intellectual property - bowmans...02 millward brown 2016 brandz top 100 most valuable global brands...

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INTELLECTUAL PROPERTY

DEAR CLIENTS

Welcome to the exciting July edition of your informative IP newsletter. As usual, our IP team has put together all the stories that made headlines in the ever evolving IP world. The newsletter captures all notable highlights for the month of June and summarises some of the interesting judgments and rulings that were handed down, touching on various aspects of the vast IP arena.

The month of July was originally known as the Roman month of Quintilis and was the fifth month of the year until January and February were added in 450 BC. It got its original name from the Latin word for fifth but the name was later changed to Julius in honour of Julius Caesar who was born on July 12.

EVENTS TO LOOK FORWARD TO IN JULY

• 4 July: Independence Day – USA

• 4 July: NASA’s Juno spacecraft begins visit to Jupiter

• 5 – 6 July: Israeli Prime Minister visits Kenya

• 7 July: Eid-al-fitr

• 10 July: Euro 2016 final to be held in Paris

• 10 July: Japan Upper House elections

• 10 – 11 July: Indian Prime Minister visits Kenya

• 11 July: World Population Day

• 17 – 22 July: 14th session of United Nations Conference on Trade and Development in Nairobi, Kenya

BIRTHDAYS

• 1 July: Diana, Princess of Wales

• 6 July: George W. Bush, 43rd U.S. President

• 6 July: Sylvester Stallone, actor/director

• 15 July: Saint Francis Xavier Cabrini, the first American saint

• 18 July: Nelson Mandela, South Africa anti-apartheid activist, President

• 20/21 July: Alexander the Great, King of the Ancient Greek kingdom of Macedonia

• 30 July: Arnold Schwarzenegger, weightlifter, actor and Governor of California

MONTHLY NEWSLETTER

INTELLECTUAL PROPERTY MONTHLY NEWSLETTERJULY 2016

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MILLWARD BROWN 2016 BRANDZ TOP 100 MOST VALUABLE GLOBAL BRANDS

MILLWARD BROWN 2016 BRANDZ TOP 20 RISERS


Rank Brand Category Brand Value ($ Mil.)

1 Google Technology 229 198

2 Apple Technology 228 460

3 Microsoft Technology 121 824

4 AT & T Technology Providers 107 387

5 Facebook Technology 102 551

6 Visa Payment 100 800

7 Amazon Retail 98 988

8 Verizon Telecom Providers 93 220

9 McDonald’s Fast Food 88 654

10 IBM Technology 86 206


7 Amazon Technology 98 988

21 Starbucks Technology 43 565


100 Adobe Technology Providers 10 440

99 JD.com Technology 10 496

65 Paypal Payment 15 910

1 Google Retail 229 198

7 Amazon Telecom Providers 98 988

21 Starbucks million Fast Food 43 565


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MILLWARD BROWN 2016 NEW ENTRANTS



76 Lowe’s Retail 13 001

88 CVS Retail 12 074

93 Moutai Alcohol 11 465

97 Heineken Beer 10 549

98 AIA Insurance 10 545

99 JD.com Retail 10 496

100 Adobe Technology 10 440

See the full list here

DEVELOPMENTS IN THE INTELLECTUAL PROPERTY ARENA

A summary of recent developments within the intellectual property (IP) field follows below:

TRADEMARK

Case Decision Commentary

EUROPEAN

UNION

Puma SE v.

OHIM and

Sinda Poland

Corporation

Sinda Poland sp Corporation (Sinda) submitted an application for registration of a community trade mark for goods in class 25 to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) for the following figurative sign:

Puma SE (Puma), gave notice of opposition against the registration of the mark based on the following earlier marks:

This decision speaks against the registration of marks that copy the overall impression of a mark but modify the details so that each detail of the two signs is slightly different while the overall aspect is still similar. Despite any differences in the various elements, the overall appearance of the two signs should be compared.

http://wppbaz.com/admin/uploads/files/BZ_Global_2016_Report.pdf

04

EUROPEAN

UNION

Puma SE v. OHIM

and Sinda Poland

Corporation

The Opposition Division rejected the opposition on the ground that the signs were different and OHIM dismissed the appeal against the decision of the Opposition Division.

Puma appealed to the General Court of the EU (EGC) challenging the definition of the relevant public as well as the comparison of the signs carried out by OHIM.

Relevant public: OHIM had found that, to the extent that the products were items of fashion or entering a higher price category, the consumer was likely to be more attentive. The EGC found that OHIM erred in finding that the average consumer was likely to be more attentive. This is because these goods in class 25, namely shoes, are consumer goods, whose objective characteristics do not imply that the average consumer makes particularly careful consideration when purchasing them.

Comparison: OHIM stated that the two signs were not visually similar as the earlier mark represented a wild cat or leaping puma, while the later mark represented the figure of an unknown creature and the animals were leaping in different directions. The EGC found that the marks, both being black silhouettes of similar position, shape, and proportions, though not identical, had undeniable similarities. OHIM thus erred by failing to base its analysis on the overall impression produced by both signs.

Puma’s appeal was upheld.

COPYRIGHT


KENYA

Nairobi Map

Service Limited

v Celtel Kenya

Limited (Zain

Kenya) & 2 others

[2016] eKLR

In this case, Nairobi Map Service Limited (Nairobi Map) developed a map known as Kenya Administrative Map, (Map). Celtel Kenya Limited (Celtel) contracted Z.K Advertising Kenya Limited (Z.K.) to prepare a commercial advertisement based on a map of Kenya for promotion of Celtel’s products and that the 2nd Defendant sub-contracted the said job to the Sound & Picture Works Limited (Works).

Nairobi Map claims that Celtel, in paying for and allowing the advertisement to be aired is guilty of passing off the Map; Z.K. is vicariously liable for the actions of Works, and Works is liable for copying the Map without authorization.

While the court acknowledged that Nairobi Map is the copyright owner in the Map, it took the view that the inclusion of the Map was incidental as the appearance of the map was subordinate noting that Celtel also used other maps. The court further found that there was neither reproduction of the Map, it was merely part of the advertisement but was not reproduced, nor communication to the public in accordance with section 26 (1) of the Copyright Act. Works demonstrated before the court that they bought a copy of the Map thus it cannot be said that Works wrongfully used the Map.

The court held that there was no infringement of Nairobi Map’s copyright and therefore no entitlement to damages.

Where owners of copyright wish to control use of their works, they ought to expressly communicate such restrictions on the use of their works by buyers. They may also choose to require a disclosure of intended use which may dictate sale charges. In the absence of such provisions, the owners’ rights in their work will be deemed exhausted.


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PATENT


USA

Cuozzo Speed

Technologies, LLC,

v Michelle K. Lee,

Under Secretary

of Commerce

for Intellectual

Property and

Director, Patent

and Trademark

Office

The Leahy-Smith America Invents Act creates an agency procedure called inter partes review (IPR) that allows a third party to ask the U.S. Patent and Trademark Office (USPTO) to re-examine the claims in an already issued patent and to cancel any claim that USPTO finds unpatentable in light of prior art.

Here, Garmin International Inc. sought an IPR of all 20 claims of a patent held by Cuozzo Speed Technologies, LLC, (Cuozzo) asserting obviousness. The (PTAB) concluded that the claims were obvious in light of prior art, denied for reasons of futility Cuozzo’s motion to amend the claims, and cancelled all three claims. Cuozzo appealed to the Federal Circuit claiming that PTAB improperly used the broadest reasonable construction standard to interpret the claims rather than the standard used by courts, which gives claims their ordinary meaning as understood by a person of skill in the art.

The US Supreme Court affirmed the USPTO’s power to use the broadest reasonable construction standard when reviewing claims challenged in IPRs before the PTAB.

This standard makes it more likely that a challenged patent will be found invalid for obviousness.

in the number of CMOs and in the collection and distribution of royalties, the survey reported that the need for an increase in transparency of CMOs’ operations.

See the full report here

BUDGET HIGHLIGHTS

The Cabinet Secretary for the National Treasury, Mr. Henry Rotich delivered the budget statement for Kenya on 8 June, 2016. Some proposals include:

•introduction of presumptive tax for the hard to tax categories, easing the tax compliance burden on small companies and individuals by introducing taxation at source;

•increase of the air passenger service charges for external travel from USD 40 to USD 50 and for internal travel from KES 500 to KES 600 to raise revenue for the promotion of tourism;

•strengthen the primary and secondary markets for government securities by introducing electronic bond auctions which will spare investors from the current manual process of submitting paper bids;

Please note that articles are included in this Newsletter

for your interest only. The inclusion of an article in the

Newsletter is not an indication that Coulson Harney

agrees with its contents. When reading the articles,

please do so critically.

GENERAL NEWS

ARIPO PUBLISHES SURVEY ON STATUS OF AFRICAN COLLECTIVE MANAGEMENT ORGANIZATIONS

The African Regional Intellectual Property Organization (ARIPO) has published its first Survey on the Status of Collective Management Organisations (CMOs) in the ARIPO Member States.

Under the survey, the copyright laws of member states; the number, rights managed and financial status of CMOs; and the governance issues as well as other challenges faced by CMOs are examined. Some of the challenges identified by CMOs include piracy, non-payment of royalties, lack of awareness and the need for capacity building. While noting an increase

•proposal for the provision of a legal framework for the online trading of foreign currency;

•introduction 10% of excise duty on cosmetics and beauty products in line with the excise duty regime in the EAC.

SUMMARY OF BILLS AND REGULATIONS

THE COMPANIES ACT, 2015

The Companies Act 2015 became fully operational on 15 June, 2016. The provisions which came into effect include:

•small companies do not need to prepare group financial statements;

•permission of public companies to buy-back or repurchase their own shares if extensive procedures for approval and terms are followed;

•protection of members of a company has been enhanced and members may go to court and challenge a conduct that they think is oppressive or unfair;

•foreign companies are required to have at least thirty percent of the


http://www.aripo.org/news-events-publications/annoucements/item/113-survey-on-the-status-of-cmos-in-aripo-member-states

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meeting sought to provide a platform for stakeholders to contribute to the formulation of a framework for the regulation of parallel imports in Kenya.

John Syekei, the head of the IP Department at Coulson Harney Advocates presented on the current status and legislative gaps of parallel importation laws in Kenya.

DEVELOPMENTS AT KIPI

VERIFICATION EXERCISE

The Kenya Industrial Property Institute (KIPI) is the body charged with the administration of Industrial Property Rights in Kenya. KIPI administers the trade mark, patent, industrial design and patent regime in Kenya.

The Industrial Property Administration System (IPAS) was donated by the World Intellectual Property Organization (WIPO). Its aim is to automate the processing of the industrial property applications in Kenya. Since its inception IPAS has improved and shortened the filing and registration processes.

With an object of improving the accuracy of issued search reports, KIPI has commenced a verification exercise. This exercise entails cross-checking the entries on IPAS against the physical files.

AMAZING IP FACTS

INTELLECTUAL PROPERTY PROTECTION FOR CREATIVE FOOD DESIGNS

Intellectual property law is capable of protecting highly creative food designs from substantial copying as follows:

Copyright: rights may arise where the food incorporates highly creative features that are separable from the food’s practical features (taste and

company’s shareholding held by Kenyan citizens by birth.

NATIONAL MUSIC BILL, 2016

A draft of the proposed National Music Bill has been released by the Permanent Presidential Music Commission (PPMC).

Some of the key highlights include:

•the establishment of a National Music Council whose functions include protection and promotion of music rights, licensing persons operating music sale businesses within Kenya and monitoring broadcast of music content in Kenya;

•introduction of quotas for the broadcasting of Kenyan and community music, 60% of non-vernacular stations’ airtime should be dedicated to airing Kenyan music and 30% of vernacular stations’ airtime should be dedicated to broadcasting different community; and

•establishing a National Music Fund to promote artists’ creativity and development of Kenya’s music industry.

PPMC is seeking comments from stakeholders and interested parties.

See a copy here

Source IP Kenya

CONFERENCES & EVENTS

The Pharmacy and Poisons Board held a stakeholder meeting on 22nd and 23rd June, 2016. The aim of the meeting was to discuss the regulation of parallel importation of medicines in Kenya. Currently, the legislative framework in Kenya allows for parallel imports but the process is unregulated.

Attended by key players in the pharmaceutical industry in Kenya, the

nutrition) and where the food’s design is an original artistic expression;

Trademark: one can trademark the trade dress (design and appearance) of foods provided the design is non-functional and serves as a source identifier to consumers; and

Patent: it is possible to obtain a utility patent on a novel and non-obvious recipe or cooking technique or for a novel, non-obvious and ornamental food creation.

Chefs, restaurants and food manufacturers may consider engaging IP counsel to determine if and how their food designs may be entitled to intellectual property protection thereby maximizing the value of their brands.

Article courtesy of FoodNavigator-USA.com

OUR WORK

We have been busy in the past month and have:

•filed approximately 40 trade mark applications across East Africa;

•renewed approximately 41 trade marks already existing on the Register;

•assisted with approximately 15 recordals of mergers, changes of names and assignments of trade marks; and

•filed one patent application and 15 renewals of patent annuities.


https://issuu.com/ongea/docs/draft-national-music-bill-2016

Litigation before various courts and tribunals (KIPI), dispute resolution, arbitration (local and international)

Contact: [email protected]

Litigation before various courts and tribunals (KIPI), dispute resolution, arbitration (local and international)


Litigation before various courts and tribunals (KIPI), Dispute resolution, arbitration (local and international)


Advertising, Copyright, E-commerce, IT contracts, Franchising, Licensing, Commercial contracts, Foreign filing – Africa.


ANTHONY NJOGU IP LITIGATION

DANIEL MWATHE IP

TERRY MWANGO IP LITIGATION

CECIL KUYO IP LITIGATION

Trade mark, Design, Copyright and Patent Litigation, Cancellation and Opposition matters, Trade marks, Advertising, Copyright, E-commerce, IT contracts, Franchising, Licensing, Foreign filing – Africa, Counterfeiting and Counterfeit Raids Practice


Patent prosecution, patent advice, Trademarks, Design, Copyright and Patent Litigation, Cancellation and Opposition matters, Foreign filing – Africa, Counterfeiting and Counterfeit Raids Practice.


JOHN SYEKEI HEAD: IP DEPARTMENT

DAVID OPIJAH IP

OUR TEAM

PARTNERS

SENIOR ASSOCIATES

07


08

5th Floor, ICEA Lion Centre, West Wing,Riverside Park, Chiromo Road, Nairobi PO Box 10643-00100, Nairobi, Kenya

Tel: +254 20 289 9000Tel: +254 73 499 3739

Tel: +254 70 996 6000Fax: +254 20 289 9100

Email: [email protected]

We thank you for choosing to work with us. Please do not hesitate to contact us if you

require any further clarification.

Happy New Month

Yours faithfully,Coulson Harney

Per: John Syekei

Trademark and Patent renewals, annuities, Trademark clearance searches, Foreign filing – Africa.


Litigation before various courts andStatutory (KIPI) and arbitral tribunals.


Advertising, Copyright, E-commerce, IT contracts, Franchising, Licensing, Commercial contracts.


KRYSTAL MUINDI IP

AGNES AKAL IP LITIGATION

EDDAH KIAI IP

OUR TEAM CONTINUED

ASSOCIATES


intellectual property - bowmans...02 millward brown 2016 brandz top 100 most valuable global brands...

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