UPOV 1991 Enters into Force in Kenya: Farmers’ vs Plant Breeders’ Rights

Stephen Ndungu Karau Ambassador and Permanent Representative accession 1991 UPOV Convention Kenya Francis Gurry Director-General World Intellectual Property United Nations Geneva Switzerland 2016

H.E. Amb. Dr. Stephen Ndungu Karau, Ambassador and Permanent Representative deposits the instruments of accession to the 1991 Act of the UPOV Convention on behalf of the Republic of Kenya received by Dr. Francis Gurry Director-General World Intellectual Property Organization – April 11 2016 Geneva, Switzerland.

On May 11th 2016, the International Convention for the Protection of New Varieties of Plants (UPOV Convention) of December 2, 1961, as revised on March 19, 1991 entered into force in Kenya. As readers know, Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member on May 13th 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya Seed and Plant Varieties Act Cap 326.

Previously this blogger highlighted the recently adopted ARIPO Arusha Protocol and the draft SADC Protocol which are both modelled around UPOV 1991 standards. In this connection, the entering into force of UPOV 1991 in Kenya is a significant development for both plant breeders’ rights as well as farmers’ rights.

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New Regulations Prohibit Registered Trade Marks as Company Names – Problem?

Companies Registry at Office of Attorney General Sheria House Nairobi by Business Daily

In an earlier post here, this blogger reported that Kenya finally enacted a new and comprehensive company law legislation. The Companies Act 2015 contains an express provision on prohibited names which states that the Registrar of Companies has the discretion not to register a company if the name applied for reservation is offensive or undesirable.

The Act states that the criteria to be used by the Registrar to determine whether a particular name is offensive or undesirable shall be prescribed by the regulations. This blogger is now pleased to report that the regulations in question have been published in the Kenya Gazette. From an intellectual property (IP) perspective, it is notable that the regulations contain a provision intended to provide greater certainty in situations where a company is registered using a name that is identical to a registered trade mark belonging to a third party.

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Conflicts between Trade Marks Registry and Companies Registry: High Court Ruling in JamboPay v Jambo Express Limited Case

jambopay

“…whereas the Companies Act deals with the registration of companies and the responsible office is the Registrar of companies, the Act is often to find itself in conflict with the Trade Marks Act for as longs as there is no interlink between the two Acts of Parliament in practical sense. The conflict arises this way. For instance, a trademark is registered in respect of a class of services may conflict with a trade name of a company or company with similar activities or services. This lack of coordination between registering authorities has caused and will continue to cause extreme anxiety to consumers of the two services as well as judges who will be called upon to resolve those conflicts which would otherwise have been avoided were it not for the unhealthy state of institutional operations.” – Justice F. Gikonyo in Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR at para 15

This blogger has come across a recent ruling by the High Court in the case of Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR. In this case, Webtribe went to court claiming that Jambopay Express Limited infringes on Webtribe’s trademark Jambopay. In support of its claim, Webtribe produced a certificate of registration of trademark stating that the latter is the registered proprietor of the trade mark number 67127 consisting of the word ‘Jambopay’ registered in class 36 which is valid and subsisting from the 17th December, 2009. Jambopay Express Limited refuted Webtribe’s claim and produced Certificate of Incorporation number CPR/2012/86453 stating that the latter is a company that was registered on 11th October, 2012.

Although the main subject of the suit was the alleged infringement of a trade mark as well as a challenge to the registration of a company, the learned judge restricted his ruling to determining whether Webtribe had met the legal thresholds to be granted its request for a temporary injunction. The court found against Webtribe’s application and stated as follows:

“…a just determination of the issues herein especially of the plaintiff’s [Webtribe’s] right and alleged infringement of trademark does not just depend on the registration of the Trademark ‘Jambopay’ by the plaintiff but includes determination of other issues such as whether the protection provided to the name “Jambopay” by the trademark registered in favour of the Plaintiff overrides the protection of the name “Jambopay Express Limited” secured through the registration of the name as a company; and whether the defendant’s [Jambopay Express Limited’s] intent in registration of its trade name was to cause confusion among consumers and to capitalize in the Plaintiff’s goodwill in the online payment services market. Equally, the circumstance in which the Defendant Company was registered is in the center of this suit and whether it is an infringement as alleged. In light thereof, the material before the court is not sufficient for the Court to issue an injunction.”

As many readers may know, the Trade Marks Registry and the Companies Registry were previously both under the State Law Office. Therefore when registering a trade mark or reserving a company name, it was easier to close reference either the Companies Registry database or the Trade Marks Registry database to see if there were any conflicts. This has since changed. The Trade Marks Registry is under KIPI while the Companies Registry remains under the State Law Office. This legislative and institutional separation has brought about many challenges and disputes for people who are registering companies or trade marks in Kenya. As a result there has been an increase in “name-squatting” which impedes business and trade markets in the country. In aiming to resolve these disputes, aggrieved parties are forced to approach the High Court for determination which ends up being both expensive and time-consuming.

In an earlier case: Agility Logistics Limited & 2 Others v. Agility Logistics Kenya Limited, the court was faced to a similar dispute as in the present JamboPay case. In the Agility case, the court found that the plaintiff’s trademark protection overrides the defendant’s protection by the Companies Act. The court also found that the defendant’s registration at the Companies Registry was opportunistic. In arriving at this holding, the court in the Agility case stated as follows:-

“My take on the two pieces of legislation is that whereas the Companies Act governs registration of company names, the fact of registration per se does not extend protection to the name of the company itself as does the protection provided by a trademark.

Further, it is also pertinently clear that the protection extended by a trademark transcends the face value of a name and inheres in the name a distinctiveness that is associated with the reputation and goodwill that the proprietor of the mark has invested and earned through creation of value, quality and trust. So much so that a customer or user of the service needs only see the mark and associate itself with certain expectations and standards. This is not the case with a company name which is only a mark of identity to the legal person that is the company. Although company names may eventually earn the notoriety, reputation and association with certain standards in like measure as do trademarks, the extent of exclusivity and protection of the company name, without registration of a mark, would still fall short of the standard of protection conferred by a trademark.

The upshot of the foregoing analysis is that in the present matter, the protection provided to the name “Agility” by the trademark registered in favour of the Plaintiffs by far overrides the protection of the name “Agility Logistics” secured through the mere registration of the name as a company. The exclusivity in the use of the name that is conferred upon the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of “well known mark” confers locus standi upon the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act.”

This blogger will be closely following the developments and eventual outcome of the JamboPay case.

A Tale of Two Conflicting Collective Management Organisations in Nigeria

mcsn-coson-nigeria-music-copyright

The Nigerian film industry (‘Nollywood’) is arguably one of the largest in the world, while the music industry is not far off; both estimated to be worth well over $2bn in annual net revenue.

Last week, this blogger highlighted a story by Punch Magazine from Nigeria on one of Nigeria’s most internationally acclaimed musical duos: “P-Square”. The relevant bit of that article reads:

““P-Square and our companies, Square Records and Northside Entertainment, have not joined any collecting society because we don’t want to give any organisation the power to collect royalties on our behalf without showing a keen interest in solving our greatest problem, which is piracy. It doesn’t make sense.

“I’m not against any collecting society. But come to me as an approved body recognised by the government to fight piracy and I will carry you on my shoulder because I know there will be more money at the end of the day for me. Also, I would know that my future is guaranteed.””

Assuming P-Square opted for collective administration of their rights under copyright, they would be faced with a dilemma over which collecting society to join. This dilemma exists because Nigeria currently has two rival entities, both purporting to represent the musicians of Nigeria, namely: Musical Copyright Society Nigeria (MCSN) and Copyright Society of Nigeria (COSON).

Once upon a time, MCSN was the government-sanctioned collecting society or collective management organisation (CMO) in Nigeria representing authors of musical works. This all changed circa 2009 when COSON was born and got sole approval from the Federal Government to operate as the recognised CMO for both authors of musical works and owners of sound recordings. According to COSON, their existence came about as an effort to “have one formidable national collective management organization to promote and protect the copyright of practitioners in the Nigerian music industry.”
COSON states that it was Nigerian Music Industry Coalition in 2009 that resolved to form COSON. COSON chairman explains this resolve as follows:

“What we have set out to do is to sing with one voice and end the divide and rule game which the powerful users of music have deployed for many years to pauperize musicians and the music industry in our country. Every reasonable person in our industry has long understood that with collective management, together we stand, divided we fall.”

In a 2010 ruling of Nigeria’s Court of Appeal in the case of Musical Copyright Society Nigeria [MCSN] v Compact Disc Technologies & others, it was held that MCSN has no locus standi to institute the action as owner, assignee and exclusive licensee unless it is registered as a collecting society in compliance with the Copyright Act 2004.


MCSN was incorporated and has been operating since July 20, 1984 ( a year after our MCSK’s own birth date). Although MCSN is not licensed to operate as CMO in Nigeria, it remains a formidable “association” given that it is the owner, assignee and exclusive licensee of a vast repertoire of musical works within Nigeria based on an international reciprocal representation agreement with the Performing Rights Society of England [PRS] which grant MCSN exclusive ownership of musical works belonging to over ten million composers and songwriters worldwide, including renowned Nigerian composers, songwriters and authors who have assigned their musical copyrights directly to either PRS or any of the 225 authors’ societies in 118 countries whose repertoires are exclusively controlled in Nigeria by MCSN.

Meanwhile, there is COSON, the government approved CMO that in recent years has been working hard to establish itself as the sole CMO in Nigeria’s music industry. Along with MCSN, COSON is also a member of CISAC.

The government, through the Nigeria Copyright Commission, has actively cracked down on the activities of MCSN, which the former claims are “illegal” as the latter is not registered as a collecting society. Last year, the Federal High Court ruled in MCSN’s favour in the case of the Musical Copyright Society of Nigeria [MCSN] v Nigeria Copyright Commission [NCC] FHC/L/CS/35/08 where it reprimanded the NCC for acting outside the confines of both copyright law and constitutional law.

This month, the Nigerian media reported that MCSN went back to the High Court in Suit No. FHC/L/CS/1163/12, seeking N100 million as damages against the Nigerian Copyright Commission (NCC) and four others resulting from a raid carried out by the latter.

Comment:

Similar to Kenya’s Copyright Act, section 32B(3) of Nigeria’s Copyright Act is clear that: “The Council shall not approve another Society in respect of any class of copyright owners if it adequately protects the interests of that class of copyright owners.” This blogger has argued elsewhere that one society per class of rights is indeed the best way to go. However, the current state of confusion in Nigeria should be a cause for concern here in Kenya since we wish to ensure that our interests are adequately represented in Nigeria and the converse to apply here in Kenya.

Currently, Kenya, through the Music Copyright Society of Kenya (MCSK) has a reciprocal agreement with MCSN signed in 2005. This reciprocal agreement is an exclusive license in respect to public performing rights of the works forming part of the repertoires of the two societies.

Two concerns arise:

1. Seeing as MCSN is no longer recognised under copyright law as a collecting society or CMO for the music industry in Nigeria, does this mean that MCSK’s interests in Nigeria and Nigeria’s interests here in Kenya are unfavourably affected in a manner that interferes with the enjoyment and/or exercise of the patrimonial rights of the holders of the copyrights being administered? In other words, has the current agreement between MCSK and MCSN automatically fallen away due to the factual and legal situation of the latter?

2. Should MCSK consider signing with COSON? If indeed this option is being considered, has COSON given MCSK any indications as to the scope of its repertoire? i.e MCSK already has significant repertoire to give to COSON but the former may need to have some basic assurance that COSON actually hold both performing and mechanical rights assignments for the world from Nigeria authors/composers/publishers of music.

In short, let’s wait and see how these music copyright issues play out. Esteemed readers, the floor is now yours.

Editor’s note: The views, opinions and analyses expressed herein are solely those of the author and are not those of his employers, both past and present.