For the Second Time, Sony Trade Marks Case Goes to the Court of Appeal

SONY CYPyJGaWEAIOGvM

Since 2014, we have chronicled on this blog here, here and here an interesting trade mark dispute in Kenya between local company Sony Holdings and Japanese electronics maker Sony Corporation. This blogger is reliably informed that an appeal has already been filed in the Court of Appeal against last month’s decision of the High Court in the reported case of Sony Corporation v Sony Holding Limited [2018] eKLR. In order to discern the likely grounds of appeal, it is important to consider this recent judgment made by the High Court.

Continue reading

Advertisements

#ipkenya Weekly Dozen: 01/06

Nigeria World Cup Nike Kit Sold Out 2018

  • Nigeria’s World Cup kit sells out in 15 minutes [BBC]
  • Rwanda’s £30m Arsenal sponsorship divides opinion [The Guardian]
  • Uganda imposes tax on social media use [Reuters]
  • Cameroon: 3rd Meeting of the ARIPO-OAPI Joint Commission on Intellectual Property [In French]
  • Tanzania: AY and Mwana FA awarded Sh96 million against telco giant [SDE]
  • Court rules SONY is not a well-known brand in Kenya [Business Daily]
  • Music Copyright Society of Kenya Now Banned from Collecting Music Royalties [Captain Obvious]
  • New South African IP Policy Text Now Available [Official]
  • Some concerns on advertisements in Ethiopia [The Herald]
  • Running the gauntlet: making wise patenting decisions [Dennemeyer IP Blog]
  • MaXhosa v Zara [Stellenbosch IP Chair]
  • Winners of the 2017 ATRIP Essay Competition Announced [ATRIP]

For more news stories and developments, please check out #ipkenya on twitter and feel free to share any other intellectual property-related items that you may come across.

Have a great week-end!

Incidental Use and Copyright Exhaustion: High Court Ruling in Nairobi Map Service v Celtel Kenya (Zain Kenya)

celtel map kenya africa

 

After 7 years in court, a judgment was recently delivered in the case of Nairobi Map Service Limited v Celtel Kenya Limited (Zain Kenya) & 2 others [2016] eKLR in which Nairobi Map sought to have the defendants namely Celtel/Zain Kenya (now Airtel Kenya), Z.K Advertising Kenya and the Sound and Picture Works company held liable for copyright infringement of a copyrighted map known as ‘Kenya Administrative Map’ which was included in the ‘Zain Coverage’ advertisement televised in August 2009.

According to the court there were 3 issues to determine namely: (1) whether the Plaintiff has copyright in the map known as ‘Kenya Administrative Map’; (2) If issue No. 1 is in the affirmative, whether all or any of the Defendants have infringed the Plaintiff’s copyright in the said map; and (3) Whether the Plaintiff is entitled to damages as prayed, from the Defendants or any of them.

Continue reading

How A Typo Cost Safaricom the “OKOA STIMA” Trade Mark in Favour of Colour Planet

okoa stima safaricom colour planet trademark case

Recently, a leading newspaper published a story here stating that Safaricom Limited had obtained interlocutory orders against Colour Planet Limited stating that the latter was “forbidden from interfering with any contracts Safaricom has under the banner Okoa Stima, suggesting to any third party that Safaricom does not have the right to use the name Okoa Stima.” The rest of the story is filled with several contradictory and confusing facts regarding trade mark searches made, trade mark applications filed and trade mark registrations with respect to the Okoa Stima mark by both Safaricom and Colour Planet.

This blogpost is intended to set the record straight on the specific issue of the chronology of events at the Trade Mark Registry of Kenya Industrial Property Institute (KIPI) involving both Colour Planet and Safaricom between March 2015 and January 2016. For intellectual property (IP) practitioners, this post may also serve as a cautionary tale on the importance of care and caution when handling your clients’ matters pending before KIPI.

Continue reading

All Eyes on Standard Bank as Barclays Bank “PRESTIGE BANKING” Trade Mark Published

Prestige Banking Trade Mark Barclays Standard Bank

The image above is a collage of screenshots from the websites of Standard Bank and Barclays Bank showing that both banks have banking products/services branded with the identical words: “Prestige Banking”. In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 79424 “PRESTIGE BANKING” (WORDS) by Barclays Bank PLC on pages 10-12 of the August 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Standard Bank to oppose the registration of this mark by Barclays Bank, if it so wishes.

In this regard, Standard Bank would also wish to consider the recently published ruling of the Registrar of Trade Mark in the matter referenced as In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING., 6th February 2015. In this ex parte hearing, Barclays appeared before the Registrar to challenge the latter’s decision to reject Barclays’ applications for “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) for being similar to the mark SMA NO. 2976 “PRESTIGE PLAN” (WORDS AND DEVICE) in the name of the Standard Bank of South Africa with respect to services of a similar description and character as those in respect of which the applications by Barclays had been made. A copy of the ruling is available here.

Continue reading

Image Rights, Privacy and Related Rights in the Workplace: High Court Case of Sikuku v. Uganda Baati

Circled: Sikuku, maybe.

Circled: Sikuku, maybe.

“The persons who created and did the video shooting or who employed the person who carried out the work of shooting the photos and video is/are the authors or author of the works. The exact relationship between an author and a person having neighbouring rights has to be clear and not hazy. A photographer who films activity in a market might not require permission of everybody in the market to publish or use the works.” – Madrama J. at page 15.

This blogger has come across a recent High Court decision of Sikuku v. Uganda Baati HCCS No. 0298 of 2012 before the very able Honourable Justice Mr. Christopher Madrama, whose decisions we have previously discussed here and here. A copy of the present judgment is available here. Sikuku, a long-time employee of Uganda Baati claimed that the latter was unfairly benefiting from the use of his images in Uganda Baati advertisements presented in both photographic and audio-visual forms to the public. Sikuku sought an order for the payment of Uganda shillings 150,000,000/= as “usage fees” from Uganda Baati. Sikuku contended that his employer had infringed his rights under the Uganda Copyright and Neighbouring Rights Act as well as the Constitution of Uganda. The court dismissed Sikuku’s entire case against Uganda Baati. The learned Madrama J. found that Sikuku does not qualify to have neighbouring rights as protected by the Copyright and Neighbouring Rights Act 2006. Further, the court found that Sikuku has not proved unlawful interference with his constitutional right of privacy under article 27 by Uganda Baati.

This blogpost discusses the Uganda High Court’s treatment of the intersecting issues of image/privacy rights, and neighbouring rights as they arose in the Sikuku case. Ultimately, this blogpost finds that this case is instructive for participants both behind and infront of the camera lens.

It is not disputed that Sikuku appears in photos used in Uganda Baati’s in-house SAFAL magazine and the Contractors Year Planner. It is also not disputed that Sikuku appears on audiovisual adverts commissioned by Uganda Baati which were broadcast on several television stations including WBS and NTV. However the court had to determine whether or not these “appearances” amounted to “performances” as defined in copyright law and by extension, whether Sikuku fell within the definition of a “performer”.

A “performer” under section 2 of the Uganda Copyright and Neighbouring Rights Act is defined to include an:

“actor or actress, singer, musician, dancer or other person who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore.”

Madrama J. in his judgment states that Sikuku cannot be a “performer” under the Act. His reasoning is thus:-

“The evidence demonstrates that the Plaintiff [Sikuku] was going about his business when he was filmed and photographed. He was not required to pose for the photograph or for the filming though they had been given new uniforms for the occasion. He was filmed and photographed in the ordinary course of his performance as a worker. (…) From the definition under the Copyright and Neighbouring Rights Act the Plaintiff is not an actor because he was filmed and photographed in the ordinary course of his work as an Employee of the Defendant. (…) the Plaintiff is not a performer whose action was deliberate so as to be a necessary ingredient of the works complained about and which ought to be paid in terms of performance fees (…) It is debatable whether the advertisement prominently portrays the Plaintiff’s photo or actually displays the Defendant’s products together and incidentally with the workers engaged in the work of production of the products using the machinery. The plaintiff is not at all the major or main feature of the advertisement. (…) The Plaintiff is not an artist and he was not bringing special skills so as to properly present the Defendant’s products. He was merely going about his business when he was filmed.”

On this point, this blogger concurs with the judge’s careful consideration of the definition of “performer”. Sikuku’s role in the audio-visual work cannot be likened to that of an extra in a movie or other production. While it is clear that Sikuku may fall within the category of “other person who acts, sings, delivers, declaims, plays in, interprets, or otherwise performs”, the missing part appears to be the subject matter of the “performance”. In the case of an extra, there is a script and an assigned role given to each “performer” such as “workman #1 operating heavy machine”, which would appear in the movie credits at the end of the movie.

On the issue of image/privacy rights, the court provides a useful analysis of the privacy clause in the Constitution of Uganda, which closely mirrors the privacy article in Kenya. In finding that there was no infringement of privacy rights, the court correctly reasoned as follows:-

“The court should consider whether photos of Employees taken in the course of their employment showing them at work cannot be used by the Employer for purposes of advertisement without consent or payment of consideration. The plaintiff should demonstrate that the filming or photo was taken in a private moment such us when eating or resting. Such a conclusion should be based on the terms of the contract. In the absence of the terms of any contract excluding an Employer from publishing photos and audio visual works of products including members of staff in a factory carrying out their work, the Plaintiff has no case presented before the court. As far as the rights to privacy is concerned, someone who works in a factory as contained in exhibit P1 and P2 cannot claim a right to privacy. The factory is owned by the Defendant and the Defendant can bring in people at any time to inspect the factory thereby excluding the rights to privacy.”