SINGING HIS LAST SONGA | KENYA COPYRIGHT DISPUTE

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

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

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

Songa | The app at the centre of the copyright dispute

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

In addition, the Plaintiff will need to establish that:

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

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

by Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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

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  The Law is heavily outdated.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

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

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

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

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

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

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

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

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

CATHERINE WOJTOWITZ

Associate
Attorney

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SISIPHO NGOMA

Associate
Attorney

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TRADE MARKS IN ETHIOPIA | WHAT YOU NEED TO KNOW

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

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

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

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

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

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

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

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

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

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

by Sbongakonke Khumalo | Associate

and Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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RECENT DEVELOPMENTS IN GOVERNMENT PROCUREMENT POLICY IN SOUTH AFRICA

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

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

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

Other noteworthy changes introduced by the Preferential Procurement Regulations include:

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

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

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

To read the full South Africa chapter, CLICK HERE.

Govt-Procurement-Review-2018

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

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

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

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

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

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

ANDREW MOLVER

Partner
Commercial Attorney

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GAVIN NOETH

Specialist Consultant
Commercial Attorney

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

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

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

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

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

  • IP and public health; and
  • International IP cooperation

IP AND PUBLIC HEALTH

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

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

Substantive Search and Examination

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

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

Patent opposition

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

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

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

Patentability criteria

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

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

Disclosure requirements

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

Parallel importation

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

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

Exceptions

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

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

Voluntary and Compulsory licenses

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

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

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

IP and competition law

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

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

Rule of Law and Legal Certainty

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

INTERNATIONAL IP COOPERATION

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

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

By Ramon Pereira | Associate

And Gizela Lombard | Candidate Attorney

JANICE GALVAD

Partner
Patent Attorney

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RAMON PEREIRA

Associate
Attorney

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SWAZILAND | IP AND PATENT BILLS PASSED

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

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

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

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

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

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

MANDY SWANEPOEL

Partner
Trade Mark Attorney

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NICOLE HAWORTH

Senior Associate
Trade Mark Attorney

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NAMIBIA INTRODUCES NEW INDUSTRIAL PROPERTY ACT

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

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

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

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

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

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

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

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

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

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

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

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

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

DALE HEALY

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner | Head of Africa Patents
Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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MOROCCO | REGISTRATION AND RENEWAL CERTIFICATES NOW ISSUED ELECTRONICALLY

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

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

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

 

KAREN LAM

Senior Associate
Trade Mark Attorney

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SOUTHERN SUN ‘SQUARES OFF’ AGAINST NAMIBIAN BRAND OFFENDER

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

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

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

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

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

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

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

The First Respondent has filed an appeal against the decision.

by Kareema Shaik | Senior Associate

DALE HEALY

Partner
Trade Mark Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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SWAZILAND | HOPES FADE FOR NEW TRADE MARK AMENDMENT BILL

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

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

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

LINDIE SERRURIER

Partner
Trade Mark Attorney

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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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NEW TRADE MARK LEGISLATION FOR MALAWI

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

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

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

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

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

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

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

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

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

Opposing of trade mark applications

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

Infringement of a registered trade mark

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

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

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

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

Cancellation of a trade mark

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

Offences and Penalties

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

Summary

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

Article by

Thembani Nkabinde | Candidate Attorney

Blain de Villiers | Partner

Mohamed Jameel Hamid | Associate

BLAIN DE VILLIERS

Partner
Trade Mark Attorney

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MOHAMED JAMEEL HAMID

Associate
Trade Mark Attorney

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ARIPO WORKING GROUP CLARIFIES FEES DEADLINES

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

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

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

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

WYNAND FOURIE

Senior Associate
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CLAIRE BOTHMA

Senior Associate
Trade Mark Attorney

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LIZE-MARI VAN DYK

Associate
Trade Mark Attorney

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REPORT | THE APPLICABILITY OF THE MADRID SYSTEM IN AFRICA

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

Key criteria

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

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

Africa Madrid Members

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

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

Enforceability

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

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

General

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

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

Conclusion

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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THE DISTRIBUTION AND MARKETING OF MEDICINES IN SOUTH AFRICA

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

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

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

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

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

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

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

JENNY PIENAAR

Partner
Trade Mark Attorney

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JEANETTE VISAGIE

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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TRADE MARKS | CAUTIONARY NOTICES NOW POSSIBLE IN SOMALIA

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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DISPUTE RESOLUTION IN SOUTH AFRICA

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

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

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

To read the full South Africa chapter, CLICK HERE.

DisputeRes2018

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

GREGOR WOLTER

Partner
Commercial Attorney

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JAC MARAIS

Partner
Commercial Attorney

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ANDREW MOLVER

Partner
Commercial Attorney

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RENEE NIENABER

Senior Associate
Commercial Attorney

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

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

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

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

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

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

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

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

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

To learn more about the PedalTap invention, click here.

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

NICKY GARNETT

Partner
Head of Africa Patents

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WYNAND FOURIE

Senior Associate
Patent Attorney

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AWARDS AND ACCOLADES FOR ADAMS & ADAMS PROFESSIONALS

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

IP STARS

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

Patent Stars

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

Trade mark Stars

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

INDICES

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

FIRM OF THE YEAR

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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ZIMBABWE | AS IT HAPPENED

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

MADRID PROTOCOL IMPLEMENTATION | AN UPDATE

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

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

REGISTRY DIGITISATION | IPAS

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

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

INTELLECTUAL PROPERTY TRIBUNAL AND ZIPTA

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

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

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

REGIME CHANGE | IMPLICATIONS FOR IP

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

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

ADAMS & ADAMS | NEW ASSOCIATE OFFICE

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

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

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

SIMON BROWN

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MEGAN MOERDIJK

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ANGOLA | UPDATE ON REGISTRY PAYMENT PROCEDURES

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

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

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

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

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

SIMON BROWN

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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OAPI | SPLIT IN IP DIRECTORATE IMMINENT

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

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

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

STEPHEN HOLLIS

Partner
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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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ZIMBABWE | ADVERTISING AUTHORITY GAINS MOMENTUM

The Global Advertising Lawyers Association (GALA) reports in its latest Gazette that the relaunched and rebranded Advertising Standards Authority of Zimbabwe (ASAZIM) is slowly gaining momentum in its task to protect consumers, ensure fair play between competitors and make sure that the advertising profession is not brought into disrepute in Zimbabwe. The ASA was relaunched as ASAZIM in March of 2017 and has already considered a number of complaints and disputes.

The Advertising Standards Authority of Zimbabwe is an independent body that works in conjunction with Zimbabwe Association of Accredited Practitioners in Advertising (ZAAPA), the Marketers Association Zimbabwe (MAZ), and the Advertising Media Association (ADMA). It aims to provide a prompt, accessible and cost-efficient mechanism to ensure advertising is legal, decent, honest and truthful.

The Code of Advertising Practice is ASAZIM’s guiding document. It is based on the International Code of Advertising Practice, prepared by the International Chamber of Commerce and accepted worldwide as the basis for domestic systems of self-regulation. ASAZIM’s Code has been specifically tailored to the Zimbabwean marketplace. It was drawn up by representatives of the local marketing and communication industries, and is amended from time to time to meet the changing needs of the industry and society.

Writing for GALA, Brenda Kahari reports that since its re-launch ASAZIM has already considered a few disputes and complaints, including a dispute between PPC Cement and Lafarge where it was found that a Lafarge advert contravened the ASA Code of Standards by giving unsubstantiated facts. Complaints that are filed with ASAZIM are heard by an Executive Sub-committee set up to consider and hear disputes and the decision of the Sub-committee is communicated within 5 working days of the hearing. You can read the GALA article here.

JENNY PIENAAR

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KELLY THOMPSON

Partner
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JEANETTE VISAGIE

Associate
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ANGOLA | SECOND PHASE OF RECORDS UPDATE UNDERWAY

The Angola Industrial Property Institute embarked upon a project of restructuring with the aim to protect and promote intellectual property in the territory in 2015.  At the time, it was required to update the information kept in the records at the Registry in respect of all marks with an application number between 1 and 5 000.

As anticipated, a second Notice has been published in the Circular of Industrial Property Bulletin 11/2017 (24 November), in terms of which the official records of applications with applications numbers between 5001 to 20757 have to be updated by providing the Registry with the following information:

  1. A photocopy of the application form;
  2. A Power of attorney, or substitution;
  3. A copy of the Certificate of Incorporation (Proof of activities / commercial certificate);
  4. Payment of concession and/or renewal fee; and
  5. Other documents which may be deemed necessary.

All documents in a language other than Portuguese, have to be translated into Portuguese and duly legalised by the Angolan consulate in the applicant’s home country, or at the consulate of the closest country.

The deadline is 24 November 2018 (12 months calculated from the date stipulated in the Circular of Industrial Property Bulletin 11/2017 (24 November 2017). Failing to comply with the terms as set out in the notice will result in the applications expiring.

PLEASE NOTE THAT applications which have been granted or refused are excluded from the exercise.

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

SIMON BROWN

Partner
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THERESE DAVIS

Senior Associate
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OAPI | NEW LOGO ADOPTED

On 11 December 2017 at a meeting held in Niamey, Niger, the Board of Directors of OAPI adopted a new logo of the organisation.

The logo contains seventeen abstract elements which are intended to represent the diversity in the organisation – particularly the diversity of its 17 Member States (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros Island, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Côte d’Ivoire, Mali, Mauritania, Niger, Senegal, Togo.)

Furthermore, the incorporation of the abstract elements in a manner depicting a shield are envisioned to portray the protection which the organisation offers to its users. The yellow and green colour combination is part of an existing graphic chart of the organisation.

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

 

STEPHEN HOLLIS

Partner
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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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TANZANIA | REGISTRY GOES ONLINE

The Business Registrations and Licensing Agency (BRELA) which is authorised to register  Companies, Business names and Intellectual Property Rights in Tanzania announced that it had implemented an Online Filing System to make provision for the electronic filings of Patent and Trade Mark applications.

We however understand that that not all records have been digitised and it is not possible to conduct complete electronic searches of the Register, necessitating checks of physical files as well. Both the electronic searches as well as the manual searches are conducted by Registry Officials.

While trade mark applications that have been filed electronically should be processed more efficiently, applications that were filed before the Online Filing System became operational (4 January) may not receive the same treatment.

Please contact us at tanzania@adamdadams.com should you require Intellectual Property assistance in Tanzania.

 

SIMON BROWN

Partner
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CLAIRE BOTHMA

Senior Associate
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KAREEMA SHAIK

Senior Associate
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SWAZILAND – TRADE MARKS REGISTRAR RETIRES

After some 8 years in office, Mr Stephan Magagula, Registrar of Trade Marks in Swaziland, retired from office on 1 December 2017.

During his time as Registrar, Mr Magagula sought to improve and update the intellectual property legislation in Swaziland.  In this regard, in 2015, he had a hand in preparing the Industrial Property Tribunal Bill and, more importantly, the Trade Mark (Amendment) Bill.

The Trade Mark (Amendment) Bill is a welcome development since it seeks to bring Swaziland’s national legislation in line with its international obligations under the Madrid and ARIPO filing systems.  Currently, Swaziland may be designated as a country in which protection is sought in both Madrid and ARIPO applications.  The problem is, however, that Swaziland’s Constitution provides that ratification of an international or regional treaty does not, in and of itself, render the relevant treaty binding on the company.  Thus, even though Swaziland may be designated as a country in which protection may be sought under both systems, there is, currently, no legislation in place directing the Registry on how to deal with those application.  As such, any registrations acquired under those systems may be invalid.  As mentioned above, the Trade Mark (Amendment) Bill is a first step towards rectifying this position.

Although the two bills mentioned above have been prepared, they have not yet been presented to Parliament for debate.  It is hoped that the next Registrar will continue in Mr Magagula’s stead and push for the promulgation of these bills.

Until such time as the laws have been amended, we strongly suggest that trade mark owners continue to file national trade mark applications.

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

SIMON BROWN

Partner
Trade Mark Attorney

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NICOLE HAWORTH

Senior Associate
Trade Mark Attorney

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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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OAPI | URGENT RENEWAL RECOMMENDATIONS

All new trade marks filed at the OAPI IP Office had to comply with the 11th edition of the Nice Classification System as of 30 April 2017.

In previous editions of the Classification system, Class 42 included services such as “providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes”.

However, with the most recent edition, these services are re-classified into classes 42 to 45. Should a brand owner’s registration still correspond to the old class 42 specification, the following renewal options are recommended by Adams & Adams:

  1. Should you wish to maintain all the services initially filed in the class heading of the old class 42 specification or in preceding renewals, the mark should be renewed to extend into the new classes to cover the services which were re-classified.
  2. Alternatively, should you, as brand owner, not wish to maintain all the services initially filed or in preceding renewals then, upon renewal, you should apply to limit its specification to exclude such services.

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Attorney

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INSIGHTS | INTELLECTUAL PROPERTY RIGHTS IN SOMALILAND

Somalia is located in the Horn of Africa. It is bordered by Ethiopia to the West, Djibouti to the northwest, the Gulf of Aden to the north, the Indian Ocean to the east, and Kenya to the southwest. Somalia has an estimated population of around 14.3 million. In 1960, the two regions of British Somaliland and Italian Somaliland United to form the Somali Republic. Somalia collapsed into anarchy following the overthrow of the military regime of President Siad Barre in 1991. Despite political improvements the situation in Somalia remains unstable, characterised by outbreaks of civil unrest. Accordingly, the Registry in Mogadishu remains closed and it is not possible to obtain any IP Protection.

Acknowledgement: By Flappiefh with some additional modifications by Offnfopt - Derivative work of File:Benin (orthographic projection with inset).svg, CC BY-SA 3.0

As rival warlords tore Somalia apart into clan-based fiefdoms, an internationally-backed unity government formed in 2000 struggled to establish control, and the two relatively peaceful northern regions of Somaliland and Puntland effectively broke away.

Somaliland is a self-declared republic in the Horn of Africa, with a population of 3.5 million spanning over 176,120 km². Foreign Minister Shire says it is wrong to blame Somaliland for the breakup of Somalia as Somaliland only took back an independence they once had before voluntarily joining Somalia in 1960.
He and the majority of people in Somaliland cite crimes carried out against them by the former Somali regime in the 1980s as the reason for their separation and declaration of independence. Somaliland’s self-rule has provided relative peace and stability.

The economy started to revive after restoration of law and order. The economic and political reconstruction of Somaliland has been substantially domestic affair and the political actors never acquired development assistance due to the absence of official recognition from the international community. Twenty one years later, the nation’s Gross Domestic Product (GDP) has been estimated to be $1.4 billion.

Livestock is the major export of Somaliland accompanied by its by-products i.e. hides and skins while the country heavily depends on imports of food, fuel and manufactured products. Although livestock trade considerably contributes to the economy, it faces a number of challenges and losses due to the absence of financial system, dependency on single foreign market and multiple taxation. Saudi Arabia is the leading destination of Somaliland livestock exports followed by Yemen, UAE and Omen. On the contrary, imports originate from neighbouring countries, Gulf countries, South East Asia and beyond.

Somaliland does not have any laws specifically dealing with the protection and enforcement of Intellectual Property Rights (IPRs). However, Article 16 (2) of the Somaliland Constitution provides that “the law shall determine the rights to authoring, creating and inventing” and thus imposes on the Government of Somaliland an obligation to implement laws dealing with the protection and enforcement of IPRs.

Since no laws have been implemented yet, Article 130 (5) of the Somaliland Constitution is instructive as it recognizes the application of the pre-1991 Somali laws until the promulgation of new laws in Somaliland as long as the laws are not in conflict with Sharia Law, individual rights and fundamental freedoms. That said, pre-1991 Somali laws dealing with registration and enforcement of trade marks cannot be enforced since Somaliland needs to set up systems and offices for the registrations to be effected.

In the absence of a system for the application and registration of trade marks in Somaliland, trade mark owners are increasingly relying on publication of cautionary notices as a means of enforcing their trade mark rights. The cautionary notice serves as a notice to the public of the proprietorship of the trade mark and warns against the unauthorised use of the trade mark by third parties, which use will result in the proprietor taking appropriate legal action.

In order to attend to the publication of a cautionary notice, we require the following:

  1. a) A clear copy of the trade mark representation; and
    c) The name and address of the proprietor of the trade mark.

To ensure that the cautionary notice reaches a wider audience, the notice is published in both print and online newspaper. For the print version, the publication will be made in an English newspaper published once every week. Thereafter, the online version will be available on the website within two working days.

It is possible to publish the notice in the Somali language should you opt to do so. In this case, the notice would appear in a Somali newspaper published four times a week on Saturday, Monday, Wednesday and Thursday. Once published in the newspaper, the online version will also be published on the website. We recommend re-publication of the cautionary notice every two to three years.

We will continue to engage with the Registry regarding the situation in Somalia/ Somaliland 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 Somalia/ Somaliland and across Africa, please contact africaip@adamsadams.com.

 

UDI PILLAY

Senior Associate
Trade Mark Attorney

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SOUTH AFRICA’S COPYRIGHT LAW IS ON A KNIFE-EDGE

The August 2017 Parliamentary hearings on the Copyright Amendment Bill involved more than 70 submissions (written and oral), leading the Portfolio Committee for Trade & Industry to conclude that the Bill requires a lot more work. The Committee decided to take over the drafting of the Bill from the Department of Trade and Industry (the dti) and to prepare a so-called B-Bill.

Whilst it is undisputed that SA’s copyright legislation needs to be updated to address the new ways in which copyright-protected works are dealt with and also to improve accessibility to copyright protected materials for people with disabilities and to strengthen the position of artists, composers, authors and performers following the recommendations of the 2011 report of Copyright Review Commission chaired by Judge Ian Farlam, the expectation was not for our Copyright Act to, in effect, be ‘turned on its head.’  However, many of the proposed provisions in the Amendment Bill may achieve just that, the cause being a new and unmandated focus on so called “users’ rights”.

Our creative industries, whether in the publishing, entertainment, film, music, arts, technology, broadcasting, education and software development sectors, all rely on copyright in some way or another in order to facilitate dealings in their works, whether by their audiences, their customers or even other creative industries.  Any amendment to our Copyright Act should therefore only be considered on the basis of policies backed by evidence and with the interests of all parties in the ecosystem, creative industry stakeholders and consumers alike.

A perceived lack of proper and meaningful stakeholder engagement

One of the key issues raised by multiple industry stakeholders in their submissions to Parliament, is the perception that the dti did not engage with all stakeholders concerned in a meaningful and constructive manner or on an equal footing during the drafting phase.

One of the most powerful presentations delivered during the hearings was undoubtedly that of a composers’ delegation led by music producer Gabi le Roux, and supported by several high profile performing artists, including Vicky Sampson, Kwesta, Ernestine Dean, Locnville and Zolani Mahola.  They informed Parliament that, while dti appears to have engaged more closely with the technology sector, that includes the largest commercial users of copyright protected materials (Google / YouTube, in particular), there was unfortunately no meaningful engagement with artists, authors, composers. This, despite the 2011 Copyright Review Commission report which clearly recommended that our copyright legislation should be amended to ensure that our artists, authors, composers and performers are afforded increased legal protection against the unauthorized use and access to their copyright protected works and that royalty collection and distribution streams be managed more effectively.  Instead, provisions in the Bill are more harmful to those in our creative industries who are already vulnerable, than those in the current Act.

Concerning proposals for ‘users’ rights’

The Bill’s introduction of an inalienable royalty right in favour of “users” has raised many eyebrows. Many observers first thought that the entitlement of “users” to royalties of copyright works that they “used” was the result of a ‘global cut & paste’ error in the drafting, but were shocked to find that this was actually what was intended by the drafters of the Bill.

In what appears to be an attempt to include a ‘user’ of copyright protected works (in particular literary, musical, and artistic works, cinematograph films, sound recordings and audiovisual fixations) into the value chain of parties who would be entitled to receive royalty payments for the use of those protected works, the Bill expressly provides that a ‘user’ shall have the right to claim an equal portion of the royalty payable for use of the relevant copyright protected works.  Further, the ‘user’ shall also have the right to transfer copyright in a literary or musical work.  The ‘user’ is even entitled to give consent to remove or modify the copyright management information of a work which is subject to a technological protection measure.

Insofar as ‘user access’ to copyright protected materials is concerned, the Bill proposes to make allowance for the copying or reproduction of copyright protected works for the ‘purposes of educational and academic activities if the copying does not exceed the extent justified by the purpose’.  Further, the Bill seeks to introduce a legal defence of fair use (see more on this below) insofar as the reproduction and use of copyright protected materials for the purposes of ‘scholarship, teaching and education’ and for ‘expanding access to underserved populations’ are concerned.

The introduction of “users’ rights” begs the question:  Who is the “user”?  With one notable exception, the terms “use” and “user” do not appear in the Act.  Copyright only concerns itself with specific acts in relation to copyright works that amount to their commercial exploitation, notable being reproduction and public performance, which are exclusive rights reserved to the copyright owner.  The exception is Section 9A, introduced in an amendment in 2002, which itself has had a tortuous route to proper interpretation, which was only resolved more than ten years after the section came into effect – to the detriment of composers and performers.

The ‘fair use’ debate

No doubt, the most significant proposed amendment for turning our copyright system into a ‘user access oriented system’ is the proposed replacement of our fair dealing provisions with an open-ended and general defence against copyright infringement in the form of the fair use doctrine, which has its origin in the United States.

It is rather peculiar that the dti were inspired by the United States for guidance for the development of our law.  The doctrine of ‘fair use’ has developed completely independently from copyright legislation in the rest of the world for more than 200 years, and importing this legal doctrine without also importing the legal mechanisms that support the operation of that doctrine would be extremely risky.

The ‘fair use’ doctrine represents an open-ended defence to copyright infringement exemption provision which has general application in that it can apply to any purpose derived from a non-exhaustive list of ‘public good’ purposes.  Application of the defence is determined by a Court after the event by reference to four factors, to determine whether the unauthorized use or reproduction of a copyright protected work may, in certain circumstances, be allowed.

One of the mechanisms which supports the functioning of the ‘fair use’ legal defence in the United States, is the fact that punitive damages may be, and are regularly, awarded.  Plaintiffs in copyright infringement cases may be able to obtain top class legal representation if the attorneys are of the view that they may be successful in landing a huge monetary award. This results in a cautious approach in relying on ‘fair use’.

In South Africa, our Courts rarely award punitive damages for copyright infringement.  In the absence of balancing factors ad qualifications, ‘fair use’ will result in the very opposite of the recommendations of the Copyright Review Commission report being achieved, since composers and performers will not be in any position to protect their rights if they anticipate that a ‘fair use’ defence will be raised, whether in substance or simply as a matter of tactics on the part of the defendant. Consider a large multi-national organization backed by financial and legal resources raising a ‘fair use’ defence for mass unauthorised reproductions of copyright works – such a case would run in the Courts for years, if the rightsholders were able to take on such a case in the first place.

Interestingly enough, in countries with which we do share common law legal heritage, such as the UK, EU, Australia and Canada the importation of a ‘fair use’ system akin to that of the USA, was rejected.  In the UK, government commissioned an independent investigation to determine whether the current copyright (and other IP) legislation was in any way prohibiting or restraining technological or other advances.  Professor Ian Hargreaves and his team of professionals conducted this investigation over the course of many months and eventually concluded (in the so-called Hargreaves report) that that the benefits of the US fair use system are largely overstated; that it could introduce vagueness into law and that the same results could be achieved by taking up copyright exceptions into their already existing fair dealing provisions (which are similar to SA copyright law as it stands) that would accommodate future technological change where it does not threaten copyright owners.

In South Africa, we need to find a solution that works within our existing legal framework and that establishes an appropriate balance between rights holders in our vulnerable creative sectors (our authors, composers, artists and performers which the 2011 CRC Report recommended should receive increased legal protections and should benefit from more effective royalty collection and distribution systems), on the one hand, and those businesses that make commercial use of their copyright protected materials on the other.

The recommendation would be for Parliament’s drafting team to work on keeping our very clear copyright infringement provisions (our so-called fair dealing provisions) intact and to introduce additional exceptions where there is a clear need to do so.

Economic impact

One of the many criticisms of the process leading up to the introduction of the Bill was that the dti had not carried out any meaningful impact assessment, with the report under the Government’s Socio-Economic Impact Assessment System (SEIAS) not indicating any independent research – or any research at all – on the impact of the Bill, especially its proposed exceptions and the ‘fair use’ clause.  The SEIAS report and an earlier regulatory impact assessment referred to in the Bill’s Explanatory Memorandum were not even released by the State in the consultation process.

The publishing sector is understandably very concerned with these proposed amendments to our Act, since the education sector has always been considered as a legitimate market for the publishing industry, just as the education sector is a legitimate market for any form of commerce.  The Publishers Association of South Africa, PASA, had an economic impact assessment of the exceptions for education and the ‘fair use’ provisions carried out by consulting firm PwC, which warned of “severe negative consequences” for the publishing industry if these provisions were to pass into law.  PASA presented PwC’s report to Parliament at the hearings.

Conclusion

The integrity of SA’s copyright law is on a knife-edge. The Bill has become the battleground between those who rely on copyright to freely benefit from original creative works and those who advocate that copyright “locks up” copyright works and makes them inaccessible whilst paying lip service to rights of creators.  When considering the clear and express recommendations made by Judge Farlam and the Copyright Review Commission that SA’s copyright system should protect the vulnerable members of our creative industries, our authors, composers, artists and performers, to enable them to benefit from the works they created and performed, one wonders why the dti unilaterally shifted the policy objective to promote “users’ rights” instead.

STEPHEN HOLLIS

Partner
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NO INVENTION LEFT BEHIND | ADAMS & ADAMS JOINS INVENTOR ASSISTANCE PROGRAM

Adams & Adams has become the first southern African Intellectual Property Law Firm to join the international Inventor Assistance Program. The Inventor Assistance Program (IAP), a WIPO initiative in cooperation with the World Economic Forum, is the first global programme of its kind. It matches developing country inventors and small businesses with limited financial means with patent attorneys, who provide pro bono legal assistance to secure patent protection.

In confirming the firm’s participation as volunteer patent attorneys under the program, Chair of Patents at Adams & Adams, Louis van der Walt said, “The IAP is a wonderful tool, and by participating in the program, pro bono attorneys provide a free kick-start to the use and development of the patent system in developing countries. Our work helps spur innovation at the grassroots level and also allows our own attorneys to develop their professional skills in new, rewarding ways.”

After a pilot phase in three countries – Colombia, Morocco and the Philippines – the IAP is now officially part of WIPO’s programmes.

Click here to learn more about the programme

LOUIS VAN DER WALT

Partner & Chair of Patents
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JAMES DAVIES

Partner
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COLIN MACKENZIE

Partner
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PIETER VISAGIE

Partner
Patent Attorney

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WYNAND VISAGIE

Senior Associate
Patent Attorney

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ARIPO SIGNS PPH AGREEMENT WITH CHINESE PATENT OFFICE

The 41st Session of the Administrative Council of ARIPO was recently held in Lilongwe, Malawi.  Although Adams & Adams is based in South Africa we are able to work directly with ARIPO via our Mozambique office as Mozambique is a member of ARIPO. We have been operating in this way since 2009 and we are currently one of the largest users of the ARIPO patent system. Adams & Adams Partner, Nthabisheng Phaswana, Africa Practice Manager, Menzi Maboyi, and a representative from Adams & Adams in Mozambique attended the latest session.

ARIPO has several Protocols dealing with various aspects of Industrial Property. However, the Harare Protocol which deals with patent, utility model and design matters was highlighted for discussion at the session. Several changes to the Harare Protocol are proposed at the 41st Session, including provisions to allow for accelerated or delayed examination for patent applications. If passed, these changes will come into effect in January 2018.

In addition, it has been announced that ARIPO and the Chinese Patent Office (SIPO) have signed a PPH* agreement. The effective date of the agreement has not yet been set but it is expected to come into effect sometime during the course of 2018. Full details are not yet known but it is likely that applicants who have a corresponding patent application which has been accepted by SIPO will be able to expedite processing of their ARIPO patent applications.

For further information on patent, utility model or design filings in ARIPO or any other African country please contact patents@adamsadams.com


*PPH – A Patent Prosecution Highway (PPH) agreement speeds up the examination process for corresponding applications filed in participating intellectual property offices.

NICKY GARNETT

Partner – Head of Africa Patents
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NTHABISHENG PHASWANA

Partner
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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

Associate
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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

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner
Attorney

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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

Partner
Trade Mark Attorney

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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

Partner
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FARZANA RASSOOL

Associate
Attorney

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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

Partner
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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NICHOLAS ROSSLEE

Associate
Trade Mark Attorney

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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.”

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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DARREN OLIVIER

Partner & Crammer MC (Johannesburg)
Trade Mark Attorney

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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
Trade Mark Attorney

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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
Trade Mark Attorney

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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
Trade Mark Litigation Attorney

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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
Trade Mark Attorney

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CATHERINE WOJTOWITZ

Associate
Trade Mark Attorney

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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.
Nicky Weimar, Senior Economist at Nedbank
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.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner & Co-Chair of Trade Marks
Trade Mark Attorney

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NICKY GARNETT

Partner – Head of Africa Patents
Attorney

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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.
Delegates at the Africa Summit on Patent Examination; including national Registrars and officials from EPO, ARIPO, OAPI and Adams & Adams.

DANIE DOHMEN

Partner
Patent Attorney

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NICKY GARNETT

Partner – Head of Africa Patents
Attorney

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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
Attorney

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NTHABISHENG PHASWANA

Partner
Attorney

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DIETER WELTHAGEN

Partner
Patent Attorney

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DUBIOUS COPYRIGHT AMENDMENT BILL WILL RESULT IN MORE LITIGATION

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

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

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

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

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

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

You can access the FULL SAIIPL & LSSA PRESENTATION HERE.

Download the COPYRIGHT AMENDMENT BILL HERE.

ESME DU PLESSIS

Specialist Consultant
Patent Attorney

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STEPHEN HOLLIS

Partner
Trade Mark Attorney

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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

Partner
Trade Mark Attorney

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ADAMS & ADAMS ANNOUNCES NEW ASSOCIATE OFFICE IN ZIMBABWE

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

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

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

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

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

Adams & Adams Associate Office | Zimbabwe

SIMON BROWN

Partner & Co-Chair Trade Marks
Trade Mark Attorney

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GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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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

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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