afriCa uPdate
MARCH 2015
mediterranean sea
tunisia morocco
north atlantiC oCean
libya
algeria
egypt
Cape verde red sea
mauritania mali
niger
senegal
ADAMS & ADAMS AFRICA NETWORK 2014 proved to be a challenging year for many countries in Africa. Negative political, economic and socioeconomic developments in certain parts of the continent impacted on our operations in those countries. Lack of resources, trying working conditions as well as inadequate IT systems continue to plague a number of African registries. Despite these challenges A&A managed to expand its African footprint with the establishment of associate offices in Nigeria and Ghana. Similarly, despite the trying conditions there were year on year increases in the number of
guinea-Bissau
eritrea
Chad
the gambia guinea
sierra leone liberia
trade mark and patent filings in most African countries. A&A enjoyed stronger collaboration with associate offices and greater co-operation with regional IP organisations. The firm engaged closely with local Registries and continued to assist with legislative and procedural developments in several countries. Our strategy in 2015 will be to continue to engage with our local partners and do our best to positively influence the development of IP on the continent and to assist local registries in improving their systems and service levels.
sudan
gulf of aden
Burkina faso ivory ghana Coast
djibouti nigeria
Benin togo equatorial guinea
Cameroon
Central african republic
ethiopia
south sudan uganda
rep. of the gabon Congo
dem. rep. of the Congo
sâo tomé & Principe
somalia kenya
rwanda
seychelles
Burundi tanzania
indian oCean zanzibar Comoros
south atlantiC oCean angola
zambia
malawi
zimbabwe
namibia
madagascar Botswana
mozambique swaziland
south africa
lesotho indian oCean
AFRICA NETWORK MEETING 2014
africa iP network delegates
3rd annual adams & adams afriCa network meeting: The outbreak of the Ebola Virus in West Africa, particularly, Guinea, Sierra Leone and Liberia, resulted in the imposition of a ban on travel to and from these countries and the subsequent cancellation of the 2014 Adams & Adams Africa Network Meeting which was due to be held from 11 – 12 September 2014. Whilst appreciating the importance and significance of the event on our annual calendar, it was felt that a responsible approach was to refrain from exposing anyone to any risk, however minute. At this stage, the Ebola outbreak appears to be coming under control and we will therefore be hosting the event at our Head Office in Pretoria once again in September 2015.
Patents | Trade Marks | Copyright | Commercial | Property | Litigation www.adamsadams.com
mauritius
Tot
529
603
693
835
0
TRADEMARK APPLICATIONS RECEIVED 2010-14
014
2013 52 48 32 58 53 61 67 66 65 61 66 64 693
424
Date: 2014 59 75 70 55 68 61 112 65 68 62 53 87 835
Month Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec Tot
ariPo 12/31/2014
Patent filings inCrease By 20% in 2014
2010 17 6 19 15 90 0 110 80 7090 220 60 5080 25 400 17 300 5 200 27 100 181 0
2011 15 16 25 51 7 17 28 12 11 14 16 16 228
ariPo trade mark aPPliCations inCrease By 12% in 2014
2012 2013 2014 15 17 15 !"#$%# '(()*+",-%. /-01$0 53 14 38 49 16 12 33 47 39 12 21 26 13 58 23 13 19 62 39 26 30 34 28 19 10 29 35 33 28 32 7 18 31 311 321 362
8"9:. '(()*+",-%. /-01$0 400 350 300 250 200 Totals 150
Totals
100 50 0 2010
2011
2012
2013
2014
010-14
2013 17 14 16 47 21 58 19 26 28 29 28 18 321
2014 15 38 12 39 26 23 62 30 19 35 32 31 362
2013
2014
4
DESIGN APPLICATIONS RECEIVEDCounCil 2008-14 administrative meeting: Adams & Adams was invited to attend, in an Date: 12/31/2014 (()*+",-%. /-01$0 of ARIPO observer capacity,8"9:. the '38th Session Administrative in Victoria Month 2010 2011 Council 2012 Meeting 2013 held 2014 400 Falls, Zimbabwe from 17 to 21 November 2014. 350 The Administrative Council Meeting is held on an annual basis and sees the coming together of 300 representatives from all 18 ARIPO member states, 250 including the newest member - Sao Tome and 200 Principe, as well as representatives from the ARIPO 150 observer states. A number of proposals were 100 tabled for consideration at the Meeting including: 50 • proposed amendment of the Harare Protocol 0 to facilitate accession to the Hague Agreement 2010 2011 2012 2013 2014 for International Registration of Industrial Designs • draft regulations for the implementation of the draft Protocol on the Protection of New Varieties of Plants and the establishment of a Technical Committee on Plant Variety Protection
Totals
stephen hollis with fernando dos santos, director general of ariPo
delegates at ariPo administrative Council meeting, victoria falls, zimbabwe
roundtaBle disCussions on ratifiCation and domestiCation of the BanJul ProtoCol on trade marks: During the course of last year, a number of roundtable discussions were held at ARIPO’s offices in Harare regarding the ratification and domestication of the Banjul Protocol by ARIPO member states. At the Administrative Council meeting in November 2014, the Director-General appealed to members to encourage their governments to ratify the Protocol in order to
increase the number of trade mark filings and to enact local legislation to give effect to Trade Marks filed via ARIPO at a national level. Adams & Adams was invited to send representatives to participate in the Banjul Protocol Amendment Working Group in 2015 and provide input on proposed amendments to the Protocol.
adams & adams awarded CertifiCate of aPPreCiation: ARIPO held its annual awards dinner on 5 December, 2014 in Harare, Zimbabwe. The event was attended by representatives from the Government of Zimbabwe, the World Intellectual Property Organization (WIPO), diplomatic missions, patent agents, Masters in Intellectual Property (MIP) students from Africa University, and ARIPO staff members. Adams & Adams was awarded a Certificate of Appreciation by the Director General of ARIPO, Mr. Fernando dos Santos, for its “continued contribution.”
Certificate
ariPo to introduCe online filing serviCes:
nthabi Phaswana (4th from left) with some of the workshop attendees and members of the training team from the South Korea Intellectual Property Office
oaPi unveils its new logo: On 17 September 2014, the Director General of OAPI announced the adoption of a new logo which came into effect on 22 September 2014. The introduction of the new logo caused some delay in the issuing of certificates and other documents but the situation is back to normal.
oaPi aCCedes to the madrid ProtoCol: OAPI deposited its instrument of Accession to the Madrid Protocol with WIPO on 5 December 2014. OAPI therefore became the 93rd contracting member of the Madrid System. However, in order for the Protocol to take effect in OAPI, it will require the amendment of the Bangui Accord to make provision for the recognition of Madrid trade mark applications. This has not yet taken place. Until such time as this is done, we recommend that clients proceed to file via OAPI to obtain valid trade mark protection in OAPI member states and not via Madrid.
oaPi – deadline to extend trade mark registrations to Comoros: Comoros became a member of OAPI on 25 May 2013. Any registrations falling due for renewal after this date will automatically be extended to the Comoros with effect from the date of renewal. Proprietors who do not wish to wait until their registrations fall due for
On 1 April 2015 ARIPO will be introducing limited online services with technical assistance from the South Korean IP Office. In preparation for this, ARIPO conducted a two day training seminar for external users and intellectual property agents in February 2015. A team from A&A attended the training and we will be participating in the pilot testing scheme.
online PuBliCation of offiCial Journal: Since the publication of the first online Journal for Trade Marks in December 2013, OAPI has now extended the service to include online publication of the OAPI Patent and Design Journals.
Creation of a Centre for arBitration & mediation for iP matters: At the 54th Session of the meeting of the OAPI Board of Directors, held in Douala, Cameroon, from 8 - 14 December 2014, a number of important resolutions were adopted, most interestingly, the creation of a Centre for Arbitration and Mediation for Litigious Intellectual Property matters. At this stage no formal announcements have been made as to the function or composition of this body. We will continue to monitor and report on developments.
renewal but wish to apply for the extension of existing OAPI rights to the Comoros have to make a formal application to OAPI. Although the official deadline for applying to OAPI expired on 25 January 2015, it is still possible to extend existing OAPI rights to the Comoros, subject to the payment of a late extension fee.
Co-oPeration agreement with the euroPean Patent offiCe: On 8 and 9 September 2014 a regional workshop was held in YaoundĂŠ at the headquarters of OAPI. The aim of the workshop was to improve co-operation between the two regional bodies as well as improving the procedure for granting patents, the training of OAPI staff and improving national liaison structures. In attendance were all the member states of OAPI and a team from the EPO.
oaPi Building
Algeria
Criminal sanctions for use of unregistered trade mark in Algeria: The Algerian Trade Marks Act forbids the use of a trade mark for goods or services in Algeria unless it is registered or an application for registration has been filed. Placing a trade mark on goods or services in contravention of this provision of the Act can lead to imprisonment for not less than one month and not more than a year and a fine of not less than
US$6 500 and not more than US$27 000. Although we are advised that these provisions are not known to be enforced vigorously in practice, such conduct, nonetheless, remains a serious risk. It is understood that a third party (such as a competitor) does have locus standi to bring an action in terms of these statutory provisions.
Changes in Power of Attorney Requirements for Trade Mark Applications: The Algerian Trade Mark Office (INAPI) now requires separate powers of attorney for each trade mark. In addition to this, INAPI also now requires specific information to appear on the power of attorney.
Substantive examination of Patent applications: Substantive examination of patent applications in Africa is not widespread. Most patent offices in Africa follow a registration system with only formalities examination. However, the move to substantive examination seemed to gain some momentum in 2014. In about May 2014, the Algerian Patent Office began to conduct substantive examination for patent applications. So far, it appears that examination will be largely based on the findings of
Angola
the International Search Report and Written Opinion for PCT national phase applications. The decision to implement examination does not appear to have been linked to any changes in Algeria’s patent laws which do not permit amendment of patent applications more than one month after filing. This has caused some difficulty but we are working with the patent office to overcome these issues.
New Registrar Appointed: On 15 September 2014, Ms Ana Paula Bolivar was appointed as the Director-General of the Angolan Intellectual Property Institute (IAPI). The appointment follows the sudden termination of the mandate of former IAPI DirectorGeneral, Mr. Barros Licença, on 7 April 2014.
Registry Visit
providing comprehensive staff training. Both parties undertook to communicate regularly in On 10 March 2015, the firm visited the Registry to resolving the areas of concern and we expressed meet with Ms Ana Bolivar, the new Registrar. The our willingness to support any initiatives by the purpose of the visit was to discuss the situation Registry in the development of IP in Angola. at IAPI which continues to present challenges, particularly in respect of the delays in the processing and publication of patent applications. Although we saw a record number of Journals being published by IAPI in 2014, very few patent applications have proceeded to grant in the past 10 years. Another concern raised with the Registrar was the long delays experienced in the prosecution of trade mark applications, in particular, the second publication of trade mark applications in the journal and the issuance of registration certificates. We were encouraged by her enthusiasm (L – R) Simon Brown and Nicky Garnett (A&A) with Ms Ana Paula Bolivar, and plans to resolve these issues, which Registrar, Jacinto Ucuahamba, local representative, and Mr Osvaldo Chitumba Kahilo, Deputy Registrar included employing more staff and
Botswana
Registry visit: At the beginning of July 2014, A&A representatives travelled to Botswana to visit our associate office and the Registry. The main purpose of the visit was to meet with Registry officials to discuss long outstanding matters in Botswana. The visit was productive and discussions were held with the Deputy Registrar, Mr Tim Moalusi. There are a number of outstanding matters and regular visits will continue to be made to the Registry to clear this backlog.
Simon Brown with Amo Phala and Tim Moalusi, Deputy Registrar of Botswana
Botswana
Training and Counterfeit goods raids: We have seen a sharp increase in anti counterfeiting activities on the continent and our anti counterfeiting team is becoming increasingly involved with local law enforcement agencies in combating counterfeiting in a number of African countries through training and joint operations. In June 2014, Adams & Adams arranged and conducted a workshop in Gaborone for Interpol as well as Botswana Customs and Police officials. After the workshop, several raids were conducted around the city. Further raids were conducted later in the year in both Gaborone and Francistown.
Counterfeit goods being seized by Police, Francistown
Directive on Trade Marks, Designs & Industrial Models Renewals:
Burundi
we received word that the Burundi IP Office had The Burundi Industrial Property Code of 2009 issued an official Directive that trade marks, designs contained confusing transitional provisions which and industrial models that were resulted in the Burundi IP Office registered prior to 28 July 2009 adopting the approach that all are subject to renewal after 10 trade marks, designs and industrial years from the enactment of the models that were registered Industry Property Code, in other (not filed or pending) before the words, by 28 July 2019. Although coming into force of the new Act we had, as a matter of caution, on 28 July 2009 were treated as intended to follow this course, we perpetual registrations, with no welcomed the clarity provided by renewal necessary. This approach the Directive. was of concern to us and, after much discussion with the Director, Independence Place, Bujumbura
Djibouti
Litigation – bad faith registration cancelled in Djibouti: A Djibouti company registered the trade mark ULKER BISKREM in December 2012 for goods in Class 30. Yildiz Holding Anonim Sirketi (‘Yildiz’) (a Turkish company) filed a cancellation action before the Commercial Court, citing their prior registrations of ULKER BISKREM as a word mark and in various designs by Yildiz in several countries including Djibouti; and prior use of the mark by Yildiz both in Djibouti and abroad.It appeared that
DRC
Registry Update: The DRC has been a problematic jurisdiction for a number of years. There are many challenges but the requirement that all certificates issued by the registry must be signed personally by the Minister of Trade creates unnecessary delays. This problem was exacerbated by the refusal of the Minister to sign certificates for any matters initiated before he took office i.e. for any matters filed prior to April 2012 when he was appointed.
Increase in Official Fees: In April 2014 the official fees for several services including trade mark oppositions and trade mark and industrial design searches were increased.
the Djibouti company had been distributing Yildiz’s trade marked products in Djibouti, Ethiopia, Somalia and Eritrea for the past seven years and they were aware of the Yildiz’s rights in the trade mark. Following a full hearing, the Court ruled in favour of cancelling Fuad’s registration of the trade mark ULKER BISKREM. Yildiz was also awarded reimbursement for the damages in the amount of DJF500,000 (approx US$ 2,800).
Our firm sent a delegation to meet with the Minister and several officials from the IP Office in Kinshasa in July 2013. Although some progress was made it was insignificant. There has now been a cabinet reshuffle and we are seeking an audience before the new Minister of Trade. This situation has impacted on all matters pending before the IP Office and we continue to do our best to improve the turnaround times in the DRC.
Patent Examination - Memorandum of Understanding Signed: The Omani Patent Office and the Egyptian Patent Office signed a Memorandum Of Understanding (MOU) in respect of intellectual property matters. In terms of the MOU, the Egyptian Patent Office will, act as the examining office for all pending and new patent applications filed in Oman.
Egypt
Tomb of the Unknown Soldier, Cairo
Ethiopia
Registry Visits: Adams & Adams visited Addis Ababa twice in 2014 to clarify issues surrounding the regularization of existing Ethiopian trade mark registrations to ensure the their validity in terms of the new and first-ever Ethiopian Trade Marks Act which came into effect on 24 December 2012. Various and sometimes contradictory practice directives were issued by the Registry which required clarification. We met with the Director-General of EIPO on several occasions and as a result of tense negotiations on our visit in June 2014, we managed to negotiate a 6-month extension of the 23 June 2014 deadline which was originally set for the regularization of all existing Ethiopian trade mark registrations. This extension provided some breathing space for all stake holders concerned about the validity of their existing Ethiopian registrations. The final deadline of 23 December 2014 has now come and gone
New Registrar Appointed: On 6 March 2015, Mr Teshale Yona, was appointed as the Director-General of the Ethiopian Intellectual Property Office (EIPO). The EIPO had been under an
Gambia
Ghana
Forum on Intellectual Property Law: In August 2014, Gambia hosted a three-day forum on Intellectual Property Law and practice that was arranged by ARIPO. The forum aimed to raise awareness of the important role that IP plays in the promotion of social, cultural, economic and technological development. Also discussed was the protection of local knowledge, arts and culture to ensure that these can be used in the promotion of Gambia as a unique tourist attraction.
Proposed New IP Legislation: Ghana is considering amending its Trade Mark legislation. Parliament is currently considering the Trade Marks Amendment Bill, 2013 and is seeking
IP Policy: On 19 November 2008, Switzerland and Ghana launched a project on intellectual property rights technical assistance in Ghana. Government has since developed the nation’s first National Intellectual Property Policy and Strategy (NIPPS) document to
Our local partner, Stephen Hollis and the former DG, Mr Berhanu Adello
and only time will tell how EIPO will cope with the implementation of an entirely new trade mark registration process in terms of which marks will be examined substantively and where third party opposition proceedings are available.
Acting Director, Mr Girma Bejiga, since 2 January 2015, following the termination of the mandate of the former Director-General, Mr. Berhanu Adello, on the same day.
Ratification of the Swakopmund Protocol on the Protection of Traditional Knowledge: Gambia has ratified the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.
to fine-tune the existing Trade Marks Act, 2004 (Act 664). The Bill seeks to align Ghana’s IP laws with its TRIPS obligations and its membership of the Madrid Protocol.
strengthen the management of the Intellectual Property (IP) system in Ghana and encourage innovation and creativity. The NIPPS is driven by the country’s trade policy and aims to bring Ghana’s IP regime in line with its TRIPS obligations.
Anti-counterfeiting training workshop and raids: A&A sent members of its anti counterfeiting team to conduct training with members of Interpol and Ghana Police and Customs in February 2014 . Subsequent to that, a number of in-market operations were carried out leading to seizure and eventual destruction of goods identified to be counterfeit products for a prominent US based heavy equipment manufacturer.
Charl Potgieter (extreme right) (Adams & Adams) with Dawn Barritea (front left) from International Customs Enforcement, USA and Customs Officials
kiPi md’s mandate ends: On 31 May 2014, Dr Henry Kibet Mutai’s three year term as the Managing Director of the Kenyan Industrial Property Institute (KIPI) came to an end.
Mr Sylvance Anderson Sange, who was serving as Deputy Managing Director of KIPI, was appointed as the Acting Managing Director of KIPI.
kenya
madrid system – kenya oPts to reCeive individual fees: On 12 March 2014 Kenya deposited a declaration in terms of Article 8(7)(a) of the Madrid Protocol (1989), which entitled it, with effect from 12 June 2014, to
domain name disPutes in kenya: The Kenya Network Information Centre (KENIC) prescribes a Domain Name Dispute Resolution Policy (Alternative Dispute Resolution Policy or ADRP) and Regulations, similar to ICANN’S UDRP. In terms of Kenya’s ADRP, a complainant in a domain name dispute may request the cancellation or transfer to it of a domain name registered in the .co.ke domain name space. However, until recently, KENIC’s ADRP was not operational and only existed in theory. KENIC has confirmed that it will be appointing two domain
receive individual fees from the World Intellectual Property Office (WIPO) in respect of designations via the Madrid system.
name dispute resolution providers shortly. The details of these providers are expected to be published on KENIC’s official website and it seems that the ADRP will be operational from that point onwards. In the meantime, KENIC has initiated a mediation process whereby parties to a domain name dispute are invited to attend mediation sessions facilitated by KENIC as a way in which to resolve domain name disputes. There have been reports that mediation has been successful in some cases.
amendments to the kenya anti-Counterfeit aCt no. 13 of 2008: The Anti-Counterfeit Act provides for the establishment of the Anti-Counterfeit Agency (ACA) and came into existence in June 2010. Since its establishment the Agency has made credible strides in curbing the manufacture and distribution of counterfeit goods. The Act was amended in early 2015. The amendments include clarifying the function of the
Agency by limiting its enforcement to within the borders of Kenya and provisions relating to the constitution of the Anti-Counterfeit Agency Board. Other amendments include the establishment of an Intellectual Property Enforcement and Co-ordination Advisory Committee. The amendments seek to join and co-ordinate the ACA with other institutions also involved in curbing counterfeit goods.
training and Counterfeit goods raids: A&A sent members of its anti counterfeiting team to conduct training with members from Kenyan Customs in Mombasa and Nairobi in February 2014 and with the Anti-Counterfeit Agency in April 2014. Subsequent to that, a number of in-market operations were carried out leading to seizure and eventual destruction of goods identified to be counterfeit products.
raid conducted at a shop selling counterfeit shoes, mombasa
ProCedural Changes – trade marks: The Registry recently implemented certain procedural changes, most notably, the necessity of submitting a Power of Attorney (POA), when filing new applications. Whilst the Registry was basically following a deposit type examination system, the examiners have recently been citing prior marks against new
raid conducted at a shop selling counterfeit watches, nairobi
applications. This poses certain challenges as it is currently not possible to conduct searches at the Lesotho Registry in order to obtain details of the cited marks. We are arranging an audience before the Registrar to discuss operational issues at the Trade Marks Office.
lesotho
Liberia
Litigation: Trade Mark Registrations Revoked: After months of litigating, the Liberian government cancelled and revoked two trade marks which were registered by a Liberian company, Supplying West Africa Trading (SWAT), holding that certain irregularities had occurred during the registration process. The action followed a complaint by M.K. Dukuly and Son (MK) to the Intellectual Property Office (IPO), alleging that SWAT illegally registered two of MK’s brand names “BELLA LUNA” & “LADY NOORE,” to enable SWAT to import rice into the country under those trade marks. SWAT contended that it applied for registration of the trade marks on 10 December, 2011 and received certificates from IPO on 22 January, 2012, giving it exclusive rights under those two names to import any products, including rice, into Liberia.
Libya
Madagascar
REGISTRY UPDATE: From early 2014, the functioning of the Libyan registry was affected by the ongoing civil unrest in that country. Although it has been confirmed that the office is currently operational, it is necessary to consider recent political events that have influenced the administration of the country. In June 2014 a House of Representatives was elected as the legally recognised governing body of the country. This elected governing body soon lost control of most of the country to the self declared leadership of the Fajr Libya Militia (Libyan Dawn). The Trade Marks Office is amongst the bodies which are currently under the management of the Fajr Libya Militia. In the midst of these political disputes, the Libyan
Supreme Court declared, on 6 November 2014, that the election of the House of Representatives was constitutionally invalid. It has been rumoured that the court’s verdict was reached under duress and will be challenged. In light of these developments, it is not clear which representatives are recognised as the legal legislative body. Since the Trade Marks office is under the control of the Fajr Libya Militia, it cannot be guaranteed that all processes concluded during this time will be considered valid once the political conflict is resolved. In light of the current situation, it should be noted that trade mark applications filed during this time face an uncertain future.
Draft Madagascan IP Bill:
matters and fails to deal effectively with office actions issued by the Registry and how to respond thereto. Adams & Adams will formalise their submissions as it continues to work closely with IP institutions across the continent in developing effective IP laws.
Adams & Adams have been invited to comment on the draft IP Bill by the Madagascan IP Institute of Lawyers. The Draft Bill does not appear to make provision for opposition proceedings in trade mark
Mauritius
Anti-counterfeiting training workshop: A&A conducted anti-counterfeiting training with members from Mauritian Customs during June 2014. The new Copyright Act, No. 2 of 2014 has a significant impact on parallel imports. The effect of Section 6(2) (a) and (b) is that no action can be taken against
Morocco
In the complaint, MK stated that the certificates submitted by SWAT were defective because SWAT only filed its trade mark applications on 30 December, 2011 but presented certificates that were issued on 22 December, 2011. The certificates were issued before the actual filing dates of the trade mark applications. In order for the trade marks to be validly registered, they need to be published. The publication of the BELLA LUNA “registration” was dated 3 and 10 January, 2012, after the date of the issuance of the certificates of registration for the marks to SWAT. The discrepancies in the filing dates, registration dates and publication dates were convincing enough and SWAT’s trade marks were duly cancelled.
NEW LEGISLATION IN MOROCCO: A new Industrial Property Law (No. 23-13) has been issued in Morocco to amend the law (No.17/97) related to Industrial Property. The new law was promulgated on 18 December 2014 but the implementing regulations have yet to finalised and, as such, the new law is not yet being implemented.
parallel importation of goods based on copyright unless the first distribution was unlawful. As the first distribution will generally always emanate from, or with the authority of, the copyright owner, it is likely that reliance on the savings clause in sub-section (b) will, however, be exceptional.
Some of the main features of the new legislation include: • the introduction of substantive examination for patents; • amended opposition procedures including opposition procedures relating to International Applications in terms of the Madrid Protocol; • customs recordal for holders of IP rights • divisional applications for patents will now be possible • extension of the duration of industrial designs to 25 years
Recognition of European patents: On 19 January 2015 an agreement was signed between the European Patent Office (EPO) and the Moroccan Industrial and Commercial Property Office (OMPIC) allowing European patents to be validated in Morocco with effect from 1 March 2015. From 1 March 2015, anyone filing a European patent application will be able to request validation for Morocco against the
payment of a fee. European applications and patents validated in Morocco will have the same legal effect as Moroccan patents and will be subject to Moroccan patent law. This agreement came on the back of a long-standing strategic partnership between the EPO and OMPIC, enabling Morocco to become the first country for which a validation agreement with the EPO entered into force.
Morocco
Agreement on Geographical Indications with the European Patent Office: The European Union (EU) and Morocco recently concluded negotiations on an agreement to mutually protect their Geographical Indications (GIs). Through this agreement, Morocco and the EU will ensure high level protection for their respective GIs for food
products. The agreement is also aimed at promoting and fostering trade relations in agricultural products and foodstuffs produced in Morocco and the EU.
Mozambique
Country update: Filipe Nyusi (a former defence minister) of the Frelimo party won Mozambique’s presidential election in October last year. He earned 57% of the vote according to the results. Former president Armando Guebuza was constitutionally barred from seeking re-election for a third term (he won 75% of the votes in the previous election five years ago). Nyusi is planned
to lead the nation as Mozambique develops its huge natural gas resources. Due to significant recent natural gas discoveries, Mozambique has become the focus of attention for numerous international oil companies and as a result, the New Petroleum Law (21/2014) came into force in Mozambique on 18 August 2014.
Anti- counterfeiting training workshops:
successful seizure by Customs officials in Mozambique during January 2015 of 2 600 pairs of counterfeit footwear.
Anti-counterfeiting training workshops and raids are being planned for the early part of 2015 following the
Accession to the Nagoya Protocol: Namibia has acceded to the Nagoya Protocol. The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization (ABS) to the Convention on Biological Diversity (CBD) is a supplementary agreement to the Convention on Biological Diversity. It provides
a transparent legal framework for the effective implementation of one of the three objectives of the CBD: the fair and equitable sharing of benefits arising out of the utilization of genetic resources. Namibia’s Bill on Access and Benefit Sharing and Related Traditional Knowledge is likely to be approved during the course of 2015.
Anti-counterfeiting training workshops and raids: A&A sent members of its anti counterfeiting team to conduct training with members of Interpol, Police and Customs in June 2014. In-market operations were subsequently carried out in Windhoek, Oshikati and Oshikango. Ongoing training sessions and raids will take place on a regular basis, the next planned sessions and operations will take place in the early part of 2015.
Anti-counterfeiting training workshop, Walvis Bay
Companies probed over mislabelling: The Namibian Standards Institute (NSI) launched an investigation into certain South African companies for “mislabelling” fresh produce. The companies were found to have labelled fresh produce as being grown in Namibia, when in actual fact it was imported from
Anti-counterfeiting raid, Oshikango
South Africa. The NSI confirmed that various samples were taken from the companies’ retail outlets and it was found that misleading labels were being used. The offending outlets were instructed to rectify the mislabelling for all goods still on their shelves, pending the outcome of the investigation.
Namibia
Namibia
Registry Visit: During February 2015, the firm paid a visit to the Registry and was impressed with improvements at the operational level over the past 17 months or so. Discussions were held with senior officials from BIPA and it is clear that great strides are being made in improving the state of affairs of the IP and Companies office. Front of Registry Office
Nigeria
AFRICA NETWORK: Adams & Adams network of associated offices continues to grow in line with our strategy to establish associated offices in the territories identified as key
Gérard du Plessis and Simon Brown with Registry staff
to the development of IP in Africa. Following the establishment of an associated office in Kenya in 2013, Adams & Adams established associated offices in Nigeria and Ghana in April 2014.
Online Database for Trademarks in Nigeria: The Nigerian Law Intellectual Property Watch (NLIPW) launched a new online tool to facilitate brand searches in Nigeria. The NLIPW Trademarks and Service Marks Database was created to give users
Online Filing - Update:
Rwanda
the opportunity to perform preliminary searches for similar or identical trademarks, prior to conducting an official search with the Trademarks, Patents and Designs Registry in Abuja.
On the 16th of July 2012 the Intellectual Property Office (Trade Marks, Patents and Designs Registry) launched a system that allows for online filing of trade marks, patents and designs in Nigeria. One of the main objectives of the portal is to streamline and facilitate the process of filing applications and reducing the administrative burden of managing payment of the fees.
As expected, there were some teething problems but the online filing system now seems to be working satisfactorily although it has caused delays in the processing of patent and design applications. However, trade mark applicants appear to have benefitted, as the first registration certificates for trade marks filed online were issued in May 2014.
Adoption of the Industrial Property Automation System (IPAS):
changes in the numbering system. The numbering system under IPAS differs from the previous numbering system but holders of IP rights do not appear to have been notified of this. Efforts are being made to obtain clarity regarding the new numbering system under IPAS so that we can notify clients.
The Rwanda Development Board (RDB) adopted the Industrial Property Automation System (IPAS) provided by WIPO in September 2013. Implementation of this system has recently resulted in confusion and
20th African Organization for Standardization (ASO) Council Meeting: On 23 June 2014, ASO member states convened in Kigali, Rwanda for the ASO Council meeting, the General Assembly meeting, as well as to celebrate the African Day of Standardization. Under the theme, ”Standardization as a driver for improving Africa’s competitiveness”, the events were attended by around 150 delegates from 34 African states
who are members of ASO as well as delegates from international bodies and the business community. ASO, formerly the African Regional Organization for Standardization (ASO), was formed in 1977 out of the economic Pan-Africanism of the 1970s when the idea of a continental Standardization body to accelerate Africa’s economic integration with the rest of the world, had received massive support from the African governments.
Training and Counterfeit goods raids: In March 2014, Adams & Adams arranged and conducted a workshop in Kigali for Interpol as well as Customs and Police officials from Rwanda. A&A subsequently returned to Kigali in June 2014 and assisted Customs and Police with several raids around the city.
Anti-Counterfeit training workshop, Kigali
Counterfeit goods being seized, Kigali
ARIPO - New member state: The Democratic Republic of Sào Tomé and Príncipe (Sào Tomé) deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of the African Regional Intellectual Property Organization (ARIPO) on May 19, 2014. Sào Tomé became the 19th member state of ARIPO and brought the number of states party to the Harare Protocol to 18. The Harare Protocol
New Industrial Property Act: The Seychelles Parliament recently passed the new Industrial Property Act 7 of 2014, which makes important changes in respect of the protection of Trade Marks, Industrial Designs and Patents. The new Act came into force on 1 March 2015 and an increase in official fees is expected. The new legislation appears to have been passed in preparation for Seychelles’ accession to the World Trade Organisation and also to comply with the
New Trade Marks Act pending:
became effective in respect of Sào Tomé from 19 August 2014. As Sào Tomé is also a member of the Patent Cooperation Treaty (PCT), any international application filed on or after 19 August 2014 would include the designation of Sào Tomé for an ARIPO patent, as well as for a national patent. Further, as from 19 August 2014 it became possible for nationals and residents of Sào Tomé to file international applications with ARIPO as a receiving Office.
Paris Convention (member since 2002), the Patent Cooperation Treaty (member since 2002) and the WIPO Convention (member since 2000). Significant changes include: • abolition of Part B registrations • provision for the protection of well-known marks • registration of goods and service marks, certification, series and defensive marks. • UK patents no longer recognised • Provisions for filing of design applications
The legislature of Sierra Leone has adopted the Trade Marks Act, 2014 and the Act is now awaiting signature by the President. The Act was published as a supplement to the Sierra Leone Government Gazette Vol. CXLV No.53. In December 2014 we received indications that the Act would be signed as soon as the Ebola outbreak was overcome. To date, no regulations have been published to compliment the Act. The Act provides that any regulations published under the old act will remain in force until
amended or revoked under the new Act. The Act sets out the procedure for application, opposition and cancellation of trade marks and caters for service marks, collective marks and well known marks. The Act also regulates the use of trade names, unfair competition, trade descriptions and fraudulent marks. The Act also envisages the establishment of a Tribunal which will be responsible for hearing civil claims and dealing with any offences envisaged in terms of the Act.
IP Policy – update:
• a hybrid system will be used, namely a full SSE process in respect of domestic applications, and a partial recognition of the examination outcomes of an examination conducted by another authority in respect of foreign applications; • the SSE system will not be generally applied to all applications, but will be implemented only in respect of certain selected technology sectors, the selection of technology sectors to be made on the basis of the South African economic priorities. Discussions are ongoing with approval for the IP Policy possible as early as the end of February 2015. It was stressed that the implementation of the SSE model will be fast-tracked with the appointment of 20 patent searchers in the 2015/2016 financial year. By the time that the necessary amendments to the relevant legislation (primarily the Patents Act and Regulations) have been enacted, it is envisaged that these patent searchers will be trained and ready to start the search and examination process. The SSE may nevertheless be implemented in phases, by initially commencing examination only of certain of the selected technology fields.
A Roundtable Discussion was held on 9 February 2015, co-hosted by the Department of Trade and Industry (DTI) and the Companies and IP Commission (CIPC), and attended by some 30 stakeholder and Government representatives. The meeting was informed that the debates around the IP Policy had been concluded and that the decision had been taken that substantive search and examination (SSE) of patent applications would be introduced. The purpose of the meeting was not to discuss the merits of SSE but to consider the best model for the SSE to be used. The presentation on the possible SSE models was made by Ms Elena Zdravkova, the Senior Patents Manager of CIPC, jointly with Ms Meshendri Padayachy, Deputy Director: Intellectual Property, Consumer and Corporate Regulation Division of DTI. The meeting was informed that CIPC has performed preliminary research and has identified various scenarios on possible SSE models. However the model provisionally selected by CIPC would be a composite model with the following features:
Litigation –Rectification of the registers in terms of Section 24 of the Act: On 19 November 2014, the Supreme Court of Appeal (“SCA”), in the case of Roodezandt Ko-Operatiewe Wynmakery Ltd v Robertson Winery (Pty) Ltd & another, dismissed Roodezandt’s appeal to have the order to remove its class 33 registration
set aside. Robertson Winery (“the Winery”) brought an application seeking the removal from the registers of Roodezandt’s 2008 registration for the mark Robertson Hills in class 33. It based its application on Section 24 allows for the rectification of the registers
Sao Tome
Seychelles
Sierra Leone
South Africa
South Africa
by removing an entry wrongly made or wrongly remaining in the registers. The SCA held that: • The Winery had succeeded in establishing the likelihood of confusion or deception; • There was no reason why Robertson, which had been used exclusively by the Winery for over 60 years, could not be distinctive in respect of wines • A trade mark and a wine of origin (WO) scheme are different. On the one hand, a trade mark is a badge of origin in respect of the wine, whereas, on the other hand, the WO scheme is a badge
of origin in respect of the grapes from which that wine is made. Given Roodezandt’s exclusive use of “Robertson” as a badge of origin of the producer, confusion and deception were likely; • The removal of Roodezandt’s class 33 registration would be effective from the date on which the formal application for removal was made. This ruling is likely to be a frequent reference in future matters involving trade marks containing geographical names.
Keyword Advertising – Cochrane Steel Products (Pty) Ltd v M-Systems Group (Pty) Ltd: The applicant, Cochrane Steel, sought an interdict restraining the respondent from using its trade mark ClearVu as a keyword. It relied on the common law interdict of unlawful competition, particularly leaning on and passing-off (as its trade mark had not yet proceeded to registration). In dismissing the case, Judge Nicholls held that: • Leaning on was not part of our law. Reference was made to various case law in which it was held that, in the absence of passing-off, the proprietor of an unregistered trade mark cannot enjoy any rights in it. • The respondent’s use of keyword advertising would only be prohibited in cases where it was likely to have caused confusion. As AdWords are familiar features of the Internet, consumers are used to distinguishing them from natural search results, particularly where the applicant’s keyword is used to trigger the respondent’s advertisement, but the advertisement and link do not make reference to, or use, the applicant’s trade mark. In
such circumstances, there could be no likelihood of confusion that M-System’s link related to its product, and not ClearVu. In conclusion, the bidding on a competitor’s trade mark as a keyword is not on its own unlawful or contrary to Google’s Adword policy. However, care should be taken to ensure that the trade mark is not used in the text of the advert or confusion is caused which may occur, for example, where the site itself sells infringing goods. The decision did not cover the position where the mark bid on, is a registered trade mark. Although the judgment indicated that the outcome is likely to be the same, which would also be consistent with international case law, advice should be sought especially if the registered trade mark is well known. The decision has been taken on appeal. Adams & Adams successfully represented the respondents in defeating the claim and will keep you updated on developments.
Plant Breeders Rights Amendment Bill - approved by Cabinet: On 10 December 2014, Cabinet approved the submission of the Plant Breeders Rights Amendment Bill to Parliament. Fundamental amendments include: • The extension of protection to all plant genera and species; • Addressing infringement matters of plant breeders’ rights through appropriate fines and penalties; • Defining the limits and beneficiaries in the application of farmer’s privilege; and • Empowering the Minister to establish a Committee which would advise the Registrar on matters related to the protection of plant varieties.
South Sudan
Innovation Hub, Pretoria
Update – Trade Marks Bill 2013: Since the Republic of South Sudan gained full independence from Sudan in 2011, trade mark protection in South Sudan has been uncertain. However, the Trade Marks Bill of 2013 gave rise to the possibility that South Sudan would have its own national law. Despite the positive strides envisaged by the Bill, there is still no indication when the new Trade
Marks Bill 2013 will be passed into law. Nonetheless, we can confirm that applications for the registration of trade marks are being accepted and processed by the South Sudan Registry and the South Sudan Registry is taking guidance from the Sudanese Trade Marks Act of 1969. In terms of the transitional provisions of the Interim Constitution, the country can rely on North Sudanese Laws.
Swaziland
ARIPO – Roving IP Seminar: The African Regional Intellectual Property Organization (ARIPO), in conjunction with the Intellectual Property Office of the Kingdom of Swaziland organised the first series of roving seminars from 24 March 2014 to 28 March 2014. The Roving Seminars were conceived to address the prevailing lack of awareness on the important role that intellectual property plays in the social, cultural, economic and technological development of a country. At the end of the seminar, an action plan was developed to assist in the development of the intellectual property system in Swaziland.
Registry Offices
Tanzania
New Registrar Appointed: On 1 May 2014, Mr Frank Kanyusi was appointed as the new CEO of the Business Registrations and Licensing Agency (BRELA) which comprises the Registry of Companies as well as Patents and Trade Marks. Mr Kanyusi took over from Mrs Kishebuka who had been acting in that capacity since the beginning of 2013. Although there continue to be recurrent operational challenges, due to inter alia lack of sufficient resources
Old Ushirika Building - Registry Offices (Tanganyika) are on 5th Floor
Registry Building
within the Registry, we have remained optimistic that the change may lead to better performance from the Registry. The journal is being published more regularly and we are receiving registration certificates more regularly. Although the Registry is still facing a backlog of applications, dating back to 2008, indications are positive that the clearing of the backlog will be made a priority by the new Registrar.
Registry Offices (Zanzibar)
Registry Offices (Tanganyika) – Trade Mark Examiner’s office
Anti-Counterfeiting training workshop and raids: Adams & Adams sent representatives from its anti-counterfeiting section to conduct training with members of the Police and Fair Competition Commission (“FCC”) in July 2014 and with the FCC, Police and Customs in December 2014. Subsequent to that in-market operations were carried out in Dar Es Salaam during May 2014. Anti-counterfeiting training workshop, Dar Es Salaam
Anti-Counterfeit training workshop:
Togo
In July 2014, Adams & Adams arranged and conducted a workshop in Lomé for Interpol as well as Customs and Police officials from Togo. The workshop was well received and plans are underway for further training in 2015 and possible raids to be conducted around the city.
Anti-Counterfeit training workshop, Lomé
tunisia
reCognition of euroPean Patents: The European Patent Office (EPO) and the Tunisian Patent Office (the National Standardisation and Industrial Property Institute, or innorPi) signed an agreement regarding the validation of European patents in Tunisia. Under the terms of the agreement, European patent applicants and proprietors will be able to validate the legal effects of their European
uganda
Buy uganda, Build uganda (BuBu): The Ministry of Trade, Industry and Cooperatives in Uganda has approved a policy to promote the production, purchase, supply and consumption of locally produced goods and services. The Buy Uganda, Build Uganda (BUBU) policy is premised on existing Government development policies and strategies that support and encourage local production and trade.The Policy, which officials hope will boost the Ugandan economy, aims to improve local business, intervene in Public procurement preference schemes, promote the use and conformity to quality standards, enhance the capacity of SMEs in meeting supermarket supply–chain demands and assist the Private sector in boosting the “Proudly Uganda” brand.
zambia
inCrease in offiCial fees: In September 2014 official fees were increased by 10% across the board, but the legislative changes to
zimbabwe
patents and applications in Tunisia, even though Tunisia is not an EPO member state. Validated European patent applications and patents will have the same legal effect as Tunisian national applications and patents, and will be subject only to Tunisian patent legislation. The agreement has yet to be ratified in order to enter into force.
aCCession to the madrid ProtoCol: On December 11, 2014, the Government of Zimbabwe, which currently offers a dual trademark registration system under either a national or regional trademark registration (through ARIPO), acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”). The Madrid Protocol will enter into force, with respect to Zimbabwe, on 11 March 2015, bringing the total number of Contracting Parties of the Madrid system to 94, and affording
downtown kampala
allow the registration of trade marks in service classes have not yet been approved.
trade mark proprietors a third registration option under the Madrid Protocol. However, of concern is that Zimbabwe has not yet amended its national laws to give effect to the Madrid system and this is unlikely to take place before 11 March 2015, rendering international registrations designating Zimbabwe unenforceable until then. In the meantime, trade mark proprietors will have to continue protecting their trade mark rights in Zimbabwe at national level, or through an ARIPO registration.
registry visit: At the beginning of February 2015, members of the firm travelled to Zimbabwe and met with representatives of the Zimbabwe Intellectual Property Office, Mr Willie Mushayi, the Deputy Registrar and Mr Cliford Chimombe, the Chief Examiner. The state of the Registry was impressive and a lot of work was being done to motivate staff and try to improve operations. Various discussions were held over the accession to the Madrid Protocol and the amount of work still to be done on the amendment of the national laws and the readiness of the Registry to be fully integrated into the system. Proposals were made to invite Registry staff for an orientation programme to observe operations from a user’s perspective with the aim of improving the operations of the Registry in servicing its clients.
nthabi Phaswana (2nd from right) with registry staff
memBershiP of regional intelleCtual ProPerty organisations in afriCa
ariPo Countries
north atlantiC oCean
mediterranean sea
tunisia
oaPi Countries
morocco
libya
algeria
egypt
Cape verde red sea
mauritania niger
senegal
guinea
sierra leone liberia
sudan
gulf of aden
Burkina faso ivory ghana Coast
djibouti nigeria
Cameroon
Benin togo
ethiopia
south sudan
Central african republic
uganda
equatorial guinea
rep. of the gabon Congo
dem. rep. of the Congo
sâo tomé & Principe
somalia kenya
rwanda
seychelles
Burundi
indian oCean
tanzania
zanzibar Comoros
south atlantiC oCean angola
zambia
malawi
zimbabwe
namibia
madagascar Botswana
mozambique
mauritius
swaziland lesotho
south africa
indian oCean
north atlantiC oCean
mediterranean sea ariPo Countries
tunisia morocco
oaPi Countries
libya
algeria
egypt
Cape verde red sea
mauritania mali
niger
senegal
guinea-Bissau
liberia
sudan
gulf of aden
Burkina faso
guinea
sierra leone
eritrea
Chad
the gambia
ivory Coast
ghana
djibouti somalia
nigeria
Benin togo equatorial guinea
sâo tomé & Principe
Cameroon
Central african republic
ethiopia
south sudan uganda
rep. of the gabon Congo
kenya
rwanda
dem. rep. of the Congo
seychelles
Burundi
south atlantiC oCean
tanzania
indian oCean zanzibar Comoros
angola
zambia
malawi
zimbabwe
namibia
madagascar Botswana
mozambique swaziland
south africa
lesotho indian oCean
mauritius
TRADE MARKS
guinea-Bissau
eritrea
Chad
the gambia
PATENTS
mali
Pretoria Office
Postal AddresS PO Box 1014, Pretoria, 0001, South Africa Street Address (Courier only) Lynnwood Bridge, 4 Daventry Street Lynnwood Manor, Pretoria, South Africa DOCEX 81 Pretoria PHONE +27 (0) 12 432 6000 FAX +27 (0) 12 432 6599 EMAIL mail@adamsadams.com
JOHANNESBURG Office
Postal AddresS PO Box 10155, Johannesburg, 2000, South Africa Street Address (Courier only) 2nd Floor 34 Fredman Drive (Cnr 5th Street) Sandton DOCEX 53 Johannesburg PHONE FAX EMAIL
+27 (0) 11 895 1000 +27 (0) 11 784 2888 (CPL) +27 (0) 11 784 2872 (Patents) +27 (0) 11 784 2889 (Trade Marks) jhb@adamsadams.com
CAPE TOWN Office
Postal AddresS PO Box 1513, Cape Town, 8000, South Africa Street Address (Courier only) 28th Floor, 1 Thibault Square cnr Long St & Hans Strijdom Ave Cape Town DOCEX 186 Cape Town PHONE +27 (0) 21 418 8560 FAX +27 (0) 21 419 5729 EMAIL cpt@adamsadams.com
DURBAN Office
Postal AddresS PO Box 237, Umhlanga Rocks, 4320 South Africa Street Address (Courier only) Suite 2, Level 3, 21 Richefond Circle, Ridgeside Office Park, Umhlanga Ridge, Durban, South Africa DOCEX 9 Durban PHONE +27 (0) 31 536 8240 FAX +27 (0) 31 536 8254 EMAIL dbn@adamsadams.com
Angola angola@adamsadams.com ARIPO aripo@adamsadams.com BOTSWANA botswana@adamsadams.com Burundi burundi@adamsadams.com GHANA ghana@adamsadams.com KENYA kenya@adamsadams.com LESOTHO lesotho@adamsadams.com Mozambique (ARIPO) mozambique@adamsadams.com NAMIBIA namibia@adamsadams.com NIGERIA nigeria@adamsadams.com OAPI (CAMEROON) oapi@adamsadams.com sWAZILAND swaziland@adamsadams.com Tanzania (incl. zanzibar) tanzania@adamsadams.com
Patents | Trade Marks | Copyright | Commercial | Property | Litigation www.adamsadams.com