Africa IP highlights 2020 #4: Enforcement and related matters

This post is the fourth and final installment in the “Africa IP Highlights 2020 series” of posts highlighting some of the key developments in IP in Africa in 2020. The first 3 posts covered copyright, trademarks and patents and designs.

As previously stated, the series is the result of collaboration between myself and several IP practitioners and researchers across Africa (in alphabetical order): Caroline Wanjiru (Centre for IP and IT Law, Strathmore University, Kenya); Chinasa Uwanna and Ekene Chuks-Okeke (Banwo & Ighodalo, Nigeria); Marius Schneider and Nora Ho Tu Nam (IPvocate Africa, Mauritius); Vanessa Ferguson (Ferguson Attorneys, South Africa).

This post highlights developments in the IP enforcement field.

South Africa amended its High Court Rules in March and introduced Rule 41A which made it mandatory for parties to consider mediation at the outset of any contemplated litigation. A plaintiff or applicant is required to file a prescribed Rule 41A Notice agreeing or opposing mediation before summons or motions may be issued. The defendant or respondent is required to file a similar Notice before a plea or opposing papers may be issued. These notices must state the reasons for each party’s belief that the dispute is or is not capable of being mediated. This notice is delivered on a without prejudice basis and therefore does not form part of the record of the trial or hearing. With this, parties in an IP dispute must also submit to mediation or provide reasons why they think their dispute cannot be mediated.

Although one might not expect disputes between wineries in Mauritius, May saw an interesting judgement from the Supreme Court of Mauritius on wine production and commercialisation. The dispute in Eureka E.C Oxenham & Cy Ltd V Oxenham A E & Anor (2020 SCJ 92) centred on whether the respondent could use his name and signature “Alexander Oxenham” and “A. Oxenham” on bottles of wine produced by his winery “Takamaka Boutique Winery” when the surname “OXENHAM” had already been registered as a trade mark by the applicant company whose founder’s and director’s surname is Oxenham. Relying on French case law, the court held that there is no infringement of trade mark rights when a first name is added to a surname already registered as a trade mark, provided that there is no state of confusion in the minds of the public be it visually, phonetically or orally. After comparing the trademarks of the applicant and respondent, the court was satisfied that there was no likelihood of confusion and that the respondent had taken the necessary precaution to distinguish his signature from the applicant’s mark by adding his first name or the initial of his first name. The surname was written not as a trademark but as the surname of the winemaker.

May also saw the continuation of a budding practice by Mauritian courts to refuse to grant damages to rights owners on account of the prejudice suffered when the importation of counterfeit goods is stopped at the border by customs. In The Hugo Boss Trade Mark Management Gmbh & Co Kg V Eadally M.T. (2020 SCJ 84), the court declined to order damages as the counterfeit products seized by customs upon importation had not been put on the market and therefore the rights owner’s reputation, goodwill, registered trade mark, and sales market in Mauritius cannot be said to have adversely been affected by the importation. South Africa’s Companies and Intellectual Property Commission (CIPC) began to operate on full automated services, including online filings in May after shutting its doors in March when the President announced a national lockdown where everyone had to stay home for a period of 21 days but for essential services.

In July, Ghana’s Minister of Tourism, Arts and Culture announced plans to establish a specialised Creative Arts Court to deal with copyright and other related matters. It is hoped that this will address common complaints about IP enforcement in terms of protracted litigation, and an absence of judges with IP expertise. In Kenya, the Anti-counterfeit (Recordation) Regulations 2019 were to be published in 2020 to operationalise sections of the Anti-counterfeit Act that provide for recordation, but this is yet to happen. The Anti-Counterfeiting Authority (ACA) is in charge of combating counterfeiting in Kenya. Already a highly effective and active agency, the powers of the ACA were increased through amendments which came into effect in January 2019. One major innovation is the mandatory annual recordal with the ACA of all trademarks, copyrights and trade names for goods imported into Kenya. This process is independent of trademark registration which must first be effected at the Trade Marks Registry.

In November, ARIPO announced the appointment of a new Director General (DG). Mr Bemanya Twebaze, currently the Chief Executive Officer of the Uganda Registration Services Bureau, will take office on 1 January 2021, and he will serve a four-year term until 31 December 2024. Mr Twebaze will replace Dr Fernando dos Santos, whose eight-year term ends on 31 December 2020. Also in November, the Supreme Court of Appeal of South Africa handed down judgment in Beyond Platinum (Pty) Ltd v Ellies Electronics (Pty) Ltd [2020]. This case concerns the interpretation and application of the provisions of the Counterfeit Goods Act 37 of 1997. The appellant, Beyond Platinum (“BP”) caused to be issued 3 search and seizure warrants authorising the search and seizure of alleged counterfeit goods at the premises of the first respondent, Ellis Electronics (Pty) Ltd (“Ellies”). The first warrant was executed and at the time of the issuance of the second and third warrants, the offending goods were still being held at the counterfeit goods depot as required and there was no indication that the goods were not kept or that they would not be. The court held that there were therefore no reasonable grounds to suspect that an act of counterfeiting was taking place nor was there any evidence of same found at the premises of Ellies. The above also applied in respect of the third warrant. The court also went on to state that the second and third warrants ought not to have been sought or granted and that the warrants were all correctly set aside, and this appeal failed. This case confirms the position in law that there should be no ulterior motives for applications for warrants and that one cannot unjustifiably limit rights to privacy, property ownership and fair trial of a suspected trader. It reiterated the position that provisions of the Act should be resorted to only when it is justifiable to do so.

December came with the official launch of the inaugural issue of the African Journal of International Economic Law (AfJIEL). The goal of AfJIEL is to fill a gap in journals covering international economic law (including IP) relating to Africa and the Global South. The journal is open access and the first/inaugural issue is available here. Titilayo Adebola’s article in page 253, Mapping Africa’s Complex Regimes: Towards an African Centred AfCFTA Intellectual Property, (IP), Protocol comprehensively maps and analyses the fragmented intellectual property (IP) architecture in Africa in light of the pending AfCFTA IP Protocol.

… And with this, comes the end of Africa IP Highlights 2020. Here’s wishing everyone well over the festive season. Please keep safe and see you in 2021.