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  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.
This week President Kenyatta (pictured above) signed into law the Companies Bill 2015 that does away with the Companies Act Chapter 486 of the Laws of Kenya which is an archaic piece of legislation dating back to 1948. The new Companies Act is aimed at revolutionising business in the country by removing various pre-existing legislative stumbling blocks to doing business in Kenya. From an intellectual property (IP) perspective, the new Act has several important provisions that will affect how IP assets are managed by various business entities.
With over 1,000 sections, the new Act is incredibly detailed (bulky) and comprehensive. It codifies common law principles – in particular, the indoor management rule and common law fiduciary duties of directors. Along with this, it modernises company law by recognising electronic communication and the use of websites and other electronic avenues for a company’s communications. The new Act has also increased the penalties and fines for offences relating to companies. This blogpost will highlight some of the major changes in the new Companies Act.
South Africa’s Department of Trade and Industry has published a draft Copyright Amendment Bill for public comments within 30 calendar days from July 27, 2015. The Draft Amendments addresses key provisions of the Copyright Act, No 98 of 1978 and the Performers Protection Act, No 11 of 1967, which are viewed as outdated in light of developments at the international level in particular with regard to the digital environment. A copy of the Draft Bill is available here.
The Preamble of the Draft Bill provides a list of the proposals to revamp South Africa’s Copyright Act 98 of 1978 such as: to provide for the protection of copyright in craft work; to provide for the accreditation and registration of Collecting Societies; to provide for the procedure for settlement of royalties disputes; to provide for access to copyright works for a person with disabilities; to provide for the protection of ownership of orphan works by the state; to provide for the establishment, appointment, powers and functions of Intellectual Property Tribunal.
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.
“When Bob Marley and the Wailers laid down the opening track on Burnin’ in a Kingston recording studio some four decades ago, they likely had little idea how far their simple, straightforward tune would resonate, becoming an enduring international anthem for human rights.
Such is the power of music.” – WIPO, 2015.
The theme for World Intellectual Property (IP) Day 2015 is out: “Get up, stand up. For music”. In its press release, the World Intellectual Property Organization (WIPO) describes music as the “most universal of creative expressions” which “transcends borders and connects with some primal beat within all of us”. Through this theme, WIPO also appears to be paying tribute to the “inspiration and hard work of thousands of creative people around the world – singers and songwriters; musicians and publishers; producers, arrangers, engineers and many others” who are responsible for the music that we enjoy today.
This year’s World IP Day theme invites us all to explore some of the changes shaping the music industry today, and interact with those intimately involved in the business of making music about how they see the future. In this regard, WIPO asks:
“What is the future of our relationship with music? How will it be created and disseminated? How will we listen to it? And how will we ensure that all those involved in bringing us this universal pleasure can make a living from their craft?”
This blogger wishes everyone all the best as preparations to celebrate and reflect on this year’s #worldipday theme begin.
In the African context, this blogger highlighted Kenya’s successful 2014 World IP Day activities here and hopes that this year will be equally memorable.
“…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  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  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.
On 27 August 2010, this blogger was among hundreds of Kenyans who witnessed the promulgation of Kenya’s Constitution. On numerous occasions here, we have discussed the far-reaching impact the 2010 Constitution has had on intellectual property laws in Kenya. For the first time in Kenya’s history, intellectual property (IP) norms were constitutionalised with corresponding obligations placed on various arms of the government to ensure that these constitutional provisions are actualised for the benefit of Kenyans.
One of these provisions is Article 11 which reads as follows:
“Article 11 – Culture
11.(3) Parliament shall enact legislation to—
(a) ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage; and
(b) recognise and protect the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.“
As a result of the above, Parliament is required to enact legislation to ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage. This legislation should also address the recognition and protection of the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.
In this connection, the Fifth Schedule of the Constitution requires that the legislation in respect to Culture under Article 11 must be enacted by Parliament within the first five years from the date of promulgation of the Constitution. Therefore the deadline for enactment is no later than August 27, 2015!
In a bid to meet or beat this deadline, the Ministry of Sports, Culture and the Arts has begun the process of formulating a piece of legislation on Culture. The Ministry plans to hold a stakeholders’ workshop on January 30, 2015 at KICD to develop a Bill on Culture that will later be tabled before Parliament. In preparation for this planned workshop on formulation of the National Culture Bill, the Ministry has circulated a zero draft of the Bill available here. This draft is clearly ‘zero’ as it is largely incomplete except from a few provisions relating to a proposed National Council for Culture and the Arts and a National Fund for Culture and the Arts.
This blogger’s reading of Article 11(3) is that the legislation on Culture must address important concerns touching on the promotion and protection of traditional knowledge (TK), traditional cultural expressions, folklore as well as certain in situ genetic resources. In this regard, there may be considerable overlap between the proposed National Culture Bill and the 2013 Bill on the Protection of Traditional Knowledge and Traditional Cultural Expressions Bill, previously discussed here and here. In fact, the Premable of the proposed draft TK Bill reads: “This legislation will give effect to provisions of Article 11 and 40(5) of the Constitution of Kenya 2010.”
Another case of inter-ministerial mis-communication, per chance?
From an IP perspective, this blogger believes that an important question to be answered in the formulation of the Bill on Culture is whether to use the existing IP rights systems including industrial property, copyright and plant breeders rights or to develop a sui generis system for the promotion and protection of Culture.