As the world prepares to mark World Intellectual Property (IP) Day this Sunday April 26th 2015, this blogger has come across several World IP Day posters from around the continent created to reflect this year’s theme: “Get Up. Stand Up. For Music”. According to the map of World Intellectual Property Day 2015 Events by World Intellectual Property Organization (WIPO), there are only sixteen (16) confirmed World IP events being held in ten (10) countries across the continent. This blogger reckons that this represents a low turn-out by IP stakeholders across Africa’s fifty four (54) states given this year’s World IP Day theme and the importance of World IP Day activities and events for awareness creation and public sensitisation.
The Honourable Attorney General (pictured above) in exercise of the powers conferred by section 49 of the Copyright Act has made new regulations.
Contrary to the picture caption above, the thrust of these new regulations is a substantial increase in the fees for applications for registration and renewal of registration of a collecting society.
Recently, this blogger came across a media report stating that Diageo North America Inc, suing jointly with UDV (Kenya) Ltd, which is its subsidiary in Kenya, has claimed that Platinum Distillers Ltd has begun the manufacture and sale of an alcoholic drink in Kenya known as Momentum Ice with Guarana, which is directly infringing on its trademark, Smirnoff Ice Double Black with Guarana. Both alcoholic beverages are pictured above.
According to this media report, the US company claims that Platinum has caused Momentum Ice to be produced with an overall packaging that constitutes confusingly similar features to its Smirnoff Ice Double Black with Guarana, which is distributed in Kenya by UDV. In particular, the report has reproduced a portion of the suit papers filed by Diageo which reads: “This [packaging] has been done in a manner and style calculated to deceive members of the public that the offending product is associated with us.” As result, Diageo and UDV have reportedly asked the courts to stop Platinum from using its trademark by way of packaging and selling of Momentum Ice with Guarana, in order to prevent further confusion among consumers who think the two products are connected.
The good folks over at The Scinnovent Centre have just published a new study titled: “Industrial Property Rights Acquisition in Kenya: Facts, figures and trends”. This March 2015 study was carried out with the aid of a grant from the International Development Research Centre (IDRC) with the partnership, support and guidance of Kenya Industrial Property Institute (KIPI) and National Commission for Science, Technology and Innovation (NACOSTI). The study used KIPI’s database of all industrial property applications and grants since its inception in 1990 to date (2014) and sought to answer four key questions: (i) Where do the inventions come from? In other words who owns the industrial property protected in Kenya? (ii) How does foreign (international) applicants compare with national (domestic) applications? (iii) In which economic sectors are the most industrial property applications registered? (iv) what are the key challenges/ bottlenecks faced by the applicants?
The data analysed in the study consists of the records of KIPI registry database on the filings, grants and registration of the IP protections for patents (1990 – 2013); utility models (1993 – 2013) and industrial designs (1991 – April 2014). The samples consisted of 2388 patents, 396 utility models and 1392 industrial designs. The study does not include data relating to patent, utility model and industrial design applications filed and granted through African Regional Intellectual Property Organization (ARIPO).
“In Kenya, the publishing industry is estimated to be about 12 billion Kenyan shillings a year (US $150 million) but 95% of that comes from the sales of textbooks. The sales of trade books has not been growing that quickly, I am afraid, but we are trying to change that. And bookstore sales are down as well. But as a small publisher, we have to respond to the market.” – Publishing Perspectives Interview with David Waweru, CEO of WordAlive Publishers on January 11, 2013.
“Our publishers—a good number of who are plain dishonest and shady individuals—are obsessed with publishing for the school market. They fight tooth and nail to have their books accepted as approved school texts. That is not a good thing at all because incidents of bribery have been reported in the process, which ends up putting dubious books in students’ hands. Outside of this there hasn’t really been a vibrant market for fiction. As a result writers have been bending over backwards to produce work that can fit in this mould. This in my thinking, isn’t healthy. Writers, as social commentators and critics, need the space to think creatively without inhibition. Some authors try to break out of this straight-jacket by self-publishing, but usually they don’t go far. Soon they encounter the biggest pest in the business, the book pirate, who is vicious in Kenya and operates with impunity, earning from what he didn’t sow in—we suspect—collusion with the law enforcers.” – Africa39 Blog Interview with Kenyan author, Stanley Gazemba on August 11, 2014.
“I love reading much more than I love writing. I suspect if I did not like reading, I would not be a writer. The well-written books inspire me to be a better writer. The badly written books teach me how not to write. Kenyan publishers are, sadly, not doing much to ensure that other readers and I get more of the former and less of the latter. Their inability to respond to submissions timeously; poor editing; unfavourable contracts; and poor marketing are but some of the problems beleaguering the publishing industry.” – Daily Nation, January 10, 2015: “Problem with Kenyan publishers” by Zukiswa Wanner.
Editor’s Note: The Digital Reading Summit 2015 themed “Immerse Yourself in the Digital Era”, has been organised by the Kenya Publishers Association (KPA) and Worldreader and is scheduled to be held between 21-22 April 2015 at Pride Inn Hotel in Nairobi. The following day, April 23rd, is World Book and Copyright Day!
The business of publishing rests on a contract between creators (authors) and those who invest in bringing their work to market – publishers. In many jurisdictions (including Kenya) it is necessary that the contract adopt a written form and this is also the advisable way to proceed even where verbal agreements are valid. To avoid misunderstandings a written contract should always be issued at the conclusion of discussions and verbal agreement between the parties.
In the contract with the publisher the author licenses the rights of reproduction and distribution over a work, thus providing the publisher with the legal means necessary for publication. In Kenya, section 33(3) of the Copyright Act requires that any exclusive license between an author and a publisher must be in writing. An important Kenyan case in the area of book publishing and copyright law is Njeri Wangari & Another v. Oxford University Press (E.A) Ltd.  eKLR discussed previously here.
Traditionally, publishers asked mainly for the right to publish authors’ book, sometimes in multiple formats and languages. Now many publishers demand broader rights, often including electronic/digital rights.
This blogger has come across a recent ruling by the High Court in Nonny Gathoni Njenga & anor v. Catherine Masitsa & 2 ors Civil Case No. 490 of 2013. In this case, the plaintiffs (Nonny Gathoni and Jane Odewale) applied to the High Court for orders of temporary injunction restraining the Defendants (Catherine Masitsa, Standard Group Ltd and Bauhaus Ltd) from infringing in any way on the plaintiff’s rights under copyright in the literary work registered as “Weddings with Nonny Gathoni” and later televised as “The Baileys Wedding Show with Noni Gathoni”. In particular, the plaintiff sought to have the court restrain the defendants from reproducing, adapting, communicating to the public or broadcasting the whole work or a substantial part thereof either in its original form or in any form recognisably derived from the original literary work.
A copy of the ruling is available here.
According to the learned High Court Judge Ogolla J the main issue for determination is whether the Defendants have infringed on the Plaintiffs’ literary work (as registered at KECOBO and evidenced by a Certificate of Registration issued by KECOBO and presented in court). The learned judge rightly singles out the core contention of the plaintiffs which is that although both parties had their own wedding show, the defendants changed the previous running order of their show by allegedly copying the running order expressed by the plaintiffs in the literary work “Weddings with Noni Gathoni”. The court ultimately finds in favour of the plaintiffs and allowed the orders sought for temporary injunction.
In the spirit of this year’s music-themed World IP Day, this blogger has opted to share a recent ruling: In the Matter of Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the Name of Joseph Muyale Inzai and Expungement Proceedings Thereto by Kenyan Boys Choir delivered by the Assistant Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).
In 2010, one Joseph Muyale Inzai filed an application to register his trade mark “KENYA BOYS CHOIR” (WORDS) before the Registrar of Trade Marks in classes 16 and 41 of the Nice Classification. The mark was approved, published and thereafter entered in the Register of Trade Marks in 2010. In the same year, Members of a choir known as Kenyan Boys Choir obtained registration of their business names “THE KENYAN BOYS CHOIR” and “THE BOYS CHOIR OF KENYA” under the Registration of Business Names Act.
These Members of the Kenyan Boys Choir filed an application for expungement of the mark claiming that they were aggrieved by the entry of the mark for various reasons including that they were the true owners of the mark: “KENYAN BOYS CHOIR” which was virtually identical to the mark in question: “KENYA BOYS CHOIR”.