ZIMBABWE | ADVERTISING AUTHORITY GAINS MOMENTUM

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

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

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

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

JENNY PIENAAR

Partner
Trade Mark Attorney

View Profile

KELLY THOMPSON

Partner
Trade Mark Attorney

View Profile

JEANETTE VISAGIE

Associate
Trade Mark Attorney

Send Email

ANGOLA | SECOND PHASE OF RECORDS UPDATE UNDERWAY

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

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

THERESE DAVIS

Senior Associate
Trade Mark Attorney

View Profile

OAPI | NEW LOGO ADOPTED

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

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

View Profile

LEBOHANG MOSALA

Associate
Trade Mark Attorney

Send Email

TANZANIA | REGISTRY GOES ONLINE

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

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

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

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

 

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

CLAIRE BOTHMA

Senior Associate
Trade Mark Attorney

View Profile

KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

View Profile

SWAZILAND – TRADE MARKS REGISTRAR RETIRES

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

NICOLE HAWORTH

Senior Associate
Trade Mark Attorney

View Profile

NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

View Profile

PUBLIC SLAMS ATTEMPTED #METOO TRADE MARK APPLICATION

US beauty product company, Hard Candy Cosmetics, has withdrawn a trade mark application for #MeToo after an overwhelming reaction from the public on social media.

“Me Too” (or #MeToo) spread virally in October 2017 as a two-word hashtag used on social media to help demonstrate the widespread prevalence of sexual assault and harassment, especially in the workplace. It followed soon after the public revelations of sexual misconduct allegations against Harvey Weinstein.

The phrase, long used by social activist Tarana Burke to help survivors realise they are not alone, was popularised by actress Alyssa Milano when she encouraged women to tweet it to “give people a sense of the magnitude of the problem.”

 

Since then, the phrase has been posted online millions of times, often with an accompanying personal story of sexual harassment or assault.

Hard Candy claimed in a statement that when the trade mark application for #metoo was filed, one of their objectives was to bring greater awareness to this important and long-overdue movement. They planned to donate 100% of all profits arising from the trade mark to #metoo.

However, the ‘Twitterverse’ was not convinced, and accused the company of trying to profit from a campaign relating to sexual harassment and assault. Consequently, the application to the US Patent and Trademark Office was abandoned on Thursday, January 18.

Kelly Thompson, Partner at Adams & Adams, explains that it is not uncommon, internationally, for people to rush to be the first to file a trade mark application for the latest hashtag, meme or popular term. Even if we were to believe that Hard Candy had ‘good intentions’, most people try to file hashtags as trade marks in the mistaken belief that, if they can be the first to get their foot in the door, they will secure trade mark protection for the hashtag and be able to demand massive licence fees from anyone who uses it. This simply isn’t true for various reasons.

Firstly, it is generally not possible to obtain trade mark protection for a trending word or term in common parlance. In order to be registrable, a trade mark must be distinctive of the proprietor’s goods or services. This takes us to the second point: one cannot simply attempt to monopolise a term for no reason. The person applying to register the trade mark must use, or intend to use, the trade mark in relation to specific goods or services and for the purpose of distinguishing those goods or services from those of others (ie. as a source identifier or “badge of origin” for their products or services). Filing for trade mark protection for the sole purpose of demanding fees from those who use it or even to “create awareness” about a campaign does not, per se, constitute a bona fide reason for the filing of an application. Finally, even if protection were to be secured (which is probably unlikely), this would not entitle the owner to stop ordinary people from using the hashtag in their social media posts in a non-trade mark sense.

The question of whether hashtags are registrable as trade marks has also been the subject of some debate. Generally, provided the hashtag truly fulfils a trade mark function (ie. is used as a badge of origin and not just as a means of directing internet users to certain information, which was the original purpose of a hashtag), and provided it fulfils the requirement of distinctiveness, there should be no inherent issue with its registrability. Numerous hashtags have been registered as trade marks in South Africa and abroad. While the US Patent and Trade Mark Office has issued specific guidelines regarding what they will look at when determining if a hashtag is registrable as a trade mark, the South African Companies and Intellectual Property Office will simply examine such an application in accordance with the usual requirements for trade mark protection.

For more information on the registration of hashtags as trade marks, contact Kelly Thompson or Jenny Pienaar.

KELLY THOMPSON

Partner
Trade Mark Attorney

View Profile

JENNY PIENAAR

Partner
Trade Mark Attorney

View Profile

OAPI | URGENT RENEWAL RECOMMENDATIONS

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

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

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

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

View Profile

LEBOHANG MOSALA

Associate
Attorney

Send Email

DOES ADeC’s LOGO INFRINGE THE ANC’s IP RIGHTS?

A new political party has just emerged in South Africa and it is called the African Democratic Change (ADeC) lead by Dr Makhozi Khoza. Its new logo (above) has caused some outcry and much attention for the new party for obvious reasons.

On the left-hand side is the logo of the ANC and on the right-hand side, that of ADeC. On the face of it there are a number of distinguishing factors; the use of blue, the juxtaposition of the various elements making up the mark and the fact that many of these elements are not uncommon in local political party logos. You can see that in this illustration below:

The use of circles, colour combinations of yellow and green and flames/sun type elements are quite common. One could argue that people/voters are used to these combinations and will focus on other parts of the logos, and not be confused. But is this the end of the matter?

The reality is that there are certain very stark similarities in the logos, especially the use of the black, green and yellow combination in the flame device in the ADeC logo. These colours are identical to the ANC colours (in exact Pantone colour it appears), and also are juxtaposed in the same combination i.e. black, yellow then green. There are other important similarities too; the clenched hand holding a torch & spear, and the circle and wheel device and flag/flame flying concepts.

Passing Off and Trade Mark Infringement

Under South African law it is possible to own rights in colour combinations if one can establish a reputation in them, or if they are registered as such in the colour combination at the national trade mark office. It is almost certain that even if the ANC has not registered the colour combination, that they will be able to establish a reputation in those colours. The question then is whether as a result of that reputation, the use of the combination by ADeC may result in a likelihood of confusion.

Importantly, it is then not the entire ANC logo that is compared with the ADeC logo, but simply the colour combination in which it can show a reputation. One can immediately see then, that arguments for a likelihood of confusion become greater and quite possibly could succeed. This ground is known as passing off.

Under trade mark infringement it really depends on how the mark is registered. If the colour combination is registered then the enquiry is much the same, though it could be more straightforward. If there is found to be use of an identical trade mark for identical services (as covered by the registered trade mark), then there is no need to show a likelihood of confusion, and the ANC would prevail.

Under the Advertising Standards Association Code

This is a code that regulates advertising in South Africa against advertising that is in conflict with the code. The new ADeC logo will qualify as an advert under the code and could be open to an objection by the ANC, if it can show that there is misuse of its advertising goodwill in the colour combination. This enquiry is very similar to the ground of passing off explained above, and if the ANC can show a likelihood of confusion then it will prevail.

However, there is an even stronger potential ground under the code and that is “imitation”. If there is imitation of an advertising concept then, even if there is no likelihood of confusion, the ASA Code could be used to stop advertising with that logo amongst members of the ASA, which include industry bodies regulating print, media and online advertising in the country. This could prove powerful even though the ANC or ADeC are not likely to be members of the ASA – the ASA’s recent ruling in the Herbex case  (on jurisdiction of the ASA and its indirect effect over non members) may come to their aide on this point.

The difficulty with using the code is that political advertising is excluded from the scope of the code. Consequently this forum would only be available in very limited circumstances.

Under the IEC Code

This code is aimed at ensuring free and fair elections in South Africa. The code has specific provisions against “plagiarising other party’s symbols, names and acronyms” and can impose a fine of R200 000 against a wrongdoer. Plagiarism is arguably more difficult to show than imitation and passing off because it implies actual copying, and is more a copyright term. (This is not really a copyright dispute as the colour combination is probably not able to meet the originality threshold for copyright to exist). That said, if one accepts that the colour combination is that of the ANC as an advertising concept or under passing off, then copying of that may sway the decision maker, rendering it plagiarism under the IEC code.

Additional comments

This is not the first time, political parties are having a spat over logos. Indeed the ANC took on COPE in a similar (but different) dispute many years ago as reported on the Afro-IP blog here. Some may well say that this is intentional by ADeC, that the media coverage is well worth the legal risk and it probably is. As mentioned in these posts (here and here) on the new UKIP logo in the UK and the public commentary on the possible furore with the Premier League over logos, it is important for political parties to get proper registered protection for their symbols.

Darren Olivier

(as published on Afro-IP)

DARREN OLIVIER

Partner
Trade Mark Attorney

View Profile

INSIGHTS | INTELLECTUAL PROPERTY RIGHTS IN SOMALILAND

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

UDI PILLAY

Senior Associate
Trade Mark Attorney

View Profile

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

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

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

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

A perceived lack of proper and meaningful stakeholder engagement

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

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

Concerning proposals for ‘users’ rights’

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

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

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

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

The ‘fair use’ debate

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

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

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

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

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

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

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

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

Economic impact

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

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

Conclusion

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

View Profile

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

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

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

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

Click here to learn more about the programme

LOUIS VAN DER WALT

Partner & Chair of Patents
Patent Attorney

View Profile

JAMES DAVIES

Partner
Patent Attorney

View Profile

COLIN MACKENZIE

Partner
Patent Attorney

View Profile

PIETER VISAGIE

Partner
Patent Attorney

View Profile

WYNAND VISAGIE

Senior Associate
Patent Attorney

View Profile

ARIPO SIGNS PPH AGREEMENT WITH CHINESE PATENT OFFICE

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

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

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

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


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

NICKY GARNETT

Partner – Head of Africa Patents
Attorney

View Profile

NTHABISHENG PHASWANA

Partner
Attorney

View Profile

BEST LAWYERS® | ADAMS & ADAMS NAMED IP LAW FIRM OF THE YEAR IN SA

Best Lawyers®, a highly respected peer review publication in the legal profession, recently announced outstanding lawyers in various fields, with a number of Adams & Adams Partners featured. Adams & Adams was also named the Top Law Firm in South Africa in the field of Intellectual Property Law.

Recognition in Best Lawyers® is widely regarded by both clients and legal professionals as a significant honour, conferred on a lawyer by his or her peers. The Best Lawyers® lists of outstanding attorneys are compiled by conducting exhaustive peer review surveys in which tens of thousands of leading lawyers confidentially evaluate their professional peers. If the votes for an attorney are positive enough for recognition in Best Lawyers, that attorney must maintain those votes in subsequent polls to remain in each edition. Lawyers are not permitted to pay any fee to participate in or be recognised by Best Lawyers®.

LAWYER OF THE YEAR 2018 | INTELLECTUAL PROPERTY LAW

  • Gérard du Plessis

BEST LAWYERS® 2018 EDITION | INTELLECTUAL PROPERTY LAW

  • Simon Brown
  • Danie Dohmen
  • Gérard du Plessis
  • Mariëtte du Plessis
  • Johan du Preez
  • Alan Lewis
  • Dario Tanziani
  • Kelly Thompson
  • Suzaan Laing

BEST LAWYERS® 2018 EDITION | PROJECT FINANCE AND DEVELOPMENT PRACTICE

  • Gavin Noeth

Of the announcement, Dario Tanziani said, “Recognition from one’s respected peers in a challenging profession is especially rewarding.”

Prestigious accolades such as those by Best Lawyers®, IP Stars and Chambers® are based on market leading performance analysis and are strictly quantitative – designed to recognise those firms which are consistently delivering the best results for their clients.

Managing IP also recently announced their IP Stars lists for 2017 and Adams & Adams Partner, Mariëtte du Plessis, is featured in the IP STARS Top 250 Women in IP. This list recognises female IP practitioners in private practice who have performed exceptionally for their clients and firms in the past year. All the women listed here are also individual IP stars in their respective jurisdictions.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

View Profile

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

DANIE DOHMEN

Partner
Patent Attorney

View Profile

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

View Profile

JOHAN DU PREEZ

Partner
Trade Mark Attorney

View Profile

DARIO TANZIANI

Partner
Patent Attorney

View Profile

KELLY THOMSON

Partner
Trade Mark Attorney

View Profile

GAVIN NOETH

Specialist Consultant
Commercial Attorney

View Profile

INTERVIEW | IS YOUR ORGANISATION READY FOR POPI?

It is important to do a high-level analysis of the personal information in the company before embarking on the POPI implementation journey.This was the opinion of Dr Danie Strachan, Partner, in a recent interview with ITWeb. Companies should be doing this now and not waiting for the long-anticipated commencement date.

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

ITWeb Events spoke to Dr Strachan following his presentation at the ITWeb POPI Update II on 22 November, to establish why it is vital that companies practically understand POPI and the consequences of not doing so now.

ITWeb Events: You recently presented an introduction to POPI – why is it important that organisations get to grips with the ‘basics’ before moving forward with implementation?

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

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

ITWeb Events: What are the three key factors to consider when preparing for POPI?

Strachan: I would say firstly, determine what kind of personal information you are processing and why you are processing it. Secondly, you need to accept that POPI compliance is necessary to avoid fines and reputation damage, but that it can also make your business more efficient and streamlined. Lastly, it is important to raise awareness in your organisation. It makes it easier if people in your business are familiar with POPI’s requirements and know where the issues lie.

ITWeb Events: Why, in your opinion, are many organisations employing a ‘wait and see’ attitude when it comes to POPI?

Strachan: People seem to think POPI might not be enforced and that the regulator will not have teeth. This could be the result of them being used to less effective enforcement in other areas.

ITWeb Events: For organisations that retain large quantities of personal data – what should their first POPI action be?

Strachan: Identify the various types of information being collected and retained. Decide whether you can limit your collection and retention practices. Determine whether you need all the information currently being retained and whether some of it can be deleted.

ITWeb Events: What is the first question that most clients ask when engaging you in conversation on this subject?

Strachan: What is the current status and where should we start?

ITWeb Events: What did you ITWeb POPI Update attendees to take away with them after your presentation?

Strachan: I enjoy engaging on data protection and privacy discussions and find it a fascinating area of the law. I like to clarify the topic for people and make it relevant and practical for them. I would like attendees to leave the event with a broad understanding of POPI’s requirements and clarity regarding the way forward.

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

Courtesy, ITWeb Governance, Risk & Compliance website. Original article here.

DR. DANIE STRACHAN

Partner
Attorney

View Profile

TUNISIA | EUROPEAN PATENT VALIDATIONS ADVISORY

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

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

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

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

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

 

NICKY GARNETT

Partner – Head of Africa Patents
Attorney

View Profile

FARZANA RASSOOL

Associate
Attorney

Send Email

ZIMBABWE | REGISTRY AND ARIPO STILL OPERATIONAL DESPITE POLITICAL CRISIS

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

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

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

NICKY GARNETT

Partner
Attorney

View Profile

DRC | NEW OFFICIAL IP FEES APPLIED FROM 11 NOVEMBER 2017

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

View Profile

EGYPT | AMENDMENT OF EXAMINATION FEES FOR PATENTS

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

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

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

 

NTHABISHENG PHASWANA

Partner
Attorney

View Profile

FARZANA RASSOOL

Associate
Attorney

Send Email

BLUE GLOVES FOR STROKE AWARENESS

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

 

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

 

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

 

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

 

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

 

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

 

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

POSITIVE INVESTMENT REFORM IN EGYPT PROMPTS URGENCY TO SECURE BRAND PROTECTION

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

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

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

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

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

View Profile

DARREN OLIVIER

Partner
Trade Mark Attorney

View Profile

NICHOLAS ROSSLEE

Associate
Trade Mark Attorney

Send Email

TRADEMARKS 2018 | GETTING THE DEAL THROUGH

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

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

To purchase the full publication CLICK HERE.

To read the South African Chapter CLICK HERE

Trademarks-3D-Block-1

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

DEBBIE MARRIOTT

Partner
Trade Mark Attorney

View Profile

EUGENE HONEY

Partner
Trade Mark Attorney

View Profile

REINHARDT BIERMANN

Associate
Attorney

E-Mail Reinhardt

DATA PROTECTION & PRIVACY | GETTING THE DEAL THROUGH

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

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

To purchase the full publication CLICK HERE.

To read the South African Chapter CLICK HERE

Data-Privacy-3D-Block-1

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

DANIE STRACHAN

Partner
Commercial Attorney

View Profile

ANDRE VISSER

Partner
Commercial Attorney

View Profile

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

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

View Profile

DARREN OLIVIER

Partner & Crammer MC (Johannesburg)
Trade Mark Attorney

View Profile

PHILIP PLA

Partner & Crammer MC (Cape Town)
Patent Attorney

View Profile

KENYA | AMENDMENTS TO COPYRIGHT LAW

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

View Profile

MOROCCO | INCREASE IN IP OFFICIAL FEES

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

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

ALISSA NAYANAH

Senior Associate
Trade Mark Attorney

View Profile

RECORDAL OF INTELLECTUAL PROPERTY RIGHTS IN KENYA

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

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

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

The application for recordal is accompanied by:

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

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

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

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

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

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

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

TAYYIBA NALLA

Senior Associate
Trade Mark Litigation Attorney

View Profile

MOZAMBIQUE ONE STEP CLOSER TO BANJUL PROTOCOL

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

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

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

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

MEGAN MOERDIJK

Partner
Trade Mark Attorney

View Profile

CATHERINE WOJTOWITZ

Associate
Trade Mark Attorney

Send Email

LARGEST AFRICA IP MEETING CELEBRATES FIVE YEARS

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

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

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

View Profile

SIMON BROWN

Partner & Co-Chair of Trade Marks
Trade Mark Attorney

View Profile

NICKY GARNETT

Partner – Head of Africa Patents
Attorney

View Profile

INAUGURAL AFRICA PATENT EXAMINATION SUMMIT HELD IN SA

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

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

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

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

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

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

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

DANIE DOHMEN

Partner
Patent Attorney

View Profile

NICKY GARNETT

Partner – Head of Africa Patents
Attorney

View Profile

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Dineo Modibedi | Associate

Kelly Thompson | Partner

 

 

*Adams & Adams represented Atlantic in the case

KELLY THOMPSON

Partner
Trade Mark Attorney

View Profile

DINEO MODIBEDI

Associate
Trade Mark Attorney

Send Email

SOCIAL MEDIA INFLUENCER RELATIONSHIPS COME UNDER FURTHER SCRUTINY

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

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

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

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

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

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

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

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

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

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

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

Kelly Thompson | Partner

KELLY THOMPSON

Partner
Trade Mark Attorney

View Profile

GETTING THE DEAL THROUGH | FRANCHISE 2018

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

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

To read the full publication submission, CLICK HERE.

Franchise-GTDT

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

EUGENE HONEY

Partner
Attorney

View Profile

SOUTH AFRICA’S COPYRIGHT LAWS | VOICE OF WITS

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

WERINA GRIFFITHS

Partner
Trade Mark Attorney

View Profile

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

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

DARREN OLIVIER

Partner
Trade Mark Attorney

View Profile

NICHOLAS ROSSLEE

Associate
Trade Mark Attorney

Send Email

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

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

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

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

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

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

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

by Dineo Modibedi | Associate

JANICE GALVAD

Partner
Patent Attorney

View Profile

ESME DU PLESSIS

Specialist Consultant
Patent Attorney

View Profile

DINEO MODIBEDI

Associate
Attorney

Send Email

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

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

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

Click here for the MEDIA SUMMARY

Click here for a copy of the JUDGMENT

 

ROELOF GROVE

Partner
Property Attorney

View Profile

BACK TO THE DRAWING BOARD FOR COPYRIGHT BILL | COMMENTARY

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

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

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

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

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

PREVIOUS COMMENTARY BY ADAMS & ADAMS ON THE AMENDMENT BILL

SUBMISSIONS BY ESME DU PLESSIS AND STEPHEN HOLLIS TO THE COMMITTEE

WERINA GRIFFITHS

Partner
Trade Mark Attorney

View Profile

WHERE IDEAS MAKE IT | SA INNOVATION SUMMIT

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

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

The aim of the summit this year is to:

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

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

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

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

Visit the SA Innovation Website for more details.

PHILIP PLA

Partner
Patent Attorney

View Profile

CHARNE LE ROUX

Partner
Trade Mark Attorney

View Profile

STEVEN YEATES

Partner
Trade Mark Attorney

View Profile

ZAMBIA | COMMENCEMENT OF NEW IP ACTS

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

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

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

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

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

NICKY GARNETT

Partner & Head of Africa Patents
Attorney

View Profile

NTHABISHENG PHASWANA

Partner
Attorney

View Profile

DIETER WELTHAGEN

Partner
Patent Attorney

View Profile

RETOUCHED FASHION PHOTOS | WHAT ARE THE RULES?

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

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

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

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

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

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

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

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

KELLY THOMPSON

Partner
Trade Mark Attorney

View Profile

THE GOVERNMENT PROCUREMENT REVIEW | SOUTH AFRICA CHAPTER

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

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

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

Read the South Africa Chapter by CLICKING HERE

An electronic version of the full publication can be ACCESSED HERE

Procurement-3D

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

ANDREW MOLVER

Partner
Litigation Attorney

View Profile

GAVIN NOETH

Specialist Consultant
Commercial Attorney

View Profile

DUBIOUS COPYRIGHT AMENDMENT BILL WILL RESULT IN MORE LITIGATION

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

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

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

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

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

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

You can access the FULL SAIIPL & LSSA PRESENTATION HERE.

Download the COPYRIGHT AMENDMENT BILL HERE.

ESME DU PLESSIS

Specialist Consultant
Patent Attorney

View Profile

STEPHEN HOLLIS

Partner
Trade Mark Attorney

View Profile

TRADE MARK LAWS IN ZAMBIA SET TO CHANGE

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

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

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

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

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

by Jameel Hamid

NISHAN SINGH

Partner
Trade Mark Attorney

View Profile

HOT IP TOPICS IN JULY | IP LIVE TOP FIVE

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

1. No Despacito for the Venezuelan President

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

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

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

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

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

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

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

2. Google Escapes Genericide

Google_2015_logo.svg

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

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

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

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

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

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

Simmons-232×319

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

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

4. A Double Bogey for Titleist

blue_red_titties_snapback_grande

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

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

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

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

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

Darren Olivier introduces the panel.

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

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

by Nic Rosslee

DARREN OLIVIER

Partner
Trade Mark Attorney

View Profile

AS LUCK WOULD HAVE IT | TRADE MARK LITIGATION CASE STUDY

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

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

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

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

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

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

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

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

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

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

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

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

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

UDI PILLAY

Senior Associate
Trade Mark Attorney

View Profile

ADAMS & ADAMS ANNOUNCES NEW ASSOCIATE OFFICE IN ZIMBABWE

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

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

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

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

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

Adams & Adams Associate Office | Zimbabwe

SIMON BROWN

Partner & Co-Chair Trade Marks
Trade Mark Attorney

View Profile

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

View Profile

NICKY GARNETT

Partner & Head of Africa Patents
Attorney

View Profile

LOUIS VUITTON AND THE BASOTHO BLANKET | POWER FM

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

At a recent IP Evening Series event in Soweto, Darren explained that “fashion and crafts are a vibrant industry amongst entrepreneurs in Africa, and we are taking IP to the former townships to help entrepreneurs cost effectively use IP systems to create value for their creativity“.

In the South African context, we are regularly confronted by examples of what is labelled as “cultural appropriation”. What is cultural appropriation and where is the line between cultural appreciation and cultural appropriation? In a guest post on our IP Live blog site, Myriam Christmann introduces us to the concept and provides an explanation of why cultural appropriation sits uncomfortably with many of us. Click HERE to read the post.

DARREN OLIVIER

Partner
Trade Mark Attorney

View Profile

MAUREEN MAKOKO

Associate
Trade Mark Attorney

Send Email

ROCK ON! HAND GESTURES AS TRADE MARKS

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

WENSEL BRITZ

Senior Associate
Trade Mark Attorney

View Profile

ANTI-COUNTERFEIT EFFORTS REAP SOME REWARD IN KENYA

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

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

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

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

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

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

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

Customs Training in Nairobi, Kenya

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

View Profile

GETTING THE DEAL THROUGH | DOMAINS & DOMAIN NAMES

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

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

To read the full publication submission, CLICK HERE.

3dCoverDomains

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

CHARNÉ LE ROUX

Partner
Trade Mark Attorney

View Profile