Nairobi Java House Rebranding as Trade Mark Appeal Looms in Uganda

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

Many readers will recall that earlier this year the Registrar of Trade Marks in Uganda ruled in favour of Mandela Auto Spares in a matter filed to oppose the move by Nairobi Java House Limited to register trade marks containing the word JAVA in class 43 (restaurant services). The basis of the Ugandan company’s claim was that it was the registered proprietor of trademark numbers 29297 JAVAS in class 30; 40162, 47765, 47766, 47767 all CAFÉ JAVAS in classes 30, 21, 32 and 43 respectively. A copy of the ruling is available here.

This blogger has learned that Nairobi Java House now rebranded as Java House Africa is in the process of appealing the decision of the Registrar in the Commercial Court. In the meantime, Java House continues its aggressive expansion across East Africa and beyond, according to Reuters.

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“Share A Coke” Campaign in Kenya: Intellectual Property Risk or Marketing Masterstroke?

Share a Coke with IPKenya

Ever since the “Share a Coke” campaign kicked off in Kenya earlier this month, thirsty fans countrywide have been clamouring to find their names on bottles of Coca-Cola. Some have struck gold, while others have left the store empty-handed. As many may already know, Coca Cola’s hugely successful international promotion “Share A Coke” originally started in Australia in 2011 and has since been rolling out around the world, making its African premiere in South Africa towards the end of 2013. This promotion, targetted mainly at teens and millennials, is intended to allow people to take the Coca-Cola script and replace it with their name on a bottle or can of the well-known beverage. For those with less popular or rare names, the digital version of the “Share a Coke” promotion allows users to create a virtual can with their names which is generated in .png format and available for download and social media sharing.

From an intellectual property (IP) perspective, this ‘de-branding’ campaign by Coca Cola is an eye-opener. It is no secret that the Coca-Cola Company has spent billions of dollars registering, protecting and enforcing its IP rights all over the world. For years, “Coca-Cola”, “Coke”, the Contour Bottle Design and the Dynamic Ribbon Device have been registered trademarks of The Coca-Cola Company. Having gone to such lengths to secure its IP rights, the Coca-Cola Company suddenly ditches the iconic “Coca-Cola” name from its bottles and allows the printing of names and other words on its products?!
Clearly, the Sales and Marketing guys in the room overpowered the Legal types when the idea for this ‘de-branding’ campaign was pitched and approved. While it is hard for an IP lawyer to quantify the risks of free-riding, diminishing distinctiveness, dilution and other harm to the Company’s trade marks as a result of “Share A Coke” campaign, the Sales and Marketing guys will have no problem showing how the campaign has boosted sales, provided the Company with enormous amounts of user-generated promotional content and driven traffic to the Company’s web and social media platforms.

This blogger recently visited Kenya’s “Share A Coke” website and created a virtual can, which is pictured above and available online here: https://ke.shareacokeafrica.com/can/Ipkenya. However, when one looks at the Terms of Use on the site available here, there are two IP-related issues which appear not to have been addressed:

1. What happens when a user creates a virtual can which contains a name which is a third party’s IP rights? The Terms of Use on the site ought to clearly prohibit the use of such names otherwise it may end up being held liable. In this regard, Coca-Cola ought to exercise its best discretion in determining which names may be infringing on third party IP rights.

2. What happens when a user makes commercial use of a virtual can without regard to Coca Cola’s IP rights? The Terms of Use ought to clearly state that the cans are for personal use only, including sharing on social media sites. Additionally, the Terms ought to prohibit any selling of the virtual can or the image on the COKE can. More importantly, the Terms should be explicit that the use of the site to generate a virtual can does not have the effect of granting rights in any of the intellectual property on the COKE bottles and cans, including the rendering of the names.

Finally, this blogger would invite readers to share any IP-related commentaries and articles on the “Share A Coke” campaign.

The Maasai Intellectual Property Initiative: Why Should Others Do Pro-Bono IP Work For Kenya?

AFRICA IP TRUST EVENT 2013 INVITE MAASAI IP INITIATIVE LIGHT YEARS IP

In a recent media report titled: “Maasai elders swap Kenya for Holborn Viaduct”, the global law firm Hogan Lovells has reportedly invited Maasai elders to the United Kingdom (UK) as part of its intellectual property (IP) pro bono work. As the report explains:

The firm has been doing intellectual property (IP) pro bono work, led by partner Sahira Khwaja, to try to secure a trademark for the tribe after the recognisable Maasai image has been used repeatedly used in advertising campaigns without any of the spoils making their way back to the tribe itself.
Lovells is working with Elders from the Maasai of Kenya and Tanzania through charity Light Years IP,  which helps developing country producers win ownership of their intellectual property – should they choose to.

Light Years IP is a non-profit organization dedicated to alleviating poverty by assisting developing country producers gain ownership of their intellectual property and to use the IP to increase their export income and improve the security of that income. The Maasai Intellectual Property Initiative (MIPI) was founded by Light Years IP who designed a 7 point plan and IP strategies for the Maasai to achieve control over their iconic brand.

According to Light Years IP CEO, Ron Layton:

…the Maasai people have not yet decided on trademark ownership or appointment of Hogan Lovells to carry out trademark work. The Maasai elders are visiting London to obtain information to assist their community make such decisions. Above all, Light Years IP seeks for respect to be shown to the Maasai. Hogan Lovells are assisting Light Years IP in a range of work.

Comment:

First off, this blogger is ashamed that Kenya’s leading IP firms would rather religiously ‘network’ at International Trademark Association (INTA) Annual Meetings than take up worthy pro-bono IP matters such as MIPI.

Read the rest of this article on the CIPIT Law Blog here.

Intellectual Property and Outdoor Advertising in Kenya

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Businesses often spend much time and money to create a successful advertising campaign. It is important to protect your intellectual property (IP) assets, so that others do not unfairly copy or free-ride upon your innovative creations.” – Lien Verbauwhede, WIPO.

Like in many parts of the world, the advertising sector in Kenya is the new battle-ground upon which businesses compete to creatively and uniquely pass on relevant information to customers so as to facilitate and positively influence their buying decisions. It is generally agreed that for an advertisement to be effective, it must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones. Outdoor advertising, in particular, is considered a cost effective way of giving messages the maximum exposure. Outdoor advertising includes billboards, outdoor signs, printed messaging, street banners, posters, brochures etc.

This blogger has noted an increase in the number of creative new outdoor advertisements by both medium-sized and large companies leading to a surge in the number of billboards along streets, highways in urban areas. Billboards are so far the preferred medium for outdoor advertising. there are several types of intellectual property rights that are involved in billboard advertising. For instance, most of the creative content on the billboard (writing, pictures, art, graphics, lay-out) may be protected by copyright along with any advertising slogans which may also be protected by trademark law.
In addition, industrial design law may be crucial for protection of billboards. Industrial designs cover the three dimensional form of billboards provided that such form gives a special appearance to a product of industry and can serve as a pattern for a product of industry. In the case of ENG Kenya Ltd v Magnate Ventures Ltd (2009), both the plaintiff and defendant carried on business in the outdoor advertising sector and the plaintiff alleged that the defendant had infringed on the plaintiff’s design for ‘suburban signs’. The court held that the registration of the plaintiffs’ design at the Kenya Industrial Property Institute (KIPI) was proof enough that the design was unique and capable of registration. The plaintiff could therefore claim exclusive right to the design. The court further stated that the defendant copied the plaintiffs’ design in bad faith.

For printing and branding companies, it is important to be very conscious of IP issues in their various advertising solutions. In this regard, the case of Alternative Media Ltd v Safaricom Ltd (2004) is instructive. The plaintiff, who is in the business of advertising graphic designing and media communication solutions, sued the defendant claiming copyright infringement on the plaintiff’s design that it had submitted to the defendant as a proposal to be used on the 250 airtime scratch cards. The court held that the defendant had indeed infringed on the plaintiff’s rights under copyright law because the design they used on their airtime scratch cards was substantially the same as the one submitted by the plaintiff to them as a proposal.

Another exciting area of outdoor advertising is transit advertising. This blogger has previously highlighted the Triple P Media project which involves advertising fused with high-quality custom-made audio and audio-visual content playing in public service vehicles (PSVs) countrywide, in addition to other public places like supermarkets, malls, banking halls, bars, clubs, restaurants etc. There is also the promising innovation by FlashCast Ventures, who have developed a method of scrolling advertisements via LCD displays installed in PSVs. These LCD screens are fitted with global positioning system devices hence messages are programmed to be location specific. This means it is possible to preset a commercial on a supermarket to run when the bus is within its proximity and broadcast special offers, promotions, and goods available. Although geo-local transit advertising may not meet the threshold of absolute novelty required for patent protection in Kenya, there may be other aspects of FlashCast that may be patentable or eligible for industrial design and utility model protection.

 

Intellectual Property and Sports in Kenya: Copyright Protection of Image Rights?

IPKenya recently attended a seminar on Intellectual Property and Sports in Kenya co-organised by the Kenya Industrial Office KIPI and the Kenya Copyright Office KECOBO held in Nairobi. During the two-day seminar, several distinguished speakers from academia, legal practice and sports engaged us in a variety of interesting topics including: marketing, merchandising and licensing agreements and building successful sponsorship programmes, media and broadcasting rights, signal piracy, digital content and social media, sports contracts and key clauses to look out for, administration and enforcement of IP rights in sports and finally building an effective IP rights strategy in sports.

There was a lot of robust debate and discussions on these issues but there was one particular topic that IPKenya feels deserves special mention and examination. This is the intersection between intellectual property and image rights in sports.

Consider the recent case of Kenyan footballer Dennis Oliech who claimed his image rights had been violated and quit the national team, Harambee Stars.

The above photograph of Dennis Oliech, McDonald Mariga and Bob Mugalia celebrating after Stars scored their winning goal against Angola in a 2012 Africa Cup of Nations qualifier at Nyayo National Stadium.
This photo was altered slightly then used by East Africa Breweries Ltd (EABL), the current sponsor of Harambee Stars, in advertisements throughout Kenya including several road-side billboards.

AJ Auxerre striker Dennis Oliech, Parma midfielder Macdonald Mariga and locally based Sofapaka FC player Bob Mugalia demanded to be paid by EABL for using their images to run promotions for the team.
EABL declined and relied on the KES 110 million sponsorship deal with the Harambee Stars Management Board. Clause 9 of the agreement stated that the sponsor shall have the right “to use the images of members of the Harambee Stars team for promotional and advertising activities”

It was not in dispute that EABL had a group agreement with the entire Harambee Stars Team in respect of image rights, but can this agreement be relied on where certain players are singled out their images used in advertisements? In the present case, is EABL right to argue that the three players pictured represent the entire team so as to preclude EABL from entering into separate agreements for image rights with each of the three players? The players argued that EABL should have been required to seek their consent individually before using their image. In the absence of such consent being sought, EABL is in breach of their image rights and must pay them compensation.

The issue that arose during this discussion was that there is no single source of law that recognises image rights. The closest recognition is in the Copyright Act which defines artistic works to include photographs and recognises a photographer or a third party (in the case of a commissioned work) as the copyright owner.

IPKenya was however persuaded that the easiest way to provide for statutory recognition of image rights was to amend the Copyright Act. In this regard, the Argentinian Act is worth consideration.

Argentina’s Law No. 11.723 of September 28, 1933
states as follows:

“Article 31.
The photographic portrait of a person may not be commercialized without the express consent of the person portrayed and, where that person is deceased, of his spouse and sons or direct descendants thereof or, failing that, the father or mother. In the absence of the spouse, sons, father or mother, or the direct descendants of the sons, publication shall be free.
The person who has given his consent may withdraw it but must provide compensation for any damages caused.
Publication of a portrait shall be free where it is for scientific, didactic and general cultural purposes, or relates to facts or events of public interest or which have been developed in public.”

Despite of the above proposal, an overwhelming number of speakers and participants at the Seminar opted for a sui-generis law to protect image rights.

IPKenya wonder which way Kenya will go: sui-generis protection or amending the existing Copyright Act to provide protection of image rights?

The floor is yours.

Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

1 kosgei kipi 2010

2 kosgei kipi 2010

3 kosgei kipi 2010

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

4 kosgei kipi 2010

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

Description PDF Word
TM 1 Form of authorization of agent Tm1 Tm1
TM 2 Application for Registration of a mark Tm2 Tm2
Tm6 Notice of Opposition of Application Form Tm6 Form Tm6
TM 10 Application for Renewal of mark Tm10 Tm10
Tm10a Certificate of registration of trademark Form10a Form10a
Tm14 Request to register Assignment or transmission Tm14 Tm14
Tm17 Request to alter Trade or Business Address in the register Tm17 Tm17
Tm19 Application to correct Clerical error in register or to ament document, etc. Tm19 Tm19
Tm20 Application to change name or description in the register Tm20 Tm20
Tm 21 Application to surrender Trade Mark fro all Goods and Services Tm 21 Tm 21
Tm22 Application to surrender Trade Mark for some Goods and Services Tm22 Tm22
Tm23 Application to ender disclaimer or memorandum in Register Tm23 Tm23
Tm24 Application to add to or alter registered Trade mark Tm24 Tm24
Tm25 Application for the Marking ,Expunging or varying of an entry in the register Tm25 Tm25
Tm26 Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register Tm26 Tm26
TM 27 Application for search under rule 114/Application for preliminary advice as to distinctiveness. TM 27 TM 27
Tm30 Request for certificate other than under section 22 of the act Tm30 Tm30
TM 32 Application to enter or alter address for service TM 32 TM 32
Tm34 Application for alteration of deposited regulations relating to certification of trademark Tm34 Tm34
Tm43 Application to adapt Classification so that it is in accordance with section 6(2) of the act Tm43

 

Tm44

 

 

TM 48

Notice of opposition to application to have classification adapted

Application for registration of registered user.

Tm44
Tm48
 

Tm44

 

 

Tm53 Application for extension of Time Tm53 Tm53
Tm54 Order form for copy of document Tm54 Tm54
Tm55 Application to add goods or services to a Trade Mark or an Application Tm55 Tm55

 

International Registration of Kenyan Trade Marks

quail-advanced-regular-strength

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.