Rwanda: Well Known Status, Bad Faith Registration and Prior Use Arguments in ‘AZANIA’ Trade Mark Dispute

AZANIA

In an article published here, it is reported that Tanzanian firm Mikoani Limited were unsuccessful in their bid to have the Commercial Division of the High Court annul the registration of ‘AZANIA’, a trade mark whose ownership was in dispute between the parties.

Azam and Azania are bitter rivals in Tanzania, where the two firms, Bakhresa and Mikoani, are originally registered.

In 2013, Mikoani’s rival, Bakhresa Group went to the Office of the Registrar General at Rwanda Development Board (RDB) and obtained ownership of Azania trademark.

On discovering this trade mark registration, Mikoani claims to have immediately written a letter of protest to RDB which led to mediation efforts which failed because it is claimed that Bakresa lacked interest. Therefore Mikoani was forced to approach the courts for intervention.

In the case Mikoani argued that Bakhresa’s intention was to guard its Azam flour products against competition that would be posed by Mikoani’s Azania flour products in the Rwandan market. Therefore by obtaining a trade mark registration for Azania, Bakhresa had effectively blocked Mikoani from extending their home rivalry (in the Tanzanian market) to the Rwandan market.

However, according to the article, the court quashed Mikoani’s arguments on grounds that not enough evidence was provided to prove that Bakhresa’s actions were done in bad faith. The court is also said to have concurred with Bakhresa that at the time of registration, the Azania trademark had no owner in Rwanda, therefore the blame lies squarely on Mikoani for not moving fast to protect its own brand.

azania flour

A representative of Mikoani is reported to have expressed his disagreement with the decision of the court as follows:

“I disagree with what the judge said that there was nothing to prove that Azania was already known in Rwanda. We have been exporting to this country since 2001 and we have invoices to prove it; we are definitely going to appeal”

Comment:

This blogger is appealing to readers to share a copy of this judgment as it does not seem to be available online anywhere.

Be it as it may, the scanty information provided by the article is sufficient to raise three main issues regarding the decision of the court in this matter, namely: well known status, prior use and bad faith.

With regard to well known status, Art. 6bis of the Paris Convention provides for protection of well known marks that may not be registered in member states. There are however clear guidelines that lay down conditions for invocation of this well known status.

In this connection, it is odd that RDB is reported to have distanced themselves from the dispute claiming:

“It is mandatory to register a trademark to claim a right; -the protection is territorial, there is no agreement or convention between EAC member states on trademark protection. All member states use the Paris convention.”

The question is whether Rwanda has  incorporated Article 6bis of the Paris Convention on well known marks in its trade mark laws?

With regard to prior use, this is a question of fact that must be backed by clear evidence in the subject market: proof of sales; extent of marketing e.g advertising in media; period the product has been in market; established distributorship.

The question is whether Rwanda has incorporated a prior use defence/claim/remedy for an unregistered user of a trade name in its trade mark laws?

With regard to bad faith, this can be imputed if the court asked itself the following questions:

1. Are the two companies existing and indeed rivals in another territory?
2. Does the respondent therefore know that the subject mark is actually owned by the applicant?
3. Does the respondent know that just like them, the applicant has also moved into the Rwanda market and would naturally be seeking to protect there mark in the market?

If the above questions are all in affirmative, then Mikoani’s appeal ought to be successful.

ARIPO States Not Yet Ready for WIPO Budapest Treaty on Patents Involving Micro-organisms

image

Recently, World Intellectual Property Organization (WIPO) in collaboration with the African Regional Intellectual Property Organization (ARIPO) held a seminar dubbed “Sub–regional seminar on the promotion and understanding of multilateral treaties in the field of patents: Paris Convention, Budapest Treaty and Patent Law Treaty (PLT)” hosted at the ARIPO Headquarters in Harare, Zimbabwe.

The focus of this blogpost is on the some of the issues arising around the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.

As many may know, the Budapest Treaty was concluded in 1977 and has been open to States party to the Paris Convention for the Protection of Industrial Property (1883). As at March 15, 2014, 79 States were party to the Treaty. Interestingly, there are only three African countries that have signed the Treaty, namely Tunisia, Morocco and South Africa – none of whom are ARIPO member states.

As many may know, the Treaty was intended to aid in disclosure requirement under patent law where the invention involves a microorganism or the use of a microorganism. Such inventions relate primarily to the food and pharmaceutical fields. Since such disclosure is not possible in writing, it can only be effected by the deposit, with a specialized institution, of a sample of the microorganism.
It is in order to eliminate the need to deposit in each country in which protection is sought, that the Treaty provides that the deposit of a microorganism with any “international depositary authority” suffices for the purposes of patent procedure before the national patent offices of all of the contracting States and before any regional patent office (if such a regional office declares that it recognizes the effects of the Treaty). The European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African Regional Intellectual Property Organization (ARIPO) have made such declarations.

According to ARIPO’s press statement here, Director General Fernando dos Santos in his opening remarks “lamented the insignificant role that Africa is playing in global IP systems despite the fact that nearly every African state has enabling laws to facilitate its better placement in the global IP transactions and indicators.”
Dos Santos reportedly challenged member states to find their way into IP filings noting that according to the World Intellectual Property Indicators 2014, of the over 2 million patent lodgments made in 2013, Africa’s share was a mere 0.6% ─ with most of these 0.6% filings made in Africa emanating from the industrialized countries through the Patent Cooperation Treaty.

With that background in mind, this blogger suspects that most ARIPO member states
may not be ready to implement a Treaty such as the Budapest Treaty at present. Taking the Kenyan scenario for instance, local patent applications are very few and whilst Kenya may have no problem with the Treaty per se, it would be a cumbersome, expensive venture. For the foreseeable future, the real beneficiaries of the system under Budapest Treaty would be the developed countries since they remain ardent users of the patent system. Judging from the 3 countries that are signatories to the treaty, it is clear that capacity is a big impediment.

To highlight this issue of capacity, let us consider the “international depositary authority” provision under the Treaty. What the Treaty calls an “international depositary authority” is a scientific institution – typically a “culture collection” – which is capable of storing microorganisms. Such an institution acquires the status of “international depositary authority” through the furnishing by the contracting State in the territory of which it is located of assurances to the Director General of WIPO to the effect that the said institution complies and will continue to comply with certain requirements of the Treaty.

In this connection, it is important to note that there is no institution in Africa that has been recognised under the Treaty as a  “international depositary authority” whereas they are currently 42 such authorities in other countries worldwide including: seven in the United Kingdom, three in the Russian Federation, in the Republic of Korea, and in the United States of America, two each in Australia, China, India, Italy, Japan, Poland, and in Spain, and one each in Belgium, Bulgaria, Canada, Chile, the Czech Republic, Finland, France, Germany, Hungary, Latvia, the Netherlands and Slovakia.

Initially Kenya proposed to sign the Treaty and had identified two depositaries i.e Kenya Medical Research Institute (KEMRI) and Kenya Agricultural Research Institute (KARI) however the main challenge seemed to be a lack of capacity in proper handling of the samples and the means to maintain the cultures or strains to the required standards.
Not to mention the increased costs and logistics involved in the coordination between the IP office and the depositaries.

Therefore this blogger reckons that Kenya and other ARIPO member states need to focus more on growing Small and Medium Size Enterprises (SMEs) in terms of utility model applications and other connected areas of industrial property protection. Thereafter, as the innovation space grows, one expects that there would be greater demand and push from local inventors in Kenya and other ARIPO member states to join the Budapest Treaty so to enjoy it’s benefits.

Are Intellectual Property Lawyers in Kenya Undercutting by Charging Less in Legal Fees?

supreme-court-fountain-kenya

This blogger recently received the following communication from the Law Society of Kenya (LSK):

UNDERCUTTING

The Council of Law Society of Kenya wishes to draw the attention of members to the provisions of paragraph 4 of The Advocates (Remuneration) (Amendment) Order 2014 which provides as follows:-

“4. An Advocate shall not agree or accept his remuneration at less than provided for by this Order.”

It has come to the attention of the Council that some law firms and advocates are undercutting by charging less than what is provided for under the order.

We are in the process of investigating the various complaints. Any member involved should know that this amounts to professional misconduct.

APOLLO MBOYA, HSC
SECRETARY/CEO

As many may know, the Advocates Act empowers the Chief Justice and President of the Supreme Court to make orders relating to the remuneration of Advocates for both contentious and non-contentious work. This section is the basis for the Advocates Remuneration Order which sets the minimum charges that an Advocate may charge for services. The Order was recently amended through Legal Notice No. 35 dated April 11, 2014. Curiously, LSK have not uploaded a copy of the Advocates (Remuneration) (Amendment) Order 2014 on their official website available here. However a copy of the Order is available on the Kenya Law website available here.

From an intellectual property (IP) perspective, Schedules 4 and 12 of the Order deal with Trade Marks and Patents, Designs and Utility Models respectively.

For instance, with regard to trade marks, the Order provides that an advocate must not charge less than Kshs. 7,500 for “taking instructions to advise on registrability of a mark or on a point of law or practice”. In a previous post here, we discussed the heightened competition among Kenyan firms with regard to trade mark practice, particularly in light of the recent 2015 WTR1000 rankings. However, this blogger submits that the fee of Kshs. 7,500 is already too low for any of the IP law firms and advocates to be engaged in undercutting. This reasoning may easily apply to other types of trade mark work such as applications, registrations, assignments etc.

With regard to patents, designs and utility models, the Order provides that an advocate must not charge less than Kshs. 25,000 to advise on patentability of an invention or registrability of an industrial design or a utility model or on a point of law or practice. This blogger submits that given the complexity of this area of industrial property work and the duration it generally takes to complete such work, it highly unlikely that any advocate or law firm would consider undercutting. However, the increased awareness among Kenyan inventors and innovators on the need to protect their industrial property may be an important factor fueling undercutting.

This blogger invites readers to share freely their views and experiences with how advocates and law firms charge for intellectual property legal services in Kenya.

Darling Hair Maker Wins First Round in ‘Galaxy’ Trade Mark Infringement Suit

style industries darling galaxy hair product kenya

“As a principle of law, the fact of registration of trade mark per se does not entitle the proprietor of trade mark to an automatic injunction to restrain use of the trade mark by a person who has continuously used the trade mark prior to, during and after the registration of trade mark. In other words, in the face of a claim of prior user of trade mark, and absent other strong and cogent evidence, the fact of registration of trade mark does not invariably constitute a prima facie case with a probability of success in the sense of the case of Giella vs. Cassman Brown.” – Gikonyo J at para 29 in Solpia Kenya Limited v Style Industries Limited & another [2015] eKLR.

This blogger has come across an interesting ruling recently made by the High Court in the case of Solpia Kenya Limited v Style Industries Limited & another [2015] eKLR concerning alleged infringement of trademark and passing off goods by Style Industries and Sana Industries in relation of which the trademark “GALAXY” which was registered by Solpia Kenya Limited. The matter before the court was an application by Solpia Kenya seeking injunctive orders to restrain Style and Sana from “offering for sale, stocking, distributing, displaying, producing, manufacturing, packaging, advertising, marketing and/or selling braids, wigs, weaves and artificial hair pieces bearing the Applicant’s trade mark “GALAXY” or in any way infringing and/or passing off the Applicant’s trade mark “GALAXY” pending the hearing and determination of this application or further orders of the Court”.

To illustrate its infringement and passing off claims, Solpia Kenya presented the following tabular representation:

SOLPIA KENYA

While it is not disputed that Solpia Kenya is the proprietor of the Trade Mark “GALAXY” Trade Mark No.75929 registered in Class 26, Style and Sana claimed that they and their predecessors have been using the trade mark GALAXY; been manufacturing, advertising and selling cosmetics products including wigs, weaves, hair additions and hair extensions since 2007, which is way before Solpia Kenya registered the trademark and entered the beauty field of business.

The High Court in making its ruling dismissed Solpia’s application stating as follows:

“In the circumstances of this case, and the fact that evidence of use anterior has been presented, the test of balance of convenience is most apt; the balance of convinience tilts in favour of refusing the injunction and asking parties to prosecute their respective cases in the trial without delay.”

In arriving at its finding, the learned judge emphasised that the right under section 7 of the Trade Marks Act is not absolute; it is subject to exceptions in particular section 10 of the Act which provides that registration of trade mark does not entitle the proprietor of the trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior.

A copy of the full ruling is available here.

Judicial Review of Anti-Counterfeit Seizures: High Court Judgment in the ‘Omega Dustless Chalk’ Case

omega dustless chalk

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti Counterfeit Agency & 3 others Ex-parte Omega Chalk Industries (1993) Limited & another [2015] eKLR. Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited (“the applicants”) sought orders orders of prohibition, certiorari and mandamus against the Anti-Counterfeit Agency (ACA) with respect to seizures made of goods bearing the alleged infringing mark ‘Omega Dustless Chalk’ registered by Omega School Boards and Accessories Limited (“the interested party”). The court dismissed the application in its entirety rightly noting that section 25(3) of the Anti-Counterfeit Act provides an “alternative remedy which is more convenient and appropriate for the resolution of the issues” raised by the applicants relating to the alleged wrongfulness of the seizure by ACA.

A copy of the judgment is available here.

In the judgment, the court held that the “court of competent jurisdiction” referred to under section 25 of the Act cannot be a “judicial review court” since the court “is not the court empowered to deal with merits” and that such a court “would not be entitled to quash a decision made” by a court “merely on such grounds as the decision being against the weight of evidence” or that the court “in arriving at its decision misconstrued the law” or that the court “believed one set of evidence as against another” or that the court has “ignored the evidence favourable to the applicant while believing the evidence not favourable to him”.

Some IP enthusiasts will recall the ruling of the Registrar of Trade Marks In the Matter of Trade Mark No. KE/T/2008/63557 “OMEGA SCHOOL BOARDS AND ACCESSORIES” (WORDS and DEVICES) in Class 16 in the Name of Omega School Boards and Accessories Limited and Expungement Proceedings Thereto by Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited delivered on August 28, 2013 where it found that the interested party as above had a valid and legal claim to the mark “OMEGA SCHOOL BOARDS AND ACCESSORIES” before applying to register the same in accordance with the provisions of section 20(1) of the Trade Marks Act. Furthermore the Registrar found that the applicants as above did not qualify as aggrieved persons in accordance with the provisions of section 35 of the Trade Marks Act. Therefore the Registrar dismissed the application for expungement of the interested party’s mark by the applicants.

Uganda: Court Awards 400 Million Shillings for Contempt of Court in Trade Mark Infringement Suit

MEGHA INDUSTRIES ROYALFOAM MATTRESS SCREENSHOT COMFOAM PASSING-OFF INFRINGEMENT UGANDA

This blogger has come across a recent judgment from the Commercial Division of the Ugandan High Court in the case of Megha Industries (U) Ltd v Comfoam Uganda Limited [2014] UGCOMMC 162 relating to alleged infringement by Comfoam of cover designs on mattresses registered under the trade mark “ROYALFOAM” by the Megha. Coincidentally, many readers of this blog will note that the expression "going to the mattresses" used in the classic 1972 movie The Godfather, is a euphemism that means “going to war”. So, Megha went to war over its mattresses and Comfoam admitted to passing off Megha’s goods so the parties entered into a consent judgment on 03.02.12, which was sealed by the court on 17.02.12. By the consent decree, a permanent injunction was issued restraining Comfoam, its agents or servants from passing off its goods as Megha’s ROYALFOAM brand of mattresses. The injunction also restrained Comfoam from further producing and or manufacturing mattresses with the infringing mattress cover design the subject of the suit. In the course of the court case, Megha was able to successfully prove that Comfoam’s mattress cover designs were similar to that of Megha’s mattress cover design.

However, in the present case, Megha contended that in total disregard of the consent judgment, Comfoam has continued to manufacture the mattresses using covers similar to its own. Megha further pointed out that an interim order issued by court on 08.07.14 restraining Comfoam from continued passing off of its mattresses as those of Megha had been disregarded hence its prayer that Comfoam be found in contempt of court. In its defence, Comfoam admitted that parties reached a settlement and entered a consent judgment and in obedience to the judgment immediately stopped manufacturing the offending mattresses, changed their designs and registered Trade Marks on them and are lawfully producing mattresses with their covers under the lawfully registered trademarks and are therefore not in contempt of court orders. Comfoam argued that the order did not prohibit them from manufacturing mattresses per se but prohibited them from manufacturing or selling or passing off its mattresses as those of Megha.

In arriving at its finding that Comfoam were in contempt of court orders, the court observed that the mattresses covers by Comfoam were very similar to those of Megha in design and color and the only difference is that Comfoam’s covers bore its own company name. The court’s ultimate decision was as follows:

The application is allowed for all the reasons set out herein and the following orders are made:-

1. A suspended sentence of six months committal is to be meted out to the Directors of the Respondent Company, if the acts that were forbidden by court in the consent order persist.

2. Exemplary damages of shs. 300,000,000/- are awarded to the Applicant Company with payment of interest at court rate from date of this ruling till payment in full.

3. The sum of shs. 100,000,000/- is awarded against the Respondent as a penalty for contempt of court orders in Civil Suit 269/2011. The sum is to be deposited in court.

4. The mattresses with the infringing cover design shall be removed from the market for destruction with the assistance of police following the procedures set out in the Trade Marks Act, upon failure of which a writ of sequestration will issue.

5. Taxed cost of the application are also granted to the Applicant.

A copy of the full judgment is available here.

Inching Closer to Plain Packaging: Pictorial Health Warnings and Tobacco Trade Marks in Kenya

James Macharia Health Cabinet Secretary Kenya Tobacco

This blogger has come across Legal Notice No. 169 dated December 5, 2014 which states that the Cabinet Secretary for Health (pictured above), in exercise of the powers conferred by section 53 of the Tobacco Control Act, 2007 has made the Tobacco Control Regulations, 2014 which will come into operation six months from December 5, 2014. A copy of the Legal Notice and the Regulations are available here and here respectively.

Section 8 of the Regulations, whose short title reads: “prohibition on certain product descriptions”, is noteworthy and states as follows:

“8. A person shall not manufacture, sell, distribute, or import a tobacco product, for sale in Kenya, whose package carries a name, brand name, text, trademark or pictorial or any other representation or sign which suggests that the tobacco product is less harmful to health than other tobacco products.”

This section must be read with other sections in Part II of the Regulations on “Packaging and Labeling”:

3. (1) A person who manufactures, sells, distributes or imports a tobacco product shall ensure that every package containing the tobacco product bears warning labels and information required under section 21 of the Act and specified in the Schedule to the Act and the corresponding pictures and pictograms set out in First Schedule.

(…)

4. (1) No person shall manufacture, sell, distribute, or import a tobacco product, device or any other thing that is intended to be used to cover, obscure, mask, alter, or otherwise detract from the display of specified health warnings and messages including pictures and pictograms under the Act or these Regulations.

(…)

5. Where the health warnings and messages including pictograms that are required to be printed on packages are likely to be obscwed or obliterated by a wrapper on the package, the manufacturer, seller disfibutor or importer of the tobacco product shall ensure that the health warnings and messages shall be printed on both the wrapper and the packet.

(…)

6. (1) The manufacturer, seller, distibutor or importer of a tobacco product shall ensure that the specified health warnings and messages including pictograms required under these Regulations are rotated in accordance with section 21 (3) of the Act.

(…)

7. (1) The health messages required under these Regulations on all packages shall be in the form of a text message specified in the Schedule to the Act and a prescribed pictorial message set out First Schedule.

(…)

The Regulations appear to be made in compliance with the World Health Organisation Framework Convention on Tobacco Control (WHO FCTC) reaffirms the right of all people to the highest standard of health and represents a paradigm shift in developing a regulatory strategy to address addictive substances.

The Convention itself does not deal with intellectual property associated with tobacco packaging, particularly trademarks. Of relevance for this discussion is Article 11, which requires of countries to adopt effective measures to ensure:
(i) that tobacco product packaging and labelling do not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics, health effects, hazards or emissions; and
(ii) that any outside packaging and labelling should carry health warnings that should be 50 per cent or more of the principal display areas.

And then there are Guidelines. These provide that countries “should consider adopting measures to restrict or prohibit the use of logos, colours, brand images or promotional information on packaging other than brand names and product names displayed in a standard colour and font style.”

In this connection, the First Schedule of Kenya’s new Tobacco Regulations contains a “list of prescribed health warnings and messages including corresponding pictograms” which must be displayed on every package. These include the following:

tobacco regulations kenya pictorial warning 4

tobacco regulations kenya pictorial warning 3

tobacco regulations kenya pictorial warning 2

tobacco regulations kenya pictorial warning 1

To the relief of Big Tobacco, Kenya seems to have decided against requiring plain packaging: black and white or two other contrasting colours; nothing other than a brand name, a product name and/or manufacturer’s name; and no logos.

Be it as it may, this blogger submits that these Regulations will have the drastic impact of removing the last space for tobacco advertising (i.e. the packaging), reducing the incidence of smoking and thus diminishing the industry’s power to recruit new smokers. Readers of this blog will recall our previous article here on the constitutional and intellectual property arguments around tobacco plain packaging.