Uganda High Court Rules for Indian Bike Manufacturer Hero MotoCorp in Trade Mark Expungement Suit

hero motocorp bike karizma trademark uganda

In a recently delivered High Court ruling in the case of Hero MotoCorp Limited v. Esteem Motors Limited & 2 Ors Misc. Cause No. 37 of 2014, Lady Justice Flavia Senoga Anglin sitting alone in the Commercial Division directed the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB) to cancel and expunge from the Trade Marks Register four trade marks namely “Karizma”, “Hunk”, “Glamour” and “Splendor” registered by the first respondent – Esteem on two grounds namely, prior registration by the Applicant – Hero in India and non-use of the trademarks by Esteem in Uganda.

In its ruling, the Ugandan High Court cited with approval a number of rulings by Kenya’s Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). This blogpost is a brief summary of the facts and reasoning of the court in this case.

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High Court Dismisses Judicial Review Application in “ZERO B” Trade Mark Dispute

Zero-B

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti-Counterfeit Agency & 2 others Ex parte Surgippharm Limited [2015] eKLR. A copy of the judgment is available here. In this case previously highlighted here, Surgipharm Limited went to the High Court seeking judicial review orders to prohibit the Anti-Counterfeit Agency (ACA) from carrying out its enforcement mandates under the Anti-Counterfeit Act. Following a complaint against by Wiskam against Surgippharm, the Chief Magistrate’s Court, Nairobi granted ACA a warrant of entry, search and seizure was issued against Surgippharm with regard to the alleged counterfeiting activity.

While Surgippharm admits that Wiskam is the registered holder of the “ZERO -B” trademark in Kenya, Wiskam failed to disclose to ACA and the Magistrates’ Courts that Surgippharm had initiated proceedings for the expungement of the mark with the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Surgippharm also alleges that Wiskam also failed to disclose that had already commenced proceedings in the high court of Kenya seeking, inter alia, for an injunction order and an award of damages against Surgippharm, being HCCC NO. 542 of 2011.

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Demystifying the Role of Copyright as a Tool for Economic Development in Africa: Tackling the Harsh Effects of the Transferability Principle in Copyright Law

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“It is…submitted that the system of alienable copyright is not conducive for countries in Sub-Saharan Africa and cannot, unless the legislatures of these countries intervene, ever give rise to a sustainable, home-bred and poverty alleviating industry.” – JJ Baloyi, 2014.

This blogger has recently come across a compelling article titled “Demystifying the Role of Copyright as a Tool for Economic Development in Africa: Tackling the Harsh Effects of the Transferability Principle in Copyright Law” written by JJ Baloyi in the South African Potchefstroom Electronic Law Journal. A copy of the article is available here. The central argument in Baloyi’s article is that the transferability principle in copyright law has had the inadvertent effect of stifling copyright-based entrepreneurship, and thus economic development in Sub-Saharan African countries that inherited copyright laws from their erstwhile colonial masters, England or France.

This blogpost discusses Baloyi’s well-written article and examines its implications for Kenya especially in light of the possible solutions put forward to tackle the ‘harsh effects’ of the system of assignment under copyright within Africa.

Baloyi’s article asks the question why many Sub-Saharan African countries, though having copyright and related rights laws and though generally endowed with rich cultural resources, have not been able to realise significant economic development and growth from the economic exploitation of intellectual property (IP) works and legally-protectable expressions emanating from such resources. Baloyi, former General Counsel at SAMRO, attempts to answer this question with a focus on the music industry where he draws most of his insights, observations and experience.

The article submits that there are several sets of barriers hindering musical entrepreneurship in Africa including psychological barriers, barriers in relation to the business environment, barriers relating to external ability and barriers in relation to the influence of demographics.

On psychological barriers, the article starts by appreciating the stress and hard work involved in giving us great musical pieces that we, as society, have become accustomed to. In this regard, the copyright regime demands that musicians exert themselves through their skill, time and judgment in order to create works that are original originating from their own efforts rather than slavish copies of works produced by the efforts of others. Therefore the article submits that expecting musical artists to be entrepreneurs in addition to being creators, is requiring more than the ordinary from them! Nonetheless these creators should be encouraged to be entrepreneurs even though it is accepted that not all artists will be entrepreneurs, just as not all lawyers can be entrepreneurs, for instance! Therefore artists who surround themselves with good advisors, would only need to display an entrepreneurial mind-set and leave the entrepreneurial activities to others.

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Still on psychological matters, the article argues that the possession of IP within an environment where there is a strong IP protection regime is a strong determinant of entrepreneurial growth aspirations. Therefore, ownership of copyright in such an environment should be a strong motivation for artists to be involved in entrepreneurial activities.

Regarding barriers in relation to the business environment, the article observes that the lack of social networks becomes crucial in two instances, firstly collaborations where an artist seeks to jointly author a musical work with artists endowed with different skills and secondly marketing where an artist decides to market his own musical works.

The article gives primary focus to the lack of resources which it maintains is the main difficulty experienced by artists in Africa in respect of securing funding for their music entrepreneurial endeavours. In this regard, the article observes that most authors of musical works find themselves with no option but to assign i.e. transfer ownership in, their copyright to music publishers under terms that are highly unfavourable to the authors. It follows that once these authors have accumulated enough savings over time (due to the barriers relating to demographics) to incorporate and market their own publishing and recording companies, they find it difficult to engage in entrepreneurial activities relating to their copyrights as these rights have long been assigned to others. This so-called “endless cycle” is the main problem Baloyi seeks to address through his article.

Therefore the article argues that the artists’ lack of resources necessary to engage in entrepreneurial activities vis-a-vis their copyright works denies them the enjoyment of the rent-creation benefits under copyright licensing whereby the copyright owner may grant either an exclusive or a non-exclusive license to a user, in exchange for payment or compensation. Therefore these licenses would be able to earn the artists (and their heirs in title) income in the nature of rents (i.e. royalties) for the duration of the copyright.

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In light of the above, the article argues that Sub-Saharan African countries should develop its copyright laws to address concerns relating to the internal conditions and developmental needs of their countries. This article points out the examples of United States, Canada, the European Union and India which have moulded their copyright laws in light of their unique prevailing circumstances to produce home-grown solutions. In this regard, the article submits that beyond the minimum standards required in Berne and TRIPs, African nations can craft provisions that would safeguard the interests of their creators while not offending their international obligations.

The article is categorical that the dualist systems in common and civil law traditions of African countries result in the “endless cycle” where authors cannot exploit their copyright works as explained above. In this regard, the article refers favourably to the German system of author’s rights (a monist system) where the economic rights are seen as being interwoven with the moral rights and thus cannot be separated out, making them incapable of being assigned. The article argues that the monist concept of authors’ rights is consistent with the human rights approach to intellectual property rights espoused in South Africa and other Sub-Saharan African countries.

The legislative and policy solutions put forward in the article include, the use of reversionary provisions in copyright legislations, structuring music business contracts to safeguard the interests of artists and strengthening the role of collective management organisations (CMOs). In conclusion, Baloyi appeals to the legislatures in Sub-Saharan Africa to take advantage of the evolutionary nature of copyright and its changing paradigm internationally:-

“Rather than holding to the tenets of a system that has so far failed their countries, it would be responsible for the legislators of these countries to start thinking of those elements in other copyright systems that they can incorporate into their laws to unshackle their authors from the harsh effects of the transferability rule.”

A Kenyan Perspective of South Africa’s Draft National Policy on Intellectual Property

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As many IP enthusiasts may have heard, South Africa has recently published a Draft National Policy on Intellectual Property (IP) (hereafter the Policy). Within the Kenyan context, this blogger has previously questioned the need for a national IP policy particularly in light of the recognition given to IP in the Constitution. However, for the purposes of this post, the policy provides a good basis for a comparative analysis of the state of IP in both South Africa and Kenya as well as possible recommendations to strengthen IP laws.

In the area of patents, Kenya’s IP office undertakes both formal and substantive examinations of patent applications whereas in South Africa, the Policy recommends the establishment of a substantive of a substantive search and examination of patents to address issue of “weak” vs “strong” patents. The policy’s recommendation to amend South African patent law to include pre-and post-opposition would also be instructive to Kenya.

Read the rest of this article here.

Protection of “BASMATI” in Kenya as Trade mark or Geographical Indication?

Daawat-basmati-rice

In a recent ruling by the Registrar of Trademarks, it was found that the word BASMATI does not enjoy prima facie recognition as a geographical indication (GI) in Kenya therefore its registration is permissible as a trade mark. A full copy of this ruling available here.

In this matter, Krish Commodities Limited (the applicant) had applied to KIPI for registration of six marks all bearing the word BASMATI. The Agricultural and Processed Food Products Export Development Authority (APEDA), a statutory body under the Indian Ministry of Commerce which is primarily in charge of export and development of agricultural and processed food products, including BASMATI rice filed a notice of opposition. APEDA argued that BASMATI was a GI that specifically denoted “a special and unique aromatic long grain rice grown and produced in a specific region of the Indian sub-continent, at the foothills of the Himalayas and falling in India and Pakistan.”

Through its local counsel, APEDA argued that the applicant sought to benefit from the substantial reputation and goodwill built up in connection with the name BASMATI. In this connection, it was alleged that the proposed registration was meant to deceive the public into believing that the applicant had proprietary rights over the word and name BASMATI or to cause confusion in the minds of the public as to the origin of the goods, and that the application was likely to impair, interfere with or take unfair advantage of the distinctive nature of the GI BASMATI.

In response, the applicant claimed that APEDA lacked locus standi to institute opposition proceedings as it was not the owner of the mark as desired to be registered. Furthermore, the applicant contended that it was not claiming any exclusivity to the word BASMATI and had agreed to disclaim the use of the word BASMATI. In this connection, the applicant contended that the application was not to register the mark BASMATI on its own but for the registration of different marks consisting of a combination of words. It was further claimed by the applicant that the word BASMATI was a common everyday word in the food and rice trade.

In making his ruling, the Registrar identified several key issues for determination including: the locus standi of the opponent; the legal position regarding ownership of the mark BASMATI in Kenya and the status of the word BASMATI under Kenyan law. In the first instance, the Registrar found that APEDA as the opponent had the locus standi to bring the oppositions. However the Registrar found that APEDA had failed to establish any proprietary rights to the word BASMATI such as would enable it to prevent its registration as a mark by any other party. The Registrar also found that APEDA had not established that under Kenyan law the word BASMATI is a mark whose registration is prohibited by reason of its being a geographical indication.

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This blogger was particularly delighted by the Registrar’s fancy footwork in steering clear of the rice wars between India and Pakistan over the registration of BASMATI as a Trade mark or a Geographical Indication.

At the international level, it has been argued that not much has changed since the TRIPS Agreement and therefore GI owners like APEDA continue to struggle to protect names like BASMATI in a world with no uniform mechanism for protection of GIs.

At the national level, it clear that there has been increased awareness and protection of GIs, In the present case, the Registrar is fully cognisant of the government’s obligations under TRIPS but finds that APEDA failed to take necessary steps to secure its IP rights in the word BASMATI within Kenya. In particular, it is important to note the enactment of section 40A of the Kenya Trademarks Act which was made in conformity with TRIPS, specifically to cater for GIs. This provision provides that geographical names or other indications of geographical origin may be registered as collective trade marks or service marks.

Access to Medicines in the Developing World: No to Evergreening in Novartis Case and No to Patent Linkage in Patricia Asero Case

As part of the World IP Day 2013 activities in Kenya, CIPIT will host a special intellectual property (IP) debate organised by the Aids Law Project (ALP) between students drawn from the local universities. The topic of this debate is: how the Novartis and Patricia Asero court decisions affect public health in developing countries. Although this blogger will not be able to attend the debate in person, what follows are a few ruminations on this debate topic.

The Supreme Court of India judgment in the Novartis case and the High Court of Kenya judgment in the Patricia Asero case seem to have one common consequence: making pharmaceutical companies very unhappy. Both these cases have placed the spotlight on the generic drugs industry. In the developing world, where few people can afford original patented medicines, many opt for generic versions of the same drugs that are sold for as little as 1/10th of the price of the original product. Therefore, what generics companies do essentially is to replicate drugs that are no longer protected by patents. This leaves the pharmaceutical companies with two main issues to deal with: Firstly how do they “extend” patent protection for their well-known drugs? Secondly how do they ensure strict IP enforcement in respect to their patented drugs? The first issue is illustrated in the Novartis case and the second issue appears in the Patricia Asero case.

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