Tuesday, 5 December 2017

Darren Olivier

Is the ADEC Logo too close?

A new political party has just emerged in South Africa and it is called the African Democratic Change (ADeC) lead by Dr Makhozi Khoza. It's new logo has caused some outcry and much attention for the new party. This is why:


On the left hand side is the logo of the ANC and on the right hand side, that of ADeC. On the face of it there are a number of distinguishing factors; the use of blue, the juxtaposition of the various elements making up the mark and the fact that many of these elements are not uncommon in local political party logos. You can see that in this illustration below:


The use of circles, colour combinations of yellow and green and flames/sun type elements are quite common. One could argue that people/voters are used to these combinations and will focus on other parts of the logos, and not be confused. But is this the end of the matter? 

The reality is that there are certain very stark similarities in the logos, especially the use of the black, green and yellow combination in the flame device in the ADeC logo. These colours are identical to the ANC colours (in exact pantone colour it appears), and also are juxtaposed in the same combination i.e. black, yellow then green. There are other important similarities too; the clenched hand holding a torch & spear, and the circle and wheel device and flag/flame flying concepts.

Passing Off and Trade Mark Infringement

Under South African law it is possible to own rights in colour combinations if one can establish a reputation in them, or if they are registered as such in the colour combination at the national trade mark office. It is almost certain that even if the ANC have not registered the colour combination, that it will be able to establish a reputation in those colours. The question then is whether as a result of that reputation, the use of the combination by ADeC may result in a likelihood of confusion.

Importantly, it is then not the entire ANC logo that is compared with the ADeC logo, but simply the colour combination in which it can show a reputation. Once can immediately see then, that arguments for a likelihood of confusion become greater and quite possibly could succeed. This ground is known as passing off.

Under trade mark infringement it really depends on how the mark is registered. If the colour combination is registered then the enquiry is much the same, though it could be more straightforward. If there is found to be use of an identical trade mark for identical services (as covered by the registered trade mark), then there is no need to show a likelihood of confusion, and the ANC would prevail.

Under the Advertising Standards Association Code

This is a code that regulates advertising in South Africa against advertising that is in conflict with the code. The new ADeC logo will qualify as an advert under the code and could be open to an objection by the ANC, if it can show that there is misuse of its advertising goodwill in the colour combination. This enquiry is very similar to the ground of passing off explained above, and if the ANC can show a likelihood of confusion then they will prevail.

However, there is an even stronger potential ground under the code and that is "imitation". If there is imitation of an advertising concept then, even if there is no likelihood of confusion, the ASA Code could be used to stop advertising with that logo amongst members of the ASA, which include industry bodies regulating print, media and online advertising in the country. This could prove powerful even though the ANC or ADeC are not likely to be members of the ASA - the ASA's recent ruling in the Herbex case  (on jurisdiction of the ASA and its indirect effect over non members) may come to their aide on this point.
 
The difficulty with using the code is that political advertising is excluded from the scope of the code. Consequently this forum would only be available in very limited circumstances.

Under the IEC Code

This code is aimed at ensuring free and fair elections in South Africa. The code has specific provisions against "plagiarising other party's symbols, names and acronyms" and can impose a fine of R200 000 against a wrongdoer. Plagiarism is arguably more difficult to show than imitation and passing off because it implies actual copying, and is more a copyright term. (This is not really a copyright dispute as the colour combination is probably not able to meet the originality threshold for copyright to exist). That said, if one accepts that the colour combination is that of the ANC as an advertising concept or under passing off, then copying of that may sway the decision maker, rendering it plagiarism under the IEC code.

Additional comments

This is not the first time, political parties are having a spat over logos. Indeed the ANC took on COPE in a similar (but different) dispute many years ago as reported on this blog here. Some may well say that this is intentional by ADeC, that the media coverage is well worth the legal risk and it probably is. As mentioned in these posts (here and here) on the new UKIP logo in the UK and the public commentary on the possible furore with the Premier League over logos, it is important for political parties to get proper registered protection for their symbols. 




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Saturday, 2 December 2017

Afro Leo

Has South Africa’s IP agenda been captured?

Recently Afro Leo caught up with Prof Sadulla Karjiker and Dr Madelein Kleyn to discuss the Anton Mostert Chair of Intellectual Property Law’s Commentary on South Africa’s Draft Intellectual Property Policy Phase 1 2017 (the Draft) from the Department of Trade & Industry (DTI). Serious concerns were raised, not just about the Draft but also about South Africa’s position on IP in general, and the consequences are potentially far-reaching.

Context

The Draft is South Africa’s second attempt to formulate a policy after the IP Regulatory Framework debacle in 2013 attracted widespread criticism and condemnation. You can read about those using the search function on the blog here (top right). That effort was binned and the subsequent IP Draft was made available in August 2017.

The Anton Mostert Chair of Intellectual Property Law (the Chair) is an independently-financed division that forms part of the Faculty of Law at the University of Stellenbosch. It seeks to safeguard and promote the integrity and quality of South African intellectual property law. Its first chair, Prof Owen Dean, was a very outspoken critic of a number of recent endeavours to amend and create new IP laws and policies. For example, the Chair took the DTI to task over its attempt to introduce traditional knowledge legislation, and, arguably, was successful, as the Department of Science & Technology is now championing bespoke legislation, which is what the Chair called for.

Commentary

Prof Dean retired at the end of 2016 and Prof Karjiker took up the mantle. The Commentary is compiled by Prof Karjiker and Dr Kleyn and if you expected them to be more docile, pandering or diplomatic than their predecessor, you are in for a surprise. The second paragraph of the Introduction sets the tone: “We can only bemoan the poor quality of the 2017 Draft IP Policy” and the remainder of the document is of a similar ilk. You can read it all here.

It’s not all negative. Essentially, the Chair welcomes the concept of an IP Policy but laments the limited scope of the document, which is essentially confined to pharmaceutical patents and public health, though recognising that some passing mention is made of the role of IP in stimulating the economy, competition law and IP, and traditional knowledge protection. The Chair calls for the re-establishment of an effective Standing Advisory Committee on IP Rights, which was so influential in updating the laws toward the end of the last century, amongst other things.

Discussion

During our animated conversation over the Commentary, the concern over the IP landscape in South Africa becomes more apparent. “We are lamenting the poor quality of stewardship of IP in South Africa, and there is no sign of improvement,” exclaimed Sadulla, amidst concerns that the process, the decision makers and influencers are not fully disclosed. There is real suspicion that the DTI has been “captured by anti-IP rhetoric from action groups who venture politically-attractive propositions that IP inhibits access, whether it be to healthcare, books or job creation through competition.”

Sadulla and Madelein accept that South Africa has certain requirements as a developing economy and needs to formulate a bespoke IP policy. Indeed they welcome robust debate on the issues. However, they feel that “South Africa has become a playground for proxy wars”; that local experts in intellectual property are not being consulted or being ignored, and that the influencers are from very powerful corporate interests and global in nature “who are engaged in their own ideological battles that are being tested in South Africa,” explains Sadulla. The problem is even more far-reaching as there is “also a perception that if these influencers are successful in undermining IP rights in South Africa, the effect will resonate within the rest of Africa too”, he went on.

Their view is that the DTI is ill equipped to deal with these influencers because they have all but abandoned the Standing Advisory Committee on IP, which once was so influential and now exists only in name, if at all.  The establishment of the Inter-Ministerial Committee on Intellectual Property (IMCIP) focusses on limited fields of IP and industry sectors, and includes no private-practice IP specialists, they explain in the Commentary together with other indications supporting their view.

They argue that it is evident from the Draft that the DTI is unable to properly interrogate the sweeping, but politically attractive, sentiments of baying action groups. For example, explains Madelein “[the Draft] incorporates very selective commentary and suggestions of the former framework debates but most proposals have been completely ignored, and without explanation. The result is a high-level overview of limited scope without substance”. It is difficult then not to conclude that there is not “an insidious agenda”, that the DTI have taken an “anti-IP stance whereby they are attempting to whittle away or dilute intellectual property rights,” Sadulla chimes in.

Comment

The Commentary is of course one of a number on the Draft. It is important though because the view of the Chair does not appear to be tainted by anything other than a genuine interest in producing appropriate world class IP laws and policies in the country. They clearly feel that they are not being heard or are being ignored, with little or no feedback from the DTI and no real debate on the issues. Their conclusion that there is a capture of the IP agenda may well be using the same politically charged rhetoric that they complain of but if it is true, and their case is plausible (if not compelling) then the IP community (not just locally but also abroad) should take notice because damage will be done. The DTI has a case to answer and another opportunity to do so now that it has comments on the Draft. Can they emerge as a true leader for Africa on IP policy? Sadulla and Madelein are not holding their breath, but let’s hope so.
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Thursday, 16 November 2017

Afro Leo

Zimbabwe: African Resilience Shines Through

Brenda Matanga  sent Afro-IP a message today to re-assure the IP community and investors that Zimbabwe remains open for business.
 
Its business as usual” she exclaimed as she updated on the Zimbabwe Institute of Patent & Trade Mark Agents' talk this afternoon on the procedure for trade mark oppositions at ARIPO. She described the attendance as being a "full house of IP practitioners" including the Deputy Chief Registrar who made a presentation.
 
"We are good. ... Zimbabweans just calmly getting along as if nothing is happening. Just playing it by the ear too… but we are working."
 
Earlier today, @DarrenTOlivier tweeted "I am reliably told by the effervescent receptionist at @ARIPO that it's business as usual at their offices and at Zimbabwe Intellectual Property Office (ZIPO) based in Harare. Basically, if you want to invest in Zim, they will help you!"
 
Today's talk: phot creds - Brenda Matanga







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Wednesday, 15 November 2017

Aurelia J. Schultz

Kenyan Company Secures Music Licensing Rights to Stream Global Catalog

Select your location on Mdundo
The big international music news in Africa is usually about an African artist signing with an American label, but this time, Mdundo.com has flipped the meza.  Mdundo has licensed the rights to stream Warner Music's catalog in Kenya, Uganda, Tanzania and Nigeria (one of these things is not like the others...). Disrupt Africa and Billboard provide some details, including much optimism from Mdundo CEO Martin Nielsen and Africa Warner Music South Africa Director Tracy Fraser.

Mdundo has been operating for five years and happens to one of Afro-Ng'ombe's favorite spots to find new African tracks.  (See a little footnote here from Kingsley's tour d'Africa in 2012.)  The Kenyan company received start-up capital from Berlin-based incubator 88mph, which focuses on web and mobile startups that target the African markets.  From the beginning, it sought to set itself apart as a service that not only provided accessible music to listeners but also paid artists.  (Phillip Nyalenda broke down the payment math last year here.)  Originally, Mdundo users purchased music via scratch cards like those used for mobile top-up minutes.  Now they can download, stream and pay directly from their phones or PCs. 

Mdundo features music from around the continent and has specific website arrangements targeted for users in Kenya, Tanzania, South Africa, Nigeria, Uganda, Ghana, Mozambique, Zimbabwe and Zambia.  The news reports do not mention why South Africa, Ghana, Mozambique, Zimbabwe and Zambia are not included for streaming rights.  Speculations, especially from people and animals hanging out on an IP blog, may focus on copyright law and issues commonly associated with digital music, such as internet service provider (ISP) liability and making available rights.  But not all of the countries where the Warner catalog will be available through Mdundo have these in their current laws.  This leads Afro-Ng'ombe to shrug, moo, and assume it has something to do with market demand verses costs; South Africa and Ghana may already have platforms distributing Warner's music. (And to this Zed music fan, it seems Zambia and Zimbabwe are often left out.)  In any case, and it is quite exciting to see an African-based company distributing external content instead of vice versa.

As always, thoughts and more info are welcome in the comments!  For those interested in more info about Mdundo, there is an in-depth interview with CEO Nielsen here.

Hat tip to @dorianpeters and @ellabmosheim.
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Monday, 13 November 2017

Afro-Buff

Roundtable turns its focus to the pharma industry and invites you

This is an invitation to a roundtable discussion on the harm of illicit trade and the role of trade mark counterfeiting within the pharmaceutical industry organised by the Companies & Intellectual Property Commission in association with the South African Liquor Brand Owners Association.

The roundtable is part of a series that envisages examining the role of counterfeiting as part of illicit trade in the various industry sectors. 

The objective is to foster collaboration between industry and government to combat trade mark counterfeiting and address the importance of cooperation, capacity building and education of all role players and stakeholders.  Special emphasis will be placed on a strategy to ensure efficient enforcement to combat the trade in counterfeit goods.   

The enforcement of intellectual property rights is one of the crucial cornerstones of economic growth. This interactive session will focus further on the challenges in the pharmaceutical industry, remedies that are available and how to access them. 

The importance of creating awareness to ensure that the general public is protected will also be discussed.  The Roundtable will provide a platform through which government can reach out to industry and simultaneously create awareness of the harmful effects of illicit trade on consumers.

Topics to be discussed:
-       The role of government in the fight against counterfeit trade.
-       The value of applying for and securing formal brand protection through registered trade marks is often dismissed or overlooked, which has the potential to expose a brand to significant risk.
-       Why formal trade mark registrations should be considered as part of any brand protection strategy – and should be considered early,
-       The remedies available in the Counterfeit Goods Act, 1997.
-       The role of the MCC.
-       Cross Border Protection The African Continent- Vanessa Ferguson Senior Partner Kisch IP.   
-       Current critical issue IMSA.
-       Traceability Solution.
High quality brands are losing market share due to the excessive inflow and manufacture of second rate counterfeit products.  Formulating a strategic approach to collaborate can facilitate how these industries align their strategies to win against a common threat. 

Relevant industry players will partake in a panel discussion

RSVP: here and find our more about upcoming get-togethers, at the Waterholes.
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