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

Partner – Head of Africa Patents
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FARZANA RASSOOL

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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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NICKY GARNETT

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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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FARZANA RASSOOL

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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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DARREN OLIVIER

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NICHOLAS ROSSLEE

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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

Partner & Firm Chairman
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DARREN OLIVIER

Partner & Crammer MC (Johannesburg)
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PHILIP PLA

Partner & Crammer MC (Cape Town)
Patent Attorney

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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

Senior Associate
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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

Senior Associate
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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

Senior Associate
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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

Partner
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CATHERINE WOJTOWITZ

Associate
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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

Partner & Firm Chairman
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SIMON BROWN

Partner & Co-Chair of Trade Marks
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NICKY GARNETT

Partner – Head of Africa Patents
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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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NICKY GARNETT

Partner – Head of Africa Patents
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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

NICKY GARNETT

Partner & Head of Africa Patents
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NTHABISHENG PHASWANA

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DIETER WELTHAGEN

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AFRICA AGENTS 2017_Registrars_Twitter Post

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

Specialist Consultant
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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

NISHAN SINGH

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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
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GERARD DU PLESSIS

Partner & Firm Chairman
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NICKY GARNETT

Partner & Head of Africa Patents
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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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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
Trade Mark Attorney

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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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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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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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ADAMS & ADAMS ESTABLISHES ASSOCIATE OFFICE IN ETHIOPIA

Adams & Adams has been internationally recognised as the leading IP Firm in Africa. Over the past 10 years, Adams & Adams has established an extensive network of Associate Offices which operate in conjunction with local partners to enhance its offering in Africa.

Adams & Adams continues to evolve and position itself as the first choice for anyone wishing to protect or enforce their Intellectual Property rights in Africa. To further entrench their position, Adams & Adams, has, with effect from 1 June 2017, established an Associate office in Ethiopia.

This brings to 19 the number of Associate Offices in different African countries that form part of the Adams & Adams Africa Network (AAAN). These include offices in Egypt, Nigeria, Angola, Mozambique and Cameroon which service important jurisdictions and the important regional IP organisations, ARIPO and OAPI.

“Ethiopia has long been on our radar. It is a country of immense historical, economic and political importance and we have seen a significant increase in the interest expressed by many of our clients in this jurisdiction over the past few years. Ethiopia is one of the fastest growing economies in Africa and we are very excited to now have our own presence in this country. The addition of Ethiopia onto our Network, places Adams & Adams in a unique position in terms of its IP offering on the African continent”, Simon Brown, Partner and Co-Chairperson of the Trade Marks Department.

Adams & Adams Associate Office | Ethiopia
Adams & Adams Associate Office | Ethiopia

A&A’s strategy continues to target key economic destinations on the continent and to mirror the strategies of its clients in the jurisdictions in which they want to operate. The expansion of the Network is aimed at being beneficial to its clients by creating greater efficiency and more control leading to advantageous pricing to its clients. Our focus on Africa aims to match the growth of the African economy.  In the past four years, Adams & Adams has also established Associate Offices in Kenya (2013), Nigeria & Ghana (2014), Egypt (also acting as a hub office for Algeria, Libya, Morocco, Tunisia as well as the north eastern territory of Sudan)(2015) and The Gambia (also acting as a hub office for Liberia and Sierra Leone)(2016).

 “In the territories in which we have established our own offices, we continue to see the benefits of preferential pricing leading to significant growth in market share. This has made us more determined to increase the scope of our network into the Horn of Africa”, says Brown.

Adams & Adams partners and senior staff continue to travel widely across the continent to engage with its associates and administrators in each country. The firm’s Africa strategy is set apart by this on the ground interaction with the IP fraternity and the appointment, in 2012, of Menzi Maboyi, as the Africa Practice Manager, to drive that strategy.

In September, Adams and Adams will be hosting, at its offices in Pretoria, over 60 IP Attorneys, Registry, Government officials and administrators from  across Africa at its Annual Adams & Adams Africa Network Meeting

“The central theme of the Africa Network Meeting is to focus on sharing information, the exchange of knowledge, and establishing long lasting relationships. The platform that we have provided is bearing fruit, not only in the quality of the service that we are providing to our clients, but our increased involvement in assisting some countries with the drafting or amendment of their IP legislation. Adams & Adams is a truly African institution. We are passionate about Africa and the role that IP will ultimately play in the sustained economic growth of the continent”, says Brown.

Delegates to the 4TH Annual Adams & Adams Africa Network Meeting held at our Head Office in Pretoria, South Africa from 14 – 15 August 2016
Delegates to the 4TH Annual Adams & Adams Africa Network Meeting held at our Head Office in Pretoria, South Africa from 14 – 15 August 2016

SIMON BROWN

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner
Attorney

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COLLECTIVE TRADE MARK REGISTERED IN KENYA | TAITA

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

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

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

Image Courtesy WIPO
Image Courtesy WIPO

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

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

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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SOUTH AFRICA | COPYRIGHT AMENDMENT BILL 2017

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

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

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

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

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

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

Various specific technology related provisions have been included.

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

WERINA GRIFFITHS

Partner
Trade Mark Attorney

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LISA VAN ZUYDAM

Senior Associate
Trade Mark Attorney

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OAPI adopts 11th edition of the Nice Classification for the registration of trade marks

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

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

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

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

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

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

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

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

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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REPORT | IP DEVELOPMENTS IN AFRICA

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

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

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

READ THE AFRICA UPDATE ONLINE

DOWNLOAD THE AFRICA UPDATE (36 Mb)

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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REPORT | MADRID IN AFRICA

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

  1. Introduction

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

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

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

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

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

  1. Which African countries are Madrid members?

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

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

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

3.1 Recognition of International Registrations in terms of national laws

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

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

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

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

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

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

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

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

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

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

  • Practical difficulties

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

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

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

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

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

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

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

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

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

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

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

3.2.3 Practical examples

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

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

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

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

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

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

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

  1. Conclusion

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

STEPHEN HOLLIS

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SIMON BROWN

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MEGAN MOERDIJK

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DR CONGO | POLITICAL UNREST SHUTS IP OFFICE

The Intellectual Property Office in the Democratic Republic of Congo (DRC) is currently closed due to political and civil unrest in Kinshasa. An umbrella group of opposition parties, known as the Rassemblement (“Rally”) has called for a general strike, the so-called “Ghost town operation”, to apply pressure on President Joseph Kabila to enter into negotiations surrounding a power-sharing deal and to permit elections to take place later in the year.

Kabila’s mandate expired in 2016, but he refused to step down from office and to allow general elections to take place, which lead to violent and tragic protests in September of 2016.  At the time, a power-sharing deal was tabled to restore order, in terms of which Kabila agreed to step down as president in December 2017, when elections were scheduled to take place.

Renewed riots erupted on Tuesday, 4 April 2017, after negotiations between government and the mentioned opposition group broke down. The unrest and strike caused a near standstill in commercial activity in the capital of Kinshasa and the city of Lubumbashi and most government offices, including the IP Office in Kinshasa, have been closed as a result.

It is anticipated that situations of unrest will continue to arise intermittently during the course of the year and leading up to the scheduled elections. Of course, the unrest would likely escalate dramatically if Kabila does not honour the agreement to step down and allow elections to take place in December, after 17 years at the helm of the DRC presidency.

Teams at Adams & Adams are constantly monitoring the situation closely and will communicate any updates on the situation in the DRC and the operational status of the IP Office.

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

STEPHEN HOLLIS

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LITA MITI-QAMATA

Senior Associate
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REINHARDT BIERMANN

Associate
Trade Mark Attorney

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ZIMBABWE | RATIFICATION OF THE MADRID PROTOCOL

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

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

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

SIMON BROWN

Partner | Co-Chairperson of Trade Marks Department
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LAUREN ROSS

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STEPHEN HOLLIS

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

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

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

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

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

Contribution by

David Legge | Associate

Somayya Khan | Partner

SOMAYYA KHAN

Partner
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THE GAMBIA | DEADLINE FOR RENEWAL OF TRADE MARKS

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

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

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

MEGAN MOERDIJK

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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UGANDA | INDUSTRIAL PROPERTY REGULATIONS PASSED

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

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

Industrial designs

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

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

Utility models

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

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

Technovations

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

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

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

Download Regulations Outline here.

ALICIA CASTLEMAN

Partner | Trade Marks Department
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NICHOLAS ROSSLEE

Associate
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SÃO TOMÉ & PRÍNCIPE | NEW INDUSTRIAL PROPERTY CODE

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

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

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

Lisa van Zuydam | Senior Associate

Mandy Swanepoel | Partner

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EGYPT | INCREASE IN PATENT OFFICIAL FEES

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

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

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Nicky garnett

Partner – Head of Africa Patents
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ADMINISTRATION OF JUSTICE TRUMPS PROCEDURAL TECHNICALITIES IN KENYA

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

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

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

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
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KIM RAMPERSADH

Senior Associate
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SANGE APPOINTED MD OF THE KENYA INTELLECTUAL PROPERTY INSTITUTE

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

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

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

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

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

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

ARIPO | INCREASE IN PATENTS OFFICIAL FEES

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

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

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nicky garnett

Partner – Head of Africa Patents
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IP COMMENTARY | MAURITIUS DRAFT INDUSTRIAL PROPERTY BILL

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

A brief summary of the changes is outlined below:-

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

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

Megan Moerdijk | Partner

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wensel Britz

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