Restoration and optimism dominate Africa IP Conversations

The 7th annual Adams & Adams Africa IP Network Meeting took place in Pretoria, South Africa recently, providing a unique opportunity for agents, practitioners and registrars from across the continent to share experiences, challenges, progress and learnings on intellectual property prosecution and litigation in their respective jurisdictions and regions.

The meeting was overshadowed by the recent appalling incidences of xenophobic violence in South Africa, a subject addressed by Adams & Adams Chairman, Gérard du Plessis. “The senseless acts are not only difficult to understand but go against the constitutional values of our nation and our firm.”

Event keynote speaker, Redi Tlhabi echoed the views of du Plessis and recounted her own experiences with the challenges faced by our continent’s citizens, particularly women, every day. She reminded the delegates that raw conversations are desperately needed to help address previous injustices and that the focus should not be to rehash the disputed events, or even dwell in great detail on the causes, but that it should be about the restoration of dignity, rights, identities, and life.

Indeed the following guest speaker, Fernando dos Santos, Director General for ARIPO, explored the strategies required to restore Africa to her rightful place on the world IP stage. He quoted the words of WIPO DG, Francis Gurry, “Ultimately, the source of all innovation and creativity is human and Africa is the cradle of humanity, so it is in this sense the origin of all innovation and creativity that characterizes our species as human beings.”

Currently, Africa only accounts for 0.5% of all patents and 1.9% of all trade marks filed worldwide. He proposed that Africa, particularly IP practitioners, overcome this challenge by assuming their role as stakeholders of the IP system and contribute on:

  • IP awareness creation and education
  • Improvement of the policies, legal and institutional framework
  • Assist local creators and innovators. (e.g. Pro-bono initiatives on patent drafting)
  • Improve the image of the African IP systems
  • Sensitize the global IP fraternity on the important developments of IP in Africa and promote trust

Breakout sessions included robust discussions on non-traditional trade marks, copyright and trade marks in the digital space, domain name complaints, regional organisations such as ARIPO and OAPI, and the interplay between designs, copyright and trade dress.

Simon Brown, Partner and Meeting MC, hailed the event a great success. “Each year, or delegates are becoming more excited about the future of IP’s role in Africa’s economic growth. And we were reminded this year that it will take a team effort to harness all that is wonderful and inspiring about our continent – toward that common goal of restoring Africa to its rightful place.”

SIMON BROWN

Partner
Trade Mark Attorney

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These ingenious African inventors are tackling the world’s worst water weed

Hya Matla Organics has found a way to deal with a plant that is choking SA’s waterways

Water hyacinth (Eichhornia crassipes) is dubbed by some researchers as “the world’s worst water weed” because of its ability to spread rapidly, causing considerable damage to water eco-systems, riparian vegetation, people’s livelihoods, and general human economic development. It is also widely considered to be responsible for a knock-on reduction of biodiversity. Once introduced into a body of water, the plant affects the surrounding environment by blocking waterways, rivers, irrigation canals and lakes. Ships and boats used for fishing and transportation have problems steering through the thick beds of water hyacinth, and fishermen may struggle to reach fishing areas, resulting in a loss of income. Water hyacinth can also block irrigation canals, reducing the water flow, resulting in poor irrigation. It also diminishes the levels of dissolved oxygen in water required for the survival of fish populations.

In South Africa, water hyacinth has had a negative effect on one of the country’s largest and most active dams, the Hartbeespoort Dam, for several years. Its growth rate has been prodigious and has been a growing concern for homeowners and businesses operating at the dam. Several companies and inventors have tried finding methods of removing the water hyacinth from the dam without much success.

But now the Water hyacinth has a new enemy – Hya Matla Organics – a southern African start-up constituting brilliant African minds from Malawi and South Africa. Hya Matla Organics viewed the scourge presented by the water hyacinth as a business opportunity, and through extensive scientific research, they found that the plant material could be turned into an effective organic nutrient which can increase the yields of most vegetation farms. The company created a machine, ‘The Harvester’, which is designed to extract the water hyacinth from the body of water and then completely destroy the molecular memory of the plants in situ, thereby preventing the hyacinth from reproducing once removed from, or reintroduced into, the water.

Once the water hyacinth has been recovered from the water, it is converted into both liquid and solid fertilizers. The fertilizers produced from water hyacinth can be used in arid regions, something to which many chemical and organic fertilizers are not suited. The fertilizer has the effect of turning sand dunes into vegetation sites, and plants grown using the water hyacinth-based fertilizer are kept evergreen throughout the whole year.

Recently, Hya Matla Organics received around USD 1,7 million from Coca-Cola Beverages South Africa’s Mintirho Foundation, allowing the resourceful start-up to manufacture additional harvester machines and produce and sell the fertilizers.

In past two years provisional patent applications and Patent Corporation Treaty (PCT) applications have been prepared and filed by Adams & Adams for ‘The Harvester’ as well as the method of converting the water hyacinth into organic fertilizers. The process continues with the filing patent applications worldwide for both inventions, particularly in countries where the water hyacinth has been a problem, and in countries that can benefit from the use of the water hyacinth-based fertilizers.

By Thapelo Montong | Patent Attorney

THAPELO MONTONG

Associate
Patent Attorney

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Goods and Services Classification update for OAPI

The OAPI IP Office recently published a notice informing trade mark owners, agents and all other users of the OAPI regional system that the Trade Marks Registry applies the current version of the Nice Classification system as adopted by WIPO, namely the 11th edition (2019 version).

While the 2018 version of the 11th edition may still be used up to 31 March 2019, the Registry reserves the right to re-classify the specified goods or services for trade mark applications filed with the 2018 version, wherever that may be necessary.  No official fee would be payable when such re-classifications occur.  It is uncertain whether any re-classifications will occur in practice, as the latest edition of the Nice Classification system added more than 200 new descriptions of goods/services, and it appears that the added descriptions are meant to elaborate on existing descriptions of goods and services falling within each existing class concerned.

The OAPI IP Office also seeks to advise that the goods and services class headings, as stated in the 2019 version of the 11th edition of the Nice Classification, will be available in all the editions of the Official Bulletin of Intellectual Property for 2019 (found on www.oapi.int).

For any information or queries in this regard, please contact africaip@adamsadams.com

By

Stephen Hollis | Partner

Lebohang Mosala | Associate

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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Hopes that changes to the Bangui Agreement will improve trade mark prosecution and litigation processes

It is hoped that a revision of the terms and functionality of the Bangui Agreement, subject to ratification by all member states of OAPI, will bring significant changes to the prosecution and litigation procedures in respect of trade marks, as well as OAPI’s administration of these processes.

The Administrative Council of the African Intellectual Property Organization (OAPI) had tabled an amended version of the Agreement which was signed on 14 December 2015 in Bamako, Mali. The changes would only be adopted formally once all 17 member-states ratify the proposals. Following a discussion period of about three years, OAPI then arranged for a seminar with local agents and stakeholders (October 2018) to discuss how, if ratified, the proposed changes would affect operations and improve the functionality of the regional IP registration system.

Some of the proposed amendments include:

  • The current OAPI regulations do not make provision for the publication of Intellectual Property (IP) applications. However, the amended Bangui Agreement would allow for publication of applications. Insofar as patent applications are concerned, publication would be accompanied by a detailed description of the patent, the claims and drawings, should there be any. This would however not apply to international applications (PCT).
  • Sound marks, audiovisual (moving), series and certification marks would be registrable.
  • New provisions relating to the registration of Geographical Indicators would be drafted and implemented.
  • The opposition period in terms of the current Bangui Agreement (Annex III, article 18(1) is six months from the date of publication of a mark, and this period is not extendible. In terms of the revised Agreement, the opposition period would be three months from the date of publication of a mark.  It is not clear if the three months period will be extendible.
  • The Bangui Agreement makes provision for a procedure that is referred to as a ‘Claim of Ownership’, which may be filed against the registration of a published mark, within a period of six months from the date of publication (i.e. within the opposition period). The claim may be filed by any person who claims to own prior rights to the mark sought to be registered (generally based on evidence of prior use of the mark within the OAPI region).  The revised Agreement has also changed the period within which this claim may be filed, to three months. In addition, in terms of the revised Agreement, once the relevant mark has proceeded to registration or a registration certificate for the mark has been issued, the owner of a prior right may file a Claim of Ownership before the relevant civil court, in any member state.  There is no deadline or prescribed period within which the claim may be brought before the local courts.
  • In terms of the Bangui Agreement, an appeal to the Organisation’s decision in an opposition may be filed before the High Commission of Appeal, within three months from the date on which the parties are notified of the decision (Annex III, article 18(4)). In practice, the same appeal period in applicable in Claim of Ownership proceedings. In terms of the revised Agreement, the appeal period will be reduced to sixty days, from the date on which the parties are notified of the Organisation’s decision.
  • The agreement expressly states that final court decisions handed down by national courts of members states, concerning the validity of an intellectual property right, have effect and are enforceable in all other member states, without an exequatur or an official confirmation of the enforceability of the decision by other member states.

There is no certainty as to when all the member states are expected to ratify the revised Agreement to bring it into law and whether any further amendments would be recommended or proposed by member states before that time.

For additional information or queries in regarding Intellectual Property protection in OAPI  states, contact africaip@adamsadams.com

By

Stephen Hollis | Partner

Dakalo Luvhimbi | Senior Associate

Lebohang Mosala | Associate

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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DAKALO LUVHIMBI

Senior Associate
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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OAPI | SPLIT IN IP DIRECTORATE IMMINENT

It has recently been resolved that the OAPI Directorate of Intellectual Property be divided into two separate directorates. One for Trade Marks and another for Patents and Designs. Directors have already been appointed who will be in charge of the two directorates.

The decision to split the two directorates is yet to be enforced. We however expect to receive an official formal notification from OAPI shortly. Updates will be provided on this matter in due course.

For any information or queries in this regard, please contact africaip@adams.africa

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Trade Mark Attorney

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OAPI | URGENT RENEWAL RECOMMENDATIONS

All new trade marks filed at the OAPI IP Office had to comply with the 11th edition of the Nice Classification System as of 30 April 2017.

In previous editions of the Classification system, Class 42 included services such as “providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be classified in other classes”.

However, with the most recent edition, these services are re-classified into classes 42 to 45. Should a brand owner’s registration still correspond to the old class 42 specification, the following renewal options are recommended by Adams & Adams:

  1. Should you wish to maintain all the services initially filed in the class heading of the old class 42 specification or in preceding renewals, the mark should be renewed to extend into the new classes to cover the services which were re-classified.
  2. Alternatively, should you, as brand owner, not wish to maintain all the services initially filed or in preceding renewals then, upon renewal, you should apply to limit its specification to exclude such services.

For any additional information or queries in this regard, please contact africaip@adams.africa

STEPHEN HOLLIS

Partner
Trade Mark Attorney

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LEBOHANG MOSALA

Associate
Attorney

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