#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!

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Taking Intellectual Property Rights Seriously: Penny Galore Ltd. vs. Amani Women’s Group

grey-kura-necklace-by-goop-dot-comEarlier this week, Amani Women’s Group posted a blog article here after receiving a Cease and Desist Demand Notice from Penny Galore Ltd. In the explicit Demand Notice, Amani is accused of infringing Penny Galore’s rights under both copyright and the law of passing-off with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. According to Penny Galore’s counsel, Coulson Harney, the necklace is “made up of bone quills that are creatively decorated around a ring necklace which is joined by a hook and comes in various colours such as grey, cream and black”.

Penny Galore alleges that Amani has substantially copied and/or reproduced the Kura Necklace Grey and that Amani are selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demands that Amani immediately stops all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed. In addition, the Demand Notice requires that Amani provides a written promise not to infringe on Penny Galore’s rights in the Kura Necklace. Of course, Penny Galore’s counsel has threatened to sue Amani if the latter does not comply with the Demand Notice.

Comment:

This blogger submits that this is an important lesson on protection of one’s intellectual property rights. From the little information that is publicly available, there is no doubt that Penny Galore has and continues to invest heavily in commercialising its products and its brand, both of which are protected under the intellectual property (IP) system. The sole fact that Penny Galore has engaged the services of (high-end) IP counsel in this matter demonstrates that it is willing to invest in protecting the IP rights subsisting its various products that have been made available to the public.

On the other hand, it is clear that Amani enjoys equal IP protection as Penny Galore with respect to its unique creations. Therefore, Amani can and should rely on the IP system to defend any unfounded claims made against its products by anyone, including Penny Galore.

Based on Penny Galore’s demand notice and Amani’s website alone, it is impossible for any third party, including this blogger, to ascertain what the alleged infringing necklace looks like and whether there is an objective similarity between the above necklace and the Kura Necklace. However, most IP commentators would agree that necklaces, in their material form, are the subject of copyright protection as artistic works defined in section 2(1) of the Copyright Act.

A good illustration of the required standard of proof for copyright infringement in an artistic work may be found in the case of Macmillan Kenya Publishers v Mount Kenya Sundries Ltd Civil Suit No. 2503 of 1995. In this case, Macmillan Kenya Publishers claimed its rights under copyright has been infringed with respect to its maps “Kenya Tourists Map”. Macmillan argued that the “Kenya Travellers’ Map” by Mount Kenya Sundries Limited was similar to the Macmillan’s maps save for some changes made in certain aspects of the maps’ details.

The court ruled in favour of Macmillan and stated as follows:-

As was pointed out in Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, infringement of copyright arises not because the Defendant’s work resembles the Plaintiff’s, but because the Defendant had copied all or a substantial part of the Plaintiff’s work. In the case before me, the Plaintiff has submitted evidence which I find to be both sufficient and credible, that its maps (PEx 6 and PEx 7), were copied by the Defendant in the production of the Defendant’s map (PEx 8), and I find the Defendant fully liable for the infringement of the Plaintiff’s copyright.

The above-cited Alternative Media case is the leading case in relation to copyright infringement of artistic works. In that case, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. These works of art were used by Safaricom on it’s 250 Shillings Scratch Cards without Alternative Media’s authority.

Regarding the law of passing-off, the central enquiry is whether the public is likely to be confused into believing that Amani’s necklaces are, or are connected with, those of Penny Galore. The underlying rationale behind passing off is to ensure that competitors within the same market do not engage in any acts aimed at interfering with the goodwill between each business and its customers.

Therefore although Penny Galore appears not to have registered its necklaces, the provisions of section 5 of the Trade Marks Act are clear that:-

“No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this act shall be deemed to affect rights of action against any person for passing off goods.”

In the case of Githunguri Dairy Farmers Cooperative Society Limited v. Uplands Diaries Limited 2009 eKLR, the court found that the features and design of Uplands’ milk packaging were strikingly similar to Githunguri’s Fresha Milk packaging and that the latter’s market survey confirmed that there is confusion in the market.

In arriving at this ruling, the court stated as follows with respect to passing-off:-

The principles to bear in mind when considering a claim under the tort of passing off, is the plaintiff must prove reputation of good will connected with the goods which are known by the buyers by distinctive get up or feature. Secondly, the plaintiff must prove the defendant either intentionally or not, misrepresented to the public leading them to believe that the defendant’s goods are the plaintiffs. The plaintiff has also to prove that they have suffered damages because of the erroneous believe caused by the defendants’ misrepresentation.

The above principles may be useful to Amani as they craft a response to Penny Galore’s Demand Notice.

In light of the above, this blogger looks forward to seeing Amani’s comprehensive evidence showing that the Kura Necklace falls part of the traditional cultural expressions of African and Kenyan communities, as Amani appears to have suggested in its blog article. In the meantime, this blogger is not convinced by Amani’s attempts to portray its dispute with Penny Galore as “bullying” or a case of David versus Goliath.

It is indeed disappointing for Amani to resort to comments such as:

“Kenya is 50 years old and its seems we are still under control of people wanting to make money on the backs of poor wananchi, its not fair … Or may it is just if you have money and success, you think you are entitled to step on whoever you please while you try to make yourself richer”

All businesses, large and small alike, must be alive to possible IP issues in their operations and develop effective IP strategies. Perhaps this is an important lesson not just for Amani but other businesses in the creative and innovation sectors.

Nestle S.A. v Cadbury UK: The Problem with Registering Colour Trade Marks

cadbury dairy milk chocolate

“….unconventional or “exotic” marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.”

Recently, the England and Wales Court of Appeal in the case of Société Des Produits Nestlé S.A. v Cadbury UK Ltd. [2013] overturned a decision of the High Court to proceed with an application to register a trade mark for Cadbury’s chocolate, which featured a specified shade of the colour purple. In particular, the trade mark applied for by Cadbury was shown as a rectangle, which is a purple block when reproduced in colour, and described as:-

“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.” [Emphasis Mine]

Read the rest of this article here.

L’Oréal Acquires Nice & Lovely Trademark in Multi-Billion Shilling Deal

Media reports (here, here and here) indicate that the world’s largest multinational cosmetics company L’Oréal has acquired Kenya’s Interconsumer Products Ltd’s flagship Nice & Lovely brands, in a multi-million dollar acquisition reported this past week.

L’Oréal opened shop in Nairobi in late 2011 and has for the past 18 months been in talks with Interconsumer Products Ltd for a buyout deal. To facilitate the conclusion of the deal, Interconsumer Products Ltd transferred the beauty division to a new company dubbed Interworld Cosmetics, which has now been acquired by L’Oreal. The French based cosmetics giant has now renamed the new business Interbeauty Products.

This blogger salutes Interconsumer Products Managing Director Mr. Paul Kinuthia. We have all read the story of how Mr. Kinuthia grew his business from a modest sole proprietorship in the late 1990s to a major cosmetics manufacturer in East Africa. This success story of Interconsumer Products Ltd is even more significant and instructive when viewed from an intellectual property (IP) perspective.

The mark NICE and LOVELY was registered in favour of Interconsumer Products Ltd at the Kenya Industrial Property Institute (KIPI) in 2002 but had been in use by Interconsumer since 1999. From this date onwards, Interconsumer has been actively policing its intellectual property rights in the NICE AND LOVELY mark particularly as its products begun to gain prominence not just in Kenya but in neighbouring countries, particularly Uganda.

In 2004, Interconsumer moved to the Commercial Division of Uganda’s Commercial Court to seeking restrain Nice & Soft Investments Ltd., its servants and/or agents and/or distributors from manufacturing, selling or exposing for sale or in any way dealing in cosmetics using the names “Nice & Soft”. This case was reported as Interconsumer Products Ltd V Nice & Soft Investments Ltd (2003) Miscellaneous Application No. 256 Of 2004 (available here and here). In this case Interconsumer alleged, inter alia that the respondents without any form of authority were selling cosmetics goods in Uganda under the mark “Nice & Soft” and had attempted to register a trademark under the said names to the detriment of Interconsumer. Therefore, Interconsumer argued that it’s trademark was in danger of being wasted and irreparably damaged by virtue of such use by the respondent who is selling inferior goods similar to those of Interconsumer. On the question of whether there was trademark infringement, the court noted that the respondent’s application for registration was before the Registrar of Trademarks prior to the filing by Interconsumer of the suit which suit does not aver that it is a challenge to registration. On the question of whether there was passing off, the court found that the Interconsumer pleaded the ingredients of passing off, namely the acquired reputation. The actions taken by Interconsumer to protect its NICE AND LOVELY trademark in Uganda are instructive and must be borne in mind when considering the amount L’Oréal has just paid to acquire this well-known mark.

However before this acquisition deal, many will remember that in Interconsumer had previously locked horns with L’Oréal in both the Ugandan and Kenyan courts over the NICE AND LOVELY trademark. In the Ugandan case reported as L’Oreal and Another vs Interconsumer Products Ltd Application no. 13 of 2006 (available here), L’Oreal moved to the Commercial Division of the High Court to review the decision of the Registrar of Trademarks setting aside opposition proceedings and granting registration of two trademarks, SMOOTH & LOVELY and NICE and LOVELY applied for by Interconsumer.

In the Kenyan case, L’Oréal once more moved to the High Court to challenge the decision of the Registrar of Trademarks in rejecting its opposition of the registration of the mark NICE & LOVELY HERBAL OIL MOISTURIZER by Interconsumer. In a ruling delivered last year on 21st February, the High Court dismissed L’Oréal’s appeal against the decision of the Registrar rejecting L’Oreal’s opposition to the registration of the mark by Interconsumer. The court agreed with the Registrar on several important grounds including that the mark NICE & LOVELY was not similar to DARK AND LOVELY (owned by L’Oréal) and that there could be no confusion as defined under section 14 and 15 of the Trade Marks Act. The Court also agreed with the Registrar’s conclusion that L’Oreal had failed to show that its trademark was well known in Kenya. Furthermore, the Court agreed with the Registrar’s finding that the respondent had used the mark NICE and LOVELY since 1st March 1999 and the appellant had not tendered any evidence to show that it had objected to the use of the mark in the last five years. Therefore, the common law doctrine of honest concurrent use was applicable therefore both NICE & LOVELY and DARK AND LOVELY marks could co-exist in the Trademarks Register. A detailed synopsis of this unreported case is available over at the afroip blog here.

Viewed against the above backdrop, L’Oréal’s acquisition of NICE & LOVELY is an important lesson for trademark owners not only in Kenya but throughout the East African region. Interconsumer’s investment in registration and enforcement of its (IP) rights was a crucial factor in sealing this major buy-out deal.

Constitutional Protection of Traditional Knowledge in Zimbabwe and the Robert Mugabe Fashion Brand

zimref

Recently, the people of Zimbabwe went to the polls in a referendum vote for the acceptance or rejection of a draft new Constitution to replace the Lancaster Constitution of 1980, tied with their independence from Britain in 1980.

A copy of the Constitution Select Committee (COPAC) Final Draft Constitution is available here.

Local media reports now indicate that Zimbabweans have voted in overwhelmingly in favour of the new Constitution.

This blogger has been going through Zimbabwe’s new Constitution and came across three interesting provisions, as quoted below:

16 Culture

(2) The State and all institutions and agencies of government at every level, and all Zimbabwean citizens, must endeavour to preserve and protect Zimbabwe’s heritage.

(…)

33 Preservation of traditional knowledge

The State must take measures to preserve, protect and promote indigenous knowledge systems, including knowledge of the medicinal and other properties of animal and plant life possessed by local communities and people.

(…)

71 Property rights

(1) In this section –

property means property of any description and any right or interest in property.

Read the rest of this article over at the CIPIT Law Blog here.