WIPO COURSE AIMS TO LIFT PATENT DRAFTING PROFICIENCY IN AFRICA

Robust and effective intellectual property systems are needed to promote innovation and develop industries in Africa. They not only help local inventors and companies to come up with new inventions and products, but also encourage foreign companies to invest in the region. Accordingly, IP systems are one of the foundations needed to drive sustainable economic development on the continent. This was the view of Mr. Kenichi Kasahara, Deputy Head of Mission of the Japanese Embassy in Zimbabwe, in launching the first in a series of Patent Drafting Courses in Africa.

The week-long course was held at the headquarters of the African Regional Intellectual Property Organization (ARIPO), in cooperation with the World Intellectual Property Organisation (WIPO) and the Japanese Patent Office.

The WIPO Global Innovation Index (GII) 2017 report suggests that while financial investment, legal frameworks and institutional infrastructure create a supportive environment for innovation, human capital is fundamental in determining the success of innovation. “The patent drafting course thus addresses this important aspect of human capital in aiming to improve patent literacy and related special skills,” said Ms. Aida Dolotbaeva, Legal Officer in Patent Law Division at WIPO. “Patent Drafting skills are one of the important competencies to aid an increase in the use of national and international patents systems, since filling a patent application is the very first step for the active use of the patent systems.”

Adams & Adams Partner and Patent Attorney, James Davies, joined a prestigious line-up of course lecturers which included WIPO’s Aida Dolotbaeva, James Snaith from Kilburn & Strode London, and Masaharu Kizu from SOEI Patent & Law Firm in Tokyo. Davies, as well as sitting on various panel discussions, also delivered three lectures relating to patent claim drafting and design, including an introduction to the theory of patent claims, drafting description in relation to claims, and dependent claims.

“The proficiency of these participants, be they researchers, inventors or legal advisers, is of great consequence to our business and to the IP teams within our Adams & Adams Africa Network, and so we were eager to get involved in the course. The whole programme seemed to be well received by those who attended, and we look forward to being involved again,” added Davies.

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

JAMES DAVIES

Partner
Patent Attorney

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REPORT | AFRICA ECONOMIC ASSESSMENT – TOP 20

The Africa Country Benchmark Report (ACBR) of 2017, by Adams & Adams’ research and intelligence partner, In On Africa, evaluated the performance of all 54 African states across four distinct areas of focus, being business, economics, politics and society. Of particular interest to commercial stakeholders is the economic assessment, which is split into five complimentary economic-related ‘segments’ – employment, growth, inclusion, strength & diversity, and trade & investment.

Mauritius achieved top honours in this thorough economic evaluation of African countries, which drew data from 34 international indices and ranking systems. The results reinforce Mauritius’ position as a robust African commercial hub, with highly effective regulatory and trading structures. The success of the island nations was further emphasised by the inclusion of the Seychelles (4th) and Cape Verde (5th) in the top five results. Southern Africa’s top performers were Botswana (2nd) and South Africa (3rd).

The table below presents the results of the 20 best-performing countries on ACBR’s economic assessment. These results are based on data from indices such as the World Bank’s ‘Ease of Doing Business’ index, the WEF’s ‘Global Competitiveness Report’ and the Heritage Foundation’s ‘Index of Economic Freedom’.

The five segments of the economic evaluation are defined as follows:

  1. Employment – The capacity of the economic environment to provide chance for employment, including the ease with which someone can find a job and how efficiently the country can adopt new labour practices.
  2. Growth – The extent to which a country exhibits characteristics that encourage financial and infrastructural growth, including non-restrictive policies and initiatives that bolster entrepreneurship and market participation.
  3. Inclusion – A measure of a country’s ability to provide a level playing ground for all those who participate in market activities, including socio-economic barriers to entry.
  4. Strength & Diversity – The economic resilience of a nation, enhanced by the diversification of income and operations, and often reinforced by regulations and initiatives aimed at preventing collapse and encouraging core economic development.
  5. Trade & Investment – An indication of how well the country’s business sector interacts with global market participants, including their ability to invest internationally, and to be invested in by foreign interests.

For information or assistance in regard to expanding to- or filing in- any of these jurisdictions, e-mail africaip@adamsadams.com

NICKY GARNETT

Partner and Head of Africa Patents
Attorney

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ANDRE VISSER

Partner
Commercial Attorney

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URGENT NOTICE REGARDING LIBYA TRADEMARKS OFFICE

Civil unrest in the run-up to national elections scheduled for 10 December 2018 has led the Libyan Government to declare a State of Emergency. This has led to many government institutions being temporarily affected, including the Libyan Trademarks Office. All current deadlines have been postponed, until further notice, as the Trademarks Office is not fully operational, and its staff members are not fully present. There is uncertainty as to when the state of emergency will be lifted and the functions of the Trademarks Office, in particular, will resume. We are closely monitoring the state-of-affairs and are meeting with our North African associates, who will hopefully provide some further clarity, at the annual Adams & Adams Africa Network meeting which will be held at our offices on 13 September 2018 and 14 September 2018. We will update our website with any further developments, as and when they occur.

For additional queries regarding intellectual property rights protection in North African jurisdictions, e-mail AfricaIP@AdamsAdams.com

 

Notice issued by Trade Marks Dept. Adams & Adams

Maureen Makoko | Associate
Chiraag Maharaj  | Candidate Attorney

JANI CRONJE

Partner
Trade Mark Attorney

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MAUREEN MAKOKO

Associate
Attorney

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SHARING IS NOT CARING – IT’S IN YOUR NDA

Do not disclose confidential information, new designs, ideas or inventions without appropriate protection in place – a non-disclosure agreement (NDA).

You may lose the chance to obtain any protection for your IP if you do not register the IP before you disclose a design or invention to another person or business. As a general rule, confidential information can no longer be protected once it is in the public domain. You can avoid losing protection by disclosing the design, idea, invention or other confidential information to another person under the protection of a non-disclosure agreement.

Make sure it is clear that the non-disclosure agreement covers the information you are disclosing and that the terms of any non-disclosure agreement are appropriate. If the information is valuable we recommend seeking legal advice before disclosing the information and for preparation of the agreement. Avoid downloading NDA examples from the internet.

If your idea is worth protecting, ask a lawyer to draw up the agreement for you.

 

There are a number of types of IP that can be registered which include trade marks, design rights and patents. IP can be one of the most valuable assets of a company’s business, as it can prevent competitors from using your brand name for similar goods or services, add value to your company by giving it assets which it can licensed, and can be used to demonstrate your company’s worth to potential investors.
It is worthwhile considering IP registrations from the early stages of any business, and developing an IPfiling strategy, as many jurisdictions operate a “first to file” registration system and you may lose the possibility of obtaining any protection if you do not register the IP before you disclose your design or invention to the public.
You should take steps to register IP in jurisdictions that are relevant to your business. Registration is crucial to protect and commercially exploit your IP.

WHAT IS A TRADE MARK?

A trade mark, generally speaking, is any mark used, or proposed to be used, to identify goods or services, and to distinguish those goods and services from a competitor’s products or services. That ‘mark’ can be any sign that can be represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods, or any combination thereof. A ‘device’ can be any visual representation.

WHAT IS A PATENT?

A patent provides the right to exclude others from making, using, selling, offering for sale, or importing the patented invention for the term of the patent. A patent is a limited property right the government gives inventors in exchange for their agreement to share details of their inventions with the public. A patent is a right granted to anyone who invents any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter. Like any other property right, it may be sold, licensed, offered as security, or transferred.

WHAT IS COPYRIGHT?

Copyright protects the form of expression of ideas, not the ideas themselves. Many types of works are protected by copyright, such as product literature, content on your website, photographs, drawings, software, films, paintings, logos, lyrics and compositions, etc. Our copyright laws protect the copyright owner against anyone who copies or otherwise reproduces or adapts the work without the owner’s consent. A created work enjoys copyright protection and is protected as soon as it exists, provided that it is original and meets all the requirements.
As copyright is an unregistered right, you should include a copyright notice on your website and marketing materials to alert third parties of your rights.
For individual works you can use the © symbol as follows: “© 2018 Adams & Adams”. The year indicates when the work was made available to the public.

WHAT IS A REGISTERED DESIGN?

South Africa has many talented designers active in the field of furniture and lighting, cutlery, crockery, furniture designs, textiles, jewellery and wine and product labels.
South African designers and their product designs are highly regarded both locally and internationally and many of them have exhibited, and sold their products overseas. Some of the local trend setters are Haldane Martin, Heath Nash, Maxhosa by Laduma, Atang Tshikare, Gregor Jenkin and Anatomy, to name a few. Many local architects have become involved in designing furniture and interiors to complement their designs. Architects Silvio Rech and Lesley Carstens are pioneers in this field. Design protection is an area that is often underestimated and ignored by local designers.
Aesthetic and functional designs can be registered in South Africa. Functional designs are designs that have features which are necessitated by the function of the article to which the design is applied and are to a lesser extent relevant for this discussion. Aesthetic designs are however very relevant in the world of designs and can be utilised to obtain strong statutory protection for a period of 15 years.

If you need more information, send an e-mail to entrepreneur@adamsadams.com.

ANDRE VISSER

Partner
Commercial Attorney

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AFRICA | SOCIO-ECONOMIC THUMBNAIL – Q3 2018

Economic Overview

In many African countries, political transitions and economic reform initiatives have supported investor confidence and are predicted to contribute strongly to business and investment activities going into the second half of 2018. Sub-Saharan Africa experienced a palpable sense of economic optimism motivated by the political transitions and economic policy reforms introduced by the new investor-friendly administrations in Angola, South Africa and Zimbabwe.

Rapid growth has particularly been notable in non-resource intensive economies such as Ghana, Ethiopia, Cote d’Ivoire, Djibouti, Senegal and Tanzania, which rank among the world’s top 10 economies of 2018, according to the World Bank.

East Africa experienced robust economic growth in the past few years, averaging 5.9% in 2017, and forecast to continue accelerating in 2018 and 2019. Growth in the region is favoured by a rebound of agriculture from last year’s drought, strong household consumption, as well as public investment in infrastructure and mineral exploration and exploitation.

The growth outlook for the North African region is more favourable than other regions, aside from East Africa, with average growth projected at 5.0% in 2018. However, the geopolitical tensions and slower pace of reforms, as well as renewed volatility in oil prices constitute key downside risks.

Investment Opportunities

The signing of the African Continental Free Trade Area (AfCFTA) by 44 countries, in late March this year, was a historical moment for the continent. The AfCFTA aims to create a single, liberalised and diversified African market for goods and services, which will constitute a more balanced and sustainable export base. Some of the most anticipated benefits of the AfCFTA include a new, dynamic business climate driven by free movement among member states, accelerated infrastructure development, and increased inflows of foreign direct investment (FDI).

Another key progressive trend across Africa is the scaling of digital technologies, with data, design and the emerging fintech sector driving technological advancement. Africa’s underdevelopment provides huge opportunities for technological innovation. While the continent remains the leader in mobile money, with annual revenue of over US$22 billion, blockchain technology and cryptocurrencies are advancing conspicuously and transforming the way Africa does business.

The energy sector has also seen innovations in renewable energy across the continent. Out of the 168GW of total capacity that was installed in 2016, 33GW was renewable energy. The African Development Bank (AfDB) estimates yearly investment requirements of around US$65-90 billion in order to achieve universal access to electricity across the continent by 2025. The alternative energy sector thus presents an unprecedented opportunity for investors to consider.

PwC Megatrend Analysis 2017

SIMON BROWN

Partner
Trade Mark Attorney

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THE PROTECTION OF WELL-KNOWN TRADE MARKS IN ANGOLA

Although no express provision is made for the protection of well-known marks in the Angolan Industrial Property Act, 3/92 of 1992, well-known marks are in fact afforded some protection in Angola.

In practice, the Registrar will refuse or annul a trade mark if it constitutes a reproduction, imitation or translation of a mark that is well-known in Angola, if it is used for identical or similar goods or services and is liable to cause confusion.  A mark may also be refused or annulled where the mark, although used on goods or services that are not identical, constitutes a reproduction, imitation or translation of another mark that enjoys high renown in Angola, and the use of the mark is intended to take unfair advantage of, or may be detrimental to the distinctive character or renown of the mark.

Similar to the definitions contained in the Mozambique Industrial Property Code, a mark is considered well-known by the Angolan registry if it is well-known among the interested local public as a result of the promotion of the mark in Angola. A mark will be considered a mark of high-renown when it is well-known among the interested public as a result of the promotion of the mark in Angola or worldwide.

Notably, and an important fact to remember when instituting opposition proceedings based on the well-known status of a mark in Angola, the proprietor of a well-known mark or mark of high renown may only institute proceedings where they have registered or applied to register their own trade mark in Angola, albeit after the date of the application that they wish to oppose.

Although Angola is a first-to-file jurisdiction, given that the relevant legislation is silent on the protection and enforcement of well-known marks, it is difficult to predict how the authorities will apply the principles of protection to well-known marks.  A pattern that seems to be emerging from a slew of recent trade mark opposition rulings is that it is easier to succeed in an opposition based on well-known mark rights if it is a foreign entity that has applied to register the mark that you want to oppose, rather than a local entity.

In all instances though, in both Mozambique and Angola, the well-known mark proprietor will need to submit a wealth of convincing evidence as to the mark’s notoriety, preferably including, where available, evidence of local use or recognition in the country.  This can take the form of invoices to local entities, a listing of local retailers that stock the products, any country-specific websites or social media profiles, any local or at least Portuguese advertisements or local news articles or other publications that mention the mark.

Despite the fact that Angola acceded to the Paris Convention for the Protection of Industrial Property on 27 December 2007, the registry appears to give little regard to the provisions regarding the protection of well-known marks when considering an opposition filed against a local Angolan entity.

Ideally, the proprietors of well-known marks would be well-advised to prioritise the filing of their own trade mark applications in Angola, before a wily entrepreneur gets there before them.

ROBYN MULLER-MABUZA

Associate
Attorney

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BREXIT AND THE FUTURE PROTECTION FOR OWNERS OF EUROPEAN UNION TRADE MARKS (EUTMs)

European Union Trade Marks (EUTM’s) are trade mark rights granted by the European Union Trade Marks Office (EUIPO), which rights are enforceable in all countries that are members of the European Union. It provides a useful mechanism to avoid the need to register a trade mark in each of the EU member countries separately.

The United Kingdom was until recently part of this “merry” union of countries, with the benefit that the EUTM provided brand owners with a valuable extension of their rights in the United Kingdom.

Following the United Kingdom’s decision to formally divorce from the union on 29 March 2017 (BREXIT), there has been much uncertainty as to the future protection / extension of EUTM rights in the United Kingdom. There currently is a transitioning period in place until 29 March 2019 during which the current position would remain in force.

Unless the United Kingdom and the European Union come to an agreement on the effect of EUTM rights in the United Kingdom, the default position would be that EUTM’s would have no protection in the United Kingdom and that brand owners would have apply anew to register their marks nationally with the United Kingdom Intellectual Property Office. The default position (i.e. worst-case scenario) is certainly of concern to brand owners as they would cease to have protection in the United Kingdom and would have to take steps to secure rights in their marks in the United Kingdom. Some brand owners have already adopted a “belts and braces” approach with respect to their trade marks and prepared for the worst-case scenario by applying to register their trade marks nationally in the United Kingdom.

The United Kingdom’s decision also has significant implications for South African businesses, not only from a brand registration perspective, but also from a larger trade perspective, as the United Kingdom is currently South Africa’s second largest export partner in the European Union, and the sixth largest in the world.

It was not, however, anticipated that the position would turn out to be as drastic as the worst-case scenario but, as with any divorce, the outcome may be quite uncertain if the parties do not end their relationship on good terms. Certainly, from the European Union’s perspective, it appeared to be severely angered by the United Kingdom’s decision to divorce from the union. The United Kingdom on the other hand did not want to come across as apologetic for its decision, being of the view that an aggressive stance would strengthen its bargaining position – though back home there was much disagreement as to what a good BREXIT outcome or negotiating strategy would be.

Some much needed certainly about the intended outcome came earlier this year on 19 March 2018 with the divorcing spouses agreeing to transition terms which, inter alia, ensure that there are no substantive changes to the present framework on intellectual property until 31 December 2020. This essentially bought the negotiating parties a little more than a year to iron out an agreement as to the future protection of EUTM’s.

It is envisaged that a good outcome would be that, after 31 December 2020, all EUTM’s will automatically be “cloned” onto the United Kingdom Trade Marks Register with identical rights to other national UK trade mark registrations, with no action or expense required by brand owners (i.e. the best-case scenario). This envisaged outcome was described as “agreed at negotiators level” in a draft agreement published by the United Kingdom on 19 March 2018.

If an EUTM was still pending as at 31 December 2020 (i.e. has not yet proceeded to registration), it is anticipated that its final registration would only cover the European Union member countries and not the United Kingdom. However, it is anticipated that the owners of such marks would have a grace period with in which to apply to register such marks in the United Kingdom and claim a priority date equal to that of their corresponding pending EUTM application for the same mark. Given the speed at which marks proceed to registration at the EUIPO, it is not expected that there will be many such cases.

Further clarity has recently come to light in the form of a statement by the United Kingdom Parliamentary Under-Secretary for Exiting the EU, Mr. Robin Walker on 19 July 2018. Walker stated that the United Kingdom will protect all existing EUTM’s, even after the United Kingdom leaves the European Union. New United Kingdom trade mark rights will automatically be granted, free of charge, to extend such existing EUTM’s to the United Kingdom.

Although it is only in the form of a statement, the statement corresponds with the “cloning” scenario / outcome and certainly provides much needed clarity for anxious brand owners and intellectual property practitioners. There is, however, much that still need to be ironed out in the final agreement.

Unfortunately, as with any divorce, nothing is agreed until everything is agreed, and brand owners would be wise not to rely completely on the envisaged outcome. The only way to fully BREXIT-proof trade mark rights would still be to apply to register the relevant trade mark nationally in the United Kingdom, even if only for main / core brands. It will certainly be interesting to see where the spouses land up after the divorce, not only from a brand registration perspective, but from a trade perspective in general.

Wensel Britz | Senior Associate | Adams & Adams

Steven Yeates | Partner | Adams & Adams

WENSEL BRITZ

Senior Associate
Trade Mark Attorney

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OMG! CAN YOU JUST BE CHILL!?

OMG, OMFG, WTF!?, COOL AF – offensive and inappropriate or effing cool taglines? This is a question that was recently considered by the Advertising Standards Authority of South Africa in Typo Stationery / Kathrine Marsden & Another / 2018-809F.

Popular stationery store, Typo, advertised a sparkle ball point pen. The advertisement consisted of an image of the pen, a bubble with the acronym OMFG (where the F stands for the F word) and an image of a model holding her cheeks seemingly astonished by the offer. The advertisement was circulated in an email that was sent to Typo customers.

A consumer filed a compliant with the ASA arguing that the advertisement was contrary to the Advertising Practice Code (“the ASA Code”) in that it was highly offensive and insensitive towards children.

Clause 1 of Section II – Offence

The ASA had to consider the advertisement in terms of Clause 1 of Section II of the Code which provides that advertisements should contain nothing that is likely to cause serious, wide-spread or sectoral offence. The Clause provides that the fact that an advertisement may be offensive to some is not in itself sufficient grounds for upholding an objection to the advertisement. In considering whether an advertisement is offensive, consideration will be given to the context, medium, likely audience, the nature of the product or service, prevailing standards, degree of social concern, and public interest.

The ASA looked at a series of cases in which it had considered whether the acronym OMG and the word “effing” were considered offensive.  In Department of Social Development/E Cillie/17620, the Directorate held that whilst the complainant had a personal view on the acronym OMG, it does not believe that the use of OMG is likely to cause serious, widespread or sectoral offence, especially since the term has become widely used in the media.

In Webafrica / Fibre Internet / Timothy Wege & Another / 2018 – 7354F, the ASA held that the word “effing” is not per se offensive, is commonly used and other phrases or acronyms such as “WTF” are also in common use. Considering the widespread use of the word effing and that it was used in a way intended to be humorous, the hypothetical reasonable adult would not be offended by the use of the word “effing”.

In the present case, the ASA accepted that OMFG, where the F stands for the F word, was arguably more offensive than the acronym OMG, particularly to religious people. However, the ASA, by a slim majority held that OMFG was similar to the use of “effing” or OMG and, therefore, would not be offensive to adults.

Clause 14 of Section II – Children

The ASA also had to consider the advertisement in terms of Clause 14 of Section II, which provides that advertisements addressed to or likely to influence children should not contain any statement or visual presentation which might result in harming them mentally, morally, physically or emotionally.

The ASA, again, considered previous decisions. In particular, Dial A Nerd // AA Milford / 15791, which involved a radio advertisement where the F word had been bleeped out. The ASA held that the use of the F word in the commercial, although censored, is still not desirable when young and easily impressionable children are listening to the radio.

In Webafrica Fibre Internet / Timothy Wedge & Another / 2018-7354F, the advertisements under review was a billboard which contained the phrase “Effing Fast Internet” situated on school grounds and a radio advertisement where the word “Effing” had been bleeped out. The ASA enquired whether a child imitating the commercial and using the word “effing” would be acceptable and concluded that it would not. The ASA held that it was highly unlikely that a child would not understand the meaning of “effing” as used in the context of the advertisements. The ASA noted that it is required to err on the side of caution in matters involving children.

In the Typo case, it was the placement of the advertisement which resulted in the ASA finding that the use of OMFG in the advertisement was not harmful to children. Whilst the ASA accepted that the product, a sparkle pen, would be attractive to children, the advertisement was circulated via email to Typo customers only. Typo customers were identified as aged 18 – 35. The ASA held that a child who could be harmed by inappropriate language should not have unchecked access to emails.

Therefore, whilst the ASA has adopted quite a liberal approach in holding that advertisements containing commonly used phrases alluding to the F word are not offensive to adults, the same principles do not apply to advertisements that are accessible to children. It is likely that if the phrases, OMFG, WTF, EFFING, AF are included in advertisements that are easily accessible by children, whether on radio, in print media, billboards or point of sale material, such advertisements, whilst effing cool, will most likely be found to contravene the provisions relating to children in the ASA Code.

ALISSA NAYANAH

Senior Associate
Trade Mark Attorney

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TRADE MARK PROTECTION IN RWANDA | WHAT YOU NEED TO KNOW

According to the World Economic Forum, Rwanda is one of the fastest growing economies in Central Africa. The country has come a long way since the Tutsi genocide devastated its economy more than two decades ago.  Rwandans are now generally living healthier and wealthier lives and poverty rates have fallen in recent years.

Click on the image below for a snapshot economic, political and business analysis of Rwanda (2017) – in conjunction with In On Africa. In-depth and detailed reports on all African economies are available upon request.

With the huge economic strides made by Rwanda in the past 20 years, there is a sense of a real African success story bringing hope for the future. Serious considerations for conducting or doing business in Rwanda must be made in good time.  On this note, it is also important to create awareness on protecting IP rights, including trade mark rights in the country, which is fundamental to doing business.

A trade mark registration provides protection to the owner of a mark by ensuring the exclusive right to use it to identify goods or services, or to authorise another person to use it in return for payment. The owner shall also have the right to institute proceedings against persons who infringe his rights by using the registered trade mark without his consent.

Trade mark law may also be used to hinder the activities of unfair competitors, such as counterfeiters, who attempt to use similar signs/marks to market inferior or different products or services. In a bigger sense, registering trade marks promotes initiative, creativity and business by rewarding the owners of trade marks with recognition and financial profit. The law protecting trade marks enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

The process of registering a trade mark in Rwanda involves a limited number of procedural and documentary requisites. This is designed to facilitate easy and relatively cheap registration of trade marks. For a foreign applicant, the Registry only requires that the applicant appoints a local representative law firm, submission of an application form (containing full details of the applicant, a clear reproduction of the mark and a list of goods or services in respect of which the mark is to be used), a notarised power of attorney and a certified priority document, if priority is claimed. The costs to file an application are below US$1000 (inclusive of professional fees, official fees and disbursements).

The timeframe to secure registration (provided no obstacles are cited and no oppositions are raised) is quick insofar as African countries are concerned. Applications are normally examined and published (if accepted) within 6 months of filing. If the 60 day opposition term expires uneventfully, the application proceeds to grant and a registration certificate is issued. The registration is valid for a period of 10 years from the date of filing and is renewable indefinitely for 10 year periods. The renewal process is likewise quick and hassle-free. It is not necessary to prove use of a trade mark when applying for registration, nor is this required when applying for renewal in Rwanda.

Rwanda is a member of the Madrid Protocol, Lusaka Agreement on ARIPO, The Paris Convention and the Convention establishing WIPO. This is not an exhaustive list. Being a member of these Treaties has facilitated an environment conducive to protecting trade mark rights in Rwanda.

By law, Rwanda is a first-to-file country but in practice, the Registry recognises common law user rights.  Protecting one’s trade mark rights cannot be overemphasised.  While registration of a trade mark is not compulsory, it is advisable to do so since registration provides a cost-effective way to prevent infringement and also prevents others from appropriating and registering one’s trade mark. Rwanda is booming so consider protecting your trade marks and filing for registration today!

E-mail Rwanda@AdamsAdams.com for assistance with trade mark filing and protection.

JEANETTE VISAGIE

Senior Associate
Trade Mark Attorney

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BROKEN RECORD | KENYA COPYRIGHT DISPUTE

In Incognito Productions Limited & another v Nation Media Group [2018] eKLR, the Plaintiffs sought an interim interdict against the Defendant restraining the unauthorised use of its intellectual property.  

The parties had a business relationship dating back to 2005 in relation to a music television show broadcast in Kenya, namely The Beat. However, the show’s poor performance led to the parties discussing a revamp of the show which ultimately resulted in the launch of LIT360 earlier this year.

The objective of LIT360 is to cultivate local musical talent.

The Plaintiffs claimed that the Defendant had misappropriated their concept which underlies LIT360. The basis of this claim lay in business proposals shared between the parties in 2017. Specifically, the Plaintiffs claimed to have shared with the Defendant expressions of LIT360 in the form of literary and audio-visual works, which are protectable by copyright in Kenya.

The Court rejected the Plaintiffs’ application for interim relief but made several comments relevant to the determination of the main suit. Specifically, the Court noted that the trial court would need to determine whether:

  1. LIT360 was an improvement of The Beat and therefore created with proprietary information already in the Defendant’s possession or whether, as the Plaintiffs suggests, LIT360 is a separate and distinct work which infringes its copyright;
  2. the Plaintiffs are seeking copyright protection in an idea. LIT360 seemingly originated from business proposals which eventually culminated in a pilot show, which was delivered in a tangible form to the Defendant. It is trite that there can be no copyright in ideas;
  3. the Plaintiffs’ concept is original, as required by the Copyright Act in Kenya. The Defendant claimed that the Plaintiffs’ concept is similar to two other shows aired in the USA. The Plaintiffs argued that the shows in question were broadcast via YouTube while their concept envisaged a show simulcast via television and radio. It is unclear whether this difference in delivery will affect the determination of originality.

The Court held that there was insufficient evidence to support a claim of copyright infringement. The court also refused to award an interim interdict on the ground that the Defendant, who had also invested in LIT360, and its sponsors and affiliates would suffer loss.

The final decision in this case is highly anticipated, as the court will seemingly be required to develop the law regarding originality in the context of copyright law. In addition, this case will reveal the extent to which a concept or expression of an idea needs be reduced to material form to be eligible for copyright protection.

KIM RAMPERSADH

Senior Associate
Attorney

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SPLITTING HAIRS IN KENYA | TRADE MARK DISPUTE

In Style Industries Limited v Sana Industries Co. Limited [2018] eKLR, the Plaintiff, Style Industries, sought an interim interdict and an Anton Piller order against the Defendant, Sana Industries, a long-time competitor of the Plaintiff.

Both parties trade in relation to, inter alia, hair extensions in Kenya.

The Plaintiff had acquired the mark VIP COLLECTION in class 26 in Kenya in relation to “Hair additions, hair pieces and braids, weaves and wigs” from a predecessor. The acquisition of that company’s assets effectively resulted in the Plaintiff acquiring the mark, VIP COLLECTION and the goodwill attaching to that mark.

The Plaintiff claimed that in October 2017 it noticed that its turnover in relation to products branded with the mark VIP COLLECTION had plummeted. This was attributed by the Plaintiff to the Defendant’s trade in similar products bearing the mark VIP PREMIUM COLLECTION.

The Plaintiff sought an interdict from the Court claiming that the Defendant’s conduct infringed its right to use the mark VIP COLLECTION to the exclusion of all others and that its conduct would continue unless restrained by the Court. The Anton Piller order was sought on the ground that it would allow the Plaintiff access to the Defendant’s premises and authority to seize products in its possession to which the mark VIP PREMIUM COLLECTION had been applied until the end determination of the suit.

In its defence, the Defendant argued that, like it, the Plaintiff had used the mark VIP COLLECTION as an indication of the quality of its goods rather than as a trade mark. It also alleged that the claim by the Plaintiff that it had suffered economic loss as a result of its conduct was a misrepresentation. In fact, it claimed that this could be attributed to the prolonged general elections which took place at that time. The Defendant also pleaded that the get-up of its VIP PREMIUM COLLECTION mark rendered it distinguishable from the Plaintiff’s mark VIP COLLECTION.

Despite this, the Court found:

  1. that the Plaintiff had made out a prima facie case of trade mark infringement;
  2. that the Plaintiff stood to suffer irreparable loss which could not be adequately compensated with an award of damages; and
  3. that the balance of convenience favoured the Plaintiff as it was entitled to use of the mark VIP COLLECTION. Indeed, the Defendant who had been using the mark VIP PREMIUM COLLECTION since 2008 did not attack the validity of effect of the Plaintiff’s mark.

However, the Court did not award the Anton Piller order. The Court found that the order, which is aimed at the preservation of evidence, would be pointless, as the Plaintiff did not make out any case which suggested that evidence would be destroyed by the Defendant. In addition, both parties had adduced evidence of the Defendant’s use of the conflicting mark in their papers.

The Court’s decision to refuse the Anton Piller order, which would otherwise have given the Plaintiff access to the Defendant’s business and therefore an unfair advantage that did not appear to be warranted, appears to be a sensible one. The decision on the merits also appears to be correct. Whether or not the Plaintiff’s trade mark would withstand an attack on the grounds that it is generic, which was pleaded by the Defendant, is perhaps a different question.

KIM RAMPERSADH

Senior Associate
Attorney

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A NO-NONSENSE GUIDE TO THE LEGAL ASPECTS OF FRANCHISING

A Franchise Agreement is a sophisticated form of Licence Agreement.  It is therefore necessary to first look briefly at what a license is and what can be licensed.  The image below sets out the essentials of a License Agreement.  You will note that at the core, it is a contractual business relationship between a licensor and licensee.  The licensor is either the proprietor or a holder of certain intellectual property rights or technology which he allows the licensee to use in return for some sort of remuneration or other advantage.

Intellectual property rights which can be licensed include statutory or non-statutory intellectual property rights. Statutory intellectual property rights include patents, designs, trade marks and copyright whereas non-statutory intellectual property rights include know-how, trade secrets, customer lists, formulas, business methods, personnel training and manuals.

The object of a license is almost invariably to commercially exploit technology or intellectual property. To ensure the long term success of a License Agreement i.e. to achieve a win/win situation, it is recommended that the license must be structured in such a way that it is to the mutual benefit of both parties.

TYPES OF FRANCHISES

Although it is often said that there are two main types of franchising, namely (i) product and trade mark or trade name franchises and (ii) business format franchising, this is not an accurate explanation. A more correct approach is to view a product or trade mark franchise, as franchising in a simpler form in that the franchisee is only entitled to use the franchisor’s name or trade mark and product. This type of franchising is prevalent amongst motor vehicle dealers, soft drink bottlers and certain fuel service stations. Thus in a product or trade mark franchise only a single or a limited number of intellectual property rights are used.

The opposite end of the scale is a full business format franchise in terms of which the franchisee uses the franchisor’s entire business concept, which includes the name, trade marks, copyright, goodwill, know-how, trade secrets, trade dress and similar intellectual property. It is clear that in a full business format franchise numerous intellectual property rights are licensed to the franchisee to use. The two customary “types” of franchises are therefore at opposite ends of a continuum. It is of course for the franchisor or proprietor of the intellectual property to decide precisely what makes commercial sense and what he is going to allow the franchisee to use.

DEFINITION OF FRANCHISING

The International Franchise Association defines a full business format franchise as follows:

“Franchise operation is a contractual relationship between the franchisor and the franchisee in which the franchisor offers or is obliged to maintain continuing interest in the business of the franchisee in such areas as know-how and training, wherein the franchisee operates under a common trade mark, format or procedure owned or controlled by the franchisor, under which the franchisee has or will make a substantial capital investment in his business from his own resources.”

It is apparent that the key elements of the definition include:

(1)        a contractual relationship,

(2)        the franchisor offers or is obliged to maintain a continuing interest in relation to the know-how and training,

(3)        the franchisee operates under a common trade mark, format or procedure,

(4)        owned or controlled by the franchisor, and

(5)        the franchisee has or will make a substantial capital investment from his own resources.

The licensing of intellectual property to the franchisee is a central theme of the Franchise Agreement. The three most important areas of intellectual property in most franchise systems are trade marks, copyright and know-how.

TRADE MARKS

In terms of the Trade Marks Act, a trade mark includes any sign capable of being represented graphically including:

–           A device, logo or representation.

–           A name or signature.

–           A word, words, phrase or slogan.

–           A letter or series of letters.

–           A numeral or series of numerals.

–           The shape and configuration of a product or part thereof.

–           The pattern and ornamentation appearing on a product, packaging or advertising material.

–           A colour or combination of colours.

–           A container for goods, or any combination of the aforementioned.

It is often said that the corner stone of the Trade Marks Act is distinctiveness. To be registrable and so as to function as a trade mark, the mark must distinguish the goods and services in relation to which it is used from the goods or services of others.

COPYRIGHT

The next important area of intellectual property is copyright. Generally speaking, copyright is the right given to the creator, author or other person who may own the copyright of certain types of works, not to have that work copied or reproduced without authorisation. Copyright exists in various types of works including literary works such as manuals, documents, articles, promotional materials, disclosure documents, novels and publications. Artistic works include logos, labels, menus, advertisements and diagrams. Computer programmes also enjoy copyright.

A critical point to remember is that generally the author of copyright work is also the owner thereof, unless the work was made by an employee during the course of his employment. In this instance the employee will be the author, but the employer will be the owner. It is therefore essential that copyright in all works including logos, promotional materials, company documentation and other works which are prepared externally or outsourced, even if they have been paid for, are competently transferred to the franchisor in writing. If this is not attended to, although the franchisor (and the franchisees) will be able to use any such materials, the franchisor will not be the owner thereof.

KNOW-HOW

The term know-how usually refers to a wealth of technical knowledge, commercial information and experience developed and acquired by a fairly specialised production organisation. It is often reduced to the form of an operating manual or reflected in similar documentation. Many of the success features of franchises reside in the know-how, trade secrets and confidential information. It is important to note that if know-how or trade secrets are “leaked” or become public knowledge, it will no longer be possible to protect it and it may become valueless. Competent confidentiality provisions should therefore be included in the Franchise Agreement or in the employment contracts.

FRANCHISE AGREEMENT PROVISIONS

Next we turn to the Franchise Agreement itself. Due to the nature and complexity of a Franchise Agreement, it is the intention in this article to only highlight a number of important clauses or provisions which need to be considered when preparing or considering a Franchise Agreement.

DEFINITIONS

As in any other agreement, the parties must be properly identified and described. It is essential in a Franchise Agreement that the intellectual property being licensed is also properly identified and described in the Agreement. Definitions should therefore include inter alia, the trade marks, copyright, trade dress, know-how, trade secrets and other intellectual property.  The definitions should also include a description of the franchised business, the products and services. Further, bearing in mind that the proprietor or holder of the intellectual property is allowing the franchisee to use the intellectual property, definitions should also be included as to precisely what intellectual property will be used in which territory and for what period. Provisions should therefore be included for inter alia the territory, commencement date, the termination date and renewal.

GRANT

One of the most important terms in a Franchise Agreement is the grant clause. When considering this clause it should be borne in mind that there are various types of License Agreements. The first is an exclusive License or Franchise Agreement where certain intellectual property rights are given exclusively to a franchisee to use for example in a certain area. This franchisee will therefore be able to exclude all others including other franchisees and the franchisor from operating in that area. It should be borne in mind that where exclusive licenses are given, minimum performance standards or other safe guards should be put in place in the best interests of the franchise system.

The second type of License Agreement is that of a sole Franchise or License Agreement. Using the same example, in this instance the franchisee is given the sole right to operate a franchise or outlet in the specific area. This however, does not exclude the franchisor, who will be able to open one or more outlets and compete directly with the franchisee in that area.

Finally, there is an ordinary license or franchise in terms of which a franchisee is given the right to use the intellectual property, but enjoys no exclusive or sole rights whatsoever. For example, if he is given an area within which to operate, the franchisor and other franchisees will also be entitled to operate in the same area.

PAYMENT

The clauses relating to payment usually include at least three types of payment. These are the upfront lump sum, which is usually described as a franchise fee and which is paid to obtain the license or franchise. The breakdown of this amount usually includes the costs of setting up the outlet, costs of training, legal costs and an amount for goodwill. In newer franchises the amount attributed to goodwill is usually smaller, whereas in the more established franchises larger sums are requested for the established goodwill.

Royalty payments are also made by the franchisee to the franchisor. These could be fixed monthly, quarterly or annually. Alternatively, amounts based on a percentage of turnover are paid. These royalties are payable in lieu of the ongoing use of the intellectual property. The royalty figures have also been described as a management service payment, possibly to justify or to enhance the franchisee’s perception that he is also receiving management services from the franchisor. It can however cause difficulties in that the franchisee can refuse to pay the management service fee, if no services are rendered to the franchisee.  This difficulty may not be relevant if royalties are paid, for the reason that if the intellectual property is used, the royalty is payable.

It is common practice in full business format franchises, that each franchisee contributes a fixed amount or a fixed percentage of turnover on a regular basis towards the promotion and advertisement of the franchise operation. These monies must be paid into an independently managed fund. This fund is usually managed by the franchisor in consultation with the franchisees.

In certain franchises administration is attended to on behalf of the franchisees by the franchisor in return for which the franchisee may pay to the franchisor a  fixed monthly sum or a small percentage of turnover.

FRANCHISOR OBLIGATIONS

The next essential part of the Agreement are the obligations of the franchisor. The franchisor’s obligations are divided into initial and ongoing obligations. Initially the franchisor will assist with the setting up of the premises or outlet, furnish the franchisee with the operations and procedures manual, disclose the entire franchise system to the franchisee and train the franchisee.

Ongoing obligations of the franchisor include additional necessary training from time to time and also to assist with problems, management and to provide guidance, in addition to the ongoing management and development of the franchise system. It is essential in the long term best interests of the franchise system that the Agreement includes positive obligations and duties on the franchisor to render these services.

FRANCHISEE OBLIGATIONS

The obligations of the franchisee are usually fairly extensive. These should include provisions that the franchisee should operate the franchise strictly in accordance with the franchise system, usually as set out in the operations manual. In addition to fairly standard terms such as, for example, an obligation to pay all sums due timeously and to engage and properly train suitable staff, provisions should be inserted to the effect that the franchisee should enhance and promote the intellectual property, goodwill and reputation of the franchise at all times. In addition, the franchisee should also advertise and promote the franchise in accordance with the directions, requirements and specifications of the franchisor from time to time.

These provisions are essential so as to ensure a common brand, identity, consistency and quality. The franchisee should also in this regard allow regular inspections so as to ensure quality control.

Where monies are paid on a percentage of turnover, it is essential that the franchisee be obliged to give full access and assistance in respect of accounting records to the franchisor.

Ideally a franchise system should have a comprehensive operations manual. This should be a dynamic annexure to the Franchise Agreement and the agreement should provide that the franchisee shall act in accordance with the manual, as amended from time to time. This will enable the franchisor, where it makes prudent commercial sense to develop the business, to do so without having to continually sign updated Franchise Agreements.

ASSIGNMENT / CESSION/ALIENATION OF RIGHTS

The Agreement should contain a provision preventing the franchisee from ceding, assigning or in any way alienating any of his rights or sub-franchising without the written consent of the franchisor. This is an added protection to the franchisor and greater franchise system in that it will prevent franchisees from selling or alienating their rights, thereby possibly introducing unskilled and inappropriate franchisee persons into the business.

TERMINATION

The termination clause should be comprehensive in the best interests of the entire franchise system and/or other franchisees. In addition to standard provisions such as timeous payment, the clause should include provisions entitling the franchisor to cancel the Agreement if the franchisee fails to act in accordance with the operations manual, performs inadequately or maintains poor quality standards. Further, if there is any challenge on the proprietorship of the franchised intellectual property, this should also be a ground for possible termination of the Agreement.

AFTER TERMINATION

The Agreement should also provide for an after termination clause in terms of which the franchisor will be entitled to after the termination of the contract to retrieve all materials, documents, programmes and products bearing, reflecting or embodying the intellectual property of the franchisor or which is associated with the franchisor.  An option entitling the Franchisor to acquire the assets of the franchised business, should it so wish, may be prudent additional protection.  Similarly, an option to take over the lease of the premises of the franchised business, should also be considered.

RESTRAINT OF TRADE

So as to protect the franchise system, it is certainly advisable to insert restraint of trade provisions. These should be reasonable with regard to territory, nature of activity and period. Of concern here is that although it is often in the best interests of a franchise system to have all franchisees sign the same Franchise Agreement, this may not be appropriate in this instance. For example, if a franchise system sells three sizes of franchisee outlets, it would be inappropriate to have the identical restraint of trade provisions in each instance. A restraint of trade provision could be quite reasonable in the instance of a multi-million rand franchisee outlet rendering services to clients from a large area, whereas the same provisions could be unreasonable when considered in the light of a far smaller franchisee outlet. If a court finds a restraint of trade provision “unreasonable” it will be unenforceable. It is therefore prudent to rather include narrower or more reasonable restraints than broader restraints which may be unreasonable and therefore unenforceable.

Consideration should also be given, wherever possible to the protection of intellectual property rights, such as customer lists, data, know-how, trade secrets and confidential information, in this clause.

DISCLOSURE

It is necessary for the franchisor to furnish the franchisee with a competent disclosure document fourteen days prior to signature of the Agreement. It is therefore advisable to have a provision in the Agreement confirming that the franchisee was furnished with the disclosure document more than fourteen days before the date of signature and that he is happy that he has been furnished with sufficient reasonable information so as to place him in a position where he was able to properly assess whether to buy the franchise or not.

CONFIDENTIALITY

It is advisable that confidentiality agreements be signed by relevant staff in franchisee outlets so as to protect the know-how, trade secrets and confidential information of the franchise system. These clauses could also be inserted into employment contracts.

SURETYSHIP

Where appropriate, members or shareholders of close corporations, companies or other corporate entities should be requested to sign suretyship agreements so as to make them personally liable and accountable to the franchisor.

COMPETITION COMMISSION CONCERNS

It is appropriate to also deal with the Competition Act and the concerns of the Competition Commission. The concerns of the Competition Commission have included horizontal relationship collusion, vertical relationship collusion, retail price maintenance, exclusive territories, exclusive dealing, tying of products and intellectual property rights.

Retail price maintenance appears to be a primary concern of the Competition Commission in that a franchisor cannot dictate minimum prices or maximum discounts to its franchisees. Further, prices should also be recommended, rather than fixed and there should be no sanction or penalty if the recommended prices are not adhered to.

Very broadly speaking, with regard to exclusive territories, exclusive dealing and the tying of products, despite the fact that such provisions may at first blush reduce competition, when looking at all the facts and at the franchise system in detail, justifications or defences of efficiency, technology or other pro competitive benefits, may be raised. The difficulties with intellectual property rights appear to revolve around refusals to grant licenses to third parties and where there are excessive charges for the use thereof. Here defences or justifications would be possible if the Intellectual Property, for example, enhances efficiency in the franchise system and that exclusivity and protection of owners’ investment, as well as the importance and value of the intellectual property being used, can be justified in the circumstances.

CONCLUSION

Setting up a franchise system or obtaining advice on a franchise agreement and on intellectual property are complex areas of law.  It is therefore recommended that you utilise the services of specialised franchise attorneys or consultants (for the business aspects thereof), so as to ensure you are properly protected.

EUGENE HONEY

Partner
Trade Mark Attorney

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OAPI | PROTECTED GEOGRAPHICAL INDICATIONS PROJECT ENTERS SECOND PHASE

Protected geographical indications. Which products to select? This question was at the centre of a seminar held recently at the headquarters of OAPI. The meeting chaired by Mr. Denis Bohoussou, DG for OAPI, and led by Mr. Philippe Pedelahore technical assistant of the project in support of the establishment of Geographical Indications for the Member States of OAPI, reviewed the results of the identification and selection of agropastoral and artisanal products carried out in the OAPI area, which could be integrated into a protection approach as geographical indications.

Many products have already received consideration, such as:

  • Gari sohui flour and Agonlin oil from Benin.
  • Red cocoa and the Bafia pineapple, both from Cameroon.
  • Attiéké des Lagunes and Baoulé Pagnes from Côte d’Ivoire.
  • Friguiagbé’s Pineapple from Guinea.

Once finalised, this selection work will mark the beginning of a process that, in the long run, could allow these products to be awarded the “protected geographical indications” label at OAPI.

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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7 KEY INSIGHTS ON ZIMBABWE’S NEW IP POLICY AND IMPLEMENTATION STRATEGY

Recently, Zimbabwe launched its first national Intellectual Property Policy and Implementation Strategy [2018-2022] (“the Policy”). The Policy was drafted with the assistance of WIPO, and involved interface meetings and workshops with various stakeholders.

In reviewing the policy and implementation strategy our team has published the following observations regarding its objective and roll-out.

1.

The Policy acknowledges the important role that Intellectual Property Rights (“IPRs”) play in cultural, economic and social development. It also recognises the fact that Zimbabwe has impressive IP potential, which can be harnessed to develop its economy. The utilisation of this potential has, in the past, been substandard. This has been attributed to a lack of understanding and knowledge regarding IP and IPRs. Consequently, it has not been able to fully benefit from the exploitation of its IP assets. Part of this challenge has been as a result of the absence of an IP policy to guide and give direction as to how Zimbabwe can economically exploit IP into the development plans of the country. It is therefore prudent that appropriate measures and strategies are put in place to ensure that IPRs are efficiently protected and used to enhance such development.

 

2.

The Policy’s overall objective is ensuring that the entire Intellectual Property governance framework, such as diverse laws and regulations, strategies, action plans, treaties, protocols, practices etc., leverages Zimbabwe’s IP potential for inclusive and sustainable economic growth and development. The specific objectives which the Policy seeks to effectively pursue include:

  • Raising and consolidating IP awareness amongst the general public;
  • Informing stakeholders about the economic benefits of IP;
  • Enhancing IP knowledge and professional skills capacities;
  • Encouraging the mobilisation of IP through acquisitions and own creations;
  • Protecting IP;
  • Inspiring the commercialisation of IP; and
  • Enhancing IP trading mediation capacities.

 

3.

Core sectors which the Policy focuses on are: Agriculture; industry; health; education, training and professional skills development; environment; culture; trade; tourism and small and medium sized enterprises (SMEs). These sectors have been prioritised as they contribute to the growth of the economy. Summarised below are the key issues which the Policy will focus on in each sector:

Agriculture

Since Agriculture is the backbone of Zimbabwe’s economy, it is important to ensure that correct measures are put in place to protect the IP-related issues applicable in this sector. Accordingly, the Policy will focus on Geographical indications, Plant Breeders Rights, Indigenous Knowledge Systems and Biodiversity. These protection systems should be leveraged to ensure that the agricultural sector in Zimbabwe thrives.

Industrial

In the case of the Industrial sector, the Policy will seek to, amongst other things, strengthen the management of Intellectual Property Systems and develop IP portfolios. In addition, through a functional innovation system, it will promote interactions between innovators and researchers on the one hand, and the industry on the other.

Health

Quality medicines, which have saved and improved the lives of many, have been entering the market as a result of the strategic use of Intellectual Property. The Policy will therefore promote access to medicines at affordable prices through the exploitation of the TRIPs flexibilities, and research and development in the area of pharmaceuticals.

Education, training and professional skills development

Since IP knowledge in Zimbabwe is limited, the Policy will ensure that local capacities are developed to provide specialised IP knowledge and professional IP skills on a practical level.

Environment

In correspondence with international undertakings to which Zimbabwe is a signatory, the Policy will pursue the effective implementation of The Convention on Biodiversity and The Nagoya Protocol. This will ensure that the process of harnessing IPRs for socio-economic transformation does not conflict with the preservation of Zimbabwe’s environment for current and future generations.

Culture

Zimbabwe’s cultural heritage and geographic indicators will be protected and leveraged as central and integral elements of the country’s IP assets portfolio.

Trade

Since the country has been exporting most of its products (such as diamonds and platinum) as unprocessed raw materials, the growth of the economy has suffered due to the small returns obtained from these unprocessed and semi-processed products. Zimbabwe has therefore found itself in a position where it exports most of the products in raw form (realising very little profit) and then imports the finished products at a higher cost. The Policy will therefore seek to correct this by applying rigorous border measures which will protect economic entities operating in the national market (whether they are locally or internationally owned business). This, in turn, will create a beneficial investment environment.

The Policy also recognises the need to strengthen the manufacturing capacity of the country’s manufacturing industry so that value can be added to raw materials which are exported. The IP system will enable this through mechanisms such as licensing arrangements and technology transfer.

The thrust of the policy will be to increase international competitiveness of Zimbabwean industry and products through the application of science, technology and innovation. IP is a key enabler of innovation and creativity, as well as an incentive for investing in research and development.

Tourism

With tourist numbers rising in the first quarter of 2018, it is no wonder that the emphasis of the Policy will be to leverage certain IP assets to promote competitiveness through increased tourist activities in the national market. These IP assets include certification marks, geographical indications, indigenous knowledge systems, service marks and destination branding. Essentially, these IP assets can be used to promote the quality of relevant local tourist industry services, rurally-focused and agri-driven tourism, the learning of different cultures, and to distinctively position their market offer.

SMEs – small and medium scale enterprises

SMEs contribute significantly to the economy in Zimbabwe as they generate employment and contribute to the economic growth and development of the country. The Policy will therefore focus on appropriate legislation targeting Utility Models, Collective marks and Geographic Indicators.

 

4.

The Policy also defines the concepts of ‘intellectual property’ and ‘IPRs’ and places specific emphasis on the need to protect trade secrets and traditional knowledge.

 

5.

The vision of the Policy is to transform the country into a globally competitive one, with a dynamic Intellectual Property System that propels creativeness and innovativeness or inventiveness, and effectively guides the promotion, acquisition and commercialisation of Intellectual Property for sustainable economic growth and development.

 

6.

Six key considerations which guide the generation of strategies for the implementation of the Policy include: the enhancement of domestic capacities to generate IP, the promotion of the acquisition of IP, the promotion of commercial exploitation of IP, putting in place reliable IP laws and regulations and enforcement mechanisms, regional and global appreciation and supporting the industrial transformation of the economy.

 

7.

Actions to be taken to implement this Policy include:

  • Raising and consolidating IP awareness among the people of Zimbabwe. The measures taken to achieve this goal will form part of an outreach programme targeting the general public, specific stakeholder groups and key stakeholders in the public and private sectors, as well as the civil society.
  • Consolidating IP literacy and professional skills. To enable the economy to generate its own IP, a competitive pool of local IP experts needs to be systematically built and sustained. This can be achieved through introducing individual courses and integrated programmes on IP matters in the curriculum of domestic and education and training institutions.
  • Enhancing the IP domestic governance framework through bridging the gaps, providing comprehensive protection of Zimbabwe’s IP concerns and interests, and ensuring that competition is not stifled by the application of IPRs.
  • Enhancing domestic fiscal capacities to finance IP generation and commercialisation. In this case, the Government of Zimbabwe will mobilise and provide incentives to various financial institutions. In addition, a round table of relevant stakeholders will be organised by the Government to assess the situation and devise a practical IP finance system that will assist and nurture creativity and encourage innovation and inventiveness.
  • Developing an integrated IP economy in the country by taking measures which will promote IP entrepreneurship and develop the IP market.
  • Enhancing domestic institutional capacities for IP administration. Here the Government needs to strengthen the national IP office, establish a system for IP management at tertiary institutions and the private sector, institutionalise a mechanism for licensing control and establish a model national licensing system, establish Technology and Innovation Support Centres and a strategy for the promotion and communication of intellectual property activities.

It is refreshing to see how the Policy acknowledges IP as a strategic asset for promoting innovation and technological development and will prove to be a most useful tool in guiding the country’s efforts to leverage IP for sustainable economic growth and development.

A comprehensive action plan, results-based monitoring and evaluation framework and indicative budget will now need to be designed in order for the Policy to be deemed complete and ready for implementation. We will be monitoring the implementation of the policy in earnest.

Adams & Adams, through our Associate Office, is available to provide any assistance in securing protection for trade marks, designs and patents, and any advice regarding copyright law in Zimbabwe. For further updates, information and queries on copyright law, trade mark, patent and design filings in Zimbabwe, e-mail zimbabwe@adamsadams.com

LAUREN ROSS

Partner
Trade Mark Attorney

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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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MELISSA SCORER

Associate
Attorney

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ESWATINI | SWAZILAND NAME CHANGE MADE OFFICIAL BY NOTICE IN GAZETTE

We previously reported that, at Independence Day celebrations on 19 April 2018, King Mswati III announced that the country’s name, Kingdom of Swaziland, would change to Kingdom of eSwatini.  This name change was made official by Legal Notice No. 80 of 2018 published in the Gazette of 11 May 2018. The Notice is deemed to have come into force on 19 April 2018. The Notice further provides that reference to Swaziland in any written law, international agreement or legal document shall be read and construed as a reference to eSwatini.

The validity of this Notice/name change has, however, been challenged by the Institute for Democracy and Leadership (Ideal) and its director, Mr Maseko. They have brought an application against the King’s decision. The application essentially argues that the name change is not in line with the constitution of the country, as citizens of Swaziland were not involved in the decision-making process. The constitution prescribes legislative processes which were not followed; instead the name change was merely announced during the Independence Day celebrations.

It is unclear whether the application will be granted, but we will be keeping a close eye on this case and will report developments. From a trade mark point of view, we understand that the Registry has not yet published official trade mark documents reflecting the new name (CLICK HERE TO READ: What would it cost?), but will do so once current stocks are depleted. Until we have confirmation from the Registrar that new documents lodged with the Registry are to reflect the new name, we shall continue using the current official documents, reflecting the Kingdom of Swaziland.

Further developments will be reported, but should you have any queries, please contact us at swaziland@adamsadams.com.

NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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TUNISIA AND SOMALIA JOIN COMESA

The Republic of Tunisia and the Federal Republic of Somalia were admitted as members of the Common Market for Eastern and Southern Africa (COMESA) during the COMESA Heads of States and Governments Summit held on 18 and 19 July 2018 in Lusaka, Zambia.

COMESA now has 21 member states – Burundi, Comoros, Democratic Republic of Congo, Djibouti, Egypt, Eritrea, Ethiopia, Kenya, Libya, Madagascar, Malawi, Mauritius, Rwanda, Seychelles, Somalia, Sudan, Swaziland, Tunisia, Uganda, Zambia and Zimbabwe.

COMESA is a regional trade bloc aimed at establishing a free trade area, amongst other things.  COMESA’s vision is to “be a fully integrated, internationally competitive regional economic community with high standards of living for all its people ready to merge into an African Economic Community” while its mission is to “endeavour to achieve sustainable economic and social progress in all Member States through increased co-operation and integration in all fields of development particularly in trade, customs and monetary affairs, transport, communication and information, technology, industry and energy, gender, agriculture, environment and natural resources”.

For additional information regarding commerce and intellectual property in these regions, e-mail tunisia@adamsadams.com or somalia@adamsadams.com

NISHI CHETTY

Partner
Trade Mark Attorney

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AMINA SULIMAN

Senior Associate
Trade Mark Attorney

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UDI PILLAY

Senior Associate
Attorney

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PATENT LITIGATION IN SOUTH AFRICA | WHAT YOU NEED TO KNOW

Did you know that patent matters in South Africa are adjudicated in a specialised court: the Court of the Commissioner of Patents? The Commissioner effectively has the powers of a High Court judge and the specialised court functions in a very similar way to a division of the South African High Court. The Commissioner has the power to grant injunctions against infringers as well as to order delivery-up, the payment of damages or the payment of a reasonable royalty.

This, and other essential information relating to patent litigation and patent office procedures in South Africa, is provided in the latest edition of Patents 2018 – a Getting The Deal Through publication. The South Africa chapter is authored by Adams & Adams Partner, Russell Bagnall, who provides answers to questions regarding: types of enforcement proceedings, trial format and timing, standing to sue, standards of proof, inducement/contributory infringement, infringement by foreign activities and by equivalents, discovery, litigation timetable and costs, appeals, alternative dispute resolution, absolute novelty, obviousness or inventiveness, patent unenforceability, voluntary and compulsory licensing, patenting timetable and costs and patent office appeals and opposition and patent duration and modification.

Download a pdf version of the South African section here, or download the Global Guide here.

Reproduced with permission from Law Business Research Ltd. This article was first published in Getting the Deal Through – Patents 2018 (Published: April 2018). For further information please visit www.gettingthedealthrough.com.

RUSSELL BAGNALL

Partner
Patent Attorney

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BURNBERRY | PRODUCT DESTRUCTION AS IP STRATEGY

Luxury British clothing brand BURBERRY recently ‘came under fire‘ for destroying clothing items worth more than £28 million (almost R500 million).

It is no secret that well-known and highly coveted brands spend millions on advertising, promoting and protecting their brands and Burberry is no different.  Burberry’s history dates back to 1856 and its iconic Burberry check design is known the world over.  To what extent would Burberry go to protect the iconic status that it has built up for more than 150 years – lights, camera, flames?

Burberry’s annual report which, in addition to reporting on the £2.7bn revenue in the 2017/2018 financial year, also declared that “the cost of finished goods physically destroyed in the year was £28.6m”.  This figure is up more than £2 million from £26.9m in the previous year.

Burberry has since its disclosure, announced that the goods were disposed of in a responsible and environmentally friendly fashion – claiming that the energy generated from burning the goods was captured.  To this end, Burberry’s financial reports also indicated that the company is committed to reducing, reusing and recycling any waste that it creates- this is supported by the company’s five-year partnership with Elvis & Kresse, which aims to transform at least 120 tonnes of Burberry leather off-cuts into a range of new products.

Burberry joins a bevy of luxury brand companies such as Richemont, the luxury goods holding company of Cartier, Montblanc and Piaget, who bought back and destroyed more than £400 million worth its luxury watches; Louis Vuitton and Chanel who for years have been rumored to destroy unsold items. The practice of destroying branded products, which appears to be common for luxury brands, apparently also extends to other fast fashion retailers who are rumored to destroy tons of unsold clothing items.

Fashion is fickle and maintaining the exclusivity and ultimately the commercial magnetism of a luxury brand will depend largely on the consumer’s demands.  An oversupply or sale of the unmistakable Burberry trench coat, or any item, at a reduced price does little to maintain the attraction and exclusivity surrounding the purchase and ownership of a luxury branded item.

A further driving force behind the destruction of luxury goods is to avoid the goods being sold on the ‘grey goods’ market. ‘Grey goods’ are genuine goods which are sold without the consent of the brand owner and usually results in the goods being sold at a lower price than that of the authorised distributor in the country of import.  Although the sale of grey goods will generally not amount to trade mark infringement in South Africa, the reseller must, in terms of the Consumer Protection Act, ensure that consumers are made aware of the fact that the products are grey goods.

From a branding and intellectual property perspective it is easy to see why large luxury corporations would destroy unwanted goods.  What is less straightforward, however, is justifying the practice against the global background of socio-economic sensitivities.

By Robyn Müller-Mabuza | Associate

DEBBIE MARRIOTT

Partner
Trade Mark Attorney

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ROBYN MÜLLER-MABUZA

Associate
Trade Mark Attorney

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SEEING THE FUTURE | AN INTERVIEW WITH JOHAN DU PREEZ

At the recent International Conference of the Licensing Executives Society (LESI), senior Partner, Johan du Preez was presented with a Service Recognition Certificate for service to the organisation as President of LES South Africa for two terms, for service as an international delegate, and for service chairing the LESI Trademarks and Licensing Committee.

His involvement with LES began in 1990 when he attended his first National Conference in Swaziland. He soon became involved with the organisation and planning of local conferences, training courses and speaking events. Johan was elected as a board member of LES (SA) in about 1995 and he assisted fellow Adams & Adams Partner, Alan Lewis, in organising the expanded LES Delegates Meeting which was held in Cape Town.

He became Secretary to the Board in 1997 and was elected Vice President in 1998. LES (SA) tendered for an International Conference and was awarded the 2001 International Conference in Cape Town.  He became President of LES (SA) at the end of 2000 and was President during the 2001 LESI Conference. He remained President until the end of 2002.

From 2002 to 2007, Johan participated and fulfilled many rolls in LES (SA) and the Chapter was again awarded another LESI Conference – hosted in Sandton in 2010. He was again the Chair of the Organising Committee and President of LES (SA) at the time of the Conference, from 2009 until beginning of 2011. Johan is the only LESI member that has organised two International Conferences while being a national President – no mean feat for such a large society.

More recently, Johan was approached by Audrey Yap, incoming International President in 2020, to arrange the LESI “Winter Planning Meeting” in South Africa. Probably his last LESI activity, this will complete Johan’s full circle of involvement with the organisation.

We congratulate Johan on this fantastic achievement in recognition of his work with the LESI. In a recent wide-ranging video interview with Johan du Preez, we asked him about his involvement with LES, the important work that the organisation carries out, and lessons for young lawyers. He also gave us a unique glimpse into the future of law and the future of Africa’s economies. Watch our summary clips below, or watch the full video here.

THE INTERVIEW | ALL ABOUT THE LICENSING EXECUTIVES SOCIETY

Founded in 1972, and incorporated in 2000, LES International (LESI) is the umbrella organization of national and regional associations for licensing executives. A Board of Directors and Board of Delegates, consisting of representatives of all national and regional societies, oversee the activities of LESI.

WHAT THE ROLE OF LES INTERNATIONAL IN GLOBAL BUSINESS? 

HOW IS THE LICENSING EXECUTIVES SOCIETY STRUCTURED?

“I was always involved with the Trademarks, Designs and Merchandising Committees and became Vice Chair of the Trademarks Committee when Martin Schneider was Chair, in 2012/3. I became Chairman of the Committee in 2014 to date.”

WHAT WAS YOUR ROLE WITHIN THE LES ORGANISATION?

HOW DID YOU GET YOUR START WITH ADAMS & ADAMS AND LES? 

“The LESI Committees I’ve served on were, over the years, always involved with projects either that are industry or region specific. For instance, we studied royalty rates in License Agreement applicable to trade marks, designs and merchandising and the LESI recently published those results as part of a bigger project.”

LESSONS IN GROWING YOUR LAW PRACTICE

THE PRIVILEGE OF WORKING ON LES COMMITTEES

“Our committee also presented the LESI submissions to the Public Consultation on the possible revision of the Tobacco Products Directive 2001/37/EC to the Board and we were represented at a meeting during the INTA Conference where several professional bodies were present. I delivered a paper on this in Australia in 2009. We again dealt with this in Belgium in 2015. At the same conference I delivered a paper a paper on 3D printing – more specifically on 3D printing a way from control and the specific statutory rights, not only IP, that could be infringed by such actions.

THE INTERVIEW | ALL ABOUT THE FUTURE OF LICENSING AND LAW

LICENSING IN AN ECONOMY OF BLUEPRINTS

WHAT ABOUT LICENSING AND IP IN AFRICA?

“Society is moving from a volumes economy to a customised economy of blueprints. Blueprints will be the new commodities”

WHAT DOES THE LES ACCOLADE MEAN FOR YOU PERSONALLY?

JOHAN DU PREEZ AT THE LES INTERNATIONAL CONFERENCE AFTER ACCEPTING HIS CERTIFICATE OF RECOGNITION.

SINGING HIS LAST SONGA | KENYA COPYRIGHT DISPUTE

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

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

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

Songa | The app at the centre of the copyright dispute

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

In addition, the Plaintiff will need to establish that:

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

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

by Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

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

SISIPHO NGOMA

Associate
Attorney

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TRADE MARKS IN ETHIOPIA | WHAT YOU NEED TO KNOW

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

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

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

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

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

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

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

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

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

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

by Sbongakonke Khumalo | Associate

and Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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

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

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

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

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

  • IP and public health; and
  • International IP cooperation

IP AND PUBLIC HEALTH

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

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

Substantive Search and Examination

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

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

Patent opposition

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

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

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

Patentability criteria

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

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

Disclosure requirements

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

Parallel importation

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

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

Exceptions

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

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

Voluntary and Compulsory licenses

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

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

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

IP and competition law

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

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

Rule of Law and Legal Certainty

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

INTERNATIONAL IP COOPERATION

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

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

By Ramon Pereira | Associate

And Gizela Lombard | Candidate Attorney

JANICE GALVAD

Partner
Patent Attorney

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RAMON PEREIRA

Associate
Attorney

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SWAZILAND | IP AND PATENT BILLS PASSED

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

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

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

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

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

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

MANDY SWANEPOEL

Partner
Trade Mark Attorney

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NICOLE HAWORTH

Senior Associate
Trade Mark Attorney

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NAMIBIA INTRODUCES NEW INDUSTRIAL PROPERTY ACT

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

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

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

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

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

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

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

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

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

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

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

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

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

DALE HEALY

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner | Head of Africa Patents
Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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MOROCCO | REGISTRATION AND RENEWAL CERTIFICATES NOW ISSUED ELECTRONICALLY

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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COPYRIGHT IN TATTOOS | A PRICKLY LEGAL QUESTION

Would it ever occur to you that a third party might be able to claim rights in your skin? In the case of art that has been inked into your skin, namely tattoo art, that may well be the case.

A tattoo is an artistic work. If it is original and reduced to a material form (which it very arguably is when it is inked into your skin), copyright subsists. In the case of artistic works, it is the artist or creator of the work who owns the copyright, namely the tattoo artist and not the person on whom the tattoo appears, irrespective of the fact that the latter has paid for his/her tattoo. In short, when you pay your tattoo artist, you pay for the tattoo, not the copyright subsisting in it.

This issue has come up for legal consideration in the United States, more recently in a matter involving Solid Oak Sketches and video game maker Take-Two Interactive. The latter is involved in the creation of the popular “NBA 2K” basketball video game series and Solid Oak Sketches has alleged that it owns the right to exploit the copyright in the tattoos appearing on a number of players in the games.

In a rather astute business move, Solid Oak Sketches purchased the exclusive rights to license certain basketball players’ tattoos from the original tattoo artists. Solid Oaks Sketches has therefore made the argument that, by reproducing detailed depictions of the body art appearing on some of these players in its games, Take-Two Interactive has infringed its copyright. In its defence, Take-Two has argued that it is only depicting the players as they appear in real life, that the focus of the game is not on the players’ tattoos, that the issue is de minimis and, in any event, that a finding in favour of Solid Oaks would result in public figures having to “seek its permission every time they appear in public, film, or photographs”, which would be impractical and untenable.

On face value, copyright infringement has indeed occurred. An original artistic work, which a tattoo undoubtedly can be, has been reproduced without the artist’s authority by a third party in the course of trade and for financial gain. At the heart of copyright law is the idea that creators, artists, should be compensated for their creativity, and there is no reason why the creativity of a tattoo artist should be discounted.

However, a tattoo artist’s rights, thanks to his medium, are less straight-forward than those of artists working on canvas or with clay. Although a tattoo is an artwork which has been reduced to a material form, the material form to which it has been reduced is on a human body. The sport stars appearing in the NBA 2K game series are human beings who, tattoo artists are well-aware, will be photographed, make public appearances and quite possibly wish to exploit their own likeness, being celebrities, for financial gain. Legally, there must be a fairly broad implied licence given by the tattoo artist to the person being tattooed to make use of the tattoo in his or her everyday life, but the argument will turn on how broad that licence might be.

Of course, the difficulty for Take-Two Interactive is that it is not making use of, for example, photographs of the players, which would be “real life” depictions of them, but rather artistic representations of them as the video game versions of them appear in the games. While Take-Two argues that its use constitutes “fair use”, the question is whether it is strictly necessary for it to have included the players’ body art in its depictions, or “avatars”, of them, and whether depictions of that nature would be covered by the implied licence mentioned above. Solid Oak Sketches argues that the answer is a clear no. If the appearance of the tattoos on the players in the game is merely incidental and of minimal focus and importance, this begs the question why the tattoos have been reproduced in the game at all. The depictions being used by Take-Two have been created by it and are not images of the basketball players and their actual skin, as one might find on the cover of a magazine, for example. It is questionable whether the “fair use” defence can successfully be invoked in Take-Two’s circumstances.

Indeed, the US District Court, in 2016, disagreed with Take-Two’s arguments that its use is fair, or that it is de minimis and its motion to dismiss the matter was rejected. One relevant consideration was the fact that, as a medium, unlike films, video games allow viewers to view images in different ways, and for as long as they like. The depiction is not fleeting or momentary.

Given the increasing popularity of tattoos in our popular culture, and quite notably with sport stars, it is recommended that public figures seek assignment of the copyright in their tattoos from their tattoo artists. The National Football League (NFL) in the United States has already been making similar recommendations to its players to avoid them getting into hot water over the depiction and commercial exploitation of their tattoos and our local sports stars in South Africa would be well advised to follow suit.

Acquiring the rights in their tattoos will prevent future claims from the tattoo artists for royalties or other compensation where public figures might wish to exploit their own image, which will naturally include their tattoos, for financial gain (for example, in advertisements, film or television). It will also allow public figures to restrain third parties, on the basis of copyright infringement, from making use of depictions of their tattoos to suggest a relationship between themselves and the public figure when, in fact, none exists. The value in the names and likenesses of celebrities is undeniable and the popularity of celebrity “endorsement deals” and sponsorships is a testament to that. A person who is in the public eye would not want to be limited in any way from exploiting his or her own image and celebrity status.

It is not inconceivable that a person’s tattoo might become so recognisable that third parties might wish to use it to call that person to mind and perhaps suggest an endorsement by that person. A good example of this is the dispute that arose around the film, The Hangover Part II, where one of the characters woke up, with shock, horror and hilarious results, to find Mike Tyson’s well-known face tattoo inked onto the side of his face. Mr Tyson’s tattoo artist took legal action against Warner Brothers for using the tattoo without authority and, although the case settled and the judge did not need to render a decision, the tattoo artist may well have succeeded in court. After all, the artist’s design did not appear on Mr Tyson’s face which, under the implied licence discussed above, would surely be allowable in a film featuring Mr Tyson, but was copied and reproduced on the face of another with the reference to the original tattoo being clear.

As the popularity of “getting inked” continues to mark the prevailing popular culture, legal issues around that ink, particularly intellectual property concerns, will become more prominent.

The matter between Solid Oak Sketches and Take-Two Interactive is one of the few body art disputes that has not, to date, been settled out of court and it will be interesting to see how this matter progresses.

By Nicole Smalberger | Senior Associate

 

NICOLE SMALBERGER

Senior Associate
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THOU SHALL NOT LIE – EVEN FOR LOVE

Earlier this year eHarmony Ltd (an online dating website) had one of its advertisements banned by the ASA in the United Kingdom for being untruthful – about love. The advertisement was a billboard on a London Underground platform and read: “Step aside, fate. It’s time science had a go at love.”

It was complained to the ASA that the advertisement is misleading as there was no scientific evidence to support the efficacy of mathematical dating applications or websites – whether it was possible to find the love of your life based on science. The advertisement in issue seemed to claim that one could.

eHarmony argued that their advertisement did not make any claims other than suggesting that their matching system was scientific, and that consumers would interpret the advertisement to mean that their scientific method would suit them better, but would not believe that it was a guarantee at finding love. eHarmony submitted evidence of the workings of their algorithm. The algorithm was based on data collected from more than 50 000 married couples in 23 different countries. They claimed that the algorithm was based on certain scientific theories relating to relationships between persons. eHarmony had obtained a patent for its algorithm and submitted further proof of two published studies which reported higher levels of marital satisfaction for couples who met through eHarmony.

The ASA accepted that consumers would perceive the advertisement to refer to a dating website and that they would not understand the advertisement to imply a guarantee of finding ever lasting love. However, consumers would understand the phrase “scientifically proven matching system” to mean that scientific studies had demonstrated that eHarmony’s website offered users a significantly greater chance at fining lasting love compared to what could be achieved if they did not use the service. The ASA found the evidence submitted by eHarmony to be insufficient proof that the algorithm used for their website provided a greater chance of finding lasting love. While eHarmony’s algorithm had been shown to result in a lower percentage of marital break-ups, it was higher compared to those who had met through other online means (e.g. e-mail, chatrooms, etc.).

The ASA rejected one of the studies submitted by eHarmony on the basis that the participants in the study were offered an incentive to participate and that the data obtained was accordingly not sufficiently random and objective.

In all, the ASA held that the studies submitted did not provide objective insight into the likelihood of eHarmony’s website/algorithm finding users lasting love compared to others who did not use the service. The result was that eHarmony could not substantiate the claim. The claim “scientifically proven matching system” was held to be misleading and eHarmony was ordered to withdraw the advertisement in its current form.

Although the case was decided in the United Kingdom, the lessons to be learnt from it are equally true for businesses in South Africa. The Code of Advertising Practice of the South African ASA contains similar clauses dealing with substantiation of claims and misleading advertising in general. The merits of the decision aside, it illustrates the value of reviewing advertisements beforehand, and the need to be very careful of the content of the advertisement and how it may be perceived by the reasonable average consumer.

Quite often businesses include phrases or exaggerated statements in their advertisements, being of the view that consumer would see them as mere puffery. Puffery in its true form has always been accepted by regulatory authorities in South Africa. The reason for this is that consumers would not be prejudiced if they realised that the business is merely bragging. However, the line between puffery and misleading statements has become very thin of late and it is quite often found that a statement would not be perceived as puffery, but rather as a claim, which in many cases is misleading (e.g. best hairdresser in Cape Town).

Claims can be made either expressly or they can be implied. Businesses should be very careful in reviewing their advertising before it is published to determine whether it contains any claims and, if so, whether the claims are truthful and can be substantiated with objective (independent) research. It is not enough for the business itself to believe that the claim or statement is true. It must be capable of being substantiated objectively, and the business must have such substantiation available when called upon to provide. The Code of Advertising Practice of the South African ASA contains detailed provisions dealing with substantiation.  Apart from ASA’s code, there is also a host of labelling regulations pertaining to goods imported into or sold in South Africa that contain provisions dealing with misleading advertising.

It seems obvious, but it is certainly worth restating: avoid misleading claims, be truthful and obtain independent objective legal advice in cases of doubt.

by Wensel Britz | Senior Associate – Cape Town

WENSEL BRITZ

Senior Associate
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SOUTHERN SUN ‘SQUARES OFF’ AGAINST NAMIBIAN BRAND OFFENDER

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

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

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

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

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

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

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

The First Respondent has filed an appeal against the decision.

by Kareema Shaik | Senior Associate

DALE HEALY

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KAREEMA SHAIK

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PHOTOBOMBED? PROTECTING YOUR COPYRIGHT

It was reported some time ago that a photographer named Shaun Earl Harris is suing the South African government for an astonishing amount of R2.1 billion for copyright infringement relating to the government’s alleged unauthorised use of a photograph featuring Nelson Mandela that Mr. Harris had taken.

Mr. Harris made an impactful statement that got me thinking – “Copyright is what enables a photographer to make a living from taking photographs. What is the use of taking pictures if they steal your copyright and you can’t live?”

As copyright is not a registrable right (unlike a trade mark, patent or design) and can be quite difficult to understand, it is often overlooked.  However, its value should never be underestimated.

A poignant story that illustrates the value of copyright is that of J K Rowling, the author of the famous Harry Potter series.  Ms. Rowling licenced her copyright to Bloomsbury Publishing by permitting it to print and distribute her book in return for royalty payments.  Of course, the first book was an enormous success and the royalties and advance payments Ms. Rowling earned helped her out of her impoverished state. Six more books followed as well as a film series and much more, which met with even greater success.  J K Rowling is now a very wealthy woman – thanks to copyright.

Essentially, copyright entitles the owner of the copyright in a “work” to exploit that work for his/ her own advantage and to prevent the unauthorised reproduction or adaptation of his/ her work.

However, in order to rely on copyright, it is necessary to, firstly, prove that copyright actually subsists (i.e. exists) in the “work” in question and secondly, ownership of the copyright in the work.

There are various types of “works” that can qualify for copyright protection.  Briefly, the works in which copyright can subsist are the following:  literary works, musical works, artistic works, cinematograph films, sound recordings, broadcasts, programme-carrying signals, published editions and computer programmes.  A book would, of course, constitute a literary work while a photograph is a type of artistic work.

Before copyright may subsist and be conferred upon a work, certain requirements have to be met.  The main requirements are as follows:

  1. The author (i.e. the person who first made or created the work in question) must have been a South African citizen or domiciled or resident in South Africa when the works were created or the works must have been first made available (i.e. published) in South Africa or another Berne Convention country;
  2. The work must be original; and
  3. The work must be in a material form (e.g. written down or recorded, etc.).

While the first and third requirements are usually not that difficult to understand or prove, the second one presents more difficulty.  In order for copyright to subsist in a work, the work must be original.  This does not mean that the work must be unique, novel or inventive but simply that the work must have been the product of the author’s own labour, skill and effort.  To prove that a work is original, it is usually necessary to obtain evidence from the author of the work relating to the creation of the work in question.

Once the subsistence of copyright in a work has been established, it is then necessary to consider who the owner of the copyright in that work is.

The author of a work is usually the first owner of the copyright in such work, provided that he / she has not assigned (that is, transferred) some or all of his / her copyright to someone else.  However, there are exceptions such as, for example, where a work is created by an author during his / her employment under a contract of service or apprenticeship.  In this case, the copyright would vest with the employer.

In the case of photographs, copyright would usually vest with the photographer (who is the author).  However, there is an exception to this as well – where a person commissions the taking of a photograph and pays or agrees to pays for it in money or money’s worth and the photograph is taken pursuant to that commission, then the copyright would vest in the person who commissioned the taking of that photograph.

As the owner of copyright in a work, you would be entitled to reproduce or adapt the work in any way you like, sell (by assigning) part or all of your copyright in a work to someone else or licence third parties to make use of some or all of your copyright.  For example, an author of a book could licence a publishing house to print and distribute his/ her book, a film studio to adapt the book into a cinematograph film and a playhouse to adapt the book into a theatrical production – much like J K Rowling did.

Of course, if someone copies or commercially exploits (i.e. reproduces) or adapts the work without the owner’s consent or authority, this would constitute copyright infringement and that party could be sued for an interdict, damages or reasonable royalties.

The above is a rather simplistic account of copyright.  If you have any works that may be subject to copyright, it may be well worth the effort to contact your IP attorney for advice on how to go about protecting such works.

by Amina Suliman

AMINA SULIMAN

Senior Associate
Trade Mark Attorney

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SWAZILAND | HOPES FADE FOR NEW TRADE MARK AMENDMENT BILL

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

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

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

LINDIE SERRURIER

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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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NEW TRADE MARK LEGISLATION FOR MALAWI

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

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

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

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

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

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

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

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

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

Opposing of trade mark applications

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

Infringement of a registered trade mark

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

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

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

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

Cancellation of a trade mark

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

Offences and Penalties

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

Summary

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

Article by

Thembani Nkabinde | Candidate Attorney

Blain de Villiers | Partner

Mohamed Jameel Hamid | Associate

BLAIN DE VILLIERS

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MOHAMED JAMEEL HAMID

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ARIPO WORKING GROUP CLARIFIES FEES DEADLINES

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

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

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

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

WYNAND FOURIE

Senior Associate
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CLAIRE BOTHMA

Senior Associate
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LIZE-MARI VAN DYK

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REPORT | THE APPLICABILITY OF THE MADRID SYSTEM IN AFRICA

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

Key criteria

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

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

Africa Madrid Members

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

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

Enforceability

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

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

General

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

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

Conclusion

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

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

STEPHEN HOLLIS

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MEGAN MOERDIJK

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SIMON BROWN

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SOUTH AFRICA A STEP CLOSER TO PLAIN PACKAGING TOBACCO PRODUCTS

In June 2017 we made comment here, in respect of the WTO’s decision to uphold legislation in Australia which severely restricted the advertisement of tobacco products on the ground that the legislation qualified as a legitimate public health measure.

We also indicated that we could expect the advent of new legislation in South Africa which would likely follow suit in prescribing stricter requirements for the advertisement of tobacco products.

In a move that brings South Africa a step closer to that reality, the Department of Health has invited public comment on the Draft Control of Tobacco Products and Electronic Delivery Systems Bill, 2018 within 3 months of the invitation date, before 9 August 2018.

The objectives of the proposed legislation are stated as, inter alia, “to regulate the packaging and appearance of tobacco products and electronic delivery systems and to make provision for the standardisation of their packaging.”

The proposed legislation is far reaching as it also seeks to control the advertisement and sale of e-cigarettes (electronic delivery systems), including those that do not contain nicotine.

Aspects of the proposed legislation which will, undoubtedly, attract comment from the public are the overall ban on advertising and sponsorship of- or by- tobacco products and electronic delivery systems and the provisions relating to the standardised packaging and labelling of tobacco products.

The proposed Act specifically requires that Regulations be passed in relation to tobacco products that prescribe:

  • uniform textured and plain colour packaging;
  • the material to be used and the size and shape of the packaging;
  • that logos, branding or other promotional elements on, inside or attached to the packaging of tobacco products or an individual product be prohibited; and
  • that only the brand and product name may appear on packaging in a standard colour and font together with other mandatory information such as health warnings.

The provisions relating to the packaging and labelling of e-cigarettes are currently quite ambiguous, but Regulations may subsequently be passed which change the position.

As previously mentioned, these changes in legislation conflict with the trade mark rights of the tobacco industry, which ordinarily entitle their owners to the use of their registered trade marks, including logo marks, to the exclusion of all others. We are therefore still interested to see whether a court case will be borne of this conflict and continue to watch this space.

KELLY THOMPSON

Partner
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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THE DISTRIBUTION AND MARKETING OF MEDICINES IN SOUTH AFRICA

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

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

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

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

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

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

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

JENNY PIENAAR

Partner
Trade Mark Attorney

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JEANETTE VISAGIE

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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OFFENCE IS THE BEST DEFENCE IN ANTI-COUNTERFEITING | GODFREY BUDELI

Partner in the Anti-Counterfeiting group at Adams & Adams, Godfrey Budeli regularly uses team sport analogies in describing the purpose and successes of his colleagues’ work. “Why not?,” he counters. “As in football, the success of a team depends on correct team placement, and strong leadership.” It’s his ‘captaincy’ that has once again earned him the titles of outright winner of the Lawyer of the Year 2018 in the category of Anti-counterfeiting – SA, by both the Finance Monthly and Lawyer Monthly publications.

Prestigious awards such as those awarded by Managing IP and Finance Monthly are based on market leading performance analysis and are strictly quantitative – designed to recognise those firms which are consistently delivering the best results for their clients.

Of the award, Godfrey places the focus squarely on his team. “Adams & Adams has the largest dedicated anti-counterfeiting team on the continent. The team is headed by myself and Charl Potgieter. We are assisted by qualified attorneys Jan-Harm Swanepoel, Tayyiba Nalla and Christoff Pretorius.”

Jan-Harm is a former State Prosecutor and his extensive experience in criminal litigation is hugely beneficial. Tayyiba’s understanding of the intricacies involved in online sales of counterfeit goods, through a number of media platforms, is a considerable asset. Through her extensive experience, they have been able to dismantle many counterfeiters’ online presence and track their unlawful activities on the ground. Christoff’s experience in civil litgation has led to a number of successful settlements on behalf of large multinational companies. He has also been involved in the closure of manufacturing facilities producing counterfeit goods locally.

In addition, the team has an impressive complement of experienced paralegals, secretaries and admin staff, all of whom help ensure that our practice runs efficiently.

Economic conditions and business environments in general have improved significantly due to decolonisation, urbanisation, withdrawal of unfavourable sanctions, economic emancipation of many countries and rapidly growing middle classes. Research indicates that the rate of urbanisation in Africa is faster than that of any other continent – to the extent that Africa is expected to no longer be considered a rural continent within the next ten to fifteen years.

This demonstrates that there is good business potential in Africa. It is for this reason that multinational brandholders have embarked on expansion plans, profitable to fully exploit their intellectual property potential, increase sales and generate revenue. However, this has also created a demand for counterfeit goods.

Dealing in counterfeit goods is rife in Africa. The fundamental issues experienced include a lack of proper legislative framework, weak enforcement as a result of lack of experience and limited resources.However, these challenges are not insurmountable and there are legal avenues available to effectively address the proliferation of counterfeit goods on the continent.

Over the past few years, counterfeit fast-moving consumer goods (FMCG) have developed into a thriving market.  One of the main concerns with counterfeit FMCG goods is the health and safety risk posed to unsuspecting consumers. A report by the World Health Organisation (WHO) indicates that nearly a quarter of pharmaceuticals in circulation in developing countries – including HIV/Aids, TB and malaria treatments – are of a poor and unacceptable quality. Such medication is at best ineffective and at worst, deadly. Counterfeit motor vehicle or aircraft replacement parts also place innocent lives at serious risk. Another concern is that counterfeits have now filtered into the legitimate distribution channels.

The team regularly conducts  client portfolio reviews to ensure that the necessary IP rights are in place and, if not, recommends ways to fill the gaps.

They make a record of clients’ well-known, registered and unregistered trade marks as well as copyright protected works for Customs to enable them to easily deal with suspected counterfeit goods at ports of entry. They also conduct in-depth investigations to infiltrate the sophisticated counterfeit goods market and to understand the extent of the problem. Based on the outcome, Godfrey and his team devises an effective enforcement strategy within client’s budget.

GODFREY BUDELI

Partner
Trade Mark Attorney

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WOMEN IN IP | GLOBAL TOP 250

Managing IP has recently released it’s list of this year’s leading female intellectual property practitioners, according to IP STARS research, and this year Adams & Adams Partners, Mariëtte du Plessis and Kelly Thompson both made the Top 250 Women in IP list.

The special publication recognises female practitioners in private practice who have performed exceptionally for their clients and firms in the past year. Some were also involved in IP advocacy and / or corporate social responsibility initiatives in their jurisdictions.

The leading female practitioners have been selected from the IP Stars list, due to be announced at INTA Seattle in May. The IP Stars research covers contentious and non-contentious IP work, carried out over a six-month period by an experienced team of research analysts in Hong Kong, London and New York.

We congratulate Mariëtte and Kelly for making the list this year.

MARIETTE DU PLESSIS

Partner
Trade Mark Attorney

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KELLY THOMPSON

Partner
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A LIFE OF LEGAL FIRSTS | ESMé DU PLESSIS

The late Pam Golding, one of Africa’s most successful women entrepreneurs and an icon of the real estate industry once said, “I have always believed that women can do anything they set their hearts on.” Such an evaluation can easily be ascribed to a doyenne of the Africa’s legal fraternity, Esmé du Plessis – one of those unique individuals whose contribution to the legal profession in South Africa is unparalleled – and deserving of acclaim as we celebrate World Intellectual Property Day.

Esmé’s ability to rise to the challenge is legendary in her industry, and she continues to blaze a trail for women, in intellectual property law particularly. Her ability to unite discordant voices is a strength that has influenced legislators and IP administrators to frequently call upon her services as legal advisor.

Esmé obtained her BSc (1958) and LLB (1962) degrees from the University of Pretoria, and served articles of clerkship with Adams & Adams. In 1963 she became South Africa’s first admitted female Patent Agent. Many other ‘firsts’ were to follow; in 1966, Esmé was the first woman admitted to partnership at Africa’s leading intellectual property law firm, Adams & Adams. Fifty-two years later, and women make up 76% of the firm’s workforce, and each year around 80% of the new candidates admitted for Articles at Adams & Adams are female. The glass ceiling was well and truly shattered by Esmé and today, partners such as Nelia Hickman, Mariëtte du Plessis,  , Nolwazi Gcaba, Megan Moerdijk, Kelly Thompson, Janice Galvad, Jenny Pienaar, Bilkis Daby, Nishi Chetty, Debbie Marriott, Lauren Ross, Mandy Swanepoel, Lucy Signorelli, Nicolette Koch, Nicky Garnett, Nthabisheng Phaswana, Somayya Khan, Werina Griffiths, Sajidha Gamieldien, Jani Cronje, Nicolette Biggar, Lindie Serrurier, Alicia Kabini and Alicia van der Walt are consistently receiving international recognition for their exceptional legal work in Africa.

In addition to exploding gender myths, Du Plessis became instrumental in our evolving democracy when, as President of the Law Society in 1995 (another first for a woman in South Africa), Esmé was part of a ground-breaking meeting between the Society and Mr. Silas Nkanunu, then president of the Black Lawyers Association (BLA). The meeting heralded a negotiation process to unify and restructure the law societies of South Africa. Esmé was part of the task team to negotiate and draft an Agreement and new Constitution for a unified Law Society for South Africa.

Having retired as a Partner at Adams & Adams in 2004, du Plessis was, until recently, a full-time Senior Consultant. Her areas of specialisation are patents, copyright, industrial designs; international aspects of intellectual property law; policy and strategy principles for the protection and commercialisation of intellectual property. Esmé has retained her relationship with the University of Pretoria as well and served as a member and Chairperson of the UP Council for close to 15 years. She is the first woman in South Africa to be elected to a University Council, and the first woman to serve as a Chairperson of a University Council. She was integral to a cooperation agreement between Adams & Adams and in university’s Law Faculty in establishing the UP Centre for Intellectual Property. As part of the initiative, a specialised LLM package with four modules covering different fields of intellectual property law was established. Esmé is an Extraordinary Professor in the Law Faculty of the University of Pretoria.

During her professional career she was also a member of the Law Faculty of UNISA, where she was an Associate Professor and lectured on Intellectual Property and Banking Law.

Throughout her career, Esmé du Plessis has challenged the status quo and became a hearty champion in encouraging women to look beyond the canopy in working hard towards international recognition and equal career opportunities. Adams & Adams honours her continuous contributions and achievements.

Accolade Highlights

  • Dux leadership award (UP, 1960)
  • Grotius medal for the best final year law student (UP, 1962)
  • Award of Merit (AIPPI International, Vienna, 1997)
  • Laureate Award (UP, 1998)
  • Award in Recognition of the Transformation of the Legal Profession (LSSA, 1999)
  • Regional Business Achiever (Professional) Award (BWA, 2002)
  • Chancellor’s Medal (UP, 2008)
  • Most Influential Women in Business & Government (Legal) Award (CEO Magazine, 2009)
  • Membership of Honour Award (AIPPI International, Paris, 2010)
  • Presidential Award for Special Achievement (SAIIPL, 2011)
  • Presidential Award for Special Achievement (LSNP, 2014).

ESME DU PLESSIS

Specialist Consultant
Patent Attorney

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WOMEN IN IP | WORLD IP DAY 2018

Every 26 April, we celebrate World Intellectual Property Day to learn about the role that intellectual property rights (patents, trade marks, industrial designs, copyright) play in encouraging innovation and creativity.

This year’s World Intellectual Property Day campaign celebrates the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future. [Read ‘A Life of Legal Firsts – The story of Esmé du Plessis’ here.]

Powering change: Women in innovation and creativity

Data from the World Intellectual Property Organisation indicates that only 29% of all international patent applications filed in 2015 included at least one woman inventor, scarcely an increase from 17% in 1995. In 2016, women made up only 23% of STEM (Science, Technology, Engineering, and Mathematics) talent globally.

And here in South Africa, while women comprise 55% of the country’s entire workforce, only 31% of entrepreneurs are female. Likewise, a Facebook survey in partnership with the World Bank and OECD showed that only 34% of SA’s SMEs are women-led. Even more alarming, the number of women in technology in South Africa dropped from 40% in the 1980s to 20% at present.

So why is it important to close the innovation and IP gender gap? Patent Attorney, Dr Charleen Rupnarain, explains that studies have shown that increased participation by women improves the innovation performance of organisations and societies. “Diverse, inclusive teams are more innovative, and diverse companies are more profitable. The start-up fund First Round Capital looked at 300 companies, and women-led firms produce extremely attractive returns. In founding teams with at least one woman, the returns were 63% higher than that produced by all-male teams,” she adds. Charleen was joined by Adams & Adams Partner, Janice Galvad, at the University of Pretoria’s World IP Day celebrations, where they highlighted the role and successes of women in IP in Africa.

Women bring a different perspective, and women innovators help to ensure that new products and processes meet the needs of the whole population. Innovation refers to new products, new processes, or new ways of doing things. Creativity refers to new forms of original artistic expression. Today’s products and technologies are the result of research and development, experimentation and invention, and are all innovations.

Innovation and creativity are supported and protected by intellectual property. The purpose of IP is to encourage innovation and creativity by making sure that innovators and creators can protect their work, and are fairly rewarded for their work. The prospect of an economic reward encourages people and businesses to invest in developing useful innovations and creations.

There is a growing recognition of the need to close the IP gender gap through initiatives that encourage and support women innovators and creators. Here are a few initiatives highlighted by our professionals:

Johnson & Johnson introduced the Africa Innovation Challenge, to encourage entrepreneurial thinking in Africa and the creation of consumer health care solutions that address the critical unmet needs of the continent and her people. Grace Nakibaala, a young Ugandan architect, came up with a solution to improve hygiene in hospitals, through an innovation that is making it easier to wash hands. Her invention earned her an accolade as one of the three winners of the Innovation Challenge. Read Grace’s story here.

Standard Chartered Incubator’s Women-In-Tech programme aims to develop and support women in technology across Africa. The program combines world class startup support with local and international experience to provide Africa’s most competitive and attractive startup incubation program focusing immersive learning, mentorship, building and growing Africa’s next iconic startups taking on the continent’s most relevant challenges and opportunities.

Code for Cape Town (Code4CT) is a programme that introduces young girls to basic web building skills and exposes them to opportunities in the Information and Communication Technologies (ICT) sector. Participants are trained in web development, design principles, as well as courses in professional development. Code4CT aims to inspire a generation of young girls who are well-prepared with a toolkit of technical and soft skills in order to achieve high impact in the workplace.

WHOIS | WHERE ARE YOU?

In April 2016, the European Union (EU) Parliament approved the General Data Protection Regulation (GDPR). The GDPR will repeal the existing Data Protection Directive in the EU when it comes into force on 25 May 2018. The GDPR is intended to give back control to EU citizens over their personal data and to harmonise data privacy laws across Europe.

While the GDPR is effectively EU legislation, its provisions are far reaching as it is applicable to organisations within and outside the EU which offer services or process information of EU citizens. Companies that hold or process the information of citizens residing in the EU will be affected by the GDPR, regardless of the company’s geographical location.

The GDPR requires, inter alia, data minimisation and specifically calls for data controllers to hold and process only the data absolutely necessary for the completion of its duties. It also limits access to personal data to those needing to act out the processing of that data. Data subjects may also request that data controllers erase their personal information and cease dissemination of that information to third parties, subject to this right being weighed up against the public interest in the availability of the data in question.

One corporation that will be affected by the implementation of the GDPR is The Internet Corporation for Assigned Names and Numbers (ICANN). ICANN’s primary focus is the management of the internet’s global Domain Name System (DNS). Its responsibilities include policy development for the internalisation of the DNS. Central to the DNS is the WhoIs database which draws data from all ICANN accredited Domain Name Registries responsible for facilitating the registration of domain names.

The WhoIs database as we know it, provides access to publicly available information containing the domain name owner’s or registrant’s details, administrative contact and technical information.  This information is utilised by authorities in matters relating to cybercrime and other forms of criminal activity.  Also, in cases of domain name disputes, trade mark infringement and counterfeiting cases for the purposes of identifying the registrant and making contact to enforce the rights of IP holders.  The enactment of the GDPR will change the information accessible on the WhoIs record.

ICANN has proposed an interim model to enable Domain Name Registries and Registrars to comply with the data privacy requirements under the GDPR whilst trying to preserve as much of the currently publicly available WhoIs information as possible. It is expected that the registrant contact information will be redacted. Naturally, this change has sparked fierce debate and criticism from Governments, Law enforcement authorities, stakeholders and especially IP holders amongst others, who rely on WhoIs registrant information for enforcement of the law and IP rights, as the case may be.

To date, there has been no consensus on the implementation of the interim model and ICANN has been criticised for over-interpreting the provisions of the GDPR.

Specific aspects of the interim model that have attracted criticism are the proposal for anonymous or pseudonymous registrant email addresses, the global application of the model as opposed to limiting its territorial scope to the EU connection via the Registrant or Registrar, and the model’s failure to draw any distinction between natural and legal persons.

It was also hoped that the interim model would include an accreditation model allowing, at least, access to WhoIs information that is controlled by Domain Name Registrars, but the model has drawn criticism in that it has not made any proposals on accreditation and how registrant information can be accessed.  At the recent ICANN61 meetings in Puerto Rico, ICANN invited input on an accreditation model from stakeholders. The process of putting together an accreditation model continues without any certainty as to whether or not a model will be in place or if interim measures will be taken to allow access to registrant information by 25 May 2018.

Considering the lack of consensus surrounding the implementation of the interim model and an accreditation model, it seems that WhoIs for gTLD’s as we know it, will no longer exist and will possibly go “dark” on 25 May 2018. This will have an impact on Law enforcement and will prevent IP holders, among others from being able to contact registrants to enforce their rights against online infringements during the period of seemingly indefinite darkness.

The compliance of our own Domain Name Authority with the GDPR in so far as it affects EU citizens seems inevitable.  With the advent of our own data privacy laws (i.e. the Protection of Personal Information Act) which was drafted in line with international trends, it is likely that South Africa will follow suit with the models proposed by ICANN.

While discussions regarding the implementation of the GDPR and its effect on the WhoIs database continue, interested persons and IP holders are encouraged to provide comments to ICANN and EU DPAs directly regarding concerns on the interim and accreditation models.  So, come 25 May 2018, we don’t have to go looking for Who he or she is.

By

Kim Rampersadh | Senior Associate – Adams & Adams Attorneys

SOMAYYA KHAN

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KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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TRADE MARKS | CAUTIONARY NOTICES NOW POSSIBLE IN SOMALIA

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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FAST MOVING KILLERS AND OTHER COUNTERFEITING TRENDS IN AFRICA

Economic conditions and the business environment in general have improved due to decolonisation, urbanisation, withdrawal of unfavourable sanctions, economic emancipation of many countries and rapidly growing middle classes. Recent research indicates that the rate of urbanisation in Africa is faster than that of any other continent – to the extent that by 2030 it will cease to be a rural continent.

This demonstrates that there is good business potential in Africa and multinational brandholders have realised that it has become imperative to trade in genuine goods in order to fully exploit their intellectual property potential and to expand their businesses and increase sales and revenue. However, these developments have created both legitimate business opportunities, as demand for genuine products across all sectors grows, as well as a growth in the market for counterfeit goods.

The sale of counterfeit goods is rife across the continent. The fundamental issues experienced include a lack of proper legislative framework – leading to weak enforcement, limited resources and a shortage of manpower within the enforcement agencies, as well as a lack of experience in IP law on the part of the agency employees. However, these challenges are not insurmountable and there are legal avenues available to effectively address the proliferation of counterfeit goods on the continent.

The trade in counterfeited goods is worth a whopping $462 billion a year, according to a recent study by the OECD and the EU’s Intellectual Property Office. A massive 63.2% of knockoffs originate from China, and American brands are the most counterfeited. In South Africa alone, an average of three raids are carried out per day in the fight against counterfeiting.

A NEW THREAT | FAST MOVING KILLERS 

Over the past few years, counterfeit fast-moving consumer goods (FMCG) have developed into a thriving market. The main concern with counterfeit FMCG goods is the health and safety risk posed to unsuspecting consumers. A report by the World Health Organisation (WHO) indicates that nearly a quarter of pharmaceuticals in circulation in developing countries – including HIV/Aids, TB and malaria treatments – are of a poor and unacceptable quality. Such medication is at best ineffective and at worst deadly. Counterfeit motor vehicle or aircraft replacement parts also place innocent lives at serious risk. Another concern is that counterfeits have now filtered into the legitimate distribution channels.

FMCGs are goods that are sold quickly and at a relatively low wholesale or retail price. 20% of the most counterfeited brands in the world are FMCG brands. However they are distributed, FMCG fakes follow the same sales channels as legitimate FMCGs and so they move quickly. Generally, by the time a raid or visit is arranged, the goods have been sold or dispatched. The abundance of counterfeiters ranges from large wholesalers and retailers to street vendors.

“The emergence of FMCG counterfeiting leaves our clients with a legal conundrum,” explains Tayyiba Nalla, Associate at Adams & Adams. “We’ve had to help authorities develop new approaches to our traditional anti-counterfeiting methods – including a tiered approach that requires a combination of “soft” measures before we carry out raids. We risk losing stock that could potentially endanger thousands of lives.”

Other strategies would include the facilitation of customs education, regular amendments to packaging, as well as innovative packaging solutions such as QR codes and holograms.

AFRICA’S PUBLIC HEALTH AND SAFETY | TWO CASE STUDIES

In Ghana, the Food and Drugs Authority (FDA) is tasked with regulating and creating guidelines on the advertising and labelling of, inter alia, all processed food packaged for sale, medicines and medical devices, tobacco, herbal products and food supplements, cosmetics and household chemicals. It also creates guidelines on and regulates premises, such as restaurants.  Products and premises must be registered with the FDA.

In Nigeria, the National Agency for Food and Drug Administration and Control Act (NAFDAC) was created to regulate and control, inter alia, the manufacture, importation, exportation, advertisement and sale of, inter alia, food, drugs, cosmetics, chemicals and packaged water.  These products must be registered with NAFDAC before trading in these goods.

Both the FDA and NAFDAC have been in the spotlight in recent months regarding directives which they have and have not issued.

In December 2016, a video on social media showing an energy drink which had seemingly been labelled as the special Christmas edition of the 250ml Blue Jeans Energy Drink, but which label could easily be pulled off to reveal another product, went viral in Ghana.

Image | Ghana Guardian

Following the release of this video, the FDA launched investigations into the seemingly fake products and issued a directive ordering:

Cessation of the distribution and sale of all Blue Jeans Energy Drinks; total recall from trade of the special Christmas consignment of Blue Jeans Energy Drinks with labels bearing Santa Claus (Father Christmas), and submission of all relevant documents for its examination.”

In 2016, the FDA also conducted market investigations into and released statements to the public warning about fake olive oils, the dangers of use of certain skin lightening creams, LDC (a claimed medicinal preparation for oral hygiene) and fake tomato powders found in the market.

In Nigeria, NAFDAC routinely issues directives and warnings regarding products which may be harmful, are not registered or do not meet the specific product guidelines.

In focus at present is salt and specifically the practice, against regulations, of packaging industrial salt in sizes such as 5kg, 10kg, 15kg and 20kg packs when it is only permitted to be sold in packages of 50kg.  This is to avoid confusion amongst consumers between industrial salt and iodised table salt.

Also in focus in Nigeria is the volume and number of counterfeit food and drugs.  In this regard, NAFDAC is involved in conducting raids on a regular basis, including recent raids on several shops at Ogbaru Relief Market in Onitsha which shops were producing, selling and distributing fake alcoholic and non-alcoholic drinks.

Adams & Adams Anti-Counterfeiting

THE ANTI-COUNTERFEITING TEAM AT ADAMS & ADAMS

Adams & Adams has the largest dedicated anti-counterfeiting team on the continent. The team is headed by Lucy Signorelli and Godfrey Budeli. They are assisted by qualified attorneys Jan-Harm Swanepoel, Tayyiba Nalla and Christoff Pretorius. Jan-Harm is a former State Prosecutor and his extensive experience in criminal litigation is hugely beneficial, while Tayyiba’s thorough understanding of technology helps fight and disrupt the non-traditional sale of counterfeit products. In addition, we have a complement of experienced paralegals, secretaries and admin staff, all of whom help ensure that our practice runs like efficiently.

Adams & Adams has been assisting clients with anti-counterfeiting actions for decades through its normal Trademark & Copyright Litigation Department. However, in 2010 we decided to create a dedicated anti-counterfeiting team to streamline the processes and to improve our efficiency and service delivery to our clients.

ADAMS & ADAMS ANTI-COUNTERING SERVICES

Our team conducts a client portfolio review to ensure that the necessary IP rights are in place and, if they aren’t, we recommend ways to fill the gaps. It’s imperative that action be instituted based on registered rights.

We make a record of our clients’ registered, well-known unregistered and copyrighted works for Customs to enable them to easily deal with suspected counterfeit goods at ports of entry.

We also conduct investigations to infiltrate the counterfeit goods market and to understand the extent of the problem. Based on the outcome, we devise an effective enforcement strategy within a client’s budget.

This may include:

  • Participating in training of law enforcement agencies
  • Conducting in-market surveys or investigations and obtaining test purchases
  • Participating in regular search and seizure operations
  • Educating the public through the media to raise awareness of IPRs, counterfeit activities and health/safety awareness
  • Facilitatingco-operation between stakeholders nationally, as well as regionally and internationally, such as the WHO, WTO, WCO and Interpol.

We conduct regular in-market investigations, which help us to understand the trade channels and identify the main role players. This is an imperative exercise in our efforts to remain a step ahead and keep up to date with the changing strategies used by counterfeiters to avoid detection, detention and seizure of the counterfeit goods. We also conduct regular training sessions with law enforcement agencies in Africa to share intelligence and legislative or case law developments.

GODFREY BUDELI

Partner
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LUCY SIGNORELLI

Partner
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TAYYIBA NALLA

Senior Associate
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JAN-HARM SWANEPOEL

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

To learn more about the PedalTap invention, click here.

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

NICKY GARNETT

Partner
Head of Africa Patents

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WYNAND FOURIE

Senior Associate
Patent Attorney

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WHAT ROLE DO IP RIGHTS HAVE IN DISCOURAGING CULTURAL APPROPRIATION?

What role, if any, do intellectual property rights have in discouraging cultural appropriation? Cultural appropriation may loosely be defined as the borrowing of elements from a culture without the consent of people belonging to or observing that culture.

Cultural appropriation frequently enters mainstream debate in the realm of haute couture.  This topic is where the protection of traditional knowledge (TK) by way of intellectual property law and/or other legal mechanisms has garnered some importance.

Examples of the adoption of cultural elements in high fashion which have come under scrutiny include Louis Vuitton’s Basotho blanket inspired men’s collection of 2017 and Urban Outfitters use of the mark NAVAJO and the tribal patterns of the Navajo Nation in relation to, inter alia, clothing and jewellery designs.

Some have lauded the fashionistas for being inspired by these cultural emblems and sharing them with the rest of the world, while others have accused them of unashamedly committing what is, in their view, a cultural faux pas.

It is not the first time that fashion houses have traded ethnic apparel as runway hits and it certainly will not be the last. At the heart of this sociological dilemma is the question whether the borrowing of cultural elements or TK should be allowed and regulated in some way.

There is no international instrument or convention for the protection of TK which, like other conventions, demands the reciprocal protection for the rights of nationals of contracting member states. The countries of the world have been left to their own devices in creating domestic law for the protection of TK or indigenous knowledge and this has also led to an inconsistent international approach.

In South Africa, attempts to protect TK have been made but the proposed legislation is questionable.

First attempts, which have been passed into law, saw TK being slotted into existing legislation for the protection of intellectual property rights. This was severely criticised on the basis that TK and intellectual property rights are contradictory in nature and cannot be protected under one umbrella.

These contradictions include that TK is intended to exist in perpetuity, is created for reasons borne of or affecting a community and it relates to and seeks to protect communal property.  Intellectual Property rights on the other hand mostly exist for a limited period, are sought after primarily for commercial gain and are intended for the use (generally) of a single registered  or rightful owner. Naturally, therefore, the country’s first attempt at protecting TK has been severely criticised. It is for this reason that the changes in the law have not been implemented in practice.  This criticism of the existing laws eventually led to the drafting of the Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2016 or the TK Bill, which is yet to be made law.

The TK Bill is considered a step in the right direction as it seeks to afford sui generis protection to TK. The Bill also makes way for the inclusion of indigenous cultural expressions as part of TK or indigenous knowledge. “Cultural expressions” has also been defined to include content that has been assimilated into the cultural make-up or essential character of an indigenous community. This definition, it seems, is wide enough to include cultural dress and accessories.

The Bill ultimately envisages that the holder of TK will be entitled to benefit from the commercial use of that TK and restrain any unauthorised use of that TK, much like the proprietor of an intellectual property right.

However, the legislation is intended only to protect indigenous communities of this country and only South Africans will be restricted from using the TK of those communities. For the rest of the world, the TK or cultural expressions of our indigenous communities will continue to be a rich source of inspiration to be borrowed at will.

In light of the above, it appears that the commercialisation of TK and protection against its unauthorised use outside of South Africa would be best protected via intellectual property mechanisms until, at least, the introduction of international treaties demanding reciprocity of rights. Indeed, copyright, which includes artistic works (like clothing designs), and trade marks for pattern and ornamentation, might assist in protecting cultural expressions that find application in the fashion industry. However, copyright is of limited duration and, in the case of traditional designs, may already have expired. Insofar as trade marks are concerned, these would specifically need to be applied for in different territories or regions and, in the case of marks emanating from cultural expression or traditional practices, they might need to be applied for as collective trade marks.

Given the complexities surrounding TK, it is advisable that indigenous communities wishing to protect or commercialise their TK or cultural expressions first seek assistance or advice from our experts.

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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STEVEN YEATES

Partner
Trade Mark Attorney

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How can creatives defend their work from intellectual property theft? Partner, Steven Yeates, talks to Cape Talk’s Mpho Molotlegi about patents, designs, copyright and trade marks – and provides practical examples for monetising your creative assets.

ADVERTISING LAW DEVELOPMENTS IN SOUTH AFRICA

Jenny Pienaar from Adams & Adams, GALA’s South African member, presents on recent advertising law developments in South Africa. At it’s recent GALA developments event, the Global Advertising Lawyers Alliance heard a series presentations that introduces marketers to recent advertising law developments around the world.

JENNY PIENAAR

Partner
Trade Mark Attorney

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AWARDS AND ACCOLADES FOR ADAMS & ADAMS PROFESSIONALS

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

IP STARS

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

Patent Stars

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

Trade mark Stars

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

INDICES

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

FIRM OF THE YEAR

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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ZIMBABWE | AS IT HAPPENED

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

MADRID PROTOCOL IMPLEMENTATION | AN UPDATE

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

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

REGISTRY DIGITISATION | IPAS

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

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

INTELLECTUAL PROPERTY TRIBUNAL AND ZIPTA

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

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

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

REGIME CHANGE | IMPLICATIONS FOR IP

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

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

ADAMS & ADAMS | NEW ASSOCIATE OFFICE

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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