade mark attorney and partner at Adams & Adams in Durban, Nishi Chetty, recently featured in the prestige community KZN magazines, theRidge and theCrest. The publishers have kindly allowed us to post the feature to our website.

Nishi is a fellow of the South African Institute of Intellectual Property. She qualified as a trade mark practitioner in South Africa in 2002 and was the first person of colour in South Africa to qualify as a trade mark practitioner. To read the interview with Nishi, click the image below:

Nishi Chetty

Nishi Chetty

Nishi Chetty

Partner
Trade Mark Attorney

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THE IMPACT OF BREXIT ON INTELLECTUAL PROPERTY RIGHTS

In the aftermath of the Brexit referendum outcome, another consideration in the matter is what the implication will be for Intellectual Property rights – specifically for those that have had trade mark’s registered in the EU. Joining CNBC Africa to discuss this is Darren Olivier, Partner at Adams & Adams.

Darren Olivier

Partner
Attorney

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KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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Simon Brown

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

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THE TRADE MARK IMPLICATIONS OF THE UK DECISION TO LEAVE THE EU

On 23 June 2016, the United Kingdom voted to withdraw from the European Union. In the short term, a UK exit from the EU will have no effect on existing EU Trade Mark Registrations. Once the UK’s withdrawal from the EU has been ratified, we believe that current EU Trade Mark Registrations would no longer cover the United Kingdom.

We expect, however, that appropriately enacted legislation will be implemented to ensure that such rights continue to have force in the UK. We also understand that there will be provisions available to partially convert existing EU registrations into UK national registrations. These registrations may also enjoy the same filing dates.

It is important to remember that until such time as the UK’s withdrawal from the EU has been formally recognised, (which may take several years), existing EU registered Trade Marks remain valid and enforceable in the UK.

Should you have any concerns or wish to secure Trade Mark Protection in the UK or the EU, please contact our Trade Marks Department on mail@adamsadams.com.

Claire Bothma

Senior Associate
Trade Mark Attorney

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Simon Brown

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

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MADONNA WINS IN ‘VOGUE’ COPYRIGHT CASE

World IP Review reports that pop star Madonna has prevailed in a copyright lawsuit centring on her 1990 song “Vogue” after a US appeals court rejected claims that a short snippet of the song infringed an earlier track.

In a ruling handed down on June 02, the US Court of Appeals for the Ninth Circuit said the segment was small enough to be considered trivial.

The sample of music, which lasted an alleged 0.23 seconds, came from the song “Love Break”, released in the early 1980s.

The plaintiff, record label VMG Salsoul, owns the copyright to the track and claimed that Shep Pettibone, a producer on the track who went on to work with Madonna, sampled the snippet from “Love Break” and added it to “Vogue”.

“Defendants copied, at most, a quarter-note single horn hit and a full measure containing rests and a double horn hit,” Judge Susan Graber wrote, according to Reuters.

Mariëtte du Plessis

Partner
Trade Mark Attorney

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RWANDA | IP LEGISLATION UPDATES

Rwanda recently hosted the World Economic Forum (WEF) in Kigali in May, with the theme, ‘Connecting Africa’s Resources through Digital Transformation’. In a recent Bloomberg article, Mark Bohlund (African Economist) said that Rwanda has led the way in nurturing an attractive business environment by cutting red tape, providing tax incentives and improving governance. Rwanda’s Development Board predicts that foreign direct investment would probably rise by 36% this year, and as interest grows in doing business in the country, it is important for companies to be mindful of protecting their intellectual property rights in Rwanda.

A few changes have been made to Rwanda’s Intellectual Property Laws. While Law no. 31/2009 remains in force, a new law, namely, Law no. 005 of 2016 and various Ministerial Orders have introduced some amendments to the existing Law, all of which came into force on 20 April 2016, when they were published in the Official Gazette. The main changes entail the recognition and protection of Plant Breeder’s Rights and changes to the time periods relating to the opposition of certain industrial property applications. An overview of the changes is set out below.

Protection of Seeds and Plant Varieties

Law no. 005 of 2016 Governing Seeds and Plant Varieties in Rwanda now provides for the recognition and protection of seed and plant varieties in Rwanda. Previously, Law no. 14/2003 of 23 May 2003 was in force, governing the production, quality control and commercialisation of seeds but there was no intellectual property protection for seed and plant varieties and plant breeder’s rights. Law no. 005 has been enacted as the “related special law” referred to in Article 289 of Law no. 31/2009 and it has repealed Law no. 14/2003. Anyone who was dealing with activities relating to seeds and plant varieties prior to 20 April 2016 have been given a 12 month period (calculated from 20 April 2016, the date of publication of Law no 005 in the Official Gazette) to comply with the requirements set out in terms of the Law Governing Seeds and Plant Varieties in Rwanda.

In terms of Law no. 005, a Committee has been established to evaluate, certify, register and withdraw plant varieties in relation to the national plant variety list in Rwanda. All certified plant varieties are registered on the abovementioned list, which will be published by the Minister of Agriculture on an annual basis in the Official Gazette. An application for registration of a plant variety would need to be submitted to the competent Committee. The Seed Certification Authority appoints a plant variety Registrar who is granted the powers of Judicial Police Officer by the Minister in Charge of Justice. Seed inspection and testing are to be carried out by seed inspectors and seed analysts. A seed inspector is also granted the powers of a Judicial Police Officer in Charge of Justice.

Law no. 005 sets out the requirements for quality seed production, processing and marketing and the relevant recognised seed categories. It also sets out the requirements for quality seed producers, conditioners and dealers and deals with the importation and exportation of seeds. Seeds that are produced or sold must now have a seed quality certificate, granted by the authority in charge of granting licences for importation and exportation of plants in Rwanda. All seeds for which a certificate is sought are tested by a recognised seed laboratory. Seeds that are not produced in Rwanda are allowed to be imported if they have been subjected to certification schemes that are of equal or higher standard than the certification scheme applied in Rwanda and which are internationally recognised. The expenses in this regard will be borne by the seed importer. However, in the case of emergency resulting into seed shortages in Rwanda, the Minister of Agriculture has the right to allow the use of seeds which have lower standards than those set up by the law in Rwanda.

New plant varieties are protected in terms of Law no 005, where the plant breeder has applied for protection and which meets the required conditions. Any Rwandan or foreign plant breeder is eligible to apply for plant variety protection for a variety that he/she has bred. The date of receipt of the application is considered as the filing date. The requirements are that the plant variety must be (a) new, (b) distinct, (c) uniform and (d) stable. Law no 005 explains these requirements in some detail and a plant breeder’s rights entitle him/her to sell, multiply or distribute his/her plant variety or to designate any other person to do so. The plant breeder’s rights will be registered and maintained on the register by the Registrar of plant breeder’s rights. A plant breeder’s right is granted for a period of 20 years from the date of granting of the plant breeder’s right (i.e. not from the date of application thereof) but for trees and vines, such a period is 25 years from the date of granting of the right.

The Registrar has the power to approve or reject the protection of a plant variety, to withdraw the plant breeder’s right certificate, to nullify the plant breeder’s right and to remove from the register, a protected plant variety. Any interested person may have access to the plant breeder’s rights register with permission from the Registrar.

Decisions made regarding the granting, nullification, cancellation and rejection of plant breeder’s rights are published in the Official Gazette. Where the requirements are met, the plant breeder should be informed within 30 days that his/her plant variety is protected and is given a plant breeder’s right certificate. The grant of a plant breeder’s right certificate will be published and provision is made to object to an application for registration of a plant breeder’s right, after publication. A ministerial order will determine the procedure to lodge an objection in this regard. Any person who is not satisfied with any decision made by the Registrar in terms of Law no 005 may appeal to the management of the Registrar’s institution within 30 days. If a party is not satisfied with the decision made on appeal, he/she may refer the matter to the competent court.

A plant breeder’s right does not apply to, inter alia, acts done privately for non-commercial purposes and acts done for experimental purposes. A plant breeder’s right is not restricted, however, the Minister may authorise any person, upon application, for a compulsory licence, to use a protected plant variety without the plant breeder’s authorisation for the following cases of public interest: (a) social welfare, (b) national security, (c) environment protection. In such cases, the plant breeder will receive fair remuneration.

A plant breeder’s right or an application for the right may be assigned by means of a written document, signed by both parties. The holder of a plant breeder’s right may give someone the authorisation to use such a right in compliance with the provisions on plant breeder’s rights. Any person contravening the provisions of Law no 005 will be liable to pay a fine.

Opposition period relating to trade mark applications and geographical indications

Article 3 of Ministerial Order no. 25 of 17 March 2016 (effective from the date of publication on 20 April 2016) has formally amended the opposition period to oppose a trade mark application and geographical indication to 60 days and repeals Article 3 of Ministerial Order no. 5/10 Minicom of 25 August 2010 which stated that the opposition period of industrial property rights was 30 days. For the past 19 months, however, the Rwandan Registry has implemented a 60 day opposition period in practice. From October 2014, the Industrial Property Journals just started publishing applications indicating a 60 day opposition period. No practice directive was issued by the Registry introducing the change to the opposition period at the time and Article 3 of Ministerial Order no. 25 of 17 March 2016 now provides clarity on the issue.

Ministerial Order no. 25 of 17 March 2016 does not mention whether the opposition period is extendable and what the extension period would be, if applicable, and this will need to be raised with the Registry and clarified in due course.

Article 3 of Ministerial Order no. 25 of 17 March 2016 also provides that upon receipt of an opposition, the applicant for registration of a trade mark application or geographic indication has 14 days to submit a written response to the competent authority about the content of the opposition. Prior to the publication of Ministerial Order no. 25 of 17 March 2016, no specified period had been stipulated in terms of the IP legislation regarding the timeframe within which an applicant is required to respond to an opposition.

Article 4 of Ministerial Order no. 25 of 17 March 2016 now expressly provides that an opposition for intellectual property registration must contain the following information: (a) identity of the applicant, (b) object of opposition, (c) detailed reasons for the opposition, (d) material evidence of the grounds for opposition, (e) power of attorney, if needed and (f) the date and signature of the applicant.

International Registrations designating Rwanda in terms of the Madrid Protocol

Rwanda joined the Madrid Protocol on 17 August 2013 and currently there are reservations around actually designating Rwanda in terms of an International Application because Rwanda has not amended its domestic legislation to recognise intellectual property rights in terms of the Madrid Protocol and there are, apparently, no formal guidelines as to how the Rwandan Trade Marks Office will prosecute International Applications designating Rwanda. Many practitioners therefore recommend that trade mark proprietors should continue to register their trade marks at national level in Rwanda. However, it has been submitted that Article 290 of Law no. 31/2009 already envisages the recognition of the Madrid Protocol in terms of Rwanda’s domestic legislation. Article 290 provides the following: “the provisions of any international intellectual property treaty to which the Republic of Rwanda is party, shall apply. In the case of conflict with the provisions of this Law, the provisions of the international treaty shall prevail over the latter”.

In light of the above, International Applications designating Rwanda in terms of the Madrid Protocol are, apparently, being considered by the Rwandan Registry. Once the Rwandan Trade Marks Registrar receives notification from the WIPO International Bureau, the International Application designating Rwanda proceeds to examination and, if accepted, will be published in Rwanda’s Industrial Property Journal for opposition purposes. If no opposition is lodged, the International Application designating Rwanda will proceed to registration and a notification to that effect will be made to the International Bureau.

Ministerial Order no. 24 of 17 March 2016 (as published on 20 April 2016) sets out the official fees payable for the registration of various intellectual property rights and repeals the previous Ministerial Order no. 6/10/Minicom of 25 August 2010. Ministerial Order no 24 has made provision for, inter alia, the fees payable for International Applications in terms of the Madrid Protocol.

Miscellaneous changes

While provision was made for the publication of applications for opposition purposes in terms of Law no. 31 of 2009, Article 5 of Ministerial Order no. 25 of 17 March 2016 (as published on 20 April 2016) now also provides for the publication of every registered intellectual property right in the Official Gazette and on the website of the Office of the Registrar General. The Rwandan Registry is currently in discussion with the office in charge of the Official Gazette to begin the process of implementing the publication of registered rights.

Ministerial Order no. 26 of 17 March 2016 (as published on 20 April 2016) determines the form and content of a power of attorney required in relation to industrial property rights. Article 3 stipulates that the power of attorney must contain the following information: (a) the name and address of the grantor, (b) name and address of the intellectual property right, (c) the subject and scope of the power of attorney, (d) determination of the place where the power of attorney will be executed, (e) commitment by the grantor of the power to be bound by the acts of the agent within the power of attorney, (f) signature by the grantor with the company’s seal, (g) date on which the power of attorney takes effect and (h) for a grantor whose habitual residence or principal place of business is located outside the Republic of Rwanda, the power of attorney must be certified by a notary.

It was not previously required for a power of attorney to be notarised and simple signature would have been sufficient, but now notarisation is necessary. Article 4 of Ministerial Order no. 26 of 17 March provides that the language of the power of attorney must be in one of the official languages provided by the Constitution (i.e. in either English, French or Kinyarwanda). No translation is required.

by Catherine Wojtowitz

SCA CONFIRMS LAWFULNESS OF BIDDING ON TRADE MARKS AS GOOGLE ADWORDS

On 27 May 2016 the Supreme Court of Appeal handed down a landmark judgment dealing with the lawfulness of bidding on a competitor’s trade mark as a Google Adword. It confirmed that bidding on an unregistered trade mark of a competitor (without more) as a Google Adword does not amount to passing off or unlawful competition.

The Supreme Court of Appeals decision brings South Africa into line with the majority of other jurisdictions (including the United Kingdom, the USA, France, Germany, Spain, Canada, Australia and New Zealand) which have adopted a similar approach to the issue. In most overseas decisions keyword bidding will only be unlawful in certain situations such as where there is a likelihood of confusion or dilution can be shown to exist.

The Court reached its decision in considering a number of factors including giving recognition to the fact that the purpose of the law of passing off is not to create monopolies; and that the necessity to show confusion in passing off cases is important in striking the correct balance between protecting the rights of traders and promoting competition. For this reason court declined to recognise that the use of trade marks as an Adword justified the recognition of a broader unlawful competition remedy which dispensed with this requirement. The Court also held that consumers are used to having to “sort the wheat from the chaff” in internet search results and therefore are not likely to be confused by use of a trade mark as an Adword, provided that the text of the advertisement displayed is not confusing and enables consumers to correctly determine the source of the goods or services on offer.

The decision was handed down in a dispute between Cochrane Steel Products (Pty) Ltd and M-Systems Group (Pty) Ltd, who both provide security fences. For previous commentary on this case, click here

Media Queries may be directed to Mark Beckman (Communications) 

Mobile (SA) 074 263 5664 / mark.beckman@adamsadams.com

Darren Olivier

Partner
Attorney

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PRESS PLAGIARISM | MONEYWEB v M24

Moneyweb, a provider of an online news publication, brought an application in 2013 against a competitor, Media 24, before the Local Division of the Gauteng High Court in Johannesburg, based on copyright infringement. Moneyweb’s complaint was that seven articles published on its website were substantially copied and published on Media24’s financial news website, Fin24.

The Court issued a decision on 5 May 2016 declaring that Media24 had infringed the copyright in only one of the seven articles in which Moneyweb (Pty) claimed copyright.

In deciding the matter, the Court primarily had to consider three issues, namely:

  1. whether copyright subsisted in Moneyweb’s articles as original literary works;
  1. if so, whether Media24 had reproduced “a substantial part of the relevant article[s]” thereby infringing Moneyweb’s copyright; and
  1. whether certain defences under the Copyright Act were available to Media24.

In order for copyright to subsist in the articles, Moneyweb was required to prove that the articles were original. Originality in this context does not require creativity but rather that the articles were created as a result of the author’s own skill, judgment or labour and not slavishly copied from existing material. The Court examined the circumstances surrounding the creation of each article separately and found that Moneyweb had failed to prove originality in the creation of four of the articles. Three of the articles, however, were found to be original.

Media24’s first defence was raised in terms of Section 12(8)(a) of the Copyright Act, which provides that no copyright shall subsist in “news of the day that are mere items of press information”. The Court rejected its defence on the basis that, since the three articles were found to be original, they could not be classified as “mere items of press information”.

The court then had to decide whether the portions of the articles that had been copied were substantial and accepted that the correct test involved an assessment of the quality or importance of the copied content and not simply the quantity of the copied text. The Court found that Media24 had only reproduced a substantial part of one of Moneyweb’s articles. The article in question was more or less a verbatim copy of Moneyweb’s article and the Court found that Media24 had “taken more than a substantial part; it had taken the core” of the article. The publication of Media24’s article, therefore, was found to have infringed Moneyweb’s copyright. In connection with the other two articles, the Court found that the content that had been copied was not substantial (in quality or quantity) and, therefore, that the publication of the articles did not infringe Moneyweb’s copyright.

The second defence raised by Media24 was that its conduct constituted “fair dealing” within the meaning of Section 12(1)(c)(i) of the Copyright Act. This provision states that copyright shall not be infringed by any fair dealing with literary works for the purposes of reporting current events provided that the source shall be mentioned as well as the name of the author, if it appears on the work.

Although the Court found that Media24 had complied with the requirement to name the source and author by providing a hyperlink to the original article, it rejected the defence on the basis that Media24 could not prove that its near-verbatim copy of Moneyweb’s article was fair.

Despite succeeding with one of its claims, the Court ordered Moneyweb to pay 70% of Media24’s legal costs since the latter had been “substantially successful in defending the claims”.

The second leg of the case will decide Media24’s liability for damages arising from its infringement of the article concerned.

by Kareema Shaik | Senior Associate

Dale Healy

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Kareema Shaik

Senior Associate
Trade Mark Attorney

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AFRICA IP ROADSHOW 2016

The Adams & Adams team is at the INTA 2016 Annual Meeting in Orlando, Florida, after the first Africa Roadshow in New York recently. The roadshow provided an economic overview of Africa; as well as sessions and panel discussions on pitfalls and strategies in protecting your IP rights in Africa; transfer pricing and IP; innovation in Africa; competition law, South Africa’s IP policy and substantive examination; and effective anti-counterfeiting strategies.

Africa Nicky

9.15: Nicky Weimar, senior economist, Nedbank South Africa, begins the day with an economic overview and some surprising stats: did you know the Seychelles has the largest GDP per capita in the continent, while Ethiopia’s economy grew 10.5% a year from 2005 to 2015, and consumer spending in Mozambique grew 15% in 2015?

Nicky explains how Chinese investment fuelled this growth, but notes that there has been a drop since 2012. She predicts “three tough years ahead”, but says beyond that there is great potential in the continent – partly due to under-utilised arable land and reserves of commodities. “But there is also more to Africa,” she says, as many governments are seeking to diversify their economies, for example by investing in manufacturing.

Conflicts and corruption still present challenges, she says, but things are improving. “We’ve seen significant improvements in places like Rwanda where you can now start a business online at virtually no cost.” Telephone and internet use are growing rapidly.

There are lots of questions, many asking Nicky to expand on some of the many charts she has presented on African economic data.

11.00: In our webcast session, Simon Brown of Adams & Adams begins by stating that all but two African countries have functioning IP systems (the exceptions are Somalia and Eritrea). Even in South Sudan, it is possible to obtain trade mark protection, he adds.

Africa TM panelThis panel is taking the form of a Q&A, with Charles Macedo of Amster Rothstein & Ebenstein playing the role of a US counsel, asking about protection in Africa. Brown tackles topics including trade mark examination, registration and opposition (including in the regional OAPI and ARIPO systems) while his colleague Jenny Pienaar addresses enforcement questions. Regarding the 17 countries of OAPI, she says: “You would have to sue for infringement in each country.”

There’s an interesting discussion about well-known trade marks. Pienaar says there is “substantial case law” in South Africa, and stresses the need to show that a mark is well known in the country where it is applied for. What about spillover reputation and goodwill? “You can show free flow of products between the two countries, but you would need substantial evidence,” says Pienaar.

Turning to enforcement, the speakers emphasise inconsistency, partly due to the lack of specialist IP courts. But she says there have been some positive decisions, notably in Kenya.

Kevin Curran of Ascensia Diabetes Care asks about packaging and labelling, and Pienaar emphasises the different regulatory requirements in each country, for example NAFDAC in Nigeria.

12.10: What is transfer pricing? asks Ashlin Perumall of Adams & Adams in today’s third session. “It’s the intersection between tax and intellectual property,” he explains: about 45% of export trading relates to subsidiary trading, and that leads to conflicts between revenue agencies. “IP is the most important area of transfer pricing today,” he argues.

Perumall-Ashlin

Perumall introduces us to the Double Irish Dutch Sandwich, the arm’s length principle and the OECD guidelines. Many African countries have put transfer pricing measures in place, he adds, emphasising advance pricing agreements, fixed margins and safe harbours: “The trend will be to move to the arm’s length standard across Africa.” He stresses that “many countries are new to the party” and the lack of comparables increases the risk.

He then takes us on an epic tour of the TP regimes in South Africa (a high-risk country), Angola, Botswana (no TP legislation at this time), Egypt (very robust legislation), Ghana, Kenya, Mauritius, Mozambique, Namibia and Nigeria (a strong player with robust exchange controls).

Jac Marais adds some comments regarding the first two transfer pricing cases now pending in South Africa.

1.45: After lunch (left) we move on to “innovation in Africa”. The ever-smiling Fernando dos Santos of ARIPO talks about the “lack of awareness” of IP in the region, and how ARIPO can promote IP for the benefit of the continent. Activity is focusing on universities and research institutions, he says.

Lucinda Longcroft of WIPO expands on this theme, talking about how innovation from Africa can benefit the rest of the world. “There is enormous wealth of creativity and innovation in African countries,” she says, pointing to the call for innovations for the sustainable development goals, announced yesterday. Longcroft also sets out the November 2015 Dakar Declaration.

Andrew Hirsch of IIPI makes today’s first mention of the Big Five – not wild animals in Africa, but the five biggest patent offices. He adds that the top 15 countries in the world account for 95% of patents filed.

Hirsch introduces the Technology Bank for least-developed countries (LDCs), which he says will empower people and is feasible. “It will change the way people think about how they fit in with the world. It can change the debate,” he says. “The developed world needs to develop Africa. That’s in everybody’s interest.”

Moving to a micro level, Bonnie Nannenga-Combs of Sterne Kessler Goldstein & Fox describes her firm’s recently established pro bono practice, which is focused on economic, social and cultural rights. “We are looking for inventors that are disenfranchised either themselves or due to their region,” she says, adding that the IP system does not always function well in areas of poverty.

Nannenga-Combs gives some examples including: (1) obtaining patent rights for a tribe that harvests the genipa americana blue fruit in the Colombian rainforest, giving them a sustainable way to monetise and control their rights; (2) a patent application for a Native American individual who had developed a hydroponics system. If you can identify a potential innovator who may need help with the patent system and who is disenfranchised, says Nannenga-Combs, let me know!

2.50: Antitrust is a growth area in Africa, says Adams & Adams commercial partner Jac Marais, saying it is driven partly by consumer protection and partly by a means to control big business. “There is no one-size fits all approach in Africa,” he says. “That makes compliance in Africa always a bit tricky.”

Marais-Jac

Despite that, he says there is harmonisation partly thanks to COMESA. The latest news is that Comoros adopted antitrust legislation in the past few weeks, without any notice period: penalties are up to 5% of global turnover.

Kenya (a COMESA member) is an active antitrust jurisdiction, says Marais, with a Competition Act passed in 2010. Notably, in a fertilizer case, investigators from South Africa, Kenya and Zambia launched coordinated actions. By contrast, Nigeria has no antiturst law at present – but Marais says the country is “a huge risk” as it could adopt legislation overnight and target existing cartels.

In South Africa, there were six dawn raids in March alone. Among the targets of competition enforcers are providers of professional services (including attorneys) who have minimum prices.

Marais concludes with three antitrust trends: criminalisation, cooperation and the rise of regulation.

lunch-Africa

3.45: The next session is on IP policy in Africa. Fernando dos Santos says the laws are in place, but implementation and enforcement remain a challenge. Lucinda Longcroft connects IP policy with economic development, and points out that IP is controversial for many people, and those within the IP system need to spread the word about its benefits: “IP is a great tool for development.”

What is the status of the Pan-African IP Organisation (PAIPO), asks moderator Danie Dohmen. Dos Santos says it is a high-level initiative, but will take a long time to develop and must be driven by national IP policies.

Dohmen provides an update on South Africa’s IP policy, which is of particular interest to the pharma industry. The latest draft is close to being finalised, he says, but any legal changes will take five to 10 years. “A big thing we expect is the use of the TRIPs flexibilities,” he says. “We think there will be a big attempt to balanced IP rights with public interest/socio-economic needs.”

Witney Schneidman of Covington & Burling agrees it is important to “get the right balance”. One of the changes under discussion is a stricter invention threshold, but Schneidman says he’s “optimistic” the right balance can be found. Richard Parr of Merck is also on the panel and discusses access to medicines: he too is optimistic that things will be worked out.

Another expected change is the introduction of oppositions. Parr says he personally favours a post-grant system such as that in the EPO.

Compulsory licensing is discussed and Longcroft refers to the WIPO database on flexibilities in the IP system. Dohmen says a substantive search and examination system is likely to be introduced, based on the Malaysian system.

Godfrey Budeli5.00: The final session of the day is on Effective anti-counterfeiting strategies in Africa.

Godfrey Budeli from Adams & Adams kicks us off with a thorough look at the extent of the counterfeiting problem in Africa. “The sale of counterfeit goods in Africa is extremely high,” he says. “The mind set of the African people is generally one of acceptance of counterfeit goods as result of ignorance and poverty.”

Budeli noted a number of challenges in countering this problem including limited resources, insufficient manpower, lack of knowledge of IP and inexperience in IP offices, widespread corruption, and outdated and/or no legislation at all.

However, companies can make use of a number of strategies. Two obvious ones are to register your trade marks and record that registration with customs. Not all countries have formal recordal systems in place, but Algeria, Morocco, Tunisia, South Africa, Zimbabwe, Ethiopia and North Sudan do. “The last three are in theory,” noted Budeli.

Budeli also strongly urged customs training. “Once an application made to customs or border police it is important to engage in customs training on regular basis,” he said. “Explain there is a problem with this particular brand, and could you please be on the lookout for these goods. You may think this training is unimportant but it is extremely useful!” Officials often get rotated to avoid bribery, for example.

Civil and criminal remedies are available but unlike EU brand owners required to take proactive steps. There is no designated counterfeit goods depots and no controlled destruction facilities.

Voluntary surrenders are also quick and cost effective. “This is efficient where small quantities are involved,” said Budeli. “It guarantees the destruction of goods, and no storage costs are applicable.”

Budeli gave some real life examples of manufacture locations for counterfeit goods. On one building in South Africa, Budeli commented: ‘Ladies and gentlemen, if you raid this building in the morning, if you go back in the afternoon it will look the same as before the raid.”

Anti-counterfeiting panel

Andrew Hirsch, director general of the International Intellectual Property Institute, gave a presentation which included a number of factors that can help tackle the theft of IP. These include: connectivity and clusters; capacity of law, institutions, markets, educations; customers; culture; capital, human and other; traditional knowledge; genetic resources; and traditional and cultural expressions. On culture Hirsch noted: “You cannot even communicate properly if you don’t have a respect for culture.”

Lastly, Douglas Graham from Ideation started his presentation by revealing 30% of medicines in Africa is counterfeit. He noted three categories for stopping counterfeiting: local, central and global.

“For local, many come from currency. The kind of things you see here is global recognition, taggants in ink, paint, hidden indicia, holograms, serial numbers and check digits, and RFID chips. But all of these can be defeated by sophisticated counterfeiters and a lot of them are these days.”

This leads to central solutions such as DRM and central registries. But the problem is these can be hacked.  “So you need a registry globally available, massively redundant and cryptographically concerned. So what do you get? A block chain.” Story by Michael Loney and James Nurton (Managing Intellectual Property)

INTA

Danie Dohmen

Partner
Patent Attorney

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Godfrey Budeli

Partner
Trade Mark Attorney

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Jac Marais

Partner
Commercial Attorney

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Jenny Pienaar

Partner
Trade Mark Attorney

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Simon Brown

Partner | C0-Chairperson – Trade Marks Department
Trade Mark Attorney

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NEW TRADE MARK PROVISIONS FOR DAIRY PRODUCTS

On 28 March 2016, the new Regulations relating to the Classification, Packing and Marking of Dairy Products and Imitation Dairy Products Intended for Sale in the Republic of South Africa (“the Regulations“) came into effect. The Regulations were issued by the Department of Agriculture, Forestry and Fisheries (“DAFF”), and repeal the previous Dairy Products and Imitation Dairy Products Regulations. The Regulations bring about a number of changes in the classification and marking of dairy products and imitation dairy products that are sold in South Africa, and industry members have had to review their product packaging, to ensure that the packaging complies with the new requirements.

From a trade mark perspective, one of the changes brought about by the Regulations relates to the allowable letter size of certain elements on the container of a product, in proportion to the class designation that appears on the product pack (the “class designation” refers to the type of product, for example “Low Fat Milk”, “Unsalted butter”, “Full fat cheese spread”, etc). Regulation 25(7)(a) provides that no word or expression that appears on the container of a dairy or imitation dairy product may be bigger than the letter size of the class designation that appears on the main (or front) panel of that product, unless it is a registered trade mark or trade name. This provision is stricter than the previous corresponding provision of the repealed Dairy Products and Imitation Dairy Products Regulations, which allowed for both registered and unregistered trade marks to be displayed on pack in a letter size bigger than the letter size of the class designation.

Against this background, in terms of Regulation 25(7)(a), the only words that are allowed to be displayed bigger than the class designation on pack, are registered trade marks. Other elements that are not registered trade marks, for example descriptive words (such as “Chocolate flavoured”, “1 litre”, or “Shake well”) and unregistered trade marks, must be displayed in a letter size that is smaller than, or equal to, the letter size of the class designation.

The packaging of some products on the market currently indicate unregistered trade mark elements in a letter size that is bigger than the letter size of the class designation of the specific product on pack. In the circumstances, and in order to comply with Regulation 25(7)(a), industry members affected by this provision are required to amend non-conforming product packaging to be in line with Regulation 25(7)(a), by appropriately reducing the letter size of those elements on pack.

An alternative approach would be to obtain registered trade mark rights in the package elements that are affected by Regulations 25(7)(a), where appropriate. Although some manufacturers may prefer this option, in order to allow their product packaging to remain unchanged, this route it is not without its difficulties, and may not be a suitable approach in all instances, as discussed below.

In terms of the Trade Marks Act of 1993, in order to be registrable, a trade mark must be capable of distinguishing the goods of a person, in relation to which it is registered or proposed to be registered, from the same goods of others in the trade (i.e. that mark must not be descriptive of the goods in relation to which it is used or proposed to be used, and for which registration is sought). It follows, therefore, that dairy product manufacturers will not be able to obtain registered trade mark protection for wholly descriptive elements that appear on pack. Consequently, those elements must be displayed in a letter size that is smaller than, or equal to, the letter size of the product class designation on the main panel of the pack, in order to comply with Regulation 25(7)(a).

Another issue, assuming that a certain product package element that is affected by Regulation 25(7)(a) is capable of registration in terms of the Trade Marks Act, is the fact that it takes, on average, about two to three years to obtain registered trade mark protection for a trade mark, from the date of filing a trade mark application with the Trade Marks Registry. Many dairy product manufacturers who have started aligning their product packaging to be in line with the Regulations, by filing trade mark applications for relevant unregistered trade mark elements that are affected by  Regulation 25(7)(a), are still waiting for the Trade Marks Registry to examine those trade mark applications for registrability. Consequently, for many businesses in the industry, compliance with Regulation 25(7)(a) at this stage poses practical difficulties, as a result of the delays at the Trade Marks Registry.

Against this background, and in order to accommodate the industry, DAFF has issued a dispensation in respect of Regulation 25(7)(a). In essence, the dispensation provides that the letter size of trade marks that are still in the process of registration and that have not yet proceeded to registration (i.e. marks that are the subject of pending trade mark applications) may be displayed on pack in a letter size bigger than the letter size of the class designation that appears on the main panel of the product, provided that:

  • in the case of products that are already on the market, it can be shown that an application to register the trade mark was filed prior to 28 March 2016, and that the trade mark does not contravene any other provision ofthe Regulations; and
  • in the case of new products to be launched in the trade, an application to register the trade mark was filed prior to the launch of the productand that the trade mark does not contravene any other provision of the Regulations.

The dispensation also stipulates that, in the event that a trade mark application is unsuccessful (i.e. the Registrar of Trade Marks is unwilling to register the relevant mark as a trade mark), the label of the product must be amended to be in accordance with the Regulations (and, specifically, Regulation 25(7)(a)), as soon as possible. The effect would, therefore, be that the relevant product label would have to be amended to make the relevant unregistrable element the same size as, or smaller than, the letter size of the class designation that appears on the main panel of the product.

It should be noted that the dispensation is not absolute. DAFF may withdraw permission, in terms of the dispensation, to use a trade mark which is the subject of a pending application in a letter size bigger than that of the class designation on pack, should it receive a valid complaint which justifies the withdrawal of such permission. Furthermore, the dispensation will be in force for a limited period only, and will terminate when the next amendment to the Regulations is published in the Government Gazette. This date is uncertain, and the period that the dispensation will be applicable is, therefore, also uncertain.

by Jeanette Visagie | Associate

Jenny Pienaar | Partner

Jenny Pienaar

Partner
Trade Mark Attorney

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MOZAMBIQUE | PATENT COOPERATION TREATY SEMINAR

On 20 & 21 April 2016 the Mozambique Intellectual Property Institute (IPI) held a Patent Cooperation Treaty (PCT) seminar, in cooperation with WIPO and ARIPO in Maputo. The event was sponsored by Adams & Adams Mozambique and was attended by 80 delegates comprising Intellectual Property agents, inventors and representatives from several Government agencies. The Mozambican Registrar, Mr. José Meque, officially opened the event. A similar seminar was held in Beira, the second largest city in Mozambique, on 18 and 19 April 2016.

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

Nicky Garnett

Partner – Head of Africa Patents
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PATTERNING SUCCESS THROUGH STRONG IP STRATEGIES

Beyoncé may have drawn further attention to his name when she endorsed his luxury designs in a blog post on Saturday, but Laduma Ngxokolo says the brand boost is only one step in the right direction. These were his comments to John Robbie on 702 after being asked about the ‘shout out’ by the pop icon of Destiny’s Child fame.

MaXhosa, a fashion label that uses traditional bead work motifs and patterns of 702 & Cape Talk

Laduma Ngxokolo is already an internationally acclaimed and award-winning textile designer of ethnic-inspired knitwear. A young proudly African Port Elizabeth-based designer, Laduma’s talent was nurtured early by his late mother, Lindelwa Ngxokolo.

His journey to internationally recognised and highly sought-after designer is nothing short of spellbinding. “My passion for knitwear began when I used to help my mother machine-knit garments for sale,” says Laduma.  His first hands-on experience of textile design was during his high school days at Lawson Brown High School in Port Elizabeth.

In 2010, his design work titled ‘The Colourful World of the Xhosa Culture’, a translation of South African mohair and merino wool men’s knitwear inspired by traditional Xhosa beadwork, won the international Society of Dyers and Colourists (SDC) Design Award in London.

Laduma’s designs are unique and different in the world design arena. As a young designer and entrepreneur he is very aware of his intellectual property rights and the need to protect his design.  He filed applications to register some of his designs for his knitwear and the wall clock design.  He also filed trade mark applications to protect his brands LADUMA NGXOKOLO and MAXHOSA BY LADUMA.

“I see my designs as my assets and I am well aware that there are copycats all over the world who would happily knock off original designs. Young designers and creatives need to focus on protecting their brands and designs.  As an entrepreneur, you have to focus on both the creative and the business side.”

Laduma has worked with Adams & Adams on protecting his intellectual property.  Mariette du Plessis, senior partner, who has been involved in Laduma’s IP portfolio, says “It is refreshing to come across a young South African designer who realises the value of his creativity and the need to protect it.  Laduma’s designs are unique, yet very South African and have made an enormous impact wherever exhibited.  For that reason, Laduma is wisely taking the necessary steps to protect his brands in South Africa and we shall also assist him with his IP portfolio abroad.“

“Laduma will be a role model for young designers, as he has not only focused on the creative side, but is equally focused on his business, which will stand him in good stead in the long run,” says du Plessis.

AN IP PATTERN FOR YOUNG DESIGNERS

We asked Mariette du Plessis for advice for young creatives who want to learn lessons from Laduma’s success.

“My message to creatives is to learn from Laduma’s example. Do searches on the internet before you adopt your brand.  Then conduct searches at the Trade Marks Office to ensure that you do not infringe on anyone’s rights.  Register your brand as a domain name, on Facebook and as your Twitter handle to ensure that somebody else does not pinch it and, most importantly, apply to register your brand and design (or both). Design protection gives a very strong monopoly and there are 32 categories in which your design can be registered. This is especially important for jewellery, textile and wallpaper designers, as it is only relevant for designs that will be multiplied and not for once off art works. Those will qualify for copyright protection. Prevention is always better than cure and to protect your creative rights is the best way to ensure that only you benefit from your creations.“

Mariëtte du Plessis

Partner
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UPDATE ON NEW IP CODE IN MOZAMBIQUE

The new Mozambique Industrial Property Code was approved by the Council of Ministers of Mozambique by Decree no 47 of 2015, on 31 December 2015 (“the New IP Code”).  It will come into force on 31 March 2016 and will replace the existing Industrial Property Code, Decree no 4 of 2006 (“the Old IP Code”).  Trade marks, patents and other IP rights filed in Mozambique up until 30 March 2016 will still be subject to the Old IP Code.

Most of the sections in the New IP Code have been re-worded with the bulk of the changes relating to procedural and administrative issues. In particular, various changes entail either a shortening or extension or clarification of the time periods within which to oppose the granting of the different forms of intellectual property rights or comply with formalities. For example, the time period within which to oppose a trade mark application has been reduced from sixty to thirty days while, in respect of all IP rights, the deadline to submit outstanding documents (such as a power of attorney) has been extended from fifteen days to thirty days.

The New IP Code also envisages a few substantive changes, however.  Insofar as trade marks are concerned, one significant development is that the New IP Code gives recognition to ARIPO registrations by way of “Regional Registrations”.  This is to prepare Mozambique for when it accedes to the Banjul Protocol.  The Mozambique authorities are still in the process of negotiating Mozambique’s accession to the Banjul Protocol.

With regard to the sections of the New IP Code dealing with patents, utility models and designs, these now make provision for the Director General to issue provisional refusals. Certain additional exclusions from protection have been incorporated into the New IP Code.

Geographical Indications and Designations of Origin (already recognised in the Old IP Code) now have a more comprehensive legal framework and the New IP Code makes provision for Industrial Property Rights to be pledged and given as security.   New (increased) official fees are expected to come into force likely between April and June this year, once approved by the competent Ministries.  A more detailed overview of the New IP Code is included below.

Industrial Property Rights provisions:

Definitions for “Franchise Agreements”, “Technology Transfer Agreements”, “Designations of Origin”, “Intellectual Property” and “Establishment Names (relating to the registration of Business Names)” have been incorporated into the New IP Code. The definitions for “Geographical Indications” and “Insignias of an Establishment” have changed.

A new section has been incorporated into the New IP Code relating to the “Effects of Registration of Industrial Property Rights”.  Regarding formal requirements, the deadline to submit outstanding documentation/information (such as powers of attorney) has changed to 30 days from the date of notification (as opposed to 15 days provided for in the Old IP Code).

If an applicant is deemed to have abandoned an application for an Industrial Property Right, the New IP Code provides that the IPI shall always notify the applicant of the abandonment.  Regarding the provision dealing with providing proof of an Industrial Property Right, the New IP Code provides that the relevant registration certificate should be provided within 15 days from the date of filing the request for proof.  The Old IP Code prescribed no time limit in this regard.

The New IP Code provides that with reference to the issuance of “registration certificates” (“certidoes” – see note below)* of Industrial Property Rights, the certificates shall be delivered within 5 days from the date that the request is filed.  No such time limit was imposed on the IPI (Industrial Property Institute) in terms of the Old IP Code in this regard.

The deadline to appeal against the Director General’s decision has changed to 30 days in terms of the New IP Code (as opposed to 60 days in the Old IP Code).  The New IP Code also makes provision for an appeal to the Minister of Industry and Commerce against decisions of the Director General of IPI.

The New IP Code provides that annulments of Industrial Property Rights may be raised within 90 days from the date of publication of the final grant or refusal of the right.  The Old IP Code, however, provided that the annulment may be sought within one year.

In the case of a third party wishing to lodge an opposition against the decision to restore an applicant’s Industrial Property Right, he must do so within 30 days of the publication of the notice of restoration, according to the New IP Code.  The Old IP Code provided that this should be done within 2 months of the said publication.

The New IP Code now provides that Industrial Property Rights can be pledged and given as security and are subject to seizure and attachment.

Provisions relating to Patents:

Regarding the protection of patents, the definition of “State of the Art” has been amended in the New IP Code.

An additional exclusion from patentability has been incorporated into the New IP Code, namely, “projects, whatever their nature or area of application”.

Regarding the provision dealing with the inventor needing to inform his employer of his invention in writing, this now needs to be done “as soon as possible” in terms of the New IP Code. The Old IP Code provided that this should be done within 6 months from the date the invention was completed.  The New IP Code provides that the employer now has 6 months from the date of communication of the invention by the employee to express his interest in the said invention and if he fails to do so within that time period, the employee shall have the right to assume ownership of the invention or transfer it to 3rd parties.

Regarding the supporting documentation to be filed for a patent, the New IP Code provides that this shall now be filed in triplicate, although this was always done in practice.

The New IP Code provides that the rights of a patent holder shall not extend to, inter alia, “acts done privately and on a non-commercial scale or for non-commercial purpose, provided that it does not significantly prejudice the commercial interests of the patent holder” and “acts relating to the preparation in a pharmacy of provisional medication for an individual in accordance with prescription given by a registered medical practitioner”.

The New IP Code provides for the provisional refusal of a patent application by the Director General.  A notification of such provisional refusal, including the grounds thereof, should be issued to the applicant within 5 days and the applicant will have 30 days within which to respond.  No response by the applicant will automatically result in the refusal being made final.  No provision is made for obtaining an extension of time.

Regarding the provision dealing with the licensing of patent rights and where the proprietor of the patent may request the IPI to place the patent on offer to the public for licensing in the Industrial Property Journal, the New IP Code provides that this must be done within no less than 12 months.  In terms of the Old IP Code, no such time limit was applicable.

Provisions relating to Utility Models:

Regarding the requirements for an invention to qualify as a utility model, the New IP Code has expressly excluded “pharmaceutical” and “agro-pharmaceutical” products from qualifying as a utility model.

The Old IP Code provided that the conversion of a utility model into a patent could be done at any time prior to examination stage of the application, however, the New IP Code provides that this may be done prior to publication of the application.  The New IP Code also makes provision for the provisional refusal of utility models similar to patents, mentioned above.

The New IP Code provides that the time periods relating to opposing the grant of a utility model, reply to the opposition and reply to notices of provisional refusal shall be 30 days. The Old IP Code merely provided that the procedural processes in respect of applications for utility models should be more simplified and faster than the procedures for patent applications and no time limits were imposed.  The New IP Code provides that if there is no opposition after 30 days of the date of publication, the utility model application shall be granted without any formalities as to substantive examination and this is not provided for in the Old IP Code.

Provisions relating to Industrial Designs:

The procedure relating to the opposition of industrial designs has now been clarified in the New IP Code. Any person who feels the grant of an industrial design would be detrimental to him may oppose the application within 30 days from the date of its publication in the Industrial Property Bulletin containing the notice of grant. The time period may be extended only once for a maximum period of 30 days. The opposition will need to be submitted in triplicate and substantiated by matters of fact and law. The applicant will need to respond to the opposition within 30 days, which period may be extended only once for a maximum period of 30 days. The Director General shall decide on the outcome of the opposition and shall notify the interested parties of his decision.

The New IP Code also provides for the provisional refusal of a design application by the Director General. The decision shall be made within 30 days and the applicant shall be notified of the provisional refusal within 5 days from the date of decision. The applicant is then required to reply to the notice of provisional refusal within 30 days, failing which, the refusal will become final.

Provisions relating to Trade Marks:

The New IP Code provides that the opposition period in relation to trade mark applications is now 30 days (as opposed to 60 days as provided in the Old IP Code).  As such, an opposition must now be lodged within 30 days after the advertisement of an application in the Industrial Property Bulletin. An extension for a maximum period of 60 days may be applied for.  No further extension is allowed. The applicant will need to respond to the opposition within 30 days and may seek an extension, only once, for a maximum period of 30 days.  The Director General shall decide on the outcome of the opposition and shall notify the interested parties of his decision.

The New IP Code provides that if the Director General provisionally refuses an application, that the applicant should be notified of the provisional refusal within 5 days from the date of the decision.  The Old IP Code provided that the applicant shall be notified “immediately” of a provisional refusal.  The applicant shall reply to the notice of provisional refusal within 30 days, failing which, the refusal shall become final.   The New IP Code provides that an applicant shall be notified of the final decision to grant or refuse the application within 5 days.

Entirely new sections (Articles 142 to 153) have been incorporated into the New IP Code regarding “regional registrations”, giving recognition to ARIPO registrations which amounts to a substantial amendment to the existing Trade Mark Law in Mozambique.  However, it is important to note that Mozambique has not yet acceded to the Banjul Protocol.

The New IP Code provides that the opposition period in relation to International Registrations is now 30 days (as opposed to 60 days as provided in the Old IP Code).  Another change specifically in relation to International Registrations is that the New IP Code now provides that the due date for submission of Declarations of Intention to Use (“DIU”) shall run from the date of notification of the International Registration.  The Old IP Code provided that the due date would run from the date of the International Registration (as opposed to the notification thereof).  The New IP Code also provides that the date of registration of an International Registration shall be the date that the International Bureau of the World Intellectual Property Organisation registers the application on its database.

Provisions relating to Designations of Origin and Geographical Indications:

Most of the “new” provisions incorporated into the New IP Code in relation to Designations of Origin and Geographical Indications were already foreseen in a separate Decree (no. 21 of 2009), but which has been revoked and replaced by the New IP Code.

In terms of the New IP Code, the IPI shall now keep an up-to-date register of registered Geographical Indications and Designations of Origin.  It sets out who would have legal capacity to apply for registration of a Geographical Indication and Designation of Origin.

Additional requirements have been created in terms of the New IP Code, namely, “a single document” must now be lodged at the time of filing the application which should contain the following information: the name, description of the product, including specific rules relating to its packaging and labeling and a concise description of the geographical area; a description of the link between the product and the geographical environment or the geographical origin including, if appropriate, the specific elements in the product description or production method that justify such a link.  If the application relates to a geographical area in a third country, the application for registration shall also comply with the conditions required and shall contain proof that the designation in question is protected in its country of origin. In addition, the application shall be written in Portuguese or if drafted in another language, it shall be accompanied by an official translation into Portuguese.

The New IP Code provides for additional specifications (in addition to that which was required in terms of the Old IP Code) to be complied with, namely, the specifications shall now also contain the description of the product, including raw materials, if any, and the main physical, chemical, microbiological or organoleptic characteristics of the product; the factors that prove that the product originates in the defined geographical area; the description of the method used to obtain the product and, if necessary, the unvarying and authentic local methods used as well as any information concerning its packaging. The specification shall also contain factors that justify the relationship between a specific quality or the characteristics of the product and the respective geographical environment/origin; the name and address of the authorities that check compliance with the provisions of the specifications and their specific responsibilities and any specific labeling rule for the product in question.

The New IP Code has created provisions to ensure that there is compliance with the specifications and provision has been made to apply for amendment of the specifications, particularly taking into account scientific and technical developments or to revise the demarcation of the geographical area.  Minor amendments will also be allowed subject to IPI approval.

The New IP Code provides that once all the requirements have been fulfilled, the IPI shall cause the application for registration of a Geographical Indication or Designation of Origin, together with the single document, to be published in the Industrial Property Bulletin.  In terms of the Old IP Code, Geographical Indications or Designations of Origin were not required to be published.  The New IP Code makes provision for provisional protection of Geographical Indications and Designations of Origin after publication, before they proceed to registration.  Some new grounds for refusal of Geographical Indications and Designations of Origin have been created in the New IP Code.

It is now possible to oppose an application for a Geographical Indication or Designation of Origin in terms of the New IP Code (which was not provided for in terms of the Old IP Code) within 30 days after the date of publication of the application in the IP Bulletin.  The IPI shall send a copy of the opposition to the applicant, giving him notice to respond to the opposition within 60 days.  The mentioned times periods may be extended only once for a maximum period of 30 days.

The New IP Code provides that when a Geographical Indication or Designation of Origin proceeds to registration, a registration certificate shall now be issued as proof thereof.  In terms of the New IP Code, it is now possible for any natural person or legal person with a legitimate interest to apply for cancellation of registration of a Geographical Indication or Designation of Origin, by providing appropriate grounds.

Provisions relating to Trade names, Establishment Names and Establishment Insignias:

The opposition period in relation to Trade names, Establishment Names and Establishment Insignias has also been reduced from 60 days to 30 days in the New IP Code.

General provisions:

The Old IP Code provided that Industrial Property Rights belonging to non-profit organisations shall be exempt from registration fees.  The New IP Code, however, provides that Industrial Property Rights belonging to such entities are subject to the formalities and charges provided for in the Code but the Director General may, upon a justified request by an interested party, decide on the exemption from payment of fees by non-profit organisations.

The New IP Code provides that the Industrial Property Bulletin shall be published on a monthly basis. The Old IP Code provided that the Bulletin would be published every 2 months by the IPI.

Conclusion:

The changes incorporated into the New IP Code are of importance to all practitioners and clients seeking to protect and enforce Intellectual Property Rights in Mozambique.  Some minor errors were contained in the New IP Code and the rectified document shall be published in the Government Gazette soon.  Watch this space.  If you have any queries, please do not hesitate to contact us.

CATHERINE WOJTOWITZ | ASSOCIATE

* Note: The Portuguese words “certidao” and “certificado” are each translated in English to mean “certificate”, however, “certidao” has its own legal meaning, referring to an authenticated copy or transcript recording the contents of an original document and should not be confused with the generic and more common term “certificado”.

ADAMS & ADAMS CROWNED AFRICA IP FIRM OF THE YEAR 2016

London | At the lavish MIP Global Awards banquet held at The Savoy on 10 March, Adams & Adams was confirmed as the leading law firm in Africa by Managing IP for 2016. Partners, Dario Tanziani and Danie Dohmen were 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 continent.

“We are immensely proud of the reprised validation by members of MIP of our firm’s dominance in Africa,” said current firm Chairman, Gérard du Plessis, of the award. “We are also grateful that our global clients continue to trust the legal strength of Adams & Adams as we continue to extend our reach to support commercial interests in Africa’s growing economies, and in so doing establishing strong Intellectual Property and Commercial services in key business hubs across the continent.”

Earlier, at the International Patent Summit, the Adams & Adams partners addressed visitors on the IP landscape in Africa and expounded on the firm’s experiences related to the scope and feasibility of patent searching, and the Madrid system in various jurisdictions in Africa. Danie Dohmen also provided analysis on recent case law developments impacting on patents, designs and trademarks strategies
in South Africa.

Best Law Firm in Africa

Adams & Adams Management Committee Partners with the MIP Awards

AFRICA EXPANSION

Adams & Adams continues to push the boundaries of its evolution and positioning. Africa’s largest intellectual property law firm established an Associate office in Egypt, in December 2015, that will also service the firm’s clients in the other North African territories of Algeria, Libya, Morocco, Tunisia as well as the north eastern territory of Sudan. This is a first for a South African law firm and brings to 15 the number of Associate offices in different African countries that form part of the Adams & Adams Africa Network (AAAN). These include offices in Mozambique, Angola and Cameroon which service important jurisdictions and the important regional IP organisations, ARIPO and OAPI.

“We are very excited by these recent developments. The addition of North Africa onto our Network places Adams & Adams in a unique position in terms of its IP offering on the African continent”, Simon Brown, Partner and Co-Chairperson of the Trade Marks Department.

Adams & Adams’ strategy has not only been to expand its network in Africa but to ensure that this expansion is beneficial to its clients by aligning workflows leading to greater efficiency and more advantageous pricing to its clients. The firm’s focus on Africa began many years ago and has gained traction and momentum with the emergence of the African economy’s growth potential and the consequential requirements of the firm’s global clients. In the past three years, Adams & Adams has also established Associate offices in Kenya (2013) and Nigeria & Ghana (2014).

“The central thrust of our Africa Network continues to be about sharing information, the exchange of knowledge, and establishing long lasting relationships. The platform that we have provided is bearing fruit, not only in the quality of the service that we are providing to our clients, but our increased involvement in assisting some countries with the drafting or amendment of their IP legislation,” said Brown.

Only an African firm with the heritage and legal pedigree of Adams & Adams is able to leverage local knowledge and world-class capacity to provide peerless support to clients in the rapidly developing regions of Africa,” added Megan Moerdijk. “We continue to assist, advise and receive instructions for projects and legal requirements of any scale in all territories of the continent. “

Adams & Adams will be partnering with MIP for the Africa Roadshow in New York on 6 April 2016. Professionals of this 108-year leader in African IP will be leading discussions with legal and brand professionals in laying the foundations for intellectual property success on the continent

Danie Dohmen

Partner
Patent Attorney

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Dario Tanziani

Partner
Patent Attorney

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Gérard du Plessis

Partner & Firm Chairman
Trade Mark Attorney

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OAPI ACCESSION TO THE SINGAPORE TREATY

On 13 November 2015, OAPI deposited its instrument of accession to the Singapore Treaty on the Law of Trade Marks (“The Treaty”), which was adopted in March 2006. The Treaty will enter into force in OAPI on 13 February 2016.

Articles 6 and 19(2) of the Treaty will not be applicable to OAPI. These articles read as follows:

 “Where goods and/or services belonging to several classes of the Nice Classification have been included in one and the same application, such an application shall result in one and the same registration; and

19(2)   “A Contracting Party may not require the recordal of a license as a condition for any right that the licensee may have under the law of that Contracting Party to join infringement proceedings initiated by the holder or to obtain, by way of such proceedings, damages resulting from an infringement of the mark which is the subject of the license.”

The Treaty will bring about changes to the manner in which the change of names and addresses of proprietors of trade marks are recorded at the OAPI Registry, in that a single application form can now be used to record these changes in respect of several trade mark registrations.

The Singapore Treaty essentially supplements the Trademark Law Treaty which was adopted in October 1994.  The main aim of these Treaties is to standardise and simplify the national and regional trade mark application/registration procedures of the contracting parties.

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

Jenny Pienaar

Partner
Trade Mark Attorney

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BOTSWANA | IP REGISTRY – HEARING DELAYS

The Registrar of Industrial Property in Botswana recently issued a communiqué stating that, due to a restructuring of the IP office and staff cutbacks, hearings for trade mark oppositions and cancellations have been suspended until further notice. According to the communiqué, the Companies and Intellectual Property Authority (CIPA) envisages a Trademarks Tribunal to handle such hearings in the future but is, in the meantime, working on an interim arrangement.

Interested parties can still lodge opposition and cancellation applications, but can expect delays in having their cases heard.

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

Nicky Garnett

Partner – Head of Africa Patents
Attorney

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Simon Brown

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

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CAN YOU BID ON A COMPETITOR’S MARK AS A KEYWORD?

In this case Cochrane Steel Products sought an interdict against the M-Systems for bidding on its brand name CLEAR VU as a Google Adwords search keyword. The applicant did not have a trade mark registration for its mark and accordingly relied on unlawful competition. Specifically, it alleged passing off and a new species of unlawful competition, leaning on.

Judgment was delivered by Nicholls J on 29 October 2014.

This case is open for leave to appeal, but as yet not such application has not been filed.

Google Adwords and the conduct of the respondent

Google Adwords is a service offered by the search provider Google. In essence any person can bid on a keyword to increase the likelihood of a link to its website being displayed in the sponsored links section of the search results. This bid constitutes a price per click (which will be charged to the bidder every time the link is clicked.) Whether or not the link is displayed is determined by the ranking of bid. This ranking is determined by the price bid as well as a number of factors including the quality of the website linked and how frequently consumers visit the site.

The applicant alleged two grounds of complaint. The first, which formed the subject matter of the judgment related to the bidding on the key word CLEAR VU which generated an advert containing a link to the respondent’s website. This advert did not make any use of the mark CLEAR VU in its text.

The second ground of complaint related to a similarly generated advertisement which did include CLEAR VU in the text of the advertisement. However, this ground was not considered. The evidence of this conduct was not admitted into evidence for a variety of reasons.

Decision of the court

The Court considered whether the common law should be developed to recognise leaning on and whether the applicant has established the requisite confusion or deception to necessary for passing off. As a result of its answers to these issues the Court declined to decide whether the applicant had established a reputation in CLEAR VU.

Leaning on and dilution

The primary authority submitted to establish leaning on as a cause of action was academic argument in its favour by Van Heerden and Neethling. This species of unlawful competition is defined to occur when “one entrepreneur, in order to advertise his own performance, and in this way promote his goodwill, uses the advertising mark of another entrepreneur”. There is a substantial overlap between this remedy and passing off but leaning on extends beyond this in not requiring confusion. Therefore it would include dilution and misappropriation of advertising value as well as other conduct.

In considering whether the common law should be extend to include leaning on, the Court noted that South African law is generally opposed to monopolies not specifically provided by statute and that generally use of a name, where there is not likelihood of confusion, is not prohibited. The Court drew specific attention to the fact that the broad genus of unlawful competition is not intended to provide a remedy to a litigant who falls short of the requirements for passing off.

The Court concluded that leaning on, as proposed by the applicant, was not unknown to our courts and that it has, in fact, been considered (albeit under different descriptions) and rejected, often with criticism of the practice of relying on this doctrine.

The Court also noted that passing off (and the common law in general) protects goodwill not a trade mark per se, and on this basis concluded that passing off and other common law remedies to do not provide protection against dilution. Such protection, according to the decision, is to be found under the Trade Marks Act, 1993.

Passing off

The Court made extensive reference to foreign cases relating to Google Adwords. It made particular reference to InterCity Group (NZ) Limited v Nakedbus NZ Limited, Google France SARL v Vuitton Malletier SA, Interflora Inc v Marks and Spencer, and Cosmetic Warriors Limited and Lush Limited v Amazon.co.uk.

The Court noted that these cases do not provide authority for the submission that using the trade mark of another as a search keyword is prohibited or, as a general rule, likely to cause confusion but rather that such conduct is legitimate unless it can be shown that confusion is likely and that this will cause detriment to the ability of a trade mark to act as a source indicator. It noted that where a court accepts a likelihood of confusion, this must be done in light of the specific facts of that case.

The Court confirmed that the test for confusion applied in the foreign cases, which is that confusion will only be likely if, in light of the text of the advertisement, a reasonably well informed internet user cannot determine if the goods advertised originate from the brand owner or its competitor. It also took cognisance of the trend in foreign cases which holds that where an advertisement triggered by a sponsored link promotes alternative goods which are not simply imitations, this is likely to be fair competition. The Court noted that internet users are accustomed to sponsored advertisements and the need to filter their search results.

Nicholls J concluded that the consumers who were exposed to the respondent’s advertisements were highly unlikely to be confused or deceived into believing that the goods advertised were those of the applicant, particularly in light of the multiplicity of suppliers whose websites were returned in the search results. The Court specifically mentioned that this was particularly the case where the text of the advertisement itself did not make use of the mark concerned.

Accordingly the Court rejected the applicant’s claim on the basis of passing off, and dismissed the application. The Court did note that this case specifically related to a claim in the absence of a registered trade mark, which differs from the majority of the foreign cases. However, it pointed out that even a claim on the basis of a registered trade mark would only succeed if confusion could be shown. In the context of the judgment, this should not be read to limit the ability to bring such claim on the basis of dilution or unfair advantage in terms section 34(1)(c) as this remedy is recognised elsewhere in the decision, but rather a comment on the likely requirements for a claim for direct infringement on the basis of sections 34(1)(a) and (b).

Conclusion

This decision has brought much needed clarity to the legal position surrounding the practice of bidding on competitor keywords. It has confirmed that such conducted should conform with the general approach to passing off and trade mark infringement, which is that the core test is whether a likelihood of confusion exists. It establishes that the presence or absence of this must be evaluated on the basis of the advertisement itself, and the goods advertised, (in the context of appropriate surrounding circumstances) and that this is not altered by the fact that the advertisement is generated by the use of a keyword bidding service.

It indicates that advertisers who wish to bid on competitor’s trade marks as keywords may do so, provided that they are careful to ensure that these advertisements are clear and not confusing or otherwise do not take unfair advantage of the advertising value of a registered trade mark. As a result of this, traders will also need to adapt their marketing and brand protection strategies to ensure that they adequate deal with the risks such practices pose to their brands and market share.

by Darren Olivier & Ian Learmonth

(Attorneys acting for M-Systems)

Darren Olivier

Partner
Attorney

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