SAGA is teed off

On Monday, the Western Cape High Court handed down a judgment on the interface between company names and trade marks (they are making rather a habit of it – one of the only two reported decisions last year, Cape Town Lodge CC v Registrar of Close Corporations and another [2008] 2 All SA 34 (C), also from this court, dealt with similar issues.)

The South African Golf Association (SAGA) objected to the name South African Junior Golf Association (SAJGA) registered as a s.21 company name. The Registrar of Companies held that the name was undesirable, but the court set aside this decision, first on the basis that SAGA itself is an unincorporated association as so could not rely on the Registrar’s directive that a name would be undesirable if very similar to an already registered name, and secondly because SAGA could not produce proof of actual public confusion.

Once again, the Western Cape High Court illustrated the common warning given by trade mark practitioners – ‘if the name contains descriptive words this may result therein that they are not distinctive of any particular business’ (para 9 - compare Cape Town Lodge above where the court held that general words in current use, which are descriptive of the goods or services provided under the mark, will not be afforded protection in terms of company legislation or trade mark and passing off principles (para [48])).

SAGA also filed a counter application for expungement of SAJGA’s trade mark (consisting of the word mark South African Junior Golf Association) in class 41 on the basis of its existing registrations in the same class, relying on s 10(12) and 10(14) of the SA Trade Marks Act. The Court’s reasoning here is, with respect, unfortunate. It held that SAGA had to prove reputation to rely on either s.10(12) or s.10(14). This is not correct; the cases referred to by the court both refer only to the precursors of s 10(12). Section 10(14), its precursors and UK equivalents have never required proof of reputation as precondition for success. The existence of the SAGA registrations should have acted as complete bar to the SAJGA mark. It is quite incomprehensible that the SAJGA mark was ever allowed on the register – not only is it in the same class as that of SAGA (one of its marks being the word mark South African Golf Association) but the specification is not limited to junior golf (neither does it refer to any charitable, or Christian activities).

The court’s argument that the two bodies do not render the same service is irrelevant for infringement proceedings; the specification for SAGA’s marks is sufficiently broad to cover that for the SAGJA mark.

Hopefully SAGA will take the matter on appeal, if only to clarify this court’s interpretation of the test for expungement in terms of s 10(14).

But, in the light of this judgment, I wonder what the chances are of a successful opposition by SAIIPL (Southern African Institute of Intellectual Property Law) to the newly formed SAAPIL (South African Association of Personal Injury Lawyers)? Probably not good!

Rolex Gang gate crashes IP Crammer seminar

Yesterday Afro Leo (in his alter ego) was fortunate enough to speak and contribute at Bowman Gilfillan's IP Crammer seminar which had around 70 people in attendance. There is much to be said about a good venue, excellent content, a thoughtful contributing audience and a chairman who knows how to make it flow and hold it together. Afro Leo was thoroughly impressed and also fortunate enough to meet some this blog's loyal followers for the first time. There was also an opportunity to meet the head of the infamous "Rolex gang" who pitched up without a name badge and just a few hours late.

The IP Crammer seminar presented a moment for this leo to consider the Harare and Banjul Protocols following my fellow Afro-IP contributors, David and Paul's comments on the controversial Kenyan patent decision posted here. My thoughts for your consideration:

A review of the two Protocols (Harare and Banjul) indicates that substantive examination of patents and utility models is undertaken by or on behalf of ARIPO centrally but examination of industrial designs and trade marks is left to Member States. Under the trade mark protocol (Banjul) there is a specific provision that cancellation of trade mark rights is to be dealt with under local law unlike the provisions dealing with patents and utility models. There is no clear provision relating to industrial designs; in fact the wording (Section 4(6) of the Harare Protocol) is very similar to s59 of the Kenyan legislation decided on in Chemserve. It would therefore appear that this decision:

• Indicates (unsurprisingly) that provisions of national law are very important when enforcing and defending rights under ARIPO. ARIPO commentators who had acknowledged that only a few member states had incorporated ARIPO protocols into national law (especially relating to trade marks) but felt that ARIPO rights would still be recognized or protectable under the spirit of the protocols, will be exposed as optimists.
  
• This judgment shows the importance of accurate drafting of local laws when it comes to ARIPO rights. Those wishing to use the ARIPO systems will need to assess the actual wording of local legislation to ensure that rights can be properly enforced or defended.
  
• Ironically, IP portfolio managers may now have more reason to use the ARIPO system because of the difficulties in having certain rights revoked. For example, it would be very handy to obtain an interim injunction (if possible and one is persuasive enough) whilst the cancellation counterclaim navigated its way down the Zambezi and through the ARIPO tribunal. Filing for rights using both the local and ARIPO system may give the IP litigator a number of useful options when enforcing the right.

About three hours after the IP Crammer seminar Afro Leo received an Eye Witness News link from Sara Spiro (in fact we were all eye witnesses - it took place outside IP Crammer seminar venue) of the capture of the suspected "Rolex Gang" kingpin. Just in case we needed it ... a timely reminder that African IP is never dull. Oh, and "Rolex Gang".... is that unfair advantage or detriment? ;)

Software Raid in Lagos Confiscates High Quality Copies

Nigeria’s Vanguard reports on a recent counterfeit software raid in Lagos.  The Nigerian Copyright Commission (NCC) confiscated a number of copies of various Microsoft products.  Unlike the usual pieces of counterfeit software collected in raids conducted by the Commission, these items were of high quality.  The NCC stated that the seller of the counterfeit goods deliberately purchased high quality counterfeit goods in order to trick even those customers who look out for counterfeit products.  The article did not say how the NCC knew that the seller himself was not tricked into thinking these were genuine Microsoft products.

Usually, the discussion about counterfeit software in Africa takes note of the harm caused by poor quality products, viruses and malware that harm the unsuspecting users computer. Since these products were of high quality, those kinds of ill effects presumably were not an issue.  However, it is important to note that the sale of high quality counterfeit goods also has harmful effects:

“Piracy is not a victimless crime. The activities of Plum Telecom put the businesses of legitimate resellers in jeopardy and impact the credibility of the Nigerian IT reselling community as a whole.” – Mr. John Ogboru of the Computer and Allied Products Dealers Association of Nigeria

Mr Video - the stills

IP extraordinaire Dr Wim Alberts has kindly provided this explanation of the Mr Video decision after Afro-Ip had reported that its logic had had many an IP practitioner in a twist:

The Supreme Court of Appeal (SCA) recently gave judgment in a copyright matter involving the parallel importation of DVDs. The facts appear from the ruling of the court a quo, the Cape Provincial Division. Copyright proceedings were launched by Nu Metro, Twentieth Century Fox, Disney, Warner Bros, and Videovision - the first and last parties being South African companies. Nu Metro was an exclusive licensee. Mr Video allegedly infringed the rights of the above parties by importing and letting DVDs. Mr Video conceded the issue of infringement, but not the locus standi of Nu Metro, and the order for delivery up. The issue of genuine goods was however resurrected in the context of section 24. Section 24, which provides for orders for delivery-up, refers to an “infringing copy”. Regard was thus had to the definition of this term in the Act. It was defined, as far as cinematograph films were concerned, to be an imported article the making of which would have constituted an infringement of copyright if the article had been made in South Africa.

In the application of this provision, a material issue was the "zones" to which the purchase of the DVDs related. Mr Video obtained zone 1 DVDs, intended for the United States market, whilst South Africa is in fact a zone 2 country. Mr Video argued that the zone 1 DVDs which they have made available in South Africa, are not infringing copies of the original work in respect of which the copyright owners enjoy copyright, as the zone 1 DVDs were manufactured in the United States with the consent of the copyright owners. It was argued that the court has to proceed on the hypothesis that the zone 1 DVDs which they have made available in South Africa, were made in South Africa by the person who in fact made it. Accordingly, the zone 1 DVDs which Mr Video made available in South Africa, are genuine copies.

The court did not accept this view. It was said that one should not lose sight of the fact that the American manufacturer of the DVDs could not have enjoyed the right to manufacture them in South Africa, as its permission to manufacture was geographically limited to the zone 1 market. Nu Metro has been granted the exclusive right to produce copies of the films for the South African (zone 2) market. Accordingly, had the American manufacturer of the zone 1 DVDs manufactured them in South Africa, it would have been done outside the scope of such manufacturer’s licence and in breach of the exclusive licence to produce and distribute the films in DVD form in South Africa.

An aspect pointed out by the SCA, in relation to the order for delivery-up, was that the opposition to such an order was an indication of an intent to trade in the goods. Moreover, as the DVDs were acquired for an unlawful purpose, there is no lawful use to which they can be put in South Africa. The history of Mr Video’s conduct with regard to zone 1 DVDs also militated against any suggestion that Nu Metro and the owners of the copyright in the films would be properly protected if an order was not made.

This decision shows the need for understanding that whilst intellectual property rights are essentially territorial, conduct outside the country can still, in a sense, be adjudicated upon here. The ruling also links up with earlier decisions where the assignment of copyright to an unrelated party took place, and copyright infringement was found to exist where goods, the manufacture of which was lawful overseas, were involved. The decision is another weapon in the arsenal of copyright owners in so far as grey goods are concerned.

SAMRO v Gilfillan and the "tyranny of litigation"

Literally hot off the press, here's the judgment of the High Court of South Africa (North Gauteng Provincial Division) of 4 November in South African Music Rights Organisation Ltd (SAMRO) v Graeme Gilfillan, the Brenda Fassie case (see earlier posts here, here and here on Afro-IP for some SAMRO background and history).

In short, this was an attempt by SAMRO to obtain a full or interim interdict to stop its outspoken critic Graeme Gilfillan "publishing any defamatory and/or derogatory statements ... and/or from publishing injurious falsehoods" about it pending the arbitration of David Feldman N.O. v SAMRO, a now well-publicised dispute relating to Feldman's attempts to secure accounts in relation to copyright royalties owed to Brenda Fassie's estate.

Dismissing the application for an interdict, the court reviewed the evidence, the submissions and the conduct of the dispute to date, and concluded:

"The applicant has failed to establish a prima facie right to interdict the respondent from publishing a statement of which the contents are unknown in the future".

Then, citing with approval the words of Mhlantla AJA in National Council of Societies for the Prevention of Cruelty of Animals v Openshaw 2008 (5) SA 399 (SCA), the court added:

"There is such a thing as the tyranny of litigation, and a Court of law should not allow a party to drag out proceedings unduly".

You can read or download pages 1 to 10 of the judgment of Pretorius J here and pages 11 to 19 here. Afro Leo looks forward to hearing more news about this action.

Copyright Society stopped from collecting ring tone royalties

According to Business Daily here, the High Court has ordered the Music Copyright Society of Kenya (MCSK) to stop collecting ring tone royalties from Cellulant Kenya Ltd pending an appeal to the Court of Appeal.

Justice Luka Kimaru however ordered Cellulant to deposit KSh. 2 million within 30 days failure to which the injunctive order would automatically cease.

Cellulant is in the business of offering mobile phone value added services of musical and artistic works such as phone ring tones, logos and pictures. To facilitate its business, it had entered into agreements with music artists in relation to the songs to be used as ring tones. For the use of the music, Cellulant pays royalties directly to the artists.

The order arises from a ruling in an earlier case in July, when Cellullant failed to obtain orders restraining the Society from demanding royalties in respect of the ring tones. However it obtained an interlocutory injunction restraining MCSK from trespassing into its premises and interfering with its business. Apparently MCSK had raided the premises of the plaintiff and seized four computers on allegations that the Cellulant had infringed copyright of its members.

It is against these orders that Cellulant then pleaded with the High Court to restrain the society from demanding royalties pending the appeal. Cellulant contends that MCSK has no right to demand payment since it had entered into agreements with individual music artists who it was paying for use of the music content.

African nations score poorly for entrepreneurship, innovation in latest Legatum index

PR Newswire reports on the third edition of the Legatum Prosperity Index, which ranks 104 countries (covering 90% of the world's population) by criteria of prosperity that combine economic growth together with measures of happiness and quality of life. According to this news item,

Thanks to strong communities and democratic institutions, South Africa is the highest ranked sub-Saharan African nation, placed 51st, closely followed by Botswana at 56th. The majority of African countries rank in the bottom 15 with the Central African Republic, Sudan and Zimbabwe ranked dead last at 101st, 103rd, and 104th respectively. ...

Key Findings from the 2009 Legatum Prosperity Index

- All but two Sub-Saharan African countries rank within the bottom 25% of the rankings for entrepreneurship and innovation. ...

- The Central African Republic ranks lowest globally for both entrepreneurship and innovation and health. ...

AFRICA

51. South Africa
55. Botswana
64. Mali
67. Namibia
71. Tunisia
83. Ghana
84. Senegal
85. Morocco
88. Egypt
89. Mozambique
92. Zambia
96. Algeria
97. Kenya
98. Tanzania
99. Nigeria
100. Cameroon
101. Central African Republic
103. Sudan
104. Zimbabwe

Better late than never

Over a year and a quarter since Cape Verde became a member of the World Trade Organization, the United Kingdom has issued the Designs (Convention Countries) (Amendment) Order 2009, which confirms that from 12 November 2009 Cape Verde is declared to be a convention country for the purposes of all the provisions of the United Kingdom's Registered Designs Act 1949. The Schedule to the Designs (Convention Countries) Order 2007 will now be amended by the insertion of Cape Verde into the alphabetical list of Convention Countries.

WIPO Striving to Increase Access and Protect Assets

Next week, Cairo, Egypt is hosting a WIPO seminar entitled “African-Arab Seminar on Copyright Limitations and Exceptions: Addressing the Needs of Affected Constituencies.”  Recognizing that copyright exceptions and limitations (CELs) differ from country to country, the seminar is designed to allow people to share perspectives and experiences from their countries.

The seminar is related to the work of WIPO’s Standing Committee on Copyright and Related Rights (SCCR) and the WIPO Development Agenda.  One of the aims of the Development Agenda is to increase access to knowledge, which often means increasing access to copyrighted materials.  In relation to this, the SCCR is doing research into copyright exceptions and limitations around the world.  Presumably, this seminar will help contribute to the ongoing discussions and research.

Presenters at the seminar hail from Egypt, South Africa and Egypt.  For those who will be in the Cairo area, more logistics details can be found here.

In related news, the 5th International Forum on Creativity and Inventions will be held the following week in New Delhi, India.  The forum includes speakers from Africa, as well as the rest of the usual guests.  This year’s topic is IP in a Changing World.  More information is available here.

Some progress in CIPRO fraud pandemic

Two recent reports reveal that "investigators are trying to link three men arrested for stealing more than R80 million (+-$10.4 million) to the fraud pandemic at CIPRO". According to yesterday's The Star the three men "were arrested on the weekend". There is a also a report that the suspected "kingpin" was arrested in June, denied bail in August and is due back in Court in December. Thanks to Maria Mcgibbon (Bowman Gilfillan) for The Star report.

The significance of "Ciprogate" is such that new finance minister Pravin Gordin was tested by Marius Swart of the Democratic Alliance who asked in a written parliamentary question what amount of money Sars (revenue service) lost in cases where employees of Cipro duplicated companies on the database in the 2008/09 financial year. "These cases reveal that Sars has lost a total of R50 949 743.80 in income tax refund fraud as a result of duplicate companies registered at Cipro," he said. The companies were SBC International Management Services (R31 600 946.89 lost) and Sun Microsystems (R19 348 796.91 lost)." IOL News

Despite the progress in catching the perpetrators (for which Cipro and the authorities should be congratulated), Afro Leo received a report from an attorney who, for the past three weeks, has been trying (without success) to set up a meeting with Registrar of Companies and Close Corporations to try to agree a way in which orders for changes to obvious company and close corporation name duplications can be made without trade mark owners having to incur the cost of filing formal objections. The attorney's explanation to the unfortunate client (now faced with incurring three objection costs) is as follows:

"We called the Cipro general number and made a report on the Cipro fraud report line (which promises a response within 48 hours). We received no response from the fraud report line. The operator on the general number referred us to the Cipro legal department. We called the legal department and left messages, to no avail. We finally made contact but the person who answered the call referred us to someone else and we emailed him. No Joy. We have also written to various other people at CIPRO and have had no joy. These efforts have taken place since our call with you [the client] on 7 October."

Are trade mark owners expected to incur the cost of formal objections (which may be to the High Court) where fraud has occurred? This blog has encouraged trade mark owners to assist Cipro by setting up watches to check the registers against their trade marks. Trade mark owners are responding - some guidance from Cipro would be appreciated.

• For previous reports on Ciprogate click here.
• On how to escape handcuffs click here and an early attempt to improve handcuffs.

AMOAPI initiative to counter counterfeits

"Joint Effort Underway to Combat Counterfeiting", an article in AllAfrica by Godlove Bainkong, reports on a forthcoming international forum to seek common solutions to the threats posed by rampant counterfeiting. The forum will be held in Douala on December 1 and 2, is organised by the Association of Trade Mark and Patent Agencies Affiliated with the African Intellectual Property Rights Organisation (AMOAPI), which says that studies have shown that a greater percentage of goods consumed in the continent are counterfeit.

AMOAPI president Françoise Ekani said records show that 70 per cent of medication, especially malaria drugs, is counterfeit. She added counterfeiting is not only dangerous to human health, but that it also stifles the growth of the economy as well as creativity. Some 15 enterprises, members of Confederation of Business people of Cameroon (GICAM), she said, in 2005 lost over FCFA 62,008 billion to counterfeiting and that the customs sector recorded a FCFA 5,058 billion deficit in related circumstances. It was necessary to sensitise IP owners as to the scale and nature of their losses, she added.

Afro Leo wishes the forum luck and hope it does well. Sadly the problem isn't (or isn't just) that IP owners don't take enough action to stop counterfeits. A far bigger problem is that so many people are more than happy to sell and buy them, irrespective of the consequences.

Upcoming Events

On the off chance that the title of Wednesday's Afro-IP post indicated to readers that this blog is forward thinking (and not simply that Afro Leo thought he had a four day week!) it seems appropriate to end off the week by canvassing upcoming events in November which will be listed alongside in due course:

• Bowman Gilfillan is hosting their IP Crammer on 11 November. The invitation is open to all. The session is being chaired by Philip Ginsburg SC and the speakers are aiming to distill the IP developments of 2009 and cast an eye over key issues for 2010. Over 30 attendees have already confirmed - join in - there is no charge and Bowman Gifillan serve a great breakfast.
  
  
• There is an Annual Intellectual Property Rights Conference taking place on 19 and 20 November at the Indaba Hotel. The conference content looks very good and aims to cover issues such as:
  · Levelling the playing field: Co-operation and competition in the software sector
  · Realising the potential of publicly financed IPR research
  · Role of IPR in quality health care for all
  · Innovation and IPR
  · Reducing hunger in Africa: Better seeds make better crops
  · Protecting African artists
  · Illegal copying (piracy) is theft

• Those who attended DM Kisch's 135th celebration (which was befitting such an occasion), look out for pictures to be posted on this blog in November.

Just a reminder that Afro Leo is happy to post upcoming IP events on this site, please just email him here.

And finally, one email Afro Leo received this week is co-incidentally entitled "Proofreading - a dying art" and lists the following very comforting headlines: "Man Kills Self Before Shooting Wife and Daughter", "Something Went Wrong in Jet Crash, Expert Says", "Police Begin Campaign to Run Down Jaywalkers", "Panda Mating Fails; Veterinarian Takes Over" and the best of all "Typhoon rips through cemetery, Hundreds dead"

Thursday thinking as DM Kisch celebrates 135 years

Access Codes Please

Greater awareness of the existence of open access information resources for innovation and making the information easily accessible and relevant to developing country users could help spur innovation in these countries, according to top technical assistance providers and local innovators. In a two-part series, Intellectual Property Watch (Robinson Esalimba and William New) spoke with local innovators and researchers in Kenya to identify successes and challenges facing local innovators in Africa. Mrs Nicholson (ACA2K network - music to your ears, I suspect.)

Bad faith and bona fide intentions

The recent US decision in Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660 (TTAB 2009) illustrates how a "lack of intention to use" can be fatal to an application. The US has always been more strict on this requirement but it nonetheless demonstrates the potential vulnerability of marks filed in countries whose registries accept wide specifications and there is a corresponding requirement on the applicant to show that he has an intention to use the mark for the goods or services covered by the application.

Take for instance the filing form in South Africa which requires the signatory to state that:

"The Applicant claims to be the proprietor of the accompanying Trade Mark which is proposed to be or is being used in respect of the aforementioned specification of goods/services".

RSA case law mentions that one must have a present and definite intention to use the mark.

"There must be a real intention to use the mark in future [for the specification of services], not a mere problematical intention, nor a general intention to extend business or an uncertain or indeterminate possibility" (Webster and Page, amongst others).

Section 32(3) of the UK Act, similarly states:

“The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.”

Left - bona fide or a bone for fido(s)...?

Afro Leo thinks it is just a matter of time before there are increased challenges on wide specifications on this basis... as was held by this UK Registry Hearing Officer:

"In so far as the applicant makes a materially false statement in this regard then I believe that the application is made in bad faith. This was clearly the view of Jacob J. in DE LA MER, and he evidently had well in mind the difference in approach of OHIM as revealed by TRILLIUM...By making its statement of use/intention of use, when it did not have an intention to use LML was acting in a manner that fell short of the standard of acceptable commercial behaviour observed by reasonable and experienced men." Landau in Jemella Limited v Landlord Mortgages Limited (2008 UK Registry decision)

It also shows that care should be taken when drafting specifications for US applications, in particular.

On a celebratory note...

it came to Afro Leo's attention just yesterday that Messrs DM Kisch are celebrating their 135th anniversary with a cocktail party this evening and this Leo is invited. Congratulations DM Kisch on 135 years!

Did you know that in RSA in 1874:

- A college was founded at Stellenbosch which later becomes the University of Stellenbosch
- The railway line from Port Elizabeth to Uitenhage was opened
- The Burgerspond, the South African Republic's first coin, was introduced
- Charlotte Makgomo Maxeke, religious leader and political activist, was born at Ramokgopa near Polokwane.

Medicines for Rwanda -- but what about the 'drug miles'?

Shire Canada Inc., a division of Shire plc, announced today its voluntary cooperation to enable further royalty-free access to HIV/AIDS medicines for Rwanda as part of that company's ongoing collaborative efforts to improve health and save lives in the developing world.

Shire is a supporter of Canada's Access to Medicines Regime (CAMR) -- under which Canadian generic companies can manufacture in Canada a fixed dose triple combination antiretroviral medicine that contains 3TC(R), a patented drug over which Shire Canada owns the local patent rights. According to Shire Canada VC Claude Perron,

"Shire is totally supportive of this initiative, and will work collaboratively with government and non-governmental agencies worldwide to help secure medicines for those that request it. Our industry wide efforts are aimed not only at preventing and treating HIV/AIDS but also tuberculosis, malaria and other diseases that affect sub Saharan Africa."

The CAMR is a positive consequence of the August 2003 World Trade Organization (WTO) agreement which lets WTO member countries with pharmaceutical manufacturing capacity issue licences for the manufacture and export of generic versions of patented drugs and medical devices to developing countries that do not have the capacity to manufacture the products themselves.

What Afro Leo would like to know is what steps are taken to transfer to Rwanda, and other HIV/AIDS-rife jurisdictions, the necessary technology and know-how to enable them to manufacture vital patented medicines locally rather than have them sent half way round the world, virtually from the Arctic to the equator. Once the principle of licensing the manufacture of generics is accepted, there must surely be a more efficient way of doing it. In developed countries, foods flown in from developing African economies are often tainted with the environmentally hostile stigma of 'food miles'. Surely the same can be said of the 'drug miles' clocked up by pharma products travelling in the opposite direction.

Friday update

A summary of recent Zimbabwe case law involving (amongst other index heads) trade marks, copyright and passing off has been published by Saflii here.

Denise Nicholson, Wits Copyright Services Librarian and founder of ACA2K blog site dedicated to probing the relationship between national copyright environments and access to knowledge in African countries, has informed Afro-IP of research updates on the ACA2K site for South Africa, Ghana, Kenya, Mozambique and Uganda.

Afro Leo, in considering David's post immediately below, would like to know if this case may set a precedent for how all rights (ie including trade marks) will be treated by ARIPO member states (those who have ratified the protocols) and is ARIPO equipped to handle revocation claims?

Patent Tribunal rules that ARIPO patents cannot be revoked in Kenya

In a ruling that is likely to create a legal loophole and ambiguity in the patent system in Kenya, the Industrial Property Tribunal (Tribunal) has made a ruling that it has no jurisdiction to hear applications to revoke patents granted by ARIPO.

The ruling arises from an application by Chemserve Cleaning Services Ltd (Applicant) to revoke (the notorious) patent AP 773 held by Sanitam (EA) Services Limited (Respondent).

Before the application could be heard, the respondent filed a preliminary objection that the Tribunal lacks jurisdiction to hear and determine issues regarding an application to revoke a patent issued by ARIPO in that section 59 of the Industrial Property Act 2001 (the Act) only incorporates patents granted by ARIPO in relation to their effect in Kenya and that other issues such as revocation are not expressly stated in the section.

Under section 59, patents granted by ARIPO are recognized as valid in Kenya and are given the same effect as patents granted under the Act. Relevantly the section states that:

“A patent, in respect of which Kenya is a designated state, granted by ARIPO by virtue of the ARIPO Protocol shall have the same effect in Kenya as a patent granted under this Act…”

The main issue between the parties was the meaning of the word “effect” in the section. According to the Tribunal the word simply means “the powers conferred to a right holder by the patent in Kenya.”

The Tribunal further canvassed on various provisions of the Harare Protocol and concluded that once an ARIPO patent is given “legal effect” in Kenya, the only matters it is mandated to adjudicate are infringement and compulsory licences. Pertinently it argued that where an application for revocation is filed under the Act, ordinarily it would have to peruse the registration file and on finding that the patent ought not to have been registered, it orders KIPI to remove the patent from the register. Accordingly the Tribunal held that since it had no mandate to order ARIPO to remove the patent from its register, it had no jurisdiction to revoke the patent!

The Tribunal’s interpretation of section 59 is problematic and raises numerous questions. It is recognized that patent rights are not absolute; there are limitations to the rights given to the patentee, and which can be raised as a defence by an alleged infringer. A common defence in infringement proceedings is invalidity of the patent. Having conceded it has jurisdiction to hear infringement proceedings, the question is how the tribunal would deal with a case where, for the example, the defendant argues invalidity of the patent, which if successful would call for revocation of the patent.

It would seem that there are now two sets of rules applying in Kenya; while on one hand the Tribunal cannot revoke a patent granted by ARIPO, it can nevertheless revoke a patent granted by KIPI as provided under section 103 of the Act!

At this point it is not clear what will happen next or whether the loosing party will make an appeal to the High Court. Afro-IP has been reliably informed that there are a number of revocation applications before the tribunal over the same patent.

The matter is further complicated arising from a number of rulings by the High Court and the Court of Appeal regarding the question of validity of patents once granted. In 2006 in the matter Sanitam services (E.A) Ltd v Rentokil (k) Ltd & another [2006] eKLR the court of Appeal made it clear that it had no capacity to determine validity of patents, and that only technical bodies such KIP[I] and ARIPO had the capacity to do so. Early this year, the High Court in Rentokil v Sanitam Civil Case No 702 of 2008 (unreported) held that “it is not the duty of th[e] court to determine whether the invention that is the subject of litigation conforms to the patent or not.”

See previous posts here and here .