#ipkenya Weekly Dozen: 06/07

WIPO GII 2018 Dg3UBxgU8AAcHOu

  • The Global Innovation Index (GII) 2018 to be released next week [You’re Invited]
  • What the WTO decision on plain packaging means for developing countries [devex]
  • Time for a bioeconomy in Africa [ICIPE]
  • How fab labs help meet digital challenges in Africa [The Conversation]
  • Lionel Messi: Image Rights, International Financial Flows, Tax Havens and its Impact on Africa and Kenya [Academia]
  • Uganda’s Troubling Social Media Tax [HRW]
  • Kenya’s Digital Taxi Services Paralyzed, Strike Enters 4th Day [VOA]
  • Comment on South Africa’s Copyright Amendment Bill Until 18 July [PEN SA]
  • On the 36th Session of the WIPO – IGC: An Interview with Professor Chidi Oguamanam [Flora IP]
  • Ghana’s Copyright Administrator ordered to release funds to Audio-Visual Rights Society [GNA]
  • Intellectual Property Issues in Access and Benefit-sharing Agreements [WIPO]
  • Governance Issues of Nigerian Music Collecting Society, COSON Continues [Afro-IP]

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

Have a great week-end!

For the Second Time, Sony Trade Marks Case Goes to the Court of Appeal

SONY CYPyJGaWEAIOGvM

Since 2014, we have chronicled on this blog here, here and here an interesting trade mark dispute in Kenya between local company Sony Holdings and Japanese electronics maker Sony Corporation. This blogger is reliably informed that an appeal has already been filed in the Court of Appeal against last month’s decision of the High Court in the reported case of Sony Corporation v Sony Holding Limited [2018] eKLR. In order to discern the likely grounds of appeal, it is important to consider this recent judgment made by the High Court.

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Proposed Amendments to Intellectual Property Laws in Kenya

statute-law-miscellaneous-amendments-bill-no-2-of-2016-submission-memoranda

On 11th November, 2016, pursuant to Special Issue of Kenya Gazette Supplement No.185 (National Assembly Bills No. 45) the Attorney General published the Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016. It is recalled that this Bill is intended to “make minor amendments which do not merit the publication of separate Bills and consolidating them into one Bill”. The Bill proposes to amend several intellectual property (IP) laws including Industrial Property Act, 2001 (No. 3 of 2001), Copyright Act, 2001 (No. 12 of 2001) and Anti-Counterfeit Act, 2008 (No. 13 of 2008).

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

City Clock Nairobi Kenya by SE9 London

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”.

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

hoshan clips kenya trademark case brands imports limited 2016

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.

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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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Sorry, Sony: Japanese Electronics Maker Fails to Prove “SONY” Trade Mark Well-Known in Kenya

sony shop kenya anisuma traders P1040664

Recent media reports indicate that Sony Corporation has filed an appeal in the High Court against the decision of the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI) allowing the registration of two trade marks namely “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS).

Given the high likelihood that the High Court may defer to the expert determination of the Trade Mark Registrar, this blogpost considers the ruling made by the Registrar in the opposition proceedings with the costs totaling about Kshs 1,252,400.00 awarded to Sony Holdings.

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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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New Regulations Prohibit Registered Trade Marks as Company Names – Problem?

Companies Registry at Office of Attorney General Sheria House Nairobi by Business Daily

In an earlier post here, this blogger reported that Kenya finally enacted a new and comprehensive company law legislation. The Companies Act 2015 contains an express provision on prohibited names which states that the Registrar of Companies has the discretion not to register a company if the name applied for reservation is offensive or undesirable.

The Act states that the criteria to be used by the Registrar to determine whether a particular name is offensive or undesirable shall be prescribed by the regulations. This blogger is now pleased to report that the regulations in question have been published in the Kenya Gazette. From an intellectual property (IP) perspective, it is notable that the regulations contain a provision intended to provide greater certainty in situations where a company is registered using a name that is identical to a registered trade mark belonging to a third party.

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