Wednesday 31 March 2010
Tuesday 30 March 2010
Chameleon controversy
- The judge erred in suggesting that evidence is required to show actual confusion (see para 21) - a likelihood of confusion is sufficient.
- Did the judge also err that expert evidence is required to show a linguistic link between "lovane" and "ulovane" (also para 21) which seems at odds with para 6 which states that it is "common cause" the word "lovane" was derived from the xhosa word "ulovane" (perhaps he meant that the derivation was common cause but the impact on a consumer would not be - see also para 22)?
- Does the judge endorse the notion that because Xhosa-speaking people make up a minority of population (17.5%) it is more difficult to show a likelihood of confusion (see para 22)? If he did he must surely be incorrect.
- Counsel did not argue the "bait and switch" concept which is mooted (see Momberg & Els here) to be part of our law and goes something like this: Once Lovane baited the public with an image of a chameleon on its signage (which would further the conceptual similarity with the name "Lovane" and also the derivation of "Lovane" from "Ulovane") the mere removal of the chameleon image does not avoid further misrepresentation/passing off occurring. In fact, as the argument goes, Lovane would in those circumstances be required to go further than would ordinarily be the case to ensure that no confusion would occur ie it would be argued that they would be required to change their name too.
- The whole case would have been decided differently had Jordan filed for the protection of its name in Xhosa
- Does the protection afforded by word marks extend to all identical conceptual devices? Afro Leo expects not. Take for example a registration for CAT for shoes - it is unlikely stop a puma (PUMA) or panther (Slazenger) device being registered or used for say, shoes and vice versa.
Monday 29 March 2010
The Baby Experts: Round 3
Johnson & Johnson noted an appeal to the Advertising Industry Tribunal, where the majority ruled that the statement is indeed one of fact and does require substantiation – which had not been provided. It held that the claim was misleading and that Tiger Brands was unfairly trading on the goodwill established by the Purity brand which is a leader in baby food products. The appeal was upheld.
In an appeal against the majority ruling of the Advertising Industry Tribunal, Tiger Brands approached the Final Appeal Committee. The Committee considered the critical issues of whether the advertisement, read as a whole, would be interpreted to mean the Purity is an expert in baby care products and whether the statement was one of fact or an expression of opinion.
Tiger Brands pointed out that Purity has expertise in the area of baby nutrition and Elizabeth Anne’s has expertise in baby care products, accordingly the combination of the expertise of the brands (both in its stable) allows them to claim that they are experts in both fields. The Committee was not impressed with this argument, pointing out that had the wording been “Elizabeth Anne’s and Purity”, rather than “Elizabeth Anne’s by Purity”, it may have some justification in the claim. As it stands, Purity is being promoted as the expert and not Elizabeth Anne’s. It was argued by Johnson & Johnson that the goodwill of Elizabeth Anne’s would entice consumers to purchase the products. The Committee found that Purity is claiming a wider sphere of expertise than it has and that the claim is misleading to the hypothetical reasonable reader. The Committee agreed with the decision of the Advertising Industry Tribunal and dismissed the appeal.
Friday 26 March 2010
No Fake Smokescreen
Swaziland: Un-deterring Fines, Successful Raid
Swazi Observer has a follow-up regarding the frustration with low fines for copyright infringement in Swaziland. (Discussed on Afro-IP here.) Taking an active role in the fight against infringement, artists from the Association of Christian Artists in Swaziland (ACASWA) joined forces with the local police in Manzini, an industrial centre in central Swaziland. Together, the police and artists raided the streets of Manzini for unauthorized copies of the artists’ works.
The raid seems to have been successful; the police and artists confiscated a large number of infringing goods valuing E100,000 (ZAR 100,000). The police also made a significant number of arrests, but all those arrested were able to pay the low fines and were released from custody.
These low fines - four emalangeni per copy - are the source of growing frustration over Swaziland’s Copyright Act of 1912. The Observer comments:
“Gospel artists are utterly outraged by the existence of the Copyright Act of 1912 which stipulates that after conviction, music pirates will be liable to a fine of E4 when found in possession of counterfeit goods.”
Afro-Leo would like to observe that the artists are probably not “outraged by the existence of the Copyright Act of 1912,” but rather outraged that the an act from 1912 is still the current act. If the 1912 Act did not exist, the country would have no copyright law. While the absence of copyright would also mean the absence of infringement, it would not place the artists in any better of a position.
Once again, the artists spoke out to urge the Swaziland parliament to enact a new copyright act. A draft copyright act was in circulation in 2006. (Mentioned in endnote 5 of this pdf document discussing Botswana’s 2005 copyright draft.) Afro-Leo has not yet been able to find more information about this draft, its contents, or what happened to it. Perhaps some Swazi readers can help with more information.
Wednesday 24 March 2010
The much awaited ECJ Adwords decision
"Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.
Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned."
Tuesday 23 March 2010
Another plant based patent germinates
The patent mentions up to 14 different plants, including Dovyalis abyssinica and Clutia robusta. The claims however are directed to the process for preparing the herbal composition and not to the plants themselves.
Monday 22 March 2010
Cipro and Kulula interviews
IP made news on Radio 702 (probably South Africa’s best known talk radio station) during last Friday’s 6pm roundup which included interviews with Minister Rob Davies over CIPRO’s woes and Gidon Novic on Fifa’s strongarm tactics against his company, Kulula. You can listen to it here.
Be prepared though for rhetoric from the minister and some frustration if you have been reading this blog for the past year. Most disappointing though is Mr Davies' underestimation of what CIPRO potentially means to business and government, even if we are to forgive his IP faux pas about CIPRO being about copyright registration and IP treaties.
Making Waves
Clause 8 of Section II of the Code of Advertising practice deals with the exploitation of advertising goodwill. It prohibits advertisements which (without permission) take advantage of the goodwill of another party’s advertisement. Consideration is given to, inter alia, the likelihood of confusion, deception and the diminution of goodwill, as well as to whether the advertising concept relied upon is the “signature” of the product or services advertised, is consistently used and prominent in the mind of the consumer. This clause is somewhat in line with the principles of passing off.
Recently, Ocean Basket Holdings (Pty) Ltd lodged a complaint against Jimmy’s Killer Prawns Franchise Group (Pty) Ltd which was using a wave device in its advertising. This use, it submitted, was exploitative of the goodwill of the Complainant’s own wave device, used since 2003.
In response, the Respondent submitted evidence supporting the fact that wave devices are common in the seafood industry, and that they have been for many years prior to 2003. It also provided examples of how the Respondent had, itself, applied its wave device differently in many cases. While it respected the Respondent’s right to the device in its particular colour combination, texture and design, it submitted that its own wave device was sufficiently different to the Respondent’s to avoid confusion in the mind of the consumer.
It appears that the Complainant laid claim to wave devices in general and believed that its use since 2003 created proprietary rights. The ASA Directorate dismissed this argument on the basis that “the use of the device does not create distinctiveness in the device”. It found that a wave device is not unique to or distinctive of the Respondent and dismissed the complaint.
It is important to note that the Directorate did not dismiss the idea that a particular wave device could be distinctive of an advertiser, but rejected this claim on the basis that the complaint was against the mere use of a wave device and not on the similarities between the Complainant’s and the Respondent’s wave devices.
Thursday 18 March 2010
Fines as an Incidental Cost for Infringing
It’s a problem many African countries face, inflation rendering a fine meaningless. When the law listing the fine is very old, the fine goes beyond meaningless to downright ridiculous. This is the complaint of musicians in Swaziland who are upset over the very low fine amounts for copyright infringement in Swaziland. [More information on reactions to the fine and the particularly hard effect of copyright infringement on gospel singers can be found here.]
The current Swaziland Copyright Act dates back to 1912 and lists the fine for making, selling, distributing or displaying infringing works as 4 rand for each infringing copy. (Section 13.) The Act also caps the fine at 100 rand. (E 4 is equal to ZAR 4, or about half a US dollar.)
A new copyright act has been drafted, which would increase the fine amount to E25,000. A coalition of copyright law stakeholders met last week to discuss the new draft. Representatives from the judiciary, music industry, publishing industry and the Council of Arts and Culture discussed their support of the proposed draft and their plans to increase awareness of the need for a new act. (Swazi Observer has more details of the meeting here.)
Kenyan campaigners anxious
Monday 15 March 2010
Double Delight for Lolly
In the first complaint, a group of consumers objected to a billboard featuring a scantily clad woman wearing a red Santa Claus cap with the words “O’ Come all yea faithful” on the basis that it is offensive to Christians as it uses a song celebrating the birth of Jesus (and accordingly has religious connotations) to promote an adult entertainment venue.
The relevant clause of the Code of Advertising Practice, Clause 1 of Section II, requires that advertising may not cause serious, widespread or sectoral offence. That an advert is offensive to some, however, does not in itself qualify the advertisement as offensive in terms of the Code. The Directorate will consider context, medium, likely audience and degree of social concern. The advertisement is to be considered through the eyes of a hypothetical reasonable person who is not over-sensitive or hypercritical.
In its response, Teazers submitted that the song is not of a Christian origin but refers to the birth of Prince James II in the 18th century.
The Directorate found that the advertisement does not comment on any aspect of Christianity or religion and does not attack or belittle it. It found further that just because the advertisement features a traditionally Christian song does not imply that it belittles a basic principle of Christianity. The complaint was dismissed.
In the second complaint, a consumer lodged a complaint against a billboard featuring a woman’s naked torso accompanied by the wording “Abreast of the rest! Still the best”.
The complaint was that the advertisement was indecent and explicit for children, the relevant clauses of Section II of the Code being 1 (offensive advertising) and 14 (which requires that advertising should not contain matter which may harm children mentally, morally, emotionally or physically).
The ASA found that the image on the billboard was “not overtly sexual and would not be understood to be sexual by a child” and accordingly would not be harmful to children. It was found that only an adult familiar with the services offered would read into the advertisement sexual innuendo. It was found not to be in contravention of Clause 14 and could not, therefore be regarded as offensive and the complaint was dismissed.
While it is debatable whether the advertisement in question is harmful to children, I must disagree on the Directorate’s finding that it would not be understood by a child to be sexual. Perhaps for very young children this is true, but I think that older children are certainly savvy enough to have at least a limited understanding of the sexual innuendo.
I wonder if Lolly knows that “abreast” means “equal to”, “alongside of” or “up to date with” and that his advertisement is not quite as laudatory as he probably intended. For an advertiser who relies on witty pay-off lines, it is disappointing that perhaps this one was not properly thought out.
Babes get Bullshy
The reason for their absence is an argument about ownership of the name ‘Bulls Babes’, which landed in the North Gauteng High Court on an urgent basis last week. Both the Blue Bulls Company (BBC) and Jump CC, which manages the cheerleaders, apparently lay claim to the name ‘Bulls Babes’. BBC asked for an urgent interim interdict to prevent Jump from using the name and logo ‘Bulls Babes’. It is not clear from media reports precisely how or why the dispute arose, but, as is usual in such matters, it is described as ‘complex … involving trademark registrations and passing off of a product’. Whether the girls themselves would be happy to think of themselves as a product is not apparent, but Judge Prinsloo was clear on one matter – not urgent enough!
He obviously had not consulted the fans at Saturday’s match on this finding.
Friday 12 March 2010
Africa and the INTA: do you care?
Last year I attended the corresponding session, together with some other members of the Afro-IP blog team. It was really sad to see how few people attended this session, given the huge amount of preparation that the African contingent of speakers in Seattle had expended and the high quality of the presentations. The organisers must have known that hardly anyone was going to turn up, since they accommodated the Africa session in a cosy little room which couldn't have held that many folk anyway.
Keeping Track without Requiring Registration, a New Approach in Nigeria
Criminal copyright enforcement, it can be a bit difficult without records of what is copyrighted and by whom. Yet, under the Berne Convention (art. 5(2)), signatory countries cannot require any formalities as a prerequisite to copyright protection.
Many countries still manage to have some sort of registry systems. The United States, for example, gets around Berne by requiring registration not as a prerequisite to copyright protection, but as a prerequisite for US authors to bring an infringement suit, among other things. Some other countries have pure voluntary registration systems. Nigeria is one of these.
Copyright Notification Scheme
In 2005, the Nigerian Copyright Commission (NCC) introduced the Copyright Notification Scheme. The purpose of the scheme is to create a registry database of all copyrighted works in Nigeria. The NCC’s goal is to eventually have this database accessible world-wide through the NCC website, thus facilitating easy contact for rights and usage requests to the copyright owners. Works submitted under the Copyright Notification Scheme are included in the NCC’s database, currently a ledger book, and the author is sent a Notification Certificate. Submitting a work currently costs N6,000, about ZAR300 or US$40.
Uptake has been alright, but not as high as the NCC would like. (The most recent data from the STRAP II report, shows 389 total registrations as of May 2007.) In order to increase the number of submissions to the Copyright Notification Scheme, and thus increase the number of works in the country’s database, the NCC has taken initiative with a new approach. The NCC has started reaching out directly to places producing high amounts of creative works, such as universities.
You’re Invited
Last month, the University of Ilorin in Kwara state published an announcement in the Unilorin Bulletin highlighting the NCC’s invitation for authors to submit works for the Notification Scheme. The announcement directs authors to the local NCC office, saving them the trouble of traveling to, or submitting their work via mail to, the head office in Abuja.
The approach seems to make sense; concentrate resources on reaching out specifically to those who have something to submit. The question is whether the authors will see enough benefit in the scheme to pay the fee and fill out the form.
Confusion Consequences?
On an interesting side-note, Afro-Leo is a bit surprised to see the Bulletin say “NCC Invites authors to register.” (bold added) The NCC has been very careful in the past when discussing the Copyright Notification Scheme to go out of the way to explain that it is NOT a registration system. Presumably, this is to avoid any apparent conflict with Berne. Most likely the editors of the Bulletin, and not the NCC, decided to use the term “register.”
This is just one more point of confusion with the Copyright Notification Scheme in Nigeria. Confusion also exists around the scheme’s purpose. Some believe it actually is a registration required for copyright protection. (Newspaper articles and editorials about piracy often will say something to the extent of ‘he doesn’t have a copyright because we checked the NCC registry and there’s no listing of his work.”) The NCC attempts to dispel this myths, but its publications are not as widely read as the daily papers and entertainment gossip
Fridaylite: World's Top 10 Counterfeit Cities
1. Albany
2. Canberra
3. Springfield
4. Brasilia
5. Ankara
6. Bern
7. Pretoria
8. Bamako
9. Carson City
10. Rabat
Read why from the source of this news here.
Thursday 11 March 2010
Much ado
"All the cool things that are happening might sound truly exciting, but the reality is that the regulatory framework in South Africa does not support venture capital (VC) investment - in fact, most who make VC investments into SA businesses would rather set up entrepreneurs offshore in a more friendly environment."
According to Marc Ashton there are three main concerns in terms of our regulatory framework the authorities need to focus on: foreign exchange, skills and intellectual property.
Hoping for some analysis of this contentious topic and with some luck too, the recent Oilwell decision, Afro Leo was disappointed. Instead the author regards RSA IP laws being "in serious need of an overhaul" .. "There has to be protection of these brands and technology, both at home and in the international market place." I would invite Marc to read "Trade Mark Infringement: Is SA world class or bottom of the log?" (Charles Webster - latest Without Prejudice) and previous posts on Afro-IP here and here. There are IP laws that need a major service, like the Copyright Act, but overall I think he will find them pretty brand friendly. Exchange control, on the other hand - how much does it deter overseas IP investment in RSA and is the oil well drying up for SARS? Stay tuned.
Tanzania: US Hails Region's Fight Against Couterfeited Trade
Afro Leo is excited about the progress in the EAC but there will undoubtedly be critics and cynicism around the US funding because, as the argument typically goes, it fosters IPR protection of US proprietary rights and interests. In other words the funding is self preserving. Whilst the US has an interest in ensuring that its IPRs are adequately enforced, Africa's own IP creators share that interest too as illustrated by this comment:
"when he [the US Ambassador] arrived in Tanzania he attended a concert by one of Tanzania music stars and asked her where he could purchase a legitimate recording of her music. She replied that the stores selling her music in Dar es Salaam only offered pirated discs."
On a related but different topic, have you ever wondered which countries would rank in world's top 10 counterfeit capitals? Answers will be published tomorrow. Hint, only two are in Africa.
Wednesday 10 March 2010
Single colour difficulties before the ASA - Pritt
That's the ASA's position and they are sticking to it! Well, we will see - Afro-IP understands that the Pritt decision is on appeal.
Meanwhile some depressing news is that head of CIPRO (Keith Sendwe) is apparently off sick and "very ill". Afro-IP wishes him a speedy recovery. Business Report though is less sympathetic.
Please keep an eye out for commentry on the Oilwell decision, coming soon.
Monday 8 March 2010
Very Vague Vegetarian Versions
A consumer lodged a complaint regarding the wording on a Wimpy menu above a burger which states: “Remove the meat for a vegetarian option”. The complainant submitted that the removal of the meat alone would not create a vegetarian option, as the onions that form part of the recipe are fried on the same grill as the meat and that the meat would contaminate the onions. The relevant clause of the Code of Advertising Practice is Clause 4.2.1, which deals with misleading claims.
It was not disputed by the Respondent that the onions were fried on the same grill as meat and chicken, however it pointed out that the onions were fried after the grill had been scraped to remove residue from the meat. It pointed out, further, that the advertisement refers to an item which is described as “vegetarian friendly” which does not imply that it is exclusively vegetarian. It submitted that it could be expected of a reasonable vegetarian consumer to inspect the place where the product was being prepared in order to ensure that there was no chance of contamination by meat before, during or after cooking.
In a previous ruling where the wording “suitable for vegetarians” was considered, the Directorate had found that there was such diversity in opinions as to what constituted “vegetarian” that it could be expected of a reasonable vegetarian consumer to inspect a product to ensure that it “falls within a particular vegetarian category ascribed to”.
The Directorate accordingly found in this case that because the use of the word “vegetarian” is not regulated or required to be used in any particular way, that the Wimpy menu item is not misleading and the complaint was dismissed.
It is somewhat disappointing that neither the ASA nor the Department of Health has provided guidelines for vegetarian claims, which I believe may be welcomed by vegetarian consumers. Even with diversity among vegetarians as to what qualifies as “vegetarian”, perhaps guidelines following a strict interpretation of the word would assist vegetarian consumers in making food selections.
Friday 5 March 2010
Pomping our moral fibres
Monday 1 March 2010
Slender Hopes
The packaging displays the claim: “Designed to assist with curbing appetite, reducing cravings, improving skin tone”. It also claims: “CAUTION, USE OF THIS PRODUCT CAN LEAD TO MASSIVE WEIGHT LOSS”.
The complaint was that the advertisements were misleading, as was the use of the word “Slender” in the product name. The relevant clauses of Section II the Code of Advertising Practice were found to be 4.1 (which deals with substantiation) and 4.2.1 (which deals with misleading claims).
The Respondent submitted in reply to the complaint that the name “Slender Gel” makes no claim to actually making people thinner. It argued, rather creatively, that the word “slender” is used as an adjective, makes no suggestions or claim to effect weight reduction and, further, that it does not apply exclusively to humans. It pointed out that inanimate objects such as masts, cables, books and spaces could be described as “slender” (although whether it expected the Directorate to believe that the product was intended to be used on these objects is not clear). Because the word is used on a product promising weight reduction, the Directorate found that it could only be interpreted to refer to “becoming slender” and the Respondent’s defence was dismissed.
In a giant leap of logic that appears to ignore the subtlety of figurative language, the Respondent also submitted that the “CAUTION” claim is hyperbole, not intended to be taken literally. This defence also appears to have been rejected.
In making its ruling, the Directorate pointed out that due to potentially dangerous effects of medicinal products, they cannot be treated “as an ordinary general commodity” and their advertisement and promotion are strictly controlled by specific regulations.
The advertising complained of was found “clearly” to attribute its weight reduction and hunger suppressing characteristics to the inclusion of hoodia in the product. This is due to the wording “The World’s #1 Selling Hoodia Gel”and “Hoodia Gordonii” just above the weight loss claims and the statement on the Respondent’s website that the product “contains pure Hoodia Gordonii and…has been designed to assist with controlling appetite, reducing cravings and enhancing skin tone”.
Addressing the question of whether the claim regarding the efficacy of the Respondent’s product could be substantiated in terms of Clause 4.1, the Directorate considered the Respondent’s own advertising, which states that it relies, not on scientific proof, but on survey data based on consumer perception to make its claims. Clause 4.1.3 of Section II requires that survey data submitted as evidence must emanate from or be verified by an entity that is approved or recognized by the Southern African Market Research Association. No such verification was submitted and this evidence could not be accepted.
The product packaging makes no reference to consumer perceptions but merely accredits the weight loss and hunger suppressing characteristics to the product. In order to assess whether these claims are substantiated, the Directorate is required to rely on the opinion of an independent and credible expert in the field. No such verification was submitted and the claims were found to be unsubstantiated and in breach of Clause 4.1. In light of this, the advertising complained of was found to fall foul of Clause 4.2.1 and was considered to be misleading.
The Respondent was ordered to withdraw the claims displayed on its website and packaging and not to use the claims in their current format until new (or any) substantiation has been submitted, evaluated and a new ruling made.
Monday - Counterfeit Focus
Pic Source