Category Archives: Intellectual Property

Victims of their own success: Has M-PESA become a generic trademark?

11 Wednesday Dec 2019

Posted by in Intellectual Property, Trademark

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By Caroline Wanjiru

On 27th November 2019 the President of the Republic of Kenya released the Building Bridges Initiative Report (BBI Report) which is a document prepared and compiled by the Building Bridges to Unity Advisory Taskforce (Taskforce). The mandate of the Taskforce included collecting information from Kenyans on various national matters. To participate in this process, we have opened our Jadili platform inviting comments on the BBI Report to ensure our voices count. To comment or discuss the report please visit the Jadili Website and make your voice count. This post is not about the BBI Report though but on the content of the said report.

A list of abbreviations and acronyms assists the reader to understand how the words have been used and applied in the document. On page 6 of the report under abbreviations and acronyms, there is reference to ‘MPESA-Mobile Money Transfer Service in Kenya’. This reference presupposes that M-Pesa is not proprietary and does not tell the reader who owns it, if any. It leaves room for open interpretation for instance that there M-Pesa is a Kenyan service-owned by Kenya; that there are no other mobile money transfers in Kenya; presupposes that it is a public good, and not related to an individual. These statements may be correct and has associated legal implications for M-Pesa.

So why is this abbreviation/acronym significant?

M-PESA is a mobile-based money transaction service offered by Safaricom. It is proprietary to Safaricom. The service, which is available to all Safaricom subscribers, allows them to deposit, transfer, withdraw and pay for goods and services using a mobile phone. M-Pesa word is a derivation of the words ‘mobile money’ put together as M for mobile and Pesa (Swahili) for money. M-Pesa fame has continuously grown since its launch and has won several accolades especially within the country. See the success of M-Pesa story here. Is this why the BBI Report referred to it?

As mentioned, M-Pesa is owned by Safaricom one of the communications companies in Kenya. As a proprietary right, Safaricom has fought legal battles to protect its rights in the word. However, in 2014 Safaricom removed the exclusivity clauses in all its M-Pesa Agents’ contracts allowing the latter to operate other mobile money transfer services owned by other communications companies in Kenya. The exclusivity removal was a few months shy of the decision by Competition Authority requiring the removal of the exclusivity. This means that an ‘M-Pesa Shop’ can be offering other services other mobile money transfer services. From this, the question becomes, has the word M-Pesa been used so frequently that it has become generic for mobile money transfer service as referred to in the BBI Report?

In ordinary Kenyan conversations, it is possible to hear Kenyans use the word M-Pesa loosely to mean transfer of money on their mobile phones. We pose the question, how many of us have used the following phrases on column A to mean the phrase on column B?

A B
How much
should I Mpesa
you? 		Asking how much to transfer to another on
mobile platform
Can I M-Pesa
you? 		Asking if payment can be done on the mobile
platform, mostly as an alternate to cash
transaction.
I will M-Pesa you the
balance 		Confirming that money will be sent on the
mobile platform
Who should we
M-Pesa? 		Asking who should be the recipient of the
monies on the sent on the mobile platform
When is the deadline to M-Pesa? When is the deadline to transfer monies on the mobile platform
I will M-Pesa you from
the bank 		Monies will be sent from a bank account
but to a mobile phone

These are a few examples. The phrases under column A utilize the word “M-Pesa’ as a verb to mean ‘transfer of monies over a mobile platform’. Whilst Safaricom owns Mpesa, there are admittedly other platforms owned by the other communications companies whose services in this instance fall under column A. The last phrase has been used to mean that the transferor will send monies from their bank account over the mobile platform and/or that they will be physically in the bank when transferring the monies.  

The BBI Report, a document authored after collecting views nationwide and without referring to Safaricom has used the word M-Pesa as a verb to mean mobile money transfer service in Kenya. On Page 113, the Report explains that ‘M-Pesa enables cash and voucher transfers in every part of the country’. Whilst this is not synonymous to the above uses, one wonders why the authors of the Report could not attribute the platform to Safaricom.

Is it not a good thing that M-Pesa is so used?

Yes and no. It is a good thing that as a brand, M-Pesa has stood out; has been associated with great achievements and has made Kenyan lives better.  However, the above common uses of the word makes M-Pesa synonymous with mobile money transfer. It risks it becoming generic or associated with the ‘act of transferring money over a mobile platform’. Should this happen, there are several risks that come to fore:

  1. The word loses its distinctiveness, which is one of the requirement under law for the registration of trademarks in Kenya. See section 2 of the Trademark Act.
  2. If registered as a trademark for mobile money transfer, the trademark becomes generic, descriptive, and susceptible to removal from the register of trademarks on these grounds.
  3. All other communication companies, financial institutions and generally anyone offering ‘M-Pesa-like’ services become entitled to use the word to describe their mobile money transfer platforms. The trademark now falls in the public domain.
  4.  Safaricom loses the proprietary rights in the word M-Pesa and therefore unable to enforce any trademark rights against any third party who uses the word M-Pesa for mobile money transfer.  
  5. Inclusion of the word M-Pesa in dictionaries- English and Kiswahili as a verb meaning to ‘transfer money over a mobile platform’ and its equivalent in Kiswahili.

In the past, words such as escalator, aspirin, cellotape, Xerox, kerosene were all once trademarks with private rights vested in individual proprietors. Today, these are common words used daily but not to describe the specific goods or services despite that being their original purpose. These words on their own cannot be registered as trademarks as they would be considered descriptive.   

In 2011, Twitter had a similar battle over the word ‘tweet’ where the word was challenged for being used to refer to ‘advertising in connection with Twitter and therefore incapable of serving as a mark owned by Twitter Inc. Even though, this matter was eventually settled out of court, Twitter in its returns to the US Securities and Exchange Commission, reported one of their risks to be that one of its trademarks could lose their value. They ‘risked that the word ‘tweet’ could become so commonly used [generic] that it becomes synonymous with any short comment posted publicly on the internet’. Had this happened, Twitter Inc. could have lost the proprietary rights that came with the trademark ‘tweet’.

In conclusion, we pose the question: Is M-Pesa synonymous to transfer of money over a mobile phone platform in Kenya? Will it become a victim of its own success?

The author would like to recognize open conversations on the subject she had with Mr. Mwangi.

WHAT CAN I GET AWAY WITH? EXCEPTIONS TO COMPUTER PROGRAMME COPYRIGHT INFRINGEMENT

04 Wednesday Dec 2019

Posted by in Copyright, Intellectual Property

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By Cynthia Nzuki

Introduction

Software and computer programmes have become a huge part of our daily lives. They drive significant elements of our lives. For example, we now use software and computer programmes such as word processing, accounts software, asset management software and so on. This is replicated in schools, homes, social places and so on. The programmes help us carry out various tasks as they make our work easier. Those who develop the software and the programmes expend their time and resources and as such, protection is important.

The Copyright Act defines a computer programme as a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.[1] Think of it this way: when a person is instructing another on what to do and how to execute it, the instructions should be in a language that the recipient understands; otherwise, there would be a communication breakdown due to language barrier. Similarly, a software or a computer programme is the language computers understand are able to execute tasks.

In Kenya, protection of computer programmes is within the copyright regime.[2] They are categorized as literary work. Of the various challenges that face the software industry, the major one is infringement or simply put theft and piracy. Principally, any unauthorized copying of software and computer programmes is infringement. Infringers obtain copies of a given computer software through unauthorized means, modify and augment the duplicated software code in undesirable ways, including insertion of malicious logic, backdoors, and exploitable vulnerabilities. This exposes consumers to harm and affects the businesses of software developers and software developing industries.

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Internet Service Providers (ISPs) and Copyright in Kenya: Commentary on the Copyright Amendment Act 2019

23 Wednesday Oct 2019

Posted by in Copyright, Intellectual Property

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By Caroline Wanjiru

This post forms part 2 of our series on the Intellectual Property considerations in the Copyright Amendment Act. The IT considerations, focusing on digital rights will be addressed in a follow up series.

ISPs and Take Down Notices

Section 35B covers take down notices, their form, content, addressees etc. A take down notice is a request to an ISP by a copyright holder (complainant) to remove infringing content.

  1. The take down notice shall:
  1. Be in writing and addressed to the ISP or their agent.
  2. Contain the name and address of the complainant.
  3. Signed by or for the complainant.
  4. Contain specific details of the copyrighted works subject of infringement or which is to be removed.
  5. Identify the rights being infringed, for instance the broadcast, production rights etc.
  6. Set out the details of the content to be taken down and the location of this content.
  7. Be accompanied by a sworn statement attesting to the ownership of the content, validity of the rights under e) above, good faith on the complainant and the efforts (albeit unsuccessful attempts) made to the entities responsible for making the content available remove the content; and
  8. be copied to the Board Communication Authority and the recognized ISP umbrella body.

Comment: Conspicuously missing is a requirement to include the alleged infringer (who is the ISP subscriber hence the addressing of the notice to the ISP) in the notice to take down. Such inclusion would notify and provide an alleged infringer of the notice and the option to ‘challenge’ a take-down notice issued to their ISP. There exists a relationship between the ISP and their subscribers contractual or otherwise. The obligation to notify the subscriber, if any, shifts to the ISP (see below). It is not clear as to why such a requirement would be excluded yet the requirement of a sworn statement by the complainant would be presumptive that they have attempted to reach the alleged infringer to remove the infringing content. Would the subscriber not be entitled to demand to be heard before the notice is effected? If yes, at what point would they be heard yet the notice is to be effected within 48 hours? Article 47 of the Constitution of Kenya provides that every person has a right to fair administrative action, this right includes the right to be heard.

  1. A take down notice will be deemed delivered
    1. Next business day following physical delivery at an ISP’s registered office.
    2. 2 days after the day post if by registered post.
    3. Immediately if sent by electronically to a designated ISP address.

Comment: This provision has serious implication for the ISPs as it dictates when the 48 hours of compliance starts running. Where an ISP has provided a designated address, time starts running immediately a complainant sends it. It is not clear what would happen if there is delivery failure, if it is sent on a day that the ISP is closed for business or is even intercepted by a third party. While this blogger appreciates the fact that electronic transmission is instant, she acknowledges that there are circumstances that may interfere with the ISPs ability to receive the electronic notification. Legislating on time of delivery elevates time to a statutory requirement which carries weighty consequences. Time is truly of essence. However, having such a statutory requirement is an open invitation to breach. This is best left to the industry to regulate. The Board in charge of regulating ISPs may issue policy directions on the same therefore introducing implementation flexibilities.

  1. An ISP shall upon receipt of a valid take down notice, notify the person responsible for making the infringing content available and provide them with a copy as soon as is practicable.

Comment: This provision is vague, yet its content creates a duty for the ISP. The mandatory requirement, albeit on their cost, for the ISP to find or establish mechanisms within which to ‘notify’ an alleged infringer that they have received a takedown notice from the complainant. It’s unclear if the notification should be in the same manner as received from the complainant. For instance, if the takedown notice is received electronically, can the ISP notify the alleged infringer by mail? The latter would mean that time is substantially altered. Yet it is a possibility.

The notification should be immediate or as soon as is practicable. In light of subsection 5 which mandates an ISP to take down content within 48 hours, what is immediate? What takes precedence? Taking down the content or serving the notice on an alleged infringer? If this should be as soon as practicable, whose practicality is it? The complainant whose interest is to have the content taken down; the ISP whose primary interest would be first to serve their clients, must act within 48hours and disable access to the content; or the alleged infringer whose interest is to have the content online at all time and who may be benefiting economically from the content, who may require ‘reasonable’ time to file a counter notice? Lastly, if it is the ISP’s practicability, can they take down the content i.e. comply with the law and then serve notice later? The option of having the notice sent ‘as soon as is practical is ambiguous capable of more than one interpretation.

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Internet Service Providers (ISPs) and Copyright in Kenya: Commentary on the Copyright Amendment Act 2019

18 Friday Oct 2019

Posted by in Copyright, Intellectual Property

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By Caroline Wanjiru

This post forms part one of a two part series focused on the Intellectual Property considerations in the Copyright Amendment Act. The IT considerations, focusing on digital rights will be addressed in a follow up series.

ISPs and Copyright

The Copyright Amendment Act (Amended Act) 2019 has brought in new provisions which have created new obligations and extended rights for some parties within the copyright practice in Kenya.

In the next few weeks, the CIPIT IP Team shall undertake a review of these new provisions in a series of blogs all aimed at informing, analyzing and probably providing a critique to the same. This week’s blog begins with looking at the provisions relating to the liability of the Internet Service Providers (ISPs) in Kenya.

From the onset, it is a matter of common notoriety now that copyright enforcement is an arduous task. It requires concerted effort from all players and 3rd parties as well. ISPs are 3rd parties who provide a vehicle through which the copyright owners can easily distribute their works and the users to freely enjoy the same. Section 2 of the Amended Act defines an ISP;

‘As a person providing information system services or access software that provides or enables computer access by multiple users to a computer server including connection for, the transmission or routing of data.’

Simply put an ISP is a company or entity that provides internet access to its subscribers. How this works is that the owner or holder of copyrighted material reduces it to a format which can be transmitted or carried through the ISP network. The aim is to distribute the works to those who have access to internet. Access of the copyrighted material can be free or paid service. Payment is typically to the owner or an authorized agent. Challenge within the copyright arena arises when the material that should be paid for is accessed for free. Such access would be unauthorized and infringing on the rights of the copyright holder. ISPs are enablers of access, authorized or unauthorized hence their inclusion in copyright enforcement.

ISPs and Internet Freedom

Based on their position, ISPs have the capacity to take down or disable access to sites which are considered to be providing access/accessing infringing materials. As is said, every coin has two, or three sides. So the associated question is, in taking down the content or disabling the content, will the ISP be infringing on anyone’s digital or access rights, limiting the user’s internet freedom? Where is the balance, if any? We shall address this with a post.

ISPs and the Law

From their role in the distribution of copyright works, ISPs can be enablers of infringement or can be the infringers depending on their role. Section 35A provides for scenarios where an ISP shall not be liable for infringement. These include where the ISP:

  1. If it only provides either automatic, intermediate or temporary transmission, routing or storage of content (subject to copyright) in its ordinary course of business on condition that:
  1. It does not initiate transmission
  2. it does not select the addressee/person receiving the content
  3. these functions are automated and technical such as not to select the material;
  4. does not promote the content or the material being transmitted.
  5. For the automatic, intermediate and temporary storage of content for purposes making onward transmission of the data more efficient to other recipients of the service upon their request on condition that the ISP:
    1. does not modify the material;
    2. complies with conditions on access to the material;
    3. complies with rules regarding the updating the cache in conformity with generally accepted standards within the service sector;
    4. does not interfere with the lawful use of technology to obtain information on the use of the material;
    5. removes or disables access once it receives a takedown notice or where the original material has been deleted or access disabled on orders of a competent court or otherwise on obtaining knowledge of unlawful nature of the cached material.

Comment: The above places an obligation on the ISPs to ensure that they do not promote infringing materials under the guise of conducting business. This can be done partly by policing on the content or by requiring the internet content owners to indemnify the ISPs or exonerate them from liability should claims arise.

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Eliud Kipchoge, the breaker of records and Intellectual Property

09 Wednesday Oct 2019

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By Caroline Wanjiru

Today we pause our continuing IP series to dedicate this entire blog to the one and only Eliud Kipchoge. Why you ask? How is he related to your core business- IP? Well, there are several reasons as to why we had to do this. Most importantly, Eliud is a Kenyan champion. He is an athlete who holds several titles including 2016 Olympic Marathon Winner , 2018 World Record Holder with 2.01.39 just to name a few. He is personne extra ordinaire. More OF his achievements here. There are many things to write about Eliud but for today we shall discuss his upcoming challenge. You see, no athlete has attempted to break the current world record held by Eliud set in Berlin. So he took it upon himself to break his own record by running the 42km Marathon in a record time of 1.59.59. In this journey which he has documented in his various social media accounts, he has partnered with INEOS who are also the organisers of the challenge. The challenge is set to happen in Vienna, Austria for various reasons including weather and the course for the marathon. The challenge is tentatively planned to happen on 12th October, 2019 with the confirmation of this date from INEOS Performance Team planned for 9th October. From this side of the desk and the whole CIPIT Team would like to wish Eliud nothing but the best and this blogger promises to cheer him to the finish line. As Ben Cyco says, Cheza kama wewe!!

The second reason for dedicating this to Eliud is the commercial aspect that the challenge presents both to him and to the partners, official and unofficial. This part is meant to provoke everyone who reads it and to see the challenge from an IP perspective. In the challenge, Eliud will be wearing brands such as Nike and the event will be live on KBC, Standard group (KTN), NTV and Citizen TV in Kenya. There are other broadcasters all over the world. Nike have further specially designed 3-D printed Nike Zoom Vaporfly 4% shoe for Eliud which is aimed to give him peak performance. With such official sponsorship it is expected that Nike and Eliud, the companies will benefit commercially, directly and indirectly. This could be in the form of increased sales and reputation of the companies and that of the products endorsed by the athlete.

During the challenge, the broadcasters broadcasting to millions of people will not only focus on Eliud and also every other entity whose product which will be exhibited. This is advertising, creating brand presence, consumer awareness which in turn creates consumer loyalty. The resulting effect is a presumption by the consumers is that for an entity to be associated with such a challenge, their products (and services) must be of a certain status or quality. Such impact would ordinary times take time to create. The consumerism, the loyalty and pride resulting from this impact has a direct co-relation with the athlete. It is against this background that this blogger argues that such association should then be accompanied by commensurate commercial value to the athlete as well as the company. 

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Imitations versus Counterfeits in Kenya: Are all Imitations Counterfeits?

17 Tuesday Sep 2019

Posted by in Counterfeits, Intellectual Property

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By Cynthia Nzuki.

The word counterfeit often denotes a product that is fake and of poor quality. Dictionaries have defined the word to mean an imitation intended to be passed off fraudulently or deceptively as genuine[1].Breaking down this definition, counterfeit goods are intended to trick consumers to believe that that which they purchase are genuine goods; whereas they are unauthorized copies of branded goods presented as the authentic goods. For example, Christian Louboutin high heels are well known for having red bottoms; the sale of high heels with red bottoms and passing them off as Louboutin shoes is a good example of counterfeiting.

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Protecting the gift to the world: Reflections on the state of photography laws in Kenya

12 Thursday Sep 2019

Posted by in CIPIT Insights, Copyright, Intellectual Property

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By Jentrix Wanyama*

When the French government purchased the first photography patent, photography was declared ‘a gift to free the word’. These words would turn out to be somewhat prophetic, as photography would go on to have a resounding impact on the world.[1] For instance, photography played a role in sensitizing people on the horrors of war, since for the first time, citizens of different countries were able to actually see the ravages of war that had before then seemed so far away.[2] 180 years later, it is interesting to note how the law concerning photography has developed in Kenya.  Does the state of applicable laws show our esteem for this gift or are we stifling it? In this blog, we discuss the law on photography in three broad themes: copyright; image rights and privacy; and security.

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African Traditional Knowledge and Expressions of Folklore: Rethinking Swakopmund Protocol as a Model Law and Sui Generis System

03 Tuesday Sep 2019

Posted by in Copyright, Intellectual Property, Traditional Cultural Expressions, Traditional Knowledge

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Photo by ‘Indigenous Information Network (IIN)‘

By Michael Biko Butera*

Introduction

Traditional Knowledge (TK) is any knowledge originating from a local or traditional community that is the result of intellectual activity and insight in a traditional context, including know-how, skills, innovations, practices and learning, where the knowledge is embodied in the traditional lifestyle of a community and is passed on from one generation to another.[1] TK often forms part of a community’s cultural and spiritual identity, technical, ecological and medical knowledge as well as biodiversity-related knowledge.[2] Folklore expressions (Folklore) on the other hand, are any forms, whether tangible or intangible, in which traditional culture and knowledge are expressed, appear or are manifested.[3]

Despite clear definitions, there has been a drumming debate whether TK and Folklore should be protected. If not, why? and if yes, how? Would it be through the intellectual property (IP) regime or any other mechanisms? The prevailing and ongoing argument is captured in part two.

The author posits that there is already a starting point to finding a way to protect TK and Folklore given their special nature. This is by rethinking the Swakopmund Protocol as a model law and a sui generis system for African countries to come up with corresponding national laws. Sui generis basically means that of its own kind or class; peculiar.[4]

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#UBUNIFU – CIPIT PANEL ON THE STRATHMORE LAW CLINIC UBUNIFU INITIATIVE (PART TWO)

03 Tuesday Sep 2019

Posted by in CIPIT news, Copyright, Intellectual Property

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Capture of the Ubunifu Initiative Brochure

By Caroline Wanjiru and Cynthia Nzuki.

As highlighted in our previous post (here), the Strathmore Law Clinic (website here) began an initiative known as the Ubunifu Initiative, whose main focus is promoting the effective use and exploitation of creativity and innovation through the development and sensitization of intellectual property law and rights. The second session happened on the 30th of August, 2019, where we had one of our own, Ms. Caroline Wanjiru, being a panelist and sharing her expertise.

The focus was still on creatives; in particular musicians, authors and performing artists. The discussions focused on copyrights, copyright protection and related rights of the respective groups’ works. The session began with the panelists giving a brief discussion of intellectual property and intellectual property rights; how to obtain intellectual property rights protection in particular copyright and the associated rights. Questions on fair dealing and fair use; publishing rights; joint ownership/authorship of works; transfer of rights through assignment and licensing; jurisdiction for purposes of enforcement were tackled. Through the CIPIT Blog, we shall endeavor to inform on some of these issues in detail in our continuing IP series.

There are two (2) more sessions (further details) if you wish to attend simply send an email to keli.muema@strathmore.edu to RSVP. Specify whether you wish to attend all the sessions or, if not, which specific sessions you wish to attend.

State Intervention on the Collective Management Organisations (CMO’s) in Kenya: A Commentary on the Copyright Amendment Bill, 2018

30 Friday Aug 2019

Posted by in Collective Management Organisations, Copyright, Intellectual Property

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By Caroline Wanjiru.

In our previous post, we addressed the law as is on Collective Management Organisations (CMO’s). Now we’ll analyze the proposed amendments to the Copyright Act and what they mean to the copyright holders and users in Kenya.

The Copyright Amendment Bill (‘Bill’)

This analysis will focus on proposed sections 46 A (10) (11) (12) B-G and 49 of the Bill.

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