Patent Litigation in Kenya: Lessons from the Sanitam Services East Africa Cases

UPDATE: The Star Newspaper has confirmed the invalidation of Sanitam’s patent no AP 773 in an article published here.

“The [matter] before us focuses on a branch of law which has scanty litigation and therefore minimal jurisprudential corpus in this country, but which has exploded on the world stage since the end of the 19th Century when the international community formed two international unions to promote it – Intellectual Property” – Court of Appeal in Sanitam Services East Africa Limited v Rentokil Limited 2006

IPKenya’s friend and the Chief Patent Examiner at KIPI informs us that the Industrial Property Tribunal has recently made a ruling revoking patent no AP 773 granted to Sanitam Services with respect to is sanitary bin. This brings to conclusion a long and arduous battle fought by Sanitam against several manufacturers since the late 90s to protect its sanitary bin invention.

This blogpost chronicles the various court cases brought by Sanitam both nationally and regionally to assert its patent rights. It is argued that Sanitam has made an enormous contribution to advancing intellectual property law jurisprudence and raising pertinent issues in the area of patent prosecution and litigation.

In 1997, Sanitam alleges that it designed and invented a foot-operated litter/sanitary disposal bin for use in the hygienic storage and disposal of sanitary towels, tampons, surgical dressings, serviettes and other waste material. One of the novel features of the sanitary bin invention claimed by Sanitam is that it has a flap opening to receive the waste and covering the contents inside so that whoever is operating it cannot see the contents inside even when using it and also the odour is minimized by the invention. This invention titled “Foot Operated Sanitary/Litter Bin” (ARIPO patent No AP 773) was granted and issued in October 1999 by the African Regional Intellectual Property Organisation (ARIPO).

In Sanitam Services (EA) Ltd v. Anipest Kenya Ltd & Anor Civil Case No. 1898 of 2000, the late Justice Peter John Smithson Hewett sitting in the High Court dismissed a suit filed by Sanitam seeking an injunction to prevent Anipest from carrying out any acts exclusively granted to an owner of a patent under section 36 of the Industrial Property Act of 1989 (now repealed). PJS Hewett’s ruling dated March 2001 is significant as it addresses a major shortcoming in the operationalisation of the repealed Industrial Property Act, namely the absence of the Industrial Property Tribunal over 10 years after the Act came into effect. More significantly, this ruling offers the first critical analysis of Sanitam’s novelty claims in the sanitary bin invention.

The learned judge, reviews the abstract of Sanitam’s abstract and states:

“Assuming as I do, that the ARIPO rules of patentability are the same as or very similar to those of Kenya, I return to the abstract to see what it tells me particularly about novelty.
“A foot operated litter/sanitary disposal bin comprising a container (1)[”:] nothing novel there;
“closeable by a cover (2)”: nothing novel there either:
a disposal lid(3)”-still nothing novel:
“at the top, with the disposal lid being displaceable by a foot operated pedal (4)”: still nothing novel:
“and a lift lever (5)…” nothing novel,
“to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container, waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
I only have to look at this matter prima facie. Are all these attributes prima facie novel. Prima facie they seem to be to me on evidence many many years old: certainly they do not seem to me to be prima facie novel-which is all I have to consider.”

This blogger submits that this finding by the learned judge paved the way for other litigants and manufacturers to question the validity of AP 773 which has now finally culminated in the revocation of the patent by the Industrial Property Tribunal.

In Sanitam Services (EA) Ltd v Rentokil (K) Ltd & Anor Civil Suit No. 58 of 1999, Sanitam moved to the High Court orders of permanent injunction to restrain Rentokil Ltd and Kentainers Ltd from manufacturing, selling and distributing the sanitary bins which infringed on its patent. Rentokil and Kentainers contended that they were already manufacturing the product before the plaintiff had obtained a patent over the invention. Therefore they argued that Sanitam could not claim exclusive rights over the product.

In Justice Onyango Otieno’s ruling delivered in May 2002, the court dismissed the Sanitam’s suit holding that it failed to prove that it had obtained a patent over its foot operated sanitary bin. In addition, Sanitam was already distributing its product 2 years prior to the registration of the patent. Therefore Rentokil and Kentainers had not infringed Sanitam’s rights by creating a similar product and obtain a market for it.

This case is significant for at least three main reasons. First and foremost, the court upheld patents granted by ARIPO as valid and enforceable within Kenya pursuant to the latter’s obligations under the ARIPO Protocol.

Secondly, although the court made several obiter dicta remarks regarding the novelty of Sanitam’s bin invention, the court ultimately held that Courts of law must defer to the National Patent Office KIPI and the Regional Patent Office ARIPO on questions pertaining to the patentability of any invention in dispute. According to the court, KIPI and ARIPO are the bodies with the technical know-how to investigate the patentability or otherwise of inventions and that in the present case, one of the two had presumably investigated the invention and found it fit to grant a patent for it. Therefore whoever challenges the grant of any patent must do so before these institutions and not in court.

Finally, the court made an important finding on the burden of proof in matters relating to infringement of industrial property, particularly where the industrial property in question is unregistered. In the case of Sanitam, the court found that since there was no patent in existence at the time a similar bin to Sanitam’s was produced, Sanitam could not claim patent infringement.

In Sanitam Services (EA) Ltd v Rentokil (K) Ltd Civil Appeal No. 228 of 2004, Sanitam moved to the highest court in the land (at the time), the Court of Appeal, seeking for the Court to reverse the above decision of the lower court (High Court) in favour of Rentokil. Sanitam’s appeal against the High Court Decision was partially successful as the Court of Appeal granted Sanitam an injunction for the lifetime of the disputed patent AP 773 with effect from 16th December 1999. However the Court of Appeal did not award Sanitam any damages thereby concurring with the High Court’s determination that Sanitam had not discharged the onus of proof.

In 2008, ARIPO published an entry in its Journal to the effect that Sanitam’s patent AP 773 had lapsed for failure to pay annual fees. Soon thereafter, Sanitam brought an appeal against the decision of the ARIPO Patent Office removing its patent from the Register due to non-payment of annual maintenance fees. It was argued that maintenance fees were consistently late since the patent was granted in 1999. The ARIPO Appeal Board concluded that both parties were to blame for the delays in the payments; the Office had failed to send reminders, which it is required to do under the Harare Protocol. Therefore the Office was urged to strictly observe the provisions of the Protocol particularly those pertaining to time limits, information delivery and processing procedures.

Consequently, the Appeal Board ordered the patent be reinstated in respect of the designated states, including Kenya and Uganda.

In Sanitam Services (EA) Ltd v Bins Nairobi Services Ltd Civil Suit No. 597 of 2007, Sanitam successfully moved the High Court for orders of injunction against Bins restraining the latter from a host of acts alleged to be infringing on Sanitam’s patent AP 773.

The issue for determination by the court was found to be whether Sanitam had established a case to entitle the court to grant the orders of injunction sought. In making this finding, the court reaffirms the earlier position of the High Court in the Rentokil case that the court is not the right institution to question the patentability of any invention in dispute and is bound to respect a patent duly issued by KIPI and/or ARIPO.

Therefore with respect to Sanitam’s onus of proof, the court found that the latter had proved that it had a valid patent ARIPO Patent no. AP 773, which was infringed by Bins through the acts of offering for sale or hire of foot-operated sanitary bins without Sanitam’s authorisation.

In Rentokil Initial Kenya Ltd v Sanitam Services (EA) Ltd Civil Suit No. 702 of 2008, Sanitam successfully defended a suit filed by Rentokil seeking that the former be restrained from threatening, intimidating, harassing, embarassing and confusing Rentokil’s clients and customers over sanitary bins it provides.

Rentokil moved to the High Court after Sanitam wrote letters to the former’s clients warning them to stop using its sanitary bins, which Sanitam considered an infringement of its patent AP 773. Rentokil’s line of reasoning was that it had developed a new bin by changing certain features to distinguish it from Sanitam’s bin registered as AP 773. Therefore Rentokil claimed that by writing letters to its clients, Sanitam was seeking to enforce a patent over a completely different bin.

Sanitam’s defence was simply to focus on its granted patent and prove to the court that Rentokil’s bin was similar to its AP 773. To this end, Sanitam presented an expert report to substantiate that the two bins were similar and that the functionality of Rentokil’s bin was same as that covered under patent AP773.

It is argued that if Rentokil had focussed on Sanitam’s threatening letters rather the differences between its bins and Sanitam’s patent, Rentokil may have been successful with its application for injunction at the Industrial Property Tribunal under section 108 of the Industrial Property Act. This section reads:
“108. (1) Any person threatened with infringement proceedings who can prove that the acts performed or to be performed by him do not constitute infringement of the patent or the registered utility model or industrial design may request the Tribunal to grant an injunction to prohibit such threats and to award damages for financial loss resulting from the threats.”

All in all, this case is instructive to all litigants in industrial property matters to purse their matters with the Industrial Property Tribunal rather than with the High Court, in the first instance.

In Chemserve Cleaning Services Ltd v Sanitam Services EA Ltd [2009], the Industrial Property Tribunal ruled that it had no jurisdiction to hear applications to revoke patents granted by ARIPO. Sanitam challenged the Tribunal’s jurisdiction in a preliminary objection stating that section 59 of the Industrial Property Act only incorporates patents granted by ARIPO in relation to their effect in Kenya and that other issues such as revocation and not expressly contemplated in the section.

The section reads as follows:

“59. A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act except where the Managing Director communicates to ARIPO, in respect of the application thereof, a decision in accordance with the provisions of the Protocol that if a patent is granted by ARIPO, that patent shall have no effect in Kenya.”

Therefore the main issue between the parties was the meaning of the word “effect” in the above section. Sanitam successfully convinced the Tribunal that “effect” simply means “the powers conferred to a right holder by the patent in Kenya”, therefore the only matters the Tribunal can hear related to infringement and compulsory licensing.

This decision by the Industrial Property Tribunal was reversed by the High Court in an ex parte judicial review application heard and determined by Justice Musinga on December 1, 2010. Chemserve Cleaning Services Ltd obtained an order to compel the Tribunal to reinstate, hear and determine an application for revocation of ARIPO patent AP 773 filed by Chemserve in 2008.

In Sanitam Services (EA) Ltd v Tamia Ltd Petition No. 305 of 2012, Sanitam sought reliefs from the court to have Tamia prevented from violating its IP rights over the invention patent no. AP773, including the destruction of all infringing bins in Tamia’s possession. Justice Majanja’s ruling sheds crucial light on the state’s obligations under the Constitution with regards to intellectual property rights under Articles 11 and 40.

The learned judge rightly dismissed Sanitam’s petition with two well-reasoned findings: firstly, the petitioner had failed to demonstrate how the State (in this case, KIPI and/or the Industrial Property Tribunal) had failed to honour its obligations under the Constitution. Secondly, it was unnecessary for the petitioner to invoke Article 22 of the Constitution to enforce IP rights since these are “ordinary rights” that can be enforced through the legal mechanisms provided by statute law (in this case the Industrial Property Act).

In Chemserve Cleaning Services Ltd v Sanitam Services EA Ltd [2013], the Industrial Property Tribunal rejected Chemserve’s request for the invalidation of Sanitam’s patent no AP 773.
This case is significant as the Tribunal makes several findings on the time period and burden of proof requirements when requesting revocation of a patent.

With regard to the time period requirement to revoke a patent, the Tribunal held that the legislative intent behind section 103 was to prevent a situation where a party becomes aware of a patent, then “literally sits on the right to revoke it until a later date for commercial convenience in the form of damages and accounts for profits”. The Tribunal also noted that Chemserve had failed to file for an extension of time under Rule 33 at the time it filed the request for revocation.

Even if Chemserve had filed its request in a timely manner, the Tribunal held that it had failed to meet the burden of proof required to establish that the patent was invalid. Chemserve argued that the patent lacked novelty and inventive step and formed part of prior art however it chose not to produce any evidence other than the affidavit and statement by its General Manager!

We are back full circle to 2014, where a recent report indicates that the Industrial Property Tribunal in a ruling made on 21 January 2014 has revoked patent no. AP 773. This blogger will examine this ruling once it is made available to the public.

All in all, it is beyond dispute that the long list of Sanitam cases presented above have in one way or another shaped the landscape of intellectual property litigation in Kenya and in Africa.

Survey: Intellectual Property Specialisation Among Kenyan Lawyers

In 2013, the Law Society of Kenya upgraded its public Search Engine for Advocates to include a “Advocate Search by Specialisation” field, much to the delight of this blogger. This enhanced search engine will go a long way in enabling members of the public to find legal practitioners that specialise in their areas of need.

Each year, all Advocates are required by law to renew their Practicing Certificate with LSK. During this application process, Advocates fill in a form which requires them to specify their areas of specialisation in practice. This data forms the basis of LSK’s new and improved search engine.

In the case of intellectual property (IP) law practice, the LSK search engine lists a total of 25 lawyers that spend a minimum of 60% of their time on IP matters ( >60%). This blogger has reviewed the LSK search engine list and added internet links to useful information about each of these lawyers.

> 90%

Catherine Bunyasi
Patrick Ikimire
Peter Kamero
Henry Kibet Mutai
Muthoni Mucheru
Nancy Karanu
Paul Nzeveka
James Thuku

> 80%

Wandiri Karimi
David Opijah
Shem Otanga
Jackson Awele
Stella Mwaniki

> 70%

Linda Opati
Judy Njeru
Faith Were

> 60%

Anne Munene
Lilian Omondi
John Kamau
John Mose
Kenneth Kibathi
Rose Nandasaba

Most IP lawyers would concur with this blogger that this list is missing several notable IP advocates, some of whom are members of the LSK Committee on IP and IT. Therefore all IP lawyers must be encouraged to clearly and accurately specify their IP specialisation so as to enable other professionals and members of the public to have access to a more comprehensive list of all IP legal expertise available in Kenya.

Kenyan Cattle Herdsboy Seeks Petty Patent Protection for “Lion Lights” Invention

For those who may not know, IPKenya’s friend Dr Isaac Rutenberg is the voice behind a series of blog articles over at the Afro-IP blog dubbed “Diary of A Patent Lawyer in Kenya”. In his latest entry, he explains that he was “helping a 14-year old Kenyan attempt to secure IP rights after he had designed a system useful in rearing domestic livestock as well as in wildlife conservation.” He further discloses: “At our inventor’s [the 14-year old Kenyan’s] request, and with the guidance of a local wildlife conservation group, we prepared and filed a Utility Model Certificate application.”

This blogger is strongly convinced that the Utility Model (UM) application in question is in respect of the “Lion Lights” invention by young Richard Turere and supported by WildlifeDirect, in particular CEO, Dr. Paula Kahumbu.

Earlier this year, the Daily Nation published a story about a 13 year old boy Richard Turere: “the young Maasai boy who figured out how to scare off lions by irritating them with flash lights.” According to WildlifeDirect, a local wildlife conservation group, Turere was discovered while the group was working on a project to find new ways to reduce human lion conflict in the Kitengela area just south of the Nairobi National Park in Kenya.

Turere’s invention was born out of a necessity to protect his family’s cattle herd from carnivorous predators, especially lions since they lived right on the edge of the Nairobi National Park. Turere is said to have used his knowledge of lions’ fear of flashing lights to devise an automated lighting system made up of torch bulbs, a box, switches, an old car battery and a solar panel. According to reports, Turere’s lights are “designed to flicker on and off intermittently, thus tricking the lions into believing that someone was moving around carrying a flashlight”.

It is reported that “since Turere rigged up his “Lion Lights,” his family has not lost any livestock to the wild beasts, to the great delight of his father and astonishment of his neighbours.” This invention has become very popular and “around 75 “Lion Light” systems have so far been rigged up around Kenya”. With the support of WildlifeDirect, Turere has presented his invention at the well known TED Conference in 2013 and obtained a scholarship to one of Kenya’s top private preparatory schools.

Comment:

Right off the bat, this blogger was pleased with some of the the comments in the original Daily Nation story about Lion Lights where a couple of ordinary Kenyans wondered whether Turere had obtained patent protection for his invention.

These comments demonstrate an increased awareness of intellectual property, its value and the importance of securing IP rights.

Secondly, I salute Dr Rutenberg and his team over at CIPIT for the good work they are doing in helping Kenyans like Turere to identify, understand, protect and promote their IP rights using the various IP systems available in Kenya.

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

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.

Publicly Funded Intellectual Property: Why Kenya Needs a Bayh-Dole Law and Lessons from South Africa

“Every Kenyan is an inventor.” – Anon.

With the enactment of the Science, Technology and Innovation (ST&I) Act 2013 (discussed by this blogger here), it is imperative that the central government legislates on the management of intellectual property (IP) emanating from publicly financed research and development (R&D). Such legislation would ensure that IP from publicly funded R&D is commercialized for the benefit of all Kenyans in line with the State’s IP mandate under Article 40(5) of the Constitution. This is also consistent with an increasing awareness in Kenya of IP as an instrument for wealth creation.

In the context of publicly funded research, institutions such as universities can be encouraged through an enabling legal framework to protect and commercialise the fruits of their research. Such a legal framework would, among other things, clearly delineate the rights and obligations of the public funders and the researchers. In support of such legislation, this blogger submits that Kenya’s IP legal framework must reflect a manifest desire to transition from a resources-based economy to a knowledge-driven economy.

Read the rest of this article here.

The Rise in Intellectual Property Disputes in Kenya: Some Thoughts

Recently, this blogger weighed in on the topic of the rise in intellectual property (IP) disputes in Kenya. This theme was also picked up by the Business Daily in their regular column here. For IP enthusiasts, these are exciting times in Kenya as new IP disputes are constantly reported. Here are some of this blogger’s thoughts on the subject in no particular order.

1. Public Awareness/Ignorance

Presently information can be disseminated faster, cheaper and more widely than ever before. From an IP perspective, this situation has resulted in an encouraging increase in public awareness about IP rights. The public is keen to fully understand the nature and scope of IP rights so as to effectively take steps to cash in on their creations, innovations and inventions. Public institutions, civil society organisations supported by main-stream media, private entities and individuals are all actively engaged in sharing as much information as possible on IP rights.

Read the rest of this article here

Local Universities To Host Two Patent Drafting Training Courses in August

This August, IP enthusiasts, practitioners, professionals and students will have a choice of two separate patent drafting courses both taking place within Nairobi. The first option is a patent drafting and dispute resolution course organised by Kenyatta University (KU). The second option is a training course on drafting and prosecuting patent applications jointly organised by the Kenya Industrial Property Institute (KIPI) and Strathmore University (SU) Centre for IP and IT Law (CIPIT). Details of this SU course are available online at the CIPIT Law Blog here.

Here are some of the details IPKenya readers may need to decide whether to attend both courses, or one of the two courses or none of them.

1. Dates, Venues & Duration:

The KU course runs for five (5) consecutive days from 5th to 9th August 2013 at KU’s Conference Centre.
The SU course runs for four (4) consecutive days from 12th to 15th August 2013 at SU.

2. Charges:

The KU course costs Kshs 65,000.00 which includes lunch and teas but excludes accommodation and transport.
The SU course costs Kshs 50,000.00 which includes lunch, teas and training materials. However, participants who register and pay the fee by 2nd August 2013 will enjoy a special rate of Ksh. 45,000.00.

3. Resource Persons:

KU’s course will be facilitated by Eng. Pierre Fuller, MSc. B.Mech, B.Arch – A Patent Agent at Ropes & Gray LLP and Prof. Ethel Monda, PhD in Plant Pathology at KU.

SU’s course will be facilitated by Mr. David Njuguna, Chief Patent Examiner at KIPI and Dr. Isaac Rutenberg, PhD.,JD. at SU CIPIT.

IPKenya would like to encourage everyone to take advantage of this rare opportunity and atleast attend one of these training courses. Any feedback, comments and thoughts on the courses are most welcome via the comments box below or through email at ipkenyan@gmail.com.

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.

Plant Breeders vs Farmers: SADC Draft Protocol for the Protection of New Plant Varieties

Plant Breeders rights became an accepted branch of intellectual property with the adoption of the International Convention for the Protection of New Varieties of Plants (UPOV) in 1961.

The Convention protects the variety of the plant not the plant itself therefore the subject matter of protection is the variety and not the whole plant. A variety is a new plant that is distinct from any other variety that is known to agriculture or published in any botanical literature. A variety is ‘known to agriculture’ if man has cultivated it. A variety is ‘known to botanical literature’ if it has been recorded. Therefore any person who discovers a new plant variety that is wild, that man can use or domesticate, can apply to the competent authority for a Grant of a Plant Breeder’s Right.

The UPOV Convention 1961 was subsequently amended in 1978 and 1991. Kenya was the first country in Africa to domesticate the UPOV Convention. Kenya’s Seed and Plant Varieties Act Chapter 326 is modeled on UPOV 1961. South Africa’s Plant Breeders’ Rights Act 1976 is modeled on UPOV 1978. For a practical look at the protection of plant breeders rights in South Africa, this blogger has previously discussed the recent High Court decision in Voor-Groenberg Nursery CC and Another v Colors Fruit South Africa (Pty) Ltd [2012].

Recently, it has been widely reported (see: here, here and here) that over 80 civil society organisations from the Southern African Development Cooperation (SADC) region and beyond have prepared a detailed submission to the SADC Secretariat calling for the rejection of the SADC Draft Protocol for the Protection of New Varieties of Plants. One of the key contentions raised by these civil society groups was that the Draft Protocol is modeled on the “one-size-fits-all” UPOV 1991. UPOV 1991 abolishes the farmers’ privilege in UPOV 1978 which allowed farmers to use the harvested material from plant varieties as propagating material but this privilege can be withdrawn at any time. Looking at Article 27 of the Draft Protocol, the farmer’s exception is limited in scope as it “only allows an exception for subsistence farmers.”

Furthermore, all countries acceding to UPOV 1991 were required to protect at least 15 plant genera and species for the first 10 years, whereas the draft protocol requires protection of all plant genera and species and does not provide for any transition period.

UPOV 1991 also introduces the concept of an essentially derived variety (EDV), which is expressly excluded from plant variety protection. This concept was intended to address the problem of new breeders that would modify an existing variety and seek to have such a variety protected under plant breeders rights. With the concept of EDV, any plant variety claimed to be new but whose essential characteristics or features are similar to existing plant varieties shall not be deemed to be new. The same concept of EDV can be found at Article 26(3) of the Draft Protocol.

Thus, the Draft Protocol, like UPOV 1991, is perceived as a move to strengthen the hands of the breeder to the detriment of the farmer by allowing greater privatisation of seeds and plant material.

The fundamental question which arises in this context is the role of IP in food security. The exceptions made for farmers are intended to be the last safety valve for the developing countries as well as a key balancing factor on the issue of food security. However, poor farmers under UPOV 1991 are required to buy seeds even for subsistence farming. The consequence is that farmers are now using low quality seeds for planting because they can no longer access the original seed. This has led to cases of low yield, famine and malnutrition all partially blamed on IP system.

In the early 1990s, plant breeding was a thriving industry involving not only by individuals but also multinationals like Monsanto, pharmaceutical companies like GlaxoSmithKline and even national parastatals like the Kenya Agricultural Research Institute (KARI). This period also saw the emergence of genetic use restriction technologies (GURTS) popularised by Monsanto. For instance, the one generational seed also know as ‘terminator seeds’ were seeds that were inserted with a gene that meant farmers could only plant the seeds once, thereafter it would only produce weeds.

This campaign to strengthen plant breeders rights and curb infringement by farmers, in the early 1990s culminated in the 1994 TRIPS Agreement of the WTO. Article 27 paragraph 3(b) expressly stipulates that all member states shall provide for the protection of plant varieties either by patent or by an effective sui generis system or a combination thereof. Sui generis in this context has been interpreted to mean either UPOV 78 or UPOV 91 or any other effective system.

Civil society organisations opposed to the draft SADC protocol argue that this flexibility in Article 27(3) of TRIPS has been removed without taking into account the different types and needs of farming systems within the SADC region. This blogger is persuaded by the argument by civil society and refers to TRIPS which makes it optional for WTO members to either opt for UPOV or a sui generis system for protection. This blogger argues that given the socio-economic differences among SADC member countries, a sui- generis mechanism would be better suited for plant variety protection within the 15 member states of SADC. The process of developing a sui generis system would allow for wider consultations between plant breeders and farmers with the aim of arriving at a mutually satisfactory balance between the various rights and interests involved.

Given the legally binding nature of protocols generally, this blogger argues that SADC member countries must seriously consider the submissions of the civil society before deciding on whether to adopt or reject the Protocol. Once the Draft Protocol is ratified by two thirds of the member states, it becomes a legally binding document committing all SADC Member States to the objectives and specific procedures stated within it.

Intellectual Property and Outdoor Advertising in Kenya

Businesses often spend much time and money to create a successful advertising campaign. It is important to protect your intellectual property (IP) assets, so that others do not unfairly copy or free-ride upon your innovative creations.” – Lien Verbauwhede, WIPO.

Like in many parts of the world, the advertising sector in Kenya is the new battle-ground upon which businesses compete to creatively and uniquely pass on relevant information to customers so as to facilitate and positively influence their buying decisions. It is generally agreed that for an advertisement to be effective, it must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones. Outdoor advertising, in particular, is considered a cost effective way of giving messages the maximum exposure. Outdoor advertising includes billboards, outdoor signs, printed messaging, street banners, posters, brochures etc.

This blogger has noted an increase in the number of creative new outdoor advertisements by both medium-sized and large companies leading to a surge in the number of billboards along streets, highways in urban areas. Billboards are so far the preferred medium for outdoor advertising. there are several types of intellectual property rights that are involved in billboard advertising. For instance, most of the creative content on the billboard (writing, pictures, art, graphics, lay-out) may be protected by copyright along with any advertising slogans which may also be protected by trademark law.
In addition, industrial design law may be crucial for protection of billboards. Industrial designs cover the three dimensional form of billboards provided that such form gives a special appearance to a product of industry and can serve as a pattern for a product of industry. In the case of ENG Kenya Ltd v Magnate Ventures Ltd (2009), both the plaintiff and defendant carried on business in the outdoor advertising sector and the plaintiff alleged that the defendant had infringed on the plaintiff’s design for ‘suburban signs’. The court held that the registration of the plaintiffs’ design at the Kenya Industrial Property Institute (KIPI) was proof enough that the design was unique and capable of registration. The plaintiff could therefore claim exclusive right to the design. The court further stated that the defendant copied the plaintiffs’ design in bad faith.

For printing and branding companies, it is important to be very conscious of IP issues in their various advertising solutions. In this regard, the case of Alternative Media Ltd v Safaricom Ltd (2004) is instructive. The plaintiff, who is in the business of advertising graphic designing and media communication solutions, sued the defendant claiming copyright infringement on the plaintiff’s design that it had submitted to the defendant as a proposal to be used on the 250 airtime scratch cards. The court held that the defendant had indeed infringed on the plaintiff’s rights under copyright law because the design they used on their airtime scratch cards was substantially the same as the one submitted by the plaintiff to them as a proposal.

Another exciting area of outdoor advertising is transit advertising. This blogger has previously highlighted the Triple P Media project which involves advertising fused with high-quality custom-made audio and audio-visual content playing in public service vehicles (PSVs) countrywide, in addition to other public places like supermarkets, malls, banking halls, bars, clubs, restaurants etc. There is also the promising innovation by FlashCast Ventures, who have developed a method of scrolling advertisements via LCD displays installed in PSVs. These LCD screens are fitted with global positioning system devices hence messages are programmed to be location specific. This means it is possible to preset a commercial on a supermarket to run when the bus is within its proximity and broadcast special offers, promotions, and goods available. Although geo-local transit advertising may not meet the threshold of absolute novelty required for patent protection in Kenya, there may be other aspects of FlashCast that may be patentable or eligible for industrial design and utility model protection.