Dr Kanayo Nwanze, President of the International Fund for Agricultural Development, recently opened the Africa Together Conference at Cambridge University with the question: “When more than three hundred million men, women and children still live in poverty on the African continent, a land with so much wealth and potential, we must ask ourselves what our role (as Africans) is in engendering an inclusive Africa? Development starts with people, not structures. We must invest in our people.”
More than 8 000 miles to the south of the Africa Together Conference, the delegates at the Africa Network Meeting in Pretoria were tackling a similar question – how to preserve the legacies and intellectual capital of Africa for Africans.
Renowned actor, director, writer and playwright, John Kani, welcomed the intellectual property law professionals who had gathered for the 4th Africa IP Network Meeting at the offices of Adams & Adams in Pretoria. Kani, who was opening the meeting as guest speaker, captivated the audience with stories of his upbringing and his time in Hollywood – including his latest role as an African monarch in Marvel’s Captain America film franchise. “I was cast as an African monarch in a fictional North-African kingdom and I asked them very nicely whether I could speak Xhosa, instead of that ‘Tarzan’ dialect that Hollywood loves so much,” he joked. “We need to think carefully about how we protect and advance our continent’s rich history, legacy and inherent intellectual property.” It was a sobering thought for the delegates. Adams & Adams has been particularly active in the area of Legacy Intellectual Property rights, with recent work being undertaken for the Steve Biko Foundation by Partner Darren Olivier and his team.
In welcoming the attendees, both Gérard du Plessis, Chairman and Simon Brown, Partner, stressed the importance of IP law professionals and IP administrators in sharing their experiences and updates on IP developments and legislation as the firm and its associated offices continue to develop best practice IP strategies for clients.
Then it was down to business as the meeting discussed and debated industry matters such as IP commercialisation, the handling of opposition IP proceedings in multiple jurisdictions, and registry practices and search capabilities.
High on the agenda was the issues currently being experienced with the Madrid Protocol – a system of international registrations, administered by the World Intellectual Property Organisation that allows for the centralised registration and management of trademarks. Of the 37 African territories who are currently members of the Madrid Agreement/Protocol, only seven have properly “domesticated” the protocol through appropriate amendments to their national trademark legislation, together with the implementation on enabling regulations.
Speaking at a recent Madrid system think-tank at Adams & Adams, Stephen Hollis, Partner, noted that “one of the core issues with the national applicability of IP treaties, such as the Madrid Protocol, is that additional direction, procedures and mechanisms need to be put in place on a national level to ensure that the national IP Office is equipped to deal with and process International Registrations and also how to deal with objections, oppositions and so forth. Even national trademark legislation is not considered to be enacted properly until the so-called ‘enabling regulations’ have been promulgated. Enabling regulations supplement and complete trademark legislation by formally determining the processes and procedures through which the provisions of the legislation can be practically implemented and fulfilled by the national trade marks office concerned”.
Strategies to deal with Madrid, as well as the current implementation of the Industrial Property Automation System in registries across the continent, were also discussed, followed by regional updates from Associates from offices in Egypt, Ghana, Tanzania and Zimbabwe.
The Ministry of Supply and Internal Trade introduced a new system of enforcing the protection of trademarks and of limiting infringements. Through a smartphone application or text message, consumers will be able to verify instantly whether or not a particular product is genuine. The verification message would include the product’s name and expiration date. Trademark owners are able to place a sticker on all products that are sold in the Egyptian market and are registered with the Egyptian Trademarks Office.
Egypt’s Ministry of Trade and Industry also amended the rules overseeing the registration of factories qualified to export certain products to Egypt. The new decree requires factories and companies to export listed products and to register their trademarks with the General Organisation for Export and Import Control (GOEIC). email@example.com
The North African state of Algeria became a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks in the fourth quarter of 2015. It gives a trademark owner the possibility of having a mark protected in several countries by simply filing one application with a single office. Brand owners in Algeria will also benefit by gaining access to the territories covered by the Madrid Protocol for international trademark protection. However, Megan Moerdijk, Partner at Adams & Adams, encouraged brand owners to consult with her office first as the effectiveness of the Madrid Protocol – particularly referencing enforcement – has not yet been fully tested in Algeria. firstname.lastname@example.org
Tunisia became one of the latest African territories to ratify the WIPO’s Beijing Treaty on Audiovisual Performances. The Beijing Treaty on Audiovisual Performances, adopted in June 2012, deals with the intellectual property rights of performers in audiovisual performances. It grants performers four kinds of economic rights for their performances fixed in audiovisual fixations, such as motion pictures: 1. The right of reproduction. 2. The right of distribution. 3. The right of rental. 4. The right of making available. email@example.com
Effective March 2016, the official fees for trademark applications submitted online has been increased by 20%. Renewal official fees have also been increased by 20%. firstname.lastname@example.org
IP developments in East Africa, especially the EAC will be significantly shaped in the near future by implementation of the EAC Customs Union protocol which permits free movement of goods. More countries in the region are adopting border measures to curb counterfeits, but brand owners need to remain vigilant, not only in registering IP rights, but also changes in user licenses or distribution agreements.
In May 2016 the International Convention for the Protection of New Varieties of Plants (UPOV Convention revised in 19 March 1991) entered into force in Kenya. Kenya was the first country in Africa to join Union internationale pour la protection des obtentions végétales (UPOV) when it became a member in 1999 and subsequently domesticated the 1961 Act of the UPOV Convention in the Kenya through Seed and Plant Varieties Act Cap 326.
Kenya’s Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs). With regard to assignment and licenses, the draft seeks to modify the procedure for verification of assignment of copyright works from outside Kenya. The proposed procedure requires KECOBO to issue a certificate of verification upon successful application for verification with necessary supporting documents. Thereafter, the verified assignment shall be entered in the Copyright Register upon payment of a registration fee as set out in the Second Schedule. For queries in this regard, email email@example.com
The Council of Ministers Regulation No. 273/2012 of December 2012 on Trademark Registration and Protection brought into force changes such as the application of cancellation and invalidation procedures and the extension of the renewal period from six to seven years. Priority claims are now recognised and the international classification of goods and services will be followed. firstname.lastname@example.org
The Industrial Property Act, 2014 for patents, utility models, technovations and industrial designs is undergoing a review with respect to the employee/employer relationship on inventions. email@example.com
A new Industrial Property Act is being developed that will ensure the consolidation of patents and trademarks, and include industrial designs and trade secrets. firstname.lastname@example.org
Rwanda became a member of the Madrid Protocol in 2013 and the IP registry is expected to be ready to start receiving and implementing new applications using the Madrid System. Related to this, Rwanda has also started using an Industrial Property Automation System, which has made filing of trademarks and patents easier and faster, while automatically keeping record of all applications submitted. Clients are encouraged to email email@example.com for assistance and details of the effectiveness of the Madrid system in Rwanda.
Ghana has amended its Trademarks Act and has expanded the meaning of a “trademark” to now include: “…colours, numerals, shapes, holograms, sounds or a combination of any of these elements, or slogans, where they are not long enough to be protected by copyright”. The Trademarks Registry has not yet, however, recorded any applications to register sounds or holograms. firstname.lastname@example.org
Adams & Adams continues to synergise and expand its African network. Sub-saharan Africa’s largest intellectual property law firm, Adams & Adams, recently established an Associate office in The Gambia which also services Liberia and Sierra Leone. This brings to 18 the number of associated offices in different African countries that form part of the Adams & Adams Africa Network.
“Our focus has always been to add exceptional value to our clients’ experience,” says Simon Brown, Partner and Chair of the Africa IP Committee. “We target strategic associations with firms whose work ethic and standards mirror those of our own. At the heart of this approach is a desire to enhance the experience for the client and to add a high level of comfort to clients in knowing that the matter will be handled the same whether in South Africa or at our Associate firms. High standards are expected of our offices and we ensure continued adherence by a rigorous due diligence process that each Associate firms must undergo. Our strategy remains to empower our Associate offices by exposing them to our lawyers’ vast legal knowledge accumulated over the 109 years that Adams & Adams has been in operation.” email@example.com
This year, Nigeria passed the Cybercrimes Act, which paves the way in finding solutions to the upsurge of cybersquatting and other internet offences that are currently increasing by the day in Nigeria. The Cybercrimes Act specifically criminalises the act of cybersquatting and therefore makes it an offence to register or use an internet domain name with bad faith i.e. with an intent to profit from the goodwill of a trademark belonging to someone else or to make a profit by selling the domain name to the rightful owner. firstname.lastname@example.org
The Mozambique Industrial Property Code was recently approved by Act No. 47/2015 – the most significant IP legislative development in the past decade. The code establishes specific rules applicable to the protection of industrial property rights, and defines the rights and obligations arising from the granting of intellectual property rights. email@example.com
Zambia has passed into law the new Industrial Design Act No. 22 of 2016 repealing the Registered Designs Act of 1958. The new Design Act came into force on 6 June 2016. Some of the new provisions contained in the new act are as follows:
- Worldwide novelty requirements;
- Grace period and exceptions in respect of disclosure of the design in order to comply with novelty requirements;
- Restoration of rights lost due to non-payment of maintenance fees;
- Amendment of a design application; and
- Opposition of design registration by a third party, including the state.
The new act also introduced changes in respect of the term of a registered design. The 1958 Act provided for a registration term of five years extendable upon payment of renewal fees for two further five-year terms. According to the new act, the term of registration is five years from the filing date, renewable upon payment of renewal fees for a further period of five years. Furthermore, while the 1958 Act made provision for a foreign filing licence in respect of new foreign design applications by a person ordinarily resident or domiciled in Zambia, the 2016 Act is silent in this regard. firstname.lastname@example.org
ABOUT ADAMS ON AFRICA | ISSUE 1
This article is part of a new quarterly digital publication, Adams on Africa. The publication aims to provide you with the necessary information and updates on developments in business and the law in Africa. We welcome your feedback. Articles in this issue: