Christmas break

As reported by Afro IP here, with the Parliament having gone on recess last week marks the end of the road for the Anti Counterfeit Bill 2008.

Hopefully the break and the new year will inject fresh ideas to take the process to a another level other than debating on whether to distinguish counterfeit medicine from other counterfeit goods.

As suggested by the Afro IP post, it may be necessary to decide whether to orientate the debate on how to tackle the menace of counterfeits in a different direction such as amending the existing laws rather than coming up with another layer of law which comes with its own added baggage.

On that score IP Kenya would also like to take a deserved Christmas break until January next year.

We wish our readers a merry Christmas and a happy new year.

New malaria drug in the making?

The standard Newspaper reports that researchers at Kenya Medical Research Institute (KEMRI) are on the verge of a major breakthrough in the fight against malaria. It is reported that research on a plant, phytolacca dodecandra, found in Turkana District promises to produce an effective pesticide against mosquitoes.

According to one of the researchers Pamela Were, field tests have proved that the plant can kill mosquitoes in all their life stages; for example, it kills the mosquito larvae within ten hours of exposure. The plant is very effective in low doses and the chemical extracted from the plant has potential to be used as a pesticide.

The research is in the final stages and the researchers expect to patent and licence the invention in the course of next year.

According to a wikipedia entry, the plant Phytolacca dodecandra is variously known as endod, Gopo Berry, or African soapberry and is a trailing shrub or climber native to Africa. The plant is cultivated mainly in Ethiopia where it is used as a soap and shampoo as well as a poison to stun fish. The plant is lethal to snail - a fact discovered by Ethiopian scientists . After an Ethiopian scientist demonstrated the plants potency to American scientists, they took out a patent (US 5252330), hoping to sell it as a biological control for the Zebra mussel, a pest in the Great Lakes of the US and Canada.

Hopefully the Kenyan scientists will not demonstrate or have not demonstrated the potency of their research to the American Scientists.

Singapore Treaty on Trade Marks to enter into force in March 2009

According to a WIPO press release, the Singapore Treaty on Trade Marks will come into force on 16th March 2009 following ratification by Australia on 16th December 2008. Australia becomes the tenth country to ratify the treaty to make it operational.

The release indicates that WIPO Director General, Francis Gurry, who coincidentally is Australian, welcomed this development saying, “the entry into force of the Singapore Treaty was good news for trademark owners around the world as it opened the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently.”

The Singapore Treaty was adopted by WIPO member states in Singapore in March 2006. The Treaty standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights.

Kenya signed the Treaty on 28th March 2006, but has not ratified it.


Key features of the treaty are that
· It recognises all types of marks, including non-traditional visible marks, such as holograms, three-dimensional marks, colour, position and movement marks, and non-visible marks, such as sound, olfactory or taste and feel marks. However the Treaty does not impose any obligations on Contracting Parties to (i) register new types of marks, or (ii) implement electronic filing systems or other automation systems
· It leaves Contracting Parties the freedom to choose the form and means of transmittal of communications and whether they accept communications on paper, communications in electronic form or any other form of communication. This has consequences on formal requirements for applications and requests, such as the signature on communications with the Office.
· It does not require authentication, certification or attestation of any signature on paper communications. However, Contracting Parties are free to determine whether and how they wish to implement a system of authentication of electronic communications.
· It provides for relief measures when an applicant or a holder has missed a time limit in an action for a procedure before the Office. Contracting Parties are required to make available, at their choice, at least the following relief measures: (1) extension of the time limit, (2) continued processing and (3) reinstatement of rights if the failure to meet the time limit was unintentional or occurred in spite of due care required by the circumstances.
· It provides for recording of trademark licenses, and establishes maximum requirements for the requests for recordal, amendment or cancellation of the recordal of a license.
· It creates an Assembly of the Contracting Parties.
· It introduces a degree of flexibility for the definition of details concerning administrative procedures to be implemented by national trade mark offices where it is anticipated that future developments in trade mark registration procedures and practice will warrant the amendments of those details.
· It has provisions for assisting developing and least developed countries (LDCs) with technical and technological support to enable them to take full advantage of the provisions of the Treaty.

AS of now no developing country or LDC has ratified the treaty, hopefully they will do so in the near future and take advantage of the technical and technological support envisaged in the treaty in order to modernise their trade mark registries, especially in terms of eletronic communication.

Summary of the treaty is available here.
The full treaty is available here

WIPO announces Strategic Change Program

A press release by WIPO indicates that following the approval by Member states of a revised program and budget on December 12, 2008 the Orgainization has initiated a comprehensive program of strategic change in the direction and work “to enable the Organization to respond more effectively to the rapidly evolving technological, cultural and geo-economic environment.”
The revised program and budge sets out nine strategic goals including-

.balanced evolution of the international normative framework for IP,
.facilitating use of IP for development,
.provision of premier global IP services,

.building respect for IP;
.developing global IP infrastructure;
.responsive communication;
.becoming the world reference source for IP information; and
.addressing IP in relation to global policy challenges, such as climate change, public health and food security.

The program under the direct supervision of the Director General, is dedicated to ensuring effective coordination of work to implement the WIPO Development Agenda and 22 posts will be created to address critical skills gaps in the Organization.

Geographical indications for Kenyan coffee

The current issue of WIPO magazine carries an article on some famous appellation of origin (a special kind of geographical indication (GI) consisting of a geographical name used on products which essentially derive certain quality or characteristic from the geographical region). The article gives examples of products such as the Parma ham from Italy, Tequila from Mexico and Feta cheese from Greece, which are identified by consumers using their geographical names.

Closer home and as reported in the Daily nation here, a seminar on GI sponsored by the French Embassy was held last week in Nairobi. The report indicates that in order to raise demand and possibly raise prices for Kenyan coffee in the international market the Government with the assistance of France plans to brand coffee according the respective regions of origin.

From French experience, the process of obtaining a geographical indication is long, first involving detailed scientific tests of the regions to demonstrate their uniqueness that gives rise to the distinctiveness of the products from those regions. Moreover, the relevant bodies need to be set up to administer the system and control use of the GI.

From the report, it appears that certain studies have already been undertaken in Nyeri and Kirinyaga districts where 178 samples were tested for their intensity, aroma, bitterness, acidity and other qualities. In addition, the legal framework is being worked out, and a draft Geographical Indications Bill is in the pipeline.

Previous post on GI branding for tea here

Primer on Copyright protection for artists

Business daily carries an article by Cathy Mputhia on how artists’ creations are protected by the copyright law in Kenya. Despite the writer using the words copyright and mark interchangeably, the piece briefly touches on rights available, the criteria for protection of the work, administration, offences and penalties provided under the Copyright Act of 2001 for infringement of the rights.

New Copyright body for Southern and Eastern Africa

According to Intellectual Property Watch, a new copyright body, Southern and Eastern Africa Copyright Network (SEACONET) has been formed to strengthen regional collaboration and cooperation in the field of creative industries, copyright and related rights.

The Malawi based body comprising of seventeen African countries will also focus on fighting piracy and harmonisation of copyright laws in the 17 affiliated sub-Saharan African countries.

According to the IPwatch report, the need to create the body is due to the lack of a regional forum where issues relating to the promotion and protection of creative industries, copyright and related rights could be discussed.
The body, according to Allafrica.com is to come up with new methods of combating piracy in the region and to create an information database for artistic and cultural activities.
The countries involved are Angola, Botswana, Kenya, Lesotho, Madagascar, Malawi, Mauritius, Mozambique, Namibia, South Africa, Swaziland, Seychelles, Tanzania, Uganda, Zambia and Zimbabwe

Preventive treatment of Malaria reduces anaemia and improves classroom attention in school children

According to a research report published in the current issue of the Lancet, preventive treatment for malaria reduces the prevalence of malaria infection and anaemia among schoolchildren, and significantly improves their classroom attention. However, in contrast to a study done in Sri Lanka, the study did not find improvement in educational achievement among the children.

The study by a team of scientists from Kenya, UK and US, and funded by Gates malaria Partnership was carried out in 30 primary schools in Western Kenya among children aged 5-8 years who were given the treatment at 4 months interval.

The report further observes that even though some children did not complete the dose of treatment because of the bitter taste of the malarial drug amodiaquine, the outcome was similar among the children who received complete and incomplete treatment.

According to the report, the findings illustrate the “possible gains of integrating malaria control into broader school health programmes” and there may need for further research to investigate any long-term educational benefits.

Mark of quality may make goods disappear from market

According to Business Daily some consumer goods not bearing the East African Standardisation mark may be removed from supermarket shelves from tomorrow. This is in line with the requirement for all locally manufactured goods to bear the quality mark as agreed by the by the EAC members states.

According to the report, Nakumatt Supermarket has issued a notice of its intention to remove all non conforming goods from its shelves as the deadline for compliance takes effect in all the EAC countries from 1st July 2008.

As previously posted here, Kenya Bureau of Standards has consistently alerted Kenyan manufacturers of the requirement for their manufactured goods to carry its standard seal indicating that their quality has been certified. However IP Kenya is sceptical of the extent to which adhering to the standard will advance the stated objective of eradicating the menace of counterfeiting and substandard products in the region.

To beat the deadline the counterfeiters may have moved ahead and put their act together to “comply” with the requirement by branding their products with the quality mark. As a recent case in Uganda demonstrates, at least some counterfeiters are ahead of the deadline and have branded their products with the diamond quality mark.

As reported here and here the case concerned importation into Uganda of counterfeits BIC pens by a Ugandan company Wenbara Trading Company Ltd. The pens were imported from China described as writing plastic materials but on verification by Ugandan Revenue Authority the cargo was found to contain pens marked as “BIC” and “made in Kenya”. The boxes containing the pens were also branded with the diamond mark of Kenya Bureau of Standards and falsely indicating that the pens were made by Haco Industries in Kenya.

Endowment fund for research and innovation

A report in the Nation reveals that the government will in the next financial year establish a Ksh 250 million endowment fund to support research and innovation. The disclosure is attributed to the Permanent Secretary in the Ministry of Higher Education Science and Technology Prof Crispus Kiamba who was opening a regional scientific workshop organized by the Kenya National Academy of Sciences. Prof Kiamba is also reported to have disclosed that a Science, Technology and Innovation policy paper will be presented to the cabinet for deliberation.

Comments
It is not clear whether this fund is the same or is a supplement to the fund outlined by the Minister for Finance during the budget speech (see earlier post here) to promote science, technology and innovation.

However it may appear that the two funds are separate components since the budget speech proposal was for Ksh. 300 million and in the current financial year whereas the latest proposal will be implemented from the next financial year.

IP Kenya can only (re)reiterate what the Minister for Finance said during the budget speech that science, technology and innovation will play an important role in driving the country’s growth through promotion of efficiency, productivity and competitiveness.

Sweet dose for malaria patients

Writing in the Daily Nation’s Horizons magazine, Gatonye Gathura reports that scientist have artificially produced artemisinin, the compound used for treatment of malaria, and within 3 years it will be possible to produce enough to treat all malaria cases in the world.

He reports that in a research funded by Gates foundation, the scientists have produced artemisinin from yeast in a process similar to that of brewing bear and the partnership with Sanofi-Aventis is gearing up for industrial production of the drug.

While this is good news for malaria patients, this new scientific development will deal a big blow to farmers in the country who have recently taken up farming the artemisinin producing herb-artemisia annua. Reportedly the farmers on average are making Ksh 20,000 annually from a ¼ acre of land from cultivating the herb which is in demand especially by Swiss pharmaceutical company Norvatis which is a major manufacturer of the malaria drug.

The process of producing artemisinin by extracting it from the dried leaves of the herb is labourious, making the cost of the drug expensive for malaria patients- especially in developing countries.It is hoped that the new method of producing artemisinin will dramaticaly bring down the price of treatment to the level of making it the cheapest anti-malarial drug.

2008 Budget: 300 million fund to promote science, technology and innovation

In his budget speech, the Minister for finance Hon. Amos Kimunya has outlined a number of proposals to promote science technology and innovation in order to enhance growth and employment in the country. To achieve the long term growth of the country he proposed several measures in key sectors of the economy. One of the 5 key measures meant to spur higher productivity and expanded employment opportunities is promotion of industrial research, technology and innovation

He reiterated that science, technology and innovation will play an important role in driving the country’s growth through promotion of efficiency, productivity and competitiveness.

To entrench a culture of science, technology and innovation, he said the government will introduce several proposals for debate in parliament including;

• A national policy for science, technology and innovation


• A bill to upgrade the National Council of Science and Technology to the National Commission of Science and Technology


• Creation of the National Science Foundation and National Innovation Agency.
  
  

He also said that the government recognizes the critical role played by SMEs as catalysts for economic transformation and industrialization. To this end the government will facilitate SMEs growth. The government will also facilitate expansion of business incubation services to support over 100 additional enterprises and creation of 100 software development enterprises.

To achieve these objectives the Minister allocated Ksh. 300 million towards innovation and piloting program covering various projects such as;

• Fish leather processing in Kisumu


• Mango processing in Malindi, Kerio Valley and Muranga


• Mini-leather processing in Garissa, Pokot, Migori and Bungoma


• Honey processing in Eldama Ravine, Kajiado and TARDA regions


• Cashew nut and palm wine processing in Kwale and Malindi


• Fruit processing in Meru, Tharka Nithi and Kendu Bay


• Rehabilitation and upgrading of technology for a leather development center in Nairobi.

Fake products flood the Kenyan Market

Daily Nation reports that the Kenyan market is flooded by fake products, and the situation is being made worse by the current economic hardship in which the purchasing power has gone down.

Some of the imported counterfeits are marked as “made in Kenya” and with fake Kenya Bureau of Standard diamond mark. The situation is worse where even anti malaria drugs have not been spared, with 1 in every 5 drugs suspected to be harmful.

The report indicates whereas most of the products are imported the trade is expanding locally especially in Nairobi where fake cooking oil, maize flour and alcoholic drinks are manufactured and the goods are then sold in neighbouring countries.

The practice is affecting not only the economy but many local manufacturing companies who have to endure the unfair business practices. Haco Industries, a local manufacturing company is reported to be losing Ksh 100 Million every year as a result of counterfeiting of one of its brands, BIC biro pens. Sometimes the counterfeit is so similar to the genuine product that even the brand owners may not tell the difference.

It is reported that Kenya Bureau of standards has directed that from July this year all manufactured goods in Kenya will be required to carry standard seals indicating that their quality has been certified. It is debatable whether this new directive will help. The mark can easily be applied on counterfeit products as a recent case in Uganda demonstrates.

The case concerned importation into Uganda of counterfeits BIC pens by a Ugandan company Wenbara Trading Company Ltd. The pens were imported from China described as writing plastic materials. However on verification by Ugandan Revenue Authority the cargo was found to contain pens marked as “BIC” and “made in Kenya”.

Tellingly the 852 boxes containing the pens had a diamond quality mark of Kenya Bureau of Standards. And even though the cargo was imported from china, the boxes containing the pens also indicated that they were made by Haco Industries in Kenya.

To address the counterfeit menace, the anti counterfeit bill (reported here) which proposes establishment of an anti counterfeit agency will be tabled in parliament this year. It will be recalled that this bill has been pending for a number of years now.

However the war on counterfeit activities will not be won by creating layers and layers of laws. In addition to enacting new laws and regulations it also important that they be enforced.

More on anti counterfeiting measures in neighbouring Tanzania here and here

Countefeit horror here.

Puzzling ruling in Sanitam saga

IP Kenya has come across an interesting patent infringement ruling in 2001 by the late Justice Peter John Smithson Hewett. Once again the plaintiff is Sanitam, seeking an injunction against a company by the name ANIPEST Kenya Limited for infringement of the now famous ARIPO patent No AP 773 relating to a foot operated sanitary/litter bin. (Earlier posts on the Sanitam bin can be found here and here.)

Even though the Court of Appeal, in Sanitam Services (E.A.) Ltd v Rentokil Kenya Ltd & another [2006] eKLR (posted here), acknowledged the complexity of adjudicating intellectual Property disputes, the present case takes the meaning of the word "complex" a notch higher. Apart from his tirade generally directed at what he perceived to be shortcomings of the repealed Industrial Property Act, one cannot fail to observe how his Honour meticulously scrutinizes the abstract and decisively concludes that the invention is not novel.

The case is reproduced here in full.

REPUBLIC OF KENYA
IN THE HIGH COURT OF KENYA AT NAIROBI
MILIMANI COMMERCIAL COURTS
CIVIL CASE NO. 1898 OF 2000
SANITAM SERVICES (E.A) LIMITED………………….PLAINTIFF
VERSUS
ANIPEST KENYA LIMITED AND ANOTHER………….DEFENDANTS
RULING

It is hardly surprising that the Law of Patents especially in Africa should be [cause] for difficulty. For long the registration and policy of patents has essentially been dealt with in the First World with registration in African countries of such (mainly English) patents forming the basis of protection.
It is not surprising either that African countries have sought to exert their own authority over patents but that only comparatively recently. It is a complicated area both legally and scientifically so it is hardly surprising that we have a few hiccups as will be seen from what follows:

I start with Kenya Industrial Property Act (CAP 509) which came into force on 2nd February 1990.
That contains in section 2 some definitions relevant to this case, although other definitions crop up haphazardly in the legislation as the draftsman needed them.

“ARIPO” means the African Regional Industrial Property Organization.
“ARIPO Protocol” means the protocol on patents and industrial designs adopted at Harare in December 1994.
“invention” means a new and useful art (whether producing a physical effect or not), process, machine, manufacture or composition of matter which is not obvious, or any new and useful improvements thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged inventions;
“Tribunal” means the industrial Property Tribunal established under section 118;
“utility model” means any form, configurations or disposition of elements of some appliance, utensil, tool, electrical and electronic circuitry, instrument, handicraft mechanism of other object or any part of the same allowing a better or different functioning, use, or manufacture of the same subject matter or that gives some utility, advantage, environmental benefit, saving or technical effect not available in Kenya before and includes micro-organisms or other self-replicable material, herbal as well as nutritional; formulations which give new effect.
It hardly helps understand the legislation that section 6(1) alters the definition of “invention” for the purposes of part III patentability.
“6(1) for the purpose of this part, “invention means a solution to a specific problem in the field of technology”. Does this mean that the solution no longer has to be new? The solution to that is in Section 7.
“7. An invention is patentable if it is new, involves an inventive step and is industrially applicable”.
Section 9 explains “inventive step” thus:-
“9. An invention shall be considered as involving an inventive step if, having regard to the prior art relevant to the application claiming the invention, it would not have been obvious to a person skilled in the art which the invention pertains on the date of filing of application or, if priority is claimed, on the priority date validly claimed in respect thereof.”
Section 10 explains “industrially applicable”
“10. An invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry, including agriculture, fishery and services.”
It comes as no surprise to find that “new” does not mean new at all. In Section 8(1) “an invention is new if it is not anticipated by prior art; “prior art” is explained thus in Section 8(2).
“8. (2) For the purpose of this Act, everything made available to the public by means of written disclosure (including drawings and other illustrations) or by oral disclosure, use, exhibition or other non-written means shall be considered prior art provided that such making available occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof.”
Part VI deals with international applications and in Section 32 states:
“32 (1) The Office shall act as a receiving office where an international application is filed with it and the applicant is a national or resident of Kenya.
(2) The office shall act as a designated office in the case of any international application in which the country is designated.
(3) 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 Cat unless the Director communicates to ARIPO, in respect of the application thereof, a decision in accordance with the provisions of the protocol that if a patent is granted by ARIPO that patent shall have no effect in Kenya.”
Section 32(3) is relevant to a decision in this case.
The rights of an owner of a patent are set out in section 36 which states:
“36. The owner of the patent shall have the right to preclude any person from exploiting the protected invention by any of the following acts-
a) when the patent has been granted in respect of a product -
(i) making, importing, offering for sale, selling and using the product; or
(ii) stocking such product for the purposes of offering it for sale, selling or using the product;
(b) when the patent has been granted in respect of a process -
(i) using the process; or
(ii) doing any of the acts referred to in paragraph (a), in respect of a product
obtained directly by means of the process.”
Under Section 39(1) the life of a patent is seven years from the date for the application extendable upon application for two periods of five years making 7+5+5=17 years.
The Act goes [on] to provide for “utility models” and for “industrial designs”- the latter defined in Section 72(1).
“72 (1) For the purposes of this Act, “an Industrial design” means any composition of lines or colours or any three dimensional form whether or nor associated with lines or colours, provided that such composition or form fives a special appearance to a product of industry or handicraft and can serve as pattern for a product of industry or handicraft.”
I have been unable to find what protection the registration of a utility model confers on the holder: the registered owner of an industrial design does get protection under Section 73(1) for 5 years plus 2 plus 2-total nine years.
Of course throughout the legislation there are decisions to be taken by the Kenya Industrial Property Office established under Section 3(1) but some of its decisions are appealable to the Tribunal.
No Tribunal has yet been appointed so the proper functioning of KIPO to that extent is stillborn 10 years after the Act became law.
So that is some, but by no means all of the legislative background. Suffice it to say it was a brave attempt but it needs fresh scrutiny to make sense of some of it.
What are the facts. I start with what is before me which is an application by the plaintiff for an injunction under order 39 Rules 1 & 2 to restrain the defendants their servants or agents from:
-Trading in production of
-Selling
-Pass(ing) off
Dealing in any way

With a foot-operated sanitary bin. In a word the plaintiff claims infringement of a patent and passing off.
Passing-off was not addressed in argument and was not pressed.
It is worth while referring back at this point to the protection granted a patent by Section 36.
What is given is the right to prevent any other person from
-making
-importing
-offering for sale
-selling
-using
-stocking

I will return to this later. What patents does the plaintiff claim: He claims:
1. ARIPO patent registration certificate AP 773 dated 15th October 1999 having effect in 5 African countries including Kenya. Application No. 19980904 for Foot Operated Sanitary/Litter Bin but no priority date filled in.
Furthermore while then certificate does refer to Rule 20(3) of the ARIPO Regulations it is unclear for me who promulgated those and I have not seen all of them: what I have stops at Rule 18.
In terms of Section 32(3) the ARIPO patent has effect as if it were a patent registered in Kenya unless KIPO otherwise directs under Section 32(3). The abstract attached to the certificate reads as follows:
“A foot operated litter/sanitary disposal bin comprising a container (1) closeable by a cover (2), with a disposal lid (3) at the top, with the disposal lid being displaceable, by a foot operated pedal (4) and a lift level (5), to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container (1), waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
The claims and drawings are exhibited as are some photographs. I numbered the reverse of the photos 1-18: Nos 1-5 are of the bins in question. Nos 6, 7 & 8 are the bins in question hired out by the 1st defendant and Nos. 9-18 are other foot operated bins.
In addition the Plaintiff made an application to KIPO on 14th September,1997 and has an application number KE/AP/P797/00218. He exhibited a letter dated 7th November 1997 which includes the odd paragraph.
“Meanwhile you can go ahead and work the invention as it is assumed the invention is patentable until this office informs you otherwise after substantive examination”.
I have referred to Section 25 which sets out what the Director of KIPO does on receipt of an application. There is no basis in that section for the “assumption” that the invention is patentable as stated in the letter of 7th November 1997.
It is all very well having ARIPO as some sort of supra national authority but unless the domestic laws of participating countries mirror the international ones-which were not put before me- you have all the ingredients for catastrophic legal muddles. For example it is very unclear what would happen in this case if KIPO rejected a prospective patent which ARIPO had already registered: presumably KIPO would notify ARIPO under Section 32(3) that the ARIPO patent had no validity in Kenya.
Assuming as I do, that the ARIPO rules of patentability are the same as or very similar to those of Kenya, I return to the abstract to see what it tells me particularly about novelty.
“A foot operated litter/sanitary disposal bin comprising a container (1)[”:] nothing novel there;
“closeable by a cover (2)”: nothing novel there either: a disposal lid(3)”-still nothing novel:
“at the top, with the disposal lid being displaceable by a foot operated pedal (4)”: still nothing novel:
“and a lift lever (5)…” nothing novel,
“to move between open and closed positions. The bin is defined such that the user cannot see the contents of the container, waste scavengers cannot have access to the contents, emission of unpleasant odour is reduced and the contents cannot spill out if the bin is overturned.”
I only have to look at this matter prima facie. Are all these attributes prima facie novel. Prima facie they seem to be to me on evidence many many years old: certainly they do not seem to me to be prima facie novel-which is all I have to consider.
There is one other point to consider. The 1st Defendant hires out bins to others who use them. It does not prima facie seem to me that it comes within the protection afforded by Section 36. That section may be inadequate but so is much of the Act.
The 2nd Defendant designed his own bin; applied on 18th August 1999 for it to be registered as an industrial design.
Registration was effected under Certificate No. 136 on 18th November 1999. The Act confers protection on a regisreed industrial design, but fails to specify what happens if the same object is the subject of a patent and an industrial design at the same time by different people. Priority appears to be accorded by date of application-in respect of Kenya applications: the ARIPO situation was not addressed.

I doubt that the plaintiff has a prima facie case and I doubt that it has probability of success. Further I consider that damages would be an adequate remedy. If it came to balance of convenience, I would consider that balance favoured the status quo. In the meantime perhaps the Government of Kenya can set up ‘the Tribunal”. ARIPO can reconsider sensibly what is “new” and the Plaintiff can re-assess whether the lid-the only part of the invention that just might be new would qualify as an “industrial design” or a “utility model”.

This application is dismissed with costs.
Dated at Nairobi this 16th day of March, 2001.

P.J.S. HEWETT
JUDGE

References:

Kenya Industrial Property Act (CAP 509)
Central Kenya Limited vs. Tryst Bank Limited CA 215/1996.
Mohammed and Another vs. Haidara 1972 EA 166.
Brooke Bond vs. Chai Ltd 1971 EA 10
Giella vs. Cassman Brown 1973 EA 358.
Terrell: Law of Patents 14th Edition.
Beecham Group vs. International Products 1968 EA 398.

Sanitam at it again on patent infringement

As reported here by the Nation, Sanitam Services has taken another company to court for infringing its patent AP 773 relating to a sanitary bin. According to the report Sanitam wants Hygiene Bins stopped from supplying bins infringing the patent.

In disputing the infringement claim, Hygiene Bins argued that its bins are imported from Malaysia and that Sanitam is harassing companies dealing in sanitary bins.

It appears that Sanitam is using both civil and criminal provisions provided for in the Industrial Property Act to fight off others who it perceives to be infringing its patent. Section 109 of the Act stipulates that any intentional infringement of a patent constitutes an offence punishable with a fine of between Ksh. 10,000 and Ksh 50,000 or imprisonment for 3 to 5 years.

A week a go a number of executives whose companies were dealing with sanitary bins were taken to court on criminal charges for infringing the same patent.

In February this year as reported here Sanitam obtained an interlocutory injunction against Nairobi Bins for the same patent and in 2006 it obtained permanent injunction against Rentokil in the Court of Appeal.

The latest onslaught comes after the decision by ARIPO removing the patent from the register for non payment of renewal fees was rescinded by the Board of Appeal.

KOPIKEN puts photocopying Bureaus on notice

In a notice by the “Chairman”, KOPIKEN, which is variously described as “the Reproduction Rights Organization of Kenya and the body mandated by the Kenya Copyright Board to collect royalties on behalf of relevant right holders within Kenya”, has put on notice commercial photocopying bureaus requiring such bureaus to obtain licences for “reproduction of copyright protected material”.

KOPIKEN is also targeting bureaus and shops offering associated services such as scanning, digitizing and “other forms of reproduction.”

The notice sternly warns, “any unauthorized copying will attract civil penalties and criminal sanctions” under section 38 of the Copyright Act.

Comments

The notice is too brief and couched in not a user-friendly language. As way of educating and informing not only the photocopying bureaus but also the common wananchi offering commercial photocopying services, KOPIKEN should have at least expounded the requirements of the law in a user-friendly language.

First, it is not clear how the phrase “within Kenya” ought to be interpreted. It is debatable whether it means that KOPIKEN “collects royalties within Kenya” or that KOPIKEN collects royalties on behalf of “rights holders within Kenya.” By all means the former is true and the question is whether that mandate is restricted to representing right holders who are in Kenya as the later meaning seems to suggest.

Secondly, the notice is not very clear whom exactly KOPIKEN is targeting to licence. In one paragraph, the notice says it is an offence under section 38 of the Copyright Act to carry out photocopying business without a KOPIKEN licence. Yet in another paragraph, the notice seems to specifically target “reproducers of copyright protected materials.” The question is whether anybody offering commercial photocopying services is required to be KOPIKEN licensed or whether the licence only applies to reproducers of copyright protected materials. Ideally, it is possible to operate a photocopying business without reproducing copyright protected materials.

Lastly, though the notice does not say so, presumably, the licence comes at a fee, and KOPIKEN perhaps ought to first visit the Universities, which as reported here were recently classified as the worst offenders in photocopying books.

Is Kenya becoming a “Barbary Coast” for book pirates?

While the world marks intellectual property day tomorrow, 26th April, authors and book publishers in Kenya may not be in the mood to celebrate. High on the heels of a report (reported here and here) that 80% of local and international brands are counterfeited in Kenya and that 97% of local music is pirated; a report in the Daily Nation (print edition) indicates that authors and publishers in Kenya have “little to write home about” due to rampant piracy of books.

It is reported that many authors have been forced to engage in extra jobs to make ends meet. According to the Kenya Publishers Association estimates, the industry loses about Ksh. 6 billion annually through piracy and copyright infringement, with universities being the worst offenders in photocopying books.

However it does seem that a ray of hope is on the horizon. While the German and French forces are watching the neighbouring Somali coast for the sea pirates, the Kenya Copyright Board has teamed up with the police force to crackdown on copyright offenders and the effort seems to be bearing fruit.

The team conducted a raid last month and arrested people found printing books illegally. Tellingly the books were The River Between by the renowned Kenyan author Prof Ngugi wa Thiongo and An Enemy Of The People by Henrik Ibsen, both being set books in the secondary school curriculum.

Comment

While the copyright Act is relatively modern having been enacted in 2001, enforcement has been a major problem and only time will tell whether the combined force of the Copyright Board and the police will this time round manage to put up a permanent river between the two arch enemies.

More on Coast of Barbary here

Water hyacinth conference, patent and one stone to kill two birds

A Daily Nation report has it that the first international water hyacinth commercialisation conference will be held in Nairobi in August, organised by Hyaquip Inc of Canada and its Kenyan affiliate bearing the same name.

The report further indicates that the company has engineered equipment for processing the water hyacinth for use as fertilizer. Simon Mwaura who heads the Kenyan Office is reported to have patented a hyacinth extraction process in Canada, US and Kenya.

A search through the WIPO PCT database reveals that Mwaura is indeed the applicant and inventor of international patent number PCT/IB2004/000352 which designates a host of countries including US and Canada. The application was filed in 2004 and is titled “method of converting aquatic plants especially hyacinth into useful products”.

A search through the USPTO database could not establish the status of the application, while the Canadian database reveals that the international application entered the national phase in Canada on 21st July 2006 as application number CA 2554227.

It will be recalled that despite numerous attempts to eradicate water hyacinth by means of mechanical harvesters, it is still a big threat to Lake Victoria – the second largest fresh water lake in the world, shared by Kenya, Tanzania and Uganda.

According to Mwaura, there are firms willing to invest a tidy sum of money in a project to export the fertilizer to the Middle East. If this venture of making fertilizer out of the weed is successful, perhaps we may have at hand the proverbial stone to kill two birds at once – removal of the notorious weed from the fish ways of Lake Victoria as well as an answer to the scarcity and high cost of fertilizer currently affecting farming activity in the country.

More on KIKOY

David Mugonyi, writing from London for the Sunday Nation (print edition), reports that the Kenya government is to apply for registration of the word KIKOY as a trademark. This comes after attempts by a UK company to register the word failed.

Curiously the report indicates that the registration will be done through WTO. How this will be done is rather difficult to understand. For one, WTO does not register Trade marks, and more importantly KIKOY is a descriptive word, and probably the reason why the UK Company failed to defend its case for registration in UK. Against this background, it is difficult to understand how the government which in the first place opposed the registration of the mark on the basis that the word KIKOY connotes nothing else but the name of a Kenyan traditional fabric will be able to argue that it can now serve as a trademark.

Counterfeit Horror

The blog Class 46 reports of a counterfeit case in Italy in which the accused persons were sentenced to varying terms in prison for counterfeiting Johnson $ Johnson Baby shampoo.

The horrifying part is that the counterfeit shampoo was found to cause allergy, irritation and even worse that it could seriously affect the cornea. It is rather distressing to note that the counterfeits were baby products, with such dire consequences and the people engaging in the practice were unremorseful even when caught in the act.

The fact that the accused person were recorded laughing that the fake product was so poor in quality that it stunk like pigsty, serves to remind all of us of the danger posed by very cheap products being sold every day on our streets. It reminds me of those glaze eyed fellows who accost you in the streets of Nairobi with what they call “promotional sale” in which they offer to give you two or three products free if you buy one. And what of medicine imported into Kenya from all over the world in the name of parallel importation? As the adage goes, cheap may not after all be that cheap.

For anti counterfeiting raid in Tanzania see previous post here

Kikoy battle continues

The Daily Nation reports that the attempt by a British Company to register the word KIKOY as trade mark in UK has failed.

This seems to mark the end of the affair which began in 2006 when Kikoy Company UK Limited applied to register the trade work. See an earlier post here.

From the Nation report it does appear that Kikoy Company failed to file a counter statement by the deadline of 7th March 2008, meaning the application for registration was deemed to have been withdrawn.

What is the implication of this outcome?

In my opinion it makes no difference whether KIKOY was registered as a trade mark or not and indeed there are other KIKOYs registered in UK (as pictured above). These registrations have not prevented other people from selling their kikoys in UK as the writer suggests.

To me the writer seems to have got it wrong on a number of issues. First he writes that the Government has not taken steps to protect the fabric. Is there justification for protection? The very essence of objecting to registration in UK is that KIKOY is a description word that should not be monopolized by any particular person, not even in Kenya.

Secondly, he reports that had the Kikoy Company managed to register the trade mark, it would have obtained a virtual monopoly over the use of the word and they would have stopped any other person from selling Kikoys in the UK and elsewhere.

I beg to differ with this observation, for the fact that you cannot have any trade mark rights over a descriptive word. In the first place, it would have been impossible for the Kikoy Company to enforce the trade mark. I believe there are many cases in UK that have resolved that for one to infringe a trade mark, the infringing mark must be used as trademark.

The question is whether any other person selling kikoys in UK would be using the word KIKOY as a trade mark. Kikoy is basically the name of the product and any other person selling the products in UK or Europe could actually argue that their use of the word KIKOY was not in trade mark sense, rather they were trading in goods called KIKOY. For example, assuming some one managed to register the word BREAD as a trade mark in Kenya with respect to bread, the registration would not stop other people from selling their bread in Kenya. To me the registration would be meaningless and the owner would be actually paying rent to the Trade Office registry for worthless protection.

About kikoy here and here.

Landrover Brand shifts gear on the way to Indian

Bloomberg.com reports that Ford Motor Company, the world's third largest car maker, will sell Jaguar and Land Rover to India’s Tata Motors Ltd.

Landrover is famous in Kenya and has for many years been the vehicle of choice for the Police Force. With the shift to India, what will be the implications here? Will our force still show their loyalty to this famous Brand despite the gear shift? It will be a tough choice given that the Mahindra aftertaste still persists in the country.

War on counterfeits

The Eastafrican reports that the Anti-Counterfeit Department in Tanzania has destroyed counterfeit goods worth over $224,000.

The report indicates that the products destroyed included Philips bulbs, Kiwi shoe polish and Sony Wega Television sets imported from China.

Haco Industries, a Kenyan company that manufactures the famous BIC brand pens is reported to be losing about $5 million annually due to counterfeiting activities in Tanzania and Uganda.

Another product targeted by the counterfeiters is Sara Lee’s Kiwi shoe polish, the counterfeits bearing fancy names such as Kivi and Kimi.

In Kenya, efforts to enact an Act of parliament against counterfeiting have not been successful so far. In 2005 a draft Bill was circulated for discussion by the Ministry of Trade, but it has not materialized into an Act of Parliament. Hopefully it will in the course of this year.

Rwanda MPs to undertake training on IP

The New times of Rwanda reports that Rwanda MPs will undertake two day training on IP. The report says that the training, facilited by WIPO, will enable the legislators to enact a new law since Rwanda does not have an IP law.

The fact that the report says that Rwanda does not have any IP law is rather odd given that in July last year Rwanda issued a compulsory licence to enable it import ARV drugs from Canada. Indeed the notification sent to WTO in parts reads that “… [Rwanda] will not enforce rights…that may have been granted within Rwanda’s territory with respect to the product.”

WIPO DG and Mexican Tequila tasting event

An item in KEI Blog reports that on 6th March 2008 WIPO member states attending a meeting in Geneva were invited by the president of the Mexican Tequila Council for a tequila tasting event in a Hotel in Geneva, on the occasion of a Mexican candidature for the position of Director General WIPO.

Kenya has also nonimated a candidate for the same position, view previous post here.

Kenya in below average performance in Global IP protection Index.

In a report titled International Property Rights Index 2008, by Property Rights Alliance, Kenya is ranked at position 82 on the strength of protecting Intellectual Property Rights.

According to the report, data for the survey was sources from diverse sources, including data supplied by 41 organizations some of who are IP owners. This indeed raises certain questions on the credibility of the data and also about its up-to-dateness. For example the data used to analyze Trade Mark protection was compiled 10 years ago and copyright piracy level is sourced from the USTR 301 watch list!

While Finland is ahead of the pack, surprisingly US occupy position 10 in the index. Interestingly, our neighbours Tanzania and Uganda are not doing so badly compared to Kenya. They are ahead at position 68 and 75 respectively. Not bad, Right?

Is Kenya Bus over speeding to enforce its colourful trade marks?

The Daily Nation reports that Kenya Bus Service (KBS) has put on notice other bus companies who it perceives are riding on its brand colours. The bus company Managing Director is quoted as saying that “we … intend to place an injunction if they do not stop using our brand colours.” It appears copycats are adorning their buses with colours similar to those of KBS and this is creating confusion among the passengers who use the colours to board the buses.
The report says that the bus company has registered a number of Trade marks under the Trade Marks Act, notably trade mark 59453(the words Kenya bus service), 59664 (device of a bus in colour) and 59665(device of a bus in greyscale).


I pick no quarrel (For now) with the word mark, but a whole bus as a trade mark! Really, which is the trade mark here or the essential element for that matter? I wonder how the company would convince a court that its trade mark, a bus, is adapted to distinguish its transport services from those of others. To be fair, the trade mark carries a disclaimer to the effect that the mark is restricted to the colours sky blue, blue and navy blue.



Well, KBS is not alone in wanting to claim trade mark rights in some colours; In BAT v Cut Tobacco [2007] eKLR, in a claim of passing off and trade mark infringement, BAT (proprietor of the trade mark SPORTSMAN) objected to the use of the colour red in the defendant’s cigarettes, HORSEMAN. The court of appeal did not agree and in effect ruled that use of the colour red as the predominant colour in a packet of cigarettes is not the exclusive preserve of anybody and that there can be no propriety rights in a particular colour.

Perhaps in trying to identify the essential elements of the composite marks, the Court dissected the two marks into their constituent’s parts and dealt with the issue of colour separately from the similarity of the two words making up the respective get ups of the marks.



Applying the same principle here, would it be the case that the court may decide to break down the bus into its constituent parts and find for example that the tyres of the offending bus are similar to the registered trade mark and therefore there is infringement? And could the offender argue in defence that the number plates are neither identical nor deceptively similar!

GI branding for Indian tea: A lesson for Kenya?

News Spot of India reports that India will embark on a campaign to promote its tea globally based on the product's place of cultivation such as Darjeeling, Assam and Nilgiri. The chairman of the Indian Tea Board believes that indicating the source and quality on the tea packet is critical for their tea industry.

In the 1983 India created a logo for the Darjeeling tea, which was then protected in many countries either as an ordinary Trade mark, a Certification trade mark or a collective trade mark. For example the logo is protected in a number of countries as a Certification trade mark through the Madrid system.

Is there a lesson here for the Tea Board of Kenya , KTDA and their counterpart the Coffee Board given the reputation Kenyan tea and coffee enjoy? Whereas China and India are major producers of tea in terms of quantity, Kenyan tea is known for its quality and is primarily used for blending tea from other countries.

By registering the word Darjeeling as a Trade mark or Geographical Indication in many countries, the Indian Tea Board is able to control sale of tea labeled with the Darjeeling mark. Dealers in Darjeeling tea are required to enter a licensing agreement with the Tea Board of India and pay an annual license fee. For the dealers to label their tea “Darjeeling” the agreement prohibits blending whatsoever with any other teas, the tea has to be 100% authentic Darjeeling tea. The agreement however does not prohibit blending so long as the word Darjeeling is not used. More information is available here.

Moral rights not breached in a broken bridge

The current issue of WIPO Magazine reports of a recent copyright case in Spain in which an Architect whose design of a bridge was altered by another architect took legal action against the Bilbao City council claiming infringement of his moral rights to the integrity of his work.

The report indicates that despite the court finding that indeed the bridge had been altered, the public service provided by the bridge in enabling the citizens of Bilbao to cross the river, prevented the architect from exercising his moral rights.

Should Kenya petition UNESCO for KIONDO and KIKOY to be included in the world heritage list?

The Sydney Morning Herald and the Timesonline report that the French President, Sarkozy has called on UNESCO to include French cuisine on the world heritage list.

“We have the best gastronomy in the world”, declared the President at the opening of an agriculture show in Paris, and he wants France to be the first country to apply to UNESCO for its "gastronomic tradition" to be recognized as a world heritage. Already there is a national campaign lead by leading chefs who fear that French cuisine is threatened by global food industry.

Our own Lake Turkana National Parks, Mount Kenya National Parkt and Lamu Old Town are some of the sites appearing on the UNESCO heritage list.

This brings us to the two issues of the Kiondo and the Kikoy which have generated heated debate both locally and internationally over what we regard as “theft” of our cultural heritage by developed countries.

Shouldn’t Kenya also start a campaign to have the kiondo and kikoy listed as cultural heritage?

It will be recalled that Kikoy was in the news last year when a company in UK applied to register the word KIKOY as a trade mark - UK trade mark application number 2431257. However an opposition was filed to stop the intended registration and the matter is yet to be determined by the UK Patent Office.

The claim that Kiondo is patented by some unnamed Japanese is an emotive issue in Kenya. However no proof has been put forth to back the claim of any one having patented the kiondo in any country.

Unlike the KIKOY issue in which it is possible to identify the trade mark application number and the applicant, we have never heard of any Japanese individual or company claiming ownership of a Kiondo patent and the patent number has never been cited in any of the debates.

As a way of protecting these two Kenyan icons, should we also campaign for their inclusion in the world heritage list as cultural items?

IP Officer at UoN

Today is the deadline for submission of applications for the position of Intellectual Property Officer at the University of Nairobi. The University advertised for the position on 1st of February in the standard Newspaper.

Applicants are required to have either
(1) Degree in science with Msc in IP,
(2) Degree in Law and Masters in Law (intellectual Property Option) or
(3) Msc. Degree with relevant experience.

Kenya nominates candidate for DG,WIPO

Kenya has nominated Prof. James Otieno Odek for the position of Director General , WIPO. Currently Prof. Odek is the Managing Director, Kenya Industrial Property Institute. He is also the current Chairman of the Paris Union.

Information posted on the WIPO website indicate that 14 other candidates have been nominated by their respective governments. Prof. Odek apears to be the only candidate from Africa.