ARIPO, ARIPO Roving Seminars, Caller Ringback Tones, EAC, EAC Creative and Cultural Industries Bill 2015, Geographical Indications, High Court of Kenya, Industrial Designs, IP Month in Review, Kenya Court of Appeal, Korea International Cooperation Agency, Patents, Sony Holdings Ltd v Registrar of Trade Marks, Ssebagala v MTN, Trademarks, Trademarks Act, Uganda High Court, Weetabix Ltd v Manji Food Industries Ltd, WIPO, World IP Day 2015
This past month, there have been several interesting intellectual property (IP) law related developments from the World Intellectual Property Organization (WIPO) and African Regional Intellectual Property Organization (ARIPO), several important decisions from courts in Uganda and Kenya on copyright and trade mark matters and two significant legislative developments from East African Community (EAC) and Kenya respectively.
At the WIPO level, this month marks the unveiling of this year’s World IP Day theme titled: “Get up, stand up. For music”. In its press release, WIPO describes music as the “most universal of creative expressions” which “transcends borders and connects with some primal beat within all of us”. Through this theme, WIPO also appears to be paying tribute to the “inspiration and hard work of thousands of creative people around the world – singers and songwriters; musicians and publishers; producers, arrangers, engineers and many others” who are responsible for the music that we enjoy today. This year’s World IP Day theme invites us all to explore some of the changes shaping the music industry today, and interact with those intimately involved in the business of making music about how they see the future.
At the ARIPO level, there have been two major developments. Firstly, ARIPO announced the launch of its web-based Intellectual Property (IP) Administration System under POLite+ – the ICT Infrastructure Modernization Project sponsored by Korea International Cooperation Agency (KOICA). During the launch, ARIPO reports that new paper-based applications for patents, industrial designs, trademarks, utility models and search requests domains and notifications or documents associated to IP applications were captured into the system successfully. Secondly, ARIPO successfully executed its on-going series of Region-wide “Roving Seminars” in Kenya with the first two days (Monday 16th and Tuesday 17th of March 2015) being devoted to copyright matters under the theme: “Copyright in the Digital Environment” and last two days (Thursday 19th and Friday 20th of March 2015) being devoted to industrial property matters under the theme: “Protection and Promotion of Patents, Trade Marks, Industrial Designs and Geographical Indications”.
Meanwhile in Uganda, the High Court delivered a significant judgment in the case of Ssebagala v. MTN (U) Ltd & Anor. In this case, Ssebagala the former Mayor of Kampala spoke to journalists who were waiting outside the precincts of Parliament. Ssebagala was being vetted by Uganda’s Parliamentary Appointments Committee following his nomination for appointment as a Cabinet Minister. During the question and answer (Q & A) session, Ssebegala is said to have responded to the journalists using his “characteristic style and skill which obviously generated a lot of merriment”. Ssebagala’s interaction with the press was publicly broadcast in Uganda as current news of public and political events. Thereafter SMS Media Ltd, the third party in the suit, adapted audiovisual recordings of Ssebagala into caller ring back tones (CRBTs) and offered these caller tunes to leading mobile network MTN Uganda for sale to the latter’s subscribers. In its judgment, the court found against Ssebagala stating that he cannot claim authorship for the purposes of the Ugandan Copyright and Neighbouring Rights Act and therefore no economic or moral rights allegedly belonging to Ssebagala had been infringed by MTN and SMS Media. From the judgment, it is clear that counsel for Ssebegala gravely erred in claiming Ssebagala was author/co-author of the ringtones and that the copyright in the suit ringtones vests in him.
Back in Kenya, there were two significant decisions by the Court of Appeal and High Court respectively. In the case of Sony Holdings Ltd v Registrar of Trade Marks & another  eKLR, the main challenge was whether the Registrar of Trade Marks acted within his powers in extending time within which a notice of opposition to the registration of two trade marks could be lodged. In its judgment, the appellate court upheld the decision of the High Court and found that the Registrar of Trade Marks had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.
Meanwhile in the High Court, an important ruling was made in the case of Weetabix Ltd v. Manji Food Industries Ltd HCCC No. 53 of 2013. In this case, Weetabix had approached the High Court seeking a temporary injunction restraining Manji Foods, the makers and distributors of Multibix from engaging in any commercial dealings with the product Multibix. According to Weetabix, the application became necessary because despite the ruling of the Registrar of Trade Marks (as highlighted here), Manji Foods has continued to distribute and sell the Multibix product causing damages as result of trade mark infringement. The court found for Weetabix allowing its application for injunction. At the core of the ruling by Ogolla J was an unequivocal affirmation of the decision by the Registrar of Trade Marks from In Re TMA No. 66428 “MULTIBIX” Opposition by Weetabix Ltd 31 August 2012 where Weetabix had successfully brought opposition proceedings against the registration of the trade mark “MULTIBIX” in respect of “biscuits” (in class 30) on the grounds of likelihood of confusion contrary to Section 14 of the Trade Marks Act and that “WEETABIX” was a well-known mark under Section 15A of the Act.
Finally, an important legislative development is in the works within the EAC with the EAC Creative and Cultural Industries Bill, 2015 which was read for the first time and committed to the Committee of General Purpose during the Fourth Meeting of the 3rd Session of the 3rd Assembly plenary session held in Arusha, Tanzania. In the course of this past month, an EAC Committee has been covering all EAC Partner States holding public hearings to sensitise stakeholders on the Bill and receive views and contributions from them to be incorporated into the Bill.