Book Review: Intellectual Property Law in East Africa by Prof. Bakibinga and Dr. Kakungulu

Intellectual Property Law in Uganda East Africa LawAfrica Cover 2016

Over the past five years, this blogger has not had the opportunity to write a single book review because no texts on intellectual property (IP) law have been published in the East African region. We now have our very first text to review: “Intellectual Property Law in East Africa” recently published by LawAfrica Ltd and written by David Bakibinga and Ronald Kakungulu, both from Uganda’s Makerere University School of Law.  The description on the back of the book (presumably authored by the publisher) reads in part that: “The text deals primarily with the law relating to intellectual property protection in Uganda (…) Throughout all the chapters reference is made to the corresponding Kenyan and Tanzanian laws and relevant cases in order to give the reader a regional appreciation of the subject. Intellectual Property Law in Uganda is aimed at students pursuing intellectual property law courses in Ugandan and East African Universities as well as peripheral students of intellectual property in the humanities as well as natural,technological and health sciences disciplines. It will also be useful to legal practitioners in the field of intellectual property as a ready reference on the subject.”

As readers may have already noted, the title of the book is confusingly referred to both as “Intellectual Property Law in Uganda” and “Intellectual Property Law in East Africa” on the spine, front cover and back cover of the book. So as not to judge this book by its cover, this blog briefly examines the contents of this 260 paged paperback text to establish whether it is a book on IP Law in Uganda or a book on IP Law in East Africa or something else altogether.

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MCSK Board Unceremoniously Removes Long-serving CEO

MCSK Maurice Okoth Public Notice Resignation Newspaper Music Copyright Society of Kenya 2016

In the above public notice in today’s newspaper, Music Copyright Society of Kenya (MCSK) states as follows:

“This is to inform the general public that Mr. Dan Maurice Okoth resigned from his position as the Chief Executive Officer of MCSK. Mr. Okoth ceased to be an employee of MCSK from 24th March 2016. He is therefore, not authorized to transact any business in the name of or on behalf of MCSK and that MCSK shall not take responsibility for any transactions made by him”

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Law Society Publishes Article Plagiarised by Law Professor: Copyright Issues in Wachira Maina v. PLO Lumumba Dispute

cover of the law society of kenya journal volume 11 2015 number 1 lawafrica

This week, constitutional lawyer Wachira Maina took to his facebook page to express his outrage that his work had been plagiarised by a senior lawyer and professor of law, PLO Lumumba. He begins his lengthy post on social media as follows:

“I am aghast. Prof. Lumumba has gone ahead and blatantly plagiarised my April 20th 2013 article on the Presidential Election and re-published it with the grandiloquent title “From Jurisprudence To Poliprudence: The Kenyan Presidential Election Petition, 2013” in the current issue of the Law Society of Kenya Journal.”

In the comments section, Maina discloses that he has already retained legal representation and that his counsel has written to Lumumba over the issue. For intellectual property (IP) enthusiasts, this blogger reckons that if this dispute ends up before the courts, there will be a number of interesting copyright law questions to be addressed.

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Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

tribunal judiciary kenya cms-image-000005230

As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

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The Litter/Sanitary Bin Patent Monopoly Continues: Court of Appeal in Hygiene Bins v. Sanitam Services

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Readers of this blog are familiar with Sanitam Services (EA) Limited, the holder of ARIPO Patent No. AP 773 entitled “Foot Operated Sanitary/Litter Bin”. Over the years, Sanitam has been involved in numerous suits pertaining this patent as previously discussed here. This blogger has recently come across a judgment in the case of Hygiene Bins Limited v Sanitam Services (E.A) Ltd [2015] eKLR.

In this case, Hygiene Bins was in the Court of Appeal seeking to overturn the ruling of the High Court allowing Sanitam’s application for an injunction restraining Hygiene Bins from selling, providing services, using its foot operated sanitary bin, offering for sale, selling, passing off the same as theirs, trading in Kenya howsoever and in any manner likely to cause Sanitam’s business to be confused with that of Hygiene Bins and/or from trading in any manner as to infringe Sanitam’s granted patent pending the hearing and determination of the suit.

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Quick Thoughts on “Zindua Cafe”: Safaricom’s New Idea Submission Portal

zindua cafe safaricom homepage

This week, Safaricom launched “Zindua Cafe”, an idea submission web portal which allows registered users to submit ideas, applications or prototypes to Safaricom Limited, Kenya’s leading mobile network operator. Once these submissions are made to Safaricom, the telecommunication giant will review them internally and send either a ‘interested’ or a ‘regret’ response to the user. If Safaricom is ‘interested’ in any submission, the user will be offered a non-disclosure agreement and commmercial contract governing Safaricom’s intended implementation of the submission.

Having taken Zindua Cafe for a test-run, this blogger has a few thoughts on Safaricom’s new innovation portal:-

1. Intellectual property (IP) advice: Zindua Cafe is an excellent source for unsolicited legal advice on IP rights protection. The portal reads in part: “We strongly recommend that you patent your idea or get your IP in place”. The portal then explains the distinction between WIPO, KIPI and KECOBO and provides links to their respective websites. In the case of IP- protected submissions, the terms of use on the portal clearly state that users “irrevocably grant Safaricom the unrestricted right or license to use any idea or material [submitted] for the purpose of improving it, assessing its viability and determining its progression to the next stage within the Innovation Cycle”. In this regard, users of the portal agree that such use by Safaricom under the above license “shall not be deemed a violation of the user’s rights or the rights of any third party or give rise to any claim based on such alleged violation.”

2. Proof of IP protection: Zindua Cafe requires users to disclose whether submissions are protected as patents, trade marks or copyright in addition to providing the registration numbers of any certificates received from WIPO, KIPI and KECOBO. Copies of these certificates must also be submitted by users. This is a really smart way for Safaricom to establish the extent of IP protection involved in all submissions made on the portal. More importantly, Safaricom is in a better position to determine what steps would be necessary to exploit and/or acquire any intellectual property rights in the submissions.

zindua cafe safaricom brewing ideas

3. What’s the big idea?: As part of the submission process, Zindua Cafe requires users to provide a name for the idea/product/service/solution and select the applicable industry from a list including Agriculture, Education, Energy, Entertainment, Financial Services, Health, ICT, Manufacturing, Retail, Transport, among others. This section also requires the users to describe the idea/product/service/solution in 200 characters as well as explaining the need/problem that will be solved by the idea. Finally, users are required to itemise any similar or competing ideas/products/services/solutions already in the market and explain why their submissions are better! This is a really smart way for Safaricom to reduce on the amount of time spent in meetings with people pitching their ideas.

So, what do the users get in return after going through this rigourous 3-step submission process? Nothing. The terms and conditions of use on the portal ensure that Safaricom is fully protected from any claims arising from users and third parties while imposing several obligations on users including indemnity to Safaricom, assurance to Safaricom of IP ownership, among others.

Following the Vodacom “Please Call Me” case in South Africa and the numerous IP infringement cases involving Safaricom here in Kenya, this blogger applauds the move to introduce Zindua Cafe particularly because of the emphasis the portal places on protection of IP by its users prior to submitting their creative and innovative ideas to Safaricom.

What remains to be seen is whether this new portal for brewing ideas will deter future innovators and creators from bringing IP-related suits against Safaricom.

2013 Year in Review: Intellectual Property in Kenya

2013 was an election year for Kenya which resulted in the swearing in of Uhuru Kenyatta as the fourth President of the Republic. Kenyatta has been very supportive of the creative economy and has on several occasions reiterated his administration’s commitment to creating a conducive environment for creators to reap from their intellectual property (IP) assets. However, Kenyatta’s mark on IP this year was the decision to reform all state corporations and parastatals in Kenya which has set in motion plans to merge the copyright office, the industrial property office and the anti-counterfeit agency into one national IP office.

Copyright and Related Rights

In 2013, copyright news was monopolized by Safaricom which was embroiled with two high profile copyright cases with Faulu Kenya and JB Maina. Another popular copyright story was Longhorn’s acquisition of publishing rights for iconic educational textbooks writer, Malkiat Singh.

The year was also memorable for Kenya as she successfully negotiated and signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are BIlind, Visually Impaired or Otherwise Print Disabled.

Industrial Property

In 2013, trade marks stole the show with several far reaching rulings by the Registrar of Trademarks as well as the landmark acquisition of a local trademark by a multinational cosmetics company. In addition, trademark administration has continued to be the major revenue earner for the national IP office, Kenya Industrial Property Institute (KIPI) especially through the Madrid System.

The Red Bull case (available online) was an important decision in that it expanded the Kenyan IP jurisprudence in respect of the doctrines of “conceptual similarity” and “well-known marks”.

In the Basmati case, a clear distinction was drawn between trade marks and geographical indications within the context of Kenya’s international obligations under the World Trade Organisation (WTO) Agreement on Trade Related Aspects of IP (TRIPs) adopted in section 40A of the Kenya Trademarks Act.

In the Pyrex case (available online), the Registrar found that the withdrawal of a threat of opposition does not amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark. This ruling was important because it provides a practical application of two amended provisions of the Act, namely Section 36A and 36B of the Act.

Later in the year, one of the largest cosmetics companies in the world, L’Oréal fully acquired the health and beauty divisions of local firm, Interconsumer Products Ltd, makers of Nice & Lovely brands, in a multi-billion shilling transaction. This acquisition is seen as part of L’Oreal’s push to dominate the East Africa’s low-end cosmetic market.

Legislative Developments

As previously discussed here, several amendments have been proposed to the Copyright and the Anti Counterfeit Acts in the Statute Law Miscellaneous Bill currently before Parliament is passed. Earlier this year, a proposed draft law on the protection of traditional knowledge and traditional cultural expressions was validated.

This year saw the enactment of the Science, Technology and Innovation Act, Consumer Protection Act, Media Council of Kenya Act and Kenya Information and Communication Amendment Act, all of which will affect IP administration and enforcement both directly and indirectly.

For more stories from 2013, check out the IPKenya archive on the right hand side of this page and information from other sites on our twitter feed.

See you all in 2014!