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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

by Dakalo Luvhimbi | Senior Associate

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

JENNY PIENAAR

Partner
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DAKALO LUVHIMBI

Senior Associate
Trade Mark Attorney

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PLAIN PACKAGING – THE SILENT (TRADE MARK) KILLER?

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

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

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

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

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

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

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

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

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

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

by Kim Rampersadh | Senior Associate

KELLY THOMPSON

Partner
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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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A SUGGESTED FRANCHISING PLAN FOR AFRICA

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

EUGENE HONEY

Partner
Attorney

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KENYA TRADE MARK OPPOSITION MATTER | COMMENTARY

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

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

The grounds of opposition included, inter alia, that:

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

The issues for determination were whether:

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

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

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

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

The opposition was therefore dismissed.

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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GETTING THE DEAL THROUGH | ADVERTISING & MARKETING

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

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

To read the full publication submission, CLICK HERE.

GTDT-Advertising

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

KELLY THOMPSON

Partner
Trade Mark Attorney

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NICOLE SMALBERGER

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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KAREN LAM

Senior Associate
Trade Mark Attorney

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ARIPO WORKING GROUP | SESSION UPDATE

The 6th session of the Working Group on the Improvement of the ARIPO Protocols relating to Industrial Property was held at the ARIPO headquarters in Harare Zimbabwe on 12 and 13 June 2017. The Working Group is comprised of IP practitioners and Registry officials from various ARIPO member and observer states. The Working Group discussed proposals to amend the Harare Protocol which regulates the filing and prosecution of patents and designs in ARIPO and also addressed some of the challenges in the operation of the Banjul Protocol which regulates Trade Mark matters in ARIPO. Adams & Adams was represented at this Working Group Session by partners Mariëtte du Plessis and Nthabisheng Phaswana.

The Harare Protocol has been amended several times over the past few years, however the Working Group proposed amendments including provisions allowing applicants for patents to request accelerated or delayed examination for patent applications. In addition, with effect from 1 January 2017 amendments to the Harare Protocol now require all applicants to file a request for substantive search and examination and pay the prescribed fees therefore. There has been confusion around the deadline for payment of the fees for search and examination but it has now been clarified that the deadline is 3 years from the date of filing at ARIPO.

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

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

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

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

MARIETTE DU PLESSIS

Partner
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NTHABISHENG PHASWANA

Partner
Attorney

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HELPING A YOUNG MOM WITH HER STUDIES | GOOD MORNING ANGELS

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

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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ADAMS & ADAMS ESTABLISHES ASSOCIATE OFFICE IN ETHIOPIA

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

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

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

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

Adams & Adams Associate Office | Ethiopia

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner
Attorney

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COLLECTIVE TRADE MARK REGISTERED IN KENYA | TAITA

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

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

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

Image Courtesy WIPO

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

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

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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A&A PARTNERS NAMED IN PRESTIGIOUS GLOBAL IP LISTS

Managing IP 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. Adams & Adams congratulates Mariëtte and all those who made this year’s list.

The Trade Mark and Patent Stars lists were also announced and a number of Adams & Adams professionals are again featured.

 

In making the announcements, Managing IP said “Adams & Adams retained its title as Managing IP’s Africa Firm of the Year (2017) and continues to spread its expertise across the continent but there is no doubt about its dominance in the South African IP market. The trade mark department, which is arguably the largest, is home to some of the country’s leading trade mark practitioners. They include Gérard du Plessis, Darren Olivier, Kelly Thompson and Mariëtte du Plessis, who is listed in Managing IP’s Top 250 Women in IP (2017).”

The firm nurtures young talent that others look to capture. Kareema Shaik is one associate to mention, while Nishan Singh is a rising star to watch. “I always see Adams as the best in the country. If we want to hire younger people we look at Adams. They’re the firm we look up to,” says one rival. Trade mark star Suzaan Laing is no longer at the firm.”

Recent case studies show the firm acting on trade mark and copyright disputes including one where Olivier advised M-Systems in the high-profile Google AdWords dispute with Cochrane Steel, which was the first of its kind in the country.

In respect of Patents, MIP offered, “The notable patent stars in its South African team are Russell Bagnall, Dario Tanziani, Alexis Apostolidis and Danie Dohmen. Bagnall and Apostolidis stand out. Colin MacKenzie and Louis Van der Walt are also mentioned.”

Recent patent work highlights show the team acting for companies such as MultiChoice South Africa, Inteletrack, Trustco Group International and Mantella Trading 310. One satisfied client says: “Adams put together a very efficient and lean cross-functional team to deal with a complex IP valuation and regulatory matter.”

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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DARIO TANZIANI

Partner
Patent Attorney

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DANIE DOHMEN

Partner
Patent Attorney

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ALEXIS APOSTOLIDIS

Partner
Patent Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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RUSSELL BAGNALL

Partner
Patent Attorney

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KELLY THOMPSON

Partner
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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LOUIS VAN DER WALT

Partner
Patent Attorney

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JOHNNY FIANDEIRO

Partner
Patent Attorney

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FLIRTING WITH CO-BRANDING | THE CONSIDERATIONS

At the supermarket a few days ago, I came across a pack of Stimorol chewing gum flavoured with Halls Menthol. I’m not an avid bubble gum-chewer, but being an ardent lover of Halls Menthol, I simply couldn’t resist buying a pack. Had it not been for the Halls Menthol “additive”, I’m sure I wouldn’t have bothered.

We are surrounded by examples of co-branding – it has become quite prolific and judging by my experience, can actually work. Co-branding is a marketing strategy that involves the collaboration of two or more brands to create a product or service that is representative of both. There are various forms or types of co-branding:

  • Ingredient co-branding: For example, the addition of OREO cookie pieces into CADBURY DAIRY MILK chocolate, KFC DORITOS crunch burgers, INTEL processors in DELL computers and of course, HALLS Menthol to STIMOROL chewing gum.
  • Same company or internal co-branding: For example, NESTLE COUNTRY FRESH ice cream with NESTLE BAR ONE sauce.
  • Joint venture co-branding: The athletic clothing range released by REEBOK and CROSSFIT, NIKE and APPLE’S NIKE+iPOD, SONY ERICSSON and ABSA VISA or MASTERCARD.

There are certainly advantages to co-branding. Co-branding can raise awareness about the brands; allow a business to introduce or expose its products or services to the loyalists of the other brand or penetrate another market; allow the business to benefit from the brand equity (or affection) held by another brand; and enhance the value or quality of the product or service in the minds of consumers.

In offering more choice to consumers; the ‘new’ product or service increases profits while reducing the costs involved in introducing new products or services as well as costs of marketing and advertising.

However, brand-holders should also bear in mind that there is a flip side to the co-branding coin. For example, co-branding could lead to the dilution of your brand. A smaller, new or less well-known brand risks being subsumed by the other more established or well-known brand. If one of the brand-holders has a greater say or hand in the co-branding exercise, this may result in a loss of control by the other brand-holder.

And if the co-branding strategy doesn’t work – if the product or service is of an inferior quality or one of the brand-holders suffers negative publicity – this could have a negative impact on consumers’ perception of the brands and consequently, the reputation and value thereof.

When deciding to co-brand, it is essential to bear the following in mind:

Choose your co-branding partner carefully.

Get to know and gather information about your potential co-branding partner. It is essential to choose a partner that offers products or services that are complementary to those that you offer.  There must be a natural link between the co-branding partners and at the end of the day, the product or service offered under the co-branding exercise must be relevant and offer value to consumers. Furthermore, the co-branding exercise must have advantages for both parties and add value to both brands.

Aside from this, the brand-holders should be compatible and have synergy to reduce the likelihood of conflicts arising and ensure a better working relationship.

It is also vital to consider the reputation of the other brand and the financial and market position and operations of the other brand-holder vis-a-vis the reputation of your brand, financial and market position and operations.

Communication and participation.

There are, of course, circumstances where one of the parties may be more involved in the co-branding exercise than the other due to its expertise, know how, etc.

However, it is important that both parties participate and are involved in one way or another and that they effectively communicate with each other.  Both parties should have a say in the co-branding exercise.

Agreement.

Most importantly, the parties must have a carefully drafted and detailed agreement (as well as guidelines or rules) in place, which sets out the parameters of their relationship and governs the co-branding arrangement.

The co-branding agreement is, in essence, a type of co-licensing agreement and should thus include provisions relating to the use of intellectual property.  It is important that the brand-holders are able to maintain their separate identities and exercise control over their respective brands to maintain the integrity thereof.

Some issues that need to be considered include the retention of the proprietary rights by each brand holder once the co-branding arrangement is terminated, ensuring that the use of the brand inures to the benefit of the respective brand holders and maintaining the distinctiveness of the brands.

Lack of quality control provisions and monitoring can result in dilution or loss of control by the brand holder and aside from this, there are other risks to consider such as liability for defective products.  Thus, it is imperative that the agreement contains quality control provisions.  Branding specifications setting out how (that is, in what manner and form) trade marks will be permitted to be used and the scope of such use (including territorial considerations) as well as a marketing strategy/ plan setting out how and through what mediums the product or service will be marketed and promoted and how all of this will be monitored are crucial.

Other provisions in the agreement should deal with the exclusivity, duration and termination of the co-branding arrangement.  Grounds for termination should be widely construed to cater for a variety of circumstances – for example, if targets are not met, if there is an infringement or misuse of intellectual property, if one of the brand holders suffers negative publicity, etc.  There should also be provisions dealing with warranties, indemnities and confidentiality.  In this regard, it should be noted that entering into a co-branding arrangement may necessitate the disclosure of certain confidential or privileged information such as customer data, technology and know how, market research data, etc and the agreement should ensure that this information is not disseminated to third parties or used when the co-branding arrangement has been terminated.

The agreement should also deal with any new intellectual property, whether it be trade marks or new technology, etc, derived from the co-branding exercise.

These are, of course, just some of the considerations to bear in mind when entering into a co-branding arrangement.  Co-branding is indeed a powerful tool and can certainly provide a competitive edge when properly structured.  However, it is essential that brand holders are diligent and exercise due caution when entering into such arrangements.

AMINA SULIMAN

Senior Associate
Trade Mark Attorney

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‘DROP-CATCHING’ DEFENCE TESTED IN SOUTH AFRICAN DOMAIN NAME COMPLAINT

The practice of drop-catching in the South African context (in the .co.za domain name space) was considered for the first time in a dispute concerning the domain name darling.co.za.

So-called “drop-catching” can be described as the automated registration of a domain name that has lapsed due to non-payment of the renewal fee. As a practice, it is neither lawful nor unlawful, as the circumstances of each case will dictate whether the conduct of the registrant of the domain name contravenes the regulations applicable to the dispute.

For instance, drop-catching is not expressly prohibited by WIPO’s UDRP regulations governing domain name disputes in generic Top Level Domains, such as .com. Decisions on the issue of drop-catching in terms of those regulations have been issued in favour of the complainant, but in all the decisions the complainant had established bad faith on the part of the registrant – an absolute requirement in terms of the UDRP regulations.

In terms of the ADR regulations governing disputes in the .co.za name space, bad faith (a subjective element) is not a requirement for a complainant to succeed. Rather, abusiveness is set as a requirement, which is an objective yardstick.

In the case of darling.co.za, the complainant had a registered trade mark for the word DARLING, covering synthetic hair extensions, and had used the domain name darling.co.za for an active website for many years on which it advertised its products. Due to an administrative oversight, it allowed the domain name to lapse. The registrant’s drop-catching software immediately registered the domain name and directed it to a landing page on which it was offered for sale. Before seeking legal advice, the complainant had approached the registrant with an offer to purchase/recover the domain name. The registrant rejected the complainant’s offer and made a counter-offer to sell the domain name to the complainant for a large sum of money – a sum exceeding the costs that the registrant had incurred in acquiring the domain name.

The regulations list a number of factors on which a complainant can rely to establish abusiveness on the part of the registrant. One of those factors is where the registrant acquired the domain name primarily with the view to selling it for a sum on money exceeding its reasonable out-of-pocket expenses directly associated with acquiring or registering the domain name. The registrant’s business model, founded on drop-catching, was to register or acquire domain names that could be exploited in a generic or fair manner. The registrant contended that it could have used the domain name darling.co.za in a geographically descriptive manner and, therefore, that the domain name had not been registered in bad faith. As such, the registrant contended the registration could not be abusive.

The adjudicator ruled that the effect of the domain name registration was abusive of the complainant’s rights, notwithstanding the registrant’s intention (or lack thereof) in registering the domain name. The adjudicator ordered the transfer of the domain name to the complainant.

It appears that the case was ultimately decided with reference to the proviso in Regulation 5(c). In terms of that proviso, where the domain name in dispute is identical to the complaint’s trade mark, the onus is on the registrant to prove that the domain name is not abusive. The adjudicator ruled that the registrant had failed to adduce sufficient evidence to discharge the onus.

Given that drop-catching will very often involve a domain name which is identical to a registered trade mark, the proviso to Regulation 5(c) is likely to come to the fore in such cases.

DALE HEALY

Partner
Trade Mark Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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SOUTH AFRICA | COPYRIGHT AMENDMENT BILL 2017

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

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

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

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

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

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

Various specific technology related provisions have been included.

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

WERINA GRIFFITHS

Partner
Trade Mark Attorney

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LISA VAN ZUYDAM

Senior Associate
Trade Mark Attorney

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GETTING THE DEAL THROUGH | PATENTS

Getting the Deal Through has published the fourteenth edition of Patents, 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. Russell Bagnall, Partner at Adams & Adams, provided content for the South Africa Chapter. Coverage this year also includes new chapters on Costa Rica, Norway and Saudi Arabia.

To read the full publication submission, CLICK HERE.

Patents-3D

Reproduced with permission from Law Business Research Ltd. Getting the Deal Through: Patents 2017, (published in March 2017; contributing editor: Richard T McCaulley Jr, Ropes & Gray LLP) For further information please visit https://gettingthedealthrough.com/area/25/patents-2017

RUSSELL BAGNALL

Partner
Patent Attorney

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

By Jameel Hamid | Associate

 

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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GETTING INTO THE (IP) ZONE

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

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

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

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

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

So what should product manufacturers do to avoid these situations?

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

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

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

KELLY THOMPSON

Partner
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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REPORT | IP DEVELOPMENTS IN AFRICA

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

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

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

READ THE AFRICA UPDATE ONLINE

DOWNLOAD THE AFRICA UPDATE (36 Mb)

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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HOW STRONG IS YOUR IP ‘FORCE’?

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

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

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

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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COUNTING THE COST OF UNLICENSED SOFTWARE

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

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

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

DARREN OLIVIER

Partner
Trade Mark Attorney

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USING GACC TO STOP COUNTERFEITS LEAVING CHINA

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

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

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

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

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

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

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

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

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

TAYYIBA NALLA

Senior Associate
Trade Mark Attorney

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GODFREY BUDELI

Partner
Trade Mark Attorney

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REPORT | MADRID IN AFRICA

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

  1. Introduction

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

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

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

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

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

  1. Which African countries are Madrid members?

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

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

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

3.1 Recognition of International Registrations in terms of national laws

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

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

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

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

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

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

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

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

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

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

  • Practical difficulties

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

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

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

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

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

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

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

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

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

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

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

3.2.3 Practical examples

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

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

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

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

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

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

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

  1. Conclusion

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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CASHING IN ON MADIBA’S LEGACY

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

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

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

NISHAN SINGH

Partner
Trade Mark Attorney

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AESTHETIC OR FUNCTIONAL | PROTECT YOUR DESIGN

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

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

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

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

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

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

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

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

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

MARIËTTE DU PLESSIS

Partner
Trade Mark Attorney

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DISPUTE RESOLUTION REVIEW | SOUTH AFRICA

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

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

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

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

DisputeResolutionReview3D

JAC MARAIS

Partner
Commercial Attorney

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ANDREW MOLVER

Partner
Litigation Attorney

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RENEE NIENABER

Senior Associate
Attorney

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WHAT ARE TRADE SECRETS? HOW TO PROTECT THEM

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

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

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

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

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

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

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

How to protect your trade secrets

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

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

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

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

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

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

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

 by Maureen Makoko | Associate


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

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

[3] Idem

[4] Idem

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

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

[7] Idem

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

[9] Idem

[10] Idem

[11] Idem

 

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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BRANDS & SOCIAL MEDIA INFLUENCERS | ARE YOU AT RISK?

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

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

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

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

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

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


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

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

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

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

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

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

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

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

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

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

Kelly Thompson | Partner (Adams & Adams)

 

KELLY THOMPSON

Partner
Trade Mark Attorney

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DR CONGO | POLITICAL UNREST SHUTS IP OFFICE

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

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

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

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

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LITA MITI-QAMATA

Senior Associate
Trade Mark Attorney

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REINHARDT BIERMANN

Associate
Trade Mark Attorney

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ZIMBABWE | RATIFICATION OF THE MADRID PROTOCOL

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

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

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

SIMON BROWN

Partner | Co-Chairperson of Trade Marks Department
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LAUREN ROSS

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STEPHEN HOLLIS

Partner
Trade Mark Attorney

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

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

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

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

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

Contribution by

David Legge | Associate

Somayya Khan | Partner

SOMAYYA KHAN

Partner
Trade Mark Attorney

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TRADITIONAL KNOWLEDGE AS A TRADE SECRET

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

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

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

What exactly is traditional knowledge?

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

For example:

Mukundu

MUKUNDU

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

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

TK can be afforded two types of protection namely:

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

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

MUTANDO

MUTANDO

What are trade secrets?

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

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

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

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

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

Traditional knowledge as a trade secret

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

  1. The information is a secret

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

  1. Reasonable steps have been taken to protect it

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

  1. The information has economic value

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

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

Conclusion

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

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

 

[1] Act No. 16 of 2016

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

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

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

[5] Idem

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

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

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

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

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

[11] Idem

[12] Idem

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

MAUREEN MAKOKO

Associate
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE GAMBIA | DEADLINE FOR RENEWAL OF TRADE MARKS

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

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

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

MEGAN MOERDIJK

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner & Head of Africa Patents
Attorney

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

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

GERARD DU PLESSIS

Partner & Chairman
Trade Mark Attorney

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UGANDA | INDUSTRIAL PROPERTY REGULATIONS PASSED

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

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

Industrial designs

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

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

Utility models

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

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

Technovations

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

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

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

Download Regulations Outline here.

ALICIA CASTLEMAN

Partner | Trade Marks Department
Trade Mark Attorney

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NICHOLAS ROSSLEE

Associate
Attorney

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

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

“This is a fantastic accomplishment for us and we are immensely grateful to the members of MIP, who have recognised our efforts and our firm’s ascendancy in Africa,” says firm Chairman, Gérard du Plessis, of the award. “We are also indebted to our local and global clients who continue to trust our professionals with their commercial interests and intellectual property rights on the continent.”

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

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

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

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

GERARD DU PLESSIS

Partner & Chairman
Trade Mark Attorney

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SIMON BROWN

Partner and Chair of Africa Strategy
Trade Mark Attorney

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DARREN OLIVIER

Partner
Trade Mark Attorney

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THE ART AND LAW OF PAINTING

Allegory.  Abstract meanings.  Colour.  Light.  Perspective.

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

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

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

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

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

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

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

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

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

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

Werina Griffiths | Partner

 

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

WERINA GRIFFITHS

Partner | Trade Mark Litigation
Trade Mark Attorney

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

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

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

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

The Social Media in the USA panel will feature:

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

The Social Media Globally panel will feature:

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

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

JENNY PIENAAR

Partner | Trade Mark Litigation
Trade Mark Attorney

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THE CHALLENGE OF POLICING YOUR BRAND ONLINE

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

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

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

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

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

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

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

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

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

Jenny PIENAAR

Partner 
Trade Mark Attorney

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SÃO TOMÉ & PRÍNCIPE | NEW INDUSTRIAL PROPERTY CODE

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

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

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

Lisa van Zuydam | Senior Associate

Mandy Swanepoel | Partner

Mandy Swanepoel

Partner
Trade Mark Attorney

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EGYPT | INCREASE IN PATENT OFFICIAL FEES

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

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

Nicky garnett

Partner – Head of Africa Patents
Attorney

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nthabisheng phaswana

Partner
Attorney

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ADMINISTRATION OF JUSTICE TRUMPS PROCEDURAL TECHNICALITIES IN KENYA

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

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

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

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Attorney

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SANGE APPOINTED MD OF THE KENYA INTELLECTUAL PROPERTY INSTITUTE

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

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

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

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

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

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

ARIPO | INCREASE IN PATENTS OFFICIAL FEES

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

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

nicky garnett

Partner – Head of Africa Patents
Attorney

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nthabisheng phaswana

Partner
Attorney

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