USE IT OR LOSE IT! CANCELLATION OF A REGISTERED TRADE MARK FOR NON-USE

A trade mark registration in South Africa gives the trade mark proprietor statutory rights in the mark registered.  These rights are governed by the provisions of our trade mark legislation and can be terminated on various grounds, including expiry of a trade mark registration for failure to renew the registration or cancellation of a trade mark registration due to non-use, in terms of Section 27(1)(b) of the Trade Marks Act, 193 of 1994 (hereinafter “the Act”).

Section 27(1)(b) of the Act provides that any ‘interested person’ may apply to have a trade mark registration cancelled on the ground that there was no bona fide (good faith) use of the trade mark for a continuous period of five years or more, from the date of issue of the registration certificate. The effect of this provision is that a trade mark registration is not vulnerable to cancellation, for non-use, within the first 5 years after issue of the registration certificate. This period is, therefore, often referred to as the honeymoon period by trade mark attorneys.  However, after the honeymoon period, trade mark proprietors need to be aware that a trade mark registration is vulnerable to cancellation for non-use.

In order to successfully defend a cancellation action, the trade mark proprietor is required to show that the registered mark was indeed used in the relevant 5 year period.  However, the alleged use must be in relation to the goods or services for which the trade mark is registered and, in addition, the use must constitute bona fide use.

In a recent judgment, Westminster Tobacco Co v Philip Morris Products SA (925/2015) [2017] ZASCA 10 (16 March 2017), the Supreme Court of Appeal (SCA) commented on what constitutes bona fide use, for the purposes of Section 27(1)(b) of Act.  The crux of the case turned on whether Westminster Tobacco Co (“WTC”), the registered proprietor of two PARLIAMENT trade mark registrations, made use of its mark, in good faith, during the relevant 5 year period.  If not, it was liable to lose its registrations because its competitor (Philip Morris Products SA, “PMI”) had applied for cancellation of its registrations on the basis of non-use, in terms of Section 27(1)(b) of the Act.

The facts of the case are uncomplicated.  WTC registered the trade mark PARLIAMENT in South Africa in relation to, essentially, cigarettes.  PMI, however, uses the trade mark PARLIAMENT internationally in respect of one of its premier brands of cigarettes.  PMI could, therefore, not register or use the mark PARLIAMENT in South Africa, in relation to cigarettes, due to WTC’s earlier trade mark registration in South Africa.  PMI, accordingly, sought to cancel WTC’s registration, on the basis that the PARLIAMENT mark was allegedly not used in good faith, by WTC, for a continuous period of 5 years, from the date of issue of the registration certificates.

In light of the above, PMI filed a cancellation application in the High Court on the basis of Section 27(1)(b) of the Act.  The onus to prove bona fide use rested upon WTC, in terms of s 27(3) of the Act. In defending the application, WTC alleged and was able to show that it had indeed used its PARLIAMENT mark in the relevant 5 year period.  PMI, on the other hand, acknowledged that the mark was used in relation to cigarettes, but contested that the use was in good faith because, on WTC’s own version, the mark PARLIAMENT was aimed at protecting the PARLIAMENT trade mark, disrupting WTC’s competitors in the low-price cigarette market and at protecting WTC’s premium cigarette brand PETER STUYVESANT.

The High Court found that bona fide use means that a mark must be used on goods solely with the object of promoting trade in those goods and that use for an ulterior purpose, such as disrupting the business of a competitor, or protecting the trade mark proprietor’s trade in other goods, does not constitute bona fide use. PMI was, accordingly successful in the High Court and, in turn, WTC appealed the decision to the SCA.

In the appeal judgment, the SCA had regard to its own 2005 judgment in A M Moolla Group Ltd and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) and the international case of Ansul BV v Ajax randbeveiliging BV 2003 (RPC) C-40/01, in the European Court of Justice. The SCA found that the enquiry into bona fide use is a factual enquiry and required:

  1. use of the registered trade mark in relation to goods or services of the type in respect of which the mark is registered;
  1. use of the registered trade mark as a trade mark, for the commercial purposes that the trade mark registration exists to protect; and
  1. use of the registered trade mark in the course of trade and for the purpose of establishing, creating or promoting trade in the goods or services in relation to which the mark is used.

The court indicated that the use does not have to be extensive, but that it must be genuine and not merely as a token.  In other words, the use must not be solely to preserve the rights conferred by the mark, but must be consistent with the essential function of a trade mark, which is to sufficiently distinguish the goods in relation to which it is used from other goods, which have a different origin.

In addition to the above, the court also found and that it is irrelevant if the use is motivated by the fear of removal from the register or protecting the proprietor’s trade generally or even from preventing the mark from falling into the hands of a competitor, as long as the use is bona fide and genuine and principally directed at promoting trade in goods bearing the mark.  The court, however, cautioned that it is not permissible to use the mark for an ulterior purpose, not associated with a genuine intention of pursuing the object for which the Act allows the registration of a trade mark and protects its use.

In the appeal case, PMI’s argument turned on the allegation that, on the evidence presented by WTC, it was evident that the intention for launching the PARLIAMENT brand in South Africa was based on three objectives, other than the launch itself, namely, to protect the trade mark registrations, to test the commercial viability of a low price offer in the cigarette market and finally, to gain insight into the low price segment of the cigarette market. PMI, therefore, argued that there was no desire or objective on the part of WTC to build up any commercial long term sales strategy in its PARLIAMENT cigarettes and the objectives of WTC for using the mark were counter to the functions of a trade mark as defined in the Act. It, accordingly, alleged that the nature of the use, as testified to by  WTC’s main witness, did not constitute use as a trade mark for the purposes for which trade marks are afforded statutory protection and was, therefore, not bona fide use.

WTC countered the allegations of PMI with evidence that the introduction of the PARLIAMENT brand of cigarettes was for several reasons, including dealing with low priced cigarettes.  WTC also argued that its use of the mark was for commercial reasons and that the launch of the PARLIAMENT mark in small towns was geared to investigate and learn how the brand would be received by consumers and was also aimed at disrupting the sales of low priced cigarettes by its competitors.  WTC further disclosed that the implementation of the PARLIAMENT brand was purposely conservative so as not to harm its premium cigarette brand PETER STUYVASENT.

In making a determination as to whether WTC’s use of the mark was bona fide and genuine, the court applied the test set out above. The SCA found that, in the circumstances, the use of the mark PARLIAMENT was bona fide because it was affixed by WTC to goods covered by its registration, i.e. cigarettes, for the purpose of identifying the source from which the goods were derived and distinguished it from its competitors.   The Court also found that there was a commercial purpose in WTC providing different offerings aimed at different sectors of the market and pricing them differently. Accordingly, the court expressed the view that because WTC’s strategy for the PARLIAMENT brand of cigarettes precluded a full-blooded launch of a competing product in the low price segment did not mean that the launch was not genuine.

In light of the above, WTC successfully defended the application for cancellation of its marks on the basis that it, in fact, did use its trade marks in good faith and that the use was genuine.  Although it was not relevant to the SCA case, it is worth knowing that in addition to using a trade mark, trade mark proprietors may also prevent losing a trade mark registration, for failure to use the registration, by associating related trade marks (that are in use).  However, associating trade marks places some limitations on how the associated trade marks may be dealt with.  It is, therefore, important to take a considered approach when dealing with registered trade marks and to bear in mind that when it comes to registered trade marks, beware to use it or you may lose it!

By Jameel Hamid | Associate

 

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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GETTING INTO THE (IP) ZONE

The recent case of Herbal Zone v Infitech Technologies [1] is a cautionary tale for product manufacturers or importers who are careless about their intellectual property (“IP”). In many respects, it is a tale as old as time in IP circles; one which sees itself played out over and over as a result of a lack of focus on the protection of intellectual property and a failure to anticipate and prepare for the daily reality of business relationships turning sour.

The case concerned a male sexual performance enhancer marketed under the name PHYTO ANDRO FOR HIM in South Africa since 2006. Herbal Zone (Pty) Limited was the sole importer of the product into South Africa. It said that the product was manufactured by Herbal Zone International Sdn Bhd, a Malaysian entity. Between 2009 and 2014, Infitech (Pty) Limited was the sole distributor of the Phyto Andro for Him product in South Africa, in terms of a distribution agreement with Herbal Zone. The facts of the case as set out in the Supreme Court of Appeal judgement do not tell us why the relationship soured but, in 2014, in advance of the termination of the distribution agreement, the shareholders of Infitech formed Herbs Oils (Pty) Limited and began marketing and selling a competing product, also under the name PHYTO ANDRO FOR HIM and in similar packaging to the original product. Despite the fact that neither party had registered the trade mark, they both used the symbol for a registered trade mark (®) on their packaging next to the name of the product.

Taking matters into its own hands, Herbal Zone published an advertisement in a popular newspaper and also wrote to pharmacies who stocked the products, warning that Herbs Oils’ Phyto Andro product was “counterfeit” and “illegal” and threatening legal action against suppliers of the product. It also took action in terms of the Counterfeit Goods Act which resulted in certain of the Herbs Oils Phyto Andro products being seized but ultimately released (again, the judgement does not say why but presumably because the Counterfeit Goods Act is difficult to invoke unless there is a registered trade mark involved). Herbs Oils retaliated by suing Herbal Zone for defamation and Herbal Zone then found itself in a position where it had to counter-sue. It counter- applied for an interdict on the basis that Herbs Oil was passing-off its product as that of Herbal Zone’s.

The passing-off case is what took centre stage but it failed, essentially because Herbal Zone was unable to show that the reputation in the PHYTO ANDRO FOR HIM trade mark (although the court accepted that there was one) belonged to it. It is essential for such a case to succeed that the person seeking an interdict establish a reputation (in the form of goodwill) in the product name. There simply wasn’t any evidence pointing to who owned that reputation. Herbs Oils claimed that it had acquired the reputation from Infitech but the SCA quickly put paid to that argument as it had merely been a distributor of the product and had acknowledged in its distributor agreement that it did not own these rights. While the packaging of the product had initially said “manufactured for Infitech”, it was later changed to read “exclusively distributed by Infitech”.This would not have indicated to the public that Infitech was the proprietor of the trade mark.

On the other hand, however, Herbal Zone also could not show that it owned the requisite reputation. Rather, it appeared that all of its commercial communications created a significant amount of confusion between it and Herbal Zone International and that their respective roles in the manufacture and distribution of the product were as clear as mud. In many cases, no distinction was drawn between the two corporate entities and, in others, it appeared to be the case that Herbal Zone was merely a distributor for Herbal Zone International. Much like Infitech, therefore, it could not have acquired any rights in the name of the product. The claim for passing-off accordingly failed and, certainly at the date of writing this article, Herbs Oils continues to advertise its competing PHYTO ANDRO product, no doubt much to the despair of Herbal Zone.

So what should product manufacturers do to avoid these situations?

  1. Register, register, register! So many IP headaches can be avoided by applying to register your distinctive product name as a trade mark. The applicant should be the entity that will actually use the trade mark. If it is not, a proper (written) licence agreement should be in place between the owner of the trade mark and the entity or person who uses it, even if it is a related entity. Get legal advice or, even better, have the licence agreement drafted by a trade mark attorney. The law requires certain essential terms to be contained in such a contract.
  1. Craft product packaging and the wording reflected on it carefully and pay close attention to any packaging regulations (dependent on the nature of the product) and the description of who the trade mark owner/manufacturer/distributor are. Do these descriptions match the true factual position? Note that the ® symbol can only be used in respect of a registered trade mark. While a trade mark application is still pending, the symbol ™ can be used next to the mark.
  1. Where multiple, related entities are involved in the production, manufacture and marketing of a product, ensure that the roles of each are clearly defined and that these roles come through in any form of business communication (e-mail signatures, website content, letterheads, etc.).
  1. Enter into written agreements with any distributors of the product which make it clear that they can and will enjoy no rights in and to the product’s name or any other intellectual property relating to the product. That agreement should spell out clearly the circumstances in which the agreement may be terminated and also that, on termination, the distributor will immediately cease using the trade mark, or anything similar. Maintain control over the way in which the distributor uses the trade mark and advertises the product.
  1. If your rights are infringed, seek legal advice before taking any steps. While in some cases a public awareness campaign may be appropriate, these can easily cross the line into defamation and could result in your ending up being the one getting sued, rather than the other way around, meaning you will be on the back foot in the litigation.

These steps are simple and relatively inexpensive when viewed against the cost of potential litigation or the cost of being unable to stop a competitor from using your brand. Quite frankly, they are steps that product owners simply can’t afford not to take.

[1] (204/2016) [2017] ZASCA 8 (10 March 2017)

KELLY THOMPSON

Partner
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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REPORT | IP DEVELOPMENTS IN AFRICA

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

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

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

READ THE AFRICA UPDATE ONLINE

DOWNLOAD THE AFRICA UPDATE (36 Mb)

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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HOW STRONG IS YOUR IP ‘FORCE’?

The Star Wars ‘force’ is 40 years old this year and is undoubtedly one of the largest pop culture phenomena in the world. The brand extends beyond movies to clothing, toys, games, music, theme parks and television shows. One of the factors that has contributed to the success of the Star Wars franchise is the extent to which the maker of Star Wars, George Lucas, has sought to aggressively protect and enforce the Star Wars intellectual property.

LucasFilm (and Walt Disney) is renowned for taking on anyone who it deems to be infringing on the brand rights – even Ronald Reagan’s administration received a complaint for calling its strategic missile defence system “Star Wars.” In 2016, Lucasfilm sued the so-called “New York Jedi and LightSaber Academy” – a school that was offering classes on Jedi combat by expert “lightsaber and swordplay practitioners.” It’s claimed that the school’s use of the words “Jedi” and “lightsaber” and the “Jedi Order” logo all constitute infringement of Lucasfilm’s trade mark rights.

Lucasfilm and Walt Disney have filed numerous patents, designs and trade marks worldwide. The intellectual capital of a business or entertainment franchise constitutes a significant component of its total asset base; the value of the intellectual capital could exceed the value of the fixed assets of the business or its working capital. It has been recognised that the intellectual capital of a business provides the most potent – and most effective – impetus to its earning power. So vigorous and jealous guarding of IP rights is much like protecting your supplies and money from the raiding and pillaging Alkhara Bandits! You can find a list of Star Wars design patents and trade marks here.

What else can be learnt from the Star Wars IP story? Most businesses will protect their main brand name or logo in defending their primary IP rights, but secondary brand names and logos (“Jedi”, “Darth Vader” etc) that are not the main brand name, but which still uniquely identify the mark are also worth protecting.

Second, be uncompromising in enforcing your rights. Keep a look-out for IP infringement of your brand and don’t hesitate to act when someone is abusing your IP rights. Legal action may sometimes be expensive, but often all it takes is a friendly “letter” from your counsel. Not acting may cost your brand much more in the long-run – and nobody likes a diluted brand asset (Just ask Dooje Brolo!)

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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COUNTING THE COST OF UNLICENSED SOFTWARE

IT-Online recently reported that South African companies paid more than R3,64-million for using unlicensed software in 2016, according to data from BSA | The Software Alliance.

The figure includes settlements (R1,66-million) and the cost of acquiring new software to become compliant (R1,98-million)

Darren Olivier (Partner) spoke to Gugulethu Cele (Kaya FM) about the report and the concept of software licensing.

DARREN OLIVIER

Partner
Trade Mark Attorney

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USING GACC TO STOP COUNTERFEITS LEAVING CHINA

An all too common reality is that intellectual property right (IPR) holders may be active in enforcement against counterfeit goods in a number of jurisdictions, but ultimately might find that such goods are being manufactured in China and exported to the rest of the world for sale.

While most countries only detain goods being imported into their country, the General Administration of Customs of China (GACC) has introduced a recordal system which empowers it to detain suspected infringing goods entering or leaving China.

The IPR holder can record various types of intellectual property with GACC, including trade marks registered in China, or international trade mark registrations extending to China, as well as designs, patents and copyright, although the bulk of goods detained are on the basis of trade marks, which are the easiest to recognise and recall.  According to its statistics for 2014, GACC revealed that 96.5% of detentions related to goods being exported from China.

While specific documentation must accompany the application (such as a power of attorney, certificate of incorporation, registration certificates, colour photographs of genuine goods, details of authorised exporters, distributors and licensees), the overarching guideline is to provide GACC with as much information as possible to enable it to make a preliminary determination as to whether the goods infringe any recorded intellectual property right.

GACC will issue its written acceptance or rejection within thirty working days of receiving the application. If granted, the recordal is valid for a period of ten years, or until the expiration of the intellectual property right, whichever is shorter, and is renewable.

If GACC is of the view that goods being imported or exported may infringe an intellectual property right which has been recorded on its electronic database, it will suspend the clearance of the goods and inform the IPR holder. The IPR holder is required to confirm the authenticity of the goods, lodge a written application for detention as well as make payment of a bond (or submission of a bank guarantee), within three working days of being notified. If the IPR holder fails to comply with any of these requirements, the goods must be released, irrespective of their authenticity.

If the IPR holder has complied with the requirements, GACC will detain the goods, investigate and make a determination on the matter within thirty working days, failing which the case must be referred to Court, or the goods released. If it deems the goods to be infringing, depending on the nature thereof, the goods will either be donated once the infringing portion has been removed, sold to the IPR holder, sold on auction, or destroyed. The IPR holder is liable for storage and destruction costs. Fines are sometimes also imposed on the consignor, at GACC’s discretion.

It is recommended that IPR holders be mindful of the recordal, paying careful attention to any changes in the application which must be reported to GACC within thirty working days, failing which the recordal may be cancelled. GACC also invites training sessions to keep up to date with changes in the IPR holder’s rights, including the launch of new products or change in product packaging.

Since GACC is not obliged to detain any infringing goods unless a valid recordal is in place, this system could be a useful tool to IPR holders as part of their intellectual property enforcement strategy. The progressive initiative is a welcome tool in the crusade against counterfeit goods.

TAYYIBA NALLA

Senior Associate
Trade Mark Attorney

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GODFREY BUDELI

Partner
Trade Mark Attorney

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REPORT | MADRID IN AFRICA

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

  1. Introduction

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

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

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

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

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

  1. Which African countries are Madrid members?

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

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

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

3.1 Recognition of International Registrations in terms of national laws

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

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

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

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

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

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

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

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

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

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

  • Practical difficulties

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

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

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

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

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

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

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

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

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

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

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

3.2.3 Practical examples

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

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

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

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

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

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

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

  1. Conclusion

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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SIMON BROWN

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Trade Mark Attorney

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MEGAN MOERDIJK

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CASHING IN ON MADIBA’S LEGACY

The City of Cape Town announced its plan to create the Madiba Legacy Route to enhance tourism in Cape Town.

Provincial MEC for Economic Opportunities, Alan Winde, said up to 100 000 jobs could be created as a result of this plan. This raises the question: Is Madiba’s name free for everyone to use?

Nishan Singh, attorney and partner at Adams & Adams says Madiba’s name is owned and protected by the Nelson Mandela Foundation.

NISHAN SINGH

Partner
Trade Mark Attorney

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AESTHETIC OR FUNCTIONAL | PROTECT YOUR DESIGN

Adams & Adams’ involvement with Elle SOLVE is part of a drive to foster the uniquely imaginative capacity of SA’s creatives – and to help those gifted individuals realise real economic benefit in respect of their intellectual property rights. We see it as an imperative that this showcase of individualism is protected. In terms of the artist we also need to provide a solution to the problem of general devaluation and under-appreciation of artistic works. This begins with the artist who needs to know his or her rights in terms of creativity.

South Africa is home to many talented designers whose work is highly regarded both locally and internationally.  Design protection is, however – to their detriment – often underestimated by local designers.

Making design protection a part of your creative repertoire should be part of your creative course of action. Registered design protection provides protection for the appearance of articles intended to be multiplied in an industrial process.

Both aesthetic and functional designs can be registered in South Africa. Functional designs are those with features necessitated by the function of the article. Aesthetic designs, which are extremely important in creative design, pertain to appearance of the article including shape, configuration, pattern or ornamentation.

Examples of articles suitable for aesthetic design protection include, furniture, lighting, textiles, door handles etc.

In order to ensure your design is protected it must be new. This means that the design should not have been revealed to the public before filing an application for registered design.  Although novelty (or “newness”) is a requirement before filing an application, the South African Designs Act does allow you to disclose your design before a design application – provided you file a design application within six months of the disclosure.

Designers need to take cognisance of the process of design protection in foreign countries however.  Several countries will not enable design protection if it has been disclosed prior to filing.  It is preferable then that South African design applications be filed prior to any public disclosure of the design protection.

Intellectual property is a vital aspect of your balance sheet, and registering your designs has an important role to play in your financial well being.  A registered design may be traded like any other asset.  You can sell it, or licence it others.  It therefore allows you to prevent others from using, making, importing or selling articles which look the same or similar to yours – safeguarding your professional reputation against copycats.

Don’t donate your creative works to others – register your designs!

MARIËTTE DU PLESSIS

Partner
Trade Mark Attorney

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DISPUTE RESOLUTION REVIEW | SOUTH AFRICA

The Dispute Resolution Review provides an indispensable overview of the civil court systems of 40 jurisdictions. It offers a guide to those who are faced with disputes that frequently cross international boundaries. This ninth edition follows the pattern of previous editions where leading practitioners in each jurisdiction set out an easily accessible guide to the key aspects of each jurisdiction’s dispute resolution rules and practice, and developments over the past 12 months. The South African Chapter has been authored by Jac Marais, Andrew Molver and Renée Nienaber from Adams & Adams.

Key developments in South Africa over the past year followed global trends and included:

  • Clarification of the effect of a pending application for a restraining order and the scope of issues capable of referral to court in terms of Section 20(1) of the Arbitration Act;
  • Further progress towards more active judicial management of the dispute resolution process;
  • Approval of the International Arbitration Bill; and
  • The Community Schemes Ombud Services Act coming into effect.

To read the full South African submission, CLICK HERE, or for the full Dispute Resolution Review publication, CLICK HERE.

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JAC MARAIS

Partner
Commercial Attorney

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ANDREW MOLVER

Partner
Litigation Attorney

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RENEE NIENABER

Senior Associate
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WHAT ARE TRADE SECRETS? HOW TO PROTECT THEM

A Trade secret is information that is useful in the industry and that is kept confidential. It is information that imparts value to its holder and one that provides a competitive edge over its competitors. Should information that constitutes as a trade secret be leaked, it could have a major negative effect on the business. Information such as customer lists, information received by an employee regarding business opportunities valuable to an employer and information provided to an employee in confidence in the course and scope of his employment could be identified as confidential[1].

Even negative information such as failed remedies or manufacture of products and failed research could be protected as a trade secret as it could save a competing business high costs if they have a what not to do guide.

 Article 39 of the TRIPS Agreement[2], provides that member states shall protect “undisclosed information” against the unauthorised use “in a manner contrary to honest commercial practices” as long as the information is:

  1. a secret in a sense that it is not generally known among or readily accessible to persons that generally deal with the type of information;
  2. has commercial value because it is secret; and
  3. has been subject to reasonable steps by the person in control of the information to keep it a secret.

This is the general guideline in determining whether information is a secret and if it can be protected as a ‘trade secret’. Member countries may have identified more criteria but Article 39[3] serves as a basis for the member states of the TRIPS Agreement[4]

The advantages of trade secrets are that trade secrets do not have to be registered and have no limited protection frame, there are no registration costs and there are no formal compliance requirements that have to be met. However, the disadvantages are that trade secrets can be reverse-engineered once the secret is made public and then anyone is at liberty to use the information.

The enforceability of the trade secrets is generally not easy and may prove to be costly – not ideal for small entities and start-ups. Nonetheless, trade secrets can still be a useful tool for small and medium businesses that do not have the resources to protect their intellectual property assets by other forms of protection such as trade marks and patents which require registration.

How to protect your trade secrets

A trade secret owner should employ as many precautions as reasonably possible such as:

  1. restricting access to confidential information physically and electronically to only those individuals that need to know the information;
  2. marking documents that they constitute confidential information;
  3. making use of non-disclosure and confidentiality agreements;
  4. maintaining information with password protection;
  5. disposing confidential information by shredding or other means designed to destroy the information;
  6. conducting exit interviews with departing employees to ensure the return of all confidential information in the employee’s possession and to emphasise confidential obligations;
  7. ensuring that there are restraint of trade provisions in the employment contracts;
  8. establishing due diligence and on-going third party management procedures;
  9. instituting and information protection team;
  10. make trade secret protection a priority[5].

It is important to note that confidential information not classified as a trade secret may be used by an employee for his own benefit or for the benefit of others after the termination of his employment to the extent that it was not copied and/ or deliberately memorized for use after   of the employment contract[6]. In this case[7], the applicant sought to interdict an ex-employee from joining a competitor on the basis that the respondent would unlawfully make use of the applicant’s trade secrets. The court held that the applicant had failed to prove that any of the information was confidential. It was decided that the audio and lighting production of the IDOLS TV show required little originality input since all the relevant information was already in the public domain.

In the event that it becomes apparent that trade secrets have been exposed, the trade secret owner can approach the courts to claim against the infringer on the basis of breach of contract which allows the wronged party could claim for damages from the infringer for breaching confidentiality agreements or based on unlawful competition which allows the wronged party to claim for an interdict in order to refrain the infringer from continuing the unlawful act. Furthermore the wronged party can claim for damages they have incurred due to the act of the infringer and claim costs they have incurred in instituting proceedings. Proof of damages and causation is imperative to succeed with an action under unlawful competition.

Proving damages can prove to be quite difficult. Below are different options that can be exercised in quantifying the economic harm in misappropriated trade secrets[8].

  1. Lost Profits and unjust enrichment calculations[9] – this involves determining how much more increased sales the company would have made had the trade secrets not been revealed;
  2. Reasonable royalty[10] – this remedy is suitable where it would be difficult to prove the extent of the patrimonial loss. This is determined by recovering the reasonable royalty that would have been paid by a licensee ; and
  3. Transaction specific Reasonable Royalty[11]– relates to the royalty that would have been paid for a specific product or service.

Trade secrets are an important form of intellectual property just like trade marks, patents, copyright and designs. It is imperative that any business takes the initial steps in identifying the trade secrets of the business and thereafter, incorporate protection mechanisms within the business such as ensuring that documents are stored securely and in places where there is limited access. Furthermore agreements with employees should be in place as well as education about what constitutes confidential information as well as the consequences of revealing the confidential information.

 by Maureen Makoko | Associate


[1] Meter Systems Holdings Limited v Venter and Another 1993 (1) SA 409

[2] Agreement on Trade-Related Aspects of Intellectual Property Rights

[3] Idem

[4] Idem

[5] WIPO MAGAZINE Eight steps to secure trade secrets (2016) http://www.wipo.int/wipo_magazine/en/2016/01/article_0006.html

[6] Strike productions (Pty) Ltd v Bon View Trading (Pty) Ltd & Others (10/21704) [2011] ZAGPJHC 1

[7] Idem

[8] Hoffman J, Ewing B and Thompson M.A.  How Much Are Your Trade Secrets Worth? Here’s how To Figure it Out 2014 https://eiexchange.com/content/30-how-much-are-your-trade-secrets-worth-heres-how-to-figure-it-out

[9] Idem

[10] Idem

[11] Idem

 

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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BRANDS & SOCIAL MEDIA INFLUENCERS | ARE YOU AT RISK?

Although Andy Warhol proclaimed in 1968 that, in the future, everyone would be world-famous for fifteen minutes, it is unlikely that he could possibly have imagined today’s social media crazed world and the multiple platforms that exist to enable anyone, anywhere, to become a celebrity. In today’s world, being “famous for being famous” can be a full-time occupation and “Youtuber” would appear to be an acceptable career choice for many millennials.

One ramification of this has been the rise of the “social media influencer”. A social media influencer is someone with credibility in a particular industry and a wide reach, usually in the form of a large following on social media. Brands engage with an influencer who has reach in their particular industry, that person promotes the brand to his or her followers and the brand enjoys the benefit of what is effectively a personal endorsement to hundreds, thousands or even millions of persons directly in its target market. The social media influencer is, of course, generally paid to promote the product, either in money or in kind. It is not uncommon, for example, for clothing brands to gift free items to celebrities or established fashion bloggers with the expectation that they will then post photographs on social media of themselves wearing the items on Instagram or other social media, with an appropriate mention of the brand.

The use of social media influencers is but one form of what has been termed “native advertising” which is paid media that matches the form and function of the platform upon which it appears. The issue, as one might imagine, is that these endorsements, which constitute paid-for advertising, often appear among hundreds of other organic social media posts and may not be perceived as sponsored content by those who view them. Therein lies their very appeal to advertisers, especially in the modern consumer landscape that craves authenticity and personal connections. But, similarly, therein lies the potential to deceive consumers and fall foul of the law.

The USA’s Federal Trade Commission, which is tasked with tackling unfair business practices and consumer deception in the USA, is very clear on this issue. It has published detailed guidelines which spell out that any material connection between an advertiser and endorser must be disclosed in a clear and conspicuous manner. While wording such as “company x gave me this product for free” in a review would be ideal, it seems that using a hashtag such as “#sponsored” or even “#advertisement” might be sufficient for the FTC’s purposes. The FTC has even said that, given that a tweet is a mere 140 characters, commencing it with “#AD:” could get the message across.

An example from Kim Kardashian West’s Instagram Page. It is questionable whether merely thanking the brand would be considered a sufficient disclosure. This particular post was “liked” by over 1.4 million people.

An example from Kim Kardashian West’s Instagram Page. It is questionable whether merely thanking the brand would be considered a sufficient disclosure. This particular post was “liked” by over 1.4 million people.


Winner of South Africa’s Masterchef Season 2 competition, Kamini Pather, has attracted an Instagram following of over 26 000 people and has seemingly cashed in on the social media influencer scene, pairing up with various different brands. This post uses the hashtags “#sponsored” and “#ambassador” to disclose her relationship with the make-up brand MUD.

Winner of South Africa’s Masterchef Season 2 competition, Kamini Pather, has attracted an Instagram following of over 26 000 people and has seemingly cashed in on the social media influencer scene, pairing up with various different brands. This post uses the hashtags “#sponsored” and “#ambassador” to disclose her relationship with the make-up brand MUD.

But how will this issue be dealt with in South Africa where our regulators have yet to turn their attention to specific rules governing this form of advertising? The answer is likely to be found in the Consumer Protection Act 68 of 2008 (the “CPA”) and the Advertising Standards Authority’s Code of Advertising Practice (“ASA Code”) both of which set general standards relating to the advertising of products and/or services to ensure the public is not being misled.

Both the CPA and ASA Code provide very broad definitions of “advertising” and “advertisement” and these would likely apply to advertising by way of social media. When bloggers or influencers post on social media in relation to an advertiser’s products or services, those posts could also be regarded as advertisements, because they are intended to market, promote, advertise or publicise the advertiser or the relevant goods or services. Accordingly, this would also require compliance with the CPA and the ASA Code.

The CPA requires that advertising must take place in a fair and reasonable manner and that no misrepresentations be made. Goods or services must not be marketed in a manner that is likely to reasonably imply a false or misleading representation concerning those goods or services. Similarly, the ASA Code requires truthfulness and honesty in advertising. Could an argument be made that a paid-for advertisement which is not clearly labelled as one is misleading? Probably. After all, a consumer is far more likely to be induced to purchase a product that has been given a rave review by someone he or she knows or admires.

Although the CPA and ASA Code do not specifically deal with situations where influencers post content on social media in order to market or promote a brand or its goods/services, the ASA Code also requires that “advertisements should be clearly distinguishable as such whatever their form and whatever the medium used”.

The ASA Code also states that, in electronic media, particular care should be taken to distinguish clearly between programme content and advertising. Where there is a possibility of confusion, advertising should be identified in a “manner acceptable to the ASA”. While the ASA seems yet to have received any complaints regarding unidentified social media influencer endorsements, it seems likely that it will also insist on similar disclosures to those required by the FTC and that wording, whether in the form of a hashtag or something more substantial, will be needed to clearly identify a post as advertising content.

This being the current state of play, it is advisable that brands and social media influencers (both could be liable in the event of a breach) ensure that all posts contain an indication to the effect that the relevant posts are advertisements. This must be clear enough to avoid any misrepresentations or misleading of the public. One could insert the following at the end of the post: “(Sponsored ad)”. One could also consider using “#sponsored_ad”. Other wording may also be considered acceptable and ultimately, in the event of a challenge, it would be up to the advertiser to show that consumers in South Africa clearly understand that the wording used reflects the nature of the relationship between the brand and the influencer.

It is also important to bear in mind that any form of compensation or inducement, whether in monetary terms or some other form such as a discount, tickets to an event or free products, will likely trigger the need to disclose the relationship with the advertiser. Accordingly, in all of these circumstances, it is recommended that a clear message be inserted at the end of the post to the effect that the post is a sponsored advertisement.

The bottom line is that consumers have a right to know when something is a paid-for testimonial, rather than the personal and unbiased view of the endorser. And it is brands and social media influencers who bear the responsibility of making that disclosure clearly.

Kelly Thompson | Partner (Adams & Adams)

 

KELLY THOMPSON

Partner
Trade Mark Attorney

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DR CONGO | POLITICAL UNREST SHUTS IP OFFICE

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

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

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

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

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

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

STEPHEN HOLLIS

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LITA MITI-QAMATA

Senior Associate
Trade Mark Attorney

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REINHARDT BIERMANN

Associate
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ZIMBABWE | RATIFICATION OF THE MADRID PROTOCOL

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

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

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

SIMON BROWN

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LAUREN ROSS

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STEPHEN HOLLIS

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

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

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

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

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

Contribution by

David Legge | Associate

Somayya Khan | Partner

SOMAYYA KHAN

Partner
Trade Mark Attorney

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TRADITIONAL KNOWLEDGE AS A TRADE SECRET

In June 2016, The Protection of Traditional Knowledge, Genetic Resources and Expressions of Folklore Act, 2016[1] (“the Act”) came into force in Zambia. The Act’s preamble indicates that the aim is to:

  • provide for a transparent legal framework for the protection of, access to, and use of traditional knowledge, genetic resources and expressions of folklore which also guarantees equitable sharing of benefits and defective participation of holders;
  • recognise the spiritual, cultural, social, political and economic value of traditional knowledge, genetic resources and expressions of folklore;
  • promote the preservation, wider application and development of traditional knowledge, genetic resources and expressions of folklore;
  • recognise, protect and support the alienable rights of traditional communities, individuals and groups over their traditional knowledge, genetic resources and expressions of folklore;
  • confer rights on traditional communities, individuals and groups;
  • promote the conservation and sustainable utilisation of the country’s biodiversity resources;
  • promote fair and equitable distribution of the benefits derived from the exploitation of traditional knowledge, genetic resources and expressions of folklore;
  • promote use of the traditional knowledge, genetic resources and expressions of folklore; and
  • to prevent the granting of patents based on traditional knowledge, genetic resources and expressions of folklore without the consent of a traditional community, individual or group

The Act has incorporated a new system into the law such as to register traditional knowledge. The registration does not require that the traditional knowledge be disclosed to the public[2] and   furthermore, much like with trade marks, the Registrar will issue an Intellectual Property Journal on protected traditional knowledge as well as include any licenses or contracts related to the traditional knowledge[3]. The Act has been well received in Zambia as it creates economic development in the country and will encourage international investors to invest in the community as well as to register their own traditional knowledge. Furthermore, the local people will have comfort knowing that their traditional knowledge is protected as well as knowing that there are mechanisms in place if there is misuse of their traditional knowledge.

What exactly is traditional knowledge?

Traditional Knowledge (TK) is knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its culture or spiritual identity[4]. TK can be found in a wide variety of contexts including: agriculture, scientific, technical, ecological and medicinal knowledge as well as biodiversity-related knowledge[5].

For example:

Mukundu

MUKUNDU

The Ila people, also called Baila, Sukulumbe or Shukulumba are Bantu speaking located in the area west of Lusaka being the capital of the Republic of Zambia. Most of the Ila grow food to feed their families and to cover physical and educational needs[6]. The Ila make use of natural plants and trees to make medicines such as the Acacia nigrescens tree (mukundu),  the bark of which is decocted and the lotion used for sore gums[7] and  the Julbernardia panuculata (mutondo)

 of which the leaves can be boiled and the steam inhaled to relieve colds.

TK can be afforded two types of protection namely:

  1. Defensive protection- which aims to stop people who are not a part of the community from acquiring the intellectual property rights over the TK; and
  2. Positive protection- which grants rights that empower communities to use and benefit from the traditional knowledge[8].

These skills and innovations of indigenous and local communities do not form a separate category of intellectual property law and as such, have to be protected by other means of intellectual property rights. Trade secret is one of the forms of intellectual property that can be used to protect TK.

MUTANDO

MUTANDO

What are trade secrets?

A Trade secret is information that is useful in the industry and that is kept confidential. It is information that imparts value to its holder and one that provides a competitive edge over its competitors. Should information that constitutes as a trade secret be leaked, it could have a major negative effect on any business. Information such as customer lists, information received by an employee regarding business opportunities valuable to an employer and information provided to an employee in confidence in the course and scope of his employment could be identified as confidential[9]. Even negative information such as failed remedies or manufacture of products and failed research could be protected as a trade secret as it could save a competing business high costs if they have a what not to do guide.

Article 39 of the TRIPS Agreement[10], provides that member states shall protect “undisclosed information” against the unauthorised use “in a manner contrary to honest commercial practices” as long as the information is:

  1. a secret in a sense that it is not generally known among or readily accessible to persons that generally deal with the type of information;
  2. has commercial value because it is secret; and
  3. has been subject to reasonable steps by the person in control of the information to keep it a secret.

This is the general guideline in determining whether information is a secret and if it can be protected as a ‘trade secret’. Member countries may have identified more criteria but Article 39[11] serves as a basis for the member states of the TRIPS Agreement[12]

The advantages of trade secrets are that trade secrets do not have to be registered and have no limited protection frame, there are no registration costs and there are no formal compliance requirements that have to be met. However, the disadvantages are that trade secrets can be reverse-engineered once the secret is made public and then anyone is at liberty to use the information. The enforceability of the trade secrets is generally not easy furthermore, it may prove to be costly.

Traditional knowledge as a trade secret

In conjunction with the requirements set out by Article 39, traditional knowledge can be protected as a trade secret if:

  1. The information is a secret

Customary laws of communities often require that certain knowledge should be disclosed to certain recipients. For example: A group of North American indigenous communities, the Tulalip Tribe, have an application under the Patent Cooperation Treaty (PCT) on the use of traditional Chinese medicine to reduce the level of fat in the blood which is a collection of their traditional knowledge. A part of the traditional knowledge has been exposed for the patent review and the rest has been kept a secret[13].

  1. Reasonable steps have been taken to protect it

The information must be reasonably protected. Even if the whole community knows about it, it does not lose its secrecy provided that the rest of the outside people do not have much knowledge about it such as in the example of the Tulalip Tribe.

  1. The information has economic value

Traditional Knowledge is seen as an asset as it could be used to develop products which would be profitable. It therefore has great economical value.

If the above requirements have been met, then traditional knowledge can be protected as a trade secret and any misappropriation of the information can allow the owner of the information to seek relief through various means such as obtaining an interdict to prohibit further misappropriation of the information.

Conclusion

Trade secrets are an important form of intellectual property and can be the better form of protection not only for TK but also any confidential information within a business. It is imperative that initial steps be taken in identifying the trade secrets of the business and thereafter, incorporate protection mechanisms within the business such as;

  1. making trade secret protection a priority;
  2. ensuring that documents are stored securely and in places where there is limited access;
  3. ensuring that there are non-disclosure and confidentiality agreements in place to protect the confidential information;
  4. educating third parties and employees about what constitutes confidential information as well as the consequences of revealing the confidential information;
  5. marking documents that they constitute confidential information; and
  6. restricting access to confidential information physically and electronically only to those individuals that need to know the information.

 

[1] Act No. 16 of 2016

[2] Section 15 of Act No. 16 of 2016

[3] Section 11 of Act No. 16 of 2016

[4] WIPO Traditional Knowledge http://www.wipo.int/tk/en/tk/

[5] Idem

[6]  Ila in Zambia https://joshuaproject.net/people_groups/12208/ZA

[7] Fowler D.G (2002) Traditional Ila Plant Remedies from Zambia 35-48

[8]  Pandey V Protection of Traditional Knowledge as Trade Secrets (2013) http://www.mondaq.com/india/x/279342/Patent/Protection+Of+Traditional+Knowledge+As+Trade+Secrets

[9] Meter Systems Holdings Limited v Venter and Another 1993 (1) SA 409

[10] Agreement on Trade-Related Aspects of Intellectual Property Rights

[11] Idem

[12] Idem

[13] Pandey V Protection of Traditional Knowledge as Trade Secrets (2013) http://www.mondaq.com/india/x/279342/Patent/Protection+Of+Traditional+Knowledge+As+Trade+Secrets

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE GAMBIA | DEADLINE FOR RENEWAL OF TRADE MARKS

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

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

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

MEGAN MOERDIJK

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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‘LAWS OF SA’ DATABASE INCLUDED IN US LIBRARY OF CONGRESS

The Faculty of Law at the University of Pretoria (UP) recently announced that the ‘Laws of South Africa: Consolidated Legislation’ – a database project – has been selected by the United States Library of Congress for inclusion in their historic collection of internet materials related to the Laws of African Jurisdictions Web Archive. This project was initiated and is now managed by UP’s OR Tambo Law Library under the leadership of the Library Manager, Ms Shirley Gilmore.
According to UP’s Director of the Department of Library Services, Mr Robert Moropa, this development boosts the international visibility of the University of Pretoria.
The Faculty expressed their gratitude to sponsors Webber Wentzel, Werksmans, Adams & Adams and SAICA for their support of this important project

GERARD DU PLESSIS

Partner & Chairman
Trade Mark Attorney

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UGANDA | INDUSTRIAL PROPERTY REGULATIONS PASSED

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

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

Industrial designs

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

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

Utility models

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

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

Technovations

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

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

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

Download Regulations Outline here.

ALICIA CASTLEMAN

Partner | Trade Marks Department
Trade Mark Attorney

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NICHOLAS ROSSLEE

Associate
Attorney

HAT-TRICK FOR ADAMS & ADAMS | AFRICA FIRM OF THE YEAR

London | At the recent Managing IP Global Awards banquet, held at The Savoy, South Africa’s Adams & Adams was confirmed as the leading law firm in Africa for 2017 – the third year in a row for the firm. Partner at the firm, Darren Olivier was on hand to accept the award and to celebrate the firm’s phenomenal achievements in uniting and advancing the business of good intellectual property in territories across the African continent.

“This is a fantastic accomplishment for us and we are immensely grateful to the members of MIP, who have recognised our efforts and our firm’s ascendancy in Africa,” says firm Chairman, Gérard du Plessis, of the award. “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.”

Notwithstanding the spectre of a tumultuous 2016 worldwide, there is much to be optimistic about insofar as Africa’s rise on the world stage goes. While development obstacles abound, the World Bank’s Africa Pulse Report projects that annual economic growth for Sub – Saharan Africa will remain at an expected average of 4.5%, whilst the EY Global Attractiveness Study for 2016 highlights some economic “bright spots” on the continent. “In respect of intellectual property law in Africa, there are encouraging improvements in most territories, with laws and regulations constantly in the process of evolution and development,” adds du Plessis. “And allied to this, the development of intellectual property offices across the continent, including the automation and digitisation of these agencies, remains imperative. In our minds, Africa’s time waits for no one.”

Adams & Adams continues to expand its critical African Network with the establishment of an Associate office in The Gambia – also servicing Liberia and Sierra Leone. Plans are underway to open an office in Ethiopia, as well as Zimbabwe, in the near future. This will bring to 19, the number of Associate offices in the different African countries that form part of the Adams & Adams Africa Network.

“Our focus has always been to add value to our clients’ IP portfolios. We target strategic associations with local partners whose ethics and commitment to clients mirror those of our own,” explains Simon Brown, Partner and Chair of the Africa Strategy Committee. “The heart of this approach is to enhance the level of experience for our clients and to provide assurance to clients who entrust us with their work, knowing that their matters will be handled with the same expertise and oversight whether in South Africa or by our Associate firms.”

In 2016 Adams & Adams partnered with Managing IP to introduce the inaugural Africa Roadshow in New York, with the aim of updating clients and interested parties on economic and intellectual property developments on the continent. This was followed by the firm’s hosting of the successful BRICS IP Forum in London. In 2017, Partners will welcome colleagues and registrars from across Africa for the fifth annual Africa Network Meeting – a unique event on the IP landscape. Says du Plessis, “The year ahead offers much hard work for our teams, but much potential as well.”

GERARD DU PLESSIS

Partner & Chairman
Trade Mark Attorney

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SIMON BROWN

Partner and Chair of Africa Strategy
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE ART AND LAW OF PAINTING

Allegory.  Abstract meanings.  Colour.  Light.  Perspective.

Johannes Vermeer dedicated one of his works to The Art of Painting.  It has been called the most complex Vermeer work of all.

Paintings, like that of Vermeer[1], are protected by copyright in South Africa, in terms of the Copyright Act.  Paintings are expressly listed as a form of artistic work in the Act.

The Copyright Act reserves the right to copy.  In fact, it reserves exclusively for the owner of the copyright, various acts or dealings with the intention of rewarding the expression of creativity and embodiment of skill and effort.

In the case of artistic works, these reserved acts include reproducing the work in any manner or form, publishing the work, including it in a film or television broadcast and making an adaptation thereof.

Therefore, only the owner of the copyright in a painting may make a copy of it.  The making of a reproduction (or adaptation) in any manner or form, which is done without the owner’s authorisation, amounts to copyright infringement.

Who is the owner?  In the case of paintings, the artist generally automatically becomes the first owner of the copyright, unless one of very specific exceptions listed in the Act applies.

In order for copyright to transfer, an agreement to this effect needs to be concluded.  Copyright does not transfer with the physical object but remains with the artist unless or until he or she agrees in writing that the ownership of the copyright should transfer.

The result of this is that, when you buy a painting, you buy and acquire only the physical object.  You do not acquire any rights of copyright and you may therefore not do any of the acts reserved for the owner, including making copies.

Copyright infringement attracts liability, including a claim for damages.  Trading in such infringing copies, knowing that they are so infringing, attracts both civil and criminal liability.

If any work of art is to be copied in any way, the owner of the copyright should be approached for permission to do so.

Werina Griffiths | Partner

 

[1] Copyright in artistic works lasts only for 50 years following the death of the author

WERINA GRIFFITHS

Partner | Trade Mark Litigation
Trade Mark Attorney

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GLOBAL ADVERTISING LAWYERS ALLIANCE TO HOST ADVERTISING LAW SEMINAR IN BIG APPLE

The Global Advertising Lawyers Alliance (GALA) announced today that it will hold an international advertising law seminar, “Social Media in the United States and around the Globe” in New York City on 30 March 2017. The event, which will be held at The Penn Club, is taking place in conjunction with GALA’s 15th Annual Global Meeting which is taking place in New York City from 30 March – 1 April 1 2017.

The seminar, which will focus on best practices for social media marketing compliance around the global, will include two panels, “Social Media in the USA” and “Social Media Globally.”  The program will features speakers from seven countries.

“As the issues faced by global advertisers become more complex, we’re very pleased to be able to bring together two incredible panels of experts from around the world,” said Jeffrey A. Greenbaum, Managing Partner at Frankfurt Kurnit in New York and GALA’s Global Chairman. “During these sessions, we hope to be able to give insights to advertisers that will help them market to consumers more effectively in their own countries and across borders.”

The Social Media in the USA panel will feature:

  • Laura Brett, Assistant Director, National Advertising Division
  • Joseph Lewczak, Partner, Davis & Gilbert (USA)
  • Brian Murphy, Partner, Frankfurt Kurnit (USA)

The Social Media Globally panel will feature:

  • Jenny Pienaar, Partner Adams & Adams (South Africa)
  • Ariela Agosin, Partner, Albagli Zaliasnik (Chile)
  • Irina Anyukhina, Partner, ALRUD (Russia)
  • Michel Bejot, Partner, Bernard Hertz Bejot (France)
  • Hande Hancer Celik, Partner, Gun + Partners (Turkey)
  • Peter LeGuay, Partner, Thomson Geer (Australia)

For more information about the program, click here. Admission is free, but space is limited. To register, please contact sbess@galalaw.com.

JENNY PIENAAR

Partner | Trade Mark Litigation
Trade Mark Attorney

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THE CHALLENGE OF POLICING YOUR BRAND ONLINE

Seats are limited for the Advertising & Marketing Law Conference to be held in Johannesburg on 09 May and on 11 May in Cape Town – organised by Marketing Mix Conferences.

Partner at Adams & Adams, and AdLaw expert, Jenny Pienaar has been invited to join panel discussions and to brief the audience on the challenge of policing brands in the digital space. As part of her presentation, Jenny has elected to focus on the following relevant online adlaw subjects:

Hashtags: The popularity of using hashtags as part of advertising campaigns and the advantages and risks in registering hashtag trade marks.

AdWords: The commercial value of search engine AdWords, and the use of third party trade marks as part of paid advertising strategies.

Native Advertising: A discussion on the use of native advertising and consumer perceptions relating to promoted news items online.

Hyperlinks: Copyright in online news articles, and the use of hyperlinks to acknowledge sources.

The legal experts at Advertising & Marketing Law SA 2017 have selected what they believe to be the most topical and influential issues, be it interpreting latest regulatory guidelines, and recent court precedents.

Bryanston Country Club, Johannesburg | 9 May 2017| CLICK HERE TO BOOK

Sports Science Institute, Newlands, Cape Town | 11 May 2017 | CLICK HERE TO BOOK

JennyP

Jenny PIENAAR

Partner 
Trade Mark Attorney

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SÃO TOMÉ & PRÍNCIPE | NEW INDUSTRIAL PROPERTY CODE

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

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

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

Lisa van Zuydam | Senior Associate

Mandy Swanepoel | Partner

Mandy_Gordon

Mandy Swanepoel

Partner
Trade Mark Attorney

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EGYPT | INCREASE IN PATENT OFFICIAL FEES

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

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

Nicky_Garnett

Nicky garnett

Partner – Head of Africa Patents
Attorney

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Nthabisheng_Phaswana

nthabisheng phaswana

Partner
Attorney

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ADMINISTRATION OF JUSTICE TRUMPS PROCEDURAL TECHNICALITIES IN KENYA

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

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

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

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Attorney

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SANGE APPOINTED MD OF THE KENYA INTELLECTUAL PROPERTY INSTITUTE

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

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

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

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

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

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

ARIPO | INCREASE IN PATENTS OFFICIAL FEES

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

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

Nicky_Garnett

nicky garnett

Partner – Head of Africa Patents
Attorney

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Nthabisheng_Phaswana

nthabisheng phaswana

Partner
Attorney

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THE LAW OF PROMOTIONAL COMPETITIONS | Ts & Cs APPLY

Anyone who has ever entered a competition will know these two phrases very well: “the judges’ decision is final” and “no correspondence will be entered into”. Trouble is, these may not in fact be lawful conditions because they could infringe consumers’ rights.

It might also be unlawful when organisers of a competition say, in the fine print, that they “reserve the right” to change the terms and conditions or even to suspend or cancel the competition altogether.

According to attorney Danie Strachan, under the Consumer Protection Act these well-known elements of the “Ts&Cs” that seem to apply to most competitions might actually violate consumers’ rights to “fair, just and reasonable terms and conditions”.

Strachan, a partner at Adams & Adams, has just received a doctorate in law, focussing on promotional competitions and, among other issues, the pitfalls that consumers and organisers should take care to avoid.

Strachan said since the Consumer Protection Act took effect in 2011, promotional competitions have fallen mostly under that law, though they were also still partly regulated by the legislation on lotteries. This in turn meant when there were disputes over aspects of promotional competitions, the courts would look at whether the rights of participants as consumers were properly considered and protected by the organisers.

Many charities did not realise that under the new laws they were not entitled to use promotional competitions to raise funds, and that in 2008 the Supreme Court of Appeal had actually declared a competition unlawful on the basis that it was not a promotional competition, but rather a fund-raiser for charities under the umbrella of the South African Children’s Charities Trust.

To qualify as a promotional competition, it was essential that the competition must be aimed at “promoting a producer, distributor, supplier, or the sale of any goods or services” and it cannot be conducted for any other purpose, such as fundraising.

The fact that consumers are protected under the law when they enter competitions like this means, for example, that it would be unlawful for the organisers to show a picture of the vehicle being offered as a prize and for it to turn out that the vehicle offered to the winner was something quite different. That would amount to misleading the people who entered the competition. Similarly, if the organisers said participants could “win a year’s supply of milk” it would be misleading if in fact the prize was a maximum of one litre of milk a day. To avoid legal action, the organisers must spell out precisely what was being offered as well as the terms and conditions that applied.

What about the lucky winner? – Organisers of many competitions insist that the winner be photographed and that image is then used for further marketing material. In fact however a competition rule that “requires” the winner to allow the organisers to use their photograph in this way would be invalid. The consumer who enters such a competition must always have the choice to refuse to participate in further marketing or to have their photograph taken.

Another issue dealt with by Strachan is the broader question of privacy for everyone who enters competitions. Obviously the organisers will be trying to extend the range of their marketing efforts to as many consumers as possible; but that doesn’t mean they are entitled to infringe the right to privacy of the people who enter the competition. While the law may allow suppliers to “conduct direct marketing” that complies with the consumer laws, they have to stop sending directing marketing to consumers who requests them to do so.

Will there be any serious consequences for a supplier who simply ignores the law on questions like this? Strachan points out that if the supplier won’t comply the matter could be investigated by the National Consumer Commission, either through its own initiative or following a complaint by a consumer. The commission could then issue a “compliance notice” if it believed the law had been infringed. If there was no response, the commission could apply to the National Consumer Tribunal to impose a fine. And it might be quite severe: up to R1-million or 10 percent of the offender’s annual turnover. The dispute might also be referred for prosecution, with a possible fine and/or imprisonment of up to 12 months if there is a conviction.

Strachan says all this shows organisers should be careful that they set up and run their competitions in a lawful way. “If this is not done they could face significant penalties.” But, he warned, however harsh they were the penalties would only work as a deterrent if the law were actively enforced. Thus, the National Lotteries Commission and the National Consumer Commission should monitor promotional competitions, investigate non-compliance and ensure that steps were taken against offenders. Only then would consumers be effectively protected.

For assistance in drafting promotional competition guidelines, contact Danie Strachan | Danie.Strachan@AdamsAdams.com

[Article by Carmel Rickard]

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THE COHABITATION INTERPRETATION

When asked at a recent Comic Con about the future living arrangements of their characters, Amy and Sheldon on the hit TV series The Big Bang Theory, Jim Parsons (Sheldon) quipped “Right now, there is such a new world of living together and what that means, and working that out.” 21st Century relationships come in all shapes, forms and sizes, but what are the risks of being in a long-term relationship that is not formally recognised as a lawful marriage?

“At the outset it is important to stress that there is no such thing as a common law marriage or spouse”, says Shani van Niekerk, an Associate at Adams & Adams. “The amount of time that a couple lives together does not translate into a default marriage. We’ve had clients ask us about a “six-month rule”. It’s a total myth unfortunately.”

The consequence is that at the dissolution of the relationship, or in the event that a cohabitant dies without leaving a Will, partners are left very vulnerable and without the legislative protection which married individuals enjoy. For example, when a cohabitant dies without leaving a valid will, the partner has no right to inherit under the Intestate Succession Act. A cohabitant also cannot rely on the Maintenance of Surviving Spouses Act to secure maintenance should a partner pass away. There’s no legal obligation on either person to maintain the other – meaning no enforceable right to claim maintenance from each other.

So what can you do to protect your interests in a cohabitation relationship? Shani suggests taking a leaf out of Sheldon’s script. “The only way to be protected in our law is to enter into a cohabitation agreement. Such an agreement is in the best interests of both parties in a relationship and clarifies the expectations of the partners.”

A cohabitation agreement regulates the rights and duties between partners, and could almost be compared to an ante-nuptial contract in a civil marriage. The agreement can provide for the division and distribution of assets if the relationship ends, the rights and obligations towards each other with regards to maintenance, and parties’ obligations and respective financial contributions towards the joint home. A cohabitation agreement will be legally binding as long as it contains no provisions that are immoral or illegal, however it is important to note that a cohabitation agreement will not be enforceable insofar as third parties are concerned.

In a long-term relationship where marriage is not considered or possible, a cohabitation agreement is the smart way to live together without the fear of the future. Chatting to an experienced family law attorney and getting a cohabitation agreements drawn up may help you avoid the financial risks and potential trauma of a possible break-up.

Contact Adams & Adams for help in setting up your agreement, telephone 012 432 6000 or email:

Shani van Niekerk (Associate) | Shani.vanNiekerk@AdamsAdams.com

David Scheepers (Partner) | David.Scheepers@AdamsAdams.com

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IP COMMENTARY | MAURITIUS DRAFT INDUSTRIAL PROPERTY BILL

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

A brief summary of the changes is outlined below:-

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

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

Megan Moerdijk | Partner

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GULFTEX v GULF | TRADE MARK OPPOSITION IN KENYA

In a recent decision of the Assistant Registrar of Trade Marks in Kenya, an opposition to trade mark application no. KE/T/2012/76147 GULFTEX (depicted below) in class 4 by Gulf International Lubricants was upheld.

gulftex-logo

The opposition was based on prior registrations in Kenya for the GULF trade marks in class 4, in respect of the identical goods (being oils and lubricants), and the fact that these trade marks are well-known.

gulf-logoWhen assessing the similarity between the GULFTEX and the GULF and GULF logo marks, the Registrar took into account that while marks must be viewed as wholes, marks are identical where they reproduce, without any modification or addition, all the elements constituting the mark, or where when viewed as a whole, they contain differences so insignificant that they can go unnoticed by an average consumer.

The Registrar found that the dominant element of the marks is the word GULF and that the addition of the suffix “TEX” to the word “GULF” by the Applicant is insignificant and does not enable the Applicant’s mark to act as a badge of origin for the goods in respect of which registration is sought in class 4. This was found to be due to the fact that the Applicant had admitted that the term “TEX” is borrowed from the English term “texture” which had been incorporated in the Applicant’s mark to denote that texture of the products. The term was found not to distinguish the mark.

While the Registrar again recognised that the marks must be considered as wholes, without splitting them into their respective elements, the Registrar did find that the structure of the trade mark is key when considering the similarity of the two marks and that where prefixes are identical or similar, confusion or deception is likely to occur, as compared to where the similar or identical elements are suffixes.

In an effort to distinguish the goods covered by the application as compared to the goods covered by the prior registrations for the GULF and GULF logo marks, the Applicant argued that the parties’ products had different characteristics such as colour, dropping point, the soap type, texture, temperature range and viscosity.

The Registrar held that these type of characteristics are not relevant when assessing the similarity of goods and that the test established and applied in other cases, including the case of British Sugar PLC vs James Robertson and Sons Limited, is applicable.

Contrary to what the Applicant argued, the Registrar found that the mark GULF has nothing to do with the character of goods in class 4 nor is it descriptive of such goods.

The GULF trade mark was found to be a strong mark which should be afforded protection.

With regard to the second ground of opposition, the Registrar went through the exercise of discussing all of the factors and evidence which is required in order to prove that a mark is well-known, particularly in Kenya, but found that insufficient evidence had been adduced to prove that the GULF trade marks are well-known in Kenya.

Registration of the GULFTEX trade mark in class 4 was nevertheless still refused on the basis that it is so similar to the GULF trade mark that registration would be contrary to the provisions of Section 15(1) of the Trade Marks Act, Cap 506 of the Laws of Kenya, and results in a win for Gulf International Lubricants Limited.

By Lisa van Zuydam | Associate

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‘TIS THE SEASON OF COUNTERFEITING | BRAND HOLDER REMEDIES

Dealing in counterfeit goods is unlawful as set out in the Counterfeit Goods Act no. 37 of 1997.

Brandholders who wish to protect their brands against the importation, manufacture and sale of counterfeit goods may rely on their intellectual property in the form of trade marks or copyright in order to apply for a formal search and seizure warrant.

Once the warrant has been granted, a search and seizure operation will be executed by the relevant law enforcement agencies. The counterfeit goods found at the premises will then be formally seized, transported to a designated counterfeit goods depot and securely kept as evidence.

Brandholders may elect to pursue civil and/or criminal proceedings against the infringer. The remedies set out in the Counterfeit Goods Act can be far-reaching.

During the festive period, the sale of counterfeit goods is rife and we are in a position to assist brandholders with any concerns pertaining to the importation, manufacturing and sale of suspected counterfeit goods in South Africa.

For more information, please contact our anti-counterfeiting team.

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ARIPO | 40th ANNUAL COUNCIL SESSION IN HARARE

 

 

ARIPO held its 40th Administrative Council Session in Harare, Zimbabwe from 5 -7 December 2016 . During the session,  the Administrative Council approved amendments of the Harare Protocol which regulates the filing and prosecution of patents, utility models and industrial designs. The approved amendments include new provisions regarding the following:

  • Inventions excluded from patentability
  • Requesting substantive examination .
  • Restoration of rights in respect of patents, utility models and industrial designs
  • Post grant  amendment  of the claims

The Administrative Council also approved an increase  of the  official fees in respect of patents and the introduction of new fees for certain patent related services.

We expect the  amendments  to  come  into effect from 1 January 2017. Should you require additional information on patent and design protection in ARIPO, please feel free to contact us.

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CHANGES TO TRADE MARK LAW INTRODUCED BY LIBERIA IP ACT

 

The new Liberian Industrial Property Act, 2014 (“the New Act”) was approved by the Liberian House of Representatives on 14 June 2016 and is now in force.  The new Act repeals both the Copyright Act of Liberia 1997 and the Industrial Property Act of Liberia, 2003 (“the 2003 Act”) and provides for the protection of Copyright, Trade Marks, Geographical Indications, Industrial Designs, Patent and Utility Models and lay-out designs of Integrated circuits.

The Regulations are still being drafted and there is, accordingly, still some uncertainty regarding a number of aspects.

Types of marks

Liberia acceded to the Madrid Protocol in 2009, although its national legislation did not make provision for the filing of international trade mark applications.  One of the most significant developments is that the New Act makes provision for the filing of international applications under the Madrid Protocol. Provision is also made for honest concurrent user applications, the registration of non-traditional trade marks, including colour and shape marks and Certification marks, which is defined as:

a sign that is used to indicate the specified standards or characteristics, including quality, origin or method of production, have been complied with in respect of goods or services as certified by or under the control of the holder of the registration of the mark”.

The New Act has also redefines a “collective mark” as:  “any mark that belongs to a collective organization such as a cooperative, an association or a federation of industries, producers or traders”.

Registrability and opposition

The New Act provides for a wide range of circumstances in which a trade mark cannot be registered.

After the examination of an application, the application will be published for opposition purposes and any interested person may, within the prescribed period and in the prescribed manner, file with the Director General a notice of opposition. The Act does not, however, prescribe the opposition term and no Regulations, in this regard, have been implemented as yet.  The opposition term is therefore uncertain.

Infringement

The New Act entitles the registered proprietor to prevent an unauthorised third party from carrying out the following acts:

  1. affixing an identical mark on goods in respect of which the mark has been registered, or on goods associated with the services for which the mark has been registered, or on the containers, wrapping or packaging of such goods;
  2. suppressing or distorting the mark for commercial purposes after it has been affixed;
  3. manufacturing, selling, offering for sale, distributing or stocking material bearing the relevant mark or may be used as labels, containers, wrappings, packaging, business paper or advertising;
  4. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or service, where such use may cause a risk of confusion or association with the registered proprietor, provided that were an identical mark is used in relation to the exact goods in respect of which the mark has been registered, a likelihood of confusion shall be presumed;
  5. using, in the course of trade, a mark identical or similar to the registered trade mark, in relation to any goods or services, where such use may cause unfair economic prejudice to the registered proprietor, or take unfair advantage of, dilute or otherwise be detrimental to the distinctive character or advertising value of the trade mark, or would take unfair advantage of the reputation of the mark or registered proprietor; and
  6. using publicly, a mark identical or similar to the registered trade mark, even for non-commercial purposes, where such use may dilute the distinctive character or advertising value of the mark, or would take unfair advantage of the reputation of the mark or registered proprietor.

It is interesting to note that use of an identical or similar mark to the registered trade mark, in the course of trade for non-commercial purposes may constitute trade mark infringement. The New Act also purports to protect the advertising value of a trade mark.

The New Act stipulates a number of acts which shall be regarded as use of the mark in the course of trade, including the use of a mark in oral communications, irrespective of the means of communication or media used.

The New Act sets out various acts which shall not constitute trade mark infringement, such as the parallel importation of genuine goods, provided that the goods and its packaging or wrapping have not suffered any alteration or damage.

Cancellation and invalidation of registered trade marks

According to the New Act, any interested person may request the Director General to invalidate the registration of a trade mark in relation to some or all of the goods or services for which the trade mark has been registered.  Invalidation proceedings based on prior rights may, however, only be filed within 5 years after the date of registration of a mark, unless the mark was registered in bad faith. There is no time limit on filing a request for invalidation on any other ground.

A registered trade mark may be vulnerable to cancellation if:

  1. the mark has not been put to genuine use in Liberia, in relation to the goods and services in respect of which it has been registered, within 3 years after registration of the mark, and there are no justified reasons for such failure to use;
  2. substantive use of the mark has been suspended for an uninterrupted period of three years and there are no justified reasons for such failure to use;
  3. as a result of any act or failure by the registered proprietor, the mark has become a common name or the only effective designation available for use in the ordinary course of trade in respect of the goods or services for which it is registered; or
  4. as a result of the manner in which the registered proprietor used the mark, or allows the mark to be used, the mark is likely the mislead the public, particularly as to the nature, quality or geographical origin of the goods or services in respect of which it is registered.

If use of a registered mark commenced or resumed after the expiry of the three year period referred to above and not less than one month before cancellation proceedings is instituted, the registration will no longer be vulnerable to cancellation. The onus is on the registered proprietor of the mark to show that the mark has been used during the relevant period

Well-known marks

A well-known distinctive mark shall be infringed by the unauthorised use of a mark identical or confusingly similar to that distinctive mark, where such use would indicate a connection between the goods and services of the owner of the well-known mark or the reputation of the mark or its owner is likely to be damaged by such use.

The Act lists the following factors which shall be taken into consideration to determine whether a mark is well-known:

  1. the degree of knowledge of the sign among members of the relevant sector of the public within Liberia;
  2. the duration, scope and geographical extension of the use and/or promotion of the mark, inside and outside of Liberia;
  3. the existence and age of any registration or application for the mark in Liberia or elsewhere;
  4. actions taken to defend the mark, in particular any decisions made by national or foreign authorities, where the mark was considered to be well-known; and
  5. the amount spent on promoting the mark, the establishment, activity or relevant goods or services to which the mark applies.

The New Act expressly states that a mark will be considered to be well-known if it is generally known in one relevant sector of the public. The various relevant sectors of the public are referred to as:

  1. actual or potential consumers of the relevant type of goods or services;
  2. persons involved in marketing or distribution channels of the relevant type of goods or services; or
  3. the entrepreneurs in the business circles relating to the relevant type of goods, services, establishment or activity.

Licensing and assignment

Licensing of a registered trade mark is recognized and licence agreements must provide for the effective control by the licensor, of the quality of the goods or services of the licencee in connection with which the mark is used. If the agreement does not provide for such quality control, or such control is not effectively carried out, the agreement will be invalid.

Assignments shall be in writing and duly executed.

by Lize-Mari van Dyk | Associate

EU IP DEVELOPMENTS AND THE IMPACT OF BREXIT FOR HOLDERS OF EU IP RIGHTS

EU IP DEVELOPMENTS

A number of changes, which came into force on 26 March 2016, were made to the EU Regulations, affecting EU trade marks and designs.

The Office for Harmonisation in the Internal Market (OHIM) is now known as the European Union Intellectual Property Office (EUIPO) and a Community trade mark (CTM) is now referred to as a European Union Trade Mark (EUTM).

Article 28 of the Regulations provides that trade marks registered for class headings will now only be protected for goods/services that fall within the literal meaning of the goods/services listed in the class heading (and any other goods/services specifically listed). This will severely limit the scope of protection of some EU trade marks and trade mark proprietors will now no longer be able to claim wide rights in an entire class heading. Owners of EU trade mark applications/registrations filed before 22 June 2012 and which were filed covering the broad class headings were allowed to amend their specifications to use more specific/precise wording by submitting a written Declaration between 23 March 2016 and 23 September 2016, in line with the requirements of the EU Regulations. No extension of the deadline of 23 September was allowed. The Regulations provide that the Declaration would be examined and published in the EU Bulletin. If no acceptable Declaration was filed in time, proprietors’ EUTM registrations are deemed to protect only the goods/services covered by the literal meaning of the class heading.

Changes to fees payable for trade mark applications were also implemented after 23 March. The official fee to file one application now only covers one class, where it previously covered up to 3 classes. A number of changes were also introduced regarding the enforcement of EUTM applications but I will not detail any here.

The Regulations also provide that “in order to allow for more flexibility while also ensuring greater legal certainty with regard to the means of representation of trade marks, the requirement of graphic representability should be deleted from the definition of an EU trade mark. A sign should be permitted to be represented in any appropriate form using generally available technology and thus not necessarily by graphic means, as long as representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective“.  The removal of the graphic representation requirement should make it possible to apply for the registration of non-traditional trade marks in the EU.

The European Commission has expressed clear intentions to reform and harmonise copyright law across the EU in terms of its Digital Single Market Initiative. It has been submitted that this will be the EU’s most significant copyright reform. On 14 September 2016, the President of the European Commission, Jean-Claude Juncker, at his State of the Union Address, addressed problems with current EU copyright laws. The most controversial of the proposals is a new reform to provide publishers with rights already afforded to authors, performers, film and record producers (similar to current copyright laws) for online use of their news publications, so that they would be fairly remunerated for their work made available online. The proposal would also allow publishers to benefit from possible future restrictions to hyperlinking, following the recent CJEU decision in GS Media BV v Sanoma & Others.  The idea is to allow publishers to secure license fees from search engines and other intermediaries who use their content for up to 20 years from publication and to place extra obligations on them for when users and third parties upload infringing content.

The proposed reforms have been welcomed by many news and media agencies, saying the proposal has addressed the unsatisfactory situation whereby high quality content produced by press publishers contributes to the success of many online platforms that do not make a significant contribution to the content and where publishers do not benefit from an appropriate share of the value produced. However, the proposals have also been heavily criticised and petitioned by many who feel that they are more of a regression in the digital area (rather than amounting to reform) and will have the effect of limiting access to information and/or increasing the price of content online.

Mozilla, the creator of internet browser Firefox has stated that the proposals will create an environment of legal uncertainty for online users/businesses and result in blocking of freedom of speech and innovation online and create unnecessary barriers of entry for small businesses. They also stated that clauses relating to fair dealing or fair use in a clearly defined way should have been included in the proposals and that it is up to the European Parliament and EU member states to review the proposals and make amendments. OpenMedia.com have said the proposals strike a blow at the very foundations of an open internet and if made law, the EU will fall behind when it comes to digital innovation. Concerns have mounted that what will follow will be similar to what happened in Spain when the introduction of a similar law led to the closure of many businesses who relocated to countries and markets outside of the EU. There are clear competing interests at hand but nevertheless, Mr Juncker expressed on 14 September that the EU Commission is on track to implement the reforms by the end of this year.

IMPACT OF BREXIT FOR HOLDERS OF EU IP RIGHTS

There is a general consensus that the UK’s decision to exit the EU has and will continue to affect how clients do business across various sectors in the UK and EU.  While we may have already witnessed some economic effects, we are yet to see the long term consequences that Brexit will have on the UK’s trade, imports and exports, banking and financial services, various areas of the law, etc. It is impossible to cover all the likely ramifications relating to Brexit in a simple article but I will say that the legal consequences are likely to develop and materialise over some length of time. Here, I discuss the possible impact Brexit may have on intellectual property rights, with a particular focus on trade marks.

Currently, a single trade mark application filed in the EU (EUTM) provides protection in 28 member countries of the EU, once it has proceeded to registration.  A registered community design (RCD) is similar in that it also provides protection in the EU by way of a single registration.  Brexit will not affect UK national trade mark and design registrations.  However, Brexit has sparked concerns regarding clients’ trade mark and design rights in the UK where they secured protection via an EUTM or RCD. In a recent Adams & Adams article by Claire Bothma and Simon Brown (dated 24 June 2016), it was stated that in the short term, a UK exit from the EU will have no effect on existing EUTM registrations but that once the UK’s withdrawal from the EU has been ratified, we believe that current EUTM registrations would no longer cover the UK. The article also states that we expect that appropriately enacted legislation will be implemented to ensure that such rights continue to have force in the UK and that there will likely be transitional provisions available to partially convert existing EUTM registrations into UK national trade mark registrations, which may also enjoy the same (earlier) filing dates.  As such, the mentioned article provides that, for now, clients’ trade mark rights in the UK, covered by an EUTM registration, appear to be secure.

However, uncertainties do remain until the UK formally exits the EU.  We hope that transitional arrangements will be implemented to partially convert registered EUTMs to national UK trade mark registrations, at the UK Trade Mark Office, while preserving their original filing dates, but there is speculation that this would be an enormous administrative undertaking and may not be feasible.  By contrast to EUTM applications, a national UK trade mark application requires the applicant to declare either that the mark is in use or that the applicant has a bona fide intention to use the mark in the UK.  As such, the UK Trade Mark Office might require proof of use before EUTM registrations can be converted into national trade mark registrations in the UK (if they are vulnerable to a non-use attack).  There are also questions regarding the validity of registered EUTMs whose geographical use is specific to the UK.  With regard to the latter, proprietors of registered EUTMs who have used their trade marks only in the UK for now, should consider operating in other EU member states to avoid cancellation actions on the basis of non-use.

As a result of the uncertainties present and in order to minimise any risks during the transitional period (where negotiations to exit the EU may be a lengthy process), it is advisable that owners of EUTM registrations which consider the UK to be an important market, to consider filing national UK trade mark applications now, rather than wait and see what happens when the UK formally exits the EU. One could also consider applying to extend an existing International Registration (in terms of the Madrid Protocol) to the UK, if that country was not originally designated at the time of filing an International Registration. For any new trade marks requiring protection, I recommend filing in both the EU and UK, if both territories are important to clients’ businesses.

By virtue of its current EU membership, the UK enjoys benefits of various Free Trade Agreements (FTAs) that the EU has negotiated with third countries, including the U.S.A.  The free movement principles currently provide that most goods can be traded and moved between EU member states without tariffs and customs duties, irrespective of the origin of the goods.  It has been submitted that after the ratification of Brexit, there is a strong likelihood that the UK will lose those benefits and will have to re-negotiate its own FTAs with various countries, separately from the EU, at the same time that it negotiates its withdrawal from the EU.  This will undoubtedly have an effect on clients’ UK IP rights as anything influencing trade, generally, influences IP rights.

Current EU legislation provides that judgments of a court in one EU country will generally be recognised in another EU country.  Having regard to the UK’s close relationship with the EU for many years, there has generally been a gravitation towards a “European” interpretation of its laws.  Now, the question is how will English judgments be treated post Brexit? Will there be a movement away from a “European” interpretation of the law?  Currently, it is not clear to what extent EU principles and laws will continue to apply in the UK.  Some commentators have advised that, in general, EU laws will no longer apply in the UK unless they have been implemented in the UK by Acts of Parliament.  Some commentators have expressed the view that if the UK remains part of the European Economic Area (EEA), most of the UK’s intellectual property laws are likely to stay closely aligned with EU law but if the UK steps out of the EEA, its laws may begin to depart from EU law over time. Clients enforcing their IP rights will most likely need to initiate proceedings in the EU and UK separately, once the UK formally withdraws from the EU, which will increase IP enforcement costs.

Since some of the UK’s copyright law is based on international Conventions (such as the Berne Convention and WIPO Copyright Treaty), the UK’s copyright law should remain unaffected by Brexit and it is unlikely that the UK will repeal its national copyright legislation (i.e. the Copyright Designs and Patents Act 1988).  In this regard, it has been submitted that the UK will retain EU law influences derived from the EU Copyright Directive and decisions of the CJEU (Court of Justice of the European Union). In the long term, however, UK copyright law might start to diverge from EU law.  This remains to be seen.  It is currently uncertain whether or not the UK will be involved in the EU’s Digital Single Market initiative (mentioned above).

UK patent law is based on national UK legislation, in the form of the Patent Act 1977.  Currently, patent applicants may secure protection for their inventions in the UK in 2 different ways: a) by filing a national patent application at the UK’s Intellectual Property Office (IPO) or b) by filing a European patent application at the European Patent Office (EPO).  On 2 August 2016 the IPO published its first official Statement since the EU referendum regarding the impact of Brexit on IP rights in the UK. The primary message in the Statement is that the UK remains a part of the EU until the negotiations to exit are concluded. Regarding patents, the IPO confirmed that the UK will remain part of the European Patent Convention system since this Convention was not established through EU legislation. As such, it will still be possible for applicants to apply for European patents designating the UK via the European Patent Office.  However, the UK’s involvement with the EU’s proposed unitary patents and Unified Patent Court (UPC) system has been the topic of much debate since the Brexit vote.

The EU member countries have spent over 40 years trying to establish a unitary patent that would cover multiple EU countries and a common Court for patent disputes. This, to simplify patent processes and reduce costs for businesses. Twenty five of the EU states signed the Unified Patent Court Agreement (UPCA) in 2013 in this regard. It was required for the UPCA to be ratified by 13 countries (including the UK) in order for the Agreement to come into force. 10 countries have ratified the Agreement so far and it was expected that the UK would do so before the end of 2016 and that the new unitary patent system would come into force in early 2017.  After the EU Referendum vote, much speculation followed as to whether the proposed unitary patent and UPC would happen at all (as the UK was a required signatory to the agreement and one of the countries needing to ratify the UPCA for it to come into force) or whether it would be delayed. Another question raised was whether the remaining UPC countries would possibly re-negotiate a new UPC Agreement specifically excluding the UK. On 2 August, the IPO advised that for now, while the UK is still a member of the EU, it will continue to participate in meetings regarding the proposed unitary patents and Unified Patent Court (UPC) system.  The Chartered Institute of Patent Attorneys (CIPA) has indicated a strong preference for the UK to participate in the proposed Unified Patent Court.

On 13 October 2016 at the London IP Summit, Alexander Ramsay (the chair of the UPC Preparatory Committee) said that delays to implement the UPC System on account of Brexit should be avoided and that the UK government should make a swift decision as to whether it still wants to be part of the UPC or not. He confirmed that the UPC will continue regardless of whether the UK participates or not and that if the UK opts out of the UPC, or cannot provide a definitive answer, the agreement would have to be re-negotiated. Another panellist at the summit, Dr Ben Grau (patent attorney), advised that he believes it could be up to 5 years before a decision is made and a solution is reached. It seems there will only be clarity on the issue once the UK formally withdraws from the EU and all Brexit related negotiations have been completed.

Various contracts involving IP rights such as, inter alia, license agreements and manufacturer and distribution agreements will need to be reviewed by clients in terms of Brexit implications, e.g. whether to identify the UK separately from the EU in certain clauses and whether to specifically identify UK laws associated with IP enforcement. If negotiating new contracts, clients should consider whether provisions should be included to cover the transitional period and likely changes after the UK’s formal withdrawal from the EU.

On 8 June 2016 following a proposal from the European Commission, the European Parliament and the Council adopted a Trade Secrets Directive that aims to standardise the national laws in EU member countries against the unlawful acquisition, disclosure and use of trade secrets. According to the European Commission, “a trade secret is a form of intellectual property that is a valuable piece of information for a business that is treated as confidential and which gives that business a competitive advantage”. Member states of the EU are required to implement the Trade Secrets Directive by 9 June 2018.  Following the Brexit decision, it is now unclear if the UK will implement domestic legislation to enforce the Trade Secrets Directive by the abovementioned deadline.

Brexit should not affect the UK’s membership of the World Intellectual Property Organisation (WIPO), set up under the WIPO Convention.

The UK and EU are also members of the World Trade Organisation (WTO) in their own right but the European Commission alone represents the EU and all EU member states (including the UK) in practically all WTO meetings. As such, the influence of Brexit on the UK’s membership of the WTO and how the UK will engage in future meetings will now need to be addressed.

Although EU intellectual property laws will remain in effect until the UK formally withdraws from the EU (i.e. at least another 2 years away), clients (including South African businesses) should be mindful of the anticipated changes in securing and maintaining their IP rights in the UK.  Feel free to contact us should you have any questions relating to the above.

By Catherine Wojtowitz | Associate

 

 

 

INTRODUCING | ADAMS ON AFRICA

Adams on Africa is a new quarterly digital publication by Africa’s largest IP firm and one of the continent’s most prestigious commercial, corporate and property law practices. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback.

Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

 

STARTING A NEW CONVERSATION

Africa’s Time Waits For No One. That’s the statement of fact and spirit that pivots the recently-launched advertising and marketing campaign of Adams & Adams – Africa’s largest intellectual property law firm and one of South Africa’s foremost corporate, commercial and property practices.

In introducing the new campaign to staff and clients, Partner and Chairman, Gérard du Plessis described the thinking behind the statement and the imagery; “The pace of development and growth in Africa is startling and exciting. It’s no longer a case of whether Africa is ready, but rather a proclamation that Africa is not waiting for you anymore – so let us help you get moving. We’re already representing around 240 Fortune 500 companies with their African success stories – both commercially and with their intellectual property portfolios.”

The expression “Africa’s time waits for no one” is intended to turn an often-used and cynical idiom about “African time” on its head, and is designed to initiate a discussion about what South Africans, as Africa citizens, are doing to promote Afro-optimism and be part of economic and social prosperity on the continent. “Interestingly, this theme originated through our involvement as sponsors of the King IV report on corporate governance,” adds du Plessis. “The question of good corporate citizenship is central to King IV and forces firms such as ours to not only be responsible in our business dealings, but to also be a positive force for change on our continent.”

Celebrated illustrator, Kerby Rosanes, was commissioned to draw recognisable African animals and features in his trade mark pencil vector style. “The unique drawings that accompany each campaign posters are a reference to our African roots – but each image is then given a dramatic twist,” explains Head of Marketing, Natalie Stephan, “Each drawing is given a geometric treatment that offers the impression that there is an explosion of energy and success out of a carefully planned stage – we want to show our audience that business success in Africa is never an accident, it is a planned evolution – and Adams & Adams, through our experience and attitude, can be a keystone of that design and plan.”

The new advertising campaign is currently flighting on billboards along the N1 and M1 highways, as well as on digital boards in Sandton and at certain Gautrain stations. A print advertising campaign is more expansive in its messaging and includes a central tagline “Helping you write your African Success Story.” The verb “write” is interchanged with other words such as “protect”, “create”, “design”, “cultivate” and “share”, depending on the practice area that is in focus.

Gerard_Du Plessis

Gérard du Plessis

Partner & Firm Chairman
Trade Mark Attorney

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AFRICA | REGIONAL HIGHLIGHTS

Dr Kanayo Nwanze, President of  the International Fund for Agricultural Development, recently opened the Africa Together Conference at Cambridge University with the question: “When more than three hundred million men, women and children still live in poverty on the African continent, a land with so much wealth and potential, we must ask ourselves what our role (as Africans) is in engendering an inclusive Africa? Development starts with people, not structures. We must invest in our people.”

More than 8 000 miles to the south of the Africa Together Conference, the delegates at the Africa Network Meeting in Pretoria were tackling a similar question – how to preserve the legacies and intellectual capital of Africa for Africans.

Renowned actor, director, writer and playwright, John Kani, welcomed the intellectual property law professionals who had gathered for the 4th Africa IP Network Meeting at the offices of Adams & Adams in Pretoria. Kani, who was opening the meeting as guest speaker, captivated the audience with stories of his upbringing and his time in Hollywood – including his latest role as an African monarch in Marvel’s Captain America film franchise. “I was cast as an African monarch in a fictional North-African kingdom and I asked them very nicely whether I could speak Xhosa, instead of that ‘Tarzan’ dialect that Hollywood loves so much,” he joked. “We need to think carefully about how we protect and advance our continent’s rich history, legacy and inherent intellectual property.” It was a sobering thought for the delegates. Adams & Adams has been particularly active in the area of Legacy Intellectual Property rights, with recent work being undertaken for the Steve Biko Foundation by Partner Darren Olivier and his team.

In welcoming the attendees, both Gérard du Plessis, Chairman and Simon Brown, Partner, stressed the importance of IP law professionals and IP administrators in sharing their experiences and updates on IP developments and legislation as the firm and its associated offices continue to develop best practice IP strategies for clients.

Then it was down to business as the meeting discussed and debated industry matters such as IP commercialisation, the handling of opposition IP proceedings in multiple jurisdictions, and registry practices and search capabilities.

High on the agenda was the issues currently being experienced with the Madrid Protocol – a system of international registrations, administered by the World Intellectual Property Organisation that allows for the centralised registration and management of trademarks. Of the 37 African territories who are currently members of the Madrid Agreement/Protocol, only seven have properly “domesticated” the protocol through appropriate amendments to their national trademark legislation, together with the implementation on enabling regulations.

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

Strategies to deal with Madrid, as well as the current implementation of the Industrial Property Automation System in registries across the continent, were also discussed, followed by regional updates from Associates from offices in Egypt, Ghana, Tanzania and Zimbabwe.

Queries regarding trademark, patent, design and copyright registrations, prosecution and litigation in Africa should be directed to mail@adamsadams.com  or through the website www.adamsadams.com

REGIONAL HIGHLIGHTS

NORTH AFRICA

Egypt

The Ministry of Supply and Internal Trade introduced a new system of enforcing the protection of trademarks and of limiting infringements. Through a smartphone application or text message, consumers will be able to verify instantly whether or not a particular product is genuine. The verification message would include the product’s name and expiration date. Trademark owners are able to place a sticker on all products that are sold in the Egyptian market and are registered with the Egyptian Trademarks Office.

Egypt’s Ministry of Trade and Industry also amended the rules overseeing the registration of factories qualified to export certain products to Egypt. The new decree requires factories and companies to export listed products and to register their trademarks with the General Organisation for Export and Import Control (GOEIC). egypt@adamsadams.com

Algeria

The North African state of Algeria became a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in the fourth quarter of 2015. It gives a trademark owner the possibility of having a mark protected in several countries by simply filing one application with a single office. Brand owners in Algeria will also benefit by gaining access to the territories covered by the Madrid Protocol for international trademark protection. However, Megan Moerdijk, Partner at Adams & Adams, encouraged brand owners to consult with her office first as the effectiveness of the Madrid Protocol – particularly referencing enforcement – has not yet been fully tested in Algeria. algeria@adamsadams.com

Tunisia

Tunisia became one of the latest African territories to ratify the WIPO’s Beijing Treaty on Audiovisual Performances. The Beijing Treaty on Audiovisual Performances, adopted in June 2012, deals with the intellectual property rights of performers in audiovisual performances. It grants performers four kinds of economic rights for their performances fixed in audiovisual fixations, such as motion pictures: 1. The right of reproduction. 2. The right of distribution. 3. The right of rental. 4. The right of making available. tunisia@adamsadams.com

Morocco

Effective March 2016, the official fees for trademark applications submitted online has been increased by 20%. Renewal official fees have also been increased by 20%. morocco@adamsadams.com

EAST AFRICA

IP developments in East Africa, especially the EAC will be significantly shaped in the near future by implementation of the EAC Customs Union protocol which permits free movement of goods. More countries in the region are adopting border measures to curb counterfeits, but brand owners need to remain vigilant, not only in registering IP rights, but also changes in user licenses or distribution agreements.

Kenya

In May 2016 the International Convention for the Protection of New Varieties of Plants (UPOV Convention revised in 19 March 1991) entered into force in Kenya. Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member in 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya through Seed and Plant Varieties Act Cap 326.

Kenya’s Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs). With regard to assignment and licenses, the draft seeks to modify the procedure for verification of assignment of copyright works from outside Kenya. The proposed procedure requires KECOBO to issue a certificate of verification upon successful application for verification with necessary supporting documents. Thereafter, the verified assignment shall be entered in the Copyright Register upon payment of a registration fee as set out in the Second Schedule. For queries in this regard, email kenya@adamsadams.com

Ethiopia

The Council of Ministers Regulation No. 273/2012 of December 2012 on Trademark Registration and Protection brought into force changes such as the application of cancellation and invalidation procedures and the extension of the renewal period from six to seven years. Priority claims are now recognised and the international classification of goods and services will be followed. ethiopia@adamsadams.com

Uganda

The Industrial Property Act, 2014 for patents, utility models, technovations and industrial designs is undergoing a review with respect to the employee/employer relationship on inventions. uganda@adamsadams.com

Tanzania

A new Industrial Property Act is being developed that will ensure the consolidation of patents and trademarks, and include industrial designs and trade secrets. tanzania@adamsadams.com

Rwanda

Rwanda became a member of the Madrid Protocol in 2013 and the IP registry is expected to be ready to start receiving and implementing new applications using the Madrid System. Related to this, Rwanda has also started using an Industrial Property Automation System, which has made filing of trademarks and patents easier and faster, while automatically keeping record of all applications submitted. Clients are encouraged to email rwanda@adamsadams.com for assistance and details of the effectiveness of the Madrid system in Rwanda.

WEST AFRICA

Ghana

Ghana has amended its Trademarks Act and has expanded the meaning of a “trademark” to now include: “…colours, numerals, shapes, holograms, sounds or a combination of any of these elements, or slogans, where they are not long enough to be protected by copyright”. The Trademarks Registry has not yet, however, recorded any applications to register sounds or holograms. ghana@adamsadams.com

The Gambia

Adams & Adams continues to synergise and expand its African network. Sub-saharan Africa’s largest intellectual property law firm, Adams & Adams, recently established an Associate office in The Gambia which also services Liberia and Sierra Leone. This brings to 18 the number of associated offices in different African countries that form part of the Adams & Adams Africa Network.

“Our focus has always been to add exceptional value to our clients’ experience,” says Simon Brown, Partner and Chair of the Africa IP Committee. “We target strategic associations with firms whose work ethic and standards mirror those of our own. At the heart of this approach is a desire to enhance the experience for the client and to add a high level of comfort to clients in knowing that the matter will be handled the same whether in South Africa or at our Associate firms. High standards are expected of our offices and we ensure continued adherence by a rigorous due diligence process that each Associate firms must undergo. Our strategy remains to empower our Associate offices by exposing them to our lawyers’ vast legal knowledge accumulated over the 109 years that Adams & Adams has been in operation.” thegambia@adamsadams.com

Nigeria

This year, Nigeria passed the Cybercrimes Act, which paves the way in finding solutions to the upsurge of cybersquatting and other internet offences that are currently increasing by the day in Nigeria. The Cybercrimes Act specifically criminalises the act of cybersquatting and therefore makes it an offence to register or use an internet domain name with bad faith i.e. with an intent to profit from the goodwill of a trademark belonging to someone else or to make a profit by selling the domain name to the rightful owner. nigeria@adamsadams.com

SOUTHERN AFRICA

Mozambique

The Mozambique Industrial Property Code was recently approved by Act No. 47/2015 – the most significant IP legislative development in the past decade. The code establishes specific rules applicable to the protection of industrial property rights, and defines the rights and obligations arising from the granting of intellectual property rights. mozambique@adamsadams.com

Zambia

Zambia has passed into law the new Industrial Design Act No. 22 of 2016 repealing the Registered Designs Act of 1958. The new Design Act came into force on 6 June 2016. Some of the new provisions contained in the new act are as follows:

  • Worldwide novelty requirements;
  • Grace period and exceptions in respect of disclosure of the design in order to comply with novelty requirements;
  • Restoration of rights lost due to non-payment of maintenance fees;
  • Amendment of a design application; and
  • Opposition of design registration by a third party, including the state.

The new act also introduced changes in respect of the term of a registered design. The 1958 Act provided for a registration term of five years extendable upon payment of renewal fees for two further five-year terms. According to the new act, the term of registration is five years from the filing date, renewable upon payment of renewal fees for a further period of five years. Furthermore, while the 1958 Act made provision for a foreign filing licence in respect of new foreign design applications by a person ordinarily resident or domiciled in Zambia, the 2016 Act is silent in this regard. zambia@adamsadams.com



ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

 

PURE WATER ON TAP

 

POWER TO THE PUBLIC | AN INTERVIEW WITH ANDREW MOLVER

On 31 March 2016, the Constitutional Court of South Africa ruled unanimously in favour of the applicants in the matter regarding Nkandla, President Jacob Zuma’s homestead, as well as the powers of the Public Protector. Andrew Molver, Partner at Adams & Adams, offers his insights into this pivotal ruling.

Q: As attorneys of record for the Public Protector, what role does Adams & Adams play in the functions of her office?
A: The Office of the Public Protector is equipped with a highly skilled staff complement that manages any legal matters it’s faced with. Generally, we’re only instructed upon the anticipation or institution of formal proceedings. In that regard, our primary role has become one of defending the reports issued, findings made and remedial action taken by the Public Protector.

Q: From a personal point of view, what has it been like to work with the former Public Protector, Adv Thuli Madonsela?
A:
Working with the Public Protector has been by far the greatest highlight of my career. One of the greatest lessons I’ve learnt from her is how she remained determined to ascertain a proper definition of the Public Protector’s powers throughout the Nkandla debacle. She remained focused on helping the “Gogo Dlaminis” of the world, as she calls them, when she could quite easily have become consumed and distracted by the highly politicised and sensationalised nature of the ordeal. Even in those trying circumstances, she was steadfast in her commitment to the helpless and to leaving a legacy of empowerment to her successors by upholding the powers of her office.

Q: The powers of the Public Protector were challenged well before the Nkandla saga. How did this start?
A: The question of whether or not remedial action taken by the Public Protector is binding first arose in relation to the remedial action taken by the Public Protector in 2014 regarding the SABC and then acting-COO, Hlaudi Motsoeneng. The SABC and related parties argued that they were not bound to give effect to the Public Protector’s remedial action taken and, as they had procured an opinion from an independent law firm which cleared Motsoeneng of any wrongdoing, concluded that the findings of the Public Protector were incorrect.
In proceedings initiated by the DA as a result of the SABC’s conduct, we argued that remedial action taken by the Public Protector is legally binding and places an obligation on the subject of the remedial action to give effect to it unless and until it is reviewed and set aside by a court of law. Regrettably, the High Court did not find favour with this argument and took the view that remedial action by the Public Protector is not binding.
Fortunately, in its judgment of October 2015 in the SABC case, the Supreme Court of Appeal (SCA) set the record straight and found that remedial action taken by the Public Protector is indeed valid and binding until reviewed and set aside by a court of law and that, absent any such review, a subject of such remedial action is obliged to implement it, and cannot disregard it.

Q: Why was the Public Protector never a main applicant in either the Nkandla case or in matters beforehand? How did this help the Public Protector’s standing?
A: The SABC matter was launched by the DA, which cited the Public Protector as a respondent in the matter. The so-called Nkandla applications were launched by the EFF and the DA respectively. While the DA cited the Public Protector as a respondent, the EFF omitted to do so, which required us to apply to the Constitutional Court to intervene as a respondent in the EFF’s application.
We found it preferable for the Public Protector to be in the position of a respondent as this enabled her to abide the relief sought, as opposed to having to seek it directly, as an applicant would. This was more in keeping with the politically neutral position occupied by the Office of the Public Protector and allowed the Public Protector to avoid being drawn into the political war being waged through the litigation. In addition, by not being preoccupied with seeking the enforcement of her remedial action, the Public Protector was able to focus her submissions on obtaining a proper interpretation of her powers, which would significantly outlast any particular remedial action that formed the focus of either the SABC or Nkandla matters.

Q: Your team referred to the “Oudekraal” matter in written submissions. What is this and why was it relevant?
A: “Oudekraal” refers to the well-established principle (deriving from the matter of Oudekraal Estates (Pty) Ltd v City of Cape Town) that until a decision of an administrative nature is set aside by a court in proceedings for judicial review, it exists in fact and has legal consequences that cannot be overlooked. In its judgment in the SABC matter, the SCA found this principle to apply to reports issued and remedial action taken by the Public Protector, even if the Public Protector isn’t a typical public functionary or body, as the underlying principles arguably find greater application in her context.

Q: The Nkandla matter found that the Public Protector was correct in her assessments that the President was required to pay for a portion of the upgrades that took place at his homestead. More importantly, it confirmed the powers of the Public Protector as a Chapter 9 institution. What are those powers?
A: In essence, the Public Protector’s direct constitutional powers enable her to investigate irregular conduct in state affairs or public administration, to report on that conduct and to take appropriate action.

Q: What ideologies or approaches differentiate Adams & Adams from other commercial law firms?
A:
We try to approach our admin and constitutional matters by retaining a strong focus on why the matter is important to the client. This isn’t always obvious and often various considerations are involved. For example, in the SABC and Nkandla matters, it would have been tempting to enter the fray by siding with one of the political parties involved and attempting to enforce the remedial action in question. But what made the matters important to the Public Protector went beyond that. As mentioned, a proper definition of the powers of her office held far greater value. Apart from the objective to define the Public Protector’s powers, it was also important that she did not compromise the independence of her office thereafter. We also have a firm commitment to litigating in a manner which we believe upholds the Constitution and ensures that good law is made in its interpretation and application.


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

Andrew_Molver

Andrew molver

Partner
Litigation Attorney

View Profile

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

On 6 July 2016, the Intellectual Property Consultative Framework was approved by Cabinet, following the Draft National Intellectual Property (IP) Policy that was published for comment in 2013. Dr Charleen Rupnarain, Associate at Adams & Adams, delves deeper into what it means for intellectual property in SA.

The framework is the first step in a new process to develop a comprehensive IP policy for South Africa. Feedback from the previous Draft IP Policy focused on a lack of recognition of public comments and the new framework takes cognisance of this and seeks to remedy it by finalising the policy in a co-ordinated approach between both government and society.

The framework sets out that the IP Policy should promote the following objectives:

  • Engender the ethos of the Constitution
  • Align SA’s IP regime to the National Development Plan and industrial policy
  • Develop a co-ordinated intergovernmental approach to IP
  • Strike a balance between the creators and users of IP
  • Stimulate innovation
  • Facilitate developing key industries while balancing public interest
  • Adopt a co-ordinated approach to IP in sub-regional, regional and international forums
  • Promote public health

The new framework also recognises that there are a number of issues that will be affected. Key issues have been divided into “immediate”, “medium-term” and for “monitoring and evaluation” in order to prioritise urgent issues over ones that may require more in-depth consideration. IP issues surrounding public health (including medicines, vaccines and diagnostics) have been classed as an immediate priority in finalising the new policy, and the following are listed as immediate issues to be dealt with in the new policy:

  • Local manufacture and export in line with industrial policy
  • Substantive search and examination of patents
  • Patent opposition
  • Patentability criteria
  • Disclosure requirements
  • Parallel importation
  • Exceptions
  • Compulsory licences
  • IP and competition law

The framework also provides for the establishment of an Inter-Ministerial Committee (IMC) as an urgent need. Initually, this committee will serve as a consultative forum for formulating the IP Policy. With respect to the immediate concern of substantive search and examination of patents, the first group of twenty patent searchers and examiners has already been appointed and begun the two-year training programme. The goal is that training will be completed by December 2017 and that substantive search and examination will begin in January 2018, following the enactment of the IP Policy.

The CIPC aims to repeat this recruitment process every two years with candidates from technical fields, such as chemistry, biochemistry, biotechnology, electrical engineering, mechanical and mining engineering, pharmaceuticals, and information technology. It’s been proposed that initially substantive examination of patent applications will only be in respect of certain technical fields.

The Department of Trade and Industry provided the deadline of 30 September 2016 for the public to submit comments. See A&A Comments HERE. Following this, there’ll be continuous engagement between government and the public, including round-table discussions and workshops. The goal is that the IP Policy, which will address immediate issues and provide a framework for in-built agenda, will be finalised by March 2017.


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

OIL PRICE IMPACT ON AFRICAN ECONOMIES

A sharp decline in oil prices since 2014 has had a marked effect on African economies. Of the continent’s four major oil and gas exporters, Nigeria has been the most affected, and has instituted strict capital control measures to address the country’s depleting foreign currency reserves. According to World Bank estimates, crude oil sales fund up to 75% of Nigeria’s budget. 90% of Africa’s natural gas production comes from Libya, Algeria, Egypt and Nigeria.

According to World Bank Development Economics Prospects Group (DECPG) Senior Economist Gerard Kambou, “Sub-Saharan Africa’s oil exporters, which account for nearly half of the regions aggregate output, have been hit hard by the sharp decline in the price of oil.”

While there has been no major surge in business investment or consumer spending, some analysts suggest that the current slump in the industry may be an opportune time for re-invention.

In the PwC African Oil & Gas Review, organisations identified the price of oil and natural gas as “the most significant factor that would affect their companies’ businesses over the next three years”.

PwC Africa Oil and Gas Advisory Leader Chris Bredenhann believes that there are opportunities in the sector.

“It is an opportune time for local governments that want to attract oil and gas investors to reform their regulatory, fiscal and licensing systems… Change is the way to survive in the ‘new energy future’. We need to see new business models, new products, new energy sources and new strategies to meet the new reality.”

Although most African economies are not dependent on oil, the price of oil does have a direct effect on major industries. In South Africa, for example, commodity prices affect the viability of industry and development, so fluctuations in fuel prices can influence operating costs.

Frost & Sullivan Africa Senior Economist and Programme Manager for Mobility Craig Parker says the impact is variable.

“The impact on business will vary depending on the level of fuel dependence on the value chain of the sector. The lower oil price combined with the volatility in the rand is resulting in minimal impact on lowering the fuel price. If the rand would strengthen, it will lower logistics costs for many businesses. The sectors that would be most significantly impacted would be the transport, fast-moving consumer goods (FMCG), retail and mining industries.”


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP

ADDLED BY THE INTERWEBS

Can you use a competitor’s brand name as your Google Adword? There is an answer to this oft-asked question and, as one would expect from a legal standpoint, it’s: “Yes, but…”

The Supreme Court of Appeal recently had to decide whether M-Systems Group’s use of its rival’s trademark ClearVu amounted to passing off. Cochrane Steel Products, the proprietor of the ClearVu mark, had traded in high-density mesh fences under its brand since 2008. At the time of instituting proceedings though, it did not have registered trademarks. It accordingly relied on the common law remedy of passing off.

To succeed, it had to show that it had a reputation in the mark ClearVu, and that M-Systems’ use of ClearVu as an Adword would be likely to cause confusion about whether the parties or their goods were related, or came from a common source.

Although Cochrane ticked the reputation box, it fell short in demonstrating that consumers were likely to be confused. The court found that we’re a savvy bunch of Internet users, and that when confronted with Internet search results, we’re used to “separating the wheat from the chaff”. Doing so is an easy exercise as the advertisements are clearly indicated and often positioned on another part of the screen. Even in the event of an unlikely foray onto an advertiser’s page, a consumer would quickly be able to spot their blunder. For those reasons, the court saw no likelihood of confusion arising.

So, where does the “but” come in? Well, Cochrane didn’t rely on a registered trademark so theoretically the question remains as to whether use of a registered trademark as an Adword would infringe. Given that the crux of the decision was that consumers would not be confused, it’s unlikely that having a registered mark would assist. The court would probably find that Adword use of such a mark does not affect the function of a trademark, which is to serve as a source indicator.

There is potentially scope for a trump card though, being a well-known registered trademark. In that instance, the test is whether use of the identical or similar mark is likely to take unfair advantage of, or to tarnish the reputation of, the well-known mark. It does not matter whether or not confusion will arise.

So, a potential loophole for rights holders? Quite possibly.


ABOUT ADAMS ON AFRICA | ISSUE 1

This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue:

A NEW CONVERSATION ON AFRICA

AFRICA REGIONAL REPORT

CHAPTER 9: THE POWERS OF THE PUBLIC PROTECTOR

DISSECTING THE NEW IP CONSULTATIVE FRAMEWORK

HOW OIL PRICES IMPACT AFRICA

ADDLED BY THE INTERWEBS

AFRICA’S LEADING LADIES

BANKING ON THE MAPUTO CORRIDOR

TOURISM – A MARKET OF OPPORTUNITIES

PHILANTHROPY’S PURPLE RAIN

PURE WATER ON TAP