#ipkenya Weekly Dozen: 31/08

• Ethiopia: Gearing up the postal sector to drive development [UPU]
• Egypt: Mo Salah accuses Football Association of ignoring image rights [BBC]
• Ghana: ARIPO launches Masters in Intellectual Property at KNUST [Going Places]
• Nigeria: ‘White gold’ – GM cotton hope for troubled textile industry [GLP]
• South Africa: Collecting society SAMRO under fire over multi-million US Dollar Dubai investment [Apparently]
• Zimbabwe: ARIPO Magazine Vol.8 No.2 is out [Get Your Copy Here]
• Kenya: Struggle to modernise traditional medicine is far from won [The Star]
• Double Trademark Law Whammy this week over at Afro-IP [Afro Leo & Friends]
• ICYMI: This Blogger is Now A Member of the Copyright Tribunal [Shameless Plug]
• New Paper Looks At Differential Protection For TK, Folklore [IP-Watch]
• Creative Markets and Copyright in the Fourth Industrial Era: Reconfiguring the Public Benefit for a Digital Trade Economy [Okediji]
• 5th Global Congress on Intellectual Property and the Public Interest [Register Here]

For more news stories and developments, please check out #ipkenya on twitter and feel free to share any other IP/ICT-related items that you may come across.

Have a great week-end!

Through the Roof: Iron Sheet Firm Sues for Trade Mark, Industrial Design Infringement

 

In what could be a precedent-setting case for the roofing products market, a leading iron sheet manufacturer is claiming both trade mark and industrial design protection for two of its roofing brands against a smaller rival company. The recently reported ruling in Royal Mabati Factory Limited v Imarisha Mabati Limited [2018] eKLR was the courts’ first attempt to deal with industrial property protection for corrugated iron sheets widely used as roofing material known in Kiswahili as ‘mabati’. Although not clearly distinguishing between the aspects of industrial design and trade mark protection, the court was prepared to rule in favour of Royal and grant its application for a temporary injunction against Imarisha.

Trade Mark vs Company Name Registration: Innscor Int. Battles Rwandan Companies, Pizza Inn Ltd and Chicken Inn Ltd

In a recent media report here, the Commercial Court of Nyarugenge in Rwanda has ruled that it will not proceed with a case filed by Innscor International accusing two local companies Chicken Inn Limited and Pizza Inn Limited of trademark infringement in Rwanda. The basis of this ruling was reportedly that Innscor had not demonstrated to the court that it had “legal status according to the law governing registered entities in Rwanda”. Technicalities aside, it is clear that once Innscor produces its certificate of incorporation in court, this case would proceed to consider the merits of Innscor’s claim (as illustrated by the picture above), namely that registration of a name as a company name by entity A should not trump any rights in such a name acquired previously by entity B through trade mark law.

Book Review: Intellectual Property Law in East Africa by Prof. Bakibinga and Dr. Kakungulu

Over the past five years, this blogger has not had the opportunity to write a single book review because no texts on intellectual property (IP) law have been published in the East African region. We now have our very first text to review: “Intellectual Property Law in East Africa” recently published by LawAfrica Ltd and written by David Bakibinga and Ronald Kakungulu, both from Uganda’s Makerere University School of Law.  The description on the back of the book (presumably authored by the publisher) reads in part that: “The text deals primarily with the law relating to intellectual property protection in Uganda (…) Throughout all the chapters reference is made to the corresponding Kenyan and Tanzanian laws and relevant cases in order to give the reader a regional appreciation of the subject. Intellectual Property Law in Uganda is aimed at students pursuing intellectual property law courses in Ugandan and East African Universities as well as peripheral students of intellectual property in the humanities as well as natural,technological and health sciences disciplines. It will also be useful to legal practitioners in the field of intellectual property as a ready reference on the subject.”

As readers may have already noted, the title of the book is confusingly referred to both as “Intellectual Property Law in Uganda” and “Intellectual Property Law in East Africa” on the spine, front cover and back cover of the book. So as not to judge this book by its cover, this blog briefly examines the contents of this 260 paged paperback text to establish whether it is a book on IP Law in Uganda or a book on IP Law in East Africa or something else altogether.

Outdoor Advertising Dispute in City Clock v Country Clock Trade Mark and Industrial Design Case

In a recently reported ruling in the case of City Clock Limited v Country Clock Kenya Limited & another [2016] eKLR, the plaintiff sought injunctive orders against the defendants barring them from conducting advertising business on the clocks units using the name “Country Clock”, which was similar to the registered trade mark “City Clock”, which it was contended, were confusingly and deceptively similar in set-up, get-up and appearance to the Plaintiff’s clock units.

According to the Plaintiff, the main issue in its application for interim orders was that the Defendants have been using a name that is so similar to that used by the Applicant for over thirty (30) years, which similarity in name, it averred, is phonetically similar to the pronunciation of the Applicant’s trademark of “City Clock”.

Trade Mark Squatting, Blackmail and Prior Use Defence: High Court Ruling in Clips Kenya v Brands Imports Africa

Recently, Kenya Law reported the case of Clips Limited v Brands Imports (Africa) Limited formerly named Brand Imports Limited [2015] eKLR which involved three disputed trade marks: ATLAS, FANTASTIC and ALPHA registered in class 16 in Bahrain, Saudi Arabia, Yemen and Kuwait by Clips Kenya’s parent company, Hoshan. From 2010 to-date, Clips Kenya has been trading in goods bearing Hoshan’s marks under a Royalty Agreement in existence from 2009. However, in 2013, Brands Imports registered all three disputed marks in Kenya which led to Hoshan commencing expungement proceedings before the Registrar of Trade Marks.

In the intervening period, Brands Imports, the registered proprietor of the disputed marks in Kenya, wrote a letter to Clips Kenya demanding a 5% payment of royalty. In the letter, Brands Imports threatened to lodge complaints with government authorities to prevent Clips Kenya from continuing to import and sell in Kenya the goods bearing the disputed marks. According to Clips Kenya, Brands Imports’ actions amount to unlawful interference of it’s business and that it could rely on the ‘prior use defence’ provided in section 10 of the Kenya Trade Marks Act.

Commercial Appropriation of Personality and Image Rights Protection: Uganda High Court Decision in Asege Winnie v. Opportunity Bank

“…the mere lack of a legal regime in our jurisdiction that address the question image rights cannot be taken to mean that persons who suffer wrongs cannot seek redress from courts of law when in actual fact they are aggrieved.” – Hon. Justice Peter Adonyo in Asege Winnie v. Opportunity Bank (U) Ltd & Anor [2016] UGCOMMC 39

This blogger has come across a recent High Court judgment from Uganda in the case of Asege Winnie v. Opportunity Bank (U) Ltd & Anor [2016] UGCOMMC 39 which sheds new light on the emerging topic of personality rights and protection of image rights, which is not catered for in a perfect “unified” legal system but rather in a combination of rights and causes of action under the Constitution, common law and various statutes on intellectual property, defamation and consumer protection.

How A Typo Cost Safaricom the “OKOA STIMA” Trade Mark in Favour of Colour Planet

Recently, a leading newspaper published a story here stating that Safaricom Limited had obtained interlocutory orders against Colour Planet Limited stating that the latter was “forbidden from interfering with any contracts Safaricom has under the banner Okoa Stima, suggesting to any third party that Safaricom does not have the right to use the name Okoa Stima.” The rest of the story is filled with several contradictory and confusing facts regarding trade mark searches made, trade mark applications filed and trade mark registrations with respect to the Okoa Stima mark by both Safaricom and Colour Planet.

This blogpost is intended to set the record straight on the specific issue of the chronology of events at the Trade Mark Registry of Kenya Industrial Property Institute (KIPI) involving both Colour Planet and Safaricom between March 2015 and January 2016. For intellectual property (IP) practitioners, this post may also serve as a cautionary tale on the importance of care and caution when handling your clients’ matters pending before KIPI.

Kenya Copyright Board Suggests Guernsey Approach to Image Rights Protection

The most recent edition of Kenya Copyright Board (KECOBO) newsletter (cover pictured above) focuses on photography and image rights. A copy of the full Issue 18 is available here.

In the lead article starting on page 4 by KECOBO Executive Director, a compelling case is made in favour of specific legal protection of image rights, particularly in the case of celebrities. The article uses the oft-cited case of Dennis Oliech v. EABL (previously discussed here) to illustrate the limitations of existing intellectual property (IP) regimes in cases of commercial appropriation of one’s personality and/or image.

The article reads in part as follows:

“The use of images and personality rights is gaining currency and there is need to ensure that the same is well regulated and third parties do not take undue advantage of the commercialisation of the same. Guernsey provides a good example and maybe we should follow suit.”

This view from the Copyright Office begs the question: will Kenya be better off with a specific law on image rights like Guernsey? This blogger argues that the answer must be “No”.

Nairobi Java House Rebranding as Trade Mark Appeal Looms in Uganda

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

Many readers will recall that earlier this year the Registrar of Trade Marks in Uganda ruled in favour of Mandela Auto Spares in a matter filed to oppose the move by Nairobi Java House Limited to register trade marks containing the word JAVA in class 43 (restaurant services). The basis of the Ugandan company’s claim was that it was the registered proprietor of trademark numbers 29297 JAVAS in class 30; 40162, 47765, 47766, 47767 all CAFÉ JAVAS in classes 30, 21, 32 and 43 respectively. A copy of the ruling is available here.

This blogger has learned that Nairobi Java House now rebranded as Java House Africa is in the process of appealing the decision of the Registrar in the Commercial Court. In the meantime, Java House continues its aggressive expansion across East Africa and beyond, according to Reuters.