High Court Declares Appointment of Anti-Counterfeit Agency Inspectors Unconstitutional

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“In my view fresh appointments to the positions of inspectors must be open to the public and such positions must be advertised. It therefore does not matter whether the interested parties were handpicked by the Board or Mr Igathe [Former Chairman of ACA Board of Directors]. The era of handpicking persons and appointing them as public officers was in my view buried with the retired Constitution and has no place in the current constitutional dispensation.” – Odunga J at para. 39.

In a recent judgment in the case of Republic v Anti-Counterfeit Agency Ex parte Moses Maina Maturu [2016] eKLR, the High Court quashed Gazette Notice No. 9451 published on 24th December, 2015 appointing several individuals (enjoined in the suit as interested parties) as inspectors of Anti-Counterfeit Agency (ACA). According to ACA, the present suit was a scheme to paralyze its operations instigated by persons who have been behind several court cases, which ACA has been forced to defend thereby directing its resources away from the fight against counterfeiting.

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Private Prosecutor Can Appear as Witness in Same Criminal Copyright Suit: Case of Albert Gacheru Kiarie and Wamaitu Productions

A recent judgment by the High Court in the case of Albert Gacheru Kiarie T/A Wamaitu Productions v James Maina Munene & 7 others [2016] eKLR is likely to have profound ramifications for the enforcement of intellectual property (IP) rights in Kenya. At the heart of this case is a catalogue of widely popular vernacular songs such as “Mariru (Mwendwa Wakwa Mariru)” which is featured in the video above by Gacheru and produced by the latter’s company, Wamaitu.

According to Gacheru, his music and those of other rights holders he was involved with through his Wamaitu label have all been the subject of piracy and copyright infringement for many years. From 2004, Gacheru was the complainant in a criminal copyright infringement case (Criminal Case No. PP 06 of 2004) and was later granted permission to privately prosecute the case but he was then barred from continuing to undertake the private prosecution for the reason that he intended to serve as a witness in the same case. Gacheru appealed this decision insisting that he should be allowed to act as private prosecutor and witness in his case. The present judgment settles this 12 year old dispute on this matter.

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High Court Judgment on Constitutionality of Equitable Remuneration Right and Copyright Collective Management

skiza safaricom caller ringback tone service copyright license collective management society

 

Previously we reported here that two content service providers and three individual copyright owners had filed a constitutional petition at the High Court challenging the content of the equitable remuneration right in section 30A of the Copyright Act, the application and implementation of section 30A by the collective management organisations (CMOs) and the manner of licensing and supervision of the CMOs by Kenya Copyright Board (KECOBO).

Recently in the case of Petition No. 317 of 2015 Xpedia Management Limited & 4 Ors v. The Attorney General & 4 Ors 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 content service providers and the copyright owners that the contents and implementation of section 30A are unconstitutional.

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Kenyan Java House Africa Triumphs Against Ugandan Cafe Javas in Crucial Trade Mark Court Case

Java House Africa Opens Grand Imperial branch Nile Avenue in Kampala Java House Coffee Shop Uganda Limited Photo by Sqoop

In a judgment delivered yesterday (February 9th 2016), the High Court of Uganda in Civil Appeal No 13 of 2015 has set aside the decision of the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB). Mr. Justice Madrama Izama allowed the appeal by Nairobi Java House Limited with costs and found that the two marks from Kenya and Uganda in question are capable of concurrent usage.

Readers will recall that in an earlier post here, we confirmed that Nairobi Java House had filed an appeal against the decision of the Registrar in relation to trade mark opposition proceedings filed by Mandela Auto Spares Limited. The proceedings were against the registration of trade mark application numbers 48062/2013 “Java House” and “Java Sun” and 48063/2013 “Nairobi Java House” in the name of Nairobi Java House. The Registrar in his ruling upheld the objection of Mandela Auto Spares Limited and found that the proposed registration of Nairobi Java House’s trade marks would lead to confusion in the marketplace.

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Judgment by Court of Appeal Sets Stage for Opposition of “SONY HOLDINGS” Trade Marks

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“Like the High Court, we are satisfied that the Registrar judicially and fairly exercised his discretion to extend time. He properly directed himself on the substance of the notice of oppsition so that the matter in controversy may be heard and determined with the benefit of evidence. The alternative, suggested by the appellant, namely to terminate the opposition proceedings on a technical procedural point, would be ineffectual, as the registration of the appellant’s trade marks would open new front of challenge and dispute between the same parties, on essentially the same issue.
We find no merit in this appeal. It is dismissed with costs.” – Githinji, Mwera & Ouko, JJ.A in the Judgment of the Court in Sony Holdings Ltd v Registrar of Trade Marks & another [2015] eKLR.

This blogger has come across the recently reported judgment of the Court of Appeal in the case of Sony Holdings Ltd v Registrar of Trade Marks & another [2015] eKLR. As previously discussed here, the so-called Sony case was filed in the High Court to challenge whether the Registrar of Trade Marks acted within his powers in extending time within which a notice of opposition to the registration of two trade marks could be lodged. Disatisfied with the decision of the High Court on this matter, Sony Holdings appealed to the Court of Appeal which has now delivered the present judgment. In its judgment, the appellate court upheld the decision of the High Court and found that the Registrar of Trade Marks had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.

A copy of the judgment is available here.

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Making Caller Tunes of Person’s Voice Not Copyright Infringement: Case of Ssebagala v. MTN Uganda Ltd & Anor

This blogger has come across a recent judgment from the High Court in Uganda in the case of Ssebagala v. MTN (U) Ltd & Anor. In this case, Ssebagala the former Mayor of Kampala spoke to journalists who were waiting outside the precincts of Parliament. Ssebagala was being vetted by Uganda’s Parliamentary Appointments Committee following his nomination for appointment as a Cabinet Minister.

During the question and answer (Q & A) session, Ssebegala is said to have responded to the journalists using his “characteristic style and skill which obviously generated a lot of merriment”. Ssebagala’s interaction with the press was publicly broadcast in Uganda as current news of public and political events. Thereafter SMS Media Ltd, the third party in the suit, adapted audiovisual recordings of Ssebagala into caller ring back tones (CRBTs) and offered these caller tunes to leading mobile network MTN Uganda for sale to the latter’s subscribers.

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