Revisiting the similarity between perfume and clothing

Determining the similarity between goods in different classes has become a confused area of South African law recently, with a number of courts handing down conflicting decisions. The most recent of these is Chantelle v Designer Group (Pty) Ltd where the North Gauteng High Court overturned the decision of the Registrar of Trade Marks who had allowed registration of the trade mark CHANTELLE in class 3, even though the proprietor of the identical mark in class 25 had objected. The High Court’s decision followed the 1991 Supreme Court of Appeal (SCA) ruling in Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales & Promotions (Pty) Ltd in which the mark FRENCH CONNECTION for clothing was able to p

ARIPO by numbers

​ With the release of the 2014 ARIPO Annual Report we see the number of Patent and Trademark filings not just increasing, but doubling over the last four years. These figures climb from 424 filings in 2010, to an impressive 835 filings in 2014. This also marks a 20.7% growth from the previous year. According to the International Patent Classification (IPC), the most applications were filed by the US which had 24.6% of the 2014 patent lodgements, China with 13.1% and Germany 6.9%. ARIPO office granted 255 patents in 2014, originating mainly from the United States. Patent grants made on applications channelled through the Patent Cooperation Treaty route, accounted for 94.9% of the grants made

Passing off, Company and Domain Name Objections and Revocation of Registrations in South Africa

In late August 2015 the Western Cape High Court handed down a judgment which neatly sets out the principles of passing off and discusses some ancillary issues. This is a good judgment which adequately discusses the issues surrounding passing off. The court also did a commendable job when addressing the secondary issues and this judgment can surely be consulted when referencing to passing off cases in the future. Global Vitality Inc (the Applicant) is an American manufacturer, distributor and seller of dietary nutritional supplements under the trade mark Enzyme Process. Since 1988 these goods have been distributed worldwide through authorised agents. The entity Enzyme Process CC was the autho

Tackling Online Piracy through ISP Blocking Law: The Draft Amendments to the Kenyan Copyright Act 20

The Communication Authority along with The Kenya Copyright Board recently made public a proposal to hold Internet Service Providers ISP’s responsible for blocking “unlawful” content on/from websites hosted in Kenya. The proposed regulations are said to lay out stringent penalties for ISP’s who do not comply and once approved will be inserted as an amendment to the Copyright Act by the end of 2015. The media report in The Daily Nation cites the motivation for these proposals being the need for more local media content and that the proposed regulation will build the local media content industry by ensuring that websites that show local content are lawfully doing so. Whereas the article by Stan

Nigerian National Petroleum Retailer NNPC Sues Competitor NNPG over Alleged Trademark Infrin

The Nigerian National Petroleum Corporation (NNPC) Retail Limited (which is Nigeria’s oil corporation with powers and operational interests in refining petrochemicals products) has instituted legal proceedings against the Natural Network Petroleum and Gas (NNPG) Company Limited over alleged infringement of its trade mark at the Federal High Court Abuja. The court requested that the Corporate Affairs Commission (CAC) and Registrar of Trade Marks, Patent and Designs be joined as 2nd and 3rd defendants respectively as they would be affected by the courts judgement. NNPC alleged that sometime in 2015, it discovered that NNPG was selling petroleum products in Ondo State under the NNPG mark, which

Libyan Trade Marks Office Resumes Issuing Registration Certificates

​ After more than 4 years of civil war and accompanying legal uncertainty, we are happy to report that the Libyan Trademarks Office (TMO) has started issuing registration certificates again. The instability began when the first civil war broke out in February 2011, resulting in the closure of the TMO. In 2012, the TMO started issuing registration certificates which were initially kept on file, but which were distributed to applicants from August 2012. In early 2013, it appeared that operations have resumed fully, as the TMO started accepting applications and even published an Official Gazette. However, late 2014 brought about another closure of the TMO due to an increase in the civil unrest

ARIPO Adopts New Plant Varieties Protocol

On 6 July 2015, the African Regional Intellectual Property Organisation (ARIPO) adopted a new Protocol for the Protection of New Varieties of Plants at a diplomatic conference held in Arusha, the United Republic of Tanzania. The Protocol is aimed at modernising African agricultural practices, yet some argue that it comes at the expense of traditional farming practices that include saving, re-using, sharing and selling seed. The Arusha Protocol is aimed at providing protection for new plant varieties by way of a sui generis plant breeders’ rights system so as to allow farmers and growers access to a wide range of improved varieties and thereby ensure sustainable agricultural production. The A

Zimbabwe: Innovate or starve, Piracy Forces Artists to the High Streets

A wave of piracy in Zimbabwe, buoyed by the economic collapse in the country, has seen popular musicians resorting to selling their works on the streets. Estimates as to the exact scale of piracy in Zimbabwe are unclear but it is undoubtedly depriving content creators of substantial revenue. According to Business Software Alliance, Zimbabwe’s rates of piracy are at least 10% higher than the average in other African countries. The Zimbabwe Copyright and Neighbouring Rights Act gives protection to the creators of a variety of works including literary and musical works, artistic works, sound recordings and broadcasts. Under the act owners of copyright are given the exclusive right to reproduce,

Cybercrimes and Cybersecurity Bill for South Africa published for comment

The draft of the Cybercrimes and Cybersecurity Bill has been published. Currently there is very little legislation dealing with cybercrime in South Africa. The Bill aims to address the situation by implementing measures to combat cybercrime. The Bill creates offences and imposes penalties for certain cybercrime offences. The Bill further regulates the jurisdiction of the courts and well as the powers to investigate cybercrimes and the aspects surrounding evidence pertaining to cybercrimes. Aspects of international cooperation in respect of the investigation of cybercrime is regulated and the Bill provides for the establishment of various structures to deal with cybersecurity. A document pub

The Nigerian Copyright Commission raids Major Markets in Lagos State, Nigeria

The Nigerian Copyright Commission (NCC), in an effort to sanitize the Nigerian market of piracy activities, recently carried out anti-piracy raids in major markets in Lagos suspected to be piracy activity points and seized 50,000 copies of pirated works worth an estimated market value of two million Naira (N2,000,000). The anti-piracy raids were carried out between 25 August and 30 September 2015 at the instance of complaints brought to the Commission by Yoruba Movie Marketers Association. Acting in terms of section 22 of the Nigerian Copyright Act (cap c28, Laws of the Federation of Nigeria 2004), Operatives of the Nigerian Copyright Commission were accompanied to the markets by a combinat

Zimbabwe: A Little Bit About Filing

Zimbabwe has become a popular destination for trade mark filings likely because it offers proprietors the chance to file national, regional and international trade mark applications through ARIPO and under the Madrid system. The national application is one trade mark application for each class of goods or services through the Zimbabwe Intellectual Property Office (ZIPO). An application must be submitted on Form TM 5 together with the application fee and supporting documents. The application is then examined at ZIPO after which it will be advertised to the public for 2 months. During this time, any person may formally oppose the application. If there are no oppositions, the application will b

Rouse launches in Africa - Joint venture tie-up agreed with South African specialist IP firm, Von Se

Rouse is the first global intellectual property (IP) firm to launch in sub-Saharan Africa after it confirmed a joint venture tie-up with specialist South African IP law firm, Von Seidels. The joint venture will trade as Rouse Africa, and will be headquartered in Cape Town, with an office in Windhoek handling ARIPO work. Von Seidels already boasts a thriving sub-Saharan practice, with a team of locally-qualified lawyers and patent specialists from Cameroon, Nigeria and Kenya working with clients from across the world. Rouse Africa will look to build on this by creating a network of offices in further markets in the near future. Rouse Africa will be led by Maura Canavan from Rouse. Maura will

Nigerian IP Registry Goes Digital

The Nigerian Registry for Trademarks, Patents and Designs is steadily moving into the digital age. The Intellectual Property Automated System (IPAS) which launched in January 2014 was the first major milestone in the effort to transform the Nigerian IP registration landscape. The IPAS was a leap forward in enhancing the quality of examinations, decisions and services offered to applicants and the general public, giving investors the confidence to invest in Nigeria. At its launch, the systems efficiency elicited positive comments from WIPO Project Manager Hisham Fayed who stated that the automated system would not only help in improving the speed of the application for patents, trademarks and

Gambia accedes to the Madrid Protocol

The World Intellectual Property Organisation (WIPO) has issued a notification that the Gambia has acceded to the Madrid Protocol. According to the notification (which can be accessed here), the Gambian government deposited its instrument of accession with WIPO on 18 September 2015 and the Madrid Protocol will enter into force in the Gambia on 18 December 2015. As such, it will be possible to designate the Gambia in International Registrations from that date. However, we should caution that the situation regarding International Registrations in Africa is still very precarious, as many of the countries that have acceded to the Madrid Protocol or the Madrid Agreement (the two treaties that prov

Retail development in Africa

Global management consulting firm AT Kearney released its second annual African Retail Development Index (ARDI) report in September, with some surprising results. Gabon, a developing country with a population of approximately 1.7 million, a per capita income of about USD 21,000 and about 86% of its population living in urban areas, emerged as the top country due to its exceptional economic growth and accompanying retailing opportunities. Other countries listed in the Index include Botswana (ranked 2nd), South Africa (coming in at 6th), Angola (coming in at 3rd) and Rwanda (ranking 7th, down from 1st in 2014). A country that is surprisingly missing from the Index is Kenya, one of Africa's mos

A "Bright" spot in the fight against counterfeit drugs in Africa

Founded in 2007 by Ghanaian entrepreneur, Bright Simons, MPedigree Network (MPedigree) was set-up to provide consumers with the peace of mind that the medication they had bought was the genuine article. In a continent where 100,000 deaths have been attributed to counterfeit drugs it has become very important, very quickly. "GoldKeys", which is the name of the system that MPedigree developed, provides drugs manufacturers with a unique 12 digit code which can be used to label individual packs of medication. A buyer can then authenticate this code with MPedigree. Following its initial success, the use of GoldKeys has expanded and are now being used to test the authenticity of other products kno

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