TUNISIA | EUROPEAN PATENT VALIDATIONS ADVISORY

A recent announcement by the President of the EPO, Benoît Battistelli and the Director-General of Tunisia’s National Standardisation and Industrial Property Institute (INNORPI), Amel Ben Farhat, stated that from 1 December 2017, European patents can be validated in Tunisia. This follows from an agreement signed between the parties in Munich, Germany in July 2014.

As far as we have been able to determine, the Tunisian patent legislation and regulations have not been updated to recognise EP validations. As such, it is not clear if EP patents validated in Tunisia will have full legal effect. Until such time as the legislation has been amended it is our recommendation that clients continue to file nationally in Tunisia either via the Paris Convention or the PCT.

We have recently opened an office in Egypt which acts as a hub for the North African region servicing not only Egypt but also Morocco, Tunisia, Algeria and Libya. As a result of this development we are well suited to assist you with obtaining patent and design protection in Tunisia and any other North African country that  may be of interest.

Apart from our presence in North Africa, we are also able to assist you with obtaining patent protection in ant other African country. Furthermore, there are two regional organisations in Africa, i.e. African Regional Intellectual Property Organisation (ARIPO) and African Intellectual Property Organization (OAPI). The two regional organizations cover 35 countries. ARIPO is mainly for English speaking countries (Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sao Tome & Principe, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe) whereas OAPI is for French speaking countries (Benin, Central African Republic, Chad, Burkina Faso, Comoros, Côte d’Ivoire, Cameroon, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali , Senegal, Togo, Mauritania, Niger).

For further information on IP matters in Africa contact africaip@adamsadams.com

 

NICKY GARNETT

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ZIMBABWE | REGISTRY AND ARIPO STILL OPERATIONAL DESPITE POLITICAL CRISIS

Zimbabwe presently finds itself in a state of political crisis at the present, with reports of the seizure of state institutions by the military on Wednesday. Despite this, we have received confirmation that operations at the Zimbabwe Registry and at the ARIPO office (which is based in Harare) have not  been affected. Operations at the Registry and at ARIPO will thus continue as per usual and any changes to the situation will be communicated as soon as possible.

For more information on filing patent and design applications in Zimbabwe and across Africa, please contact us at africaip@adamsadams.com

SIMON BROWN

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DRC | NEW OFFICIAL IP FEES APPLIED FROM 11 NOVEMBER 2017

The Ministry of Trade in the Democratic Republic of the Congo has announced an increase in the official fees in respect of intellectual property matters with effect from 11 November 2017.

This includes adjustments of official fees for trade mark, design and patent registration matters.

For further information and queries on any intellectual property matters in DRC and across Africa, please contact africaip@adamsadams.com

 

STEPHEN HOLLIS

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EGYPT | AMENDMENT OF EXAMINATION FEES FOR PATENTS

Due to volatility in the Egyptian currency there have been several changes to official fees payable for patent examination in Egypt . The changes in local currency have however had little impact on the real cost making only negligible changes to the US dollar equivalent . Furthermore, in an attempt to encourage Egypt’s young inventors to make use of the patent system the Ministry of Science, Research and Technology  (which is responsible for IP matters in Egypt), has allowed an exemption for students in educational institution from paying the examination fees.

Adams & Adams launched an Associate Office in Egypt in 2016. The office acts as a hub for the North African region servicing not only Egypt but also Morocco, Tunisia, Algeria and Libya . As a result of this development we have been able to substantially reduce our fees for IP matters in this region.

For more information on filing patent and design applications in Egypt or any North African jurisdictions , please contact us at africaip@adamsadams.com

 

NTHABISHENG PHASWANA

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BLUE GLOVES FOR STROKE AWARENESS

George Scola was a national basketball player and is a genuine all round nice guy. He lead a normal, if not enviable, life until one day in his 30s he was struck down with a stroke. The moment he became disabled is encapsulated by him in this clip here. Today he spends his life dedicated to promoting awareness of stroke. He founded South Africa’s Stoke Survivor Foundation and is a Director of World Stroke Organisation.

 

Despite these grand titles, his noble cause and his warm personality, George has significant challenges. He is still suffering from his disability which creates a real challenge to getting around, concentrating for long periods and pursuing the cause. Coupled with that he has an annual budget that does not even reach R40k and he is competing with causes in South Africa, like Aids, TB and others that get far more awareness, in a society where none of them get enough.

 

According to George in his interview below, “stroke is the number one cause of disability throughout the world”.

 

Today is World Stroke Day and George has come up with the Blue Glove Initiative to promote his work. This involves placing a turquoise medical glove on one’s hand as a reminder not to use it, for a period of time. It will give the person some idea of what it is like to suffer the effects of a debilitating stroke. As 1000 kids at King Edward VII School understood this morning where he launched his campaign; trying to tie a tie with one hand is well nigh, impossible.

 

“There is urgent need for a campaign like this,” notes George Scola, “as so many misconceptions surround stroke. Some communities still believe stroke is evidence of witchcraft. Others wrongly believe women are immune.” “Awareness is low and information sparse. This must change.”

 

I would like to encourage everyone to support this initiative. You can do so by simply following  them on twitter @strokesurvivors or the Facebook page https://web.facebook.com/strokesurvivors/. Pick up a glove, that is all you need to do but if you want to donate, that would really be appreciated.

 

Adams & Adams’ IP Live team is delighted to be able to support the initiative by sponsoring legal advice around the concept, and wearing a glove!

POSITIVE INVESTMENT REFORM IN EGYPT PROMPTS URGENCY TO SECURE BRAND PROTECTION

Hot on the heels of amendments to the laws governing exports, earlier this year the Egyptian President, Abdel Fattah El Sisi, passed Law No. 72 of 2017 along with his Minister of Investment and International Cooperation, Dr Sahar Nasr. Law No. 72 of 2017 is a reform of Investment Law No. 8 of 1997 and aims to bring about reform to an economy that has seemingly under-performed in terms of its expectations in recent years. The law is an ambitious one and aims to attract foreign direct investment to Egypt through:

  • instituting of a set of enticing investment guarantees and incentives;
  • codifying social responsibility norms;
  • introducing new investment systems;and
  • establishing a new arbitration centre which aims to make settling disputes easier and cheaper.

Egypt is Africa’s second largest economy and is projected to grow at 4.5 percent in fiscal year 2017/18, according to the International Monetary Fund. The Egyptian government has been credited with making positive regulatory changes to facilitate the growth of the economy (for example, the amendment to the laws governing exports).

Of the developments in the law, the investment guarantees will certainly be of interest. The investment guarantees seek to establish and provide a sense of financial comfort and security to the investors, in order to further encourage economic development and growth throughout Egypt and include :

  • The right of a “fair and equitable treatment” to all investors, domestic or foreign;
  • The legislation further expands on its nature of equality, stating the guarantee that no sort of discrimination regarding gender or project size would take place;
  • Foreign investors are guaranteed the right to a residence permit for the duration of their investment project;
  • All investment projects are guaranteed immunity from nationalization;
  • Funds from investment projects are guaranteed not to be seized, except if required for the public good, and not without full compensation preceding the actual date of expropriation;
  • Investors have the full right to “create, manage, and expand,” their project whilst abroad, and with foreign currency[6]. In managing their project from abroad, the right is further guaranteed to transfer and liquidate project profits without restriction;
  • All cash transfers related to foreign investment are guaranteed the right to free movement and full conversion to a recognized currency, without any delay;
  • Foreign investors have the ability to import and export any and all raw materials, products, production requirements, machinery, transportation means, and other essentials related to the project without having to register for a license from either the Register of Imports/Exports;
  • Foreign Investment projects are allowed to employ up to 20% of the workforce from abroad – a statistic that was increased from the previous 10%;
  • Foreign workers employed to a FDI project are also guaranteed the right to transfer their “financial entitlements” freely abroad.

Adams & Adams welcomes the legal reform and have confidence that it may have a positive effect on the economic climate in Egypt. A previous post on the Adams & Adams website referred to the new laws governing export in Egypt;

“The decree (Decree No. 43 of 2016) provides that a record shall be created at the General Organisation for Export and Import Control (“GOEIC”) for factories and companies eligible to export their products into Egypt. This amends Decree 992 of 2015 and all previous contradicting legislation and changes the position for exporters of products into Egypt substantially. The purpose of the legislation is to act as a safeguard against counterfeit products entering the Egyptian market with a view of protecting the interests of both consumers and trade mark owners.

Certain formalities are prescribed by the decree and we recommend engaging with us as to whether it is necessary for your products to be registered with the GOEIC in Egypt, if you intend trading in that jurisdiction.”

Allied to GOEIC approval, there is, naturally, a pressing need to secure trade mark registrations in this African economic powerhouse as soon as possible. In this regard, we are currently offering significantly discounted rates for obtaining trade mark protection in Egypt. Despite the very recent increase in the gazetted official fees, we can file an application for under $600.

For further information and queries on any intellectual property matters in Egypt and across Africa, please contact africaip@adamsadams.com.

SIMON BROWN

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TRADEMARKS 2018 | GETTING THE DEAL THROUGH

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

This volume covers expert local insight into the major trademark law issues across multiple jurisdictions, covering: ownership and scope of trademarks, application for registration, appeal of failed applications, third-party opposition to registration, duration and maintenance of marks, assignment, markings, types of trademark enforcement proceedings, procedural format and timing, discovery, litigation costs, defences and remedies and appeals.. Debbie Marriott and Eugene Honey, both Partners; and Reinhardt Biermann, an Associate at Adams & Adams, provided content for the South Africa Chapter.

To purchase the full publication CLICK HERE.

To read the South African Chapter CLICK HERE

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Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Trademarks 2018, (published in September 2017; contributing editors: Claus Eckhartt and Christine Fluhme, Bardehle Paganberg Partnership) 

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DATA PROTECTION & PRIVACY | GETTING THE DEAL THROUGH

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

This volume covers many of the most important data protection and data privacy laws in force or in preparation throughout the globe. The laws governing data protection are becoming ever more significant as information becomes indispensable to commercial and public life. Topics covered include: breaches of data protection, exemptions, other affecting laws, PII formats, legitimate processing, notifications, accuracy, security obligations and breaches, registration formalities, penalties, transfers and internet use and electronic communications marketing. Danie Strachan and André Visser, both Partners at Adams & Adams, provided content for the South Africa Chapter.

To purchase the full publication CLICK HERE.

To read the South African Chapter CLICK HERE

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Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Data Protection & Privacy 2018, (published in August 2017; contributing editors: Hunton & Williams) 

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SANDTON & CAPE TOWN LAW SEMINAR SERIES HIGHLIGHTS LATEST INTELLECTUAL PROPERTY AND COMMERCIAL LAW DEVELOPMENTS

The annual legal Crammer events presented by leading intellectual property and commercial law firm, Adams & Adams, took place recently in Johannesburg and Cape Town, respectively – bringing together in-house legal representatives, entrepreneurs and executive decision-makers for a morning of intensive panel discussions and presentations. In focusing on trade mark, copyright, patent, commercial and property law developments, legal professionals and industry guest speakers reviewed interesting updates and legislative developments on subjects ranging from innovation funding, copyright and brand development, to data protection and a number of significant IP and commercial case law studies.

In various discussions – mainly centred on trade marks, patents and commercial law – speakers brought attention to topical matters affecting organisations in a South African context. An enthralling keynote address was delivered by historian and storyteller, Michael Charton, who, in the spirit of the event, was able to cram hundreds of years of South African history into a thought-provoking and insightful story presentation, “My Father’s Coat.”

The firm’s biggest and boldest Crammer® event to date, subjects ranging from tech innovation funding; to due diligence in IP; data protection and policy in light of happenings such as the “GuptaLeaks”; rules around community schemes; trade mark judgments by the SCA; and a number of significant IP cases drew a great deal of interest. There was even time to squeeze in a fascinating chat about the now-infamous ‘monkey selfie’ by Cape Town Partners, Charné Le Roux and Phil Pla.

“These kinds of innovative events and seminars are an important part of our firm’s efforts in actively engaging with both clients and lawmakers so that we are able to pro-actively promote our customers’ interests,” commented firm Chairman, Gérard du Plessis. “In another innovative move, and as part of our annual Africa IP Network Week in September, Adams & Adams co-hosted the inaugural Africa Patent Examination Summit with the European Patent Office (EPO), where registrars, officials and examiners from twenty African jurisdictions, as well as regional bodies such as WIPO, ARIPO and OAPI met to discuss the various approaches to patent examination available and to gain insights into developments in this regard around the world.”

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GERARD DU PLESSIS

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DARREN OLIVIER

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KENYA | AMENDMENTS TO COPYRIGHT LAW

Kenya’s Copyright (Amendment) Bill of 2017 recently came before its National Assembly.  The Bill proposes various amendments to the Copyright Act, 2001 and, once enacted, will be known as the Copyright (Amendment) Act 2017.

The Bill proposes amendments to, inter alia, the definition of a copyright author, a copyright work, the functions of the Kenyan Copyright Board and the exclusive rights of a copyright owner. It also envisages changes to the defence of fair dealing, particularly in relation to computer programs.

But perhaps the most newsworthy amendments are those relating to collecting societies as they are known under the current Act. Once the Bill is enacted, Collecting Societies will officially be known as Collective Management Organisations. The role of these organisations will include the collection and distribution of royalties. The Bill also envisages stricter control being exercised in relation to the collection and management of royalties.

For further information and queries on any intellectual property matters in Kenya and across Africa, please contact africaip@adamsadams.com

KIM RAMPERSADH

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MOROCCO | INCREASE IN IP OFFICIAL FEES

The Moroccan Office of Industrial and Commercial Property (OMPIC) has recently announced an increase in the official fees in respect of all intellectual property matters with effect from 1 October 2017. This includes the official fees for all trade mark, design and patent matters. OMPIC offers up to a 50% reduction in official fees if applications are filed online, but the online system is not fully operational yet and some formalities still need to be done manually.

For further information and queries on any intellectual property matters in Morocco and across Africa, please contact africaip@adamsadams.com

ALISSA NAYANAH

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RECORDAL OF INTELLECTUAL PROPERTY RIGHTS IN KENYA

The principal legislation governing counterfeit goods in Kenya is the Anti-Counterfeit Act of 2008. Kenya is one of the few jurisdictions in Africa to have legislation dedicated to anti-counterfeiting.

Section 34 of the Act read with the Regulations of 2010 provide that a trade mark proprietor may apply to the Commissioner of the Kenya Revenue Authority (KRA) for a recordal of its intellectual property rights.

The effect of an approved application with KRA is that it empowers the Commissioner to detain suspected counterfeit goods imported into Kenya. Detection of counterfeit goods at the point of entry is beneficial before it is disseminated into different parts of the country where it may be more challenging to track.

The application for recordal is accompanied by:

  • a power of attorney;
  • an indemnity in favour of KRA;
  • proof of the applicant’s intellectual property right;
  • an affidavit sworn to by an authorised representative of the applicant;
  • a specimen of the genuine goods which are sought to be protected; and
  • payment of an official fee.

Once the application has been submitted, the Commissioner shall consider and deal with the application within three working days.

It must be satisfied that there is a prima facie case that:

  1. the goods claimed to be protected are, in fact, protected;
  2. the IP right(s) on which the application is based subsists; and
  3. the applicant is the owner of the IP right.

The Commissioner shall, in writing, inform the applicant whether the application has been granted and, if so, stipulate the duration thereof. The duration may not extend beyond the last day of the period for which the intellectual property right subsists. Conversely, if the application has been rejected, written reasons must be provided by the Commissioner.

In view of the simplified processes set out above, it is recommended that brand holders consider recording their intellectual property rights with KRA.

It is recommended that, complementary to this, members of KRA be provided with training on the protected goods.

TAYYIBA NALLA

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MOZAMBIQUE ONE STEP CLOSER TO BANJUL PROTOCOL

On 19 September 2017, The Council of Ministers of Mozambique approved a resolution for Mozambique to accede to the Banjul Protocol.  The Banjul Protocol on Trade Marks provides for the filing of a single trade mark application at the ARIPO Office (African Regional Industrial Property Organization), which will cover any member state designated by the applicant.  The Protocol originally came into force on 6 March 1997.

While Mozambique was one of the founding members of ARIPO, it has yet to accede to the Banjul Protocol. The next step is the deposit of the instruments of accession with the Director General of ARIPO but there isn’t any certainty as to when this will take place. Once the instruments are deposited, the Banjul Protocol will become effective in Mozambique after a 3 month grace period.

On the same day, The Council of Ministers of Mozambique also approved a resolution ratifying Mozambique’s accession to the Vienna Agreement of 1973 Establishing an International Classification of the Figurative Elements of Marks.

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

MEGAN MOERDIJK

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LARGEST AFRICA IP MEETING CELEBRATES FIVE YEARS

Adams & Adams hosted its 5th annual IP network seminar, the largest of its kind on the continent, for partners and IP officials from across Africa. The meeting brought together close to 100 leading IP practitioners and administrators, representing 42 out of 54 jurisdictions on the continent, as well as regional and global organisations such as ARIPO, OAPI, EPO and WIPO.

The annual IP showpiece event was only briefly interrupted in 2014 over concerns of the threat posed by the outbreak of the Ebola virus in West Africa. On the continued growth and success of the Meeting, Director General of the African Regional Intellectual Property Organisation (ARIPO), Mr Fernando do Santos said, “ARIPO has attended this meeting for all five years. The quality of the discussions and topics at the Network Meeting has improved significantly, and it is good to see more and more registry and government officials joining the event.”

In her keynote address, Ms. Nicky Weimar, Senior Economist at Nedbank, delivered a valuable analysis of the current outlook and performance of Africa’s economies, highlighting challenges that the continent faces in pursuing growth – challenges such as legislative and political uncertainty. Meeting chair, and Partner at Adams & Adams, Mr Simon Brown, agreed that while legislative uncertainty hampered development, it was encouraging to note from discussions at the Africa Patent Summit, held the day before, a number of jurisdictions are actively addressing their IP laws in order to encourage efficiency in processing of applications, providing better enforcement mechanisms and encouraging innovation and entrepreneurship.

Breakaway sessions focussed on current IP matters such as the Madrid Protocol, performance of the Banjul Protocol, design litigation, franchising agreements and patent prosecution across Africa. Many Africa Network delegates highlighted the fact that the Meeting affords them a unique opportunity to address concerns and queries directly with Registrars and IP administrators, in an environment that encourages robust discussion. The meeting also serves as the only platform in Africa for African IP practitioners to meet and engage on topics of mutual interest in the IP arena and provides them with access to the combined skills and knowledge of the partners and professionals at Adams & Adams as well as a large group of IP professionals who often face similar capacity challenges in their respective jurisdictions.

In celebration of the success of the Africa Network event, Adams & Adams launched the Africa Good Business Project, a social responsibility initiative that encourages active participation of IP partners from all over the continent. “The Adams & Adams  Africa Network is committed to being a responsible entity, both in the way that we deliver service to our clients but also in delivering positive outcomes for our colleagues, clients, profession, environment and our local communities,” said Nicky Garnett, Partner and Head of Africa Patents at Adams & Adams.

Delegates at the 5th Annual Adams & Adams Africa IP Network Meeting, held in Pretoria.
Delegates at the 5th Annual Adams & Adams Africa IP Network Meeting, held in Pretoria.
Nicky Weimar, Senior Economist at Nedbank
Nicky Weimar, Senior Economist at Nedbank
Debbie Roenning, Director of the Madrid Legal Division at WIPO
Debbie Roenning, Director of the Madrid Legal Division at WIPO
The IP Network Meeting was attended by Network partners and officials from jurisdictions and regional organisations across Africa.
The IP Network Meeting was attended by Network partners and officials from jurisdictions and regional organisations across Africa.

GERARD DU PLESSIS

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SIMON BROWN

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INAUGURAL AFRICA PATENT EXAMINATION SUMMIT HELD IN SA

As part of its annual Africa IP Network Week, Adams & Adams co-hosted the inaugural Africa Patent Examination Summit with the European Patent Office (EPO) in Pretoria, South Africa, on 13 September 2017.

Few countries in Africa conduct any form of substantive patent examination at present, mainly due to a lack of capacities and resources. South Africa has a depository system and has begun training patent examiners as it intends to introduce substantive examination in the near future. Work-sharing and pooling of examination resources in the form of regional institutions such as the African Regional Intellectual Property Organization (ARIPO) and Organisation Africaine de la Propriété Intellectuelle (OAPI) is an effective way for addressing these common challenges. In addition, Morocco, and soon Tunisia, allow holders of EP patents to validate granted European patents in their jurisdictions via so-called validation agreements.

In contrast to other registration type systems available in African countries such as Ethiopia, the DRC and Swaziland, this allows for a proper delimitation of the granted scope of protection which is favourable to both the patent proprietors and third parties.

Registrars, officials and patent examiners from twenty African jurisdictions, as well as representatives from regional organisations such as the EPO, ARIPO and OAPI met to discuss the various approaches to patent examination available and to share experiences and best practices in this regard.

The Summit was followed by the 5th Annual Adams & Adams Network Meeting, a two-day seminar that brings together IP professionals and officials from across the continent to discuss topical IP issues in an African context.

Adams & Adams Partner and co-chair of the summit, Mr. Danie Dohmen, described the meeting as a platform for an “honest and open discussion between the Registrars, regional organisations and the EPO” in assessing the status of patent examination in Africa and prospects for future co-operation. Mr François-Régis Hannart, Principal Director for European and International Co-operation at the EPO, stated: “It is evident that the worldwide patent system is becoming more connected and integrated as a result of globalisation, and that Africa will play an important role in this system. This meeting offered a valuable platform for forging new partnerships in the region, both bilateral and multilateral, thereby strengthening the ties between Europe and Africa even further.”

Summit co-chair and Principal Director for European and International Co-operation at the EPO, Mr François-Régis Hannart, explains the role of the European Patent System in the global economy.
Summit co-chair and Principal Director for European and International Co-operation at the EPO, Mr François-Régis Hannart, explains the role of the European Patent System in the global economy.
Delegates at the Africa Summit on Patent Examination; including national Registrars and officials from EPO, ARIPO, OAPI and Adams & Adams.
Delegates at the Africa Summit on Patent Examination; including national Registrars and officials from EPO, ARIPO, OAPI and Adams & Adams.

DANIE DOHMEN

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AN SA TWIST IN THE ‘COLA WARS’ | COURT RULING

The Supreme Court of Appeal handed down a landmark decision on Friday involving a trade mark dispute between two of the world’s largest beverage manufacturers, PepsiCo Inc (Pepsi) and Atlantic Industries (Atlantic), a wholly-owned subsidiary of The Coca-Cola Company.

This case was not your typical “cola war”, but rather involved TWIST, the well-known carbonated beverage brand which has been available in South Africa since the 1970s (originally as LEMON TWIST). Atlantic is the proprietor in South Africa of the TWIST, LEMON TWIST and DIET TWIST trade marks in relation to non-alcoholic drinks falling in class 32.

In 2006, PepsiCo applied to register the trade marks PEPSI TWIST and a PEPSI TWIST label, also in relation to non-alcoholic beverages in class 32.

Atlantic opposed the registration of PepsiCo’s PEPSI TWIST trade mark applications on the basis, firstly, that they were confusingly similar to Atlantic’s prior, registered trade marks and, secondly, that Pepsico could not claim to be the bona fide proprietor of the PEPSI TWIST trade marks, given that they wholly incorporated Atlantic’s TWIST mark.

PepsiCo countered by seeking the removal of Atlantic’s registered trade marks from the Trade Marks Register, alleging that they were descriptive of the goods to which Atlantic’s marks relate and not inherently capable of distinguishing its beverages from those of other proprietors.  It is trite that words which exclusively describe the goods to which they are applied cannot be registered as trade marks.

In support of its contentions, PepsiCo relied heavily on two dictionary definitions of the word “twist”, being “a curled piece of lemon etc. peel used to flavour a drink” and “a drink consisting of a mixture of two different spirits or other ingredients, such as gin and brandy etc.

The matters were initially referred by the Registrar of Trade Marks to the North Gauteng High Court which dismissed both Atlantic’s opposition and PepsiCo’s counter-application, leading to the parties appealing to the Full Bench of the North Gauteng High Court.  The Full Bench upheld the appeal by Atlantic and dismissed the cross-appeal by PepsiCo, with costs.

PepsiCo petitioned the Supreme Court of Appeal for leave to appeal the decision of the Full Bench, which it was granted. The matter was heard before Judges Lewis, Cachalia, Petse, Lamont and Rogers on 28 August 2017.

Decisions from the SCA in recent years regarding confusing similarity between trade marks, including those involving the trade marks YUPPIE CHEF vs YUPPIE GADGETS, KNIGHTS vs BLACK KNIGHT and LUCKY STAR vs LUCKY FISH, although all decided on their particular facts, had overwhelmingly found against there being any likelihood of confusion, leaving trade mark attorneys and trade mark owners alike concerned that perhaps the SCA was leaning away from enforcing registered trade mark rights in South Africa.

However, the SCA returned to basic trade mark principles in the Pepsico/Atlantic case and ruled in favour of Atlantic, dismissing PepsiCo’s appeal with costs.

The Supreme Court of Appeal rejected PepsiCo’s contention that “twist” meant a beverage of mixed ingredients and commented that this definition was “obsolete English slang, known by very few, if any, South African consumers, even those whose first language was English”.  The Court also went on to state that, to most South African consumers, the mark TWIST as applied to Atlantic’s beverages is an arbitrary brand name without meaning and, when it is applied to a particular product, it is the “exemplar of a mark inherently capable of distinguishing”.

The Court also commented that this case was distinguishable from Pepkor Retail v Truworths Ltd [2016] ZASCA146, in that the trade mark THE LOOK which was the subject of that decision was, in the fashion retail industry, an expression which carried “the universal ordinary meaning of fashionable or trendy clothing or outfits”, rather than being a “covert or skilful allusion to such goods”.

In finding in favour of Atlantic in the opposition, the Court felt it necessary to only rule on the issue of confusing similarity, ie. whether the proposed PEPSI TWIST trade marks were sufficiently similar to Atlantic’s trade marks to create a likelihood of deception or confusion.

The Court found that if a side by side comparison of the marks in the market place is made, the TWIST trade mark, which is the whole of the Atlantic’s TWIST trade mark and the dominant and distinctive feature in its LEMON TWIST and DIET TWIST trade marks, when incorporated within the PEPSI TWIST trade mark, has equal prominence and essentially retains its distinctive features, which will create a likelihood of deception or confusion.

Interestingly, one of the factors which the Court took into account in finding that there would be a likelihood of deception or confusion is the worldwide trend of companies using primary and sub-brands, eg. Pepsi-Cola and Pepsi Wild Cherry. The Court held that, in these instances, the emphasis will fall on the sub-brand or consumers will refer to the sub-brand when identifying the product. As such, consumers wanting a Pepsi Twist may drop the “Pepsi” and simply order a “Twist”, as consumers are likely to equate Pepsi with the well-known Pepsi-Cola beverage.

The Court also referred to with approval the European Court of Justice judgement in Medion v Thomson Multimedia Sales Germany & Australia GmbH [2005] EUECJ C-120/04, which concerned the infringement of the LIFE trade mark by Thomson through use of its THOMSON LIFE trade mark and found that the principles laid down in that case were consistent with the principles of our law.

It would be fair to say that the lines have now been drawn and that one cannot simply add one’s house brand to a competitor’s trade mark and argue that they are different as consequence. The judgement is a victory not just for Atlantic but for the enforcement of trade mark rights in general in South Africa.

Dineo Modibedi | Associate

Kelly Thompson | Partner

 

 

*Adams & Adams represented Atlantic in the case

KELLY THOMPSON

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SOCIAL MEDIA INFLUENCER RELATIONSHIPS COME UNDER FURTHER SCRUTINY

In April this year, we wrote about the phenomenon of the social media influencer – usually a celebrity or person with a large social media following who is paid to mention certain products and services, either in money or in kind. We postulated the legal ramifications of this modern form of advertising for brand owners, both internationally and in South Africa.

The obligations on influencers and marketers, in the USA at least, are contained in the USA’s Federal Trade Commission (FTC)’s very specific guidelines which state that any material connection between an advertiser and endorser must be disclosed in a clear and conspicuous manner.

The issue is one which remains in the spotlight and the FTC has since reported having addressed head-on certain non-compliant social media posts, as well as posts where the FTC was unsure as to whether any relationship existed and ought to have been disclosed.

In a press release earlier this year, the FTC stated that “After reviewing numerous Instagram posts by celebrities, athletes, and other influencers, Federal Trade Commission staff recently sent out more than 90 letters reminding influencers and marketers that influencers should clearly and conspicuously disclose their relationships to brands when promoting or endorsing products through social media.”

The FTC’s letters reminded influencers and marketers that a “material connection” between an endorser and an advertiser is a connection that might affect the weight or credibility that consumers give the endorsement and that this could include a relationship, sponsorship, payment or provision of free products.

The FTC has also seemingly become more specific with what is required to comply with the guidelines: “In addition to providing background information on when and how marketers and influencers should disclose a material connection in an advertisement, the letters each addressed one point specific to Instagram posts — consumers viewing Instagram posts on mobile devices typically see only the first three lines of a longer post unless they click “more,” which many may not do. The staff’s letters informed recipients that when making endorsements on Instagram, they should disclose any material connection above the “more” button.

The letters also noted that when multiple tags, hashtags, or links are used, readers may just skip over them, especially when they appear at the end of a long post – meaning that a disclosure placed in such a string is not likely to be conspicuous. Some of the letters addressed particular disclosures that are not sufficiently clear, pointing out that many consumers will not understand a disclosure like “#sp,” “Thanks [Brand],” or “#partner” in an Instagram post to mean that the post is sponsored.”In our April article, we had expressed doubt that Kim Kardashian’s use of “Thank you @jetluxlife!!!” in an Instagram post would comply with the guidelines and it appears that the FTC agrees. The FTC has declined to publish the names of the persons who received its letters so we will never know whether Ms Kardashian received her proverbial rap over the knuckles. Her more recent Instagram posts appear to comply with FTC guidelines which seems to indicate that she did:

KimKInstagram

The FTC has apparently sent follow-up letters to 21 of the original 90 contacted and, earlier this month, it reported that it had settled its first-ever formal complaint against two social media influencers Trevor “TmarTn” Martin and Thomas “Syndicate” Cassell who are widely followed in the online gaming community and who were charged with deceptively endorsing the online gambling service CSGO Lotto, while failing to disclose that they jointly owned the company. They also allegedly paid other well-known influencers thousands of dollars to promote the site on YouTube, Twitch, Twitter, and Facebook, without requiring them to disclose the payments in their social media posts.

The FTC has also updated its guidelines and has become even more specific in its advice to brands and influencers. For example, it advises that tagging a brand in an Instagram picture is an endorsement of the brand and requires an appropriate disclosure. The new information covers a range of topics, including Instagram and Snapchat disclosures, obligations of foreign influencers, disclosure of free travel, whether a disclosure must be at the beginning of a post, and the adequacy of various disclosures like “#ambassador.”

So what does this mean for South African marketers and social media influencers? Not much as it remains the case that our Advertising Standards Authority has not turned its specific attention to this issue. If you have been following the latest developments, it is understandable that the ASA has had other, more pressing issues to deal with. However, as mentioned in our April article, failing to disclose that a social media post is, in fact, sponsored in some way, would likely fall foul of both the ASA Code and Consumer Protection Act.

The bottom line remains that a social media post should not mislead a consumer to think that a celebrity or influencer is giving an unbiased testimonial when, in fact, they have an interest in supporting a brand – and that requires a clear disclosure of the relationship.

Kelly Thompson | Partner

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GETTING THE DEAL THROUGH | FRANCHISE 2018

Getting the Deal Through has published the fourth edition of Franchise, which is available in print, as an e-book and online here. The South Africa Chapter of Getting the Deal Through, Franchise pis authored by Adams & Adams Partner, Eugene Honey.

The latest edition provides international analysis for corporate counsel and cross-border legal practitioners in such key areas of franchise as: governing bodies, laws and agencies, exemptions and exclusions from franchise laws, ground rules for franchise termination, restrictions on foreign entities and investments, confidentiality covenants in agreements, restrictions on franchise agreements and good faith obligations and franchise relationships.

To read the full publication submission, CLICK HERE.

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Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Franchise 2018, (published in Sept 2018; contributing editor: Philip Zeidman, DLA Piper LLP) 

EUGENE HONEY

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SOUTH AFRICA’S COPYRIGHT LAWS | VOICE OF WITS

Following some 70-plus sets of submissions and a lot of heated debate in Parliament, the decision has apparently been taken to send the Copyright Amendment Bill back to the drawing board, again. Whilst looking better than its predecessor that made its debut in 2015, the 2017 Bill unfortunately also failed to pass muster with words such as ill-considered, nonsensical and ridiculous used to describe its provisions and practical implications. Werina Griffith spoke to the Law Focus team on Voice of Wits about Copyright basics and the Copyright Amendment Bill.

WERINA GRIFFITHS

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USE IT OR LOSE IT! HOW AN ICONIC BUT FORGOTTEN BRAND WAS RESURRECTED IN THE USA

How a savvy entrepreneur resurrected America’s “original cream-filled chocolate cookie”. As far as podcasts go, NPR’s Planet Money is right up there with the best! Which is why we were doubly delighted to hear an updated episode regarding the resurrection of the Hydrox chocolate cookie which had a strong focus on the nature of trade mark rights.

DARREN OLIVIER

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THE DRAFT IP POLICY 2017 | SECOND TIME LUCKY FOR THE DTI?

The much anticipated draft IP Policy for South Africa has finally been published by the Department of Trade and Industry (DTI) and is now open for comment by the public. By way of background, South Africa’s first draft IP Policy was published by the DTI in September 2013, with a fairly short 30-day submission period. The stated aim of the draft IP Policy was to remedy perceived uncertainty involving IP matters, brought on by a lack of general IP policy in the country.

The original draft policy met with strong criticism and dissent in submissions and comment from stakeholders, including academic institutions, non-profit groups and law firms. Some of the more controversial criticism of 2013 draft came from organisations such as the Treatment Action Campaign (TAC), Section 27 and Médecins Sans Frontières (MSF), who all called for a change in laws relating to pharmaceutical patents and HIV/AIDS treatment. However, the biggest gripe among submission arguments was the fact that IP stakeholders had not been consulted in regard to the draft process and, as such, there was a glaring lack of public input. The policy was also widely considered to have been poorly drafted and contained blatantly incorrect statements regarding the law.

Following the criticism levelled against the draft IP Policy, the DTI agreed that the process needed to be revaluated and, in July 2016, the IP Consultative Framework replaced the 2013 draft IP Policy. In addition, an inter-ministerial committee on IP (IMCIP) was created to assist with the process and ensure that relevant stakeholders were appropriately consulted.

Adams & Adams, as Africa’s largest IP law firm, was one of a number of legal stakeholders that had expressed concerns; so when the window for public submissions was again opened for the IP Consultative Framework in the third quarter of 2016, the firm engaged heavily with the DTI and provided detailed commentary. Read the Adams & Adams comments on the draft IP Policy here.

Following the 2016 submissions and other IMCIP processes, the new draft IP Policy was reviewed by Cabinet in March and the draft IP Policy 2017 Phase 1 was approved. You can view the draft IP Policy document here. The Department of Trade and Industry has now called on all interested parties to make their submissions within 60 days, with the closing date for submissions being 23 October 2017.

Hopefully, the next phase of the process will be a smooth one.

by Dineo Modibedi | Associate

JANICE GALVAD

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HISTORICAL DEBT FOR MUNICIPAL SERVICES | CONCOURT RULES THAT NEW OWNERS ARE NOT LIABLE

On Thursday, 29 August, the Constitutional Court of South Africa handed down judgment in an application for confirmation of an order by the High Court of South Africa, Gauteng Division: Pretoria (High Court) that declared section 118(3) of the Local Government: Municipal Systems Act, 2000 constitutionally invalid. This section provides that an amount due for municipal services rendered on any property is a charge upon that property and enjoys preference over any mortgage bond registered against the property.

This judgement is important as it confirms that section 118(3) of the Local Government: Municipal Systems Act should not be interpreted that historical debt for municipal services survives transfer of a property to a new owner.

Click here for the MEDIA SUMMARY

Click here for a copy of the JUDGMENT

 

ROELOF GROVE

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BACK TO THE DRAWING BOARD FOR COPYRIGHT BILL | COMMENTARY

Following some 70-plus sets of submissions and a lot of heated debate in Parliament, the decision has apparently been taken to send the Copyright Amendment Bill back to the drawing board, again.

Whilst looking better than its predecessor that made its debut in 2015, the 2017 Bill unfortunately also failed to pass muster with words such as ill-considered, nonsensical and ridiculous used to describe its provisions and practical implications.

There were glimmers of hope with the recognition of streaming as a form of infringement and the fixation of the split of needle-time royalties between the record companies and the performers, but those small victories were not near enough to save a Bill that turned out otherwise to be fraught with difficulties and legal uncertainties.

Many, many hours have been spent by members and representatives of various stakeholders ranging from the musicians, lyricists and artists to the legal fraternity, collecting societies, academics, auctioneers and galleries in making submissions and delivering comment to counter-act the potential far-reaching and negative impact of some of the proposed amendments.  The good news is that the outcries do not appear to have fallen on deaf ears and reports indicate that a special task team will be constituted to undertake a substantial redrafting of the Amendment Bill.  Cue the sighs of relief.

There are indeed many voices to be heard and many considerations of which to take account.  It is hoped that legal certainty will be the guiding principle throughout the difficult task of balancing the rights and interests of those that stand to be affected by the proposed amendments and that any workable draft that may come thereof will be such that the move to modernise our Copyright Act will be in a forward direction.

PREVIOUS COMMENTARY BY ADAMS & ADAMS ON THE AMENDMENT BILL

SUBMISSIONS BY ESME DU PLESSIS AND STEPHEN HOLLIS TO THE COMMITTEE

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WHERE IDEAS MAKE IT | SA INNOVATION SUMMIT

South Africa’s leading Intellectual Property Law Firm, Adams & Adams, has announced that it has joined as a legal and IP partner of the upcoming SA Innovation Summit in Cape Town, held from 6 to 8 September. The SA Innovation Summit as an annual flagship event on the South African Innovation Calendar, is a platform for nurturing, developing and showcasing African innovation, as well as facilitating innovation thought-leadership. Created to support and promote innovation and facilitate collaboration within its own eco-system, the initiative brings together corporates, thought leaders, inventors, entrepreneurs, academia, and policy makers to amplify South Africa’s renowned competitive edge and to inspire sustained economic growth across the continent of Africa.

In confirming the firm’s participation, Patent Attorney and Partner at Adams & Adams, Philip Pla, said, “South Africa’s rich heritage of solving problems and creating solutions is celebrated at the Innovation Summit, and as a leading IP firm with interests in the protection and commercialisation our country’s entrepreneurial genius, Adams & Adams is proud to be part of this discovery and celebration of invention and ideas.”

The aim of the summit this year is to:

  • Provide a platform where Tech Entrepreneurs and innovators can participate, grow their know-how and connections, and make their ideas come to life. With the rapid advent of the Industrial 4.0 Tech Revolution, the flexibility to integrate, and the speed to market will be absolutely critical.
  • Provide a platform where Tech Entrepreneurs and innovators can participate, grow their know-how and connections, and make their ideas come to life. With the rapid advent of the Industrial 4.0 Tech Revolution, the flexibility to integrate, and the speed to market will be absolutely critical.
  • Collaborate with government, academia and industry to build an African system for innovation on a practical level.
  • Provide curated networking with technology leaders and founders, trend specialists, policy makers and forward thinkers.
  • Bring together innovation leaders from different countries, backgrounds, disciplines and world-views, to create an innovative economic environment that will prosper the South African economy and have a positive effect on our clients’ competitive edge.• Encourage mutually beneficial deal-making between entrepreneurs and investors.
  • Grow and accelerate organisational innovation culture.
  • Facilitate the establishing of industry-leaders by presenting new market opportunities.

Pla adds that “Our interest is in helping Tech Entrepreneurs and innovators understand that apart from the working capital and fixed assets in their new ventures, their intellectual capital – their intellectual property – is a vital ingredient in the combination of assets used by successful companies for expanding their participation in industry and for maximising their profits.”

The intellectual capital of a business constitutes a significant component of its total asset base; the value of the intellectual capital could exceed the value of the fixed assets of the business or its working capital. It has been recognised that the intellectual capital of a business provides the most potent – and most effective – impetus to its earning power.

Adams & Adams, South Africa’s largest Intellectual Property law firm, as a partner of the SA Innovation Summit, will be on hand to provide advice and assistance with regard to patents, trade marks, designs, copyright and trade secrets, non-disclosure documents (NDAs), Licensing and IP commercialisation.

Visit the SA Innovation Website for more details.

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ZAMBIA | COMMENCEMENT OF NEW IP ACTS

Zambian lawmakers have recently issued the Commencement Orders of four crucial IP Acts, namely;

  1. The Patents Act (No.40 of 2016) – This Act replaces the previous Patents Act (Chapter 400 of the Laws of Zambia)
  2. The Layout Designs of Integrated Circuits Act (No.6 of 2016) – The Layout Designs of Integrated Circuits Act is a new piece of legislation.
  3. The Industrial Designs Act (No.22 of 2016) – This Act replaces the previous Registered Designs Act (Chapter 402 of the Laws of Zambia)
  4. The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act (No.16 of 2015) – Like the Integrated Circuit Act, this Act is brand new.

Although these Acts have come into force, the regulations thereunder, are still to be issued. We will provide an update once the regulations for each Act are issued. In the meantime, however, the regulations under the repealed Patents Act and Registered Designs Act will continue to apply to the new Acts until fresh regulations are issued.

We expect a new Trade Marks Act [Read Jameel Hamid’s update here] to be issued later this year. This will introduce service marks as well as recognition of international registrations under the Madrid Protocol. We will issue notice once the new TM Act comes into force.

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

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RETOUCHED FASHION PHOTOS | WHAT ARE THE RULES?

The Global Advertising Lawyers Alliance (GALA) reported recently that France has enacted new legislation requiring that all altered or retouched commercial photographs of models, whose body appearance has been refined or thickened, be labelled as a retouched photograph.  The legislation comes into effect on 1 October 2017, requiring the labels ‘photographie retouchée’ or ‘photo retouchée’. This follows French legislation that requires that all models provide a medical certificate confirming their general physical well-being and the fact they are not excessively underweight.

The legislation, which applies to photographs used in France for commercial purposes, carries fines of up to €37,500 per violation for offending advertisers, and is similar to a 2012 law in Israel that governs the use of models in the advertising industry. Titled, “Weight Limitation in the Modelling Industry Act – 2012,” the law is also colloquially referred to as the “Model Act” or the “Photoshop™ Act.”

According to the Israeli version, if an advertiser (television, print or electronic) alters the appearance of the model by digital means, the advertisement must contain a notice which clarifies that the model’s body features were graphically altered. The law also prohibits advertisements which display models (both male and female) who are underweight in accordance to measuring formulas prescribed in the law (namely, the Body Mass Index (BMI).

Of the French legislation, Michel Bejot, a Partner at Bernard-Hertz-Bejot said, “The legislation, which was passed to help fight eating disorders, will have significant impact on fashion, cosmetics, and other advertisers who retouch photographs.” The new legislation does not apply to images used for editorial purposes.

The ‘retouched photograph’ disclosure must be presented in an accessible and visible way and must be clearly distinguished from the other parts of the advertising.

Insofar as South Africa is concerned, no such law yet exists, but Kelly Thompson, a partner at Adams & Adams, the South African member of GALA, says that the Advertising Standards Authority (as well as legislation such as the Consumer Protection Act) specifically prohibits false and misleading advertisements. “The question will be what can be considered false and misleading. The ASA Code says that advertisements should not contain any statement or visual presentation which directly or by implication, omission, ambiguity, inaccuracy, exaggerated claim or otherwise, is likely to mislead the consumer. While some degree of digital enhancement for advertising purposes must surely be allowed, if the image appearing in the advertisement actually misleads the consumer, that may create difficulties”, says Thompson. Of course, the French and Israeli laws deal with the wider social issues of eating disorders and model welfare, and are not limited to misleading imagery only.

As a matter of interest, the ASA previously held that an advertisement for a yoghurt product showing a model choosing a fat free product upon seeing a thinner model choosing the product, was contrary to the ASA Code in that it reinforced the artificial desire for women to want to look like the second, skinnier model. The ASA found the advertisement to be irresponsible and ordered that it be withdrawn. Interestingly, the advertisement had been presented in several countries around the world, without complaint, whereas eight complaints were received here.

In responding to news of the French legislation, Jeffrey A. Greenbaum, GALA’s Chairman and Managing Partner of Frankfurt Kurnit Klein & Selz in New York said, “Advertisers should start making plans now to include appropriate disclosures, as needed. Advertisers should also consider whether this will have an impact on a model’s willingness to participate in a campaign where retouching is planned.”

KELLY THOMPSON

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THE GOVERNMENT PROCUREMENT REVIEW | SOUTH AFRICA CHAPTER

The Law Reviews has recently introduced the fifth edition of The Government Procurement Review, which incorporates contributions from six continents and 23 countries (excluding the EU chapter).

Leading thinkers at the world’s top law firms provide analysis of global legal issues and their commercial implications. The Law Reviews acts as an essential information tool for practitioners, in-house counsel, governments and corporate officers. Editors are internationally-renowned industry experts in key practice areas with a network of experts that includes more than 1,200 law firms covering 57 areas of law, creating a global road map to help our readers navigate the increasingly complex legal terrain.

The South Africa Chapter on Government Procurement has been authored by Partner, Andrew Molver, and Specialist Consultant, Gavin Noeth.

Read the South Africa Chapter by CLICKING HERE

An electronic version of the full publication can be ACCESSED HERE

Procurement-3D

Reproduced with permission from The Law Reviews. The Government Procurement Review (published in August 2017; contributing editors: Jonathan Davey, Amy Gatenby, Addleshaw Goddard LLP)

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DUBIOUS COPYRIGHT AMENDMENT BILL WILL RESULT IN MORE LITIGATION

At recent parliamentary hearings on South Africa’s Copyright Amendment Bill, Specialist Consultant, Esmé du Plessis, and Partner, Stephen Hollis, made submissions to the Committee on behalf of the South African Institute of Intellectual Property Law (SAIIPL) and the Law Society of South Africa.

Du Plessis commended the long-awaited efforts at revising the Copyright Act no. 98 of 1978, but gave stern warning of contentious policy issues that would lead to legal uncertainty. In describing the required framework for updating and modernising the current 1978 Copyright Act 1978, du Plessis and Hollis proposed that it is important to take into account several principles and guidelines, namely that lawmakers ensure that South Africa:

  • Implements, and adheres to, the international treaties and instruments that the country has acceded to.
  • Takes note of technological developments, including legal solutions applied in other countries, but without compromising the existing legal dispensation of the country and without slavishly adopting legal models of other countries.
  • Takes account of the need to establish a legal system that will empower and enable – and ultimately benefit – local creators, artists, composers, performers, students – but also local creative industries and business entities
  • Takes account of its domestic legal dispensation in the broader field of lP, and doesn’t compromise long-standing fundamental principles.
  • Takes into account the findings and recommendations of bodies that have investigated and assessed the needs and shortcomings of the current lP legal dispensation, also in the field of copyright law.

It was not apparent to the Copyright Law Committees of the SAIIPL and Law Society that these principles and guidelines were taken into account in the drafting of the Copyright Amendment Bill, 2017.

Mrs. du Plessis, who has practised as an attorney in the field of IP law since 1965, has served on numerous local and international IP industry bodies and policy committees, over many years. She described, in her presentation, the fear that the adoption of a US-style ‘fair use’ policy would lead to an increase in litigation and legal interpretation confusion that would ultimately require guidance from the Constitutional Court.

The team proposed that the Committee consider appointing a Task Team of Experts to work through the Bill and inform the Committee on drafting and legal problems raised; correct the numerous errors and shortcomings identified; assess the arguments raised in regard to policy considerations, legal models used in other countries, and economic factors; and consider convening an inclusive consultative workshop for stakeholders to debate the issues and to seek acceptable solutions.

You can access the FULL SAIIPL & LSSA PRESENTATION HERE.

Download the COPYRIGHT AMENDMENT BILL HERE.

ESME DU PLESSIS

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STEPHEN HOLLIS

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TRADE MARK LAWS IN ZAMBIA SET TO CHANGE

Zambia is a member of the Paris Convention, the Madrid Protocol, WTO/TRIPS and ARIPO.  However, Zambia is a common-law country and legislation must be passed to give effect to its international obligations. No such legislation has been passed in respect of the Madrid Protocol.  In addition, although Zambia is a member of ARIPO, it has not acceded to the Banjul Protocol and, therefore, does not process ARIPO trade mark applications.

The registration and enforcement of trade marks in Zambia is currently governed by the provisions of the Trade Marks Act (Chapter 401) (hereinafter “the TMA”).  The TMA is, however, considered to be antiquated because it does not provide for the registration of trade marks in respect of services (classes 35 to 45).  Accordingly, trade mark proprietors seeking to register trade marks in respect of services have had to register their trade marks in the goods class that is most closely associated to the relevant services.  A further shortfall in the current TMA is that fact that it does not enable the proprietor of a registered trade mark to rely on a trade mark registration to prohibit use of an identical/confusingly similar mark in relation to goods not covered by the said registration, even where the goods may be considered similar.

There has for some time been speculation that new trade mark legislation, which was drafted some time ago, is soon to be passed into law. There is renewed optimism that the new legislation will come into effect this year (2017); however, there is no certainty in this regard.  Be that as it may, the new legislation is set to remedy some of the shortfalls in the current legislation. In particular, services marks will be recognised and provision is expected to be made for wider enforcement of registered trade marks.

Ironically, the new legislation is said to reverse some of the progressive provisions in the current TMA relevant to prior user rights.  Historically, Section 16 of the TMA was relied on for many years in opposition proceedings where common law rights were involved, while Section 17 was used by the owner of a registered trade mark to oppose an application on the basis of a prior registration.  However, according to a Zambian Supreme Court of Appeal decision, the TMA does not allow for the filing of an opposition only on the basis of a common-law trade mark.  The court found that the purpose of the TMA is not conducive to preventing the registration of a trade mark based on unregistered rights.  This decision remains at odds with the precedent of UK courts, where the identical provisions were considered and interpreted otherwise; however, the new trade mark legislation is expected to legislate the decision taken by the Zambian SCA.

Irrespective of the decision, the new legislation is likely to be well-received, in so far as it remedies some of the current legislation’s antiquated provisions. In addition, the new legislation is expected to domesticate the Madrid Protocol, thereby recognising International Registrations.  This is another welcome development for trade mark proprietors, as it is likely to ease the burden of filing trade mark applications in Zambia. Of course, all these welcome developments depend on the new legislation being passed into law.  If you want to be the first to know when the new legislation has been passed into law, keep watching this space.

by Jameel Hamid

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HOT IP TOPICS IN JULY | IP LIVE TOP FIVE

Despacito, Double Bogeys and Dilution all feature in the five most interesting IP stories of July 2017.

1. No Despacito for the Venezuelan President

Earlier this month, the Venezuelan President, Nicolás Maduro, used a remix of the Latin hit Despacito to encourage Venezuelans to vote for the Constituent Assembly, which will have powers to rewrite the national charter and supersede other institutions.

This was not sanctioned by the Puerto Rican singers of the song, Luis Fonsi and Daddy Yankee who released the following statement:

“At no point was I asked, nor did I authorize, the use or the change in lyrics of Despacito for political ambitions, and much less in the middle of a deplorable situation that Venezuela, a country I love so much, is living,” said Luis Fonsi on Twitter.

As the author of the copyrightable works (both musical and literary works in this case), Luis Fonsi has the moral right to protect his work’s integrity. The South African Copyright Act provides that the author of a work may object to any distortion, mutilation or other modification of the work where such action is or would be prejudicial to the honour or reputation of the author and there are analogous laws in many jurisdictions internationally.

“That you illegally appropriate a song (Despacito) does not compare with the crimes you commit and have committed in Venezuela. Your dictatorial regime is a joke, not only for my Venezuelan brothers, but for the entire world,” said Fonsi who left his words un-minced.

Despite the fact that non-Spanish speakers are mangling the lyrics of Despacito on dance floors across the Western world, this is authorised, and even encouraged by Fonsi and Yankee.

Fun fact: Despacito is the first (mostly) Spanish language song to reach number one on the Billboard Hot 100 since 1996’s Macarena and has topped the charts in 45 different countries.

2. Google Escapes Genericide

Google_2015_logo.svg

It’s a dramatic headline, okay. It also has nothing to do with the time my Mom claimed:“I deleted Google”.

The term genericide applies when a trade mark has become the generic name for, or synonymous with, a general class of product or service, usually against the intentions of the trade mark’s owner. The death of several trade marks that have become generic include escalator, thermos and cellophane. Yes, they were all once trade marks that became the generic descriptor of the goods.

Has Google become generic? This Ninth Circuit Court of Appeals in the United States recently said no! The case is discussed in detail on IP Watchdog here.

Brand owners may want to look at the INTA’s Practical Tips on Avoiding Genericide.

3. Rock on! Are hand gestures registrable as trade marks?

Is a hand gesture a trade mark, or can it even be registered as a trade mark? The co-lead singer of the band KISS, Gene Simmons, seemed to think so. He applied to the United States Patent and Trademark Office to register the following hand gesture as a trade mark:

Simmons-232×319

However, Forbes Magazine recently reported that “Simmons has apparently reconsidered whether he might have valid trademark rights to the hand gesture, as he expressly abandoned the application with the United States Patent and Trademark Office. It is also noted that his application drew a fair amount of criticism from fellow musicians and others who saw the application as a shameless overreach by Simmons.”

Wensel Britz considered what the likely outcome have been had Mr Simmons applied to register the hand gesture in South Africa on the Adams & Adams website. We think that this post will give you some insight into what is registrable as a trade mark.

4. A Double Bogey for Titleist

blue_red_titties_snapback_grande

An interesting trade mark storm is brewing in the United States between the golf brand Titleist and the online retailer I Made Bogey which trades in a number of goods which parody the Titleist brand by using the trade mark Titties – in the famous Titleist font.

The classic trade mark infringement test involves an assessment of whether a consumer will be confused or deceived into thinking that goods emanate from Titleist. Another form of trade mark infringement is known as trade mark dilution which in South Africa protects well-known trade marks from another party taking unfair advantage or use that is detrimental to the distinctive character or repute of the registered trade mark. Importantly, this assessment does not require a likelihood of deception or confusion.

An excerpt from https://lnkd.in/gMQZ9Nx:

“In the suit, Titleist claims both trademark infringement and dilution. For dilution to stick, it must show that I Made Bogey’s hats tarnish Titleist’s reputation or blur its fame. For trademark infringement, however, Titleist must show that consumers would be confused by the two logos. ‘They would have to show that people would think Titleist is making hats with the sexually explicit misspelling’, said Tobin, the attorney. And that would be pretty difficult, she said.”

5. Adams & Adams launch the #IPEveningSeries at The Box Shop in Soweto

Darren Olivier introduces the panel.

The IPLive team presented to The Box Shop’s network of passionate entrepreneurs on 27 July 2017 on the key IP considerations vital for entrepreneurs to consider. As well as focusing on the Louis Vuitton Basotho Blanket saga, the team covered the following topics:

How to identify intellectual property (IP)
How to set up a basic IP management structure that grows with your business
How to protect and manage IP cost effectively
How to make IP create value for your business
To see more photos of the event (or even just photos of Darren Olivier’s purple trousers) have a look at the gallery here.

by Nic Rosslee

DARREN OLIVIER

Partner
Trade Mark Attorney

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AS LUCK WOULD HAVE IT | TRADE MARK LITIGATION CASE STUDY

Case Study: Lucky Star Limited v Lucky Brands and 16 others. This appeal concerns the sale and marketing of fish. In the case of the appellant, Lucky Star (Ltd), this is in the form of canned fish sold under the registered trade mark LUCKY STAR. In the case of the respondents, this is in the form of cooked fish and chips sold from several restaurants operated in Cape Town, under the trade marks LUCKY FISH, LUCKY FISH AND CHIPS and LUCKY FISH & CHIPS.

Relying upon the provisions of S 34(1)(a)(b) and (c) of the Trade Marks Act no. 194 of 1993 (hereinafter referred to as “the Act”), the appellant unsuccessfully brought an application before the Western Cape Division of the High Court, Cape Town. An interdict, together with ancillary relief, was sought against the respondents’ restraining them from infringing the LUCKY STAR trade mark. The appellant also sought relief in terms of S 11(2)(b)(i) and (iii) and 11(2)(c)(i) of the Companies Act 71 of 2008 (the Companies Act) declaring that the company name of the first respondent, Lucky Brands (Pty) Ltd, was confusingly similar to the appellant’s registered trade marks, LUCKY STAR and OCEANA BRANDS and company names, Lucky Star Ltd and Lucky Star Foods. An order was accordingly sought directing the first respondent to change its name and trading name. Similar relief was also sought on the same grounds against various other respondents’.

In deciding the matter, the SCA considered S 34 (i.e. S 34(1)(a), 34(1)(b) and 34(1)(c)) of the Act. For the purposes of s 34(1)(a) the Court indicated that the appellant had to establish (i) its trade mark registrations; (ii) unauthorised use in the course of trade by the respondents’ of an identical mark or a mark so nearly resembling its registered trade mark as to be likely to deceive or cause confusion; and (iii) in relation to the goods in respect of which the mark is registered.

The appellant’s contention was that the respondents’ made use of a mark so nearly resembling its trade mark as to be likely to cause confusion.

In considering trade mark infringement, the Court reiterated that what is required is an objective comparison between the appellant’s LUCKY STAR trade mark registrations and the respondents’ actual use. The Court indicated that the enquiry is confined to the marks themselves and no regard should be given to any other features of the get-up or the indication of origin of the goods as actually marketed by the appellant and the respondents’. The Court indicated that what is required is a comparison of the appellant’s registered trade mark LUCKY STAR with the trade mark of the respondents’, LUCKY FISH or LUCKY FISH & CHIPS.

While extraneous matter should not be taken into account when comparing marks, the Court indicated that the comparison of the marks should not take place in isolation. Regard must be given to the inter-relationship between the similarities of marks and the similarities of goods and services as registered for the appellant including notional use.

When comparing the two marks, the Court indicated that the common element in the marks is the word LUCKY, which is of minor significance when the marks are looked at as a whole. The Court went on to say that the word FISH as opposed to the word STAR is distinctive and cannot be ignored. The Court further indicated that when the marks are compared side by side, and the main or dominant features of the marks are considered, namely the words STAR and FISH, there is no likelihood of deception or confusion.

The Court also disagreed with the appellant’s argument that the distinctiveness of the word FISH is diminished because it is used in the context of the sale of fish. The Court indicated that it has considerable difficulty in imagining that the notional purchaser of the respondents’ fish and chips, would focus attention only on the word “Lucky” as the words “Star” and “Fish” are at least equally significant as the word “Lucky”. The overall impression which is created is that the marks do not resemble each other closely and the average customer would not be confused or deceived into believing that the respondents’ restaurants bearing the LUCKY FISH mark is in any way associated with the appellant.

In concluding, the Court found that the appellant had not established that the marks resemble each other so closely that deception or confusion is likely to arise. Therefore, the appellant’s contentions based on S 34(1)(a) must therefore fail.

The Court further stated that as ‘the two marks are sufficiently dissimilar to each other’ that ‘no amount of similarity between the respective goods or services of the parties will suffice to bring about an infringement’, it follows that the claim based on S 34(1)(b) must also fail.

In assessing dilution (i.e. S 34(1)(c) ), the Court found that the word similar in this section must not be given too wide or extensive an interpretation. The Court goes on to say that the appropriate meaning to be given to the word was ‘having a marked resemblance or likeness, which the Court held was not satisfied in this case’. Because of the distinct lack of similarity between the registered trade mark of the appellant and the respondents’, the issue of whether the goods and/or services of  the respondents’ are, or will be the same as, or similar to those proposed by the appellant, does not have to be considered.

Lastly on the issue of the relief sought in terms of the Companies Act, the Court found that on the reasons mentioned above, there was no basis to conclude that any person would be led to believe that the other parties to the matter were associated with the appellant.

Thus, this is an important decision to note as the matter turned on a comparison of the marks alone and did not turn on a comparison of the goods and/or services.

UDI PILLAY

Senior Associate
Trade Mark Attorney

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ADAMS & ADAMS ANNOUNCES NEW ASSOCIATE OFFICE IN ZIMBABWE

The news of the establishment of an Adams & Adams Associate Office in Zimbabwe marks a significant milestone in the work of the firm in Africa, by bringing the number of such offices on the continent to 20.

In making the announcement, Partner and Co-Chairperson of the Trade Marks Department, Simon Brown said, “Not only is this a momentous occasion for the firm, but we’re also extremely excited to finally have formal links with our colleagues in our neighbouring state – all as part of the expansion of the Adams & Adams Africa Network.” Brown added, “It’s also no coincidence that the establishment of the new office coincides with the opening of ARIPO’s brand new headquarters in Harare, the capital city of Zimbabwe.”

Adams & Adams is internationally recognised as the leading IP Law Firm in Africa. And over the decade the firm has, systematically and providently, worked at expanding the network of Associate Offices that operate in conjunction with local partners to enhance the firm’s client offering in Africa. Other countries that have recently joined the unique Adams & Adams Africa Network (AAAN) include Ethiopia, Egypt, Nigeria, Angola, Mozambique and Cameroon which service important jurisdictions and the important regional IP organisations, ARIPO and OAPI.

“Zimbabwe is a country of immense historical, economic and political importance and we still experience significant levels of interest from many of our clients in this jurisdiction,” agrees Partner, Nicky Garnett, who hails from Zimbabwe. “After a period of deflation, Zimbabwe’s economy is experiencing inflationary pressures again and there are fears that hyperinflation may return – but the retail sector is defying the odds. South Africa’s Financial Mail reports that “earlier predictions of a looming collapse of the sector — brought on by an imports-restriction law, a liquidity crunch, competition from informal traders and a fall in consumers’ disposable income — has not materialised, and instead of scaling back, retailers are locked in a fierce contest to either expand their operations or to refurbish existing stores.” The addition of Zimbabwe onto our Network, places Adams & Adams in a unique position in terms of its IP offering on the African continent.”

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

Adams & Adams Associate Office | Zimbabwe
Adams & Adams Associate Office | Zimbabwe

SIMON BROWN

Partner & Co-Chair Trade Marks
Trade Mark Attorney

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GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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LOUIS VUITTON AND THE BASOTHO BLANKET | POWER FM

Iman Rappetti talks to Partner, Darren Olivier, and Associate, Maureen Makoko, about the upcoming Adams & Adams IP Evening Series, as well as the recent controversy over Basotho designs and well known fashion house Louis Vuitton as a case study.

Speaking about the IP Evening Series in Soweto on 27 July, Darren explained that “fashion and crafts are a vibrant industry amongst entrepreneurs in Africa, and we are taking IP to the former townships to help entrepreneurs cost effectively use IP systems to create value for their creativity“. You can learn more about that initiative here.

IP EVENING Series_July 2017_Post

DARREN OLIVIER

Partner
Trade Mark Attorney

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MAUREEN MAKOKO

Associate
Trade Mark Attorney

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ROCK ON! HAND GESTURES AS TRADE MARKS

Hand gestures are a part of everyday life of a large number of cultures and civilizations. People use them to indicate approval, disapproval, pleasure or displeasure with something or someone. It is a shorthand method of communicating.

Is a hand gesture a trade mark, or can it even be registered as a trade mark? The co-lead singer of the band KISS, Gene Simmons, seemed to think so. He recently applied to the United States Patent and Trademark Office to register the following hand gesture as a trade mark:

Simmons

This is a commonly known hand gesture, known as the “devil’s horns” in the rock scene.

Mr Simmons described the mark sought to be protected as “a hand gesture with the index and small fingers extended upwards and the thumb extended perpendicular“. It is important to appropriately describe a trade mark when applying to register it so that the Trade Marks Office, consumers and other businesses know with sufficient clarity what mark protection is sought for. The mark must be described with clarity and precision.

He applied to register the mark in class 41 for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”. In the USA a trade mark application can be filed claiming either actual use thereof in trade to date, or an intention to use the mark. Mr Simmons claimed that the mark was first used by him or by a company related to him or one licensed by him, or by a predecessor in interest at least as early as 14 November 1974, and was first used in commerce at least as early as 14 November 1974. He provided a photograph of himself displaying the hand gesture as evidence of his use of the sign.

Recently, though, Forbes Magazine reported that “Simmons has apparently reconsidered whether he might have valid trademark rights to the hand gesture, as he expressly abandoned the application with the United States Patent and Trademark Office. It is also noted that his application drew a fair amount of criticism from fellow musicians and others who saw the application as a shameless overreach by Simmons. Simmons, one of the most successful musician-entrepreneurs in history, owns a stable of other trademark registrations through his Gene Simmons Company.” Nice try, God of Thunder!

What would the likely outcome have been had Mr Simmons applied to register the hand gesture in South Africa?

It is possible to register a range of different marks as trade marks in South Africa. The most common types of marks are names, slogans, logos and devices. There are, however, certain “esoteric” marks that can also be registered as trade marks. These are the so-called non-traditional trade marks (e.g. smells, sounds, etc.). The South African Trade Marks Act No. 194 of 1993 defines a mark as:

any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned

The types of signs that can constitute as “marks” is widely defined. Provided that the sign is capable of graphic representation, it qualifies as a mark. Technically, it is possible to represent a hand gesture graphically. The devil is, however, in the detail. In order to ensure that the correct protection is obtained, it is extremely important that the sign be adequately represented and described on the application. It must be described clearly and precisely in the application (and in the Register) in order for consumers, the Trade Marks Office and other businesses to understand the ambit of the rights. The representation must be is clear, precise, self-contained, easily accessible, intelligible, durable and objective (the Sickmann criteria). It will require a description of the sign to be endorsed on the application similarly to what Mr Simmons has done.

Qualifying as a mark is but only the first step in the enquiry. The next step is that the mark must be a “trade mark”. A trade mark is defined as:

a mark used or proposed to be used by a person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person

Although not often done in trade, hand gestures can technically be used, or be intended to be used, to designate the goods or services of a specific business. However, in order for it to be accepted for registration the hand gesture must also be:

capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person”.

It can either be inherently so distinctive or have become distinctive by reason of prior use of the sign.

This is where gesture marks may run into difficulty. Technically, hand gestures are capable of having meaning and could distinguish the goods or services of one trader from those of another. However, inherently there is a problem with such marks. Hand gestures are not traditionally understood by consumers to be indicators of the origin of a business – even if they are novel. Businesses do not use hand gestures to identify their goods or services. A similar problem exists with shape marks. These marks are of very low inherent distinctiveness.

If a hand gesture is made by a representative of a company as part of an advertisement, consumers are highly unlikely to attach any significance to the gesture. Consumers simply do not consider hand gestures to be source identifiers. This is particularly so given the traditional use of hand gestures in South African society.

This does not, however, mean that it would be impossible for businesses to ever register hand gestures. It is possible to do so, but significant advertising and consumer education will need to take place before it can be done.

A novel hand gesture, used exclusively by a business for some time, can acquire distinctiveness, and be registrable as trade mark. Consumers will have to be educated of the value / significance of the hand gesture. It must become a symbol of the business. If the hand gesture is first registered as part of a composite device or logo, and the gesture is then later used by the business in trade, the hand gesture may acquire a sufficient level of distinctiveness and be registrable as a trade mark on its own.

An example of one such hand gesture in South Africa would that of the Mamelodi Sundowns soccer team:

Mamelodi-Sundowns-logo

The hand gesture is incorporated in their logo, though they have not registered it separately as a gesture mark.

The hand gesture has become so ingrained in their business that their fans have even started indicating their allegiance to the team by using the hand gesture. When one goes to a soccer match and a supporter uses this gesture, other soccer supporters will immediately know which team the person supports. The players of the Mamelodi Sundowns team even use the hand gesture.

The Orlando Pirates soccer team supporters use two crossed forearms held at head height.

These gestures have become distinctive of those two teams and should be considered sufficiently distinctive to be registrable as trade marks.

Although not a legitimate business, gang members often use hand signs to indicate affiliation to a particular gang.

Hand gestures, however, run the same risk as all other trade marks, namely dilution or genericide.  In an era of social media trends (COVFEFE!), the risk of a specific hand gesture quickly becoming common in the relevant industry, if not policed properly, is ever present.

The devil’s horns hand gesture is one such gesture that has been used through the ages by a wide variety of rock stars. It is a gesture synonymous with music of a certain genre. Fans of all rock stars use the symbol. It is not peculiar to one.

Heart_with_Hands_PNG_Clipart_Image

A similar problem now exists with the “hand heart” gesture used by many public figures.

The heart hand gesture is claimed to have been first used by Armin van Buuren, and to later also be used by various other famous musicians.

So too, the fate of the devil’s horns gesture. Even if Mr Simmons was the first to use the sign, as claimed by him, the sign is no longer indicative of him or of his business. Amd had Mr Simmons applied to register the hand gesture in South Africa, the application would in all likelihood be refused registration based on a lack of distinctiveness, or if it proceed to registration, be liable to cancellation.

The take home lesson for businesses is that hand gestures are novel types of symbols that they could adopt as part of their corporate identity. Admittedly, hand gestures are not equally suitable for all businesses, but they may carry significant commercial value for some. Our world is constantly evolving, why shouldn’t our marketing strategies also evolve?

It would be possible to register such signs as trade marks, but those gestures must not be common in the relevant trade and considerable consumer education will first need to take place. Once registered, businesses would then have to strictly police the unauthorized use of such hand gestures to avoid them becoming generic, and losing distinctiveness.

 

WENSEL BRITZ

Senior Associate
Trade Mark Attorney

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ANTI-COUNTERFEIT EFFORTS REAP SOME REWARD IN KENYA

The Anti-Counterfeit Agency in Kenya has recently won several significant battles in the war against counterfeiting.

According to recent reports, the Anti Counterfeit Agency (ACA) in Kenya has seized around USD 9 million worth of goods over the last five years, with goods to the value of about USD 5 million being destroyed in concluded cases.

The ACA is recognised as the coordinating agency in the enforcement of intellectual property protection in Kenya.

Among the goods most frequently counterfeited are alcoholic beverages, drugs and medicines, cosmetics, soaps and detergents and hair products.

The success of the ACA has been attributed to the large number of its trained officers and their involvement in the criminal justice system. In addition, the ACA credits its success to collaboration with other intellectual property practitioners such as Adams & Adams, and the stringent legal principles which are also entrenched in the country’s constitution. A&A Partner, Charl Potgieter, conducts regular anti-counterfeiting and product identification training sessions with members of the agency in Mombasa and Nairobi.

Counterfeiting is punishable in Kenya by a fine or imprisonment and the severity of the penalty imposed is commensurate to the crime committed.

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

Customs Training in Nairobi, Kenya
Customs Training in Nairobi, Kenya

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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GETTING THE DEAL THROUGH | DOMAINS & DOMAIN NAMES

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

Throughout the latest edition, the same key questions are answered by leading practitioners in each of the jurisdictions featured. Charné Le Roux, Partner at Adams & Adams, provided content for the South Africa Chapter. Coverage this year also includes new chapters on Argentina, Denmark, the Netherlands and Russia.

To read the full publication submission, CLICK HERE.

3dCoverDomains

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Domains & Domain Names 2017, (published in June 2017; contributing editor: Flip Petillion, Crowell & Moring LLP) 

CHARNÉ LE ROUX

Partner
Trade Mark Attorney

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LAUNCH OF SECOND-LEVEL .KE DOMAIN FOR KENYA

With the ‘dot’ AFRICA (.africa) domain launch process well into its ‘publicly available’ phase, brand owners should now prepare for the release of a new second-level domain in Kenya, ‘dot’ KE (.ke)

The Kenya Network Information Centre (KeNIC), the body responsible for the administration and management of the new second-level .ke domain, says that the domain is being introduced to combat cyber-squatting and domain hijacking.

The launch will be divided into three phases. The Sunrise phase kicked off on 23 July 2017 and will close on 22 October 2017. During this phase, only brand owners who hold trade mark registrations in Kenya will be allowed to apply for corresponding domain names. Trade mark registrations need not be validated with the Trade Mark Clearing House (“TMCH”) or the Mark Validation System (“MVS”). However, brand owners are required to verify their registrations at the Kenyan trade marks registry and obtain a confirmation letter before applying for a domain name.

The Sunrise phase will be followed by a 30-day Land Rush period during which competing applicants can bid on domain names. Once the Land Rush phase comes to an end, a 30-day Cooling Off phase will begin during which KeNIC will assess whether the applications meet the eligibility requirements for the respective phases. Thereafter, General Availability will open and domain name registrations will be granted on a first-come-first-serve basis.

Should you wish to verify your trade marks, and the registration thereof in the new second-level .ke extension, kindly contact your usual contact at Adams & Adams or email africaip@adamsadams.com.

KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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PATENT EXAMINATION SYSTEMS IN AFRICA TO BE DISCUSSED AT SUMMIT

Many countries in Africa do not currently conduct any form of examination of patent applications, but are considering the options in this regard. To this end, the European Patent Office (EPO) recently announced its co-sponsorship of the continent’s first Summit on Patent Examination Systems in Africa, in partnership with law firm Adams & Adams. The meeting will take place on 13 September 2017 in Pretoria, South Africa.

IP Officials, Registrars and Director Generals from national and regional patent offices across Africa have been invited to attend and discuss the various approaches to patent examination available and to gain insights into developments in this regard around the world.

The Summit is followed by the 5th Annual Adams & Adams Network Meeting, a two-day seminar that brings together IP professionals and officials from across the continent to discuss topical IP issues in an African context.

For information on the Summit & Network Meeting, queries may be directed to Africa Practice Manager at Adams & Adams, Mr. Menzi Maboyi.

NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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TRADE MARK RESERVATION IN SOUTH SUDAN | IMPORTANT UPDATE

Recently we reported that the office of the Chief Registrar of the Republic of South Sudan had confirmed that the registration of trade marks had been suspended until appropriate legislation had been enacted, but advised that reservation of trade marks would be possible through the Business Registry in the interim, with the trade mark application process to be finalised once the Intellectual Property Laws had been passed into parliament.

However, as of yet, no legislation has been passed regulating the reservation process and conflicting information is being provided by the Ministry of Business and the Acting Chief Registrar. Thus, whilst trade mark reservation may be possible in the future, it is not currently lawful.

We will continue to engage with the Registry regarding the situation in South Sudan and keep our clients apprised of any and all developments. For further updates, information and queries on copyright law, trade marks, patent and design filings in South Sudan and across Africa, please contact africaip@adamsadams.com.

NISHI CHETTY

Partner
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UDI PILLAY

Senior Associate
Trade Mark Attorney

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NEALE CHRISTY

Associate
Trade Mark Attorney

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THE LAUNCH OF .AFRICA

The launch of the .africa domain extension has been well-received and has just entered the General Availability Phase. During this phase, any individual may apply to register any available domain name.

Brand owners should, however, be cautioned that, even during general availability, certain domain names are classified by the ZA Central Registry as “premium” and will, therefore, be more expensive to register. The premium domain name list has not been made available to the public and we will have to find out for you if a domain name that you are interested in is classified as premium. As a general rule, 2-3 character domain names and generic domain names such as “game.africa”, and “smart.africa” for example, are designated as premium domain names and are only registrable at a premium price.

If you are interested in registering your trade marks in the .africa extension, please contact your usual contact at Adams & Adams as soon as possible for further assistance.

Kareema Shaik  | Senior Associate

KShaik

Kareema Shaik

Senior Associate
Trade Mark Attorney

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A CRADLE FULL OF TRADE MARKS | NAMES AS MARKS

What’s in a name? A lot, apparently, as celebs abroad have realised the value, or potential value at this stage, of protecting the names of their offspring, as a brand.

This weekend, the names of Beyoncé and Jay Z’s twins were revealed – RUMI and SIR.  This bit of gossip is interesting to a jurist sitting behind her desk, because, apparently, applications have already been filed to register the dynamic duo’s names as trade marks in respect of an array of things in the US. Talk about forward thinking!

Sources have revealed (i.e. the registry in South Africa has been consulted) that no applications have recently been filed for RUMI and SIR in South Africa.  We are sure that South Africa is high up on the list of countries where the Carters will wish to protect the names of their tremendous tots and we expect instructions any day now (nudge, nudge, wink, wink).

Will the marks be accepted in South Africa? Our Trade Marks Act does specifically include a name as part of the definition of a mark which can be the subject of a trade mark application. In fact, our Act specifically provides that where application is made for registration of a trade mark which consists of a name, the registrar may require the applicant to furnish him with the consent of that person.

We are sure that an instruction to file the perfect pair’s names will be accompanied by a request that a search be conducted to determine whether the names are available for registration.  In other words, the Carters will still have to determine whether another party perhaps owns earlier rights to a mark which could prevent the registration of RUMI and or SIR.  Gasp! Cue Beyoncé’s song “Best thing I never had”.

Let’s just suppose that the dashing double are able to “Run the World” and the marks are capable of being registered, the Carters will have 5 years following the issuance of the registration certificates, to launch their empire in SA.  The principle of “use it or lose it” is equally applicable to trade marks and a trade mark registration can be removed, if not used within 5 years after grant.

Watch this space…I wonder whether the likes of Pearl Thusi, Khanyi Mbau, Emtee, T-bo and Loyiso Bala have already taken steps to stake claims on behalf of their offspring.

JANI CRONJE

Partner
Trade Mark Attorney

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HOT IP TOPICS IN JUNE | IP LIVE TOP FIVE

Covfefe, The Slants, The Jenners and Fidget Spinners – all in a one month’s IP round-up! We’re always interested in the latest IP Hot Topics at IP Live. Here are five of the most interesting IP matters that piqued our interest in June 2017.

1. COVFEFE TO YOU TOO!

Is Covfefe registrable as a trade mark? (via IPKat

When Donald Trump tweeted “Despite the constant negative press covfefe” the internet almost broke. We were interested to see trade mark applications in the US and UK for the word “covfefe” which prompted the discussion “Is covfefe registrable as a trade mark?”

In our view COVFEFE would be registrable in South Africa as it is an original, distinctive mark. Although Donald Trump coined the phrase, he has not used the mark as a trade mark and it is unlikely that he wall, sorry will.

However it may be too late to file the mark in South Africa as the foreign proprietor of the mark could use their foreign filing dates to claim priority in South Africa, provided the South African application is filed within the prescribed six-month period.

It is worth looking at the IPKat analysis further here.

2. SPEAKING OF OFFENSIVE TRADE MARKS (SORRY DONALD)

Offensive and disparaging marks are registrable in the USA (via NPR)

A US Punk Rock named The Slants were originally unable to register a trade mark for its name due to the Lanham Act which prohibits any trademark that could “disparage … or bring … into contempt or disrepute any persons, living or dead…” The Supreme Court of the United States earlier this month held that the law prohibiting the registration of offensive and disparaging trade marks is against free speech rights.

The term ‘slants’ is a disparaging term for Asian-Americans in the United States which is something the band wanted to turn around into something positive as they were Asian-Americans:

“We grew up and the notion of having slanted eyes was always considered a negative thing, kids would pull their eyes back in a slant-eyed gesture to make fun of us. … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.” said Simon Tam from The Slants.

It’s definitely a victory for free speech. You can read a more detailed take on offensive trade marks in this Adams & Adams Post

3. HAD YOUR SPECIAL K THIS MORNING?

The SPECIAL K: Kellogg v Thanasi Kokkinakis (via The Guardian)

An interesting IP dispute is brewing in Australia where Kellogg has taken exception to tennis player Thanasi Kokkinakis trying to commercially leverage his nickname “Special K” by launching a sports brand trading in clothing and tennis wear. This is an interesting matter as SPECIAL K is protecting its status as an internationally well-known trade mark.

The test for primary trade mark infringement involves a consideration of whether the unauthorised use of a registered mark is likely to deceive or cause confusion among consumers. This matter is different – as there is unlikely to be confusion due to the stark differences between the goods – and in South Africa would be argued under the provision in the Trade Marks Act, 1993 which protects against what is referred to as trade mark dilution (Section 34(1)(c). Trade mark dilution involves a consideration of whether the unauthorised use of the mark takes unfair advantage or is detrimental to the distinctive character of a trade mark.

The classic quote on trade mark dilution comes from US Scholar, Frank Isaac Scheckter who argued that:

“If you allow Rolls Royce restaurants, and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have the Rolls Royce mark anymore.”

The approach from Kellogg here is spot-on. Trade mark proprietors ought to be on the look-out for copy-cats adopting your trade mark, even if the mark is not being used for goods or services that you trade in.

4. THE MONEY SPINNER – JUST NOT FOR THE INVENTOR

IP Lessons from the fidget spinner (via IP Live)

With the fidget spinner craze taking over playgrounds and offices around the world, we were interested in learning from the Guardian that the inventor of the fidget spinner, Catherine Hettinger, barely made a dime from her invention.

While Ms Hettinger held a US patent for the invention from 1997 to 2005, she abandoned it after she could not afford the renewal fees.

There are a number of IP lessons that one can learn from the fidget spinner, we did a post here on the IP Live blog which you should read.

5. KENDALL AND KYLIE’s B.I.G. PROBLEM

Kendall and Kylie Jenner pull t-shirt line after receiving legal threats (via The Guardian)

The Jenner sisters brought out a t-shirt line where they super-imposed their faces onto images of famous icons such as the Notorious B.I.G. and Tupac Shakur. This is clearly a flagrant copyright infringement against the owner of the copyright in the photographs but also a violation of the image rights of these artists which belong to their estates.

The t-shirts have been withdrawn from the market and the sisters’ joint statement reads:

“These designs were not well thought out and we deeply apologise to anyone that has been upset and/or offended, especially to the families of the artists. We are huge fans of their music and it was not our intention to disrespect these cultural icons in any way.”

Instagram post by Voletta Wallace, Notorious B.I.G.’s mom (also known as Ms. B.I.G.)

Instagram post by Voletta Wallace, Notorious B.I.G.’s mom (also known as Ms. B.I.G.)

That’s it for June folks!

Feel free to send your IP stories to nicholas.rosslee@adamsadams.com

DARREN OLIVIER

Partner
Trade Mark Attorney

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OFFENSIVE TRADE MARKS IN THE MODERN CONSTITUTIONAL ERA OF FREEDOM OF SPEECH & EXPRESSION

As a general rule in trade mark law, provided that a mark is distinctive of the relevant goods or services for which it is intended to be used, and distinguishable from other parties’ prior marks in the relevant territory, such a mark would be registrable as a trade mark.  If those main requirements are met, creatives are at liberty to express their creative and imaginative ideas through trade marks and present them for registration if they so wish.  However, in addition to those main requirements, trade mark laws in most countries also contain provisions that expressly bar the registration of marks which are likely to be offensive or disparaging to an identifiable class or group of persons in society.  These provisions generally constitute an absolute ground of refusal of marks and, perhaps on grounds of morality and public policy, it appears that they are rarely challenged in practice.

The United States’ Supreme Court (the Supreme Court) has now brought to the forefront a thought-provoking debate, regarding the registrability of so called offensive or disparaging marks in terms of the US trade mark legislation, and questioning whether the provisions of the law which bar the registration of such marks can be sustained, in light of the constitutional provisions which guarantee the right of free speech.  The Supreme Court recently gave a ruling, in a case that originated from a trade mark application that was filed by Simon Tam (the founder of an Asian-American music band), to register the name of his band “THE SLANTS”, as a trade mark.

It is a known fact that the term ‘slants’ is regarded as a derogatory term, which refers to persons of east or south east Asian descent.  On that basis (and relying on the provision of the legislation which prohibits the registration of marks that may disparage persons, living or dead, or bring them into contempt or disrepute) a US Patent and Trademark Office (PTO) examiner refused Tam’s trade mark application.  The examiner was simply of the view that there is a substantial group of persons who find the term ‘THE SLANTS’ offensive, and that this disqualifies the mark from registration.  Tam unsuccessfully contested and appealed the refusal of his trade mark application before the examiner and the PTO’s Appeal Board, respectively.

For recourse, Tam then took the matter to the Federal Court, which decided that the provision of law relied on in refusing his trade mark application is unconstitutional, as it encroaches on or violates the constitutional right to free speech, and should therefore be repealed.  The PTO filed a petition in the Supreme Court for a final decision on whether the provision of law in question is in fact unconstitutional.  In the recent decision, the Supreme Court affirmed the Federal Court’s decision, and concurred that the so called ‘disparagement clause of the Lanham Act is unconstitutional.  The Supreme Court expressly stated that “speech that demeans on the basis of race, ethnicity, gender, religion, age disability or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate” (emphasis added).

The PTO’s main argument before the Supreme Court was that the constitutional provision or protection of the right to free speech does not apply to trade marks, as trade marks are government speech and not private speech; and as trade marks are a form of government subsidy.  The Supreme Court rejected the PTO’s argument outright, thereby confirming that the constitutional protection of free speech is applicable.  The court, in the main, held that, trade marks are in fact private speech, created or emanating from the applicants, without the government’s involvement, and that the registration of a trade mark does not mean that the government approves of its content or point of view.  In addition, it was held that the government does not subsidise the registration of trade marks, as applicants are required to bear prescribed official fees for different administrative procedures that are carried out by the PTO.

The court further held that the provision of the legislation that bars the registration of the so called ‘disparaging marks’ is discriminatory based on a “viewpoint” or an expression of a view, and that in a democratic society, free and open discussion must be safeguarded, even where such discussion or speech may be offensive to certain members of the public.  It was also the court’s view that, any restriction or limitation of the constitutional right to free speech, irrespective of the context, must serve a substantial interest and must be narrowly drawn, and that the provision which bars the registration of ‘disparaging marks’ fails to meet this requirement.

The Supreme Court’s decision is a significant development for the United States’ trade mark law, and it will undoubtedly open floodgates for new applications seeking registration of so called disparaging or offensive marks, and perhaps those seeking a review of their previously rejected marks (e.g. the mark REDSKINS that the football team, Washington Redskins, has been fighting to get registered).  One can also presume that the use of derogatory terms directed at mostly racial, ethnic, or religious groups will undoubtedly stir discomfort in society, and therefore the Supreme Court’s decision may be subject to much debate and controversy for quite some time in America, and possibly internationally.  It will also be interesting to watch the developments in other countries which value, uphold, protect and guarantee the right to freedom of speech or expression, to see if they will be persuaded by the arguments raised by the Supreme Court, to apply a less conservative approach when dealing with the relevant provisions in their laws, or to also concur that those provisions cannot be sustained in a modern constitutional era or in a constitutional state which upholds the same constitutional values.

In the South African context, our trade mark law (Trade Marks Act 194 of 1993) also clearly states that a mark that is “…likely to give offense to any class of persons” shall not be registered as a trade mark, and that if it is registered, it shall be liable to be removed from the register.  Although there appear to be no published court decisions in which this provision of the Act was considered, commentators on trade mark law agree that indeed, this provision prohibits the registration of any mark which would likely be offensive to any group of persons, including racial, ethnic, religious or any other recognised group in society.  In addition, just as in the United States, the South Africa Constitution guarantees the right to freedom of expression (which encompasses freedom of speech), and as the Constitution is the supreme law of the land, any law that is inconsistent with its provisions is, in effect, void.

But is South Africa in a position also to consider if the provision of its Trade Marks Act which bar the registration of ‘offensive’ marks can be sustained, in light of the right to freedom of expression as guaranteed by the Constitution? Despite the clear similarities between the provisions of the trade mark legislation and the constitutions of the United States and South Africa, it is difficult to conclude that the South African Constitutional Court may reach the same decision that was reached by the Supreme Court in the Tam case, if it is called to decide the same matter.  However, issues that may possibly be relevant to the court’s inquiry are briefly considered below.

Firstly, the South African Constitution unambiguously limits the right to freedom of expression and expressly states that the right does not extend to (amongst others), “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”.  Therefore, it may reasonably be argued that, based on the provisions of the Constitution, a mark which is offensive to a racial, ethnic or religious group etc., may nonetheless be protected by the constitutional right to freedom of expression, provided that the content of the mark does not constitute an “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”.  If that argument is accepted, any application of the provision of the Trade Marks Act in question, in a manner that is inconsistent with the argument should, in principle, be rendered unconstitutional.  Put differently, the question that arises is whether a mark, the content of which is regarded as simply offensive to a class of persons, based on, for example, race, gender, or religion, has the potential to promote or necessarily promote hatred of persons in the relevant class or group, or to incite harm?  If the answer is in the affirmative, the content of such a mark or the speech expressed through the mark would, therefore, not be protected by the constitutional right to freedom of expression, as they are excluded by the express limitation.  If the answer is in the negative, the reasonable conclusion would be that the content of such marks or the speech expressed through the marks is protected by the right to freedom of expression.

In addition, it cannot be disregarded that there is a link between the South Africa jurisprudence and its political history.  It is therefore not improbable that the history, mainly in respect of the discrimination or segregation of certain groups based on race, ethnicity and gender, may also influence the court’s approach in dealing with the provisions of the Trade Marks Act in question.  The court may be persuaded to exercise caution, in balancing the interests of, for example, maintaining racial, political or religious tolerance in society, and the constitutional right of freedom of expression.

That being said, the single decision that the Constitutional Court has made concerning the right to freedom of expression in the context of trade mark law, may also give more insight on the position that the court may take, if it were called on to decide the constitutionality of the provision in question[1].  Although that case dealt with completely different facts and a different provision of the Trade Marks Act, the court made its views clear on the significance of the right to freedom of expression in a constitutional democracy, and also stated that where reasonably possible (and even in the context of trade mark law) it is obliged to promote the rights entrenched in the Constitution.  The court also confirmed that unless an expressive act is excluded by the express limitation of the right to freedom of expression as provided in the Constitution itself, the expression is protected by the Constitution.  The court further held that “the constitutional guarantee of free expression is available to all under the sway of our Constitution, even where others may deem the expression unsavoury, unwholesome or degrading” (emphasis added).  Regarding the laws of general application, which may reasonably and justifiably limit the right to freedom of expression, the court held that the provision of the Trade Marks Act that was under consideration “must bear a meaning which is the least destructive of entrenched rights and in this case free expression rights.  The reach of the statutory prohibition must be curtailed to the least intrusive means necessary to achieve the purpose of the section”.

It is also arguable that the principles raised by the Constitutional Court in the case referred to above may be practically applied in the enforcement of the provision in question, as the provision is evidently broadly worded (any mark that is “…likely to give offence to any class of persons”).  The enforcement of the provision in a manner that is consistent with the principles that were raised by the Constitutional Court, particularly in respect of marks that are likely to give offence to a class of persons based on race, ethnicity, religion etc., would, in part, require an examiner to exercise discretion is deciding if such a mark falls within or outside the limitation of the right to freedom of expression (whether or not its content constitutes an “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”).

Overall, the US Supreme Court decision in the Tam case has no doubt laid a good foundation for a global debate on whether or not provisions of trade mark laws which bar the registration of so called ‘offensive or disparaging’ trade marks, have lost their place and relevance in the context of the modern constitutional era.  

by Dakalo Luvhimbi | Senior Associate

[1] Laugh It Off Promotions CC v South Africa Breweries International (Finance) BV 2005 (8) BCLR 743 (CC)

JENNY PIENAAR

Partner
Trade Mark Attorney

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DAKALO LUVHIMBI

Senior Associate
Trade Mark Attorney

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PLAIN PACKAGING – THE SILENT (TRADE MARK) KILLER?

A topic which has been much debated and legally contested the world over is the call for the use of plain packaging in respect of tobacco products.

Legislation demanding this change stems from the obligation of contracting parties to the World Health Organisation’s Framework Convention on Tobacco Control (WHO FCTC) to amend their domestic legislation to, inter alia, ban all tobacco advertising, promotion and sponsorship.

Australia was one of the first countries to amend its legislation. In compliance with its obligations in terms of the WHO FCTC, Australia enacted the Tobacco Plain Packaging Act of 2011. The aim of this legislation includes the improvement of public health by discouraging members of the public from taking up smoking or the use of tobacco products or to give up such use.  This legislation requires, inter alia, that cigarette packs or cartons be rectangular in shape with straight edges and devoid of any embellishments or shape. It also requires that the carton have a matt finish and, unless stated otherwise in the Regulations, that it be a “drab dark brown” colour. The legislation permits the use of the tobacco brand or business name on cigarette packs, but that use is also severely restricted. For instance, on the front outer surface of a cigarette pack, the brand may only appear once on the centre of the outer packaging and must appear below the health warnings in the same orientation as all health warnings.

In light of the onerous requirements imposed by this legislation, it was vehemently contested by the tobacco industry and went so far as needing to be considered by a World Trade Organisation (WTO) dispute-settlement panel. The panel was established in 2014 and had to consider consultations between Australia and 11 other countries and the EU. A decision was expected in May 2017. A decision has allegedly been reached and communicated to the parties to the dispute, but there have been unofficial reports suggesting that the WTO has upheld the legislation on the ground that it qualifies as a legitimate public health measure.

From a South African perspective, our most relevant legislation regulating the use, sale and advertisement of tobacco products is the Tobacco Products Control Act 83 of 1993 (‘the Act”). In compliance with our own obligations in terms of the WHO FCTC, this legislation has been amended more than once. The most notable amendment to this Act was the ban on tobacco advertising and sponsorship in August 2009. Section 6(bA) of the Act also makes provision for the Minister of Health to later prescribe in Regulations to the Act what information can be displayed on the packaging of a tobacco product, including any insert.

South Africa has, to date, amended its domestic legislation in line with international trends aimed at improving public health.  In fact, a new bill and additional regulations which further regulate the packaging of tobacco products at the point of sale is anticipated and it is further expected that South Africa will call for plain packaging and the use of graphic images on tobacco products aimed at discouraging members of the public, particularly the youth, from taking up smoking.

While the underlying reason for this expected change in legislation is indeed noble, the rights of the tobacco industry to trade will be further limited. At the heart of this limitation is the use of the industry’s trade marks. Indeed, there has already been a challenge to our current tobacco legislation to the Constitutional Court on the basis that it unfairly limits the right to freedom of expression and the right to access to information, but the Court found that the limitation of these rights was justified.

If South Africa follows suit and imposes requirements similar to those in Australia discussed above, the use of, at least, shape, colour, logo and label trade marks on cigarette cartons and wrappers may well be prohibited. Considering the exclusive right to use a mark which is granted to the holder of a trade mark registration, one can immediately see the conflict and the restriction on trade mark owners’ rights.

It will be interesting to see whether the anticipated legislation and further limitation of the right to make exclusive use of one’s trade mark is contested in South Africa, as it has been in so many jurisdictions around the world.

In the meantime, leaders in the tobacco industry would be well-advised to consider alternative innovative methods for purposes of distinguishing their products.

by Kim Rampersadh | Senior Associate

KELLY THOMPSON

Partner
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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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A SUGGESTED FRANCHISING PLAN FOR AFRICA

Africa needs to develop small and medium sized businesses across the continent. A good vehicle to adopt to substantially contribute towards this initiative, is franchising. This includes adopting successful and appropriate business systems and prudently locating them, so as to as far as possible ensure their success.

The plan should commence with a study of franchising and small business activity, as well as the potential for franchising, by franchise experts, in the relevant country or region. Once the status quo, commencement point, possible supportive regulatory framework and franchise business potential has been determined, a plan should be created to develop and support franchising, small and medium size business development.

It is suggested that a full business concept franchise model be adopted. From a legal perspective this essentially includes, the licensing of intellectual property, usually primarily trade marks, copyright and knowhow, as well as a full business system, by the franchisor to the franchisee, in return for some sort of remuneration and subject to compliance with required standards, the business model and quality control.

Although quality standards and strict compliance with the business system, are onerous to a franchisee, this usually ensures the sustainability and viability of the franchise business, on an ongoing basis. The usual benefits include comprehensive initial training and establishment support, the use of a refined business system and the right to use a trade mark and brand, which enjoys considerable goodwill.

It is to be noted that a pure distributorship agreement, agency agreements, multi-level marketing agreements, also known as network marketing, and pyramid schemes, are not franchise arrangements.

Cognisance should be taken of the franchise industry in South Africa, which is the most developed on the continent, with over 757 franchise systems which include around 35 000 business outlets and offers direct employment to around R330 000 people. These figures exclude a number of franchise systems such as motor vehicle and equipment dealerships, motor vehicle and equipment rental, fuel and service stations, hotels and a number of other businesses, which are franchise systems, but not always viewed as such.

The franchise laws and regulatory framework in South Africa can be used as a basis for consideration. This includes the Consumer Protection Act (CPA) which includes, inter alia, Regulations 2 and 3. Regulation 2 sets out what must be dealt with and included in a Franchise Agreement and Regulation 3 sets out the contents of a disclosure document, which must be given to a prospective franchisee, at least 14 days in advance of signing a Franchise Agreement. Regulation 2 attempts to include the best practices and requirements, relating to Franchise Agreements in such documents.

Pre-contractual disclosure of material issues includes the details of the franchisor, the business system, the expenses and income of a typical franchised business, the costs of the investment, establishment, set up, training and related expenses, as well as the likely working capital and estimated break-even point, as well as all other relevant information, so as to place the prospective franchisee in a position where they are able to properly assess the business to be invested into.

The spirit and intention of the CPA is to provide franchisees with consumer type rights including equality, choice, information, honest dealing, fair value, good quality, safety, privacy, fair and responsible marketing and supplier accountability. The CPA also strives towards reasonableness, equity and no unjust prices.

If at all possible an independent or government and business driven franchise association should be developed and supported, so as to promote ethical and best practice franchising, as well as of course to educate and increase the awareness and benefits, as well as possible pitfalls of franchising.

Franchise education and training are also key elements to develop an awareness and an understanding of franchising and to assist with the development of prospective franchise systems.

In addition to the legal and regulatory frame work, the Franchise Association of South Africa (FASA) has over more than 35 years promoted ethical franchising and best franchising practices. This has substantially supported and assisted with the development of franchising in South Africa and their Code of Ethics and Business Protections, is recommended for consideration.

FASA has also assisted with the establishment of the Pan African Franchise Association (PAFF). It is intended that the members of PAFF will be franchise associations in African countries. The development and establishment of franchise associations in other African countries has been slow and consequently PAFF development has been slow. There are however various PAFF initiatives to develop and support ethical and best franchising practices on the African continent.

So as to support franchising and small business development, various government initiatives should be implemented to support, empower, develop and finance, small, medium and franchised businesses. Miro and social franchising also have a great deal of potential and wherever possible and appropriate, should be considered. A micro franchisor development program should certainly be looked at and considered very carefully.

The protection of intellectual property is a key aspect for investors and franchisors granting the use of their valuable trade marks, copyright, knowhow and business systems, into the African business landscape. Although there are in many instances sufficient intellectual property laws to protect franchisors and investors, the registration and enforcement processes and practices of the intellectual property is usually a lengthy and very drawn out process and can be fraught with difficulties, to the substantial detriment and discouragement of franchisors and investors.

In addition to creating support mechanisms and facilitating the access to funding, entrepreneurship and franchising development, should also be promoted. Best practices and ethical franchising should be encouraged, developed and maintained on an ongoing basis by establishing and maintaining a supportive legal and commercial frame work, keeping up with international trends, attracting required and appropriate franchise systems and business concepts and at all times supporting small and medium sized business development.

Wherever the aforegoing have been promoted, supported and pursued, franchising has thrived, leading to the substantial development of sustainable small and medium sized businesses. Further, as the development, awareness and knowledge of the franchise concept and business model grows and develops, this provides fertile ground for local competitors and entrepreneurs to develop similar and competing businesses, which may then potentially allow those business owners to become franchisors, and if successful, to franchise their brands and business systems, to other aspiring entrepreneurs locally and internationally, leading to economic development and increased employment.

The time is therefore ripe for African governments and businesses to carefully consider this massive opportunity and to take steps along the lines of those suggested above. There is no need to re-invent the wheel. The franchise industry is already well developed in South Africa and in certain African countries, as well as internationally. It is simply the opportunity of making this a priority and then pursuing and supporting best franchise business practices and ethical franchising.

EUGENE HONEY

Partner
Attorney

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KENYA TRADE MARK OPPOSITION MATTER | COMMENTARY

The Kenyan Intellectual Property Institute (KIPI) recently published its decision to the opposition by Viiv Helathcare UK Limited (“the Opponent”) to the trade mark EFAVIR in class 5 in the name of Cipla Kenya Limited (“the Applicant”).

The Opponent is the proprietor of the mark EPIVIR which has been registered in Kenya in class 5 since 1996. Both EPIVIR and EFAVIR relate to medicinal and pharmaceutical products for the treatment of HIV.

The grounds of opposition included, inter alia, that:

  1. the mark EFAVIR is so similar to the Opponent’s earlier registered EPIVIR trade mark that it is capable of misleading consumers into believing that they are associated; and
  2. the EFAVIR trade mark is mala fide on the basis that the Applicant chose a mark so closely resembling the Opponent’s EPIVIR trade mark to compete unlawfully with the Opponent and deliberately deceive consumers.

The issues for determination were whether:

  1. the marks EFAVIR and EPIVIR are so similar that a likelihood of confusion is likely;
  2. the Opponent’s EPIVIR trade mark is well-known in Kenya; and
  3. the Applicant had a valid claim to the EFAVIR trade mark.

The Registrar determined that the suffix VIR which occurred frequently on the Register in class 5 (i.e. in 21 records) in Kenya was suggestive of treatments for viruses. It concluded therefore that the marks to be compared were the suffixes EFA and EPI and that they were not similar. It was also revealed during the proceedings that the parties’ marks had co-existed in the market for approximately 16 years without any instances of actual confusion. The Registrar also acknowledged that these were prescription drugs used to treat serious medical conditions, which meant that members of the public would be more circumspect with regard to the products being offered under each mark. In addition, doctors and pharmacists dealing with the medication, as a result of their duties to their patients and specialised knowledge, would not likely be confused.

The Opponent fell short of establishing its reputation in the EPIVIR trade mark in Kenya. In the Registrar’s view, it has failed to adduce sufficient evidence to prove that its EPIVIR trade mark was well-known in the relevant sector of the population in Kenya.

It was found that the Applicant had a valid claim to the EFAVIR trade mark, having used it in excess of 15 years without any action or compliant from the Opponent and any evidence of actual confusion. In addition, the mark EFAVIR was coined from the active ingredient in the Applicant’s anti- retroviral drug being EFAVIRENZ.

The opposition was therefore dismissed.

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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GETTING THE DEAL THROUGH | ADVERTISING & MARKETING

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

Throughout the latest edition, the same key questions are answered by leading practitioners in each of the jurisdictions featured. Kelly Thompson (Partner) and Nicole Smalberger (Senior Associate) from Adams & Adams, provided content for the South Africa Chapter. Coverage this year also includes new chapters on France and Sweden.

To read the full publication submission, CLICK HERE.

GTDT-Advertising

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Advertising & Marketing 2017, (published in May 2017; contributing editor:  Rick Kurnit, Frankfurt Kurnit Klein & Selz, PC) For further information please visit https://gettingthedealthrough.com/area/64/advertising-marketing-2017

KELLY THOMPSON

Partner
Trade Mark Attorney

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NICOLE SMALBERGER

Senior Associate
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THE ROAD TO BRAND PROTECTION IN CHINA JUST GOT A WHOLE LOT CHEAPER

In an effort to further encourage entrepreneurship and innovation whilst enhancing the business environment in China, the Minister of Finance announced that, with effect from 1 April 2017, there will be a 50% reduction of official fees in relation to trade mark matters, including filing applications, renewals, recordals, opposition, cancellation and appeals etc.

The number of trade mark filings in China continues to rise, increasing by 28.4% to about 3.7 million in 2016. Naturally, a significant increase in new filings is anticipated as a result of the benefit of the lower official fees.

Already, the recent numbers from SINA (China IP Office) are mind-boggling:

  • Trade mark applications filed in 2016: 3.7 million
  • Trade mark applications approved for registration in 2016: 2.3 million (increased by 1.3%)
  • Provisionally / partially refused trade mark applications in 2016: 1.2 million (increased by 36.7%)
  • Trade mark opposition applications filed in 2016: 57 thousand (decreased by 3.1%)

Trade mark owners who have entered, or are planning to enter, the Chinese market should bear in mind that China follows the first-to-file system. Whilst the law protects unregistered marks where the mark has been used and enjoys a certain reputation or is recognised as a well-known mark in China, the test is a difficult one. However, the recent JORDAN judgement gives hope to owners of well-known marks.

A Chinese company, Qiaodan Sports Co, adopted, and began using a Chinese character version of the English-language name “Jordan” (the Qiaodan trade mark) in relation to sports clothing. The first two attempts (through the Trade Mark Review and Adjudication Board and then the Beijing High People’s Court) to have the Qiaodan trade mark cancelled both failed on the basis that JORDAN was not sufficiently well-known in China. The latest appeal to the Supreme People’s Court in China ruled that the Qiaodan trade mark should be cancelled as JORDAN is recognised in China as referring to Michael Jordan and his various JORDAN branded goods.

The path of proving that a trade mark is well-known in China is neither easy nor straightforward. It is therefore imperative to have your valuable trade marks registered in China as soon as possible.

Should you have any queries in relation to protecting your trade mark rights in China, please contact us at karen.lam@adamsadams.com

SIMON BROWN

Partner
Trade Mark Attorney

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KAREN LAM

Senior Associate
Trade Mark Attorney

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ARIPO WORKING GROUP | SESSION UPDATE

The 6th 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 12 and 13 June 2017. 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 and 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 partners Mariëtte du Plessis and Nthabisheng Phaswana.

The Harare Protocol has been amended several times over the past few years, however the Working Group proposed amendments including provisions allowing applicants for patents to request accelerated or delayed examination for patent applications. In addition, with effect from 1 January 2017 amendments to the Harare Protocol now require all applicants to file a request for substantive search and examination and pay the prescribed fees therefore. 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.

The Banjul Protocol has been ratified by 10 of the 19 ARIPO member states and has only been domesticated in 3 of the member states, being Botswana, Liberia and Zimbabwe. Our firm made recommendations regarding ARIPO’s involvement in the domestication of the Banjul Protocol and harmonisation of national laws of member states. In addition, recommendations were also made to amend the Banjul Protocol to centralise ARIPO oppositions. Our recommendations were well received and we are optimistic that, if accepted, the changes will bring significant improvement to the ARIPO trade mark system.

Should the Working Group recommendations be accepted by the ARIPO Technical Committee they will be tabled for discussion / approval by the Administrative Council when it sits in December 2017.

For more information on IP matters in ARIPO, please feel free to contact us on africaip@adamsadams.com

Nthabisheng Phaswana and Mariëtte du Plessis  (2nd and 3rd from left respectively) with other Working Group members
Nthabisheng Phaswana and Mariëtte du Plessis (2nd and 3rd from left respectively) with other Working Group members

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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NTHABISHENG PHASWANA

Partner
Attorney

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HELPING A YOUNG MOM WITH HER STUDIES | GOOD MORNING ANGELS

On Wednesday, 21 June, Adams & Adams had the privilege of helping a student, Lisa Maloyi to complete her studies at Damelin so that she can achieve her dream of working in IT and supporting her family. Dave Forbes, the firm’s COO, shared the good news with Lisa on Jacaranda FM’s Complimentary Breakfast Show.

Yonelisa (Lisa) is a young, single mother. However, she didn’t become a mother by choice. Yonelisa is one of too many young South African girls who have been violated by rape. At the tender age of 13, she fell pregnant after a rape attack by a neighbour. Yonelisa had her baby and with the help of her mother, Portia and went back to school. Portia, a single mother of three, works part time as a domestic helper and does what she can for her family.

With Portia’s support and encouragement, she finished her matric. Lisa got a first year bursary to study IT at Damelin college – an opportunity she made the very best of. Portia’s employer helped with her tuition fees for the second year and also raised R10 000 for her third year. Half way into her final year, she however has to come up with another R28 000. That’s all that stands between her and a chance at employment as an IT-professional, that would give her entire family a better chance in life.

Adams & Adams will pay the remaining R28 000 in tuition fees to enable Lisa to complete her third and final year of IT studies at Damelin. The law firm has also offered Lisa an interview for an internship at their head office in Pretoria once she has completed her course.

Our thanks goes to the Jacaranda FM Good Morning Angels for allowing us to be a part of their fantastic goodwill programme.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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