High Court Rules New Tobacco Law on Packaging, Labelling and Disclosure Does Not Violate Intellectual Property Rights

British American Tobacco Kenya

Previously, this blogger reported here that the High Court had suspended the coming into force of the Tobacco Control Regulations 2014 made by the Cabinet Secretary for Health scheduled to take effect on 1st June 2015. Recently in the case of British American Tobacco Kenya Ltd v Cabinet Secretary for the Ministry of Health & 4 others [2016] eKLR, Lady Justice Mumbi Ngugi (known to many readers for her landmark decision on anti-counterfeit law and access to medicines here) delivered a judgment at the High Court dismissing claims by ‘Big Tobacco’ that their constitutional rights including intellectual property (IP) rights are being violated by the new Tobacco Regulations.

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Oh là là Lacoste: Crocodile International Trade Mark Awaiting Registration in Kenya

Lacoste SA Crocodile International trademark logo

Readers of this blog may be aware of the 50-year trade mark battle that has been going on between Lacoste S.A and Crocodile International PTE Ltd (“CIL”). These companies were formed about 10 years apart on opposite corners of the globe: one in France in 1933 and the other in Singapore in 1943. Historically, the battle has focused on Lacoste’s right-facing crocodile mark and CIL’s left-facing crocodile mark with trademark suits filed in numerous jurisdictions around the world.

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Recap of WIPO African Sub-Regional Workshop on New Perspectives on Copyright

WIPO African Sub regional Workshop New perspectives on copyright organized by the World Intellectual Property Organization in cooperation with the African Regional Intellectual Property Organization Harare Zimbabwe July 2015

This week, African Regional Intellectual Property Organization (ARIPO) hosted the WIPO African Sub-regional Workshop on New Perspectives on Copyright organized by the World Intellectual Property Organization (WIPO) from 20 – 21 July 2015.

The Workshop drew Heads of Copyright Offices in the ARIPO Member States and some Observer States who took part in this crucial Workshop aimed at discussing the management of Copyright and Related Rights in the face of new challenges emanating from new digital technologies. Also in attendance were copyright officials from Jamaica and Trinidad and Tobago who shared their experiences with their African colleagues.

What follows is a summary of the presentations made by the various participants at the Workshop.

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Artist’s Resale Right: How Kenya Can Make History in Africa

angelus-768x692

“Artists do not live on thin air. And because they enrich the world with their art, they should be protected. So it is fair that those who trade in their works pay them a share of what they earn. That is the purpose of the resale right: to share all forms of enrichment.” – Ousmane Sow, Senegal.

Artisans and visual artists of Kenya, unite! With the anticipated amendments to the Kenya Copyright Act in line with the forthcoming establishment of the Intellectual Property Office of Kenya, this is the opportune time for owners and authors of artistic works to actively lobby the Government of Kenya for the inclusion of the artist’s resale right (often referred to by its French name, “droit de suite”) in the Act. In at least 70 countries around the world, artist resale rights legislation exists which enable artists to receive a small percentage (usually between 0,25 and 5%) of the value of sales of their work in the secondary market (i.e. sales that occur after the first sale of the work in the primary market through, for example, a gallery). In Africa, the artist’s resale right exists only in two countries namely Burkina Faso and Senegal.

The artist’s resale right can either be integrated into existing legislation (as is the case with most EU countries) or functions as standalone or sui generis legislation (eg. the UK and Australia). The resale royalty addresses the relative disadvantage that visual artists have (by comparison to other art forms) on account of the ‘once-off’ or singular nature of visual artworks, and the limited ability of visual artists to benefit from the subsequent success of their work in the marketplace after the first sale has taken place. The first resale right law was enacted in France in 1920. The need for the right became clear when a collector made a significant amount of money from the sale of Jean-François Millet’s painting “The Angelus,” (pictured above) while the artist’s family was living in extreme poverty.

From a Kenyan perspective, it is important to note that the resale right is provided for under Article 14 of the Berne Convention. This Article creates a Droit de Suite right for artists and writers of original art and manuscripts subject to existence of the provision in national legislation and country of claim (reciprocity). Since Kenya has signed and ratified the Berne Convention, the Berne Convention now forms part of the laws of Kenya pursuant to Article 2(6) of the Constitution. In this regard, KECOBO, in the recent issue no. 12 of its Newsletter stated as follows:

At the moment there is no provision for resale right in the Kenyan law. However the inclusion of resale right in Kenya is part of the amendments deemed necessary by KECOBO as part of the reforms and updates of the Copyright Act, 2001. Initially, the management of the resale right shall be by individual artist though ultimately the Board envisions the creation of a collecting society in this area along the lines of the UK.

In the case of copyright in music, literature and other art forms, royalties are accrued to artists by virtue of the volume of sales of multiple copies of that work (in the form of books, CDs, monetised downloads, etc). In the case of the visual arts, value is generated through single, high-value sales, and potentially through a small number of high-value resales. The resale royalty enables artist to receive a moderated economic benefit from the latter. As with copyright royalties, resale royalties are in all instances collected by rights management organisations in the countries in which this right exists. Unlike several existing proposals discussed here, a crafts and visual arts collecting society would definitely be a welcomed addition to the copyright collective management ecosystem in Kenya. This collecting society would be able to administer the resale right as well as license for various forms of reproductions, distributions, renting or lending, communications to the public and making available to the public of artistic works.

In light of the above, it would be worthwhile to investigate the size, strength and nature of Kenya’s secondary art market so as to arrive at an appropriate tariff for the artist’s resale right.

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.

Balamine Ouattara: New Regional Director for African Copyright Societies

Balamine Ouattara BBDA

CISAC, the International Confederation of Societies of Authors and Composers, works towards increased recognition and protection of creators’ rights. CISAC was founded in 1926 and is a non-governmental, non-profit organisation. Its headquarters are in Paris, with regional offices in Budapest, Santiago de Chile, Johannesburg and Singapore.

CISAC now reports that Mr. Balamine Ouattara has joined CISAC Secretariat as the new Regional Director for Africa. Ouattara has previously served on the CISAC Board, the CISAC African Regional Committee and at the helm of the Bureau Burkinabé du Droit d’Auteur (BBDA).

Ouattara’s goal is to establish the new CISAC Regional Office with a transfer from Johannesburg, South Africa (where his predecessor Mr. Robert Hooijer was based) to Ouagadougou, Burkina Faso. In his new role, he will cover 35 Member Societies operating in Africa, including the Music Copyright Society of Kenya (MCSK) and is going to work toward the creation and implementation of new offices in Africa.

Félicitations M. Ouattara pour sa nomination au poste de Directeur des affaires Africaines à la Confédération internationale des sociétés d’auteurs et compositeurs (CISAC)!

In his first official message to the Heads of African Copyright Societies, Ouattara says in part:

“Dear colleagues,

As you know by the message of Mr. Olivier Hinnewinkel, General Manager of the International Confederation of Societies of Authors and Composers (CISAC) I am honored to assume function of Africa Regional Director of CISAC (ARD/CISAC), since March 1, 2013. I therefore replace to this position, Mr. Robert Hooijer to whom I pay tribute for the enormous contribution he brought to Africa for the development of the sector of ​​literary and artistic property. On behalf of all, I say to him thanks again.
(…)
I arrive to this important post when Africa of copyright and collective management is faced with huge challenges, including those relating to rising of its perception rate (0.6% of the the global collect), the narrowness of its market of copyright in the global space and the need to improve the functionality of its network of Collecting Societies are not slightest.

However, I keep with you, the hope the possibility of emergence of a true African Copyright and Collective Management. To do this we need more vision, organization, boldness, conviction and commitment. These qualities, we have it all and even more in terms of capacity and potentialities. That is why I remain convinced and optimistic that with the help of each of you, we will advance more African of copyright and collective management.”