Thursday, 16 November 2017

Afro Leo

Zimbabwe: African Resilience Shines Through

Brenda Matanga  sent Afro-IP a message today to re-assure the IP community and investors that Zimbabwe remains open for business.
 
Its business as usual” she exclaimed as she updated on the Zimbabwe Institute of Patent & Trade Mark Agents' talk this afternoon on the procedure for trade mark oppositions at ARIPO. She described the attendance as being a "full house of IP practitioners" including the Deputy Chief Registrar who made a presentation.
 
"We are good. ... Zimbabweans just calmly getting along as if nothing is happening. Just playing it by the ear too… but we are working."
 
Earlier today, @DarrenTOlivier tweeted "I am reliably told by the effervescent receptionist at @ARIPO that it's business as usual at their offices and at Zimbabwe Intellectual Property Office (ZIPO) based in Harare. Basically, if you want to invest in Zim, they will help you!"
 
Today's talk: phot creds - Brenda Matanga







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Wednesday, 15 November 2017

Aurelia J. Schultz

Kenyan Company Secures Music Licensing Rights to Stream Global Catalog

Select your location on Mdundo
The big international music news in Africa is usually about an African artist signing with an American label, but this time, Mdundo.com has flipped the meza.  Mdundo has licensed the rights to stream Warner Music's catalog in Kenya, Uganda, Tanzania and Nigeria (one of these things is not like the others...). Disrupt Africa and Billboard provide some details, including much optimism from Mdundo CEO Martin Nielsen and Africa Warner Music South Africa Director Tracy Fraser.

Mdundo has been operating for five years and happens to one of Afro-Ng'ombe's favorite spots to find new African tracks.  (See a little footnote here from Kingsley's tour d'Africa in 2012.)  The Kenyan company received start-up capital from Berlin-based incubator 88mph, which focuses on web and mobile startups that target the African markets.  From the beginning, it sought to set itself apart as a service that not only provided accessible music to listeners but also paid artists.  (Phillip Nyalenda broke down the payment math last year here.)  Originally, Mdundo users purchased music via scratch cards like those used for mobile top-up minutes.  Now they can download, stream and pay directly from their phones or PCs. 

Mdundo features music from around the continent and has specific website arrangements targeted for users in Kenya, Tanzania, South Africa, Nigeria, Uganda, Ghana, Mozambique, Zimbabwe and Zambia.  The news reports do not mention why South Africa, Ghana, Mozambique, Zimbabwe and Zambia are not included for streaming rights.  Speculations, especially from people and animals hanging out on an IP blog, may focus on copyright law and issues commonly associated with digital music, such as internet service provider (ISP) liability and making available rights.  But not all of the countries where the Warner catalog will be available through Mdundo have these in their current laws.  This leads Afro-Ng'ombe to shrug, moo, and assume it has something to do with market demand verses costs; South Africa and Ghana may already have platforms distributing Warner's music. (And to this Zed music fan, it seems Zambia and Zimbabwe are often left out.)  In any case, and it is quite exciting to see an African-based company distributing external content instead of vice versa.

As always, thoughts and more info are welcome in the comments!  For those interested in more info about Mdundo, there is an in-depth interview with CEO Nielsen here.

Hat tip to @dorianpeters and @ellabmosheim.
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Monday, 13 November 2017

Afro-Buff

Roundtable turns its focus to the pharma industry and invites you

This is an invitation to a roundtable discussion on the harm of illicit trade and the role of trade mark counterfeiting within the pharmaceutical industry organised by the Companies & Intellectual Property Commission in association with the South African Liquor Brand Owners Association.

The roundtable is part of a series that envisages examining the role of counterfeiting as part of illicit trade in the various industry sectors. 

The objective is to foster collaboration between industry and government to combat trade mark counterfeiting and address the importance of cooperation, capacity building and education of all role players and stakeholders.  Special emphasis will be placed on a strategy to ensure efficient enforcement to combat the trade in counterfeit goods.   

The enforcement of intellectual property rights is one of the crucial cornerstones of economic growth. This interactive session will focus further on the challenges in the pharmaceutical industry, remedies that are available and how to access them. 

The importance of creating awareness to ensure that the general public is protected will also be discussed.  The Roundtable will provide a platform through which government can reach out to industry and simultaneously create awareness of the harmful effects of illicit trade on consumers.

Topics to be discussed:
-       The role of government in the fight against counterfeit trade.
-       The value of applying for and securing formal brand protection through registered trade marks is often dismissed or overlooked, which has the potential to expose a brand to significant risk.
-       Why formal trade mark registrations should be considered as part of any brand protection strategy – and should be considered early,
-       The remedies available in the Counterfeit Goods Act, 1997.
-       The role of the MCC.
-       Cross Border Protection The African Continent- Vanessa Ferguson Senior Partner Kisch IP.   
-       Current critical issue IMSA.
-       Traceability Solution.
High quality brands are losing market share due to the excessive inflow and manufacture of second rate counterfeit products.  Formulating a strategic approach to collaborate can facilitate how these industries align their strategies to win against a common threat. 

Relevant industry players will partake in a panel discussion

RSVP: here and find our more about upcoming get-togethers, at the Waterholes.
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Friday, 10 November 2017

Jeremy Speres

Amendments to the .ZA ADR Regulations


After having proposed changes to the .ZA Alternative Dispute Resolution Regulations in December last year, the South African Minister of Telecommunications and Postal Services has, with effect from today, amended the Regulations in some significant respects.  The amendment notice can be viewed here.

Many of the amendments appear to have been lifted from the UK DRS (the .uk dispute resolution system) and they are generally to be welcomed, although there is some uncertainty as to how some of the amendments will work in practice.  It would appear that the SAIIPL Supplementary Procedure has not yet been updated to incorporate the changes and this will of course be required going forward.

Below is a summary of the amendments:

·        Mandatory informal mediation to be run by the government domain name authority ZADNA introduced. If settlement reached, no complaint fees payable; 
·        The rebuttable presumption of an abusive registration if the registrant has been found to have made an abusive registration in three or more disputes in the previous 12 months has now been extended to the previous two years; 
·        The possible decisions that an adjudicator can reach have been expanded to include cancellation of the disputed domain name. Asking for this is of course risky, if you’re acting for the complainant, given that the domain will probably fall back into the pool of available domains; 
·        A real penalty for reverse domain name hijacking has been provided. If three disputes by the same complainant have been refused within a period of two years on the basis of reverse domain name hijacking, the provider will not accept any further complaints from that complainant for a period of two years except on good cause shown; 
·        The confusion created by requiring a commissioner of oaths to attest to the pleadings in countries where there is no such office has been remedied; 
·        If the registrant does not respond to a complaint then a summary decision must be issued with 50% of the complaint fee being refunded. A summary decision is not defined but will presumably have the same meaning as in the context of the UK DRS, being a short decision without full written reasons; 
·        A period in which to file a statement of intention to appeal has now been provided, being four days after receipt of a decision; and
·        If legal proceedings are instituted during a dispute, the adjudicator must proceed to decide the dispute if the adjudicator has already been appointed once the proceedings are instituted.
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Afro Leo

The Shape of a Taxi: Who is Driving Miss Daisy?

Afro-IP is delighted to announce that this is the final guest post from Prof Wim Alberts. Wim has formally joined the Afro-IP blogging team and will be contributing as and when his schedule allows. Here is his comparative analysis of the recent Taxi appeal case in the UK. Perhaps you know where South African law is going or rather, who or what is driving it?

Introduction


In an earlier discussion the different aspects of IP protection for vehicle shapes were highlighted (Alberts and Van Dyk 'Taxi! Taxi!' — the protection of car shapes in intellectual property law 2017 SALJ 219).  One of the issues dealt with was the approach of the English courts to the shape of taxis, which did not score high on the distinctiveness graph in the a quo (earlier) judgment of the well-known jurist Judge Arnold in The London Taxi Corporation Limited trading as the London Taxi Company v Frazer-Nash Research Limitedand (2) Ecotive Limited [2016] EWHC 52 (Ch).  This aspect was dealt with again on appeal by the English and Wales Court of Appeal in The London Taxi Corporation Limited trading as The London Taxi Company v (1) Frazer-Nash Research Limitedand (2) Ecotive Limited [2017] EWCA Civ 1729).  

Judgment

The focus of this discussion is the question of the trade marks being invalid because they are each devoid of distinctive character (as envisaged by article 3(1)(b) of the European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version replacing Directive 89/104/EEC).  This leads to the specific defence that the following marks of The London Taxi Company (LTC) have acquired distinctive character.


The 3D Community Trade Mark
The 3D UK Trade Marks





In dealing with this aspect, the court referred to its earlier decision in Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358.  More in particular, the following two important quotations (emphasis added):

“77. Before assessing these rival submissions, I think it may be helpful to say a little more about a concept which is woven into the decisions of the CJEU, including the decision of the CJEU in this case, concerning the acquisition of distinctive character by an inherently non-distinctive three-dimensional shape mark such as the Trade Mark. As we have seen, the CJEU has held that it is not sufficient for the applicant to show that a significant proportion of the relevant class of persons recognise and associate the mark with the applicant’s goods. However, to a non-trade mark lawyer, the distinction between, on the one hand, such recognition and association and, on the other hand, a perception that the goods designated by the mark originate from a particular undertaking may be a rather elusive one. Nevertheless, there is a distinction between the two and, as I shall explain in a moment, it is an important one. 

78. The distinction is this. We are concerned here with a mark, the three-dimensional shape of a chocolate product, that has no inherent distinctiveness. A shape of this kind is not inherently such that members of the public are likely to take it as a badge of origin in the way they would a newly coined word or a fancy name. Now assume that products in that shape have been sold on a very large scale under and by reference to a brand name which is inherently highly distinctive. Assume too that the shape has in that way become very well-known. That does not necessarily mean that the public have come to perceive the shape as a badge of origin such that they would rely upon it alone to identify the product as coming from a particular source. They might simply regard the shape as a characteristic of products of that kind or they might find it brings to mind the product and brand name with which they have become familiar. These kinds of recognition and association do not amount to distinctiveness for trade mark purposes, as the CJEU has now confirmed in its decision in this case.”

Returning then to the Taxi ruling, LTC relied on certain practical considerations (paragraph 57).  It was said to be common ground that the LTC marks had, by the relevant date, acquired a secondary meaning.  In other words, to relevant consumers, the shape did signify a licensed London taxi. LTC argued that there was good evidence that the shape had acquired distinctiveness when regard is had to “evidence” that consumers shunned the Mercedes Vito in favour of the traditional design of a taxi.  The court remarked though that if this, and a statement regarding preference for the taxi design, is all that the shape signifies, it is not, applying the test in Nestlé in the Court of Appeal, “sufficient to get him home.” (paragraph 57)

Lastly, LTC relied on what it termed the education of consumers.  These included, amongst others, notices on flip-up seats.  The left-hand advertisement asked "Who's behind this cab?", whilst the right-hand advertisement, said "Manganese Bronze Holdings plc [a predecessor of LTC] is the fast-growing engineering group behind one of the world's most famous symbols – the black cab. Following a tradition that spanned some 110 years, the taxi you are riding in right now sets a new standard in black cab design and comfort".  Later versions included a depiction of the taxi (paragraph 60).

The court dealt (paragraph 66) with this approach in the following terms:

“Firstly, one must remember, as always in the case of a shape mark, that the public are not used to the shape of a product being used as an indication of origin. Secondly, even though I would not, as I have said, necessarily exclude hirers as a class of average consumer, they constitute a class of consumer whose focus will be on the provider of the services being supplied more than on the manufacturer of the vehicle in which they are travelling. It will be hard to interest them, far less educate them, in the topic of whether the shape of the taxi is an indication of a unique trade source. Thirdly, the hirer is aware of the regulation of London taxis and that taxis of the shapes shown in the registrations can be relied on to be licensed London taxis. One must be careful therefore to distinguish this message admittedly conveyed to them by the shape, from that which is necessary to show that the mark has acquired trade mark significance.”

Comments

This case might not resonate with supporters of the decision of the Supreme Court of Appeal in Société des Produits Nestlé SA v International Foodstuffs [2014] ZASCA 187.  The Taxi views can be reconciled though with, for instance, the views of Harms JA in Bergkelder Bpk. v Vredendal Koöp Wynmakery [2006] ZASCA 5 (emphasis added).  There the revered justice stated the following:

“[7] In due course it was generally recognised that not only containers but also shapes of goods may perform a trade mark function.  For example, English law, implementing a European Community Directive, now provides that a trade mark may consist of ‘the shape of goods or their packaging’ and our 1993 Act, similarly, states that shapes and containers for goods may be trade marks. Importantly, from a legal perspective these trade marks do not differ from any other kind of trade mark:

‘the criteria for assessing the distinctive character of three-dimensional shape-of-products marks are no different from those applicable to other categories of trade mark.

However, from a practical point of view they stand on a different footing.

[8] The problem they pose for their promoters is that according to the public perception containers and shapes generally do not, in American parlance, serve as source identifiers. Containers are usually perceived to be functional and, if not run of the mill, to be decorative and not badges of origin.”

It would accordingly appear that whilst the mantra might be that all marks are said to be equal in terms of the distinctiveness criterion, it is just harder for shape marks to comply.  One is reminded here of the comment of the Court of Appeal in the Nestlé case, being that the distinction between, on the one hand, such recognition and association and, on the other hand, a perception that the goods designated by the mark originate from a particular undertaking, may be a rather elusive one.  Nevertheless, there is a distinction between the two.  And that is unlikely to change whilst it is the origin theory that is driving Miss Daisy.  South African trade mark law quo wadis (where are going)?

University of Johannesburg ... and member of the Afro-IP team
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Tuesday, 7 November 2017

Afro Leo

South Africa’s ASA launches funding model


Resurfacing from business rescue just over a year ago and a series of AGM’s in April this year, the ASA has continued to make steady progress back to recovery. Yesterday it launched its  voluntary 0.1% funding model from advertisers.

It works like this. Marketers will be able to opt in to pay .1% of levy on all advertising. So, if an Ad costs R10 000 then R10 will be destined for ASA funding, collected by media buying agencies. If the ASA is over funded then the levy is adjusted downwards. 

R15bn of advertising is placed through media buying agencies annually. If there is a 50% opt in to the system that will work out to  approximately R7,5 million per annum for the ASA, enough to cover operational costs.

According to the Business Rescue report the ASA required an initial amount of R5 million to cover its historical debt and a further R3 million to keep it going in the short term. Roughly two thirds of this has been achieved through pledges and up front competitor complaint payments by 40 companies, including one law firm, ENS Africa. You can view the list here.

Internationally, this model is not dissimilar to one the one used in the United Kingdom whereby a .1%  voluntary levy is charged on the cost of advertising space and .2% on some direct mail collected by independent third parties. They also charge for seminars and premium industry advice services.

Over the past month the ASA has made 20 Rulings which are published on its website here. It has also announced that it is moving to a new address in Parktown North (no 5, 7th Avenue). 


Prior to that structural and lobbying changes and commitments have been well documented on this blog here (Herbex decision), here (Business Rescue recommendations and AGMs), here (Schimmel appointment and interview), here and here (funding updates).

The steady progress of the ASA in achieving its goals is commendable. It will be interesting to see if relatively high competitor complaint fees introduced a few years ago will be reduced if the .1% funding model achieves traction. With Herbex out the way, the ASA can now also focus on a potential large damages claim which was set down for 18 March 2018, according to the Business Rescue report. It will also be interesting to see how the National Consumer Council will respond to this resurgence and the ASA's withdrawal of their wish to become an ombudsman. 
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