SEEING THE FUTURE | AN INTERVIEW WITH JOHAN DU PREEZ

At the recent International Conference of the Licensing Executives Society (LESI), senior Partner, Johan du Preez was presented with a Service Recognition Certificate for service to the organisation as President of LES South Africa for two terms, for service as an international delegate, and for service chairing the LESI Trademarks and Licensing Committee.

His involvement with LES began in 1990 when he attended his first National Conference in Swaziland. He soon became involved with the organisation and planning of local conferences, training courses and speaking events. Johan was elected as a board member of LES (SA) in about 1995 and he assisted fellow Adams & Adams Partner, Alan Lewis, in organising the expanded LES Delegates Meeting which was held in Cape Town.

He became Secretary to the Board in 1997 and was elected Vice President in 1998. LES (SA) tendered for an International Conference and was awarded the 2001 International Conference in Cape Town.  He became President of LES (SA) at the end of 2000 and was President during the 2001 LESI Conference. He remained President until the end of 2002.

From 2002 to 2007, Johan participated and fulfilled many rolls in LES (SA) and the Chapter was again awarded another LESI Conference – hosted in Sandton in 2010. He was again the Chair of the Organising Committee and President of LES (SA) at the time of the Conference, from 2009 until beginning of 2011. Johan is the only LESI member that has organised two International Conferences while being a national President – no mean feat for such a large society.

More recently, Johan was approached by Audrey Yap, incoming International President in 2020, to arrange the LESI “Winter Planning Meeting” in South Africa. Probably his last LESI activity, this will complete Johan’s full circle of involvement with the organisation.

We congratulate Johan on this fantastic achievement in recognition of his work with the LESI. In a recent wide-ranging video interview with Johan du Preez, we asked him about his involvement with LES, the important work that the organisation carries out, and lessons for young lawyers. He also gave us a unique glimpse into the future of law and the future of Africa’s economies. Watch our summary clips below, or watch the full video here.

THE INTERVIEW | ALL ABOUT THE LICENSING EXECUTIVES SOCIETY

Founded in 1972, and incorporated in 2000, LES International (LESI) is the umbrella organization of national and regional associations for licensing executives. A Board of Directors and Board of Delegates, consisting of representatives of all national and regional societies, oversee the activities of LESI.

WHAT THE ROLE OF LES INTERNATIONAL IN GLOBAL BUSINESS? 

HOW IS THE LICENSING EXECUTIVES SOCIETY STRUCTURED?

“I was always involved with the Trademarks, Designs and Merchandising Committees and became Vice Chair of the Trademarks Committee when Martin Schneider was Chair, in 2012/3. I became Chairman of the Committee in 2014 to date.”

WHAT WAS YOUR ROLE WITHIN THE LES ORGANISATION?

HOW DID YOU GET YOUR START WITH ADAMS & ADAMS AND LES? 

“The LESI Committees I’ve served on were, over the years, always involved with projects either that are industry or region specific. For instance, we studied royalty rates in License Agreement applicable to trade marks, designs and merchandising and the LESI recently published those results as part of a bigger project.”

LESSONS IN GROWING YOUR LAW PRACTICE

THE PRIVILEGE OF WORKING ON LES COMMITTEES

“Our committee also presented the LESI submissions to the Public Consultation on the possible revision of the Tobacco Products Directive 2001/37/EC to the Board and we were represented at a meeting during the INTA Conference where several professional bodies were present. I delivered a paper on this in Australia in 2009. We again dealt with this in Belgium in 2015. At the same conference I delivered a paper a paper on 3D printing – more specifically on 3D printing a way from control and the specific statutory rights, not only IP, that could be infringed by such actions.

THE INTERVIEW | ALL ABOUT THE FUTURE OF LICENSING AND LAW

LICENSING IN AN ECONOMY OF BLUEPRINTS

WHAT ABOUT LICENSING AND IP IN AFRICA?

“Society is moving from a volumes economy to a customised economy of blueprints. Blueprints will be the new commodities”

WHAT DOES THE LES ACCOLADE MEAN FOR YOU PERSONALLY?

JOHAN DU PREEZ AT THE LES INTERNATIONAL CONFERENCE AFTER ACCEPTING HIS CERTIFICATE OF RECOGNITION.

SINGING HIS LAST SONGA | KENYA COPYRIGHT DISPUTE

In an ongoing copyright dispute over a music application in Kenya – Evans Gikunda vs Patrick Quarcoo & Two Others – the Plaintiff is seeking an interdict for infringement of his intellectual property, damages and an order directing the Defendants to disclose their profits acquired from subscriptions to a music streaming application (SONGA) created by the Plaintiff.

The Plaintiff claims to have created the music app between 2012 and 2016. In 2013, he was employed at the 2nd Defendant (Radio Africa) and, at that time, was approached by the CEO of the 1st Defendant to partner with him to market the app.

The Plaintiff subsequently left the employ of the 2nd Defendant in 2016 and later learnt that the 1st and 2nd Defendants had sold the app to the 3rd Defendant (Safaricom- a leading mobile network operator in Kenya). The Plaintiff then approached the High Court in Kenya for the relief set out above.

Songa | The app at the centre of the copyright dispute

Ownership of the copyright subsisting in the SONGA app is crucial to the determination of this dispute.  This means that the Court will need to consider, inter alia, exceptions in the Kenyan Copyright Act to the general rule that the author is the owner of the copyright subsisting in a work.

In addition, the Plaintiff will need to establish that:

  1. he created his app (which was previously known under several different names) outside of the course of his employment with the 2nd Defendant;
  2. the app marketed and used by Safaricom constitutes a reproduction or adaptation of his app; and
  3. damages will not constitute sufficient compensation for any loss suffered, hence the request for an interdict.

This ‘David vs Goliath’ saga is expected to be a hotly contested dispute!

by Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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YES AND NO | CONFUSION OVER SIERRA LEONE’S NEW TRADE MARKS ACT

Trade marks in Sierra Leone are currently governed by Trade Marks Act no 17, Cap 244 of 1960 (as amended by the Laws (Adaptation) Act no 29 of 1972) based on the old UK Act (the Old 1960 Act).  The Law is heavily outdated. However, a new Act, Trade Marks Act no 8 of 2014 has been drafted and there is much controversy about whether or not the New Act has yet come into force.

The New Act was signed by former President Koroma during September 2014 but was apparently returned to Parliament to sort out various technical difficulties before coming into force.  The Old 1960 Act is still in force and trade mark applications are still being filed using the old (pre 1938) UK Classification of Goods, which does not provide protection for any services.

The Assistant Registrar at the Sierra Leone Registry (OARG) recently announced that a “decision” was taken last month to bring the New 2014 Act into force. It is still not clear if the correct legal processes were followed.  The Registry has not issued any formal notification stating that the New 2014 Act is in force.  Also, no new Regulations have been drafted as yet.  Be that as it may, the country that has had its fair share of hardship (devasted by a Civil War, ending in 2002, and having suffered a severe Ebola outbreak, ending in 2016) desperately needs updated IP laws to provide adequate protection of IP rights.  Creating awareness on the importance of protecting IP rights, including trade mark rights, cannot be overemphasised as it creates an environment conducive to promoting business, innovation and creativity.  The promulgation of the New 2014 Act is long overdue.

Some anticipated changes in terms of the New 2014 Act include:

  • Moving over to the International Classification system;
  • Giving recognition to International Trade Mark Agreements signed by Sierra Leone (which may be interpreted to give recognition to International Registrations since the country is a member of the Madrid Protocol);
  • Collective marks will be recognised for protection;
  • The renewal term will change from 14 years to 10 years;
  • Recognition will be given to well-known marks;
  • An IP Tribunal will be established which will be given considerable powers, such as hearing appeals, invalidations, infringements and criminal offences;
  • Express recognition will be given to priority rights as provided in the Paris Convention;
  • Assignments will need to be published once they are recorded;
  • Licensing provisions have been included in the New Act;
  • Additional grounds for opposition have been included in the New Act;
  • More detailed provisions regarding infringement have been incorporated and infringements will be extended to similar goods, damages may be awarded for infringement and intentional infringement will be a criminal offence;
  • The new Act deals with unfair competition, trade names, false trade descriptions and has created many offences.

As mentioned above, no new Regulations have yet been drafted.  The New Act, however, provides that Regulations made under the Old 1960 Act shall remain in force until they are expressly revoked or amended. This will likely be problematic considering the Old Regulations refer to the old UK Classification system (which does not recognise services) and the New Act expressly provides that the Nice Classification system is to apply and makes reference to, protection of services.

Currently, there is confusion at the Registry as to whether it should apply the Nice Classification system or continue to apply the old UK Classification system and it is not clear if protection of services will be possible in Sierra Leone until the Regulations have been amended.

The changes incorporated into the New Act are of importance to all practitioners and clients seeking to protect and enforce trade marks in Sierra Leone. We eagerly await formal notification as to when the New 2014 Act will come into operation.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Sierra Leone, please contact sierraleone@adamsadams.com.

CATHERINE WOJTOWITZ

Associate
Attorney

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SISIPHO NGOMA

Associate
Attorney

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TRADE MARKS IN ETHIOPIA | WHAT YOU NEED TO KNOW

Ethiopia is a landlocked country situated in the Horn of Africa. It has in recent years become Africa’s fastest growing economy, owing its rise to an increase in industrial activity, including investments in infrastructure and manufacturing.  China is not only its biggest foreign investor but also its largest trading partner. In light of the recent economic developments, there has been a growing need for the intellectual property laws of Ethiopia to align with international standards and practices.

In the absence of any established and enforceable trade mark legislation in Ethiopia prior to 2006, the enforcement of intellectual property rights in the country was ambiguous at best. In practice, it appeared that the publication of cautionary notices was the only option available to trade mark owners. The Trade Mark Registration and Protection Proclamation 501/2006 (“the Proclamation”), which only entered into force in early 2013, has therefore brought much needed clarity to the trade mark landscape in Ethiopia and has aligned local practice in Ethiopia with international trends in trade mark law.

Since the enactment of the Proclamation, it has become possible for trade mark proprietors to secure statutory protection for their marks, including service and collective marks. The trade mark system in Ethiopia now allows for trade mark applications to be lodged at the Ethiopian IP Office (EIPO), and makes provision for examination on formal, relative as well as substantive grounds; advertisement of acceptance; and the issuance of registration certificates with 7 year validity terms.

According to the Proclamation and formal Directives subsequently issued by the EIPO, a trade mark application filed by a foreign national or foreign legal entity, should be accompanied by a Power of Attorney (legalized up to Ethiopian Consular level); and evidence of a valid foreign registration of the trade mark from any other jurisdiction. In the absence of a foreign registration, the applicant’s certificate of incorporation will suffice. The certificate should include formal confirmation of the applicant’s commercial activities (as, for instance, described in the incorporation documentation or confirmed on a company letterhead via a notarized declaration).

Ethiopia is not yet a signatory to the Paris Convention. Notwithstanding this, the Proclamation confirms that priority may be claimed from applications filed in any Paris Convention country, if the Ethiopian application is filed within 6 months from the date of filing of the priority application. In this regard, a document confirming the priority application’s details should be submitted within three months of the Ethiopian filing date and accompanied by a legalized Power of Attorney.

Ethiopia’s formal and rather onerous filing requirements are directed towards preventing fraudulent third parties from filing trade mark applications for registration in instances where they are not the true proprietors of the mark. These requirements have however proven to be far too burdensome on trade mark proprietors and unduly delay the filing of trade mark applications in practice.

Insofar as the enforcement of trade mark rights are concerned, the Proclamation has made, inter alia, trade mark oppositions, trade mark infringement, invalidation and cancellation proceedings and customs recordal vis-à-vis registered trade marks possible in Ethiopia. The Proclamation is also quite revolutionary in that it provides for the protection of unregistered well-known trade mark and marks in which rights have been acquired through local use in Ethiopia. The legislation also prohibits the registration and use of another’s marks in relation to dissimilar goods which still suggests a connection to the proprietor of the mark or which is detrimental to the interests of the trade mark owner. The inclusion of some of these provisions are something of a misnomer in Ethiopia as they are premised on the articles of the Paris Convention and the TRIPS Agreement to which Ethiopia is not a party. Be that as it may, this shift in the law has expanded mechanisms for the enforcement of trade mark rights in Ethiopia.

In addition, it seems that we can expect the introduction of specialist IP Tribunals in Ethiopia in the coming years. Traditionally, IP disputes have been dealt with by an internal committee of the EIPO and by the Federal High Court. These tribunals have sometimes been criticised for a lack of knowledge and misapplication of the law in relation to IP matters and this has fueled the need for specialist adjudicators and forums. The development of specialist tribunals is therefore most welcome.

The recent developments of IP protection mechanisms in Ethiopia, have come at the right time and although only a single factor in the country’s development, makes Ethiopia a country to watch!

For further updates, information and queries on copyright law, trade mark, patent and design filings in Ethiopia, please contact ethiopia@adamsadams.com

by Sbongakonke Khumalo | Associate

and Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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RECENT DEVELOPMENTS IN GOVERNMENT PROCUREMENT POLICY IN SOUTH AFRICA

Recent Government Procurement policy developments in South Africa have been aimed at placing greater reliance on public procurement as a tool for achieving expedited economic transformation and urgently addressing socio-economic imbalances deriving from South Africa’s pre-democratic past.

In the past year, this was largely performed through the implementation of the recently issued Preferential Procurement Regulations of 2017, which introduced a number of significant changes. Most notably, the regulations give government the power to apply ‘pre-qualification criteria to advance certain designated groups’ in awarding state tenders. Regulation 4 permits an organ of state to advertise any invitation to tender on the condition that only a particular category of bidders may tender, categories including those having a ‘stipulated minimum B-BBEE status level’, exempted micro enterprises (EMEs) and qualifying small business enterprises (QSEs) and bidders agreeing to subcontract a minimum of 30 per cent to various categories of EMEs or QSEs. By permitting organs of state to apply a pre-qualification criterion that requires all tenderers to have a minimum B-BBEE status level, the regulations appear to circumvent the limitations imposed by the PPPFA as to what weighting is to be attached to a tenderer’s B-BBEE status in evaluating and awarding a tender.

Whereas, under the PPPFA, a maximum of 10 or 20 points out of 100 (depending on the value of the tender) can be allocated for B-BBEE status, the new regulations elevate the importance of B-BBEE status to the extent that it can entirely preclude certain bidders from tendering at all, irrespective of how functional and cost-effective such bidders might be. This contradicts the PPPFA’s clear intention to promote price as the most determinative factor in awarding government tenders, with the matter of ‘preference’ playing a substantially smaller role. A judicial challenge to have this regulation declared ultra vires and invalid remains imminent.

Other noteworthy changes introduced by the Preferential Procurement Regulations include:

  • A change in the threshold of the evaluation of a bid on the basis of price and preference, whereby tenders are assessed on the basis that, in contracts with a value of equal to or above 30,000 rand and up to 50 million rand (the previous threshold was up to 1 million rand), price shall count for 80 points and preference shall count for 20 points (out of a total of 100 points) and in contracts with a value of more than 50 million rand, price shall count for 90 points and preference shall count for 10 points (previously above 1 million rand); and
  • Organs of state are required to identify tenders, where it is feasible, in which the successful bidder must subcontract a minimum of 30 per cent of the contract value for contracts above 30 million rand to certain categories of qualifying entities.

The Department of Justice and Constitutional Development published a proposed Code of Good Administrative Conduct in terms of PAJA, which will apply to public procurement decisions. The Code is intended to provide guidance to administrators to ensure that the decisions they take are lawful, reasonable and procedurally fair. The Code does not impose additional legal obligations on administrators than those imposed by the Constitution and PAJA, but is there to assist administrators to comply with their legal duties and, in doing so, improve their services. The deadline for public comment on the Code was 17 February 2017 and publication of the final Code is now awaited.

The Department of Trade and Industry has initiated the Strategic Partnership Programme (SPP), to develop and support programmes or interventions aimed at enhancing the manufacturing and services supply capacity of suppliers with links to strategic partners’ supply chains, industries or sectors. The objective of the SPP is to encourage large private-sector enterprises in partnership with government to support, nurture and develop small to medium-sized enterprises (SMEs) within the partner’s supply chain or sector to be manufacturers of goods and suppliers of services in a sustainable manner and to support B-BBEE policy through encouraging businesses to strengthen the element of Enter and Supplier Development of the B-BEE Codes of Good Practice. The SPP will be available on a cost-sharing basis between government and the strategic partners for infrastructure and business development services necessary to mentor and grow enterprises. The grant will be capped at a maximum of 15 million rand per financial year over a three-year period based on the number of qualifying suppliers and is subject to the availability of finds.

To read the full South Africa chapter, CLICK HERE.

Govt-Procurement-Review-2018

The Law Reviews has published the 6th edition of the Government Procurement Review, which is available in print, as an e-book and online here. The South Africa Chapter is authored by Adams & Adams Partner, Andrew Molver; and Specialist Consultant, Gavin Noeth.

The Review’s geographic coverage this year remains impressive, covering 19 jurisdictions, including the European Union, and the continued political and economic significance of government procurement remains clear. Government contracts, which are of considerable value and importance, often account for 10 t20 per cent of gross domestic product in any given state, and government spending is often high profile, with the capacity to shape the future lives of local residents.

In the United Kingdom and European Union, the topic of Brexit still looms large. It is apparent that the United Kingdom will continue to observe the importance of procurement law both during and beyond the planned transitional period. Another prominent topic is the test for availability of damages in procurement cases, with the Supreme Court seemingly at odds with the EFTA Court on whether all or only ‘sufficiently serious’ breaches trigger a right to damages.

Looking further afield, other trends and developments covered in the Review include:

  • A pendulum swing towards deregulation in the United States on the back of President Donald Trump’s drive to reduce regulation;
  • The possible renegotiation of NAFTA, including the incorporation of anti-corruption provisions (Mexico and Canada);
  • A desire to open up procurement to SMEs and use public procurement as a tool to drive socio-economic transformations (South Africa and Chile);
  • The growing importance of electronic procurement internationally (Chile and Venezuela); and
  • An increasing recognition of the importance of public procurement in international trade deals (for example, the CETA between Canada and the EU, the CPTPP (although at the time of writing, continued US participation remains in doubt) and NAFTA).

Reproduced with permission from Law Business Research Ltd. Published July 2018.

ANDREW MOLVER

Partner
Commercial Attorney

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GAVIN NOETH

Specialist Consultant
Commercial Attorney

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PHASE 1 OF SOUTH AFRICA’S IP POLICY | WHAT YOU NEED TO KNOW

The South African government recently approved the first phase of the long awaited Intellectual Property (IP) Policy, after incorporating input from the stakeholders’ submissions and representations.

The government has earmarked the IP Policy as one of the core elements needed to thrust South Africa toward a knowledge economy. This objective is believed to be a cornerstone of the government’s broader National Development Plan which includes a greater emphasis on innovation, improved productivity and better exploitation of comparative and competitive advantages.

According to the IP Policy, although South Africa has made substantial progress in the just protection, administration, management, and deployment of IP, the country still requires a comprehensive IP Policy to promote and contribute to its socio-economic development.  The IP Policy is thus aimed at promoting local manufacture, utilising and preserving the country’s resources, encouraging innovation and empowering the domestic stakeholders to take advantage of the IP system.

The IP policy confirms the establishment of the Inter-Ministerial Committee on Intellectual Property (IMCIP) which serves as a consultative forum and drafting team aimed at achieving a coordinated approach to implementation of the IP Policy. It was decided the IP Policy would be implemented in phases, with segmentation being decided on immediate issues, medium term issues and issues requiring monitoring and evaluation. Phase I focuses on two main issues in the immediate term identified by government as:

  • IP and public health; and
  • International IP cooperation

IP AND PUBLIC HEALTH

As the IP Policy points out, disputes surrounding the intersection of IP and public health was identified in 1997 and came to the forefront during the 1999 case, PMA vs the President of the Republic of South Africa (the PMA case), where pharmaceutical manufacturers challenged amendments to the Medicines and Related Substances Act 101 of 1965 (the “Medicines Act”).  This case sparked a global dialogue regarding the intersection between intellectual property rights and access to public health. The South African Constitution recognises the progressive realisation of access to health care services, however, it also enshrines the prevention of arbitrary deprivation of property rights.

The IP Policy acknowledges there is no correlation between an increase in protection of IP and an increase in innovation. However, government believes a stronger framework is required to ensure other objectives are met, including access to public health. In the IP Policy, the government considers the following to be necessary reforms to the IP protection framework:

Substantive Search and Examination

South Africa is currently a depository patent system, which means that patents are examined for compliance with the formal requirements only. The IP Policy considers this to result in weak patents being granted which is perceived to be detrimental for both patent holders and consumers. The IP Policy thus empowers the IMCIP to implement substantive search and examination at the South African Patent Office.

The IP Policy acknowledges the limitations of resources available to the Patent Office and as such only a range of strategic sectors will initially be subject to full substantive examination and as the capacity within government expands, other fields will be identified and included. The Patent Office has already appointed examiners and has been working closely with the European Patent Office to ensure their competency. The IP Policy leaves the determination of the relevant sectors to the IMCIP, in consultation with industry and civil society. There is an indication that initial examination will include, but not be limited to, the health sector.

Patent opposition

Currently, South African patent law does not allow for opposition of a patent during or after prosecution at the South African Patent Office. The IP Policy considers the inclusion of the public in the patent application process, both pre- and post-grant, to be important in supplementing substantive examination through harnessing all information for examiners to consider in granting a valid patent. The government also believes it will encourage domestic inventors to increase their expertise by actively engaging with patents filed in their field and limit expensive court-mandated invalidation proceedings.

The IP Policy acknowledges the resource restrictions of the Patent Office and identifies three different forms of opposition proceedings. First, it makes provision for the least resource-intensive third-party observation mechanism, whereby written submissions can be made by an interested party opposing the grant of a patent. Secondly, the more resource-intensive pre-grant opposition, and thirdly, the most resource-intensive post-grant opposition mechanism. Importantly, all of these mechanisms will require development and promulgation of regulations and in some instances, potentially, enactment of legislation.

Interestingly, the IP Policy indicates a post-grant opposition process is already in force by way of administrative review of the Registrar’s decision to grant a patent in terms of the Promotion of Administrative Justice Act 3 of 2000.

Patentability criteria

At present the Patents Act 57 of 1968 (the “Patents Act”) defines the patentability criteria as novel, involving an inventive step and being capable of being applied in trade or industry. The Patents Act does not, however, go further to indicate how each of these criteria are to be assessed, leaving this instead to the South African courts.

The IP Policy recommends statutorily codifying various approaches to assessment of the patentability criteria, with examples being taken internationally but still considering South Africa’s unique circumstances.

Disclosure requirements

As South Africa is a depository patent system there is no duty to disclose any related state of the art, or other relevant information to the South African Patent Office. To facilitate the move towards substantive examination, the IP Policy recommends obliging applicants to furnish pertinent information to the Patent Office during prosecution.

Parallel importation

The dispute in the PMA case centered around the parallel importation of branded pharmaceutical products by the Minister of Health. This case was later withdrawn and as such the question as to whether South African Patent law allows for parallel importation of patented inventions remains uncertain. In terms of the Patents Act, there is an unrestricted exclusion of other persons from importing a patented invention.

The IP Policy intimates that this is an overly narrow interpretation of the Patents Act and considers the TRIPS flexibilities to be adequate support to allow for parallel importation of products where a counterbalancing objective is weighed, such as access to public health. It further indicates that parallel importation should be limited to circumstances where overarching regulations providing for it have been promulgated, as with the Medicines Act.

Exceptions

The IP Policy reiterates the advantages of the provisions of the Patents Act which allow for limited working of a patented invention, during the subsistence of the patent, for regulatory approval purposes only.

The IP Policy advises broadening this exception to include the working of a patented invention, during the subsistence of the patent, for research and experimental purposes.

Voluntary and Compulsory licenses

The IP Policy reiterates the current South African position in respect of patentees voluntarily licensing patented products and seeks to encourage such transactions to be fair and in the case of the health sector, to adequately balance the need for access to medicines.

The IP Policy, however, considers voluntary licenses as unable to provide the necessary level of access in certain disease areas (save for HIV/AIDS) in South Africa and thus suggests a broader set of policy options for instances where voluntary mechanisms prove insufficient.  Currently, the Patents Act provides for an application for a compulsory license but this involves a judicial process.

The IP Policy suggests that government is empowered in terms of the Patents Act to use a patented invention for public purposes in accordance with the TRIPS Agreement, but also acknowledges that currently this is limited to prior negotiation, and, absent agreement, conditions set by the courts. The IP Policy indicates that the prior negotiation is not required in terms of TRIPS. It is also unclear from the IP Policy whether government is considered to be constrained by the compulsory license provisions in the Patents Act.

IP and competition law

As IP rights create a monopoly in favour of the rights holder an obvious intersection between IP and competition law exists. The IP Policy point out that in terms of the Competition Act 89 of 1998 (the “Competition Act”), certain agreements may be exempt of the provisions of the Competition Act upon request to the Competition Commission, including those rights pertaining to various forms of IP.

The IP Policy suggests that this intersection between IP and competition law could be used to intervene in the instance where IP rights are used to distort the market to the detriment of the welfare of the consumer, such as in the health sector.

Rule of Law and Legal Certainty

In rounding off the section on Public Health and the suggested reforms, the IP Policy seeks to confirm the constraint of government through the rule of law in bringing about these reforms. Including the need for the reforms to be rational and not an abuse of executive power, as already provided for in terms of our law. These constraints coupled with the reforms themselves, it believes, will give legal certainty to the patent system.

INTERNATIONAL IP COOPERATION

The IP Policy states that multiple overlapping opportunities will be evaluated, including updating compliance with existing signed treaties and conventions, identifying treaty opportunities to help South African society as well as protecting traditional knowledge, and fostering continental and international cooperation in IP.

It is now up to the IMCIP to further implement and develop Phase I of the IP Policy and to promote a balanced and coordinated approach to the IP Policy formulation process.  It is clear that phase I will not be completed overnight and the progress of the formulation process will be followed closely by all relevant stakeholders.

By Ramon Pereira | Associate

And Gizela Lombard | Candidate Attorney

JANICE GALVAD

Partner
Patent Attorney

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RAMON PEREIRA

Associate
Attorney

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SWAZILAND | IP AND PATENT BILLS PASSED

Following the 2017 retirement of former Registrar for Trade Marks in Swaziland, Mr. Stephan Magagula, the two bills he had a hand in drafting in 2015 have now been passed into law.

The first is the Intellectual Property Tribunal Act of 2018, which seeks to establish a decision-making body – the Intellectual Property Tribunal. The Tribunal will comprise a President, sitting with 2 or more assessors, and will be responsible for hearing all matters and disputes involving intellectual property rights in Swaziland. Although this development is welcomed, the Act has entered into force without any accompanying regulations. In fact, regulations have not yet been contemplated. Therefore, until such time as regulations are formally adopted, the provisions of this Act are unlikely to be enforced or implemented.

In addition, it seems likely that, in practice, some confusion may arise as to which will be the appropriate forum for hearing, for example, oppositions. That is because the Intellectual Property Tribunal Act does not seek to repeal, for example, Part II of the Trade Marks Act of 1981, which establishes the Trade Marks Office and the position of the Registrar of Trade Marks, or section 27(5), which empowers the Registrar to make a ruling in opposition matters. It remains to be seen how the duality of the two statutory bodies’ roles will be dealt with from a practical perspective.

The second bill is the Patent Act, which Act repeals and replaces the Patent and Design Act of 1997 and the Patent, Designs and Trade Marks Act of 1936. Further information regarding this new legislation will be published at a later stage.

Due to irregularities requiring the Attorney General’s assistance, the Trade Marks (Amendment) Bill, which was also published for comment in 2015, was not passed into law. The promulgation of this Bill would be most welcomed since the Bill seeks to introduce new grounds of oppositions, recognises and protects famous trade marks, and also seeks to bring Swaziland’s national legislation in line with its international obligations under the Madrid and ARIPO filing systems. For as long as the promulgation of this Bill remains pending, trade mark owners are encouraged to file national applications in order to avoid a constitutional challenge to the validity of any registrations acquired under the Madrid and ARIPO filing systems.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Swaziland, please contact swaziland@adamsadams.com

MANDY SWANEPOEL

Partner
Trade Mark Attorney

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NICOLE HAWORTH

Senior Associate
Trade Mark Attorney

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HIGH COURT ORDERS POLICE TO STOP COUNTER-INVESTIGATIONS AGAINST IPID

In an important ruling on 28 June 2018, the High Court in Pretoria ruled on a case that centred on the question of whether members of the South African Police Service (SAPS) that are the subject of investigations by the Independent Police Investigative Directorate (IPID) should be allowed to investigate members of IPID. In handing down the court’s decision, Judge Neil Tuchten confirmed that such ‘revenge investigations’ by the SAPS are unlawful.

IPID brought the matter to Court when, after IPID initiated two criminal cases against the former National Police Commissioner, Lt Gen Khomotso Phahlane, a police squad from the North West Province was appointed to investigate the same IPID officers involved in the criminal investigations of Lt Gen Phahlane.

All the members of the North West squad are currently subject to IPID investigations. In terms of the Court Order, the North West squad, led by General Ntebo Mabula must be immediately removed from any investigation by the SAPS of any of the members of the IPID investigative team and the Executive Director of IPID, Mr Robert McBride.

Investigations into the North West SAPS members are ongoing and, in light of the judgment, IPID can continue with its investigations without interference by SAPS members who are subject to IPID’s investigations.

The case highlighted the fact that there is legal provision that regulates, in the context of conflicts of interest, the conduct of IPID members toward SAPS members but there is no equivalent provision regulating the conduct of SAPS members toward IPID members. In light of this, the Court laid down a general principle that no member of the SAPS may be involved in any investigation in which the member has a personal, financial or any other interest. The order will remain in effect until such time as a standing order or a regulation is implemented to deal with conflicts of interest between SAPS and IPID.

Jac Marais, Partner at Adams & Adams, and attorney for IPID, confirmed that the judgement further strengthens IPID’s independence in the wake of the Constitutional Court judgment in 2016, that that struck down the Minister of Police’s power to suspend the Executive Director of IPID. “The judgement goes some way to restore the confidence which the public should have that IPID will be able, without undue interference, to investigate complaints against the police fearlessly and without favour or bias. Without enjoying the confidence of the public, IPID will not be able to function efficiently as the public might be disinclined or reluctant to report their cases to it.”

The Court also ordered the SAPS to pay the costs of the litigation and held that the SAPS adopted positions in relation to the application that were unreasonable and unjustified.

JAC MARAIS

Partner
Commercial Attorney

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BEING BEAUTIFUL AND WIDOWED

In South African law, a claim for loss of support may be lodged against the Road Accident Fund when a breadwinner of a family, an innocent victim of a motor vehicle accident, passes away. 

The following is an historical overview of remarriage contingencies in South Africa.

When determining the amount to be paid to the spouse of the deceased breadwinner, the probable remarriage of the surviving spouse plays an influential role in the ultimate calculation.

In the past, apart from the number of children and attitude of the spouse to the idea of remarriage, the courts would consider appearance and personality as essential factors when determining possibility of remarriage.

In Legal Insurance Company Ltd v Botes 1963 (1) SA 608 AD , the court a quo took the following into consideration:

“… adjustments must be made according to the appearance, personality, nature and attitude to remarriage of the person concerned, and indeed other factors such as the number and ages of the widow’s children.”

This attitude was re-iterated in the matter of Snyders v Groenewald 1966 (3) SA ED 785, where the court found the following:

“In determining the percentage deduction to be made, the Court has regard to such matters as the age, health, appearance and nature of the widow, as well as such other factors as the age and number and financial dependence of her children.”

Given that this attitude was held prior to our Constitutional dispensation, this view was challenged in the matter of Members of the Executive Counsel Responsible for the Department of Road and Public Works, North West Province v Oosthuizen (A671/07) [2009] ZAGPPHC 16 (2 April 2009) where it was stated that reliance on appearance is offensive and should not be part of our law.  It was further argued that remarriage contingencies should be struck down as unconstitutional as it offends the equality provisions of the Constitution.

After considering the facts of that particular case, the Court ultimately pointed out that no reference had been made to the respondent’s appearance and found that remarriage contingencies are not unconstitutional.

This archaic view of determining re-marriage contingencies was again challenged / re-visited in the case of Esterhuizen v Road Accident Fund (Unreported judgment of Tolmay J, North Gauteng Division, case no 26180/2014 on 6 December 2014) where Judge Tolmay found past judgments to be outdated and extremely offensive to women.  The court stated:

“…To take appearance and nature in consideration is not in accordance with the constitutional values of dignity and equality enshrined in our Constitution…”

In light of this approach, the court found that the following observations should be considered when determining the appropriate remarriage contingency, if any, to be applied:

  1. Widows are entitled to compensation for loss of maintenance as a result of the death of a husband, but such claim should not place the widow in a financially better position had it not been for the accident;
  2. Second marriages do not always last and may not result in financial support;
  3. Dependants (that is, children) and the age of the widow should be relied on when determining the appropriate remarriage contingency.

The most recent case law to address the issue of remarriage contingencies directly is the case of De Bruyn v Road Accident Fund L Brink de Bruyn // Road Accident Fund (Gauteng Division, Pretoria, Case no 14606/2016) where the history of such contingencies (citing various case law) was outlined, and Koch’s Quantum Yearbook was discussed.  The court found Koch’s statistics relating to “remarriage deductions” to be outdated and inaccurate.

The court referred to an article titled “Re-partnering as a Contingency Deduction in Claims for Loss of Support Comparing South Africa and Australian Law” (PER/PELJ 2007 10 (3)), where the conclusion was:

“Re-partnering is merely another of the many vicissitudes of life, namely that the claimant may enter an economically beneficial or detrimental relationship after the trial.  It is therefore to be given no more weight than any of the other vicissitudes that go to make up the general discount.  The ‘standard’ adjustment should not be increased to reintroduce the ‘remarriage’ discount by the back door.

The court agreed with this approach and held that unless special circumstances ensue, no higher than normal contingency ought to be deducted.

It is clear that while the principle of a re-marriage contingency continues to have relevance and applicability, one must be cautious in how it is applied.  If there is evidence to justify its application, then the courts should apply same with due regard to the facts of each matter.  Where there is no evidence, simply to include such a contingency on the broad assertion that the possibility of re-partnering must always exist, would offend the principles of fairness and justice.

Kerry Lynne Wiers | Senior Associate

This article also appeared in Without Prejudice | May 2018

KERRY LYNNE WIERS

Senior Associate
Attorney

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SUPREME COURT OF APPEAL UPHOLDS HIGH COURT RULING SETTING ASIDE UNLAWFUL RATES REGIME

Recently, the Supreme Court of Appeal (“SCA”) upheld a ruling handed down by the High Court in Pretoria 2 years ago, setting aside an exorbitant rates regime implemented by the City of Tshwane Metropolitan Municipality.

The unlawful property rates regime arose following the amalgamation of the former Kungwini Municipality into the City of Tshwane.  When compiling its supplementary valuation roll in 2012, the City of Tshwane incorporated properties which previously fell within the Kungwini Municipality into its jurisdiction, but re-categorised as “vacant” properties which had previously been categorised and rated as “residential”.  This was done without the prescribed notice, depriving the affected property owners of the right to object to the re-categorisation. The impact of this is that the thousands of property owners in question were no longer invoiced at the considerably lower residential tariff, and were instead rated at the vacant land tariff (some 4.5 times higher than the residential rate).  To make matters worse, the increase date was applied retrospectively to July 2011, being the date upon which the properties in question were incorporated into the City of Tshwane.

The net impact was that owners who received monthly invoices in the amount of R843.43 in August 2012, received rates invoices in the amount of R75 939.64 the very next month.  Other owners went from paying a monthly amount of R491.16 to R4 009.33, representing an alarming increase of 716%, even without factoring in the backdating.

Lombardy Development (Pty) Ltd, the developer of Lombardy Estate & Health Spa in Pretoria East, together with other property owners in the area launched a review application to set aside the City of Tshwane’s decision to re-categorise the affected properties.

The review was based primarily upon the City’s failure to have complied with its mandatory notice obligations in terms of the Municipal Property Rates Act, which required the owners of the affected properties to be given individual notification of the fact that their properties were to be re-categorised in terms of the supplementary valuation roll.  In consequence of this failure, the Pretoria High Court set aside the 2012 supplementary valuation roll insofar as it re-categorised the properties in question from “residential” to “vacant”.  The Court also set aside the City of Tshwane’s 2013 general valuation roll and all subsequent valuation rolls to the extent that they adopted and perpetuated the unlawful re-categorisation originally introduced by the 2012 supplementary valuation roll.

The City appealed the High Court’s decision to the SCA, despite conceding that it had failed to give proper notification of the re-categorization of the affected properties.  In its judgment last week, the SCA confirmed the High Court’s declaration of invalidity of both the 2012 and 2013 rolls insofar as the re-categorisation of the affected properties is concerned, and specifically recorded that its judgment applies to all affected property owners and is ‘conclusive against all persons whether parties or strangers to the litigation’. The City will accordingly be required to make significant adjustments to the rates accounts of all affected property owners.

Andrew Molver of Adams & Adams, who represented Lombardy and the other respondents in the appeal, regards the outcome as “a significant victory not only for Lombardy, who led the fight against the City, but for the thousands of individual property owners who stand to benefit from the broad application of the order handed down by the SCA”.

ANDREW MOLVER

Partner
Litigation Attorney

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NAMIBIA INTRODUCES NEW INDUSTRIAL PROPERTY ACT

After years of anticipation, the Industrial Property Regulations were published in the Namibian Government Gazette on 1 June 2018. The effect of the publication is that the new Industrial Property Act No. 1 of 2012 will come into operation on 1 August 2018.

The Act repeals, amongst other legislation, the Trade Marks in South West Africa Act dating back to 1973 and introduces new legislation for patents, industrial designs, trade marks and trade names. Copyright protection is still mainly governed separately under the existing Copyright and Neighbouring Rights Protection Act 6 of 1994.

Insofar as trade marks are concerned, some of the noteworthy introductions include new requirements for assignments and provisions relating to restorations, alterations/amendments, joint ownership, licence contracts and registered users.

No provision is made in the new Act for defensive trade mark registrations, although existing registrations will remain valid. The Act also makes it possible to register collective marks, whereas previously only certification marks were registrable.

Another important change is that the non-use cancellation period has been shortened from 5 years to 3 years.

Arguably the most significant change is that trade mark infringement proceedings must now be brought before the newly-established Industrial Property Tribunal. The Tribunal will also be responsible for appeals from the Registrar. Appeals from the Tribunal to the Namibian High Court are possible.

Recognition has been afforded in the new Act to foreign well-known trade marks in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property.

Provisions are also now in place relating to multi-class applications and applications filed in terms of the Madrid Protocol and the Banjul Agreement. However, it remains to be seen how such applications will be dealt with practically by the trade marks registry.

Until such time as the Namibian Registry is capable of examining newly filed trade mark applications within WIPO’s strict 12-18 month timelines for international (Madrid Protocol) registrations, it is highly recommended for brand owners to continue to secure national registrations for their valuable trade marks in order to avoid possible enforcement difficulties from arising.  We are monitoring this situation closely, but given the Registry’s present backlogs and examination timelines, it is unlikely that the Madrid system would become a viable solution for brand owners to reliably secure statutory protection for their trade marks in Namibia any time soon.

As far as Patents is concerned, the New Act is a drastic improvement on the very outdated 1923 Proclamation. It recognises Namibia’s obligations in terms of several international treaties including the Patent Co-Operation Treaty (PCT), ARIPO, Madrid Agreement and the Hague Agreement.

The Act introduces absolute novelty and substantive examination for all patent applications. In addition, in a move that mirrors steps taken to protect and recognise the value of indigenous biological resources in other countries, the Act requires applicants to disclose details of this in the application if the subject matter of a patent application is derived from or developed with biological resources or associated indigenous or traditional knowledge.

Finally, the Act introduces a 20 year patent term and significant increases to the official fees for all IP matters.

For further updates, information and queries on copyright law, trade mark, patent and design filings in Namibia, please contact namibia@adamsadams.com

DALE HEALY

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner | Head of Africa Patents
Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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MOROCCO | REGISTRATION AND RENEWAL CERTIFICATES NOW ISSUED ELECTRONICALLY

The Moroccan Office of Industrial and Commercial Property (OMPIC) has announced that as of 28 May 2018, it will only issue electronic trade mark registration and renewal certificates, with the OMPIC stamp.

This is in line with the office’s Strategic Plan 2016-2020 that seeks to innovate, be attentive to the needs of its customers and develop added-value services by, in this case, expediting the registration process of national trade marks in Morocco. The electronic certificate carries the same legal value for enforcement purposes.

Should you require any further information or assistance in respect of Morocco or other North Africa jurisdictions, please e-mail morocco@adamsadams.com

 

KAREN LAM

Senior Associate
Trade Mark Attorney

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WE’VE CHANGED OUR PRIVACY POLICY! | GDPR AND POPI

GDPR | MUST SOUTH AFRICANS COMPLY?

The EU’s General Data Protection Regulation (GDPR) took effect on 25 May 2018 – as heralded by the million-or-so “We’ve changed our Privacy Policy” messages we’ve all received lately. And while organisations across the EU scramble to get their affairs in order, even in South Africa we received e-mails telling us that we must become GDPR compliant by the deadline. But is this true for South Africa?

The GDPR is an EU regulation. It does not have general effect in South Africa and is not a local law in this country. But, parties that process personal information in South Africa might still have to comply with the GDPR, because the GDPR does have so-called “extra-territorial application”. A person or entity in South Africa will need to comply with the GDPR’s requirements if they process personal information of someone based in the EU. But this will only be the case if the information is processed in relation to the offering of goods or services or the monitoring of behaviour that takes place in the EU. For example, you will need to comply with the GDPR if you sell products to people in the EU or if you have a website that tracks the behaviour of people in the EU by using cookies. Of course, it remains to be seen how the GDPR will actually be enforced against parties outside the EU.

Even though the GDPR might not apply to you, it is still a good time to start getting ready for POPI – South Africa’s own data protection law. POPI is based on the GDPR’s predecessor, the EU Data Protection Directive. There are also many similarities between POPI and the GDPR.

 

IN PURSUIT OF POPI READINESS

Why it is vital that companies practically understand POPI and the consequences of not doing so now.

It is important to do a high-level analysis of the personal information in your company before embarking on the POPI implementation journey. Companies should be doing this now and not waiting for the long-anticipated commencement date.

Organisations should have already started to identify the risk areas and be working on these. Alongside this activity, there should be a task team that takes on the responsibility for POPI compliance and readiness.

There are many misconceptions surrounding POPI. Many people do not even realise that POPI is not yet properly in force. Organisations need to understand when POPI will apply to them, and when not. If they understand how POPI works, they can adapt their processes accordingly.

Some organisations will be able to remove some of their activities from POPI’s reach by making simple changes. For example, if data falls outside the definition of “personal information”, the relevant data will not be covered by POPI’s provisions. Accordingly, some organisation can change their data-gathering habits to avoid collecting data that constitutes personal information.

So what are the three key factors to consider when preparing for POPI?

  1. Determine what kind of personal information you are processing and why you are processing it.
  2. Accept that POPI compliance is necessary to avoid fines and reputation damage, but that it can also make your business more efficient and streamlined.
  3. It will be important to raise awareness in your organisation. It makes it easier if people in your business are familiar with POPI’s requirements and know where the issues lie.

For organisations that retain large quantities of personal data, identify the various types of information being collected and retained. Decide whether you can limit your collection and retention practices. Determine whether you need all the information currently being retained and whether some of it can be deleted.

Are you ready for POPI? Contact Danie Strachan for further assistance.

DANIE STRACHAN

Partner
Attorney

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COPYRIGHT IN TATTOOS | A PRICKLY LEGAL QUESTION

Would it ever occur to you that a third party might be able to claim rights in your skin? In the case of art that has been inked into your skin, namely tattoo art, that may well be the case.

A tattoo is an artistic work. If it is original and reduced to a material form (which it very arguably is when it is inked into your skin), copyright subsists. In the case of artistic works, it is the artist or creator of the work who owns the copyright, namely the tattoo artist and not the person on whom the tattoo appears, irrespective of the fact that the latter has paid for his/her tattoo. In short, when you pay your tattoo artist, you pay for the tattoo, not the copyright subsisting in it.

This issue has come up for legal consideration in the United States, more recently in a matter involving Solid Oak Sketches and video game maker Take-Two Interactive. The latter is involved in the creation of the popular “NBA 2K” basketball video game series and Solid Oak Sketches has alleged that it owns the right to exploit the copyright in the tattoos appearing on a number of players in the games.

In a rather astute business move, Solid Oak Sketches purchased the exclusive rights to license certain basketball players’ tattoos from the original tattoo artists. Solid Oaks Sketches has therefore made the argument that, by reproducing detailed depictions of the body art appearing on some of these players in its games, Take-Two Interactive has infringed its copyright. In its defence, Take-Two has argued that it is only depicting the players as they appear in real life, that the focus of the game is not on the players’ tattoos, that the issue is de minimis and, in any event, that a finding in favour of Solid Oaks would result in public figures having to “seek its permission every time they appear in public, film, or photographs”, which would be impractical and untenable.

On face value, copyright infringement has indeed occurred. An original artistic work, which a tattoo undoubtedly can be, has been reproduced without the artist’s authority by a third party in the course of trade and for financial gain. At the heart of copyright law is the idea that creators, artists, should be compensated for their creativity, and there is no reason why the creativity of a tattoo artist should be discounted.

However, a tattoo artist’s rights, thanks to his medium, are less straight-forward than those of artists working on canvas or with clay. Although a tattoo is an artwork which has been reduced to a material form, the material form to which it has been reduced is on a human body. The sport stars appearing in the NBA 2K game series are human beings who, tattoo artists are well-aware, will be photographed, make public appearances and quite possibly wish to exploit their own likeness, being celebrities, for financial gain. Legally, there must be a fairly broad implied licence given by the tattoo artist to the person being tattooed to make use of the tattoo in his or her everyday life, but the argument will turn on how broad that licence might be.

Of course, the difficulty for Take-Two Interactive is that it is not making use of, for example, photographs of the players, which would be “real life” depictions of them, but rather artistic representations of them as the video game versions of them appear in the games. While Take-Two argues that its use constitutes “fair use”, the question is whether it is strictly necessary for it to have included the players’ body art in its depictions, or “avatars”, of them, and whether depictions of that nature would be covered by the implied licence mentioned above. Solid Oak Sketches argues that the answer is a clear no. If the appearance of the tattoos on the players in the game is merely incidental and of minimal focus and importance, this begs the question why the tattoos have been reproduced in the game at all. The depictions being used by Take-Two have been created by it and are not images of the basketball players and their actual skin, as one might find on the cover of a magazine, for example. It is questionable whether the “fair use” defence can successfully be invoked in Take-Two’s circumstances.

Indeed, the US District Court, in 2016, disagreed with Take-Two’s arguments that its use is fair, or that it is de minimis and its motion to dismiss the matter was rejected. One relevant consideration was the fact that, as a medium, unlike films, video games allow viewers to view images in different ways, and for as long as they like. The depiction is not fleeting or momentary.

Given the increasing popularity of tattoos in our popular culture, and quite notably with sport stars, it is recommended that public figures seek assignment of the copyright in their tattoos from their tattoo artists. The National Football League (NFL) in the United States has already been making similar recommendations to its players to avoid them getting into hot water over the depiction and commercial exploitation of their tattoos and our local sports stars in South Africa would be well advised to follow suit.

Acquiring the rights in their tattoos will prevent future claims from the tattoo artists for royalties or other compensation where public figures might wish to exploit their own image, which will naturally include their tattoos, for financial gain (for example, in advertisements, film or television). It will also allow public figures to restrain third parties, on the basis of copyright infringement, from making use of depictions of their tattoos to suggest a relationship between themselves and the public figure when, in fact, none exists. The value in the names and likenesses of celebrities is undeniable and the popularity of celebrity “endorsement deals” and sponsorships is a testament to that. A person who is in the public eye would not want to be limited in any way from exploiting his or her own image and celebrity status.

It is not inconceivable that a person’s tattoo might become so recognisable that third parties might wish to use it to call that person to mind and perhaps suggest an endorsement by that person. A good example of this is the dispute that arose around the film, The Hangover Part II, where one of the characters woke up, with shock, horror and hilarious results, to find Mike Tyson’s well-known face tattoo inked onto the side of his face. Mr Tyson’s tattoo artist took legal action against Warner Brothers for using the tattoo without authority and, although the case settled and the judge did not need to render a decision, the tattoo artist may well have succeeded in court. After all, the artist’s design did not appear on Mr Tyson’s face which, under the implied licence discussed above, would surely be allowable in a film featuring Mr Tyson, but was copied and reproduced on the face of another with the reference to the original tattoo being clear.

As the popularity of “getting inked” continues to mark the prevailing popular culture, legal issues around that ink, particularly intellectual property concerns, will become more prominent.

The matter between Solid Oak Sketches and Take-Two Interactive is one of the few body art disputes that has not, to date, been settled out of court and it will be interesting to see how this matter progresses.

By Nicole Smalberger | Senior Associate

 

NICOLE SMALBERGER

Senior Associate
Trade Mark Attorney

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THOU SHALL NOT LIE – EVEN FOR LOVE

Earlier this year eHarmony Ltd (an online dating website) had one of its advertisements banned by the ASA in the United Kingdom for being untruthful – about love. The advertisement was a billboard on a London Underground platform and read: “Step aside, fate. It’s time science had a go at love.”

It was complained to the ASA that the advertisement is misleading as there was no scientific evidence to support the efficacy of mathematical dating applications or websites – whether it was possible to find the love of your life based on science. The advertisement in issue seemed to claim that one could.

eHarmony argued that their advertisement did not make any claims other than suggesting that their matching system was scientific, and that consumers would interpret the advertisement to mean that their scientific method would suit them better, but would not believe that it was a guarantee at finding love. eHarmony submitted evidence of the workings of their algorithm. The algorithm was based on data collected from more than 50 000 married couples in 23 different countries. They claimed that the algorithm was based on certain scientific theories relating to relationships between persons. eHarmony had obtained a patent for its algorithm and submitted further proof of two published studies which reported higher levels of marital satisfaction for couples who met through eHarmony.

The ASA accepted that consumers would perceive the advertisement to refer to a dating website and that they would not understand the advertisement to imply a guarantee of finding ever lasting love. However, consumers would understand the phrase “scientifically proven matching system” to mean that scientific studies had demonstrated that eHarmony’s website offered users a significantly greater chance at fining lasting love compared to what could be achieved if they did not use the service. The ASA found the evidence submitted by eHarmony to be insufficient proof that the algorithm used for their website provided a greater chance of finding lasting love. While eHarmony’s algorithm had been shown to result in a lower percentage of marital break-ups, it was higher compared to those who had met through other online means (e.g. e-mail, chatrooms, etc.).

The ASA rejected one of the studies submitted by eHarmony on the basis that the participants in the study were offered an incentive to participate and that the data obtained was accordingly not sufficiently random and objective.

In all, the ASA held that the studies submitted did not provide objective insight into the likelihood of eHarmony’s website/algorithm finding users lasting love compared to others who did not use the service. The result was that eHarmony could not substantiate the claim. The claim “scientifically proven matching system” was held to be misleading and eHarmony was ordered to withdraw the advertisement in its current form.

Although the case was decided in the United Kingdom, the lessons to be learnt from it are equally true for businesses in South Africa. The Code of Advertising Practice of the South African ASA contains similar clauses dealing with substantiation of claims and misleading advertising in general. The merits of the decision aside, it illustrates the value of reviewing advertisements beforehand, and the need to be very careful of the content of the advertisement and how it may be perceived by the reasonable average consumer.

Quite often businesses include phrases or exaggerated statements in their advertisements, being of the view that consumer would see them as mere puffery. Puffery in its true form has always been accepted by regulatory authorities in South Africa. The reason for this is that consumers would not be prejudiced if they realised that the business is merely bragging. However, the line between puffery and misleading statements has become very thin of late and it is quite often found that a statement would not be perceived as puffery, but rather as a claim, which in many cases is misleading (e.g. best hairdresser in Cape Town).

Claims can be made either expressly or they can be implied. Businesses should be very careful in reviewing their advertising before it is published to determine whether it contains any claims and, if so, whether the claims are truthful and can be substantiated with objective (independent) research. It is not enough for the business itself to believe that the claim or statement is true. It must be capable of being substantiated objectively, and the business must have such substantiation available when called upon to provide. The Code of Advertising Practice of the South African ASA contains detailed provisions dealing with substantiation.  Apart from ASA’s code, there is also a host of labelling regulations pertaining to goods imported into or sold in South Africa that contain provisions dealing with misleading advertising.

It seems obvious, but it is certainly worth restating: avoid misleading claims, be truthful and obtain independent objective legal advice in cases of doubt.

by Wensel Britz | Senior Associate – Cape Town

WENSEL BRITZ

Senior Associate
Trade Mark Attorney

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SOUTHERN SUN ‘SQUARES OFF’ AGAINST NAMIBIAN BRAND OFFENDER

The Namibian High Court recently issued a decision (read the decision here) dealing with passing-off and copyright infringement in the matter of Southern Sun Africa (First Applicant) & Southern Sun Hotel Interests (Pty) Limited (Second Applicant) and Sun Square Hotel (Pty) Limited (Respondent).

The Applicants form part of the well-known South African hotel and entertainment group, Tsogo Sun. The First Applicant, Southern Sun Africa, a Mauritian company, is the proprietor of trade mark registrations for the SUN SQUARE logo trade mark (depicted below) in South Africa. The Second Applicant, Southern Sun Hotel Interests (Pty) Limited, owns the copyright in the SUN SQUARE logo, as an original artistic work. The SUN SQUARE logo has been used in South Africa under licence from the First Applicant for many years in relation to hotel and related services.

In Mid 2015, the Applicants became aware that the Respondent, Sun Square Hotel (Pty) Limited, was operating a hotel in the neighbouring country, Namibia, under the name SUN SQUARE, using an identical logo on its hotel signage, branding and guest amenities.

The First Applicant sought to restrain the Respondent’s unauthorised use of the SUN SQUARE word and logo marks, while the Second Applicant alleged the Respondent had infringed the copyright in the SUN SQUARE logo.

The First Applicant does not operate a SUN SQUARE hotel in Namibia, but it argued that it had established a reputation in the trade mark in the country through cross-border trade and spill-over advertising. Evidence of use of the mark in South Africa was submitted and the Court accepted that such evidence was sufficient to prove knowledge of the mark amongst a substantial number of people in the relevant sector in Namibia. The Court also found that the Second Applicant had established copyright in the SUN SQUARE logo.

The Court found that the Respondent’s unauthorised use of the SUN SQUARE word and logo marks amounted to passing-off which, the Court stated resulted, or was calculated to result, “in the improper filching of the First Applicant’s trade mark, an improper infringement of its goodwill and may cause injury to the First Applicant’s trade reputation”.

The Court consequently granted the interdict restraining the Respondent from passing itself off as the First Applicant. An interdict for copyright infringement was also granted and the Second Applicant was awarded reasonable royalties and additional damages.

The First Respondent has filed an appeal against the decision.

by Kareema Shaik | Senior Associate

DALE HEALY

Partner
Trade Mark Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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PHOTOBOMBED? PROTECTING YOUR COPYRIGHT

It was reported some time ago that a photographer named Shaun Earl Harris is suing the South African government for an astonishing amount of R2.1 billion for copyright infringement relating to the government’s alleged unauthorised use of a photograph featuring Nelson Mandela that Mr. Harris had taken.

Mr. Harris made an impactful statement that got me thinking – “Copyright is what enables a photographer to make a living from taking photographs. What is the use of taking pictures if they steal your copyright and you can’t live?”

As copyright is not a registrable right (unlike a trade mark, patent or design) and can be quite difficult to understand, it is often overlooked.  However, its value should never be underestimated.

A poignant story that illustrates the value of copyright is that of J K Rowling, the author of the famous Harry Potter series.  Ms. Rowling licenced her copyright to Bloomsbury Publishing by permitting it to print and distribute her book in return for royalty payments.  Of course, the first book was an enormous success and the royalties and advance payments Ms. Rowling earned helped her out of her impoverished state. Six more books followed as well as a film series and much more, which met with even greater success.  J K Rowling is now a very wealthy woman – thanks to copyright.

Essentially, copyright entitles the owner of the copyright in a “work” to exploit that work for his/ her own advantage and to prevent the unauthorised reproduction or adaptation of his/ her work.

However, in order to rely on copyright, it is necessary to, firstly, prove that copyright actually subsists (i.e. exists) in the “work” in question and secondly, ownership of the copyright in the work.

There are various types of “works” that can qualify for copyright protection.  Briefly, the works in which copyright can subsist are the following:  literary works, musical works, artistic works, cinematograph films, sound recordings, broadcasts, programme-carrying signals, published editions and computer programmes.  A book would, of course, constitute a literary work while a photograph is a type of artistic work.

Before copyright may subsist and be conferred upon a work, certain requirements have to be met.  The main requirements are as follows:

  1. The author (i.e. the person who first made or created the work in question) must have been a South African citizen or domiciled or resident in South Africa when the works were created or the works must have been first made available (i.e. published) in South Africa or another Berne Convention country;
  2. The work must be original; and
  3. The work must be in a material form (e.g. written down or recorded, etc.).

While the first and third requirements are usually not that difficult to understand or prove, the second one presents more difficulty.  In order for copyright to subsist in a work, the work must be original.  This does not mean that the work must be unique, novel or inventive but simply that the work must have been the product of the author’s own labour, skill and effort.  To prove that a work is original, it is usually necessary to obtain evidence from the author of the work relating to the creation of the work in question.

Once the subsistence of copyright in a work has been established, it is then necessary to consider who the owner of the copyright in that work is.

The author of a work is usually the first owner of the copyright in such work, provided that he / she has not assigned (that is, transferred) some or all of his / her copyright to someone else.  However, there are exceptions such as, for example, where a work is created by an author during his / her employment under a contract of service or apprenticeship.  In this case, the copyright would vest with the employer.

In the case of photographs, copyright would usually vest with the photographer (who is the author).  However, there is an exception to this as well – where a person commissions the taking of a photograph and pays or agrees to pays for it in money or money’s worth and the photograph is taken pursuant to that commission, then the copyright would vest in the person who commissioned the taking of that photograph.

As the owner of copyright in a work, you would be entitled to reproduce or adapt the work in any way you like, sell (by assigning) part or all of your copyright in a work to someone else or licence third parties to make use of some or all of your copyright.  For example, an author of a book could licence a publishing house to print and distribute his/ her book, a film studio to adapt the book into a cinematograph film and a playhouse to adapt the book into a theatrical production – much like J K Rowling did.

Of course, if someone copies or commercially exploits (i.e. reproduces) or adapts the work without the owner’s consent or authority, this would constitute copyright infringement and that party could be sued for an interdict, damages or reasonable royalties.

The above is a rather simplistic account of copyright.  If you have any works that may be subject to copyright, it may be well worth the effort to contact your IP attorney for advice on how to go about protecting such works.

by Amina Suliman

AMINA SULIMAN

Senior Associate
Trade Mark Attorney

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SWAZILAND | HOPES FADE FOR NEW TRADE MARK AMENDMENT BILL

Last week Members of Swaziland’s Parliament met to discuss the way forward regarding the Trade marks (Amendment) Bill of 2015. This Bill seeks to bring, among other things, Swaziland’s national legislation in line with its international obligations under the Madrid Protocol as well as the Banjul Protocol (ARIPO). The current Trade Marks Act of 1981 does not recognise international registrations in terms of the Madrid system and Banjul Protocol – although Swaziland may be designated as a member country under both systems. In the absence of appropriate legislation which guides the Trade Mark Registrar as to the manner in which such registrations are to be dealt with, such registrations may be deemed invalid.

The meeting which took place last week appears to have come to a halt due to certain irregularities which the MPs noted in the Bill. According to them, some of the provisions of the Bill were not in line with those in the Trade Marks Act of 1981. The MPs argued that the assistance of the Attorney General was needed before the Bill could be brought to the Whole House. Since the Attorney General was not in attendance that day, a motion was moved with the effect that the Bill was withdrawn from the Committee of the Whole House, and the Minister is to first consult with the Attorney General before further steps can be taken.

It is disappointing that the Bill, which is a positive step towards rectifying several shortfalls in the current Act, has still not yet been passed into law (3 years after its preparation). Given the current position, it is unclear if or when this will take place. Should there be any developments in this regard, we will keep you informed. In the meantime, we recommend that trade mark owners seek protection of their trade marks on a national level in Swaziland (and not through the Madrid or ARIPO systems).

LINDIE SERRURIER

Partner
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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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NEW TRADE MARK LEGISLATION FOR MALAWI

Considering its antiquated trade mark legislation, last year Malawi passed the Trademarks Bill, 2017.  On 24 January 2018, the Bill was assented to by the President and on 2 February 2018 the Trademarks Act no.2 of 2018 (hereinafter the “New Act”) was published.

The Act intends to modernise the protection of trade marks by incorporating new developments in the field of intellectual property in the country. The Act, once effected into law, will repeal the existing Trade Marks Act 1957 (“1957 Act”). The Act will come into operation on a date appointed by the Minister by notice published in the Gazette.

The New Act introduces protection and registration for, inter alia service marks, collective marks and geographical indications. In addition, it includes an expanded definition of “trademark” to include “non-visual marks” and “serve marks”.  “Serve marks” are presumably meant to refer to service marks. This is borne out by Section 7 of the New Act, which states that the application for registration must contain, inter alia, “the goods or services for which registration is related”.  This contrasts with Section 8 of the Current Act, which only provides for the registration of a trade mark in relation to goods.

When applying for a trade mark in terms of the Act, unlike in the 1957 Act, a declaration of intention to use will be required at the time of filing the application. The grounds for refusing a trade mark application have also been modified. A trade mark can be refused based on earlier registrations covering similar goods or services, as well as well-known marks, among other things.

For the first time in Malawi, it will be compulsory to classify goods and services for the purposes of registration, in accordance with the Nice Classification as amended from time to time. Trade marks registered under the 1957 Act must, on renewal, be reclassified in accordance with the Nice Classification.

The registration term of a trade mark shall be for a period of 10 years and the trade mark may be renewed after every 10 years, perpetually. The registration date of a mark is deemed to be the date of filing of the application.

The transition provisions of the Act provide that trade marks registered in terms of the 1957 Act shall remain in force until expiry and shall be deemed to have been registered under the new Act.

The Act, in Part IX, makes provision for the registration of marks in Malawi in terms of the Banjul Protocol and Madrid Protocol. Malawi is a signatory to the Banjul Protocol and the specific mention and provision made for the Banjul Protocol in the Act means that the Protocol has now been incorporated into its national law. ARIPO registrations designating Malawi will therefore be valid once the Act comes into operation. While the Act also makes provision for the Madrid Protocol, Malawi is yet to ratify or accede to the agreement. The Protocol therefore remains unenforceable until such time as Malawi ratifies or accedes to the agreement.

Some of the features of the New Act, in respect of trade mark oppositions, infringement, cancellation, penalties and offences:

Opposing of trade mark applications

In terms the New Act, a notice of opposition must be filed within 30 days of the advertisement of a trade mark application.  The Current Act provides for the opposition of a trade mark based on limited grounds.  Section 8, of the New Act, provides for further grounds of opposition, including that the mark applied for may not be misleading as to geographical origin, may not consist of the common name of goods or services or be identical to, or contain, armorial bearings, flags or other emblems.  It is now also possible to oppose the registration of a mark based on a registered or unregistered well-known trade mark.  The New Act sets out various factors that the Registrar may consider in determining whether a trade mark should be considered well-known.

Infringement of a registered trade mark

Once a trade mark is registered, the rights of the trade mark proprietor shall date back to the filing date of the application.  It is possible to institute proceedings for trade mark infringement on the basis of a registered trade mark. Proprietors of unregistered trade marks are not without recourse, as Section 15 of the Act provides for the saving of vested rights and allows the proprietors of common-law trade marks to institute proceedings for passing-off.

Both infringement and passing off proceedings must be instituted in the Commercial Division in the High Court.  One of the remedies for infringement includes, inter alia, a claim for reasonable royalties in lieu of damages.

The New Act provides for, inter alia, specific acts of infringement, such as the re-use of a proprietor’s labels etc.  and for infringement where use of an identical or similar mark, in relation to any goods/services, may cause deception or association with the registered trade mark.  This provision is in addition to the conventional “anti-dilution provision”, in Section 34(f) of the New Act, which provides for infringement, even where there is no confusion or deception, but where a proprietor can show that use of the offending mark will cause unfair economic prejudice through dilution of the distinctive character of the registered trade mark or take unfair advantage of the reputation of the registered trade mark or its rights holder.

Peculiar to trade mark legislation, is the provision in the New Act that a trade mark proprietor is also entitled to institute proceedings based on unfair competition, which includes acts that are contrary to honest practices in industrial or commercial practices.  The right to institute action on the basis of unfair competition is generally understood to be a common law right and the scope of the is right is found in delict/tort.  Accordingly, this provision appears to be superfluous.

Cancellation of a trade mark

Like the Current Act, the New Act provides for the removal of a trade mark based on non-use, for a continuous period of 5 years, after the date of registration. The New Act provides further that permitted use (use by a licensee) of trade mark shall be deemed use by the proprietor of the trade mark.  There are, however, specific conditions for use to be considered licenced use, including the requirement of effective control by the licensor of the quality of the goods or services of the licensee in connection with which the trade mark is used.

Offences and Penalties

The New Act provides for a series of offences and penalties relating to the registration of a trade mark, such as the falsification of entries in the trade marks register, false representation of a registered trade mark and the forgery of trade marks.  The penalties range between K3,000,000.00 (USD 4200, current rate of exchange) and K10,000,000 (USD 13900), or imprisonment of between 5 and 10 years.

Summary

As indicated above, the Trademarks Act, 2018 shall come into operation on a date appointed by the Minister by notice published in the Gazette.  New regulations may be drafted; however, the New Act allows the old regulations to apply, unless they conflict with the New Act.  There is, at this stage, no indication when the New Act will come into operation.

Article by

Thembani Nkabinde | Candidate Attorney

Blain de Villiers | Partner

Mohamed Jameel Hamid | Associate

BLAIN DE VILLIERS

Partner
Trade Mark Attorney

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MOHAMED JAMEEL HAMID

Associate
Trade Mark Attorney

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ARIPO WORKING GROUP CLARIFIES FEES DEADLINES

The 7th session of the Working Group on the Improvement of the ARIPO Protocols relating to Industrial Property was held at the ARIPO headquarters in Harare Zimbabwe on 3 and 4 May 2018. The Working Group is comprised of IP practitioners and Registry officials from various ARIPO member and observer states. The Working Group discussed proposals to amend the Harare Protocol which regulates the filing and prosecution of patents, utility models and industrial designs in ARIPO and also addressed some of the challenges in the operation of the Banjul Protocol which regulates Trade Mark matters in ARIPO. Adams & Adams was represented at this Working Group Session by Wynand Fourie.

The Harare Protocol has been amended several times over the past few years, however, amongst others, the Working Group proposed amendments to the regulations relating to ARIPO patent, utility model and industrial design applications which have not yet been published. Such applications shall not be made available for public inspection prior to publication and extracts may only be obtained therefrom with the consent of the applicant. There has been confusion around the deadline for payment of the fees for search and examination but it has now been clarified that the deadline is 3 years from the date of filing at ARIPO and 3 years from the international filing date, in respect of a PCT patent application.

The Working Group proposed to introduce a new Rule in the Banjul Protocol which prescribes that where an application has been accepted by any designated state or not rejected within the relevant time period, the ARIPO Office will publish the acceptance in the Marks Journal for 3 months. The notice should contain full details of the application.  The Working Group agreed that it is necessary to first discuss the introduction of this new rule further and the proposal will be considered at the next session of the Working Group.

We also have the pleasure of reporting that the ARIPO e-filing platform is now available 24-hours a day.

WYNAND FOURIE

Senior Associate
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CLAIRE BOTHMA

Senior Associate
Trade Mark Attorney

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LIZE-MARI VAN DYK

Associate
Trade Mark Attorney

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REPORT | THE APPLICABILITY OF THE MADRID SYSTEM IN AFRICA

Although the Madrid system functions very well in most countries outside of Africa where IP laws are at similar stages of development and IP Offices utilise advanced technologies and maintain digital registers and systems, the reliance on the Madrid-system in most African countries carries with it a degree of commercial risk (the level of which depends on the jurisdiction concerned).

Key criteria

For the system to function effectively, the following key requirements need to be met:

  1. National Trade Mark or IP laws should expressly recognise the validity and enforceability of international registrations. Preferably, Regulations should also be implemented to offer guidance and direction to Registry officials on how to process Madrid-designations.
  2. The national IP Office should process, examine and publish all Madrid-designations and indicate any objections to WIPO within the strict timelines (12 – 18 months).
  3. The IP Office should maintain a singular (digital) trade marks register which contains national and international registrations.

Africa Madrid Members

The following 21 African jurisdictions can be designated in terms of the Madrid system:

Algeria, Botswana, Egypt, Gambia, Ghana, Kenya, Lesotho, Liberia, Madagascar, Morocco, Mozambique, Namibia, OAPI, Rwanda, Sao Tome and Principe, Sierra Leone, Sudan, Swaziland, Tunisia, Zambia and Zimbabwe.

Enforceability

Of these member states, only four countries meet the key criteria that are mentioned above, namely Kenya, Mozambique, Morocco and Tunisia.

In the other African Madrid member countries, many obstacles remain before the Madrid system can be relied upon to secure enforceable trade mark rights.  As a firm, we are aware of an increasing amount of cases where the owners of international registrations were under the mistaken belief that they secured enforceable statutory rights in some African Madrid member countries, to only learn at a later stage, when enforcement becomes a priority, that no enforceable rights were established on a national level in those countries at all.

General

International (Madrid) registrations are vulnerable to a central attack on the base application/registration during the first 5 years and any invalidation, limitation or cancellation action that succeeds against the base application/registration during this time would also affect all other country designations.

International registrations may also not suit companies with complex licensing or ownership structures as all country designations need to reflect the same ownership details.

Conclusion

The Madrid system offers a cost-effective trade mark registration system where multiple Madrid member countries are concerned, but careful consideration needs to be given as to whether the rights arising from an international registration would be enforceable in all designated jurisdictions (especially where African countries are designated).  Also, the vulnerability to a central attack on the base application and the inflexibility to cater for more complex ownership structures could demand that a different approach be considered.

For more information  please e-mail Madrid@AdamsAdams.com

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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SOUTH AFRICA A STEP CLOSER TO PLAIN PACKAGING TOBACCO PRODUCTS

In June 2017 we made comment here, in respect of the WTO’s decision to uphold legislation in Australia which severely restricted the advertisement of tobacco products on the ground that the legislation qualified as a legitimate public health measure.

We also indicated that we could expect the advent of new legislation in South Africa which would likely follow suit in prescribing stricter requirements for the advertisement of tobacco products.

In a move that brings South Africa a step closer to that reality, the Department of Health has invited public comment on the Draft Control of Tobacco Products and Electronic Delivery Systems Bill, 2018 within 3 months of the invitation date, before 9 August 2018.

The objectives of the proposed legislation are stated as, inter alia, “to regulate the packaging and appearance of tobacco products and electronic delivery systems and to make provision for the standardisation of their packaging.”

The proposed legislation is far reaching as it also seeks to control the advertisement and sale of e-cigarettes (electronic delivery systems), including those that do not contain nicotine.

Aspects of the proposed legislation which will, undoubtedly, attract comment from the public are the overall ban on advertising and sponsorship of- or by- tobacco products and electronic delivery systems and the provisions relating to the standardised packaging and labelling of tobacco products.

The proposed Act specifically requires that Regulations be passed in relation to tobacco products that prescribe:

  • uniform textured and plain colour packaging;
  • the material to be used and the size and shape of the packaging;
  • that logos, branding or other promotional elements on, inside or attached to the packaging of tobacco products or an individual product be prohibited; and
  • that only the brand and product name may appear on packaging in a standard colour and font together with other mandatory information such as health warnings.

The provisions relating to the packaging and labelling of e-cigarettes are currently quite ambiguous, but Regulations may subsequently be passed which change the position.

As previously mentioned, these changes in legislation conflict with the trade mark rights of the tobacco industry, which ordinarily entitle their owners to the use of their registered trade marks, including logo marks, to the exclusion of all others. We are therefore still interested to see whether a court case will be borne of this conflict and continue to watch this space.

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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THE DISTRIBUTION AND MARKETING OF MEDICINES IN SOUTH AFRICA

The commercialisation of pharmaceutical products has become more complex as the competitive and regulatory environment has evolved. Today, regulatory regimes not only aim to protect public health and to ensure that there is robust data to support the safety and efficacy of pharmaceutical products, but also to limit expenditure on pharmaceutical products by countries (for example, market access, pricing and reimbursement and distribution channels, among others). This is the view of Dr. Oliver P. Kronenberg, Group General Counsel at Galenica, in his foreword to the 2018 Global Guide to Distribution and Marketing of Drugs by Thomson Reuters.

The guide book focuses on the legal environment surrounding the distribution and marketing of medicines. “The legal framework has been tightened and the standards for compliance have been raised by the regulators. This has led to an increasing need for legal support (whether in-house or external). Jurisdictions differ significantly around the world and, consequently, this book has become an important reference guide for the industry.”

Partner at Adams & Adams, Jenny Pienaar, and Senior Associate, Jeanette Visagie, were responsible for writing the South Africa Q&A chapter of the guide – giving a high-level overview of distribution and marketing of drugs law in South Africa, including pre-conditions for distribution; licensing; wholesale distribution; marketing to consumers; marketing to professionals and engagement with patient organisations.

The distribution of medicines in South Africa is governed strictly by the Medicines and Related Substances Act No.101 of 1965, as amended (Medicines Act). The most recent amendments were brought into effect on 1 June 2017. Other pieces of legislation govern the movement of medicines in the supply chain and persons authorised to
distribute medicines within the supply chain including the:

  • Pharmacy Act No. 53 of 1974, as amended;
  • Health Professions Act No.56 of 1974, as amended (HPA);
  • National Health Act No 61 of 2003, on human tissue;
  • Animal Diseases Act No 35 of 1984, on medicines with animal content.

The authors would like to thank Consultant, Elsabe Klinck, of Elsabe Klinck Associates (Pty) Ltd for her assistance in preparing the chapter.

You can download the full South Africa Q&A section HERE or access the global Q&A Tool HERE.

JENNY PIENAAR

Partner
Trade Mark Attorney

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JEANETTE VISAGIE

Senior Associate
Trade Mark Attorney

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SECTION 14 OF THE KENYAN TRADE MARKS ACT IS ENFORCEABLE EVEN IN THE ABSENCE OF A REGISTERED TRADE MARK

In Fibrelink Limited v Star Television Productions Limited, the High Court of Kenya heard an appeal against an earlier decision of the Registrar of Trade Marks in an opposition by the Respondent against the Appellant’s STAR PLUS trade mark in class 38 for “Telecommunications Services”. The Respondent was successful in the opposition.

The opposition was based on the Respondent’s rights in the unregistered mark STAR PLUS, which it had used in Kenya prior to the application for registration of the Appellant’s STAR PLUS mark. The Respondent also pleaded that its mark was well-known in Kenya but was unable to prove this in the opposition.

The Appellant’s grounds of appeal included that the Respondent lacked locus standi in the proceedings as it did not have proprietary rights in the mark STAR PLUS which could only have been acquired through registration or if the mark was well-known in Kenya.

The main issue on appeal, which followed the argument above, was whether the Registrar had misapplied the provisions of Section 14 of the Kenyan Trade Marks Act (“the Act”) to the opposition. In the Appellant’s view, the Registrar was required to consider the opposition in line with the provisions of Section 15(1) of the Act, which section prohibits the registration of a mark that is identical to or nearly resembles an earlier registered mark in relation to the same goods or description of goods for which that mark is registered. However, this Section was not pleaded by the Respondent.

Section 14 of the Act prohibits the registration of a mark, the use of which would be likely to deceive or cause confusion.

The High Court found that the Registrar had not erred in applying the provisions of Section 14 to the case. It held that the Section does not make mention of identical or similar marks, but when the marks to be compared are identical or similar, confusion or deception is a reality and it would be against public policy to allow the registration of the latter mark.

The Court went further in finding that reliance on Section 14 does not require a trade mark to be well-known in Kenya, nor is it a requirement that the envisaged confusion or deception be widespread. The number of people likely to be confused or deceived also does not affect the discretion of the Registrar to refuse the registration of a mark based on Section 14 of the Act.

While this is good news for proprietors, if a mark is in use in Kenya, it is far preferable to apply to register it than assume that your earlier rights will carry you home. Registration has several benefits, including perpetual protection of rights, provided that registrations are timeously renewed. A registration could also constitute a defence to several claims and, in certain circumstances, negates the need to adduce copious evidence of one’s rights in a trade mark.

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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OFFENCE IS THE BEST DEFENCE IN ANTI-COUNTERFEITING | GODFREY BUDELI

Partner in the Anti-Counterfeiting group at Adams & Adams, Godfrey Budeli regularly uses team sport analogies in describing the purpose and successes of his colleagues’ work. “Why not?,” he counters. “As in football, the success of a team depends on correct team placement, and strong leadership.” It’s his ‘captaincy’ that has once again earned him the titles of outright winner of the Lawyer of the Year 2018 in the category of Anti-counterfeiting – SA, by both the Finance Monthly and Lawyer Monthly publications.

Prestigious awards such as those awarded by Managing IP and Finance Monthly are based on market leading performance analysis and are strictly quantitative – designed to recognise those firms which are consistently delivering the best results for their clients.

Of the award, Godfrey places the focus squarely on his team. “Adams & Adams has the largest dedicated anti-counterfeiting team on the continent. The team is headed by myself and Charl Potgieter. We are assisted by qualified attorneys Jan-Harm Swanepoel, Tayyiba Nalla and Christoff Pretorius.”

Jan-Harm is a former State Prosecutor and his extensive experience in criminal litigation is hugely beneficial. Tayyiba’s understanding of the intricacies involved in online sales of counterfeit goods, through a number of media platforms, is a considerable asset. Through her extensive experience, they have been able to dismantle many counterfeiters’ online presence and track their unlawful activities on the ground. Christoff’s experience in civil litgation has led to a number of successful settlements on behalf of large multinational companies. He has also been involved in the closure of manufacturing facilities producing counterfeit goods locally.

In addition, the team has an impressive complement of experienced paralegals, secretaries and admin staff, all of whom help ensure that our practice runs efficiently.

Economic conditions and business environments in general have improved significantly due to decolonisation, urbanisation, withdrawal of unfavourable sanctions, economic emancipation of many countries and rapidly growing middle classes. Research indicates that the rate of urbanisation in Africa is faster than that of any other continent – to the extent that Africa is expected to no longer be considered a rural continent within the next ten to fifteen years.

This demonstrates that there is good business potential in Africa. It is for this reason that multinational brandholders have embarked on expansion plans, profitable to fully exploit their intellectual property potential, increase sales and generate revenue. However, this has also created a demand for counterfeit goods.

Dealing in counterfeit goods is rife in Africa. The fundamental issues experienced include a lack of proper legislative framework, weak enforcement as a result of lack of experience and limited resources.However, these challenges are not insurmountable and there are legal avenues available to effectively address the proliferation of counterfeit goods on the continent.

Over the past few years, counterfeit fast-moving consumer goods (FMCG) have developed into a thriving market.  One of the main concerns with counterfeit FMCG goods is the health and safety risk posed to unsuspecting consumers. A report by the World Health Organisation (WHO) indicates that nearly a quarter of pharmaceuticals in circulation in developing countries – including HIV/Aids, TB and malaria treatments – are of a poor and unacceptable quality. Such medication is at best ineffective and at worst, deadly. Counterfeit motor vehicle or aircraft replacement parts also place innocent lives at serious risk. Another concern is that counterfeits have now filtered into the legitimate distribution channels.

The team regularly conducts  client portfolio reviews to ensure that the necessary IP rights are in place and, if not, recommends ways to fill the gaps.

They make a record of clients’ well-known, registered and unregistered trade marks as well as copyright protected works for Customs to enable them to easily deal with suspected counterfeit goods at ports of entry. They also conduct in-depth investigations to infiltrate the sophisticated counterfeit goods market and to understand the extent of the problem. Based on the outcome, Godfrey and his team devises an effective enforcement strategy within client’s budget.

GODFREY BUDELI

Partner
Trade Mark Attorney

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WOMEN IN IP | GLOBAL TOP 250

Managing IP has recently released it’s list of this year’s leading female intellectual property practitioners, according to IP STARS research, and this year Adams & Adams Partners, Mariëtte du Plessis and Kelly Thompson both made the Top 250 Women in IP list.

The special publication recognises female practitioners in private practice who have performed exceptionally for their clients and firms in the past year. Some were also involved in IP advocacy and / or corporate social responsibility initiatives in their jurisdictions.

The leading female practitioners have been selected from the IP Stars list, due to be announced at INTA Seattle in May. The IP Stars research covers contentious and non-contentious IP work, carried out over a six-month period by an experienced team of research analysts in Hong Kong, London and New York.

We congratulate Mariëtte and Kelly for making the list this year.

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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KELLY THOMPSON

Partner
Trade Mark Attorney

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A LIFE OF LEGAL FIRSTS | ESMé DU PLESSIS

The late Pam Golding, one of Africa’s most successful women entrepreneurs and an icon of the real estate industry once said, “I have always believed that women can do anything they set their hearts on.” Such an evaluation can easily be ascribed to a doyenne of the Africa’s legal fraternity, Esmé du Plessis – one of those unique individuals whose contribution to the legal profession in South Africa is unparalleled – and deserving of acclaim as we celebrate World Intellectual Property Day.

Esmé’s ability to rise to the challenge is legendary in her industry, and she continues to blaze a trail for women, in intellectual property law particularly. Her ability to unite discordant voices is a strength that has influenced legislators and IP administrators to frequently call upon her services as legal advisor.

Esmé obtained her BSc (1958) and LLB (1962) degrees from the University of Pretoria, and served articles of clerkship with Adams & Adams. In 1963 she became South Africa’s first admitted female Patent Agent. Many other ‘firsts’ were to follow; in 1966, Esmé was the first woman admitted to partnership at Africa’s leading intellectual property law firm, Adams & Adams. Fifty-two years later, and women make up 76% of the firm’s workforce, and each year around 80% of the new candidates admitted for Articles at Adams & Adams are female. The glass ceiling was well and truly shattered by Esmé and today, partners such as Nelia Hickman, Mariëtte du Plessis,  , Nolwazi Gcaba, Megan Moerdijk, Kelly Thompson, Janice Galvad, Jenny Pienaar, Bilkis Daby, Nishi Chetty, Debbie Marriott, Lauren Ross, Mandy Swanepoel, Lucy Signorelli, Nicolette Koch, Nicky Garnett, Nthabisheng Phaswana, Somayya Khan, Werina Griffiths, Sajidha Gamieldien, Jani Cronje, Nicolette Biggar, Lindie Serrurier, Alicia Kabini and Alicia van der Walt are consistently receiving international recognition for their exceptional legal work in Africa.

In addition to exploding gender myths, Du Plessis became instrumental in our evolving democracy when, as President of the Law Society in 1995 (another first for a woman in South Africa), Esmé was part of a ground-breaking meeting between the Society and Mr. Silas Nkanunu, then president of the Black Lawyers Association (BLA). The meeting heralded a negotiation process to unify and restructure the law societies of South Africa. Esmé was part of the task team to negotiate and draft an Agreement and new Constitution for a unified Law Society for South Africa.

Having retired as a Partner at Adams & Adams in 2004, du Plessis was, until recently, a full-time Senior Consultant. Her areas of specialisation are patents, copyright, industrial designs; international aspects of intellectual property law; policy and strategy principles for the protection and commercialisation of intellectual property. Esmé has retained her relationship with the University of Pretoria as well and served as a member and Chairperson of the UP Council for close to 15 years. She is the first woman in South Africa to be elected to a University Council, and the first woman to serve as a Chairperson of a University Council. She was integral to a cooperation agreement between Adams & Adams and in university’s Law Faculty in establishing the UP Centre for Intellectual Property. As part of the initiative, a specialised LLM package with four modules covering different fields of intellectual property law was established. Esmé is an Extraordinary Professor in the Law Faculty of the University of Pretoria.

During her professional career she was also a member of the Law Faculty of UNISA, where she was an Associate Professor and lectured on Intellectual Property and Banking Law.

Throughout her career, Esmé du Plessis has challenged the status quo and became a hearty champion in encouraging women to look beyond the canopy in working hard towards international recognition and equal career opportunities. Adams & Adams honours her continuous contributions and achievements.

Accolade Highlights

  • Dux leadership award (UP, 1960)
  • Grotius medal for the best final year law student (UP, 1962)
  • Award of Merit (AIPPI International, Vienna, 1997)
  • Laureate Award (UP, 1998)
  • Award in Recognition of the Transformation of the Legal Profession (LSSA, 1999)
  • Regional Business Achiever (Professional) Award (BWA, 2002)
  • Chancellor’s Medal (UP, 2008)
  • Most Influential Women in Business & Government (Legal) Award (CEO Magazine, 2009)
  • Membership of Honour Award (AIPPI International, Paris, 2010)
  • Presidential Award for Special Achievement (SAIIPL, 2011)
  • Presidential Award for Special Achievement (LSNP, 2014).

ESME DU PLESSIS

Specialist Consultant
Patent Attorney

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WOMEN IN IP | WORLD IP DAY 2018

Every 26 April, we celebrate World Intellectual Property Day to learn about the role that intellectual property rights (patents, trade marks, industrial designs, copyright) play in encouraging innovation and creativity.

This year’s World Intellectual Property Day campaign celebrates the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future. [Read ‘A Life of Legal Firsts – The story of Esmé du Plessis’ here.]

Powering change: Women in innovation and creativity

Data from the World Intellectual Property Organisation indicates that only 29% of all international patent applications filed in 2015 included at least one woman inventor, scarcely an increase from 17% in 1995. In 2016, women made up only 23% of STEM (Science, Technology, Engineering, and Mathematics) talent globally.

And here in South Africa, while women comprise 55% of the country’s entire workforce, only 31% of entrepreneurs are female. Likewise, a Facebook survey in partnership with the World Bank and OECD showed that only 34% of SA’s SMEs are women-led. Even more alarming, the number of women in technology in South Africa dropped from 40% in the 1980s to 20% at present.

So why is it important to close the innovation and IP gender gap? Patent Attorney, Dr Charleen Rupnarain, explains that studies have shown that increased participation by women improves the innovation performance of organisations and societies. “Diverse, inclusive teams are more innovative, and diverse companies are more profitable. The start-up fund First Round Capital looked at 300 companies, and women-led firms produce extremely attractive returns. In founding teams with at least one woman, the returns were 63% higher than that produced by all-male teams,” she adds. Charleen was joined by Adams & Adams Partner, Janice Galvad, at the University of Pretoria’s World IP Day celebrations, where they highlighted the role and successes of women in IP in Africa.

Women bring a different perspective, and women innovators help to ensure that new products and processes meet the needs of the whole population. Innovation refers to new products, new processes, or new ways of doing things. Creativity refers to new forms of original artistic expression. Today’s products and technologies are the result of research and development, experimentation and invention, and are all innovations.

Innovation and creativity are supported and protected by intellectual property. The purpose of IP is to encourage innovation and creativity by making sure that innovators and creators can protect their work, and are fairly rewarded for their work. The prospect of an economic reward encourages people and businesses to invest in developing useful innovations and creations.

There is a growing recognition of the need to close the IP gender gap through initiatives that encourage and support women innovators and creators. Here are a few initiatives highlighted by our professionals:

Johnson & Johnson introduced the Africa Innovation Challenge, to encourage entrepreneurial thinking in Africa and the creation of consumer health care solutions that address the critical unmet needs of the continent and her people. Grace Nakibaala, a young Ugandan architect, came up with a solution to improve hygiene in hospitals, through an innovation that is making it easier to wash hands. Her invention earned her an accolade as one of the three winners of the Innovation Challenge. Read Grace’s story here.

Standard Chartered Incubator’s Women-In-Tech programme aims to develop and support women in technology across Africa. The program combines world class startup support with local and international experience to provide Africa’s most competitive and attractive startup incubation program focusing immersive learning, mentorship, building and growing Africa’s next iconic startups taking on the continent’s most relevant challenges and opportunities.

Code for Cape Town (Code4CT) is a programme that introduces young girls to basic web building skills and exposes them to opportunities in the Information and Communication Technologies (ICT) sector. Participants are trained in web development, design principles, as well as courses in professional development. Code4CT aims to inspire a generation of young girls who are well-prepared with a toolkit of technical and soft skills in order to achieve high impact in the workplace.

WHOIS | WHERE ARE YOU?

In April 2016, the European Union (EU) Parliament approved the General Data Protection Regulation (GDPR). The GDPR will repeal the existing Data Protection Directive in the EU when it comes into force on 25 May 2018. The GDPR is intended to give back control to EU citizens over their personal data and to harmonise data privacy laws across Europe.

While the GDPR is effectively EU legislation, its provisions are far reaching as it is applicable to organisations within and outside the EU which offer services or process information of EU citizens. Companies that hold or process the information of citizens residing in the EU will be affected by the GDPR, regardless of the company’s geographical location.

The GDPR requires, inter alia, data minimisation and specifically calls for data controllers to hold and process only the data absolutely necessary for the completion of its duties. It also limits access to personal data to those needing to act out the processing of that data. Data subjects may also request that data controllers erase their personal information and cease dissemination of that information to third parties, subject to this right being weighed up against the public interest in the availability of the data in question.

One corporation that will be affected by the implementation of the GDPR is The Internet Corporation for Assigned Names and Numbers (ICANN). ICANN’s primary focus is the management of the internet’s global Domain Name System (DNS). Its responsibilities include policy development for the internalisation of the DNS. Central to the DNS is the WhoIs database which draws data from all ICANN accredited Domain Name Registries responsible for facilitating the registration of domain names.

The WhoIs database as we know it, provides access to publicly available information containing the domain name owner’s or registrant’s details, administrative contact and technical information.  This information is utilised by authorities in matters relating to cybercrime and other forms of criminal activity.  Also, in cases of domain name disputes, trade mark infringement and counterfeiting cases for the purposes of identifying the registrant and making contact to enforce the rights of IP holders.  The enactment of the GDPR will change the information accessible on the WhoIs record.

ICANN has proposed an interim model to enable Domain Name Registries and Registrars to comply with the data privacy requirements under the GDPR whilst trying to preserve as much of the currently publicly available WhoIs information as possible. It is expected that the registrant contact information will be redacted. Naturally, this change has sparked fierce debate and criticism from Governments, Law enforcement authorities, stakeholders and especially IP holders amongst others, who rely on WhoIs registrant information for enforcement of the law and IP rights, as the case may be.

To date, there has been no consensus on the implementation of the interim model and ICANN has been criticised for over-interpreting the provisions of the GDPR.

Specific aspects of the interim model that have attracted criticism are the proposal for anonymous or pseudonymous registrant email addresses, the global application of the model as opposed to limiting its territorial scope to the EU connection via the Registrant or Registrar, and the model’s failure to draw any distinction between natural and legal persons.

It was also hoped that the interim model would include an accreditation model allowing, at least, access to WhoIs information that is controlled by Domain Name Registrars, but the model has drawn criticism in that it has not made any proposals on accreditation and how registrant information can be accessed.  At the recent ICANN61 meetings in Puerto Rico, ICANN invited input on an accreditation model from stakeholders. The process of putting together an accreditation model continues without any certainty as to whether or not a model will be in place or if interim measures will be taken to allow access to registrant information by 25 May 2018.

Considering the lack of consensus surrounding the implementation of the interim model and an accreditation model, it seems that WhoIs for gTLD’s as we know it, will no longer exist and will possibly go “dark” on 25 May 2018. This will have an impact on Law enforcement and will prevent IP holders, among others from being able to contact registrants to enforce their rights against online infringements during the period of seemingly indefinite darkness.

The compliance of our own Domain Name Authority with the GDPR in so far as it affects EU citizens seems inevitable.  With the advent of our own data privacy laws (i.e. the Protection of Personal Information Act) which was drafted in line with international trends, it is likely that South Africa will follow suit with the models proposed by ICANN.

While discussions regarding the implementation of the GDPR and its effect on the WhoIs database continue, interested persons and IP holders are encouraged to provide comments to ICANN and EU DPAs directly regarding concerns on the interim and accreditation models.  So, come 25 May 2018, we don’t have to go looking for Who he or she is.

By

Kim Rampersadh | Senior Associate – Adams & Adams Attorneys

SOMAYYA KHAN

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TRADE MARKS | CAUTIONARY NOTICES NOW POSSIBLE IN SOMALIA

Somalia (Federal Republic of Somalia) is a country located in the Horn of Africa. It shares borders with Kenya, Ethiopia and Djibouti.

Civil rule ended in Somalia in 1969, nine short years after the country gained independence.  Since then, Somalia has been engulfed with violence and a civil war.

Prior to 1991 the Trade Marks Registry in Somalia was in operation and it was possible to file trade mark applications. The Somali Government was overthrown by insurgent groups in 1991 and, since that time, it has not been possible to file trade mark applications in Somalia or enforce or maintain existing registrations. Indeed, the Registry in Mogadishu remains closed.

Various attempts at peace and reconciliation have been made since 1991, but all have been unsuccessful.  Islamic based local administrations have been created in the country which have a sense of autonomy and peaceful living. The most successful of these administrations is Somaliland, a self-proclaimed independent state, which has remained relatively stable over the years. While the acquisition and enforcement of trade mark rights in Somalia is not possible, trade mark owners have been able to publish cautionary notices within the Somaliland administration. We previously reported on this here. Trade mark owners have resorted to publishing cautionary notices to inform infringers and the public at large of their proprietary rights in trade marks and warn against potential infringements. The notices are effectively operating as a deterrent against the unauthorised use of trade marks.

Until recently, the publication of cautionary notices was only possible in Somaliland. It now appears that the publication of cautionary notices is also possible in Somalia as a whole.

The requirements for the publication of these notices are as follows:

  1. a clear copy of the representation of the trade mark (including in colour, where necessary);
  2. a list of the relevant goods and/or services to which the trade mark is applied as per the Nice or international classification of goods and services; and
  3. the name and address of the proprietor of the trade mark.

Usually, the publication of cautionary notices take place in the indigenous language (Somali) in a newspaper, which is published daily. There is no bar on the publication of notices in English via electronic media as well. This is, in fact, recommended as it will ensure a greater reach and should be more effective in deterring infringements.

It is also advisable for cautionary notices to be re-published from time to time to reinforce trade mark rights in the country.

KIM RAMPERSADH

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FAST MOVING KILLERS AND OTHER COUNTERFEITING TRENDS IN AFRICA

Economic conditions and the business environment in general have improved due to decolonisation, urbanisation, withdrawal of unfavourable sanctions, economic emancipation of many countries and rapidly growing middle classes. Recent research indicates that the rate of urbanisation in Africa is faster than that of any other continent – to the extent that by 2030 it will cease to be a rural continent.

This demonstrates that there is good business potential in Africa and multinational brandholders have realised that it has become imperative to trade in genuine goods in order to fully exploit their intellectual property potential and to expand their businesses and increase sales and revenue. However, these developments have created both legitimate business opportunities, as demand for genuine products across all sectors grows, as well as a growth in the market for counterfeit goods.

The sale of counterfeit goods is rife across the continent. The fundamental issues experienced include a lack of proper legislative framework – leading to weak enforcement, limited resources and a shortage of manpower within the enforcement agencies, as well as a lack of experience in IP law on the part of the agency employees. However, these challenges are not insurmountable and there are legal avenues available to effectively address the proliferation of counterfeit goods on the continent.

The trade in counterfeited goods is worth a whopping $462 billion a year, according to a recent study by the OECD and the EU’s Intellectual Property Office. A massive 63.2% of knockoffs originate from China, and American brands are the most counterfeited. In South Africa alone, an average of three raids are carried out per day in the fight against counterfeiting.

A NEW THREAT | FAST MOVING KILLERS 

Over the past few years, counterfeit fast-moving consumer goods (FMCG) have developed into a thriving market. The main concern with counterfeit FMCG goods is the health and safety risk posed to unsuspecting consumers. A report by the World Health Organisation (WHO) indicates that nearly a quarter of pharmaceuticals in circulation in developing countries – including HIV/Aids, TB and malaria treatments – are of a poor and unacceptable quality. Such medication is at best ineffective and at worst deadly. Counterfeit motor vehicle or aircraft replacement parts also place innocent lives at serious risk. Another concern is that counterfeits have now filtered into the legitimate distribution channels.

FMCGs are goods that are sold quickly and at a relatively low wholesale or retail price. 20% of the most counterfeited brands in the world are FMCG brands. However they are distributed, FMCG fakes follow the same sales channels as legitimate FMCGs and so they move quickly. Generally, by the time a raid or visit is arranged, the goods have been sold or dispatched. The abundance of counterfeiters ranges from large wholesalers and retailers to street vendors.

“The emergence of FMCG counterfeiting leaves our clients with a legal conundrum,” explains Tayyiba Nalla, Associate at Adams & Adams. “We’ve had to help authorities develop new approaches to our traditional anti-counterfeiting methods – including a tiered approach that requires a combination of “soft” measures before we carry out raids. We risk losing stock that could potentially endanger thousands of lives.”

Other strategies would include the facilitation of customs education, regular amendments to packaging, as well as innovative packaging solutions such as QR codes and holograms.

AFRICA’S PUBLIC HEALTH AND SAFETY | TWO CASE STUDIES

In Ghana, the Food and Drugs Authority (FDA) is tasked with regulating and creating guidelines on the advertising and labelling of, inter alia, all processed food packaged for sale, medicines and medical devices, tobacco, herbal products and food supplements, cosmetics and household chemicals. It also creates guidelines on and regulates premises, such as restaurants.  Products and premises must be registered with the FDA.

In Nigeria, the National Agency for Food and Drug Administration and Control Act (NAFDAC) was created to regulate and control, inter alia, the manufacture, importation, exportation, advertisement and sale of, inter alia, food, drugs, cosmetics, chemicals and packaged water.  These products must be registered with NAFDAC before trading in these goods.

Both the FDA and NAFDAC have been in the spotlight in recent months regarding directives which they have and have not issued.

In December 2016, a video on social media showing an energy drink which had seemingly been labelled as the special Christmas edition of the 250ml Blue Jeans Energy Drink, but which label could easily be pulled off to reveal another product, went viral in Ghana.

Image | Ghana Guardian

Following the release of this video, the FDA launched investigations into the seemingly fake products and issued a directive ordering:

Cessation of the distribution and sale of all Blue Jeans Energy Drinks; total recall from trade of the special Christmas consignment of Blue Jeans Energy Drinks with labels bearing Santa Claus (Father Christmas), and submission of all relevant documents for its examination.”

In 2016, the FDA also conducted market investigations into and released statements to the public warning about fake olive oils, the dangers of use of certain skin lightening creams, LDC (a claimed medicinal preparation for oral hygiene) and fake tomato powders found in the market.

In Nigeria, NAFDAC routinely issues directives and warnings regarding products which may be harmful, are not registered or do not meet the specific product guidelines.

In focus at present is salt and specifically the practice, against regulations, of packaging industrial salt in sizes such as 5kg, 10kg, 15kg and 20kg packs when it is only permitted to be sold in packages of 50kg.  This is to avoid confusion amongst consumers between industrial salt and iodised table salt.

Also in focus in Nigeria is the volume and number of counterfeit food and drugs.  In this regard, NAFDAC is involved in conducting raids on a regular basis, including recent raids on several shops at Ogbaru Relief Market in Onitsha which shops were producing, selling and distributing fake alcoholic and non-alcoholic drinks.

Adams & Adams Anti-Counterfeiting

THE ANTI-COUNTERFEITING TEAM AT ADAMS & ADAMS

Adams & Adams has the largest dedicated anti-counterfeiting team on the continent. The team is headed by Lucy Signorelli and Godfrey Budeli. They are assisted by qualified attorneys Jan-Harm Swanepoel, Tayyiba Nalla and Christoff Pretorius. Jan-Harm is a former State Prosecutor and his extensive experience in criminal litigation is hugely beneficial, while Tayyiba’s thorough understanding of technology helps fight and disrupt the non-traditional sale of counterfeit products. In addition, we have a complement of experienced paralegals, secretaries and admin staff, all of whom help ensure that our practice runs like efficiently.

Adams & Adams has been assisting clients with anti-counterfeiting actions for decades through its normal Trademark & Copyright Litigation Department. However, in 2010 we decided to create a dedicated anti-counterfeiting team to streamline the processes and to improve our efficiency and service delivery to our clients.

ADAMS & ADAMS ANTI-COUNTERING SERVICES

Our team conducts a client portfolio review to ensure that the necessary IP rights are in place and, if they aren’t, we recommend ways to fill the gaps. It’s imperative that action be instituted based on registered rights.

We make a record of our clients’ registered, well-known unregistered and copyrighted works for Customs to enable them to easily deal with suspected counterfeit goods at ports of entry.

We also conduct investigations to infiltrate the counterfeit goods market and to understand the extent of the problem. Based on the outcome, we devise an effective enforcement strategy within a client’s budget.

This may include:

  • Participating in training of law enforcement agencies
  • Conducting in-market surveys or investigations and obtaining test purchases
  • Participating in regular search and seizure operations
  • Educating the public through the media to raise awareness of IPRs, counterfeit activities and health/safety awareness
  • Facilitatingco-operation between stakeholders nationally, as well as regionally and internationally, such as the WHO, WTO, WCO and Interpol.

We conduct regular in-market investigations, which help us to understand the trade channels and identify the main role players. This is an imperative exercise in our efforts to remain a step ahead and keep up to date with the changing strategies used by counterfeiters to avoid detection, detention and seizure of the counterfeit goods. We also conduct regular training sessions with law enforcement agencies in Africa to share intelligence and legislative or case law developments.

GODFREY BUDELI

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LUCY SIGNORELLI

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TAYYIBA NALLA

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JAN-HARM SWANEPOEL

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THE ‘CALDERBANK OFFER’ FINDS ITS WAY INTO SOUTH AFRICAN LAW

In many instances, the litigation process of bringing a matter to its finality has become a tedious and lengthy one, lasting for anything from three to four years, if not longer.

And the cost implications of such a prolonged process has become exorbitant not only for the unsuccessful party who will ultimately pay the party and party costs (in personal injury claims usually being the Defendant) but also for the successful party, in respect of the attorney and client costs, which are deducted from the settlement amount (usually to the Plaintiff).

Rule 34 of the High Court Rules which deals with offers of settlement states the following:

(1) In any action in which a sum of money is claimed, either alone or with any other relief, the defendant may at any time unconditionally or without prejudice make a written offer to settle the plaintiff’s claim. Such offer shall be signed either by the defendant himself or by his attorney if the latter has been authorised thereto in writing.

(10) No offer or tender in terms of this rule made without prejudice shall be disclosed to the court at any time before judgment has been given. No reference to such offer or tender shall appear on any file in the office of the registrar containing the papers in the said case.

(11) The fact that an offer or tender referred to in this rule has been made may be brought to the notice of the court after judgment has been given as being relevant to the question of costs.

Rule 34 of the High Rules of Court as it currently stands is specifically designed as a tool that the Defendant may use to place the Plaintiff at risk for paying costs. If the Defendant makes an offer and a lower amount is awarded at trial, the Defendant may then seek a cost order against the Plaintiff.

Although no express mention is made of the Plaintiff being able to make a without prejudice offer, it also does not expressly or by necessary implication mention that if a Plaintiff makes a tender, that same cannot be relied upon when considering the issue of costs.

In the United Kingdom and Australia, it has become common practice for a Plaintiff to make an offer to the Defendant, thereby putting the Defendant at risk of paying “indemnity costs”. In personal injury litigation in South Africa it has become more common that, once the Plaintiff is in possession of all its medico-legal reports and once the claim has been completely quantified, the Plaintiff then addresses a “without prejudice” settlement proposal to the Defendant, in an attempt to reach an early settlement of the matter which results in costs being minimised.

A Calderbank offer is an offer to settle a dispute, putting the other side on notice that, if the dispute goes before any court and the outcome is less favourable to the other side compared to the Calderbank Offer being made, then the side making the offer is entitled to more of their costs being recovered.
This is because, if the other side had accepted the offer, then they would have been better off and neither side would have had to spend money taking the matter to court.

Most of these offers made by the Plaintiff often either go unnoticed or a significant period of time passes before any response is received from the Defendant, if at all. The case of Calderbank v Calderbank [1975] 3 ALL ER 333 (CA) being cited in the judgement of D and Another v MEC for Health and Social Development, Western Cape Provincial Government (2747/10) [2017] ZAWCHC 17; 2017(5) SA 134 (WCC) could bring about new developments in South African law where the Plaintiff’s offer of settlement amount was less than the amount granted by a judge once judgment is handed down.

The Calderbank case was an important English Court of Appeal decision – a divorce case where the husband (Defendant) was said to have caused an unreasonable delay in the legal proceedings and he was then ordered to pay his wife’s (Plaintiff) legal costs as a result thereof.

The Calderbank case was then challenged in the United Kingdom, but eventually became practice that “Calderbank Offers” can be made. The practice was subsequently written into the United Kingdom and Australia’s Rules of Court.

The highlighted principle of the Calderbank case is that the Plaintiff can place the Defendant on risk by making an offer of settlement.  If such an offer is ignored by the Defendant and the Plaintiff is awarded more when the matter proceeds to trial and judgment is handed down, the Plaintiff could disclose to the Judge that a “Calderbank offer” was made. If the offer met the requirements of a “Calderbank offer”, and if ordered by the Judge, the Defendant may be held liable to pay the Plaintiff’s attorney and own client costs over and above the party and party costs for which the Defendant will already be liable for.

In the Case of D and Another V MEC for Health and Social Development, Western Cape Provincial Government, Judge Trollip stated the following “I have thus come to the conclusion that in principle “Calderbank offers” are admissible in relation to costs and can be disclosed to the court for that purpose after judgment has been given.”

Judge Trollip went on further to mention that in considering whether a punitive cost order must be made against the Defendant the court must consider among other factors, whether the Defendant behaved unreasonably, and thus put the Plaintiff to unnecessary expense by not accepting the offer or making a reasonable counter-offer.

Although the Plaintiff in the case of D and Another V MEC for Health and Social Development, Western Cape Provincial Government was not successful in being granted a punitive cost order against the Defendant, it was a breakthrough of the “Calderbank offers “being fused into South African Law.  A defendant should therefore be more cautious when considering offers made by a Plaintiff, so as to ensure that the Defendant is not at risk of paying indemnity or attorney and own client costs (over and above the party and party costs), where the Defendant forces the Plaintiff into protracted or unnecessary litigation, and a judge ultimately awards the Plaintiff the same or more in compensation than what the Plaintiff previously offered to accept as a settlement.

Calderbank offers” will therefore be a useful tool that Plaintiffs can utilise in litigation to ensure that Defendants seriously consider offers made by Plaintiffs and will result in earlier settlements and costs limitations.

by Shaina Kim Steyn | Associate

NICOLETTE KOCH

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SHAINA STEYN

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DISPUTE RESOLUTION IN SOUTH AFRICA

The much-anticipated International Arbitration Bill, which was initially approved by Cabinet in April 2016, was again approved in March 2017 after errors in the bill were discovered and corrected. The Act came into operation as the International Arbitration Act 15 of 2017 on 20 December 2017 and incorporates the Model Law of the United Nations Commission on International Trade Law (UNCITRAL) as the cornerstone of the international arbitration regime in South Africa, providing much-needed reform in South Africa’s arbitration regulatory framework. Previously, the Arbitration Act, a 51-year-old statute, regulated both domestic and international arbitrations. For additional information on dispute resolution in South Africa, click here.

The Law Reviews has published the 10th edition of the Dispute Resolution Review, which is available in print, as an e-book and online here. The South Africa Chapter is authored by Adams & Adams Partners, Grégor Wolter, Jac Marais, Andrew Molver; and Senior Associate, Renée Nienaber.

The Dispute Resolution Review provides an indispensable overview of the civil court systems of 37 jurisdictions. It offers a guide to those who are faced with disputes that frequently cross international boundaries. As is often the way in law, difficult and complex problems can be solved in a number of ways, and this edition demonstrates that there are many different ways to organise and operate a legal system successfully. At the same time, common problems often submit to common solutions, and the curious practitioner is likely to discover that many of the solutions adopted abroad are not so different to those closer to home.

To read the full South Africa chapter, CLICK HERE.

DisputeRes2018

Reproduced with permission from Law Business Research Ltd. Published March 2018.

GREGOR WOLTER

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JAC MARAIS

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ANDREW MOLVER

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RENEE NIENABER

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AFRICA IP CASE STUDY | A ‘STEP’ TOWARD BETTER HYGIENE IN AFRICA’S HOSPITALS

According to the World Health Organization, health-care-associated infection (HAI) is a major global safety concern for both patients and health-care professionals. HAI is defined as an infection occurring in a patient during the process of care in a hospital or other health-care facility that was not manifest or incubating at the time of admission. These infections, often caused by multiresistant pathogens, take a heavy toll on patients and their families by causing illness, prolonged hospital stay, potential disability, excess costs and sometimes death, and the burden of HAI is already substantial in developed countries, where it affects from 5% to 15% of hospitalized patients in regular wards and as many as 50% or more of patients in intensive care units (ICUs).

Grace Nakibaala, a young Ugandan architect, has come up with a solution to improve hygiene in hospitals, through an innovation that is making it easier to wash hands. Her invention, called PedalTap, is an affordable, portable hands free foot operated water tap dispensing system. The PedalTap technology involves modifying the existing water tap system to create a no touch cost effective solution for developing countries that reduces the growth and frequency of potent and infectious diseases spread like flu, cholera, Ebola on existing taps. Effective hand hygiene could contribute to a 60% reduction in hospital care associated infections spread in public facilities.

Grace’s innovation, passion and dedication to come up with solutions to solve challenges in society earned her an accolade as one of the three winners of the recent Johnson & Johnson Africa Innovation Challenge. The challenge was created as part of Johnson & Johnson’s commitment to help strengthen public health programs and systems in Africa—a commitment the company has bolstered with the recent opening of operations hubs in Ghana and Kenya.

Each of the winners receives funding—along with mentorship from scientists, engineers and operations experts from Johnson & Johnson Consumer Research & Development and other industries — to help bring their ideas to fruition. On learning of the competition Adams & Adams contacted Johnson & Johnson to offer assistance with protection of any Intellectual Property. In 2017 the firm received instructions to file a trade mark application for PedalTap, and earlier this year, the team was asked to file a utility model application at ARIPO.

Although electronic touchless or automatic taps are available on the market in many countries around the world, they tend to be expensive and for this reason, most taps are manually operated by hand through actuation of a knob or lever to control the flow of liquid or gas. It is common knowledge that infectious diseases spread through contact with the skin. A contaminated tap knob or lever defeats the purpose of handwashing due to the fact that a person inevitably makes contact with the knob after handwashing in order to close the tap. Consequently, the person’s hand can still be contaminated with germs following washing.

In order to address this problem, foot-operated or hands-free taps have been developed but have not been ubiquitously adopted. Due to the fact that they include more components and are more complex, these taps tend to be more expensive and more difficult to install than conventional hand-operated taps.

The PedalTap invention provides a foot-operated valve assembly which addresses the aforementioned drawbacks, at least to some extent. “We filed a trade mark application for PedalTap in Uganda as well as an African Regional Intellectual Property Organisation (ARIPO) utility model application for the foot-operated tap designating all 18 member states of ARIPO,” says patent attorney, Wynand Fourie. “The whole process of preparing the specification and drawings and obtaining approval from the client took about three weeks. I am optimistic that the product will be a great success. There are other pedal operated tap designs available but they are not commonly used in industry.”

“We are very excited to be a part of this exciting journey for Grace and her team,” said Head of Africa Patents, Nicky Garnett, of the award and IP process. “We applaud her spirit of entrepreneurship and her innovative approach to solving some of the health challenges faced by ordinary citizens all across our continent. Adams & Adams is a proudly-African law firm and we applaud Johnson & Johnson for their initiatives that encourage innovation and the betterment of life for the people of this continent.”

To learn more about the PedalTap invention, click here.

For assistance or advice regarding patent or trade mark protection in Africa, click here.

NICKY GARNETT

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Head of Africa Patents

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WYNAND FOURIE

Senior Associate
Patent Attorney

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WHAT ROLE DO IP RIGHTS HAVE IN DISCOURAGING CULTURAL APPROPRIATION?

What role, if any, do intellectual property rights have in discouraging cultural appropriation? Cultural appropriation may loosely be defined as the borrowing of elements from a culture without the consent of people belonging to or observing that culture.

Cultural appropriation frequently enters mainstream debate in the realm of haute couture.  This topic is where the protection of traditional knowledge (TK) by way of intellectual property law and/or other legal mechanisms has garnered some importance.

Examples of the adoption of cultural elements in high fashion which have come under scrutiny include Louis Vuitton’s Basotho blanket inspired men’s collection of 2017 and Urban Outfitters use of the mark NAVAJO and the tribal patterns of the Navajo Nation in relation to, inter alia, clothing and jewellery designs.

Some have lauded the fashionistas for being inspired by these cultural emblems and sharing them with the rest of the world, while others have accused them of unashamedly committing what is, in their view, a cultural faux pas.

It is not the first time that fashion houses have traded ethnic apparel as runway hits and it certainly will not be the last. At the heart of this sociological dilemma is the question whether the borrowing of cultural elements or TK should be allowed and regulated in some way.

There is no international instrument or convention for the protection of TK which, like other conventions, demands the reciprocal protection for the rights of nationals of contracting member states. The countries of the world have been left to their own devices in creating domestic law for the protection of TK or indigenous knowledge and this has also led to an inconsistent international approach.

In South Africa, attempts to protect TK have been made but the proposed legislation is questionable.

First attempts, which have been passed into law, saw TK being slotted into existing legislation for the protection of intellectual property rights. This was severely criticised on the basis that TK and intellectual property rights are contradictory in nature and cannot be protected under one umbrella.

These contradictions include that TK is intended to exist in perpetuity, is created for reasons borne of or affecting a community and it relates to and seeks to protect communal property.  Intellectual Property rights on the other hand mostly exist for a limited period, are sought after primarily for commercial gain and are intended for the use (generally) of a single registered  or rightful owner. Naturally, therefore, the country’s first attempt at protecting TK has been severely criticised. It is for this reason that the changes in the law have not been implemented in practice.  This criticism of the existing laws eventually led to the drafting of the Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2016 or the TK Bill, which is yet to be made law.

The TK Bill is considered a step in the right direction as it seeks to afford sui generis protection to TK. The Bill also makes way for the inclusion of indigenous cultural expressions as part of TK or indigenous knowledge. “Cultural expressions” has also been defined to include content that has been assimilated into the cultural make-up or essential character of an indigenous community. This definition, it seems, is wide enough to include cultural dress and accessories.

The Bill ultimately envisages that the holder of TK will be entitled to benefit from the commercial use of that TK and restrain any unauthorised use of that TK, much like the proprietor of an intellectual property right.

However, the legislation is intended only to protect indigenous communities of this country and only South Africans will be restricted from using the TK of those communities. For the rest of the world, the TK or cultural expressions of our indigenous communities will continue to be a rich source of inspiration to be borrowed at will.

In light of the above, it appears that the commercialisation of TK and protection against its unauthorised use outside of South Africa would be best protected via intellectual property mechanisms until, at least, the introduction of international treaties demanding reciprocity of rights. Indeed, copyright, which includes artistic works (like clothing designs), and trade marks for pattern and ornamentation, might assist in protecting cultural expressions that find application in the fashion industry. However, copyright is of limited duration and, in the case of traditional designs, may already have expired. Insofar as trade marks are concerned, these would specifically need to be applied for in different territories or regions and, in the case of marks emanating from cultural expression or traditional practices, they might need to be applied for as collective trade marks.

Given the complexities surrounding TK, it is advisable that indigenous communities wishing to protect or commercialise their TK or cultural expressions first seek assistance or advice from our experts.

KIM RAMPERSADH

Senior Associate
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STEVEN YEATES

Partner
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How can creatives defend their work from intellectual property theft? Partner, Steven Yeates, talks to Cape Talk’s Mpho Molotlegi about patents, designs, copyright and trade marks – and provides practical examples for monetising your creative assets.

ADVERTISING LAW DEVELOPMENTS IN SOUTH AFRICA

Jenny Pienaar from Adams & Adams, GALA’s South African member, presents on recent advertising law developments in South Africa. At it’s recent GALA developments event, the Global Advertising Lawyers Alliance heard a series presentations that introduces marketers to recent advertising law developments around the world.

JENNY PIENAAR

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AWARDS AND ACCOLADES FOR ADAMS & ADAMS PROFESSIONALS

Participation in awards and indices lets us benchmark our performance and gain valuable feedback from third parties – allowing us to improve our offering. We were delighted to have been named Firm of the Year (Africa) in 2017 and Firm of the Year (South Africa) in 2018 at the Managing Intellectual Property EMEA Awards which recognise organisations that have made an outstanding contribution to the development and promotion of intellectual property rights.

IP STARS

Managing IP has confirmed a number of Adams & Adams professionals as IP Stars for 2018 again. The research for IP STARS (formerly IP Contacts Handbook and MIP Handbook) covers contentious and non-contentious IP work. It is carried out over a six-month period by an experienced team of research analysts and journalists in MIP offices in Hong Kong, London and New York.

Patent Stars

  • Alexis Apostolidis
  • Danie Dohmen
  • Dario Tanziani
  • Johnny Fiandeiro
  • Louis van der Walt
  • Russell Bagnall

Trade mark Stars

  • Darren Olivier
  • Gérard du Plessis
  • Kelly Thompson
  • Mariëtte du Plessis
  • Samantha Copeling
  • Simon Brown

INDICES

Industry indices such as Chambers & Partners, Legal500 and IAM1000 have all confirmed top-tier rankings in 2018 for Adams & Adams. In 2018, our responsible business practices were also recognised by Managing IP as Firm of the Year for Corporate Social Responsibility and Innovation in Africa.

FIRM OF THE YEAR

At the recent Managing IP EMEA Awards, Adams & Adams was named the Leading Law Firm in South Africa for 2018, as well as Africa’s Corporate Social Responsibility & Innovation in IP Firm of the Year. Of the awards, Partner and Chairman, Gérard du Plessis, commented; “Our proven track record in Africa and the ascendency of South African law firms in the regional awards is an indication of the tremendous know-how that we have to offer throughout the continent – and it’s especially appropriate that in the 110th year of our firm’s existence, we are confirmed as the top firm in the country of our founding – South Africa.”

The firm was established in July 1908 by brothers Harry and Eustace Adams and has become one of Africa’s largest and most respected intellectual property law practices. “If the saying that ‘the future builds on the foundation of the past’ holds true, then the tangible spirit of innovative law established by over a century of business, certainly explains why we command such a leading position in the southern hemisphere”, says du Plessis. “We’re constantly working to provide greater benefit to our clients through innovations such as our Africa IP Network Week, Crammer event, IP Connect service, Online Patent Quoting Tool, and the Kipanga™ Watch Service.”

Over the past decade the firm has, systematically, worked at expanding the network of Associate Offices that operate in conjunction with local partners to enhance the firm’s client offering throughout Africa. Selected jurisdictions within the Adams & Adams Africa Network (AAAN) include Angola, Botswana, Kenya, Tanzania, Ethiopia, Egypt, Ghana, Libya, Nigeria, Angola, Mozambique, Zimbabwe and Cameroon. These offices service important jurisdictions as well as the regional IP organisations, ARIPO and OAPI.

“We are also indebted to our local and global clients who continue to trust our professionals with their commercial interests and intellectual property rights on the continent,” added du Plessis.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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ZIMBABWE | AS IT HAPPENED

The year 2017 was certainly a year in which fundamental changes took place in Zimbabwe, not only from a political and economic perspective, but also from an intellectual property viewpoint. Our team has listed a few highlights worth noting.

MADRID PROTOCOL IMPLEMENTATION | AN UPDATE

The Regulations implementing the Madrid Protocol in Zimbabwe were published on 13 March 2017. This formally brought the Madrid Protocol into operation in Zimbabwe with effect from 13 March 2017. The effect of the regulations is that Madrid applications are now being formally processed by the Zimbabwe Trade Marks Registry.

Despite the publication of these regulations, it appears that quite a number of these Madrid applications may have been missed by interested third parties during the opposition period, as only a few seem to have been published in the Trade Mark Journals.  All in all, proprietors who wish to register Madrid applications designating Zimbabwe may do so, as such applications/registrations are now formally recognised as valid and enforceable in Zimbabwe.

REGISTRY DIGITISATION | IPAS

The Registry commenced the process of digitising official files through the IPAS system. Although this has proven to be a time-consuming exercise, as it has led to delays in the registration process due to staff-shortages, it is indeed welcomed as it is essential for the effective operation of the Madrid system and commencement of the proposed on-line filing of all applications. In addition, it will ensure that IP agents are able to easily access the trade mark records directly from their offices.

However, until such time as the Registry records are completely digitised and the processing of applications is handled promptly, trade mark proprietors are well advised to seek National protection rather than relying on IR designations.

INTELLECTUAL PROPERTY TRIBUNAL AND ZIPTA

The Judicial Laws Amendment (Ease of Settling Commercial and Other Disputes) Act 7 of 2017 was officially promulgated into law on 23 June 2017. The purpose of this Act is to create separate divisions of the High Court which specialise in the adjudication of cases in particular areas of law. In this regard, the Act has established the Intellectual Property Tribunal as a specialised division of the High Court. In order to bring Zimbabwe’s legal proceedings into the digital era, the Act also provides for ‘virtual sittings’. Virtual sittings are convened, subject to mutual agreement between the parties, where a party cannot be physically present at a hearing. These particular parties are now able to participate in court hearings by way of use of electronic devices or other means of communication. Provision is also made for the electronic authentication of Court documents and electronic access to records filed with the Courts.

It is noteworthy that the Intellectual Property Tribunal will hear its maiden appeal in 2018, which should provide clarity on the effectiveness of the appeal procedures available within the Tribunal.

Furthermore, it is business as usual at the Registry as far as litigious matters are concerned. There are certain aspects of the opposition procedure, in particular, which warrant attention, but these are being discussed by ZIPTA (Zimbabwe Institute of Patent & Trademark Agents), in an effort to streamline and shorten the process. It is envisioned that these suggestions be proposed to the Minister of Justice, Legal and Parliamentary Affairs in the near future.

REGIME CHANGE | IMPLICATIONS FOR IP

Perhaps the most pivotal change was when the president of the country resigned in November. This political shift came as a shock to many, as none believed that his rule would ever come to an end. During the past few decades, the economy in Zimbabwe has taken a major knock, due to a decline in investors, inflationary pressures, food production shortages and an unemployment rate of about 95%.

Despite the political and economic challenges that Zimbabwe has faced during those years, the Intellectual Property sector remains fairly robust, as the Registry has experienced some activity in terms of filings by local attorneys. As we all know, it is vital to seek the protection of one’s products and/or services through trade mark, design and/or patent registration to shield off competitors.  According to the president of ZIPTA, the number of filings currently remains low, compared to previous years, with an average of under 100 trade mark filings taking place at ZIPO every month. Most of these filings are instructed from the US and South Africa. Although the filings have decreased a bit, there are prospects that the position will change, as the country enters into this new chapter of likely economic growth. As such, owners of Intellectual Property rights are encouraged to take the steps necessary to protect their rights in Zimbabwe, as investors will certainly scramble to take advantage of the new dispensation.

ADAMS & ADAMS | NEW ASSOCIATE OFFICE

In 2017, Adams & Adams established an Associate Office in Zimbabwe (also serving as our designated ARIPO office in respect of trade mark matters). We are also proud to announce that our local partner managing the Associate Office has been elected as the Chairperson of ZIPTA.  Through this close-knit relationship with our Associate Office, our firm is well-placed to provide efficient service to our clients in securing IP rights in this country.

In light of the above, the future of IP in Zimbabwe looks bright. With the new dispensation, IP owners are encouraged to seize the opportunity by protecting their valuable brands, designs and inventions by registration. Adams & Adams, through our Associate Office, is certainly available to provide any assistance in securing protection for trade marks, designs and patents, and any advice regarding copyright law in Zimbabwe.

Note that we are affording proprietors reduced fees for protecting their rights in this country.   For further updates, information and queries on copyright law, trade mark, patent and design filings in Zimbabwe, please contact zimbabwe@adamsadams.com.

SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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A ‘TUTU’ BEAUTIFUL DESIGN BY AN IP-SAVVY DESIGNER

It’s the most beautiful object in South Africa – and it’s protected! Thabisa Mjo’s Tutu 2.0 Pendant Light was recently awarded the illustrious #MBOISA title at Design Indaba 2018.

It’s easy to see why it won the accolade – a stunning use of both western and African fashion styles. For the story of Thabisa’s design inspiration, read the BizCommunity article here. “It’s surreal and validating. The fact that this was voted for by the public lets me know that I’m on the right track, that I can build a legitimate design business because my products resonate with the public, who are ultimately the client,” she says of the experience.

Looks and validation aren’t the only things going for Thabisa’s light – it’s also a protected design. “We are absolutely delighted that Thabisa’s design has been selected as the MBOISA. When we first met her, it was shortly after she had was the co-winner of Nando’s Hot Young Designer in 2015. Thabisa’s TUTU lamp design is beautiful and we immediately applied to register the design on her behalf,” says Adams & Adams Partner, Mariëtte du Plessis.

Image Courtesy Thabsia Mjo

“We were impressed with Thabisa’s business-like approach. She had already registered a company, registered a domain and her website featuring a number of her designs, was up and running. We also assisted her in registering a trade mark for her equally striking MASH T Design logo.”

We asked Thabisa why she feels that design registration is so important. “The world has become so small thanks to the internet and the exchanging of ideas is constantly happening. This is obviously a great thing, especially for designers. However, the downside to this is that your ideas can be so easily ‘borrowed’.”

As with many forms of intellectual property, the design registered for Thabisa’s TUTU lamp provides her with the right to prevent others from copying the lamp.  The protection provided by the registered design is relatively broad, in that it specifically allows Thabisa to prevent others from making, using, importing, or selling a similar lamp.  The ultimate aim, of course, is to enable Thabisa to reap the rewards arising from her creative skills.

“Having your design registered just adds a layer of protection and really gives one peace of mind. It doesn’t matter how far your design travels, you will always get credited for it and accordingly enumerated because of the design registration. Your IP is protected which is really invaluable,” she adds.

As with many forms of intellectual property, the design registered for Thabisa’s TUTU lamp provides her with the right to prevent others from copying the lamp.  The protection provided by the registered design is relatively broad, in that it specifically allows Thabisa to prevent others from making, using, importing, or selling a similar lamp.  The ultimate aim, of course, is to enable Thabisa to reap the rewards arising from her creative skills.

So what are the most important considerations for designers in respect of design protection? “Firstly, the creator should seek legal advice sooner rather than later, and preferably before any public disclosure of the new product. The reason for this is simply to provide the creator with as many options as possible, especially if a patent application is to be filed for the same product and/or corresponding design applications are to be filed in other countries.  Interestingly, in this regard, South Africa has a relatively unique provision in that a valid design may still be filed even after the product has been disclosed, provided the design application is filed within 6 months after the product has been disclosed.  Secondly, South Africa has two types of design protection available, namely aesthetic designs and functional designs.  An aesthetic design aims to protect a product with features that appeal to and judged solely by the eye (i.e. the aesthetic ‘look’ of an article), whereas a functional design aims to protect a product having features which are necessitated by the function which the product is to perform.  Thabisa’s TUTU lamp is a good example of an aesthetic design.  Thirdly, products covered by design applications need to be filed in a particular class.  The correct classification is critical since protection is limited to the class in which the application has been filed.  In Thabisa’s case, the application was filed in class 26, which covers lighting apparatuses.” – Patent Attorney and Adams & Adams Partner, Johnny Fiandeiro.

And how easy or difficult was it for Thabisa to go through the design registration process? “It was easy, seamless because I had the great fortune of working with Adams &Adams lawyers who explained the whole process and handled everything for me.” #TuTuEasy!

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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JOHNNY FIANDEIRO

Partner
Patent Attorney

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ANGOLA | UPDATE ON REGISTRY PAYMENT PROCEDURES

Pursuant to Executive Decree No. 21/97, read together with Executive Decree 30/11, the Ministry of Finance recently announced a change in the payment procedure for all Public Departments including the Industrial Property Office.

Effective from 1 March 2018, all payments relating to industrial property deeds must be made at the Tax Office, into the sole treasury account, on the presentation of a payment note issued by the Industrial Property Office.  The Tax Office will then issue a revenue collection document, which must be submitted to the Industrial Property Office. In the circumstances, any person interested in making payment of official fees will first need to obtain a payment note from the Industrial Property office, then make payment of the official fees at the Tax Office and, thereafter, submit the application together with the stamped payment note and revenue collection document to the Industrial Property Office.

The payment note must be stamped by the Tax Office and  submitted to the Industrial Property Office, together with the revenue collection document, on the same date on which payment is made.  Alternatively, the applicant will have 24 hours from the date on which the payment note is issued within which to submit its application to the Industrial Property Office failing which, additional costs will be incurred.

In light of the recent announcement, and in particular where there are prescribed deadlines within which to submit any documents to the Industrial Property Office, we recommend that the necessary time allowance be made for the additional administrative process.

Should you require any further information, kindly address any enquiries you may have to the following email address:  africaip@adamsadams.com

SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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HERE’S AN IDEA | EASY GUIDE FOR SMALL BUSINESS

Are you starting, or have you already established a small or medium-sized business? There are many key considerations in relation to IP and governance when setting up a business.Adams & Adams is a proud supporter of initiatives such as the National Small Business Chamber (NSBC) and the Business Day TV SME Summit.

If you’d like to receive a free copy of our  booklet, ‘Here’s an Idea’, or you’d like to talk to one of our professionals, complete the form below. Thank you.

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CLICK ON THE IMAGE BELOW TO DOWNLOAD STEPHEN HOLLIS’ PRESENTATION AT MY BUSINESS EXPO ON 21 FEBRUARY 2018.

JOHAN DU PREEZ

Partner
Trade Mark Attorney

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STEPHEN HOLLIS

Partner
Trade Mark Attorney

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THE PRINCIPLE OF REMOTENESS OF DAMAGES

The personal injury team of Adams & Adams has found itself assessing the principle of remoteness of damages on a consistent basis in the last few months with its increasing personal injury and insurance-based actions.

The principle of remoteness of damages is often assessed at the pleadings stage as it is essential that the Plaintiff only includes damages that are casually linked to its action against a delictual wrongdoer. In this regard the test in our law has been held to be a flexible one based on the principles of fairness, reasonableness and justice as is evident from the cases of International Shipping Co (Pty) Ltd v Bentley 1990 (1) SA 680 (A) at 701A-F; Smit v Abrahams 1994 (4) SA 1 (A) at 15E-G and OK Bazaars (1929) Ltd v Standard Bank of South Africa Ltd 2002 (3) SA 688 (SCA) at para 23.

In the case of S v Mokgethi 1990 (1) SA 32 (A) at 40I-41D (and supported in the case of Fourway Haulage v SA National Roads Agency (653/07) [2008] ZASCA 134) it was held that the flexible test should not be viewed as one that supersedes the principles of foreseeability, proximity or direct consequence, as has been used in the past, but rather that the aforesaid principles are not to be applied dogmatically and should be applied in a flexible manner so as to avoid a result which is so unfair or unjust that it is regarded as untenable.

If the direct consequence principle leads to a result which would be acceptable to most right-minded people, then that is accepted as not being too remote. In a matter involving a ten year old boy (“the minor”) we had to determine whether or not a claim for caregiving on behalf of his mother could be included in his claim for damages or whether it would be regarded as too remote. In this matter, the minor sustained severe injuries, inter alia, multiple broken bones in his left foot and ankle and crushed right foot resulting in 22 surgeries as a result of a non-compliant wall collapsing on his lower legs. As a result of the incident, his mother is no longer able to work and is required to avail herself to assist her minor son. If we apply the direct consequence principle, the cost of caregiving is a direct cause of the incident and the injuries sustained by the minor and are therefore not too remote to be included in the minor’s claim for damages against the delictual wrongdoer.  The same outcome would be established if we applied the proximity principle or the principles of reasonable, fairness and justice.

It is imperative to note that as a attractive as the concepts of fairness and justice may be in courts, law reform commissions and amongst legislators, it is of very little use (if at all) to legal practitioners and trial judges who are required to apply the law to concrete facts arising from real life activities (Perre v Apand (Pty) Ltd 1999 198 CLR 180 (HC of A) para 80) and it is therefore the reason that the flexible test to the principle of remoteness of damages is applied in our law.

by Jessica-Jade Faint | Candidate Attorney

ANDREW PHILLIPS

Partner
Litigation Attorney

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OF SEE-THRU FENCES AND LIQUORICE ALLSORTS | COCHRANE v M-SYSTEMS

The appellant, Cochrane Steel Products (Pty) Ltd (“Cochrane”), applied for the registration of the mark ‘CLEARVU’ in two classes:

  • Class 6 in relation to “non-electric cables and wires of common metal; metal fences; metal mesh; pipes and tubes of metal; and
  • Class 37 in relation to “building, construction, repair and installation services.

The above trade mark applications were opposed by M-Systems Group (Pty) Ltd (“M-Systems”), which at the time was a competitor of Cochrane in producing and installing fencing products.

The basis of the opposition was that the mark was not registerable in that:

  • it consists exclusively of an indication which may serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services (Section 10(2)(b) of the Trade Marks Act 194 of 1993 (“the Act”); and
  • it is not capable of distinguishing the goods and services for which it is to be used (Section 9(1) and 10(2)(a) of the Act).

The Gauteng Division of the High Court, Pretoria (Basson J) (“court a quo”), ordered the registration of the mark subject to the following:

a) “The registration of this mark shall give no right to the exclusive use of the word “clear” and “view” separately and apart from the mark;

 b) The trademark registrant admits that the registration of this mark shall not debar others from the bona fide descriptive use in the course of trade of the words “clear view” and “view”.

The court a quo reasons for the above orders was that it should not allow Cochrane to become entitled to any exclusive right to the word “clear” or “view” (or “VU”) when used in relation to fences (separately from “CLEARVU”).

In light of the orders made by the court a quo, with leave of the Court, Cochrane appealed the decision. M-Systems has since been placed in liquidation and the liquidators elected to abide the decision of the Supreme Court of Appeal (“the SCA”).

In its opposition to the registration of the mark, M-Systems described Cochrane as a manufacturer of physical perimeter security barriers and provided pictures from the latter’s website depicting the fencing alongside the mark. The fencing products were described, inter alia, as an ‘invisible wall’ which apparently is a mark that belongs to Cochrane and as a ‘shadow wall’. A balustrade manufactured by Cochrane is described as transparent. Some of the pictorial depictions drawn from the website and supplied by M-Systems appear hereunder.

The SCA identified a key characteristic of the fence in that whilst it serves as a barrier, it does not obstruct sight.

M-Systems argued that the misspelling in the composite mark ‘CLEARVU’ of the word ‘view’ does not detract from it being comprised in its ordinary meaning of the words ‘clear’ and ‘view’.

In support of its argument, M-Systems, supplied material from websites operated by a number of other companies within the security barrier industry in which they use the words ‘clear’ and ‘view’ in describing their fencing products. Such descriptions include C-Thru Fencing, Betaview, Trellidor Clear Guard etc. M-Systems also identified Clear View Security Solutions, yet another competitor that sells a range of products which they describe as ‘clear security solutions’, including ‘clear bars’, ‘clear armed bars’ and ‘clear gates’. It is submitted by M-Systems that Clear View Security Solutions on its website that all of its products ‘ensure that no light or view is lost’.

In part of its answer to the objection, Cochrane stated that CLEAR VIEW is registered as a trade mark in the name of Clear View Security Solutions and Cochrane was of the view that there is no reason why the mark cannot be a good trade mark in relation to burglar bars made of impact resistant transparent Perspex-type material.

In reaching its decision, the SCA cited principles from a few well known trade mark cases. These cases and principles are summarised below:

  • At the heart of trade mark law is truth in competition.[1] In Commercial Auto Glass (Pty) Ltd v BMW AG 2007 (6) SA 637 (SCA) para 8, Harms ADP said the following:

The object of trade mark law as reflected in s 34(1)(a) and (b) is to prevent commercial “speech” that is misleading. Trade mark use that is not misleading (in the sense of suggesting provenance by the trade mark owner) is protected, not only constitutionally but in terms of ordinary trade mark principles. As Justice Holmes said [in Prestonettes Inc v Coty 264 US 359 (1924) at 368]:

“When the mark is used in a way that does not deceive the public, we see no sanctity in the word as to prevent its being used to tell the truth.”’

  • The SCA stated that the principles and precepts of trade mark law are abused when they are used, not for their legitimate purpose, but in order to prevent or inhibit competition. In Société des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch) Birss J said the following:

Conventional trade marks such as trade names (“Cadbury”) or logos (such as a glass and a half of milk on a bar of Cadbury’s Dairy Milk) do not give rise to the same conceptual problems as what have been called “exotic” trade marks such as smells, colours per se and other things. The attraction of a trade mark registration is that provided it is used and the fees are paid, it gives a perpetual monopoly. The problem is the same as the attraction but from the other perspective. Unless the registration of trade marks is kept firmly in its proper sphere, it is capable of creating perpetual unjustified monopolies in areas it should not.’

  • Cozens-Hardy MR in the case In Re: Joseph Crossfield & Sons, Limited [1910] 1 Ch 13 (CA) made the following statement:

Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure . . . The Court is careful not to interfere with other persons’ rights further than is necessary for the protection of the claimant, and not to allow any claimant to obtain a monopoly further than is consistent with reason and fair dealing.’

The SCA stated that it is against the above background that the orders of the court a quo, the subject of this appeal, have to be considered.

The SCA detailed Section 15 of the Act in its judgment, dealing with disclaimers, and stated that disclaimers are typically in the form set out in paragraph (a) above. The SCA reiterated that trade mark proprietor cannot bring an action for infringement in respect of the use of a disclaimed feature. But a disclaimer does not affect a proprietor’s right at common law and if he shows that use by the defendant of the disclaimed feature is likely to result in the defendant’s goods being passed off as the goods or services of the plaintiff he is entitled to an interdict.

The SCA pointed out that paragraph (b) is in the form of an admission. The SCA referenced Webster and Page, in stating that the practice is common in the case of the deliberate misspelling of ordinary descriptive words which other traders may wish to use in relation to particular goods or services. Further, the admission is in respect of the word in its ordinary meaning. The SCA quoted on the following:

The practice is, however, not consistent and seems to have evolved into a requirement that an admission be entered whenever the particular feature is a misspelling of a word, whether such word is only remotely one which others may wish to use descriptively or whether it is in fact wholly descriptive or otherwise non-distinctive. In any event, since the phonetic equivalent of a non-distinctive word is itself non-distinctive it would seem to follow that if the word itself is one which ought to be disclaimed then its phonetic equivalent should also be disclaimed, and not only be the subject of an admission.’

The SCA noted that Webster and Page state that an admission may be called for where matter is not directly descriptive of the goods or services, but which could conceivably be used in advertising or in a manner not directly describing the goods.

  • The SCA stated that Section 15 of the Act is not concerned with the question of whether a trade mark itself is incapable of distinguishing, but whether matter contained in a trade mark lacks this capability.

Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd & another 2000 (2) SA 771 (SCA) para 4.

Beacon’s composite mark in that case consisted of a plate of sweets, a little man made of sweets and a prominent blank space under the name Liquorice Allsorts. It was registered subject to the following disclaimer:

‘Registration of this trade mark shall give no right to the exclusive use of the sweet device [the plate], separately and apart from the mark.

The applicant undertakes that, in use, the blank space shall be occupied only by matter of a wholly descriptive or non-distinctive character, or by a trade mark registered in the name of the applicant in respect of the same goods, or by a trade mark of which the applicant is a registered user in respect of the same goods, or by a trade mark of a registered user with the consent of the proprietor of such a mark or the blank space will be left vacant.

The applicant undertakes that in use the trade mark will only be used in respect of goods containing or including liquorice or liquorice flavour.’

Contending that the name Liquorice Allsorts is descriptive of the product and therefore not capable of distinguishing in the trade mark law sense, Cadbury applied, without attacking the validity of the original registration of the trade mark, for an additional disclaimer, namely that the registration ‘shall also give no right to the exclusive use of the name Liquorice Allsorts, separately and apart from the mark’.

The court in the above case concluded that Beacon was not entitled to the exclusive use of Liquorice Allsorts because it was used by Beacon and others in the trade to describe the product and not to distinguish Beacon’s product from that of others.[2]

In deciding the present case, the SCA stated, the ‘VU’ in the composite mark ‘CLEARVU’, is a deliberate misspelling of the ordinary word ‘view’ and is understandable in light of the nature of the product and what it intends to convey.

The SCA stated further Cochrane’s submissions, that the mark does not embody a misspelling of the ordinary English word ‘view’, but that it is a coined word which just happens to be the phonetic equivalent of the ordinary English word ‘view’ is to strain to avoid the implication that commonly, admissions are entered when there is a misspelling of a word and to seek a monopoly that extends beyond that which is acceptable.

The SCA further went on to say, as pointed out by the authors of Webster and Page, the phonetic equivalent of a non-distinctive word is itself non-distinctive and it would seem to follow that if the word itself is one that ought to be disclaimed then its phonetic equivalent should also be disclaimed.

The SCA stated that neither Cochrane, nor any other trader, is entitled to appropriate exclusively the ordinary English words ‘clear’ and ‘view’, which, in effect, constitute the composite mark. Furthermore, those words are commonly used descriptively in relation to fencing products. The registration of the mark should not operate to inhibit the use by others of the disclaimed elements. The SCA pointed out that traders should not be put to the trouble and expense of manufacturing and selling their products and then be subjected to the risk of infringement litigation where the Act has provided a mechanism to provide certainty. It follows for the reasons set out above that the orders of the court a quo were warranted, save that para 1.2 should be amended by the deletion of the words: ‘The trademark registrant admits that’

In light of the above, the SCA made the following order:

Save for the amendment of para 1.2 of the order of the court below by the deletion of the words ‘The trade mark registrant admits that’, the appeal is dismissed.

This case is likely to endorse South Africa’s current robust approach to disclaimers and their unique requirement of an admission.

Analysis by Udi Pillay | Senior Associate

Darren Olivier, Partner at Adams & Adams, acted for M-Systems, which is in liquidation. Find additional analysis here.

UDI PILLAY

Senior Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Attorney

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MAUREEN MAKOKO

Associate
Trade Mark Attorney

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COMPETITION TRIBUNAL ENDS MASSMART EXCLUSIVE LEASE SAGA

The Massmart exclusive lease saga, which commenced with Massmart’s complaint to the Competition Commission (“the Commission”) in October 2014, has finally come to an end.

The Competition Tribunal (“the Tribunal”) yesterday upheld exceptions brought by Pick ‘n Pay, Shoprite Checkers and Spar (“the Excipients”) and dismissed Massmart’s complaint that the Excipients’ exclusive lease agreements with various shopping malls were anti-competitive and falls foul of the prohibition on restrictive vertical practices contained in Section 5(1) of the Competition Act 89 of 1998 (“the Act”).

Massmart initially self-referred the complaint to the Tribunal in 2015, following the Commission’s non-referral of Massmart’s 2014 complaint – the Commission put forth its decision to institute an enquiry into the grocery retail sector as the reason for the non-referral. A number of exceptions were raised to this first referral and Massmart was granted an opportunity to amend. Massmart’s amended referral was again the subject of a number of exceptions which were heard by the Tribunal on the 19th of September 2017 and resulted in the complaint finally being dismissed yesterday.

The common thread running through all the exceptions raised was the fact that Massmart’s complaint failed to make out a cause of action in respect of Section 5(1) of the Act – not only did Massmart fail to define the markets with sufficient particularity, it also failed to sufficiently demonstrate an anti-competitive effect. In this regard, the Tribunal stated that the “fact that Game is excluded from malls does not equate to an exclusion of competition if another rival is present…Mere proof of exclusion of a particular competitor does not suffice.

The Tribunal’s approach to exclusive lease agreements as demonstrated in this case, can be summed up by its statement that a “complainant needs to allege more than the existence of a contractual restraint.

by Misha van Niekerk | Associate

JAC MARAIS

Partner
Commercial Attorney

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MISHA VAN NIEKERK

Associate
Commercial Attorney

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OAPI | SPLIT IN IP DIRECTORATE IMMINENT

It has recently been resolved that the OAPI Directorate of Intellectual Property be divided into two separate directorates. One for Trade Marks and another for Patents and Designs. Directors have already been appointed who will be in charge of the two directorates.

The decision to split the two directorates is yet to be enforced. We however expect to receive an official formal notification from OAPI shortly. Updates will be provided on this matter in due course.

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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BEST FOR TRADE MARKS – THERE’S NO DOUBT ABOUT IT!

As a major economy with a sophisticated consumer market, South Africa is an important jurisdiction for trade mark law. The country boasts a well-developed legal profession which has connections across Africa, it also serves as a conduit for brand protection throughout the region. This is the view of the World Trademark Review news and industry intelligence service who recently released the reviews and rankings of the leading trade mark professionals in the world for 2018.

In commentary pertaining to Adams & Adams, one of only two gold-tiered firms in South Africa, WTR1000 commentators wrote, “Working masterfully across the IP spectrum, Adams & Adams is widely considered to be a top-tier practice by brand owners and fellow professionals. “Not only the largest team, it is the best for trademarks – there’s no doubt about it. Adams has excellent practitioners who benefit from fantastic systems and structures; as well as a core group of senior experts, it has well-trained younger staff whose work is of a consistently high quality.”

Ten professionals were given individual rankings as well. Of the current firm Chairman, the peer review added that “the business savvy Gérard du Plessis provides level-headed leadership to the civil litigation department.”

Other comments; “Superb strategist Simon Brown provides assured leadership on the non-contentious side, implementing portfolio development programmes seamlessly across Africa. Flanking him is time-served strategist Eugene Honey, who has a flair for prosecution and IP commercialisation. Straddling both sides of the practice is the “absolutely excellent” Darren Olivier, who stands out with his fantastic negotiating abilities and great people skills; his perceptive rights management is informed by an exceptional understanding of international markets. Jenny Pienaar is a valuable ally when contentious matters arise; a courtroom virtuoso, she also sparkles in opposition proceedings and has a particular penchant for domain names. Accomplished enforcer Dale Healy is another key contact for dispute resolution, as is advertising and soft-IP aficionado Kelly Thompson. At the vanguard in the fight against fakes, Steven Yeates has broadened his focus since the recent departure of colleague Suzaan Laing – he now tackles a panoply of trademark spats from his new base in Cape Town. Other leading figures in the firm’s outstanding anti-counterfeiting offering include Lucy Signorelli and Godfrey Budeli.”

Of the reviews, Gérard du Plessis commented, “Recognition from one’s peers and clients in a challenging profession is especially rewarding.”

Prestigious accolades and reviews such as those by WTR1000, Best Lawyers®, IP Stars and Chambers® are based on market leading performance analysis and are strictly quantitative – designed to recognise those firms which are consistently delivering the best results for their clients. Adams & Adams Partner, Mariëtte du Plessis, is recognised by Managing IP in its global list of Top 250 Women in IP. This list recognises female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year.

WTR1000 reviews are accessible here.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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GODFREY BUDELI

Partner
Trade Mark Attorney

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DALE HEALY

Partner
Trade Mark Attorney

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EUGENE HONEY

Partner
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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JENNY PIENAAR

Partner
Trade Mark Attorney

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LUCY SIGNORELLI

Partner
Trade Mark Attorney

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KELLY THOMPSON

Partner
Trade Mark Attorney

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STEVEN YEATES

Partner
Trade Mark Attorney

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MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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REELING IN CYBERCRIMINALS | CATCH.. AND RELEASE?!

Much has been written and speculated about the new Cybercrime and Cybersecurity Bill due to be tabled in Parliament. While it may take some time to create the necessary infrastructure to give full effect to all the provisions of the Bill (e.g. 24/7 Point of Contact Centre) a question which is rarely raised is what will happen to a cybercriminal if he is actually caught? Although it will be extremely tempting to simply lock up the culprit and throw away the key, he will be entitled to the same Constitutional rights available to other arrested persons to dispute the allegations against him.

Given the globally intrinsic nature of cybercrime and the ability of criminals to commit these offences across several jurisdictions (without the need to be present in the same geographical location), it is almost inevitable that an arrest will coincide with bail application and possibly extradition proceedings. Careful consideration of the nature and seriousness of the complaint will be crucial: if the Suspect is arrested prematurely it may result in him/her being granted bail and absconding due to a lack of evidence at the time. Conversely, if the arrest is delayed to gather more evidence, it becomes more likely that the Suspect will realise that he is a viable Suspect and go “underground” to escape detection and arrest. It is therefore imperative that the Law Enforcement officials and Prosecutors know exactly what they are dealing with: is the offence an ongoing crime which requires further investigation or does it present an imminent threat which requires immediate action?

Presently most cybercrime offences are prosecuted under Sections 86 to 88 of the ECT Act and, in the absence of certain qualifying criteria described in Schedule 5 of the Criminal Procedure Act (“the CPA”), such offences would usually resort under Schedule 1 of the CPA. Schedule 1 offences are considered “less serious” when it comes to bail application proceedings and the State will bear the onus to prove why an Accused should not be granted bail under these circumstances.

The Bill is broader in defining the different types of cybercrime and makes provision for many of the listed crimes to be categorised as Schedule 5 offences. Accused persons charged with offences listed under Schedule 5 carry the burden to satisfy a bail court by means of evidence under oath (viva voce or by means of an affidavit) that his/her release on bail will be in the interest of justice. Needless to say, the Bill will bring about welcome and drastic improvements to the current legislation available to prosecute cyber criminals.

In the likely event where the Accused committed his offence(s) in more than one country, extradition proceedings may come into play. Even if an Accused is arrested on the strength of an arrest warrant issued for purposes of extraditing him to stand trial in another country, he will still be entitled to dispute the extradition order and may even be granted bail while doing so. An interesting case on this point is Patel v NDPP (838/2015) [2016] ZASCA 191 (01 December 2016). In brief, Mr. Patel was arrested in South Africa during 2011 pursuant to a request for extradition from the United States of America after a warrant of arrest was issued for him. Mr. Patel fought his extradition all the way to the Supreme Court of Appeal (SCA) where his appeal was eventually dismissed in 2016. Although the facts and technical arguments raised by Mr. Patel’s legal team are an interesting read, the REAL interesting part is that when Mr. Patel’s appeal was eventually dismissed in the SCA, he was already out on bail for several years. Although I stand to be corrected, I doubt that Mr. Patel merely shrugged his shoulders and reported to the authorities to catch the next flight to the US when he heard that the Supreme Court of Appeal ruled against him. This is not an isolated case and there are several examples of accused persons being granted bail and delaying extradition proceedings to frustrate the authorities. Therefore the State will need to ensure that its house is in order already at the very inception of this matter, especially if one considers the intelligence of and resources at the disposal of “hackers”.

Another important consideration is that even if someone is arrested on the strength of a warrant issued by another country, South African authorities will still be entitled to prosecute the same offender in South Africa if his conduct also constituted an offence here. An accused may therefore find himself in the difficult position of fighting off his extradition while, at the same time, facing further charges under South African legislation.

Software giant Microsoft is reportedly in the process of setting up data centres in Johannesburg and Cape Town that will host the data (cloud services) of numerous companies, including some prominent financial institutions. It is difficult to imagine that cyber criminals will be able to resist the temptation of going after the information being stored in these centres. Although merging public and private resources can be a potential minefield, it would make sense, from a cybercrime perspective, for the State and private sector to follow a collaborated approach (at least initially) to prevent and pursue cyber criminals. Most first year law students will be able to explain the importance of stare decisis (“doctrine of principle”) when it comes to arguing cases in court which provides all the more reason why it will be crucial for the first few cases to be properly prosecuted under the new Bill.

JAN-HARM SWANEPOEL

Senior Associate
Trade Mark Attorney

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DOMAIN NAME DISPUTES | AMENDMENTS UPDATE

Late in 2017, an amendment to the Alternative Dispute Resolution Regulations, pertaining to the adjudication of domain name disputes, was published.

The changes to the Regulations include primarily:

  1. the introduction of a mandatory mediation process prior to the appointment of an adjudicator;
  2. an additional remedy of cancellation of an abusive registration;
  3. a summary decision process;
  4. consequences in respect of repeat findings of reverse domain name hijacking.

There are some additional amendments which will also be touched on below.

Mediation

The most notable amendment is the insertion of Regulation 19(a) dealing with informal mediation. In terms of this Regulation, after an adjudicator has been appointed, the adjudicator will conduct informal mediation in a manner which the adjudicator, in his or her sole discretion, considers appropriate. No informal mediation will occur if the registrant does not file a response. The negotiations conducted between parties shall be confidential and will be conducted on a without prejudice basis.

If the parties reach a settlement, then the existence, nature and terms of the settlement shall be confidential, unless the parties agree otherwise. No verbal agreements are allowed and any settlement must be in writing or similar electronic form to be enforceable. If the parties reach a settlement and agree that the domain name should be transferred to the complainant, the mediator must communicate a decision to the second level the domain name administrator to be implemented. This is a welcome amendment, as previously, one had to withdraw the complaint after reaching a settlement and rely on the registrant to comply with the undertaking provided to transfer the domain name. Also, Regulation 34 has been amended to provide for a refund of (a portion of) the fees paid, if the matter is settled.  If no amicable settlement is reached within 5 days, the authority must within 2 days inform the provider to appoint an adjudicator in accordance with Regulation 20.

Cancellation of an abusive registration

A welcome addition to the Regulations is the fact that an abusive registration can now also be cancelled (as opposed to being transferred to the complainant).  The possibility of cancelling the registration will be considered when the complainant and a third party have rights or registered rights and it is a more appropriate remedy than the refusal of the complainant or transfer of the domain name.

Summary decisions

A further significant amendment to the Regulations, is the insertion of Regulation 18(4) which now provides for the possibility of a summary decision. In this regard the complainant has to show, to the reasonable satisfaction of adjudicator, that it has:

  1. rights in the name or mark, which are identical similar to the domain name; and
  2. in the hands of the registrant the domain name is abusive registration or offensive.

There should further be no other factors or circumstances present in the dispute that would unfairly deprive the registrant of the domain name.

Regulation 34 has been amended to provide that if a summary decision is reached, the fixed fee payable at lodgement of the complaint, will be reduced by 50%. Further, the fee payable to the authority, which can be utilised to fund other complainants and registrants seeking financial assistance, will be reduced to 5% (as opposed to 10%) in the case of a summary decision.

Reverse domain name hijacking

Stringent consequences have been included in respect of repeat findings of reverse domain name hijacking. The new Subsection 2 of Regulation 9 provides that if 3 disputes from a complainant were refused within a period of 2 years based on reverse domain name hijacking, the provider will not accept any further complaints from the complainant for a period of 2 years from the date of last decision, except on good cause shown.

Minor amendments

If legal proceedings are instituted in the High Court on a related matter, the adjudicator should still decide the dispute if already appointed at the time of launch of the legal proceedings.  Further, the second level domain administrator must be advised of the proceedings launched and must suspend the implementation of the adjudicator’s decision pending conclusion, settlement or withdrawal of such proceedings. Previously, the second level domain administrator could only keep the matter in abeyance upon service of notice of motion or summons, citing the administrator as a party to such proceedings.

Some further minor amendments include the stipulation of 4 days within which to file a statement of intention to appeal and the time period during which prior findings of abusive registrations will be considered, for purposes of the presumption of an abusive registration, has been extended to 2 years.

Practitioners and members of the public lodging complaints will welcome these amendments and it will be interesting to see, in particular, how mediation processes are managed.

JANI CRONJE

Partner
Trade Mark Attorney

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BOOST YOUR BUSINESS AT THE 2018 BDTV SME SUMMIT

Wouldn’t it be great to know what makes some small and medium-sized enterprises (SMEs) really successful? What advice do SMEs need when planning a sales and marketing strategy? At what stage should technology be brought into the picture? What about intellectual property issues? And cash-flow management?

These questions and more will be the hot topics at the 2018 Business Day TV SME Summit on March 8 in Parktown, Johannesburg.

Standard BankCredit Guarantee and the South African Institute of Chartered Accountants are the headline partners of this year’s event, which aims to “ignite growth potential” among small-business owners and entrepreneurs. And Adams & Adams joins as a Corporate partner, along with BDOFundingHub and GROW.

The Business Day TV SME Summit provides an opportunity for small-business owners, entrepreneurs, incubators, franchisors, investors and suppliers to the SME sector to come together and engage experts in the fields of business, technology, marketing and investment.

Conference topics include:

  • Reimagine the lightbulb: protecting and leveraging SMEs’ intellectual property in the 21st century | Darren Olivier – Partner, Adams & Adams
  • The importance of cash-flow management for small businesses
  • How an effective sales and marketing strategy can get your business to the next level

The 2018 Business Day TV SME Summit will take place at The Empire Conference & Events Venue in Parktown on March 8.

Tickets are available at R995 excluding VAT. For details, contact Lucy Johnson at JohnsonL@tisoblackstar.co.za or visitwww.smesummit.co.za.

DARREN OLIVIER

Partner
Trade Mark Attorney

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