In 2016, Kenya Association of Manufacturers (KAM) with support from TradeMark East Africa commissioned a study on intellectual property (IP) rights with a specific focus on the legal framework for trade marks and anti-counterfeiting within the East African Community (EAC) region. The study’s main objective was to propose an enforceable legal framework which effectively combats the production, importation or exportation and distribution of counterfeit or illicit goods in general within the EAC region. The study was intended to take stock of the latest IP rights regime within the EAC region, highlight challenges within the current regimes and propose appropriate measures to address these challenges in order to enhance integration within the EAC region. The study was completed in 2017 and was launched during an interagency forum organised by Anti-Counterfeit Agency (ACA) in collaboration with KAM.
The Strathmore Annual Law Conference (ALC) brings together lawyers, academics and decision makers for high level deliberations on topical legal and policy issues. The theme for the 4th Strathmore Annual Law Conference is Regional Trade and Integration. With focus on regional trade agreements, the conference will critically examine the legal issues that underpin, and which can either undermine or enhance regional capacity for increased trade and greater integration, and contribute to development in the region.
What is the relationship between regional integration and promotion of intellectual property rights? What intellectual property conflicts, if any, arise when regional economic bodies come together to form a single trade area? How do regional economic bodies establish appropriate policies to cater for competing national & regional interests while enhancing regional and continental integration? Speaking at the Strathmore University auditorium on 4th October 2016, CIPIT’s second distinguished speaker, Dr. Henry Kibet Mutai, revealed his profound interest in regional integration and intellectual property and sought to answer these questions with a view to giving proposals for an intellectual property protocol under the TFTA.
The Agreement establishing the TFTA was signed on 10th June 2015 bringing together member states of the East African Community (EAC), the Southern African Development Community (SADC) and the Common Market for Eastern and Southern Africa (COMESA) to create a single market and promote trade amongst the states. The topic of the day couldn’t have come at a more appropriate time as intellectual property rights will be a key area in phase 2 of the negotiations for the establishment of the TFTA.
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.
Editor’s note: For more on the Quail farming craze in Kenya, see here.
As many are aware, the system of international registration of trademarks facilitates the obtaining of protection for marks (trademarks and service marks) and since an international registration is equivalent to a bundle of national registrations, the subsequent management of that protection is made much easier. During KIPI‘s two-day Trade Marks Law and Practice Training Course (featured here), Sudi Wandabusi, this blogger’s friend and trademarks examiner at KIPI devised a great practical scenario on the international registration of trademarks.
For purposes of the scenario, a local manufacturer, Isindu Financial Limited is the owner of the trade mark “Quail Advanced Strength” (TM No. 95229) registered at KIPI on 07-07-2013. Isindu now instructs IPKenya to advise on how its trade mark can be protected in the following territories: Zambia, Italy, U.S.A, Japan and Ireland, where its products are already being marketed and sold by authorised distributors.
Why use the Madrid System?
Since Isindu’s trade mark is present in countries outside Africa, the Madrid System is the obvious choice for registration. This system makes it possible for owners to obtain and maintain registration in a number of countries through a simple and cost effective procedure. Therefore Isindu only needs to file one international application, in one language, and pay one fee, in one currency – no translation, currency exchange, legal fee costs.
Is Kenya a member of the Madrid System?
Kenya joined the Madrid Union in 1998. It brought into force both the Agreement and the Protocol on June 26 1998.
The system is administered by the International Bureau of WIPO. There are a total of 92 contracting parties to the Madrid Union. A full list of members can be found here.
Is Isindu eligible to use the system?
Any natural person or a legal entity which has a real and effective industrial or commercial establishment in, or is domiciled in, or is a national of, a country which is party to the Madrid Agreement or the Madrid Protocol can use the system.
Therefore Isindu’s entitlement to file the international registration would be that it has a a real and effective industrial or commercial establishment in the territory of the Kenya.
Can Isindu claim priority?
From the scenario above, it is stated that TM No. 95229 was registered at KIPI on 07-07-2013. An applicant can claim priority
when filing within six months of the date of an earlier filing.
Therefore, Isindu is still within time as at the date of this blogpost and can claim priority.
How much does it cost?
The international registration fees payable to the International Bureau are available online here. This page also has a ‘fee calculator’ which is very helpful in establishing exactly how much is to be paid. The standard fee is CHF 903 for coloured marks and CHF 653 for black and white with a complementary fee of CHF 100. In addition, there is a handling fee of KES 1000 or USD 13 payable to KIPI.
How do the applicants or agents interact with the Bureau?
Several online services have been introduced by the International Bureau. They enable faster, easier communication between the applicant/agent and the bureau, namely:
1) Madrid Goods & Services Manager is a nifty tool that assists TM applicants/agents in compiling their lists of goods and services to file national and international applications. It is available in several languages and helps avoid irregularities in filing. The tool is indispensable as it enables one see which terms are acceptable by International Bureau and different designated contracting parties
2) Madrid Real–time Status (MRS) is a stand-alone tool that provides the status in real time of trademark documents being processed by WIPO. It enables applicant/agent to see what’s happening to their request at any point in time.
3) Madrid Electronic Alert (MEA) is a free ‘watch service’ that informs anyone interested in monitoring registration status of international marks. It is a subscription-based daily e-mail alert system that alerts when changes are recorded in the International TM register.
4) Madrid Portfolio Manager (MPM) is a web service that allows holder of international registrations and there reps access their international trademark portfolios. It comes in handy when submitting new requests for recordal in WIPO international TM Registry.
This blogger notes that despite the fact that Kenya is signatory to the Madrid Union, other neighbouring countries within the East African Community (EAC) are not members, with the exception of Rwanda. Within the African continent, less that 11 countries are members of the Madrid system. It has been argued that the reason for the low number of signatories is that the Madrid system is not attractive to African states. It is indeed noteworthy that the larger economies in Africa are not members of Madrid, including South Africa, Egypt and Nigeria. The strongest resistance has come from trade mark practitioners who have lobbied against this system arguing that they stand to lose revenue (agent fees) under the Madrid system.
In contrast, the national trade marks office, KIPI, would prefer the Madrid System as it provides an extra source of revenue. The 35% revenue sharing provision under Madrid almost guarantees the member states an extra added income of CHF 10, 000 and this sum could be higher depending on the designation. KIPI receives an average of CHF 300,000 annually through the Madrid System, whereas a country such as Botswana receives an average of CHF 500,000 annually.