The Global IP Matrix issue 8 by Northon's Media PR & Marketing Ltd

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Dear readers, We are delighted to present you with issue 8 of The Global IP Matrix magazine! Once again, we have fantastic content delivered to you by industry professionals who are experts in their field. This issue explores IP & Innovation in Africa, anti-counterfeiting measures in the Caribbean, IPR Infringement in China, plus many more engaging articles around the IP ecosystem.

It’s been a challenging few months; however, we are grateful that our clients and contributors share our vision. Together, we are heading for better times. We cannot thank our authors enough for their time and efforts to keep you, our audience up to date with news and stories from their own perspective and expertise. Look out for our next edition, in January 2021 and until then, stay safe, healthy & happy.

CONTENTS

Elvin Hassan – Editor

Pages 5

Cementing Trademark Rights Anomi Wanigasekera, Partner & Head of Intellectual Property Division & Co-Authored by Navindi Naotunna, Associate at Julius & Creasy Law firm, Sri Lanka

Page 19

Opioid Addiction – A Patent Perspective Alec Griffiths, IP Manager at Patent Seekers, United Kingdom

Page 24

Offensive Trademarks Raise Doubts, or not? Tatiana Pogrebinskaya, Trademark Attorney at Gorodissky & Partners, Russia

The Supreme People’s Court of China issued opinions on strengthening the punishment of IPR infringement. Ray Zhao, Senior Partner at Unitalen Attorneys at Law, China

Page 9

Page 27

Page 7

Published by Northon’s Media PR & Marketing Ltd. Carlos Northon

CEO & Founder Northon’s Media PR & Marketing LTD Publisher of The Global IP Matrix & Women’s IP World carlos@northonsprmarketing.com

Elvin Hassan

Editor for The Global IP Matrix & Women’s IP World Head of International liaisons for Women’s IP World elvin@womensipworld.com

AFRICA AWAKENS: Achieving agenda 2063 through innovation and intellectual property. Sarah Norkur Anku, Senior Partner at Anku.Anku At -Law, Ghana

ONLINE STREAMING SERVICES IN NIGERIA: The Gold, the Legal Considerations. Ifeanyi E. Okonkwo, associate at Stillwaters Law firm, Nigeria

Joanna Sofocleous

Page 13

Page 32

Head of Design for The Global IP Matrix & Women’s IP World info@northonsprmarketing.com

Jurisdiction Matters: High Court or Commercial Court? Manisha Singh, Partner at LexOrbis, India & Simran Bhullar (Associate), India.

ANTI-COUNTERFEITING MEASURES IN THE CARIBBEAN: THE DEMAND FOR UNIFIED MEASURE. Laura Castillo Sepúlveda Partner at INNVENTIVA - Espacio Legal, Dominican Republic

Senior Account Manager joanna@womensipworld.com

Craig Barber

Page 16

Best methods for an effective patent landscape analysis in just six simple steps! Caitlin Kavanagh, Marketing Manager at Minesoft, United Kingdom

THE GLOBAL IP MATRIX EDITORIAL BOARD Gabriela Bodden

Marek Bury

Partner at Eproint www.eproint.com Costa Rica

Managing Partner and Patent Attorney at Bury & Bury www.bnb-ip.eu Poland

Ms. Brenda Matanga

Laura Castillo

Managing Attorney & head of practice at B Matanga IP Attorneys for Africa

www.bmatanga.com Zimbabwe

Partner at Innventiva Espacio Legal www.innventivalegal.com Dominican Republic

Mr. Afamefuna Francis Nwokedi Principal Counsel of Stillwaters Law Firm www.stillwaterslaw.com Nigeria

Ms. Ruta Olman

Immediate past president of ECTA & Associate partner of METIDA

www.metida.lt Latvia

Contributors Mrs Sarah Norkor Anku, Senior partner at Ankku.Anku At-Law

imran Bhullar (Associate) at LexOrbis, India

www.ankuatlaw.com

www.lexorbis.com

Tatiana Pogrebinskaya, Trademark Attorney at Gorodissky & Partners, Russia.

Caitlin Kavanagh, Marketing Manager at Minesoft, UK

Laura Castillo Sepúlveda Partner at INNVENTIVA Espacio Legal

Alec Griffiths, IP Manager at Patent Seekers, UK

Anomi I Wanigasekera - Partner and head of IP at Julius & Creasy

Ifeanyi E. Okonkwo, Associate at Stillwaters Law Firm

www.gorodissky.com

www.minesoft.com

www.innventivalegal.com

www.patentseekers.com

www.juliusandcreasy.com

www.stillwaterslaw.com

Co-Authored by Navindi Naotunna, Associate at Julius & Creasy Law firm, Sri Lanka

Ray Zhao, Senior Partner at Unitalen Attorneys at Law, China

www.juliusandcreasy.com

www.unitalen.com

Manisha Singh, Partner at LexOrbis, India

www.lexorbis.com

125mm (H) x 180mm (W)

Pakistan Office:

��ED��RADEMARK ��A�E��ER��E� International Intellectual Property Attorneys

Trademark, Patent, Design, Copyright, Domain name registration, litigation & enforcement services

(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)

Email: UnitedTrademark@UnitedTm.com Websites: www.utmps.com and www.unitedip.com

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TRADEMARK RIGHTS

Cementing

Trademark Rights In July 2020, the Commercial High Court of Colombo ruled that Tokyo Cement Company (Lanka) PLC had established a prima facie case to use the word ‘Tokyo’ exclusively along with the distinctive triangular shape logo as its trademarks. This is an important ruling because it established that even though using a geographical name is a public interest right, it does not trump acquired intellectual property rights when the name itself does not act as a trademark.

Background Tokyo Cement Company, the Plaintiff, is one of the leading cement manufacturers in Sri Lanka. They are the owner of multiple trademarks bearing the term ‘Tokyo’ and ‘Tokyo Super’ registered for manufacturing cement in class 19. Most of their marks contain a distinct shape that is readily identifiable and distinctively associated exclusively with the Plaintiff. Since 1982, the Plaintiff has been using the trading name and trademarks containing the word ‘Tokyo’.

Authored by Anomi Wanigasekera, Partner & Head of Intellectual Property Division & Co-Authored by Navindi Naotunna, Associate at Julius & Creasy Law firm, Sri Lanka - www.juliusandcreasy.com

Tokyo Cement made the fateful decision to start proceedings for infringement of its registered trademarks, tradenames, and contravention of the provisions of the Intellectual Property Act for dishonest acts to gain unfair advantages.

The Plaintiff ’s Arguments

Tokyo Cement’s first argument was that they have the exclusive right to trademarks comprising of the word or the name ‘Tokyo’ and the triangular shape logo because they designed it for themselves and that they have used it for a long time. They argued they have used it since 1982 and are wellknown. Therefore, although the trademark is registered for manufacturing cement, no other person is entitled to use it for any other product. They further argued that even if the trademark is not registered, no other person can use its name and logo for any other product as his logo and name goes along with the acquired goodwill/reputation.

The Defendant’s Arguments

The Defendant, Tokyo Elevators and Escalators (Private) Ltd, is a specialised elevator enterprise that designs, manufactures, processes the elevators and parts, and has been in business since 2011. Tokyo Cement discovered that Tokyo Elevators are using a billboard that had incorporated ‘Tokyo’ along with a shape that is misleadingly similar to their trademarks and the distinctive shape of their trademark.

Tokyo Elevators argued that Tokyo Cement had not placed any evidence on establishing they have used the said triangular shape logo along with the name ‘Tokyo’ from 1982 and denied their claim. Their second argument was that the Plaintiff is not entitled to deprive the Defendants by using a Geographical name, which is ‘Tokyo’. Further, they argued there is no proof that the Defendants have misled any public member and invited the court to make a side-by-side comparison.

Decision

Gunawardhena J upheld Tokyo Cement’s application.

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Having examined both marks, his Honour found that the mark and the name ‘Tokyo’ even compared side by side, had very similar resemblances. His Honour accepted that the law provides, trademarks do not need to resemble or appear to a third party, similar when it is compared side by side. It is the mind’s impression of the mark that is critically important (Societe Des Produits Nestle SA v Multitech Lanka (Pvt) Ltd). His Honour accepted that if the phonetic sound misleads the public, then there is always unfair competition. Gunawardhena J accepted that the word ‘Tokyo’ is a Geographical name. However, since the word ‘Tokyo’ is used along with a triangular shape mark with two parallel horizontal lines, and registered under class 19, his Honour held that Tokyo Cement has exclusive rights for the mark. Tokyo Elevators lost the claim because they had not registered their mark, even though they claim to have been using it. Regarding the products of the parties, his Honour relied on the judgment of the High Court of Delhi, in Daimler Benz Aktiegesellschaft Vs. Hybo Hindustan and accepted that no person can use a reputed trademark for propagating their products.

The crux of these findings came back to the question of the Tokyo Elevators trademark misleading the general public. His Honour found that even though they are two different products, originating from different countries, Tokyo Elevators are recurrently and continuously unfairly competing with Tokyo Cement by using similar trademarks that are cherished intellectual property rights of Tokyo Cement. Tokyo Elevators has appealed.

OFFENSIVE TRADEMARKS

Offensive Trademarks Raise Doubts, or not? As discussed by Tatiana Pogrebinskaya, Trademark Attorney at Gorodissky & Partners, Russia - www.gorodissky.com

Offensive trademarks are As a rule, the law of foreign countries concerning the protection of trademarks contains prohibition on the registration of “scandalous” marks, which is applied along with designations that, by virtue aother grounds for refusal, both during the expert examination of a claimed designation of Sub-clause 2 of Clause 3 of for registration as a trademark and during appeals against trademarks if its registration Article 1483 of the Civil Code, is detrimental to the public interests (or public order) and (or) morality. may not be registered as It is impossible to overcome a refusal to register based on this norm. trademarks if they represent It is not always true. designations or comprise analysis of practice shows that it is possible to overcome such a refusal. However, it elements detrimental to the The is usually very difficult. There are cases where it does not work (because the applicant public interests, humanity, failed to find enough arguments to disprove the expert’s arguments), or it is impossible in general. For example, if the claimed designation is semantically negative and evokes and principles of morality. Such designations may include further designations that represent or comprise words, phrases, images, three-dimensional and any other designations or their combinations, which, both themselves and used as trademarks, contradict the legal foundations of public order and (or) may trigger indignation of the society members based on the universal moral principles. The practice of applying this legal prohibition on the registration of “scandalous” marks is characterised as one of the most challenging and controversial issues due to objective reasons as well as since each expert examining an application relies on his own “moral code”. Besides, public interest and morality are shifting over time. All this gives rise to various myths about this legal norm.

unpleasant associations.

For instance, the patent office refused to register the claimed designation for the goods “rum” (class 33 according to ICGS), since the word “CONTRABANDO” included in it is translated from Spanish into Russian as “smuggling” — illegal transportation of goods, valuables, and any other items across the national border accompanied by a violation of the customs regulations. On this basis, it was concluded that registration of such a mark is detrimental to the public interests, since any import and sale of smuggled goods, particularly alcoholic products, violates the Russian Federation’s law. However, the applicant was able to find enough arguments and provide the necessary evidence that this designation did not contradict public interests. There even was the history of the origin of this name (this rum was smuggled into Spain in a tourist’s suitcase) (Rospatent’s Decision dated 31 July 2018). As a result, the mark was registered under No. 674916.

We will focus on some of them and decipher what is true and what is not.

Patent offices of some countries avoid applying the norm prohibiting registration of “scandalous” marks. It is not true.

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Refusal to register based on this norm is not explained by the patent office’s examiner, and sometimes it is not actually clear why this legal norm was applied. Yes, it happens. As practice shows, when challenging such refusals under the administrative procedure, indicating only the relevant clause and number of the article of the Civil Code is regarded as not proved and

is not taken into account during further consideration of the dispute. However, there are cases when challenging refusals to register trademarks for other grounds, the panel of the patent office for considering such disputes may, at its discretion, apply this norm as an additional ground for refusing registration of the mark. In such a case, the applicant, already during consideration of the dispute, has to find arguments proving that the designation claimed by him in general and (or) its registration as a trademark corresponds to the public interests and (or) morality principles.

One and the same designation may be recognised as “scandalous” for some goods and services and “not scandalous” for others. Yes, it is true. For example, the registration of the designation containing the word element “Sexymoda” (translated from English as sexy fashion) is detrimental to the public interests for part of the goods and services specified in application No. 2012735078 for registration of a trademark, in particular, for: “Radioactive substances for medical purposes” (class 05 according to ICGS), “children’s pants [clothes]” (class 25 according to ICGS), “organisation of [educational] competitions; amusement parks” (class 41 according to ICGS). For other claimed goods of classes 03, 05,

10, 14, 18, and 25 and services of classes 35, 39, 41, and 44, according to ICGS, this designation is not “scandalous” and may be registered as a trademark (reg. No. 521942). (Rospatent’s Decision dated 31 July 2014).

Surnames of prominent figures may be recognised as “scandalous” marks. Yes, they may be. In some instances, when designations representing or comprising as their element surnames, names, or alias names of any prominent figures in politics, economics, science, culture, etc., both from the past and present, are claimed, their registration as a trademark may be regarded detrimental to the public interests and (or) morality.

For example, the claimed designation under application No. 2011716217 (for goods of Class 33 and services of Classes 41 and 43 according to ICGS) reproduces the surname of a famous Russian chemist D. I. Mendeleev, for which reason registration of a trademark in the applicant’s name will be detrimental to the public interests. When making the decision refusing to register this mark, the patent office considered the importance of that person and his scientific heritage for Russia. It proceeded from the fact that the outstanding Russian scientist’s name and reputation were the public domain. The grant of the exclusive right to the said designation in the applicant’s name would give him unreasonable precedence over other business entities. (Rospatent’s Decision dated 31 August 2012). Along with this, let us note that there is also practice when the designations, which do not exactly reproduce the surname of prominent figures, but which may cause someone to see the veiled use of the surnames of such figures, are classified as “scandalous”. For example, the claimed designation was described as a coined word designation “PU IN,” having no semantic meaning. A space between the two claimed syllables makes it possible to put any letter between them. However, due to the well-known character of the name of Russian President Vladimir Putin, not only in the Russian Federation but also worldwide, this designation may be perceived by the consumer precisely in conjunction with the surname Putin. In this regard, Rospatent considers that any use of the claimed designation as a means of labelling for food and beverages (goods in Classes 29, 30, 32, and 33 according to ICGS) will have a tinge of disrespect towards a well-known and acting politician, which, in fact, is detrimental to moral principles. (Rospatent’s Decision dated 8 December 2008 under application No. 2006721262)

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AFRICA IP & INNOVATION

AFRICA AWAKENS: Achieving agenda 2063 through innovation and intellectual property Writen by Sarah Norkor Anku (Mrs), Senior Partner, Anku.Anku at law - www.ankuatlaw.com

Africa can no longer be ignored; the lion awakens from its slumber! AGENDA 2063 is Africa’s blueprint and master plan for transforming Africa into the global powerhouse of the future. It is the continent’s strategic framework that aims to deliver on its goal for inclusive and sustainable development and is a concrete manifestation of the pan-African drive for unity, self-determination, freedom, progress, and collective prosperity pursued under PanAfricanism and African Renaissance.1 It is an agenda to achieve the Pan-African vision of an integrated, prosperous, and peaceful Africa, driven by its citizens, representing a dynamic force in the international arena. Agenda 2063 encapsulates not only Africa’s aspirations for the future but also identifies key Flagship Programmes, which can boost Africa’s economic growth and development and lead to the rapid transformation of the continent.2 The flagship programmes include the establishment of the African Continental Free Trade Area (AfCFTA) to accelerate intra-African trade and boost Africa’s trading position in the global market place and to use trade more effectively as an engine of growth and sustainable development by doubling intra-Africa trade, strengthening Africa’s common voice and policy space in global trade negotiations.3 The African Continental Free Trade Agreement, which establishes AfCFTA, aims to liberalise the market for goods and services and facilitate the movement of capital and natural persons with a view to creating a single market in accordance with the Pan-African vision. The second phase negotiations of the Agreement will provide safeguard measures to the Agreement, including negotiating Investment, Competition, and Intellectual Property Protocols.

It is expected that the Intellectual Property Protocol will cover the trade aspects of Intellectual Property rights that contribute to regional trade and value integration. Until the Intellectual Property Protocol is negotiated and developed into a legally binding Regional instrument, the various member states will adhere to the existing laws governing intellectual property within their territories. Estimates from the United Nations Economic Commission for Africa indicate that the AfCFTA holds the potential of boosting intraAfrican trade by 52.3%. Covering a population of over 1.2 billion, with a combined GDP of over USD$3.4 trillion, the AfCFTA has created one of the world’s largest free trade areas. It is further estimated that by 2050 Africa’s population will double, rising from the 1.2 billion to 2.4 billion, with over 60 percent (60%) of people under the age of 25, and such a large young population presents significant opportunities and challenges.4 Currently, Africa has the youngest population globally, with more than 400 million young people aged between the ages of 15 to 35 years.5 Consequently, the AU has developed several youth development policies and programmes at continental level to ensure the continent benefits from its demographic dividend. The policies include the African Youth Charter, Youth Decade Plan of Action, and the Malabo Decision on Youth Empowerment, all of which are implemented through various AU Agenda 2063 programmes.6 The Youth Decade Plan of Action focuses on five key priority areas, including Youth Employment & Entrepreneurship and Education & Skills Development.7 There is much emphasis on youth entrepreneurship, innovation, and employment.

Some governments, including Ghana, have encouraged innovation and creativity among the youth in particular. With support from some development partners, some are creating a much needed infrastructure and facilities to promote innovation and facilitate the scaling – up of start-ups. A typical example is the Ghana Tech Lab facilities, a technology hub for digital innovations that seek to inspire innovation, creativity, and ideation. The tech hub has so far trained 1212 innovators across Ghana with 11 start-ups in incubation. Its Africa AI Accelerator program has been designed to promote local innovations in the field of artificial intelligence, machine learning, and data usage.8 The program is structured to support entrepreneurs with innovative high growth AI solutions that are commercially viable, socially driven, and creatively designed and can also be refined and scaled through an acceleration program. The first cohort of the program consist of 10 AI start-ups from Ghana, South Africa, Uganda, and Rwanda. In recent times Africa’s innovative achievements have received much public attention.

The media giant CNN reported some of the remarkable innovations that could change the world.9 The examples reported include the following:

TheIntellectual United Republic Tanzania has beenTechnology one of theand beneficiaries the project. World Property of Organisation (WIPO) Innovation of Support Center In additio (TISC) to provide innovators with accessoftoScience locally based, high-qualityTanzania technology the program government, through the Commission and Technology (COSTEC information and related services, helping them to exploit their innovative potential and to create, protect and manage their in cooperation withintellectual WIPO, property togetherrights. with10Japan Patent Organization (JPO) and Busine

• “3D printing is gaining traction in Africa. In 2013, the WoeLabs tech hub in Togo made the first “Made in Africa” 3D printer from e-waste. They want to use the 3D printer to revolutionise Africa. They’re starting by putting a machine in every school within 1km of the workshop. Buni Hub is another tech center, based in Tanzania that is building a 3D printer.

andofLicensing department to de The Registration United Republic Tanzania Agency has been Tanzania one of the(BRELLA), beneficiaries have of thedeveloped project. In aaddition, the government, through the Commission of Science and Technology Tanzania (COSTECH) in with intellectual property rights for local innovators and scientists called the Technology a cooperation with WIPO, together with Japan Patent Organization (JPO) and Business Registration 11 developed a department to deal with intellectual and Innovation Licensing Agency Tanzania (BRELLA), Support Centre (TISC).have Tanzania has also engaged in other support measur property rights for local innovators and scientists called the Technology and Innovation Support 11 which include funding and measures, start-ups.which The result such governme Centre (TISC). Tanzania hasresearchers, also engaged innovators, in other support includeoffunding researchers, innovators, and start-ups. The result of such government support is the improved support is the in improved of Tanzania thea Global Innovation Index 2020, with ranking of Tanzania the Globalranking Innovation Index 2020,inwith remarkable innovation output, ranking second in Sub-Sahara Africa, as shown in the selected comparative table and graph below.

• Pneumonia is a deadly condition. It’s responsible for 16% of all deaths of children under five. A main contributing factor to this is slow diagnosis. Ugandan inventor Brian Turyabagye has created a biomedical smart jacket that can diagnose the condition four times faster than a doctor. It’s also more accurate. It analyzes the chest and then sends the information via Bluetooth to a smartphone app.

comparative table and graph below. TABLE 1: INNOVATION INPUT AND OUTPUT INNOVATION INPUT COUNTRY

INNOVATION OUTPUT

REGION AL SCOR SCORE GLOBAL RANKIN E (0- GLOBAL REGIONAL (0-100) RANKING G 100) RANKING RANKING

• African countries are developing groundbreaking technology for space exploration. Look no further than the Square Kilometer Array (SKA) in South Africa, which, once

Mauritius

45.77

22.94

South Africa

44.85

20.48

Kenya

35.03

17.22

• completed, is set to be the world’s largest telescope. It will allow scientists to look many times deeper into space.

Botswana

38.09

12.77

105

Rwanda

38.59

11.52

112

• Nigerian inventor, Osh Agabi, has created a device that fuses live neurons from mice stem cells into a silicon chip -for the first time. The device can be used to detect explosives and cancer cells.

United Republic of Tanzania

30.41

112

20.73

Ghana

30.2

113

14.35

• Cameroonian entrepreneur, Arthur Zang, has invented a touch-screen heart monitoring device that records and then sends heart activity to a national healthcare center for evaluation. It could have hugely positive potential for rural populations far from hospitals. • The South Africa based drone software company aims to help farmers optimise their output using artificial intelligence. They have created a data-analytics platform, ‘Aeroview’, which combines satellite, drone, and artificial intelligence technology to improve agricultural practices. • Where the rest of the world has lagged behind, Africa has led the way with mobile payments. M-Pesa is the most popular service and has 30 million users in 10 countries. Since it was first introduced ten years ago, M-Pesa has inspired a range of similar services worldwide and has helped reduce barriers to finance…” It is interesting to note that these creative activities have been carried out with minimum access to technological information, which means that Africa can achieve more when technological information is made available and easily accessible. There is a conscious effort by some member states, with support from the

remarkable innovation output, ranking second in Sub-Sahara Africa, as shown in the select

50 4511 Science Technology and Innovation Building alternative future scenarios in STI,

40https://www.academia.edu/20139281/Science_Technology_and_Innovation_Building_alternative_future_s 35narios_in_STI 30 25 20 15 10 5 0

Mauritius

South Africa

Kenya

Botswana

INPUT SCORE

Rwanda

UR of Tanzania

Ghana

OUTPUT SCORE

FIG 1: INNOVATION INPUT AND OUTPUT FIG 1: INNOVATION INPUT AND OUTPUT

Innovation thrives in an environment where it is encouraged. The Business an

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Advisory Committee to the OECD notes that the ultimate cause of all innovatio

Innovation thrives in an environment where it is encouraged. The Business and Industry Advisory Committee to the OECD notes that the ultimate cause of all innovation is human creativity. However, innovation does not occur in a vacuum; it requires a workable structure of incentives and institutions. Therefore, government policies that foster the right enabling conditions for innovation, and that allow entrepreneurship and markets to flourish, can provide a climate that encourages innovation and economic growth in the 21st Century.’ Increasingly, one of innovation’s core enabling conditions is intellectual property protection.12 The AfCFTA has created the requisite environment for entrepreneurship and markets to flourish and to encourage innovation. Its Intellectual Property Protocol, when developed, is expected to provide policy guidelines to safeguard trade within the Free Trade Area. The provisions should address issues of counterfeit and piracy and to provide measures for speedy and effective access to the legal remedies, to facilitate the enforcement of Intellectual Property Rights. In 2015, the Director-General of WIPO, Francis Gurry, aptly conveyed this Africa’s awakening, and I conclude with his words: “I believe that Africa is on the cusp of something new and exciting. Today, the continent is

home to some of the world’s fastest-growing economies, and African nations are embracing the opportunities afforded by the knowledge economy and the digital revolution to reduce poverty, enhance agricultural productivity, and boost industrial competitiveness in their drive to secure sustainable and inclusive development. Africa has a great tradition of innovation and creativity and has extraordinary creative resources but has often struggled to realise their full economic potential. That is changing. Increasingly, African economies are seeking to add value to their innovative and creative resources through the IP system.

The African Union Commission, Agenda 2063: The Africa We Want, 2020 https://au.int/en/agenda2063/overview

ibid

The African Union Commission, Flagship Projects of Agenda 2063, https:// au.int/en/agenda2063/flagship-projects

Sibanda M & Ogada, Boosting business competitiveness in Africa with IP and innovation, October 2019, WIPO Magazine, https://www.wipo.int/ wipo_magazine/en/2019/05/article_0002.html.

The African Union Commission, Youth Development, https://au.int/ en/youth-development#:~:text=The%20Youth%20Decade%20Plan%20 of,Governance%2C%20Peace%20and%20Security

ibid

https://vc4a.com/make-it/africa-ai-accelerator-program/

CNN World Africa Tech Rising, African innovations that could change the world, https://edition.cnn.com/2017/11/16/africa/gallery/africainnovations-that-could-change-the-world/index.html

See https://www.wipo.int/tisc/en/

Science Technology and Innovation Building alternative future scenarios in STI, https://www.academia.edu/20139281/Science_Technology_and_ Innovation_Building_alternative_future_scenarios_in_STI

WIPO/OMPI Page 11 of 55 Version 1.5

Although African economies still face many competing and compelling policy priorities, innovation and IP are slowly but surely rising up the African policy agenda.”13

Indeed, the lion awakens from its slumber!

Francis Gurry, Intellectual property for an emerging Africa, WIPO October 2015 https://www.wipo.int/wipo_magazine/en/2015/si/ article_0001.html

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DESIGN DISPUTE

Jurisdiction Matters:

High Court or Commercial Court? discussed by Manisha Singh, Partner & Simran Bhullar, Associate at LexOrbis, India - www.lexorbis.com Recently, the Madhya Pradesh High Court resolved an issue regarding the power of the High Court to entertain a commercial dispute arising from a design infringement suit instead of the Commercial Court set up by the State government at the district level. The Court interpreted the language of the Designs Act, 2000, and the Commercial Court Act, 2015.

Facts of the case

The Plaintiff, Mold-Tek Packaging Ltd, is a manufacturer and seller of plastic packaging material. They have been in the industry since 1985 for developing a variety of tamper-proof lids of plastic containers. They also submitted design registration applications in 2015 and 2017 for the containers’ lids, lids with the spout, jar, or container with the Controller General of Patents, Designs, and Trademarks (CGPTDM), Kolkata. In late 2019, the Plaintiff came to know about the Defendant, S.D. Containers, which was producing lids and containers of the same design as that of the Plaintiff. It was also found that they were supplying those products to some of the existing customers of the Plaintiff.

products are commonly found in the market, even before the design registration applications were made. Hence, design registrations should be refused. The Defendants interpreted Section 19 and 22 of the Indian Designs Act, 2000, for their counterclaim. Based on these provisions, they sought the transfer of the case to the Madhya Pradesh High Court. The Commercial Court, through an order dated 23.03.2020, transferred the matter to the High Court of Calcutta. The Plaintiff filed a petition in the Madhya Pradesh High Court against the said order. The Plaintiff contended that the order of the Commercial Court is untenable since a matter can be transferred to the High Court only when an appeal against an order passed by the

CGPTDM is pending before the High Court. They also stated that the original issue of piracy of design arose within Indore’s territorial jurisdiction and cannot be transferred to the High Court of Calcutta. They further argued that the Commercial Court ought to have decided the application for a temporary injunction before deciding the Defendant’s application for the transfer of the case. The Defendant maintained their original stance and denied claim of design piracy and further submitted that the Commercial Court must transfer the suit to the High Court; however, the Court should be the Madhya Pradesh High Court instead of the Calcutta High Court.

The Plaintiff then filed a civil suit in a Commercial Court (District Court at Indore) seeking a declaration that the Defendant has no right to manufacture similar lids and containers that look like the Plaintiff ’s designs and also a permanent injunction restraining the Defendant from copying, using the designs of the Plaintiff as stated in Design Application Nos. 299039 and 299041 for the containers and lids, respectively. They further claimed an amount of INR 50 million as damages caused by the design infringement. They also requested a temporary injunction against the Defendant during the pendency of the case. In their reply, the Defendant challenged the status of the design registration. They stated that the Plaintiff ’s designs lack originality, and similar designs for the same

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Findings of the Court

The Madhya Pradesh High Court considered the following issuesWhether the Commercial Court has correctly interpreted the provisions of the Designs Act, 2000, while transferring the suit to the High Court? Whether the suit should be transferred to the High Court of Calcutta, or is the Commercial Court at Indore competent to decide the suit? Since the Plaintiff and the Defendant unanimously agreed that the High Court of Calcutta does not have territorial jurisdiction, the Madhya Pradesh High Court went on to decide a more pressing matter - whether a civil suit should be transferred to a High Court at all? The Court first examined the provisions of the Designs Act and went on to explain the basic provisions of the Act. Of which, Section 19 provides the grounds for cancellation of the registration of a design. The provision refers to a remedy of appeal against the order of CGPDTM to the High Court. It also gives power to the CGPDTM to refer any petition to the High Court itself. Section 22 of the Act deals with piracy of a registered design. It provides that if a design already exists at the time of application for registration, it shall not be registered except without a license or written consent from the original creator of the design. It also states that a defendant may take ground for its defense as available under Section 19 of the Act. Further, if the Defendant raises a ground as a defense

available under Section 19, the proceeding shall be transferred by the Court in which the suit is pending to the High Court for its decision. The Court interpreted this provision mandatory due to the use of the word “shall”. It is important to note here that the Defendant challenged the design of the Plaintiff by way of counterclaim. However, no petition under Section 19 was filed before the CGPDTM to cancel the design registration. Next, the Court examined the provisions of the Commercial Court Act, 2015, that talks about the type of cases a Commercial Court may entertain, which includes intellectual property matters; how the State Governments shall constitute such courts and appoint Judges after consultation with the concerned High Court; how there shall be Commercial Divisions and Commercial Appellate Divisions in High Courts; and the territorial, pecuniary, and subject-matter jurisdiction of Commercial Courts vis-à-vis the Commercial Divisions of High Courts.

the High Court having the ‘ordinary original civil jurisdiction’ and the High Courts which do not enjoy the said jurisdictional powers cannot entertain such suits. This is why the constitution of special Commercial Courts has been made to resolve such disputes. Even though the Designs Act uses the term ‘High Court’ in its bare text reading, after the enactment of the Commercial Courts Act, such a suit is liable to be transferred to the Commercial Court and not to the High Court in a State where the High Court has no ordinary original civil jurisdiction. Moreover, the High Court will be entitled to hear the case only in case of an appeal against the decision of the CGPDTM. The Court reaffirmed that an application for cancellation of registration of design could only be entertained by the CGPDTM exclusively.

The Act also states that matters relating to the Designs Act, 2000, shall be transferred to the Commercial Division of the High Court exercising ordinary original civil jurisdiction. However, the Court stated that the Madhya Pradesh High Court does not have an original civil jurisdiction unlike the High Courts of Calcutta, Madras, Mumbai, and Delhi, which is why the state government has established Commercial Courts at District level and Commercial Appellate Courts at District Judge level in the state.

To conclude, it was held that the Commercial Court at Indore had erred in transferring the case to the High Court of Calcutta since it was competent to decide the matter itself.

The Court decided that the Commercial Courts Act overrides other provisions contained in other laws. Since the lawmakers specifically included a provision of transfer of commercial disputes to

The challenged order was quashed.

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PATENT

LANDSCAPE

Best methods for an effective

patent landscape analysis in just six simple steps! All of the greatest, most renowned inventions start with an idea. Patents are often the only source of disclosure of an invention, as most are never published elsewhere. Hence, companies around the world are protective of the value held in their intellectual property and realise the importance of monitoring the intellectual property of their competitors. As the rate at which new inventions are being patented is ever-increasing, the continuous monitoring of new patents is vital to ensure corporate success and financial stability when attempting to access new markets, exploit existing ones, and scoping the profitability of emerging products. Patent search and analysis platforms, such as PatBase, are essential for users to search, review, analyse and share patent information, to harness the knowledge found in patents, gain competitive intelligence and build on the ideas of others to drive innovation forward.

Authored by Caitlin Kavanagh, Marketing Manager at Minesoft, UK www.minesoft.com Patent landscape reports are intended to give a snapshot or overview of the patents in a specific subject area or cover a technology type. Generally taking 1-2 weeks to complete, a landscape report can cover hundreds or thousands of patent families. They can be used to visualise and discover existing whitespace in relevant areas, gain actionable competitive intelligence by understanding the current landscape, predict where your market is heading, and spot trends in areas of interest to aid investment. In this article, we have outlined six simple steps to help ensure an effective and comprehensive patent landscape analysis.

Step 1 – Define goals It’s important to understand what you’re trying to achieve through your patent landscape analysis and clearly define these goals in advance. Depending on what the end goal is, you may want to address some or all of these key questions (or come up with your own!) while conducting your search.

• Is this a growing area of interest? • What are the fields of current interest? • Who are the key players? • Where are the key players filing their inventions? • Who are the “key opinion leaders” in this field? • What is the legal status of the families in this area?

This article focusses on patent landscape analysis, a process that helps inform policy discussions, strategic research planning, and technology transfer within a business.

What is a Patent Landscape Analysis? Publicly available patent data is an excellent source of ideas and information that can be used to identify opportunities and threats to a business and improve its survivability and profitability in the modern marketplace. This information is of vital importance to competitive intelligence, which makes use of public information to accrue data on competitors and the market environment to drive strategic decision making. Businesses that ignore patents as a potential source of information risk building an incomplete competitive intelligence picture and delaying or even preventing innovation.

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Step 2 – Broad overview Once the scope of the study has been agreed upon, start reviewing the main articles and literature on the topic. Studying a selection of basic literature will unearth some high-level keywords, as well as identifying key players that are associated with the technology or subject area you’re landscaping. Having a clear understanding of the area you’re investigating is critical when analysing the final landscape and answering the key questions outlined above. Using a commercial patent database, like PatBase, allows you to broaden your research by investigating non-patent literature from trusted scientific resources.

Step 3 – Define your initial search strategy After your preparation phase, you’ll need some time to devise a comprehensive search strategy. Begin by generating general keywords used for the specific technology and build on that. A successful search strategy should encompass keywords, classification codes, assignees, and inventors. Searching your basic keywords within the title, abstract, and claims of patents will help you discover additional relevant keywords and active assignees and inventors. Furthermore, a statistical analysis of the IPC and CPC codes used to classify the initial answer set will identify relevant classification codes to add to your search strategy. Tools like the PatBase Thesaurus and Classification Explorer make it easier to compile a comprehensive keyword search strategy with relevant synonyms from multiple languages and to identify classification codes to broaden this strategy and find patents that may be missed by a keyword search alone. Results can now be narrowed down as needed, by limiting the geographical area, removing utility models and design patents, removing irrelevant patent families identified by acronyms used in multiple technology areas, and limiting by publication years. Focussing a search strategy can be difficult and needs to be checked at every step to ensure relevant records are

• Use advanced features in your patent database, such as analytics, advanced keyword highlighting, and cross-lingual semantic searching to enhance the efficiency and effectiveness of the review of patents within your landscape. • As many highly technical patents can be 100s of pages long, a tool like TextMine is helpful to interrogate the patent text for relevant key terms.

Step 6 – Visualise and review Visualise your landscape search by generating statistical graphs. By viewing the data from many angles (jurisdiction, year, assignee, inventor, etc.) and at multiple levels (families, priorities, applications, grants, etc.), you can reveal answers to the key questions outlined at the beginning of this article and easily draw some conclusions; ensuring you stay focused on your end goal.

not eliminated. At this juncture, you should have compiled a solid search strategy and be ready to run your initial search.

Step 4 – Run an initial search Once your results come back, take a quick review. Determine the percentage of your result set containing relevant documents and judge whether it’s enough for a reliable patent landscape analysis. Typically, if it’s 80% or more, your search strategy is sound. A quick way of determining this is to use the Optimise function in PatBase and PatBase Express and expanding the technologies categories (either IPC or CPC). This list shows the top classification codes attached to the patent families found in the search. The list is ordered by most frequently occurring technology codes across the entire result set. Make sure the most frequently appearing classification codes are all relevant or identify new classification codes to include and exclude the irrelevant ones. It’s also important that the most important patents in the specified area are included in your results. You can check this by sorting your answer set by “most cited” to reveal the most cited publications in the area you’re landscaping and, therefore, the most significant. Assuming your initial set meets your criteria, you can move on to Step 5.

Step 5 – Analyse and optimise your search strategy Improving your initial search requires identifying additional relevant keywords, classification codes, active assignees, and inventors. Discover more keywords by reviewing classification code definitions and checking the title and abstract of key patents. Depending on your subject matter, you could expand your search further using a tool like Chemical Explorer, to specifically search for any chemical terminology or structures across potentially millions of pages of patent documents with just one click.

Top tips: • For CPC and IPC classifications, use the codes from the basic keyword answer set to focus your landscape. • Identify the most frequently occurring assignees and inventors, ensure that areas in which they are working are relevant by investigating their patent portfolio and website, and then be sure to include their patent portfolio in your final landscape.

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Conclusion Regular patent landscaping is crucial for survival in any innovation-driven industry to identify white space, monitor competitor activity, and identify acquisition, licencing, or collaboration opportunities. The world of patent information continues to grow, and patent search techniques are evolving and becoming more complex. As a result, a comprehensive patent landscape analysis can be both time-consuming and complicated – but Minesoft can help. Having access to a comprehensive database of global patent data, like PatBase, is a key first step but ensuring a focussed and inclusive search strategy is vital. The 6 simple steps outlined in this article can help any user identify a complete patent landscape and draw the appropriate conclusions. Minesoft offer several free whitepapers on patent landscaping; access them at www.minesoft.com. PatBase, the online patent database, allows you to optimise the way you search and review patent literature. Trusted by top corporations and law firms worldwide, our users rely on PatBase as a robust and powerful platform from which to search, review, share, and analyse business-critical patent information.

J. Varbanov & Partners

European and Bulgarian Patent & Trademark Attorneys

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OPIOID

ADDICTION

Opioid Addiction

– A Patent Perspective

Introduction

Authored by Alec Griffiths, IP Manager at Patent Seekers, UK www.patentseekers.com

Opioids are a broad class of drugs that interact with opioid receptors in your cells, creating sensations of pain relief and pleasure. Opioids can carry the risk of changing the brain’s chemistry, leading to tolerance, such that a larger dosage is required to produce the same effect. Opioid addiction can be characterised by an almost uncontrollable urge to use opioid drugs. It can lead to life-endangering health problems, such as overdosing, which in turn may cause breathing to slow or stop, and ultimately, death. The opioid addiction crisis is one of the foremost global health concerns of recent years and is largely believed to be a direct result of the overstatement of the benefits of opioids coupled with underplaying the risks by large pharmaceutical companies and advocates. North America, in particular, is at the forefront of the effort to curb this crisis, due to the United States and Canada having the highest opioid use rate globally. The U.S. Department of Health and Human Services declared a public health emergency in 2017 due to the 42,000 deaths attributed to opioid overdose in 2016 (more than any year prior). An estimated 40% of these deaths were related to prescription opioids and 2000 Canadian deaths in 2015, with a fivefold increase in prescription opioid overdose deaths in Ontario between 1991 and 2014. Australia has seen massive leaps in opioid prescription rates over a short period of time, from approximately 3 million people in 2014 to approximately 14 million by 2019. Tramadol addiction has exploded in Africa in recent years, adding more stress to an already overstrained health system. Reports also indicate that similar events may be unfolding in Asia. Many health professionals believe that Europe may be next in line with evidence of an increase in the prescription of strong opioids through the continent. Global health initiatives and awareness campaigns have risen in recent years in an attempt to combat this health emergency, which was responsible for 76% of deaths from drug use disorders in 2015. This article takes a look at the patents behind the fight to contain this global concern, in an effort to see what we may learn from them.

Patent filing analysis Filings for opioid addiction treatment patents appeared to undergo a rapid rise between 1999 and 2005, with an almost equally dramatic drop in filings from thereon until 2013, where filings appear to have stabilised. In 2005 the World Health Organisation made the addition of buprenorphine as complementary medicine to the Model List of Essential Medicines, thereby lending credibility to buprenorphine as a treatment and its role as an opioid agonist [2]. This global legitimising of the drug may have led to 2005 becoming the peak year for patent filings. At first glance, it would appear to be counter-productive to decrease the rates of innovation, given the governmental outcry and efforts in recent years, yet, patent filings have taken a sharp decline since 2005, and even more so in the last three years. This decline could be linked to numerous efforts to combat the crisis, including; • A decrease in opioid prescription, wherein the U.S. opioid prescriptions have dropped by almost 40% between 2014 and 2019[3 • An increase in other treatment methods such as mental health approaches [4] • Placing greater emphasis on prevention techniques and efforts [5]. 2017 saw the U.S. Department of Health and Human Services declare a public health emergency; this appears to have done little to spur innovation, or the innovation it may have spurred has yet to be publicly seen. The figures for 2019 are likely to be greater than represented due to patent applications that would claim that year as a priority but have yet to be published. It is difficult to predict whether the downward trend in patent filings will continue in the coming years, given how much publicity and emphasis has been placed on counteracting this crisis in recent years, a resurgence may be expected. However, the number of filings in 2018 looks far from promising.

Figure 1. Worldwide opioid addiction treatment-related patent filings between 1999-2019.

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Classification analysis Figure 2 shows the number of publications placed in the top 20 International Patent Classifications over time. This provides a unique insight into the fight against the opioid crisis, with classifications showcasing both drugs/medication for treating opioid addiction as well as for combating the side-effects of an opioid overdose. The patent classifications showing the heaviest volume of activity are A61P25/36 (Drugs for opioid abuse) and A61P25/00 (Drugs for disorders of the nervous system), which comes as no surprise**. Other classifications exhibiting relatively higher activity include A61P25/18 (Antipsychotics), A61P25/22 (Anxiolytics), A61P25/24 (Antidepressants), A61P25/28 (treating neurodegenerative disorders of the central nervous system), and A61P25/32 (alcohol abuse), which all fall under the parent classification of A61P25, noted as the second most active classification. The increased activity in these classifications could indicate a desire to treat other conditions often associated with opioid addiction and abuse in an effort to increase the success of opioid addiction/ abuse treatments. For the most part, activity appears to have occurred in each classification in most years, with the exceptions of A61K31/44 (Medical preparations with non-condensed pyridines), A61P25/06 (Antimigraine), A61P25/20 (Hypnotics; Sedatives), and A61P9/10 (for treating ischaemic or atherosclerotic diseases) which all appear to either have large gaps between activity or have not seen any activity at all for a number of years.

Figure 2: The number of publications placed in the top 20 IPCs (International Patent Classifications) over time. ** The patent classification A61P25/36 was used in the creation of the initial dataset; as such, it is expected to be the patent classification present with the highest level of activity. However, when removed from the dataset, it still retains this position.

Technology Landscape Analysis Figure 3 illustrates a set of documents clustered according to their semantic proximity, where a point corresponds to a patent family. The map provides a visualisation of the technology clusters prevalent within the opioid abuse treatment portfolio and reveals a diverse set of interests. A range of different treatment approaches are covered, from antagonising molecules to tamper resistant dosage forms. Morphine addiction (dark grey dots) appears to show the greatest concentration of patents. However, the difference appears to be largely negligible, with all concentrations appearing to be of almost equal size. Most clusters appear to relate to opioids in general; however, morphine seems to be the most common of opioids that appears within the clusters (light blue dots & dark grey dots). Some clusters may indicate the prevalence of health efforts centred around combination treatments, where other conditions are treated simultaneously with opioid addiction in an effort to increase their effectiveness (purple dots, dark pink dots). Interestingly there appears to be some innovation surrounding the continued exploitation of the rewarding properties of opioids. Furthermore, reducing their side effects (light pink dots) potentially show a desire for the continued use of opioids and their powerful painkilling properties and an understanding of their equally powerful addictive properties and a desperate need to address these if these drugs are to continue being prescribed.

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Figure 3. Opioid addiction/abuse-related patent family map

Conclusion In analysing the patent landscape surrounding the fight against the opioid crisis, it has revealed that the most significant innovation levels in the industry took place over a decade ago, uncoincidentally peaking in the same year that the WHO added buprenorphine as complementary medicine to the Model List of Essential Medicines. Since then, however, patent filings have significantly decreased. It will undoubtedly be a slow and challenging process to reverse this crisis, and although numerous countries are now trying to combat the growing incidents of opioid addiction/abuse, there seems to be little in the way of innovation. Perhaps this means that the current technology and medicaments are deemed enough, that patents were not the solution to the problem, or maybe new approaches that place emphasis on addiction/abuse prevention and mental health initiatives could be more effective approaches. Only time will tell if the world is doing enough to stem the tide, and the next few years will be paramount in determining whether greater innovation in this area is needed. Be sure to take a look at next quarters’ issue to see Part 2, where we take a look at global distribution, the major players in the field, and the controversy that surrounds them!

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IPR

INFRINGEMENT

The Supreme People’s Court of China issued opinions on

strengthening the punishment

of IPR infringement On September 14, 2020, the China Supreme People’s Court issued the Opinions on Strengthening the Punishment of IPRs Infringements (hereinafter referred to as the Opinions), stipulating and improving judicial remedies for IPR infringements to effectively deter IPR infringements and create a sound business environment under the rule of law. The promulgation of the Opinions is an important measure for the People’s Courts to thoroughly implement the Opinions on Strengthening the Protection of Intellectual Property Rights issued by the General Office of the CPC Central Committee and the State Office of China. Based on the trial practice of intellectual property rights, the Opinions focus on the key and difficult issues in trial practice and provide measures such as behaviour preservation, evidence preservation, obstruction of proof, cessation of infringement, punitive damage, statutory compensation, and heavier criminal punishment, so as to effectively enhance the actual effect of judicial protection.

Written by Ray Zhao, Senior Partner at Unitalen Attorneys at Law, China - www.unitalen.com With respect to the product or other evidence that has taken preservation measures, or the accused infringer has damaged or transferred the facts of the infringement without authorisation so that the facts of the infringement cannot be ascertained, the People’s Court may presume that the right owner’s claim on the evidential matters involved in the evidence is established. Except under special circumstances, at the right holder’s request, counterfeit or pirated goods and materials and tools mainly used for the production or manufacture of counterfeit or pirated goods shall be destroyed. If the right owner requests in the procedure of the second instance to include the additional reasonable expenses paid for stopping the infringing act into the amount of compensation, the people’s court may examine them together. In the case of counterfeiting registered trademarks of commodities such as emergency rescue, disaster relief, and epidemic

In strict accordance with relevant laws and regulations, the Opinions require courts at all levels to pay attention to the coordination and connection between different laws and regulations, and comprehensively strengthen the punishment of IPR infringement ACTS. It includes the application of the obstruction of the proof system in the factfinding of the tort involved in the product accused of infringement, from the high legal compensation and the situation of the heavier criminal punishment according to law. According to the Opinions, if the holder of an intellectual property right applies for both a prior judgment to stop the infringement and an application for act preservation in an intellectual property infringement lawsuit, the People’s Court shall examine the case in a timely manner.

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prevention materials during a specified period, or violating intellectual property rights again after being subjected to administrative punishment for infringing intellectual property rights, the offender shall be given a heavier punishment according to law, and suspension of sentence is generally not applicable. The Opinion has centralised regulations so that the right holder may make full use of the relief measures in the people’s court to guide the positive, comprehensive, accurate, and honest proof at the same time. According to law, the aspects of the profit and legal fees for infringement provide proof guidance and help the holder of the highly effective rights and effectively inhibit infringing intellectual property rights behaviour.

I. Strengthening the application of preservation measures

1. In case of infringement or imminent infringement of intellectual property rights involving core technologies, well-known brands, popular programs, or infringement of intellectual property rights in exhibitions that will cause irreparable damage, the people’s court shall, in accordance with the law, timely examine and make a ruling. 2. If the holder of an intellectual property right applies for both the prior judgment for the cessation of the infringement and the act preservation in the intellectual property right infringement lawsuit, the people’s court shall examine the application in time in accordance with the law.

to minimise the risk of further infringement. If the infringer requests compensation, the people’s court shall not support it.

III. Increase compensation in accordance with the law 7. The people’s court shall make full use of such systems and methods as proof obstruction, investigation and evidence collection, evidence preservation, professional assessment, and economic analysis to guide the parties to provide evidence actively, comprehensively, correctly, and honestly, improve the scientific and rational calculation of damages amount, and fully make up for the loss of the right holder.

3. If the right owner has preliminary evidence proving the existence of ACTS of infringement of intellectual property rights and the evidence is likely to be destroyed or lost or difficult to obtain later, and the people’s court applies for the preservation of evidence, the people’s court shall examine the evidence and make a ruling in a timely manner according to law.

II. Make a judgment to stop the infringement according to law 5. If the infringement facts are clear, and the infringement can be ascertained to be established, the people’s court may make a judgment to stop the infringement in advance according to law. 6. With regard to counterfeit or pirated goods and materials and tools mainly used for the production or manufacture of counterfeit or pirated goods, the people’s court shall support the right holder who, in civil proceedings, proves the existence of the said goods and requests speedy destruction, except in special circumstances. Under special circumstances, the people’s court may order that materials and tools, which are mainly used for the production or manufacture of counterfeit or pirated goods, be disposed of outside commercial channels,

The people’s court should consider when determining legal compensation from high factors, including the infringer to deliberate whether there is infringement, whether the infringement is for the main business, whether there is any repeat infringement tort, whether the duration is long, whether the area is vast, whether it may endanger personal safety or damage to the environment resources or harm the public interests, etc. 12. If the right owner requests in the procedure of the second instance to include in the amount of compensation the additional reasonable expenses paid for stopping the infringing act, the people’s court may examine the matter together. 13. The people’s court shall, taking into account such factors as the complexity of the case, the specialty and intensity of the work, trade practices, and the guided price of the local government, reasonably determine the lawyer’s fee for the compensation claimed by the right owner according to the evidence provided by the right owner.

The technical investigation officer may participate in the preservation of evidence involving strong professional technical issues. 4. With respect to the product or other evidence that has taken preservation measures, or the accused infringer has damaged or transferred the facts of the infringement without authorisation so that the facts of the infringement cannot be ascertained, the people’s court may presume that the right owner’s claim on the evidential matters involved in the evidence is established. In cases of obstruction of proceedings as prescribed by law, compulsory measures shall be taken according to law.

11. The people’s court shall reasonably determine the amount of compensation prescribed by law. Where the infringing act causes heavy losses to the right owner or considerable profits to the infringer, in order to fully compensate the right owner’s losses and effectively deter the infringing act, the people’s court may, at the request of the right owner, determine the amount of legal compensation close to or up to the maximum limit.

8. The people’s court shall make active use of the relevant data provided by the party concerned from the industrial and commercial tax authorities, third-party commercial platforms, websites of the infringer, publicity materials, or documents disclosed in accordance with the law, as well as the average profit rate of the industry, etc. to determine the profits from the infringement in accordance with the law. 9. If the right owner requests, according to law, to determine the amount of compensation based on the infringement profit and has provided evidence, the people’s court may order the infringer to provide evidence of the infringement profit in his possession; If the infringer refuses to provide the compensation without justified reasons or fails to do so as required, the people’s court may determine the amount of compensation based on the right owner’s claim and the evidence on the record. 10. For those who intentionally infringe intellectual property rights of others, if the circumstances are serious, the right owner’s claim for punitive damages shall be supported in accordance with the law, and the deterrent effect of punitive damages on intentional infringement shall be fully exerted.

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IV. Intensify criminal crackdown 14. The number of illegal business operations and illegal income committed to the crime of infringing intellectual property rights through online sales shall be determined with comprehensive consideration given to electronic data of online sales, records of bank account transactions, delivery notes, records of computer systems of logistics companies, the testimony of witnesses, statements of defendants and other evidence. 15. In the case of counterfeiting registered trademarks of commodities such as emergency rescue, disaster relief, and epidemic prevention materials during a specified period of time, or violating intellectual property rights again after receiving administrative punishment for infringing intellectual property rights, the offender shall be given a heavier punishment according to law, and suspension of sentence is generally not applicable. 16. The illegal gains shall be strictly recovered in accordance with the law, the application of fines shall be strengthened, and the ability and conditions for criminals to infringe intellectual property rights again shall be deprived.

CMY

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ONLINE

STREAMING

ONLINE STREAMING SERVICES IN NIGERIA: The Gold, the Legal Considerations Authored by Ifeanyi E. Okonkwo, Associate at Stillwaters Law Firm, Nigeria - www.stillwaterslaw.com

1. Introduction – The gold

Entertainment and Media (E&M), according to PwC analysis, is a disruptive and fast-growing concern.i The fusion of these two channels provides an effective engagement for consumers who have been reported by Google to spend not less than 16 hours of their time onlineii, searching for entertainmentrelated content iii. The right ‘Content’ is fundamental to persons or companies looking at delving into the goldmine of online streaming services. A person/company looking at establishing an online streaming service must first ask –

What area of content do I want to focus on? Is such an area viable to consumers? Is it a service for world-consumers or service for a particular country? Is it a self-made content or one affected by copyright? What regulations do I need to abide by? What are the various copyright laws in the jurisdictions of interest? Netflix understood these questions early enough and carved a niche for itself to reach consumers from various parts of the world. They have a content sourcing department where new content is always added. Sadly, the journey to this goldmine is not without legal bottlenecks. 2. The Legal Consideration Online streaming involves the broadcasting of content online. The same can then be viewed or streamed through various channels like online TV, PCs, Android, Apple phones, etc. Content like films/motion pictures are cinematography and are subject to copyright. In Nigeria, specific legal considerations are imminent before exploring the business of online streaming.

a. Consent

Section 6(c) of the Copyright Act of Nigeria (LFN 2004) stipulates that subject to the exceptions allowed, copyright in a work shall be the exclusive right to control in Nigeria, the doing of any of the following acts (concerning cinematograph film): • Make a copy of the film • Cause the film, in so far as it consists of visual images and/or sound, to be seen in public or heard in public • Make any record of the soundtrack • Distribute copies of the work to the public, for commercial purposes, by way of rental, lease, hire, a loan, or similar arrangement. Under section 8 of the Act, the same copyright exists in a broadcast. Section 9 goes further to state that where the owner of a copyright in any literary, musical, or artistic work authorises any person to incorporate the work in a cinematograph film, and a broadcasting authority broadcasts the film, the owner of the copyright shall be deemed to have authorised the broadcast in the absence of any express agreement to the contrary between the owner and that person. However, in the case of a musical work, the owner will be entitled to fair compensation. So, establishing an online streaming content without consent is an infringement of the copyright belonging to the author/owner. The broadcast exception only rests on an initial consent by the copyright owner. Therefore, the copyright owner’s initial consent or a collective society (where rights have been assigned to them) is needed for every broadcast of copyrighted content. But what does the term ‘broadcast’ connote in relation to online streaming services, and is a licence required? Read on.

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b. Licencing

It would appear that the NBC Act covers internet channels since the use of the internet is made possible by satellites/WIFI, cables, etc. Even Android phones or Phone Apps used in watching cinematograph films survive by data, WIFI, Satellite, etc. Also, the broadcast has been defined to include re-broadcast.

The National Broadcasting Commission Act of Nigeria, LFN 2004, in section 2 gave powers to the commission to receive, process, consider applications for the establishment, ownership, or operation of radio and television stations, including cable television services, direct satellite broadcast, and any

The 2016 NBC Code is under review and said to be undergoing the Presidential approval. It is believed that the review would affect nonNigerian broadcast channels like Netflix and Amazon Prime so that these entities would require a licence as well.

other medium of broadcasting. No person can operate in any of the mentioned services unless by the provisions of the Act. It is to be noted that NBC is precluded from granting a license to religious bodies and political parties.

c. Assignment/ procurement

Section 51 of the Copyright Act defined broadcast as sound or television broadcast by wireless telegraph or wire or both, or by satellite or cable programmes and includes re-broadcast.

Of interest is section 9 of the NBC Act; it states that the commission must be satisfied that the applicant is a body corporate registered under the company and allied matters Act or owned by the Federal State, or Local Government. In addition, the applicant must demonstrate to the Commission’s satisfaction that he is not applying on behalf of foreign interest, and can comply with the objectives of the National Mass Communication Policy as applies to the electronic media, that is, radio and television. This above provision brings much confusion as to whether or not online streaming falls under broadcast to be regulated by the NBC. Hence, the making of the NBC Code to spell out the confines of the NBC powers. According to the National Broadcasting Commission Code (6th edition 2016), chapter 11:15:1 to 11:15:5 of the NBC Code provides: An Internet radio, or television broadcaster streaming signals from Nigeria shall be licenced by the Commission. All regulations governing news, programmes, advertising, and sponsorship shall apply to this category of broadcasting. The local content for this category of a licence shall be 60 percent. All conditions governing other categories of the broadcast license shall apply to this category of broadcasting. All subscription internet radio, and television that seek subscribers in Nigeria shall be licensed by the Commission.

Copyrights are considered moveable property capable of transfer. As such, instead of going through the difficulties of sourcing and royalty payment issues, a streaming company can simply procure the entire ownership rights in a work just like Netflix bought ‘Lion Heart” from Genevieve Nnaji. Such a method comes with great expense, but much more is to be recovered if the content is worth it. In such situations, the original author must always be mentioned, and the integrity of the work left intact, but ownership would rest on the company. The owner may then use such content as they please, including the right to licence the same at a price to other bodies. The contract must be appropriately worded and made to cover every intellectual property derivable in the work.

3. Trouble From International Realm a. International Treaties The World Intellectual Property Organisation (WIPO) administers the WIPO Copyright Treaty (WCT), the WIPO Performances and Phonogram Treaty (WPPT). Both treaties, which became referred to as the ‘Internet Treaties’ 1996, set down international norms for accessing and using creative works on the internet/digital networks. These treaties serve as an update to the existing Berne Convention, Rome Convention, and by extension, TRIPS. The WCT deals with protection for authors of literary and artistic works, such as writings and computer programs; original databases; musical works; audio-visual works; works of fine art and

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photographs; whereas the WPPT deals with protection for authors rights of performers and producers of phonograms. Both Treaties require countries to provide a framework for the protection of those fundamental IP rights over the internet. Right-holders should effectively use technology (i.e., encryption and other anti-circumvention) to protect their rights and give licence of their works online. Unfortunately, the Treaties do not cover the field. Signal piracy takes various forms. It could be physical or virtual; an unauthorised redistribution of signals online is possible through hacking into encrypted pay-tv signals

in set-top boxes. An example is live sports broadcasts. Sports stakeholders are lamenting over a considerable loss of millions of dollars of income. The Internet Treaties were found wanting in the face of new broadcasting technologies. Digital programme recording devices, VOD (video on demand) services, Internet Protocol TV (OPTV or Internet TV) are all disruptive means that can transmit programmes to televisions and computers and mobile phones. The discussion in WIPO as of 2006 on webcasting, that is, broadcast over the internet or video content intended for internet streaming, yielded no result. There were concerns regarding blocking legal uses of a TV broadcast, streaming for personal, scientific, and educational uses, inhibition of technological innovation, an extension of allowed years of protection, and interruption of specific domestic laws.

b. Experience from Developed Countries Article 3 of The Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (European Union) mandates certain requirements for online streaming services - Authors shall have the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them. Also, it stipulates that ‘the rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.’

In ITV v. TVCatchcup,v TVCatchup provides a service in the E.U that permits its users to receive ‘live streams of free-to-air television broadcast’ through the internet, including the broadcasts transmitted by ITV. The justice held in that case that TVC’s service falls within the broad scope of communication under Directive 2001/29, even if TVC used a specific technical means different from the original communication. Another case was Stichting Brein v. Jack Frederik Wullems (Filmspeler)vi. In that case, Jack sold a device called the ‘filmspeler’ through his website and other online distribution channels. Thus, when a customer connects to the internet and turns on the TV, the customer can stream the image or audio from websites. Jack further installed downloadable add-ons created by third parties, and his website contained hyperlinks. Via the hyperlinks, customers/subscribers could watch a variety of live streaming content without paying. Jack promoted his website via the slogan ‘Never again pay for films, series, sport, directly available without advertisements and waning time. (no subscription fees, plug, and play). Netflix is now past tense!’ The justice held that the device constituted ‘communication to the public’ because it provides purchasers with immediate access to unspecified copyrighted works on the internet without the right holders’ consent. According to the court, a new public is a public which copyright holders did not take into account. Thus, the device sold enlarges the pool of users beyond that intended by the authors of those copyrighted works. In the United States, in American Broadcasting Companies Inc. v. Aereo Inc,vii subscribers pay a monthly fee to Aereo on Aereo’s website, then, Aereo servers would select antennas to catch the selected over-the-air broadcasts. The broadcast would pass to Aereo’s transcoder, which translated the broadcast signals into digital format for the internet. Then, the data would be saved in Aereo’s hard drive so that a subscriber can access a specific folder on multiple devices. Aereo believed its process to be legal due to a Cartoon Network case, where the court held that a form of streaming was legal because the way the Cablevision transmitted was not ‘to the public’. When CBS, Comcast NBC, Disney, 21st Century Fox, and other stakeholders sued Aereo at the Federal court for copyright infringement, the court held that Aereo’s retransmission of a TV program by using user-specific copies is just a ‘process’ for transmitting performance. A large number of paying subscribers lack a prior relationship to the works, falling within the meaning of ‘public’. There was, however, a dissenting opinion from Justice Antonin Scalia. He relied on the traditional copyright infringement theory. He predicted that the majority decision would lead to an unpredictable future since it adopted an improvised ‘looklike-cable TV’ method and disrupted settled jurisprudence on the volitional conduct doctrine (a tort theory which requires that a person must have committed an act voluntarily to inure liability, as against passive conduct). Secondary infringement may

thus robe in passive conduct, but not direct infringement. According to Justice Scalia, while in VideoOn-Demand (VOD) services like Netflix, the company responds automatically to user demand for videos on their system. Hence, it is Netflix that choose the content. On the other hand, in a Store- For-Copying or CopyShop, the company does not provide content, only copy machines. It is the customers who choose the content, not the company. Thus, in a Copy-Shop, the company may be secondarily liable rather than directly liable since there is no volitional conduct. Aereo’s case applies to the copy-shop and since the broadcasters sued for direct infringement, there claim should fail. Unfortunately, the fine reasoning of Justice Scalia’s position is only but a minority opinion and not the decision of the Supreme Court. Six months later, another case came up – Fox Broadcasting Co. DISH Network LLCviii. In this case, Fox had several contracts with various distributors. Fox entered a retransmission agreement with other multichannel video programming distributors (MVPD) such as DISH, which retransmits Fox’s programs to their subscribers. Later, Fox sued DISH, alleging copyright infringement, and breach of contract. The court held that DISH did not engage in volitional conduct to infringe because it was the subscribers themselves that had created their online IDs, downloaded the SlingPlayers, paid bills, and most importantly, selected the programs that were sent from the Set-Up-Boxes. None of DISH’s employees actively responded to the user’s request or intervened in the selection process. DISH was, therefore, a licencee that could not transfer title. DISH subscribers were valid possessors of copyrighted work based on the retransmission consent agreement between Fox and DISH. Since DISH subscribers were valid possessors, they could transmit the programs rightfully to another device for themselves or someone in their households.

4. Evaluation and Conclusion

The Nigerian situation is not much of a difference. At first, consent of the copyright owner is required except when the applicant/ user falls within the exceptions enumerated under the first schedule of the Copyright Act or any other exception(s) within the Act. Nigerian law has slightly similar phrases with the Internet Treaties and US and EU regime, the argument that broadcast does not connote online streaming would likely fail in our court of law. The altitude of the Nigeria Court, no doubt, will be to use traditional copyright theory to determine liability either as a direct or indirect infringement.ix Hence in conclusion, how can an online streaming business establish or succeed without copyright infringement? 1. If the use is for commercial purposes and copyright still exists in the work, go with an intellectual property lawyer to obtain consent and negotiate a favourable deal with identified copyright owners. 2. To avoid chances of secondary liability, get your intellectual property lawyer to seek-out license from the NBC. 3. Retain the services of an intellectual property lawyer; among other things, this will help you understand and follow the trend of the law and cases involving copyright and online streaming (and other connected aspects of IP law). 4. Establish a proper term of use. Do not allow the website designer to copy and paste any country’s/company’s terms of use. Get an intellectual property lawyer to do thorough work. 5. Develop a business model that will ensure a win-win situation for all parties. For example, copyright holders could subscribe to your channel, and subscribers can choose and stream their content on your platform. That way, a win-win is assured for the rights holders, the platform provider, and the subscribers.

When we follow the US court reasoning or the EU court reasoning, we would naturally come to the same end-point. The yardstick for determining copyright infringement in online streaming is whether consent is required, whether there has been a public performance or communication to the public, and whether there has been a transmission irrespective of what method was used in transmitting. At an aggregation stage, it would appear to many start-ups that consent is not an issue, but this would very much play out in the future when deciding whether there has been an infringement or not. Whatever the business model adopted, either by providing a platform for subscribers to stream their content or by building a platform with a mechanism for customers to select content, violation of ‘public performance’ appears inevitable. Even if a direct infringement is escaped there is a secondary liability that may catch businesses in the web of infringementix.

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https://www.pwc.com/ng/en/press-room/nigeria-will-be-the-worldsfastest-growing-e-m-market-pwc- report.html

https://www.prominence.global/how-consumers-spend-time-online/

iii

https://www.go-gulf.com/online-time/

See Sarah Perez, JustWatch Debuts New Search Engine for Cord Cutters, TECH CRUNCH (Feb. 5, 2015), https://techcrunch.com/2015/02/05/ justwatch-debuts-a-new-search-engine-for-cord-cutters/ (establishing that “aggregation” is a type of streaming service that acts as a TV guide of all streaming services); see also Nelson Granados, Only Top Video Streaming Services Are Likely to Survive in the Trump Era, FORBES (Jan. 25, 2017, 10:48 AM), https://www.forbes.com/sites/nelsongranados/2017/01/ 25/ only-top-video-streaming- services-are-likely to-survive-in-the-trumpera/#5402e6dd3319 (explaining that another type of streaming service can be in distribution); Sarah Perez, Sling TV Rolls Out a Better DVR With An Option to Protect Recordings, Record From Fox, TECH CRUNCH (June 14, 2017), https://techcrunch.com/2017/06/14/sling-tv- rolls-out-a-betterdvr-with-anoption-to-protect-recordings-record-from-fox/ (implying that a storage device is a type of online streaming service) v See Sarah Perez, JustWatch Debuts New Search Engine for Cord Cutters, TECH CRUNCH (Feb. 5, 2015), https://techcrunch.com/2015/02/05/ justwatch-debuts-a-new-search-engine-for-cord-cutters/ (establishing that “aggregation” is a type of streaming service that acts as a TV guide of all streaming services); see also Nelson Granados, Only Top Video Streaming Services Are Likely to Survive in the Trump Era, FORBES (Jan. 25, 2017, 10:48 AM), https://www.forbes.com/sites/nelsongranados/2017/01/ 25/ only-top-video-streaming- services-are-likely to-survive-in-the-trumpera/#5402e6dd3319 (explaining that another type of streaming service can be in distribution); Sarah Perez, Sling TV Rolls Out a Better DVR With An Option to Protect Recordings, Record From Fox, TECH CRUNCH (June 14, 2017), https://techcrunch.com/2017/06/14/sling-tv- rolls-out-a-betterdvr-with-anoption-to-protect-recordings-record-from-fox/ (implying that a storage device is a type of online streaming service) vi

134 S. Ct. 2498 (2014).

vii

160 F. Supp. 3d 1139 (C.D. Cal. 2015).

https://digitalcommons.law.umaryland.edu/cgi/viewcontent. cgi?article=1288&context=jbtl

ANTI-

COUNTERFEITING

ANTI-COUNTERFEITING MEASURES IN THE CARIBBEAN:

THE DEMAND FOR UNIFIED MEASURES The world is witnessing ongoing globalisation, which has hauled benefits and challenges. On the one hand, the increasing globalisation, access to new technologies, and global and multilateral trade agreements that have come to reduce taxes and barriers considerably have made international trade progressively affordable and straightforward for everyone. The rise of international trade is not in dispute. This, undoubtedly, translates into a benefit for brands that can reach all countries in the world regardless of their location. However, just as they benefit, they also face the great challenge of counterfeiting. It is a fact that globalisation has made the commercialisation of counterfeit products easier. That said, it is necessary to put into force effective legislations to respond to the commercialisation of counterfeit products. For that reason, this article focuses on current antipiracy practices in the Caribbean region. Additionally, the article will expose the different measures that trademarks can and should apply to safeguard their intangible assets as well as the situation of some Caribbean islands. Finally, the need for uniform legislation in this regard is also noted.

I. The ABC to counterfeiting

The Agreement on Trade-related Aspects on Intellectual Property Rights (the TRIPs Agreement) defines counterfeiting as the act of trading goods bearing a registered trademark without authorisation. It also includes the case in which a product is imitated. Likewise, it applies to copyrights in which songs, movies, literary works, among others, are distributed without authorisation and without paying

Written by Laura Castillo Sepúlveda Partner at INNVENTIVA -Espacio Legal www.unitalen.com

royalties nor another fee involved. In general, the intent may be to deceive consumers on the origin of the product. However, in the case of well-known brands, the intent might not be to deceive; in this case, consumers purchase goods at a lower price and expect an inferior quality product. Similar is the case of pirated copyright goods in which, usually, the enduser is aware of the illegality of the product. In all cases, counterfeiting is an illegal act that brings adverse effects to Intellectual Property Rights (IPR) holders. With that in mind, countries around the world need to join forces to work against counterfeiting. It is relevant to point out that counterfeiting has always existed. One of the first counterfeitings in history dates back to the 5th century under the rule of Emperor Justinian. However, to date, it is commonly said that the world is facing a new generation of counterfeiters who have created sophisticated systems to distribute and sell their products in a clandestine way. Likewise, it is difficult to distinguish the illegal goods because modern counterfeiters have shaped the known “real fakes,” meaning that the product is a high-quality copy. As a result, the new unlawful mechanisms make it more difficult for brand owners and customs authorities to detect and track counterfeit goods.

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II. A strategic view to combat counterfeiting

Having explored counterfeit and how it affects IPR owners, it is essential to study the different strategies and actions available. Firstly, it is crucial that brand owners must count with a strong, tailor-made, and strategic IP portfolio. In other words, brand owners should have all their intangible assets registered within all the countries they commercialise their goods. They should also consider registering their trademarks in countries where there is a risk of distribution of counterfeit products. In that regard, it is essential to highlight that while some countries like the Dominican Republic, Jamaica, and Trinidad and Tobago are ‘first to file’ jurisdictions, other countries like Suriname have a ‘first to use’ system. In the former case, IPRs start with the registration; hence, brands need to register their IP assets with priority in those jurisdictions. In the latter, rights are acquired by use in commerce. However, if there is a conflict pertaining to a similar trademark, it is usually quite difficult to prove that one was indeed the first to use it. When it is not clear who is the first to use a trademark, the registration date could also be one factor that the courts weigh to determine who is first to use and, therefore, can be considered the owner. Thus, even though

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jurisdictions like Suriname follow the ‘first to use’ system, it is always advisable to register all IP assets based on the above. Additionally, it is necessary to mention that it is mandatory to have a valid registered trademark to start judicial actions in many Caribbean islands. Another strategy is to train consumers and local customs authorities about counterfeiting. It is also advisable that brand owners know how their counterfeiters’ business is run; that is, knowing where they are located, how they operate and how their supply chain runs, from production to the final delivery of the product. Likewise, it is possible to hire special investigators and contract intelligent platforms that monitor possible counterfeits found on web pages such as Alibaba, for example. The above will help proceed with a possible seizure, closure of the manufacturing plant, and initiation of a judicial process. Whether or not to proceed with these actions against counterfeiters will depend on the number of pieces involved as well as the costs. Brand owners shall seek a balance between what the aforementioned counterfeiting means for them, the expenses of the legal process, and how much they would receive in compensation from the counterfeiter. By the same token, it is of the utmost importance that all countries join forces to help brand owners to enforce their IPRs. That is, even if proprietors have all their trademarks and other IPRs registered and secured. Even if they monitor their counterfeiters, the campaign can only be successful if IP legislation worldwide is extremely robust. Likewise, countries need to count on strong customs authorities and local systems capable of detecting and seizing counterfeiting goods. The latter appears to be a fundamental pillar when speaking about anticounterfeiting campaigns because it is the last step before the end user receives the goods. This also gives information on who are the local distributors of the manufacturer. However, as is seen in the next section, some Caribbean islands lack regulation on this aspect.

*Jamaica, Turks & Caicos and Grenada: are examples of islands in which the proprietor or licensee of a registered trademark can by notice in writing to the comptroller of customs indicate that they believe counterfeit or pirated goods in relation to the said trademark, are expected to arrive and request that the comptroller of customs inform the writer if and when this occurs. These kinds of regulations are not proper as the owner probably does not know when counterfeit products will arrive in that particular country; undoubtedly, this type of information may be challenging to obtain. *Haiti, Bahamas, British Virgin Islands, St. Kitts & Navis, Cayman Islands, Barbados and Anguilla are all examples of islands that do not have any customs registration. Therefore, it is needed to hire a private investigator who acts as a ‘mystery shopper’.

As mentioned, the situation in the Caribbean should be highlighted. It is observed that each island has different legislations. This makes it difficult to IPRs holders to manage and administer their intellectual property. However, the most disturbing aspect is the fact that most of these islands do not have any border measures. The situation of some of the islands will be shown below:

Furthermore, once the goods are seized, it is necessary that countries all around the world have regulations that allow easy access to justice to initiate civil, criminal, or administrative actions. This is enshrined in the TRIPS Agreement as an obligation of all contracting parties. However, only eight out of twenty-six Caribbean Islands are signatory members of the TRIPS Agreement (i.e., Barbados, Belize, Cuba, Dominican Republic, Dominica, St. Kitts & Navis, St. Lucia, and Trinidad and Tobago). Despite all, the other islands are not a signatory of the TRIPS Agreement; they do have civil, criminal, and administrative procedures. However, the key is on the efficiency of the process.

*Trinidad & Tobago, Dominican Republic, St. Lucia: these islands have a system whereby a Notice of Objection to the Importation of counterfeit goods can be filed at customs. When allegedly

The above denotes that the legislation is not only ununiform, but it is also insufficient. This puts brand owners at a high-risk position that gets worse, given the immensity and ease of internet access to acquire counterfeit goods.

III. Anticounterfeiting measures in the Caribbean: the demand of a new era

counterfeit products arrive, customs authorities notify the owner or his representative. There is a deadline to initiate or not initiate legal actions, but the pieces are retained during the term.

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Finally, it is recommendable that Caribbean islands come together to agree on minimum – and uniform– criteria for border measures so that customs agents have the capacity and authority to seize allegedly counterfeit products. The same applies to enforcement measures; all Caribbean islands should have minimum rules for the proper functioning of their civil, criminal, and administrative procedures concerning counterfeiting matters. Undoubtedly, these reforms will benefit not only IPRs holders but the international community as a whole.

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