Monthly Archives: July 2015

Registering trade marks in Africa: ARIPO

Africa, albeit a developing continent, offers many opportunities for investment and new business and, along with new investment, goes the need for the registration of trade marks.  Africa is, however, a big continent with over fifty recognised states, so where should a company start when registering trade marks?

When planning to do business in more than one African state, it may not be necessary to have more than one registration.  Firstly, there is the African Intellectual Property Organisation (OAPI or AIPO) where one registration covers Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.  Secondly, there is the African Regional Intellectual Property Organisation (ARIPO), a trade mark application system of which not a lot of use is currently made.

ARIPO was established in terms of the Agreement on the Creation of the African Regional Intellectual Property Organisation, known as the Lusaka Agreement.  The Lusaka Agreement was adopted in Lusaka, Zambia, on 9 December 1976.  ARIPO was established to pool the intellectual property resources of its member countries and to avoid the duplication of financial and human resources.  In terms of the preamble to the Lusaka Agreement, the member states have recognised that there are advantages to be derived from the “effective and continuous exchange of information and the harmonisation and co-ordination of their laws, policies and activities in intellectual property matters”.

ARIPO’s objectives are to promote the harmonisation and development of intellectual property laws and to establish common services necessary for the co-ordination, harmonisation and development of intellectual property activities affecting its members.  In line with these objectives, the Banjul Protocol on Marks was adopted on 19 November 1993.

The Banjul Protocol provides for the registration of trade marks by ARIPO on behalf of its member states.  The applicant can choose which of ARIPO’s member states to designate in the application.  Registration of a trade mark by ARIPO has the same effect as if the trade mark was filed and registered under the national law of each designated state.  One registration can in theory accordingly cover several territories.

ARIPO has 19 member states but only 9 countries have acceded to the Banjul Protocol.  An applicant therefore has a choice of nine countries which it can designate in its application for registration.  These countries are Botswana, Namibia, Uganda, Lesotho, Liberia, Swaziland, Zimbabwe, Malawi and Tanzania (Tanganyika).  If a member state subsequently accedes to the Banjul Protocol, the Protocol provides that a registrant or applicant has the right to designate that state.

One ARIPO registration can in theory accordingly cover several territories.  In practice, however, only Botswana, Zimbabwe, Liberia and Namibia have national legislation which recognises ARIPO trade mark applications.  In the 2006 case of Anglo Fabrics (Bolton) Ltd and Another v African Queen Ltd and Another (HCT-00-CC-CS-0632-2006) the High Court of Uganda inferred that it would recognise trade marks registered under international protocols like the Banjul Protocol, to which Uganda is a member state, as long as Uganda was a designated country for purposes of registration.

ARIPO registrations are accordingly recognised in Botswana, Zimbabwe, Liberia, Namibia and, it appears, Uganda but that leaves several states which do not have national legislation which recognises ARIPO trade mark applications.  These states are at various stages of drafting and implementing the required legislation.  Although a company can designate nine countries in an ARIPO application, therefore, the registration may only be enforceable in five countries.

Given that there are so few member states in which rights flowing from ARIPO registrations can be enforced, is an ARIPO registration worthwhile?  The answer to that question depends on whether a company wants to take the risk that the remaining member states will eventually accede to the Banjul Protocol and/or implement national legislation recognising ARIPO trade marks.

If all ARIPO’s member states acceded to the Banjul Protocol and implemented national legislation recognising ARIPO trade marks, the ARIPO system would be the first port of call when considering registering trade marks in Africa.

For more information, please contact:

MYRA CRAVEN
Attorney
Department: Trade Mark
Tel: +27 11 324 3119
Email: myrac@dmkisch.com

Author: Myra Craven

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Are you in control of your Know-How?

DMK-a2bKnow-How in the form of operational information and data lies at the heart of a business and this Know-How forms the back bone of the application, use and commercialisation of the other forms of intellectual property within an organisation.  For example, the patents protecting your products are used together with the data packs which contain the detailed information which is used to manufacture the products.

Know-how can be defined as “confidentially held”, or better, “closely held” information in the form of unpatented inventions, formulae, designs, drawings, procedures, manufacturing data packs and methods, together with accumulated skills and experience in the hands of a company’s employees. Know-How not only assists companies with the manufacture of its products and rendering of its services, but also constitutes a competitive advantage.

Far too often the recordal and protection of Know-How is neglected by companies. Frequently, valuable Know-How of a business lands up in the hands of a few key employees and the employer has little knowledge, possession or control of such valuable Know-How. This exposes companies to industrial espionage, loss of a valuable asset or duplication of research and development.

In most instances a significant amount of time or money has been incurred to develop and create such Know-How, yet the management and control thereof is neglected. If Know-How is not adequately managed not only is a company exposed, but the value of the Know-How can’t be determined and unlocked.

Know- How can acquire additional protection if it stays secret. A trade- secret is Know-How which is secret, and if shared such sharing must be done in a restrictive and confidential manner and which imposes an obligation on the receiving party to keep it secret.

Certain kinds of Know-How are inherently confidential. This will be the case if the Know-How is confidential in nature, it is kept confidential or, in the case where it is disclosed to another party, it is only disclosed in circumstances which makes it clear that the Know-How is to be treated as being confidential.

You need to determine how to protect your Know-How and how to use it without undermining the secrecy which makes it valuable in the first place.

Know-How can become lost to an organisation where the diligent recordal of the Know-How is not managed. In order to protect and manage Know-How, it is necessary to develop standard operating procedures, which will be continuously applied in all projects so as to maximise the capturing of Know-How. Summaries of the Know-How should be periodically circulated to management.

The Commercial Department at DM Kisch is dedicated to helping you to protect your Know-How as part of those intangible assets that help you to stand out from your competitors.  We are able to advise clients on document retention and security policies; confidentiality and non-disclosure agreements; and assisting clients with enforcing the protection of their Know-How.

For more information, please contact:

KEVIN DAM
Director & Head of Commercial Department
Department: Commercial
Tel: +27 11 324 3025
Email: kevind@dmkisch.com

Author: Kevin Dam

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Africa: First to file v first to use

DMK-a3bOne of a business’s most valuable assets is its brand and, therefore, its trade mark.  A business invests in its brand every time it does any advertising or promotion and the last thing that anyone wants is another business popping up and selling inferior goods or services under the same brand.  Unfortunately this is, however, something that regularly happens in Africa where hundreds of different languages are spoken and not everyone can read the labels.

Numerous countries in Africa do not have anti-counterfeiting legislation or other measures in place to prevent consumers from being taken advantage of.  Even where such legislation is in place, it is not always effectively policed.  Therefore, whereas one would have more than one basis on which to take on infringers in developed countries, in a lot of African countries a business can only rely on its trade mark.  Litigating in Africa is also extremely expensive and, given substantial backlogs and unavoidable postponements or interim applications, the process can be lengthy.

The strength of a company’s case against infringers depends on the law in each African country.  In some countries common law rights (for example rights acquired through use) are not recognized and the law does not provide for rights to a trade mark to arise otherwise than by registration.  In such countries, the first entity to file an application for registration of a mark will have the rights thereto, regardless of whether another entity has built up a reputation in the mark in that country.  This is known as the ‘first to file’ rule.  Countries in which the ‘first to file’ rule applies include Angola, Nigeria and the Democratic Republic of Congo.

The ‘first to file’ rule also applies to the Organisation Africaine de la Propriété Intellectuelle (OAPI or AIPO) system, unless the applicant is acting in bad faith and should have known that another person had a prior right to use the mark.  OAPI is a union of predominantly French-speaking countries which established common intellectual property laws and a single Intellectual Property Office, situated at Yaoundé, Cameroon.  Its members are Benin, Burkina Faso, Cameroon, Comoros, the Republic of Congo, Côte d’Ivoire, Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Central Africa Republic, Senegal, Chad and Togo.  It is not possible to register trade marks in these individual countries but an OAPI registration covers all of the member countries.

In other countries, common law rights are recognised and prior use in a country may entitle an entity to institute infringement proceedings.  Such countries include Tanzania, Ethiopia, Uganda, Rwanda and Burundi.  A business would, in other words, be able to use common law rights (for example use or reputation) as a basis upon which to oppose an application for registration or to institute infringement proceedings.  Whether or not it would be successful would depend on whether it can prove that it has prior rights.

A number of countries also recognise well known marks, for example Rwanda, Tanzania, Zanzibar and Ethiopia.  This means that, in these countries, a business could argue that, even though it has not registered its mark, its mark is well known and entitled to protection.  Making out a case that a mark is well known in a country is generally an onerous burden as it does not suffice to show that the mark is well known internationally.  The business would have to show that the mark is known to the citizens of the specific country.

While, as a rule, it is recommended that one applies for registration of one’s trade mark in any country in which one intends to trade, it is even more important to do so if one intends to trade in a first to file country.  Not doing so may leave one without a remedy if a third party decides to register the trade mark there first.  Even where one intends to trade in a country which is not a first to file country, having a registered trade mark means the trade mark owner need not prove use or reputation – thereby cutting down on litigation costs.

For help in deciding where you should register your trade mark, contact:

MYRA CRAVEN
Attorney
Department: Trade Mark
Tel: +27 11 324 3119
Email: myrac@dmkisch.com

Author: Myra Craven

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

What’s your classification?

DMK-a4bWhen determining trade mark rights, the classification system is of utmost importance. This system determines the scope of one’s statutory trade mark rights since trade mark infringement can only take place in respect of the goods or services that have been specified in the particular class, or in respect of related goods or services. Where a person registers a trade mark in respect of a certain class of goods or services, it would not be justifiable if such rights extended to other dissimilar classes of goods or services, which would result in granting that person a monopoly over goods or services that he or she is not necessarily trading in.

In the case of Impala Platinum Holdings Limited v Impala Warehousing and Logistics Africa (Proprietary) Limited and Others, the Court had to determine whether Impala Warehousing and Logistics Africa (Proprietary) Limited (“IW”) was infringing and passing off Impala Platinum Holdings Limited’s (“Implats”) registered trade marks.

Implats trades in the field of mining goods and had registered its “IMPALA” trade mark in classes 1, 6, 14, 36, 40 and 42. IW trades in warehousing and logistics services and was, in fact, involved in the transportation of mining goods in which Implats trades. Implats, however, had failed to register its “IMPALA” trade mark in class 39 in respect of transport and logistics services. Nevertheless, Impats instituted trade mark infringement and passing off proceedings against IW and IW countered with partial expungment (trade mark cancellation) proceedings against Implat’s “IMPALA” trade marks on the basis of non-use.

The evidence led by the parties in this case showed that Implats actually used the name “IMPLATS” instead of “IMPALA” in all of its communications, on its website and in the email addresses of employees and that the mark “IMPALA” was used together with the descriptor “PLATINUM”. On the other hand, IW used other descriptors such as “WHAREHOUSING & LOGISTICS” and “AFRICA” together with the “IMPALA” mark so as to distinguish itself from Implats.

When determining whether trade mark infringement or passing off has occurred, the court must establish whether there exists a likelihood of deception or confusion arising in the market place if both parties were to use the same or similar trade mark. Our courts have previously found that, where trade marks with a greater degree of resemblance are used in respect of goods or services with a lesser degree of similarity, the likelihood of deception or confusion arising is minimised. Where identical marks are used in relation to the completely different goods or services, it is likely that this will not constitute trade mark infringement.

In this particular case, Implats had failed to register its “IMPALA” trade mark in respect of the services offered by IW under its “IMPALA” mark. Our courts have also previously found that the fact that a party has chosen not to register its trade mark in a particular class is telling. If Implats had intended to use and protect the mark in respect of transport and logistical services, it should have registered its “IMPALA” trade mark in that class, namely class 39.

Another significant aspect of this particular case is that the evidence of use led by Implats was not clearly explained, particularly in respect of how and in what manner it used the “IMPALA” trade mark and the distinction between its use of the registered “IMPALA” trade mark and the “IMPLATS” mark. Implats further failed to deal, in detail, with a comparison of the parties use of the “IMPALA” marks, a comparison of the target market (notional users/purchasers), the nature of the respective goods and services and a comparison of their respective trade channels, so as to demonstrate the alleged possibility of confusion or deception. Instead, it simply made a general allegation in its founding papers and failed to expand thereon. As has been previously held in our case law, in particular the popular Plascon-Evans case, evidence in motion proceedings is led by way of affidavits. These affidavits therefore constitute both the pleadings and the evidence and so it is imperative that they are clear. Neither the court nor the other party should have to speculate on the relevance of certain facts contained in such affidavits.

In the end, the Court found that the essence of the parties’ respective goods and services were different, thereby minimising the likelihood of deception or confusion, and that Implats had failed to show evidence of use of its “IMPALA” trade marks beyond the sphere of mining and selling platinum related products. The Court therefore dismissed Implat’s main applications and allowed IW’s counter application for expungement and partial expungement of Implat’s trade marks, so as to limit the scope of Implat’s trade mark rights to the field of mining and selling platinum related products only.

There is no doubt from our South African case law that trade mark proprietors may have difficulty in proving trade mark infringement or passing off in relation to particular goods or services where it has not in fact registered or used its trade mark in relation to those particular goods or services. Trade mark proprietors should therefore ensure that they are sufficiently protected by registering their trade marks in all of the classes of goods or services in which they trade. Finally, our courts have made it clear that, when determining which classes of goods or services one wishes to protect its trade mark in, using a wide specification that includes goods or services that are not used or intended to be used should be avoided. Trade marks with specifications which are too vague or which are simply indefinite may be vulnerable to expungement or rectification proceedings.

For more information, please contact:

TAMMI WIRTZ
Candidate Attorney
Department: Trade Mark
Tel: +27 11 324 3089
Email: tammiw@dmkisch.com

Author: Tammi Wirtz

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.