Angola has initiated a fresh process to revise its Industrial Property Law

It is still early days in the revision process of the Angolan Industrial Property Law Act. The purpose of the new draft bill is to bring the current Industrial Property Law, which was enacted in 1992, in line with international standards.

The draft bill, which is in Portuguese, seeks to amend various sections of the current Industrial Property Law. On 23 November 2018, a meeting was held with the general public to discuss the draft bill, and comments/submissions to the provisions of the draft bill are still being accepted by the Angolan Institute of Industrial Property.  The deadline for submitting the comments has not yet been set. Once the draft bill has been finalised, it will be submitted to Parliament for further discussion and approval.

Although the draft bill has not yet been finalised, it is considered as a step in the right direction. We must add, however, that this is the 4th draft which has been made available during the past 6 years. Whether anything will come of it is therefore uncertain.

We will continue to monitor the position and provide updates as and when they happen. For additional queries regarding intellectual property rights protection in Angola, e-mail Angola@AdamsAdams.com.

You can also read our previous article regarding the protection of well known trade marks in Angola, here.

NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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ROBYN MULLER-MABUZA

Associate
Attorney

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Morocco confirms Larbi Benrazzouk as the new head of the IP Office (OMPIC)

The Office of Industrial and Commercial Property in Morocco, OMPIC, recently announced that Mr. Larbi Benrazzouk will replace Adil El Maliki as head of OMPIC.

Before taking over OMPIC, Larbi Benrazzouk was the director of Maroc PME, an organization responsible for promoting small and medium-sized companies in Morocco. There he had initiated flagship programs to boost the competitiveness of small and medium-sized companies.

Mr. Benrazzouk holds an engineering degree from Rabat’s Mohammedia School of Engineering as well as a specialised graduate studies degree in patrimonial and financial management from Montpelier University.

For assistance with the registration and enforcement of your Intellectual Property in Morocco, e-mail morocco@adamsadams.com

Mr. Larbi Benrazzouk. Image courtesy Morocco World News.

ALISSA NAYANAH

Senior Associate
Trade Mark Attorney

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Service marks are now available in Malawi

Malawi’s new Trademarks Act No 2 of 2018 (“the New Act”) came into operation on 1 October 2018. 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. We suggest that all new applications be accompanied by a declaration of intention to use, in order to avoid problems when filing an 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.

No new regulations setting out the procedure to deal with applications for service marks, collective marks, geographical indications and non-traditional marks have been promulgated yet. Therefore, how these applications will be dealt with, in practice, remains to be seen.  In the interim, the current regulations to the previous Act (Trademarks Act 1957) will continue to apply.

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.

Article by

Thembani Nkabinde | Candidate Attorney

Blain de Villiers | Partner

Mohamed Jameel Hamid | Associate

BLAIN DE VILLIERS

Partner
Trade Mark Attorney

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MOHAMED JAMEEL HAMID

Associate
Trade Mark Attorney

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MALAWI BECOMES LATEST MEMBER OF MADRID SYSTEM

On 25 September 2018, the World Intellectual Property Organisation reported that Malawi deposited its instrument of accession to the Madrid Protocol. This makes Malawi the 102nd member of the Madrid System.

The Madrid System enables trade mark proprietors in Malawi to file a single international application for trade mark protection in up to 117 territories. The Madrid Protocol is set to come into force in Malawi on 25 December 2018.

Malawi’s current trade mark legislation does not provide for the registration of trade marks in terms of the Madrid Protocol.  However, on 2 February 2018, Malawi’s President assented to Trade Marks Act no. 2 of 2018 (“the New Act”).  The New Act makes provision for the registration of trade marks in Malawi in terms of the Madrid Protocol.  However, the New Act has yet to come into law and will come into operation on a date appointed by the Minister by notice published in the Gazette.

Given the current challenges  at  Registry, particularly the lack of fully digitised records, we strongly recommend seeking  national TM protection, until such time as the Malawian Trade Marks Office is fully automated and Madrid designations are being processed in conformity with the relevant regulations.

For assistance with intellectual property prosecution and enforcement in this jurisdiction, e-mail Malawi@AdamsAdams.com

 

SOMAYYA KHAN

Partner
Trade Mark Attorney

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MOHAMED JAMEEL HAMID

Associate
Trade Mark Attorney

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NIGERIA | NATIONAL STRIKE WILL AFFECT REGISTRY OPERATIONS

Adams & Adams’ Associate Office in Lagos, Nigeria, has advised of two significant events that will result in the temporary closure of the Trade Marks Registry in that country.

In the first instance, the Nigerian Labour Congress declared a nationwide strike in Nigeria from 27 September 2018. All government offices, including the Trade Marks Registry, will be closed for the duration of the strike action. The online payment platform for government revenue, Remita, will also be closed, meaning payment of trade mark, patent and design applications will be disrupted. The duration of the strike is unknown at this stage.

Secondly, the Federal Government of Nigeria has declared Monday 1 October 2018 a public holiday, in celebration of Nigeria’s Independence. The Trade mark, Patent and Design Registry, as well as other government offices, will also be closed on this day.

We will continue to communicate with our Associate Office and provide updates. For further queries regarding the prosecution and enforcement of IP rights in Nigeria, please e-mail Nigeria@AdamsAdams.com

SIMON BROWN

Partner
Trade Mark Attorney

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THERESE DAVIS

Senior Associate
Trade Mark Attorney

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ESME VOOGT

Associate

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BOTSWANA | REGISTRY INTERRUPTION EXPECTED

The Botswana Companies and Intellectual Property Authority (CIPA) will be relocating to new offices in Gaborone between 28 September – 28 October 2018. While some delays in the processing of matters are to be anticipated, please rest assured that we are working closely with our colleagues from our Associate Office in Gaborone to ensure that the Registry will process all matters without incurring undue delays.

For any questions or requests for more detailed information on this, please communicate with us at Botswana@AdamsAdams.com

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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SBONGAKONKE KHUMALO

Associate
Attorney

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NETWORK MEETING DISCUSSES ROLE OF IP IN EMERGING ECONOMIES

The Africa Network Meeting brings together intellectual property practitioners and registry officials, representing 23 jurisdictions, for the largest summit of its kind on the continent.

The 6th annual Africa Network Meeting was held at the offices of Adams & Adams in Pretoria, South Africa from 13-14 September 2018. It was attended by intellectual property practitioners and registry officials representing 23 jurisdictions across the African continent and is the largest meeting of its kind on the continent and the only meeting allowing African IP professionals to meet and discuss emerging IP issues on the continent. Boutique IP law firms are rare in Africa. Most IP attorneys on the continent operate as part of larger commercial law firms which may have little or no institutional IP knowledge or backup. It is for this reason that the Africa Network Meeting has evolved into a platform where the sharing of ideas and experiences across all areas of IP has become essential to the professional development of IP practitioners on the continent.

The theme of this years’ event was “The role of Intellectual Property in Emerging Economies.” In his opening remarks, Adams & Adams Chairman, Gérard du Plessis, stressed the need for robust analysis and discussion on the state of IP systems on the continent as the protection and enforcement of IP was an essential factor in growing Africa’s economies. Ludwick Marishane, a young South African entrepreneur – named by Google as one of the ’12 Brightest Young Minds in the World’ – was invited as Guest Speaker for the event. Ludwick is South Africa’s youngest patentee and inventor of the DryBath product, a waterless hygiene product which he invented at the age of 17. Ludwick gave insights into his entrepreneurial voyage and engaged the delegates in robust discussions about the role that IP should play in encouraging growth and development in Africa.

Head of the Trade Marks Division at the Companies & Intellectual Property Commission (CIPC) of South Africa, Ms. Fleurette Coetzee led a panel discussion with officials from OAPI, Nigeria and Zimbabwe. This provided an opportunity for representatives from these jurisdictions to provide updates on the status of digitisation in their offices. The IP registries in most African countries are poorly funded and face shortages of IT and human resources which affect their ability to render efficient and effective IP services to applicants wishing to protect their IP rights. The reports delivered by the panel revealed that significant progress has been made. However, while most countries have introduced some level of automation and online services, improvement will be slow as a result of resource shortages and the lack of technical proficiency of new staff.

For the first time in the Africa Network Meeting’s existence, brand owners Absa and AB InBev, were invited to discuss their branding strategies in Africa. Both Absa and AB InBev provided delegates with insights regarding their marketing and branding strategies in Africa. Absa, a South African based bank with offices across Africa, has recently undergone a brand relaunch. Delegates were treated to insights into the process when launching a new brand. Jenny Moore, Head of Special Projects, Marketing Corporate Relations at Absa Group Limited also shared some of the challenges faced during the process.  “The timing (and confirmation) of registration when launching, or re-launching a brand is of vital importance and we need to be sure that our partners at the IP registries understand the pressures of our industries,” commented Taryn van Schalkwyk, Head of IP, Group Legal at Absa Group Limited.

Pieter van den Bulk, Global Director Intellectual Property at AB Inbev, the World’s largest brewing company, based in Leuven, Belgium, stressed the importance of the African market place. Pieter made reference to the different marketing and legal approaches to protecting and enforcing their brands on the continent. Whilst challenges certainly remained in processing cases through some Registries and the courts, the improvement on both the legislative and operational front in many African countries must be commended.

Lita-Miti Qamata, Senior Associate at Adams & Adams moderated a panel of IP practitioners from Nigeria, Uganda, South Africa and Kenya who were given an opportunity highlight and discuss recent trade mark litigation matters in their countries. This was followed by a presentation by Partner, Kelly Thompson, who discussed IP issues in social media in a presentation entitled “Protecting brands in the era of Trump, Tweets and Twitter Stars”

Danie Dohmen, Partner at Adams & Adams, moderated a panel aimed to update delegates on recent changes in the patent field in ARIPO, Madagascar and Ethiopia with a particular focus on the status of substantive examination of patent applications in their jurisdictions.

Adams & Adams Partner, Werina Griffith’s closing presentation on Rapid Prototyping provided the perfect précis to the Africa Network Meeting discussions – with a warning that the disruptive technologies of the 4th Industrial Revolution require an accelerated and discerning response from a legislative and administrative perspective.

The meeting provided an excellent opportunity for delegates to share experiences and ideas. It is hoped that the meeting will continue to grow and provide a platform for the exchange of ideas and development of capacity in the IP field on the African continent.

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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NICKY GARNETT

Partner and Head of Africa Patents
Attorney

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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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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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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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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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FRANCHISING IN SOUTH AFRICA | 2018 OVERVIEW

Prominent international food and beverage franchises as well as fashion and apparel franchises maintain significance in the local market. However, due to economic challenges and a weak exchange rate, some foreign franchisors encounter difficulties with their local franchisees.

The health and education sectors have shown notable growth. Despite a tough economy, the franchising sector has maintained its steady growth and adaptability, managing to attract global franchise brands. This is the opinion of Danie Strachan and André Visser, Partners at Adams & Adams, in their latest assessment of the developments in the franchising market in South Africa, as part of the Thomson Reuters Practical Law Series.

Most foreign franchisors prefer to enter the South African market by way of master franchise agreements or, in some cases, area development franchises. Some franchisors also enter into joint ventures with local parties due to the imperatives of complying with black economic empowerment legislation. This is particularly relevant in the case of organisations that wish to do business with the South African Government. To download the South Africa Chapter on Franchising, CLICK HERE.

For additional information regarding the Franchising services offered by Adams & Adams CLICK HERE.

BookBlock-Franchising-in-SA

Reproduced with permission from Thomson Reuters Practical Law 2018 and the Associations of Corporate Counsel.

DANIE STRACHAN

Partner
Attorney

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ANDRE VISSER

Partner
Commercial Attorney

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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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RECENT DEVELOPMENTS IN GOVERNMENT PROCUREMENT POLICY IN SOUTH AFRICA

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

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

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

Other noteworthy changes introduced by the Preferential Procurement Regulations include:

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

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

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

To read the full South Africa chapter, CLICK HERE.

Govt-Procurement-Review-2018

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

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

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

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

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

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

ANDREW MOLVER

Partner
Commercial Attorney

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GAVIN NOETH

Specialist Consultant
Commercial Attorney

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

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

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

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

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

  • IP and public health; and
  • International IP cooperation

IP AND PUBLIC HEALTH

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

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

Substantive Search and Examination

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

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

Patent opposition

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

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

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

Patentability criteria

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

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

Disclosure requirements

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

Parallel importation

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

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

Exceptions

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

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

Voluntary and Compulsory licenses

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

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

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

IP and competition law

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

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

Rule of Law and Legal Certainty

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

INTERNATIONAL IP COOPERATION

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

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

By Ramon Pereira | Associate

And Gizela Lombard | Candidate Attorney

JANICE GALVAD

Partner
Patent Attorney

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RAMON PEREIRA

Associate
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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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SOUTHERN SUN ‘SQUARES OFF’ AGAINST NAMIBIAN BRAND OFFENDER

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

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

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

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

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

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

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

The First Respondent has filed an appeal against the decision.

by Kareema Shaik | Senior Associate

DALE HEALY

Partner
Trade Mark Attorney

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KAREEMA SHAIK

Senior Associate
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SWAZILAND | HOPES FADE FOR NEW TRADE MARK AMENDMENT BILL

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

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

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

LINDIE SERRURIER

Partner
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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 repeals the existing Trade Marks Act 1957 (“1957 Act”). On 24 October 2018, the notice of commencement in respect of the Trademarks Act No 2 of 2018 (“the New Act”), was published in the Malawi Gazette Supplement. In terms of the notice, the New Act came into operation on 1 October 2018. The provisions of the New Act, it appears, will apply retroactively. 

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.

Article by

Thembani Nkabinde | Candidate Attorney

Blain de Villiers | Partner

Mohamed Jameel Hamid | Associate

BLAIN DE VILLIERS

Partner
Trade Mark Attorney

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MOHAMED JAMEEL HAMID

Associate
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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

Associate
Trade Mark Attorney

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REPORT | THE APPLICABILITY OF THE MADRID SYSTEM IN AFRICA

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

Key criteria

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

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

Africa Madrid Members

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

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

Enforceability

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

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

General

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

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

Conclusion

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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SIMON BROWN

Partner
Trade Mark Attorney

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THE DISTRIBUTION AND MARKETING OF MEDICINES IN SOUTH AFRICA

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

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

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

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

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

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

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

JENNY PIENAAR

Partner
Trade Mark Attorney

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JEANETTE VISAGIE

Senior Associate
Trade Mark Attorney

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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TRADE MARKS | CAUTIONARY NOTICES NOW POSSIBLE IN SOMALIA

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

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

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

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

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

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

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

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

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

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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DISPUTE RESOLUTION IN SOUTH AFRICA

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

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

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

To read the full South Africa chapter, CLICK HERE.

DisputeRes2018

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

GREGOR WOLTER

Partner
Commercial Attorney

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JAC MARAIS

Partner
Commercial Attorney

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ANDREW MOLVER

Partner
Commercial Attorney

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RENEE NIENABER

Senior Associate
Commercial Attorney

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

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

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

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

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

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

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

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

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

To learn more about the PedalTap invention, click here.

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

NICKY GARNETT

Partner
Head of Africa Patents

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WYNAND FOURIE

Senior Associate
Patent Attorney

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AWARDS AND ACCOLADES FOR ADAMS & ADAMS PROFESSIONALS

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

IP STARS

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

Patent Stars

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

Trade mark Stars

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

INDICES

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

FIRM OF THE YEAR

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

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

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

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

GERARD DU PLESSIS

Partner & Firm Chairman
Trade Mark Attorney

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ZIMBABWE | AS IT HAPPENED

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

MADRID PROTOCOL IMPLEMENTATION | AN UPDATE

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

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

REGISTRY DIGITISATION | IPAS

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

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

INTELLECTUAL PROPERTY TRIBUNAL AND ZIPTA

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

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

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

REGIME CHANGE | IMPLICATIONS FOR IP

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

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

ADAMS & ADAMS | NEW ASSOCIATE OFFICE

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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ANGOLA | UPDATE ON REGISTRY PAYMENT PROCEDURES

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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MEGAN MOERDIJK

Partner
Trade Mark Attorney

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OAPI | SPLIT IN IP DIRECTORATE IMMINENT

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

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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ZIMBABWE | ADVERTISING AUTHORITY GAINS MOMENTUM

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

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

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

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

JENNY PIENAAR

Partner
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KELLY THOMPSON

Partner
Trade Mark Attorney

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JEANETTE VISAGIE

Associate
Trade Mark Attorney

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ANGOLA | SECOND PHASE OF RECORDS UPDATE UNDERWAY

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

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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THERESE DAVIS

Senior Associate
Trade Mark Attorney

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OAPI | NEW LOGO ADOPTED

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

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

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

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

 

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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TANZANIA | REGISTRY GOES ONLINE

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

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

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

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

 

SIMON BROWN

Partner
Trade Mark Attorney

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CLAIRE BOTHMA

Senior Associate
Trade Mark Attorney

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KAREEMA SHAIK

Senior Associate
Trade Mark Attorney

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SWAZILAND – TRADE MARKS REGISTRAR RETIRES

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

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

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

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

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

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

SIMON BROWN

Partner
Trade Mark Attorney

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NICOLE HAWORTH

Senior Associate
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NONDUMISO MSIMANG

Senior Associate
Trade Mark Attorney

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OAPI | URGENT RENEWAL RECOMMENDATIONS

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

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

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

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

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

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Attorney

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INSIGHTS | INTELLECTUAL PROPERTY RIGHTS IN SOMALILAND

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

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

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

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

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

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

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

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

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

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

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

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

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

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

UDI PILLAY

Senior Associate
Trade Mark Attorney

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