Industrial Design Protection in Kenya: The Case of SafePak Plastic Bottle Manufacturing

Safepak Ltd Kenya Bottles Industrial Design

In the recent case of Safepak Limited v Power Plast Industries Limited [2014] eKLR, Safepak applied to the High Court for an interim injunction restraining Power Plast from infringing Safepak’s Industrial Design registered as number 646 by the Kenya Industrial Property Institute (KIPI). Power Plast opposed the application on the grounds that Safepak had failed to meet the threshold of injunctive relief by not putting up a prima facie case with a probability of success.

Havelock J. sitting in the High Court found in favour of Safepak and stated the following:

In my view, the Plaintiff [Safepak] is entitled to statutory protection as regards its bottle product. I do not consider that damages will in any way compensate the Plaintiff for any sales losses that it may incur as regards its bottle products, if a temporary injunction was put in place. In any event, any such damages would be impossible to ascertain. As a result and in the circumstances, I find that the Plaintiff is deserving of an interlocutory injunction at this stage. I find that it has made out a prima facie case with a probability of success in accordance with the principles expounded in the binding authority of Giella v Cassman Brown (1973) EA 358.

In making the above ruling, the High Court agreed that KIPI only dealt with matters of registration and had no jurisdiction over infringement. On the question of infringement, Havelock J. adopted the reasoning that if only small differences separated the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement. However this is not to say that a party is entitled to reproduce by way of small alterations and/or differences a particular design instigated and registered by a party. The subsequent design must possess some features to enable a person that it is completely and substantially different from the earlier design. The design and the rights conferred by registration is to prevent the manufacture and sales of the same bottles or similar bottles from the registered design. The emphasis there is on the visual image conveyed by the manufactured article.

Safepak Limited Registered Design No. 646 2011

An interesting argument made by Power Plast was that by commencing both opposition and infringement proceedings at KIPI and the High Court respectively, Safepak’s actions were monopolistic and amounted to unfair competition. Power Plast alleged that Safepak had successfully eliminated other plastic bottle manufacturers from the market by taking out similar suits in order to restrict entry thereto by other parties. The learned Havelock J. appears to dismiss this argument by expressing his doubts at paragraph 13 of the ruling. However, as a matter of interest, this blogger has prepared a comprehensive review of previous intellectual property (IP) disputes raised by Safepak brought against at least four different manufacturers of plastic bottles within Kenya.

The earliest reported IP matter involving Safepak is the case of Safepak Limited v Malplast Industries Limited [2007] eKLR. The fact of this case were similar to the Power Plast case above. Safepak applied to the High Court for prohibitive injunctive orders to restrain the Malplast from manufacturing and distributing bottles which Safepak claimed infringed its design registered as No. 385 on September 26, 2003. The court ruled in favour of Safepak and granted the injunctive orders sought. In its ruling, the learned court considered that Malplast was a late entrant in the market and that it’s bottle design was substantially similar to Safepak’s registered design.

Subsequently, there’s another reported matter involving Safepak and Malplast namely, In the matter of an opposition against the Industrial Design Application No. KE/D/2009/00940 decided on November 9, 2012. Safepak filed a notice of opposition against the registration of Industrial Design Application No. KE/ID/09/00940 entitled “Juice Bottle” in the name of Malplast. The KIPI Managing Director ruled that Malplast’s design lacked novelty in light of the existence of the prior art design application No. 539. The Managing Director noted that while industrial design law does not require that an industrial design be made up entirely of new features and, in fact that a design can be registrable even if it is composed of already existing features, in the present case, the features of Malplast’s design do not confer it with sufficient individual character to make it registrable. Safepak has subsequently enjoyed similar success in opposition proceedings against another plastics manufacturer, namely Dynaplas Limited as per In the matter of an opposition against the Industrial Design Application No.KE/ID/2010/001069.

In the case of Nairobi IPT No. 36 of 2002, General Plastics Ltd, which was requesting the Industrial Property Tribunal (IPT) to revoke Safepak’s design, found additional evidence that Safepak’s design had been registered in other countries around the world. General Plastics therefore sought to adduce this new evidence on the grounds that the evidence would demonstrate that the industrial designs in dispute had been anticipated by prior art. This evidence according to General Plastics would influence the outcome of the case. Safepak opposed this move and argued that there had been inordinate delay in bring the evidence and that the matter was res judicata. According to Safepak, it would be an abuse of the Court process if fresh evidence was admitted since the application has been filed nine and a half years after revocation proceedings were filed. The IPT held that there was no res judicata issue arising in the case. The Tribunal allowed further evidence to be admitted and stated that the decision is in furtherance of the doctrine of natural justice. The IPT stated that the Applicant had sufficiently demonstrated that there was no intentional delay on their part and they took all necessary steps to file the motion immediately upon receiving the new piece of evidence. The IPT further affirmed its decision by stating the provisions of the constitution that require judicial authorities to administer justice without undue delay on account of technicalities.

Thereafter, in the case of Safepak Limited v General Plastics [2012] eKLR, Safepak filed an appeal in the High Court against the IPT’s ruling allowing General Plastics to file further evidence in the above matter which seeks the revocation of the registration of Safepak’s Industrial Design No. 186. The High Court granted Safepak’s application as General Plastics stood to suffer little or no damage or loss as a result of the stay being granted. In addition, General Plastics would continue to benefit by continuing to use its unregistered Industrial Property Design in competition against Safepak’s registered Design No. 186.

Returning to the Power Plast case above, many may recall that Havelock J. previously presided in another case involving Safepark namely: Safepak Limited v Asili Plastics Limited [2013] eKLR. In this case, Asili filed a Notice of Preliminary Objection stating that the High Court lacked the requisite jurisdiction to entertain Safepak’s infringement suit in light of sections 106, 113 (1) and 115 (1) of the Industrial Property Act. However, the learned court found that Safepak it could institute court proceedings under section 92 (3) of the Act against any person, in this case Asili Plastics, who infringes its industrial design being ID No. 646 and therefore the High Court has jurisdiction.

In sum, Safepak is no stranger to the world of IP enforcement and has enjoyed a successful track record of protecting its industrial designs. Safepak’s commercial monopoly lies in the shape, configuration and/or pattern of the bottles it has registered and these exclusive rights are enforceable by both the Industrial Property Tribunal and the High Court.

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Intellectual Property Rights Protection and Brasil 2014 World Cup Fever in Kenya

FIFA WORLD CUP BRASIL 2014

In fourteen days time, the Brazil 2014™ FIFA World Cup™ (WC) kicks off in the South American nation of Brazil! As many readers may know, the WC is a Fédération Internationale de Football Association (FIFA) event embodied in the FIFA Statutes. As one of the largest single sports events and most-watched competitions on earth, the WC enjoys phenomenal interest from sports fans and the business world alike. From an intellectual property (IP) perspective, FIFA has developed and protected an assortment of logos, words, titles, symbols and other trade marks to be used in relation to the 2014 FIFA World Cup™ (the Official Marks). In order to attract funding to stage such a large event, FIFA offers its partners, sponsors and supporters the exclusive rights to use of the Official Marks for promotional and advertising purposes. The full picture of WC partners, sponsors and national supporters is available below:

FIFA WORLD CUP BRASIL 2014 PARTNERS SPONSORS SUPPORTERS

Therefore, according to FIFA, the protection of the exclusive rights is crucial for the funding for the 2014 FIFA World Cup Brazil™ and therefore non-affiliated entities are asked to respect FIFA’s intellectual property (IP) and conduct their activities without commercially associating with the 2014 FIFA World Cup™

Read the full article here.

High Court Orders Stay of Tribunal’s Invalidation of Sanitam Sanitary Bin ARIPO Patent No. 773

Sanitary waste disposal bin. US 2593455 A. Images. Patent Drawing

In the recent case of Sanitam Services (E A) Ltd v Rentokil (K) Ltd & another (K) Ltd [2014] eKLR, the High Court has issued a stay order against the ruling of the Industrial Property Tribunal (IPT) delivered on 21st January 2014 which invalidated with costs on the higher-scale Sanitam’s Patent Number AP 773 registered with the African Regional Intellectual Property Organization (ARIPO) on 15th October 1999.

H.P.G Waweru, J ruled that Sanitam was entitled to the stay pending hearing and determination of its appeal in accordance with section 115 (1) of the Industrial Property Act, 2001 (IPA) which provides –

“(1) Any party to the proceedings before the Tribunal may appeal in accordance with the rules made under this Part from any order or decision of the Tribunal to the High Court..”

In making his ruling, the learned judge examined the effect of invalidation of Sanitam’s patent as provided in Section 104 of the IPA Act, which reads:

“104. Effect of revocation or invalidation

1)Any revoked or invalidated patent, utility model or industrial design or claim or part of a claim of a registered industrial design shall be regarded as null and void from the date of the grant of the patent or certificate of registration of the utility model or the industrial design.

2)As soon as the decision of the Tribunal is no longer subject to appeal, the Chairman of the Tribunal shall inform the Managing Director who shall register and publish it as soon as possible in the Kenya Gazette or in the Industrial Property Journal.”

The court found that the implied effect of s104(2) was that an appeal to the High Court would act as a stay of registration and publication of the decision of the Tribunal in the Kenya Gazette or the Industrial Property Journal. Therefore all Sanitam needed to do was to inform the Chairman of the Tribunal that it had appealed against its order of 21st January 2014 and provide evidence of such appeal.

The court stated as follows:

“Upon a closer look at that wording of section 104(2), there cannot be any doubt that the intention of the legislature was that an appeal once duly lodged, and as long as it remains undisposed of, shall operate as a stay of the decision of the Tribunal, which decision may not be registered or published in the Kenya Gazette or the Industrial Property Journal pending disposal of the appeal.”

However the court allowed Sanitam’s application for a stay as it was necessitated by the fact that the wording of section 104(2) was not express enough and therefore Sanitam made the application ex abundante cautela i.e. out of abundance of caution.

Therefore the focus now shifts to the High Court who will review the decision of the IPT in Nairobi IPT Case No. 5 of 1999. In this matter, Rentokil Initial (K) Limited and Kentainers (K) Limited (the requesters) applied for revocation of the sanitary bin patent by Sanitam (the respondent) on two main grounds:-

1. The subject matter of the invention lacked novelty as it was anticipated by prior art and available for public use. In this regard, the requesters argued that the patent was a mere adaptaion or replica of products which were at the time of grant already in the market in Kenya and elsewhere in the world for a considerable number of years.

2. The subject matter of the invention was obvious and lacked an inventive step.

On its part, the respondent opposed the requesters’ application on the following grounds, as summarised by the IPT:

1. That ARIPO whose mandate extends to Kenya must have considered competing applications or oppositions before registration of the patent in issue.

2. That in spite of the requesters having been notified of the impending application before ARIPO, they did not take any action in opposition thereto and therefore should be stopped from taking the present action.

3. There are no valid grounds in law or in fact to support the present application for revocation.

According to the IPT, several issues arose for determination:

“i) What are the powers of the Tribunal in an application for revocation or infringement
ii) Whether the invalidity of the registration of a patent can be a defence to a claim for infringement
iii) When can the decision of registration of a patent be revoked
iv) What is the test of prior art and what geographical span is applicable”

With respect to (i), (ii) and (iii), we find it curious that the IPT would set out to determine issues that are already clearly provided in the law.

With respect to iv), the IPT stated as follows on the issue of prior art:

“The Applicant [requesters] in their quest to demonstrate that the patent is anticipated by prior art has exhibited other very similar design No. 2042739 in use as far back as 1994. The shape and design of the exhibit is remarkably similar if not the same as the Respondent’s registered patent. The design was demonstrated to be in existence well before the Respondent applied to register the patent.”

However we are puzzled that the IPT failed to conduct any comparison of the respondent’s claims against those of the prior art. In this connection, the IPT also seemed to suggest that the patent examiner ought to have been called by the Respondent to explain whether in light of design No. 2042739 the examiner would still consider the patent as new and not anticipated by prior art. This would be akin to a Magistrate being required to explain his/her decision at the High Court!

Nevertheless, the IPT maintained that it was incumbent upon the respondent to distinguish its patent from the design no. 2042739 and particularly demonstrate an inventive step and research done to rule out existence of prior art.

In this regard, the IPT observed as follows:

“The Respondent seems to argue that the examiner’s decision is what matters and that only an expert can determine the similarity or otherwise of the designs with regard to prior art… They have neither offered any evidence to demonstrate that an attempt was made to establish that the patent was not anticipated by prior art or made any submissions as ordered…The Respondent instead focused their energies and arguments on challenging the jurisdiction of the Tribunal to hear the matter by filing up to Five (5) applications in the High Court…which were duplications of the same prayers and suffered the similar fate of failure. It was in this diversionary trend that the Respondent probably failed to even file affidavit evidence or submissions in the very matter that mattered most to its patent namely these proceedings.”

From the above, the IPT went on to find that there was indeed evidence that the Respondent’s patent was anticipated by prior art in the form of Design No. 2042739 and that the Respondents failed to demonstrate otherwise.

Although the IPT’s ruling was hard to follow at times and wrought with numerous discussions of irrelevant considerations, the decision to revoke Sanitam sanitary bin patent AP773 is now being heard on appeal before the High Court and we shall update readers on the progress and outcome of the case. In the meantime, our review of the previous cases involving Sanitam’s patent is available here.

#ipkenya Weekly Review (18th-25th May, 2014)

gado cartoon anglo fleecing corruption AG

Since our last weekly review, the Minister in charge of Copyright and Related Rights in Kenya namely, the Attorney General has under siege for his alleged involvement in the Anglo Leasing contracts scam. This blogger has the full story here. As always, your comments are invited.

Meanwhile in the intellectual property (IP) world, here are some of the top news and views from Kenya and beyond:-

– OpenAIR presents its findings at WIPO Seminar on Intellectual Property & the Informal Economy [WIPO YouTube]

– Copyright Society of Nigeria signs historic royalty agreement with 400-member umbrella body for broadcasters [COSON]

– No More Substantive Examination of Utility Models in Kenya [AfroIP]

– Hidden Treasure and the New Colonialism: Why South Africa Must Protect Its Intellectual Property [SACSIS]

– Nigeria: Nollywood from an intellectual property perspective [WIPO Magazine]

– Kenya: The Maasai ‘Shuka’ Has Evolved Into A Brand [The Star]

– South African Tech firms can now transfer intellectual property offshore [TechCentral]

– Tanzania: Copyright Society and Revenue Authority devising a banderole system for copyright administration [TZ Daily]

– Nigerian Economy Loses N82 Billion Yearly to Software Piracy – BSA [Daily Independent]

– Kenya: The First Thing We Do, Let’s Kill All The Lawyers [BrainstormKE]

– IP Rights and Digital Content: Kenya’s New Headache [ModelEmployee254]

WIPO Plan for the Next Six Years: Protection of Traditional Knowledge and Rights of Broadcasting Organisations

Dr. Marisella Ouma of Kenya Copyright Board (KECOBO) at WIPO. KECOBO is the lead state agency on protection of broadcasting organisations and  traditional knowledge at domestic and international levels.

Dr. Marisella Ouma of Kenya Copyright Board (KECOBO) at WIPO. KECOBO is the lead state agency on protection of broadcasting organisations and traditional knowledge at domestic and international levels.

Earlier this month, Dr. Francis Gurry gave his acceptance speech following his successful re-election as World Intellectual Property Organization (WIPO) Director General. In this speech, Gurry outlined clearly the focus of his second term. His speech stated in part:

I believe that the successful conclusion of the Beijing and Marrakesh Treaties shows us that it is easier to reach a shared understanding on specific issues, where there is a demonstrable and manageable need for international action, than to achieve a shared understanding across the whole range of intellectual property, which now underlies most economic and cultural activities. As we go forward on such specific issues, it will be important that the agenda address the interests of all sides of the multilateral equation. This means that the Organization must be able to address both the high end and the low end of technology. In concrete terms, for example, the Organization must achieve successful outcomes both on broadcasting and on traditional knowledge, traditional cultural expressions and genetic resources.

Read the full article here.

Unanswered Copyright Issues as Musician JB Maina Agrees to Sh15.5m Settlement with Safaricom

jb-maina

Media reports here and here indicate that musician JB Maina has accepted Safaricom’s out-of-court settlement offer of KES 15.5 Million in the case of John Boniface Maina v Safaricom Limited [2013] eKLR. To recap briefly, the JB Maina case has been in court since 2010 when Safaricom was accused of copyright infringement in respect of musical works of JB Maina alleged to have been uploaded on Safaricom’s portals, particularly its caller ring back tone service known as ‘Skiza’.

Prior to the reported settlement, the court had already granted JB Maina a temporary injunction restraining Safaricom from dealing in JB Maina’s works, in addition to awarding JB Maina the costs of the motion to be paid by Safaricom. Thereafter the court allowed JB Maina’s application for Anton Piller orders against Safaricom. These orders allowed JB Maina to enter Safaricom’s premises, inspect its machines, take records, make copies of records for purposes of gathering and preserving evidence necessary to prove his claim of copyright infringement. The final straw in the JB Maina case was an application filed by JB Maina for Safaricom Chief Executive Officer to be held in contempt of the anton piller orders issued by the court and committed to civil jail. This move prompted Safaricom to seek the leave of the court to allow for an out-of-court settlement of the suit with JB Maina.

With above information in mind, it comes as no surprise that Safaricom would be keen to pursue and conclude an out-of-court settlement in this matter with JB Maina. However this blogger argues that this settlement has left several critical issues unanswered:

1. The Separation of Infrastructure Provision from Content Provision

In this regard, Safaricom’s position has always been that it is an infrastructure provider that enables rights owners and their licensees to avail their music to end users. In the present case, the licensees are Content Service Providers (CSPs) who are duly licensed by the relevant collective management organisations (CMOs) to avail music. In this regard, Safaricom maintains that where licensed CSPs provide music using Safaricom’s infrastructure, it is enough that the CSPs produce to Safaricom all the required copyright licenses issued to it by the CMOs. It is on this basis that Safaricom enters into Content Provision Agreements (CPAs) with CSPs whereby the latter undertake to obtain all necessary licenses, rights of use, assignment and approvals from any relevant authorities and copyright owners for the provision of the Content and ensure that such licenses and approvals are updated and valid throughout the term of the CPAs. Critically, the CPAs state that CSPs undertake to defend and/or settle all intellectual property (IP) infringement claims brought against Safaricom and keep the latter fully indemnified.

In light of the above, Safaricom argue that as an infrastructure provider, it need not be licensed by CMOs or rights owners since the CSPs availing the music to end users are already licensed by CMOs and/or rights owners.

However, this blogger contends that the above argument is problematic for two main reasons, namely it betrays the widely accepted understanding of “communication to the public” and “infringement” under domestic and international copyright laws. In this regard, it is submitted that both functions of infrastructure provision and content provisions entail an exploitation of the right of communication to public and/or making available as defined under Article 8 of the WIPO Copyright Treaty and Section 2 of the Kenya Copyright Act. With regard to the issue of infringement, section 35 clearly contemplates two levels of infringement namely primary and secondary or direct and indirect. It is submitted that Safaricom may be liable for secondary or indirect copyright infringement as an infrastructure provider since it causes to be done or furthers the doing of an act which is controlled by the rights owners.

2. The Role of Content Service Providers

Safaricom advances two main reasons why it is averse to dealing directly with rights owners like JB Maina. Firstly, it argues that under the Kenya Information and Communication Act (KICA) read together with the Unified Licensing Framework gazetted in 2008, only CSPs who hold a current license from the Communications Authority of Kenya (CAK) are mandated to provide music to end users. Therefore Safaricom would only deal with CSPs and/or rights owners once they are duly licensed by CAK. Secondly, Safaricom appears to suggest the current arrangement of CSPs as middle-men is consistent with the provisions of the Kenya Competition Act i.e. preventing the monopolisation of content provision by a handful of CMOs or rights owners.

This blogger argues that this arrangement do not always work to the advantage of CMOs and rights owners since the CSPs are at liberty to under-state royalty payments received from Safaricom. Therefore, rights owners like JB Maina and CMOs like MCSK, KAMP and PRiSK must insist on dealing directly with Safaricom or at least having tripartite agreements where the copyright owners can be on the same level as the CSPs.

It is clear that JB Maina’s case raised important issues regarding rights owners that are not members of any of the music CMOs. However there are two other likely scenarios that would require Safaricom to deal directly with a rights owner. Firstly, where the rights owner is a member of a CMO but has selectively limited its assignments to the latter and/or the works to be administered by the latter. Secondly, where the rights owner has assigned all rights exclusively to both the CMOs and the CSPs (A frequent occurence!).