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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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.

 

Tobacco Plain Packaging Law: Intellectual Property Rights versus Human Rights in Kenya

Australia’s Parliament is without doubt one of the most proactive legislatures in the world. In a few short years, it has made history as the first country to legislate on carbon taxes and now it is taking on the multi-billion dollar worldwide tobacco industry. In the above clip, circa 10:53, Richard di Natale, Senator from Victoria had this to say on the need to legislate further against ‘Big Tobacco’:

“The one frontier that has remained open to tobacco companies is on the packets themselves. They are little billboards of nastiness advertising their wares to passers-by from pockets, from kitchen tables, on dashboards of cars, all around the country. And smokers do see the branding on these packets potentially dozens of times a day. And this Bill will remove that opportunity. An opportunity for tobacco companies to compete on grounds of brand awareness and image.

The Tobacco Plain Packaging Act 2011, when it does come into law, will remove the ability of tobacco manufacturers to display logos, images and promotional text on their packs and will replace it all with a plain brown packet. Current health warnings will be enlarged and accentuated… Under the Act it will be an offence to sell a non compliant product with potential penalties in excess of one million dollars for a wilful breach of the act by a body corporate. Under the Act, the packet will be tightly controlled: they have to be made of cardboard, packs have to be rectangular, contain no embossing, the colour needs to be a drab dark brown and no trademarks will be allowed. The location and orientation of the branding variant name are strictly prescribed and the graphic warning will be enlarged to 70% of the front of the packet.

In short, this bill aims to ensure that the packet of cigarettes is as ugly as the product itself.” (Emphasis added)

Australia has now enacted this Bill into law.

Meanwhile here in Kenya, the Tobacco Control Act 2007 remains in force and section 21 of this Act contains the following provisions with regard to packaging of tobacco products:

“21 (2) Every package containing a tobacco product shall –

(a) have at least two warning labels of the same health messages, in both English and Kiswahili, comprising of not less than 30% of the total surface area of the front panel and 50% of the total surface area of the rear panel, and both located on the lower portion of the package directly underneath the cellophane or other clear wrapping;
(b) bear the word “WARNING” appearing in capital letters and all text shall be in conspicuous and legible 17-point type, unless the text of the label statement would occupy more than seventy percent of such area, in which case the text may be of a smaller but conspicuous type size, provided that at least sixty percent of such area is occupied by the required text; and
(c) bear text that is black on a white background or white on black background in a manner that contrasts by typography, layout or colour with all other printed material on the package.

(3) All the warning labels specified in the Schedule shall be randomly displayed in each twelve-month period on a rotational basis and in as equal a number of times as is possible, on every successive fifty packages of each brand of the product and shall be randomly distributed in all areas within the Republic of Kenya in which the product is marketed.
(4) The Minister may, by notice in the Gazette, prescribe that the warning, required under this section, be in the form of pictures or pictograms; (..)”

Returning back to Australia, in the recent case of JT International SA and BAT Australasia Limited v Commonwealth of Australia [2012] HCA 30, Big Tobacco went to court challenging the constitutionality of the Plain Packaging Act. The High Court of Australia earlier issued orders ruling that “at least a majority of the judges” are of the view the plain packaging regime is valid under the Australian Constitution. The High Court rejected the arguments of Big Tobacco that there was an acquisition of property on less than just terms. See case citation here.

Meanwhile back to Kenya, BAT East and Central Africa Area Director Gary Fagan is reported as being “extremely disappointed” by the court] decision on the Australian Act which he termed as a “bad piece of law”. He adds that:

“”We fully support any form of evidence-based regulation but there is no proof to suggest plain packaging of tobacco products will be effective in discouraging youth initiation or encouraging cessation by existing smokers (…) In fact, plain packaging would only exacerbate an already significant illicit tobacco trafficking problem, and would have other significant adverse unintended consequences including driving down prices which would lead to increased smoking while reducing government tax revenue(…)”

As a matter of fact, earlier this year, IPKenya recalls government authorities raising the alarm over increased sale of counterfeit and smuggled cigarettes in Kenya. Kenya Anti-Counterfeit Agency (ACA) reported that cigarettes are rapidly becoming the most illegally traded product in the region, while health experts warned a health crisis could be looming. Local cigarette makers BAT-Kenya and Mastermind Kenya Ltd estimated that counterfeiters pocket upwards of US$1.05 billion (Sh100 billion) every year from sales across East Africa.

Comment:

In deciding whether Kenya should or shouldn’t follow Australia’s bold legislative approach, IPKenya asks: Is destroying trade marks or brands of Kenyan cigarette companies in order to discourage the use of tobacco products reasonable and justifiable under the limitation clause in Article 24 of the Constitution?

Unlike in Australia, Kenya’s Constitution has over 3 specific provisions on intellectual property rights including the broad provision on the protection of right to property enshrined in Article 40. In this regard, the stand-out constitutional provision which would need some legislative and judicial interpretation is Article 40(5) which states: “The State shall support, promote and protect the intellectual property rights of the people of Kenya”. This provision alone could form the basis of a constitutional challenge by Kenyan tobacco companies if the government decided to propose a law similar to the Australia’s Tobacco Plain Packaging Act 2011. In addition, Big Tobacco in Kenya may chose to rely on other persuasive arguments mentioned above such as the potential increase of smuggled and/or counterfeit tobacco products and its effect on illegal and organised crime in the country.

If our government was desirous to push for such legislation, it would argue that intellectual property rights must be balanced with other fundamental rights and freedoms also enshrined in the Constitution. In a recent High Court case discussed by IPKenya here, the court considered the intellectual property rights of pharmaceutical manufacturers protected in the Anti-Counterfeit Act but held that the provisions of this Act denied Kenyans access to essential HIV medicines therefore it violates the right to life of Kenyans as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1). The rights under Articles 26(1), 28 and 43(1) of the Constitution in addition to Article 42 on the right to a clean and healthy environment can be relied upon by the State in support of a plain packaging law.

Within Africa, it is reported that South Africa’s government has already expressed its intention to follow Australia’s controversial new tobacco law.