Monday, 22 May 2017

Afro Chic

Africa Regional Update Today in Barcelona - 3pm Hall 8.0-D3

Ed Conlon and Sarah Morgan (WIPR) did a great job promoting today's Africa Regional Update in a two page spread in the INTA Daily News published by WIPR yesterday extensively quoting several of the speakers together with Alison Simpson from MarkMonitor.

This is just a friendly reminder to those of you who are at INTA to attend this session as well as the Africa Reception after that, and if you are not at the session, Afro-Chic will be tweeting about it all on the @afroip handle.

According to official INTA figures there are 10557 delegates registered for the Barcelona event which is a new record, and an increase by 18% of delegates from Africa over 2016 figures. Let's hope there is a great turnout for the RM50 Africa Regional Update which will be held in Hall8.0-D3 today at 15h30 - 17h00, followed by the Africa Reception hosted by INTA.


For the full article published online click here.

For more information on the session click here.

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Thursday, 11 May 2017

Caroline Ncube

Comesa - Update on recent IP developments and their continental impact

As reported here, Comesa adopted an IP Policy in 2013. In addition Comesa has an IP Unit, committee and programme. It has been forging ahead in relation to IP matters and this post comments on two recent developments and their significance.

First, in December 2016, COMESA signed a Memorandum of Agreement with ARIPO.  The purpose of the MoU is described as follows:"The MoU will facilitate cooperation in the harmonisation of policies, laws and strategies to promote IP development for the benefit of all. Through this collaboration, there will be capacity building and awareness creation on the importance of the use of IP for economic development and promotion of innovation and creativity in the region." The import of this is that ARIPO is more closely aligning its activities with regional economic community (REC) activities and will therefore be integral to unfolding regional integration developments.  This is a smart move because it allows ARIPO to spread its wings into policy and trade-related aspects of IP which it has, to date, not been focused upon.

Second, in April 2017, Microsoft 4Afrika transferred full ownership and management of its IP Hub to COMESA (see full report in the e-Comesa newsletter).  According to its online blurb, The IP Hub is intended to "as a portal of information on the various IP Authorities and IP landscape in the COMESA region". Such information would be an invaluable resource.

These strides taken by COMESA will have a large continental footprint because of the COMESA-EAC-SADC Tripartite Free Trade Agreement (TFTA) which will sweep 26 African states into its fold. The agreement is yet to come into force as the requisite 14 ratifications have not been reached. However, as it stands, it excludes IP aspects which are expected to be included in the next phase of negotiations which are required to be completed within 24 months of the entry into force of the TFTA.  When these negotiations open, COMESA, EAC and SADC will seek to advance the IP positions that they have taken in their sub-regional initiatives. Beyond this, the TFTA member states will be a major block in the proposed Continental FTA (CFTA) and ultimately, the African Economic Community which is intended to be in place by 2028. (see TRALAC "The relation between the Tripartite FTA and the Continental FTA") Therefore, the COMESA IP Policy and the recent developments noted above, will acquire an increased significance.

Future posts will comment on the EAC and SADC's IP initiatives.

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Friday, 21 April 2017


What you need to know about the ASA's predicament in South Africa

The Advertising Standards Authority's future in South Africa is in grave doubt and it not only affects them and their employees, but the entire advertising fraternity and all consumers. Here are some facts that you need to know about what is happening:
  • The ASA is a non profit body that has been in existence for 50 years, set up to assist self regulate advertising disputes. When working effectively it has allowed for speedy and relatively inexpensive dispute resolution for both competitors and consumers.
  • On 21 October 2016, the Advertising Standards Authority (ASA) went into Business Rescue (an intervention that attempts to prevent a company from its financial distress to prevent its liquidation).
  • The reasons why the ASA is in distress are:
    • lack of funding
    • lack of membership participation
    • high operational costs
    • costly litigation (the Herbex (pending) appeal and a damages claim of +-R17 million, set down for 6 March 2018)
    • decreasing use of its services (including competitor claims)
  • On 25 April 2017 is the ASA's second meeting of creditors and a special AGM has been called by the business recue practitioners to table a number of resolutions based on their research:
    • a new management team and board
    • a leaner organisation structure (from 20 to 13)
    • a long term funding model
    • a streamlined adjudication process
  • By 30 April 2017 the ASA needs to secure at least R5 million to cover its historical debt. Within a short time thereafter, a further R3 million is required to fund its operating capital in the immediate future. As a result a fund raising initiative is being launched at the special AGM.
  • The special AGM is taking place at the SAB World of Beer 15 President Street Newtown at 10am on the 25th. (Afro Leo just pointed out that this venue is interesting because it is a reminder of the 2015 packaging fight between SAB (now AB InBev) and  Brandhouse Beverages over the Amstel Lite packaging (see here reported on this blog for example). It is poignant because the case illustrates the very need for the ASA i.e. this type of case (based on imitation - a special ground under the ASA code) would not easily be adjudicated in a court because imitation alone is not passing off and the courts are very reluctant to rule favourably on unlawful competition claims where there is no passing off - eg Cochrane Steel).
  • The proposal for ongoing short term funding requires a commitment of R1.34 million per month from its members in proportion to their ad-spend.
  • A failure to secure short term funding will result in an application to liquidate the ASA which will be to the detriment of creditors, up to 20 people will lose their jobs and the ASA services will be lost and/or left to the courts (with cost and other disadvantages) and/or government (which will mean the advertising industry will be regulated by the state).
  • In the longer term the ASA intends to cover its costs through a hybrid model which includes an advertising levy (66%) and a contractually negotiated rates from media (34%).
  • The ASA has applied to become an industry ombudsman under the Consumer Protection Act. This could alleviate its litigation challenges (over jurisdiction) and over time resolve some funding issues. (Afro Leo points out that accreditation may take some time because of strategic differences between the National Consumer Council and other stakeholders)
  • The ASA are attempting to also deal with potential jurisdictional challenges through stronger member contracts requiring media, marketers and advertisers to agree to be bound by their Codes (which incidentally include the Sponsorship Code).
  • Their are various risks to accepting the Business Rescue Plan - the retrenchment process will be costly, there is an unquantified risk of a damages claim which could bankrupt the ASA, the ongoing jurisdiction battles over non members is subject to an appeal which could severely hamper the ASA if the appeal by them is not successful.
Here is the invitation to the special AGM.
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Thursday, 20 April 2017

Darren Olivier

Looking for INTA Accommodation?

If you are still in need of accommodation at INTA, I have access to a booking at the Renaissance Barcelona Fira Hotel for standard single room which is very close the convention centre. I need to cancel the booking today if it is not going to be used (my firm has kindly block booked for me elsewhere), so please email me here if you would like to take over the booking.

In the meantime, our friend Hans Muhlberg has been busy posting to the Afro-IP LinkedIn Group, take a look. Hans always has a great, and often entertaining, perspective.


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Friday, 7 April 2017

Darren Olivier

5 IP Reasons To Concentrate on Zuma - Azumi V Zuma's Choice Pet Products

The South African president’s name is in the news this week but perhaps not in a way in which you know.

The recent UK case of Azumi Ltd v Zuma’s Choice Pet Products Ltd & Zoe Vanderbilt is a case about a high end Japanese restaurant called Zuma suing a pet shop called Zuma’s Choice Pet Products and for using the tag line “Dine in with Zuma” for trade mark infringement on the basis of dilution (tarnishment), and succeeding.
Zuma restaurant
offending website

Practitioners may be interested in the judgement for a number of reasons:

·         It is another useful example of how to properly apply the European checklist test for trade mark infringement (in this case, dilution). Local courts and some attorneys and advocates still struggle to apply it properly (see earlier notes here, for example).

·         It illustrates that the requirement for showing risk of economic harm in tarnishment cases can be deduced from the nature of the case without necessarily showing actual evidence of loss of sales/change in economic behaviour. In this case it was the unpleasant association between dog food and human food that gives rise to the risk and the judge accepts that on the face of it.

·         Whether the South African government or even Jacob Zuma himself would have an interest in this case is interesting. Zuma has connotations other than as a Japanese restaurant and is current head of state. Is Article 6ter of the Paris Convention (S4 and S55-59 UK Trade Mark Act) wide enough to assist them? Put differently what if this was a “come dine with Mandela” dog food case, and why (or should) it be any different?

·         What if it was a “come dine with Trump” dog food case? This would be different because the Trump companies are likely to have a protectable interest in the name (there is an official Trump restaurant) as a trade mark and may be able to establish their own infringement on trade mark grounds. Incidentally, the Jacob Zuma Foundation has filed extensively for the protection of Jacob Zuma as a trade mark in South Africa.

·         The case contains a counterclaim based on “groundless threats”. This is a special provision in the UK Trade Marks Act (S21) to prevent bullying by trade mark owners. It was raised by the defendant/respondent in this case allowing them to cite the firm and the individual attorney in the papers; a stressful position to be in for anyone. But for a finding that the company name objection (only) was an unjustified threat, the attorney and firm were exonerated. Lesson: be careful when drafting those LODs, even in for local use (some companies have offices in the UK, for example).

Local UK press reported on it here.
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