WELCOME
Gérard du Plessis
Chairman, Adams & Adams
Simon Brown
Chair of the Africa Committee, Adams
& Adams
TRADE MARKS MARKET SHARE ANALYSIS
JUNE 2016
NO.
1
2
3
4
5
6
7
8
10
11
12
4
FIRM
CH
K&S
IKM
Gichachi & Co
HHM
NNK
CFL Advocates
MMC
A&K
Sisule Munyi Kilonzo & Co
Mwale & Co
TOTAL
TOTAL MARKS
36
9
2
7
24
1
27
7
6
1
7
127
TOTAL %
29%
7%
2%
5%
19%
1%
22%
5%
4%
1%
5%
100%
KIPI JUNE JOURNAL – TRADE MARKS
SHARE ANAYLSIS
40
35
30
25
20
15
10
5
0
CH
5
K&S
IKM
Gichachi
& Co
HHM
NNK
CFL
Advocates
MMC
A&K
Sisule
Munyi
Kilonzo &
Co
Mwale &
Co
KIPI JUNE JOURNAL – TRADE MARKS
SHARE ANAYLSIS
1, 1%
1, 1%
27, 21%
CH
K&S
IKM
24, 19%
7, 6%
6, 5%
HHM
21, 17%
7, 5%
Gichachi & Co
NNK
CFL Advocates
MMC
9, 7%
7, 5%
2, 2%
36, 28%
6
A&K
Sisule Munyi Kilonzo & Co
Mwale & Co
KIPI JUNE JOURNAL – TRADE MARKS ANAYLSIS
NO NAME OF FIRM / AGENT
1
7
Coulson Harney
APPLICANTS
Cipla Kenya Limited
AUTOZONE RETAIL & DISTRIBUTION (PROPRIETARY) LIMITED
Diageo North America, Inc.
EDCON LIMITED
B.T Exportadora de Aceitunas
JAGUAR LAND ROVER LIMITED
MNET - INTELPROP HOLDINGS LIMITED
NBA PROPERTIES, INC.
ABSA BANK LIMITED
FRENNIE HUSSEIN OMAR
HOME BOX OFFICE, INC.
ECONET MEDIA LIMITED
HERO MOTORCORP LTD
Apple INC.
DGB (PROPRIETARY) LIMITED,
ELECTRIUM SALES LIMITED
Andrea Elizabeth Bates
NSK Ltd.
PROMASIDOR IP HOLDINGS LIMITED,
Choice Hotels International, Inc.
Abbott Products Operations AG
EATON INDUSTRIES (AUSTRIA) GmbH
Abbott GmbH & Co.
KENTUCKY FRIED CHICKEN INTERNATIONAL HOLDINGS, INC.
WAHL CLIPPER CORPORATION,
Aegis Trademarks BV
WORLDVENTURES HOLDINGS, LLC
Translink Services S.à.r.I
TOTAL
COUNTRY OF ORIGIN
India
South Africa
USA
South Africa
Spain
United Kingdom
Mauritius
USA
South Africa
UAE
USA
Mauritius
India
USA
South Africa
United Kingdom
USA
Japan
Mauritius
USA
Switzerland
Austria
Germany
USA
USA
The Netherlands
USA
Luxembourg
NO OF MARKS
1
1
3
1
1
3
1
1
1
1
2
1
2
2
1
1
1
1
1
1
3
1
1
1
1
1
1
1
36
KIPI JUNE JOURNAL – TRADE MARKS ANAYLSIS
NO NAME OF FIRM / AGENT
2 Kaplan & Stratton
3 Iseme Kamau & Maema
4 Gichachi & Co. Advocates
5 Hamilton Harrison & Mathews
8
APPLICANTS
COUNTRY OF ORIGIN
NO OF MARKS
Dynapharm (M) Sdn Bhd
Sichuan Yuanxing Rubber Co.
Colgate-Palmolive Company
Proprietary Limited
METINDUSTRIAL (PTY) LTD
GRADUATE MANAGEMENT ADMISSION COUNCIL
BASF Agro B.V.
Schooland Investment NV
Intercontinental Great Brands LLC
TOTAL
Novus International, Inc.
TOYOTA JIDOSHA KABUSHIKI KAISHA
TOTAL
Tsebo Outsourcing Group International Limited
Jaguar Land Rover Limited
THE QUAKER OATS COMPANY
Bayer Healthcare LLC
AMOLI ENTERPRISES LTD
Bayer Intellectual Property GmbH
TOTAL
ASMAK, International Fish Farming Holding Co. (P.J.S.C.)
DESAI BROTHERS LTD
Malaysia
China
USA
South Africa
South Africa
USA
Switzerland
Curacao
USA
GRENDENE S.A.
Brazil
2
Merck KGaA
Germany
13
Retail World Limited of Level 1
British Virgin Islands
3
NABIL FACTORY FOR FOOD PRODUCTS
Jordan
1
ROMAN'S PIZZA (PRETORIA) CC
South Africa
1
OMAN FOODSTUFF FACTORY LLC
Sultanate of Oman
1
Rotam Agrochem International Company Limited
TOTAL
Hong Kong
1
24
USA
Japan
Mauritius
United Kingdom
USA
USA
Hong Kong
Germany
UAE
India
1
1
1
1
1
1
1
1
1
9
1
1
2
2
1
1
1
1
1
7
1
1
KIPI JUNE JOURNAL – TRADE MARKS ANAYLSIS
NO NAME OF FIRM / AGENT
6
Ndungu Njoroge & Kwach
APPLICANTS
La Pointique International Ltd.
COUNTRY OF ORIGIN
USA
TOTAL
7
8
CFL Advocates
MMC Africa
Anjarwalla & Khanna
10 Mwale & Co Advocates
1
British Virgin Islands
Turkey
3
1
LIER CHEMICAL CO., LTD.
China
1
EQUATE PETROCHEMICAL COMPANY
Kuwait
1
UBER TECHNOLOGIES, INC.
USA
1
ITALTILE FRANCHISING (PTY) LIMITED
South Africa
2
The Hershey Company
Huhtamaki Finance B.V.
USA
The Netherlands
5
1
MACDERMID AGRICULTURAL SOLUTIONS, INC.
USA
4
TWITTER, INC.
USA
3
TIGER FOOD BRANDS INTELLECTUAL PROPERTY HOLDING COMPANY (PTY) LTD
South Africa
1
Aldi Einkauf GmbH & Co.
Germany
1
AXIS AB
Sweden
1
KYOSAN ELECTRIC MFG. CO., LTD.
TOTAL
Japan
2
27
CIPLA LIMITED
India
1
DAFRA PHARMA GMBH
Switzerland
1
2
SERENUS BIOTHERAPEUTICS
Ireland
3
PANXCHANGE INCORPORATION
TOTAL
USA
3
6
Milano Italy S.R.L
Italy
1
Hardwood Pte Ltd.
Singapore
1
Shree Mahavir Metalcraft Pvt. Ltd.
India
1
Galax Group International Ltd
Hong Kong
1
GuoGuang Electric Company Ltd.
China
1
Guangzhou Qingxiu Rihua Co., Ltd.,
China
1
VISION EXPORTS FZC
UAE
1
TOTAL
11 Sisule Munyi Kilonzo & Associates
Eastman Auto & Power Limited
TOTAL
GRAND TOTAL OF TRADE MARKS PROCESSED (FOREIGN APPLICANTS)
9
1
WIDE PROGRESS GLOBAL LIMITED
ETI Gida Sanayi ve Ticaret A.S.
TOTAL
9
NO OF MARKS
7
India
1
1
127
GUEST SPEAKER
John Kani
Actor, playwright
CASE LAW REVIEW
Lita Miti-Qamata
South Africa
ON YOUR CASE
An African perspective
Lita Miti-Qamata
Opening comment
“To say that Africa is a single, homogenous market
is like saying all the countries of Europe are the same.”
- Josh Dovey
CEO Africa for Omni Media Group
13
Sony Holdings Ltd v The Registrar
of Trade Marks and Another – Court of Appeal

SONY HOLDINGS and SONY HOLDINGS Logo v SONY
 Judicial Review of Registrar’s administrative action
 Court a quo:

Correct forum for review
 Legitimate expectation for registration
 Registrar discretion re: extension of time and acted within bounds of the law

Appeal:

Close look at relevant provisions of TMA, Rules and Regulations
 Close look at steps taken by Registrar


Illegality, irrationality, impropriety
Effect of delay on trade mark applicant
 Effect of terminating opposition
 Appeal dismissed with costs
14
C&C Ferdinands Divine Ltd v Scents
and Senses Co. Ltd – Registrar of Trade Marks






15
COCOSHAKIRA v SHAKIRA
Notice of opposition
 Marks confusingly similar
 SHAKIRA well known for class 3 goods
 False claim to proprietorship
Counterstatement
 No valid SHAKIRA registrations in Nigeria
 COCOSHAKIRA used in Nigeria for 3 years
 No automatic protection for SHAKIRA because its name
of well known singer
Issue: whether trade mark applicant discharged
the burden of proof?
Regulation 52
COCOSHAKIRA refused registration, no order as to costs.
Cochrane Steel Products (Pty) Ltd v M-Systems
Group (Pty) Ltd and Another – Supreme Court
of Appeal

Interdict to stop keyword bidding and advertising
on Google using CLEARVU unregistered trade mark

Passing Off
 Whether advertisement seen by end user is likely to deceive
or confuse
 No use of CLEARVU so not likely to deceive or confuse

Unlawful competition
 Trader can carry on business in competition with rivals
as long as it is not wrongful
 Is keyword bidding on competitor’s trade mark wrongful?
 Bare imitation without anything more is permitted,
it is actually the lifeblood of competition

Appeal dismissed with costs
16
Societe Des Produits Nestle SA and
Another v International Foodstuffs Co
and Others – Supreme Court of Appeal
Nestle
Iffco
•
•
v

Application to remove Nestle shape marks
 consist exclusively of shape necessary to achieve a technical result

Interdict for trade mark infringement
 Classic infringement:
 Whether public identified 4 finger and 2 finger wafer shape
as source identifiers?
17
Societe Des Produits Nestle SA and
Another v International Foodstuffs Co
and Others – Supreme Court of Appeal
Nestle
Iffco
•
•

v
Dilution:
 Detriment or unfair advantage can be evident from primary facts
 Increase in sales of Iffco products would be at expense of Nestle,
consumers associate the Nestle shape with Iffco products
 Economic harm evident from primart facts
 Infringement based on dilution, court a quo erred
 Review of decision of Registrar to allow insertion of disclaimer
 Disclaimer limited marks to 3D shape mark
 No substantial amendment to mark, no prejudice to other
 Registrar exercised discretion correctly
17
Hero Motocorp Ltd v Esteem Motors Ltd
and Others – High Court

Application to remove registered marks KARIZMA Logo, HUNK Logo,
GLAMOUR Logo and SPLENDOR Logo –
 Esteem Motors did not have valid and legal claim to proprietorship






Non use



18
Similar arks registered in India, country of origin, for similar goods before registrations
in Uganda
No licence/assignment/consent for Esteem to register marks in Uganda
Parties are rivals, Esteem aware that Hero Motocorp was planning to expand
operations in Uganda
Hero Motocorp had authorised distributers and Esteem was not one of them.
Hero Motocorp applied for marks in Uganda in 2013 and intended using them
No bona fide use of marks in relation to registered goods
for continuous period of three years from registration
Investigation did not turn up any use by Esteem
Registrations expunged with costs
DH Brothers Industries (Pty) Ltd v Olivine
Industries (Pty) Ltd – Supreme Court

Opposition of DAILY covering class 3 goods on basis of identical
unregistered mark used in Zambia
 Registrar
 Ruled that DH Brothers unregistered mark was not accorded protection
by provisions of TMA
 Opposition unsuccessful
 Court of Appeal
 Agreed with Registrar and appeal dismissed with costs
 Supreme Court –
 Close look at provisions of TMA including preamble
 Cannot read provisions in isolation because it is clear
that when read in context of the whole Act, only owner
of registered mark may rely on provisions of Act
to prevent registration of an application
 Appeal dismissed with costs
19
Closing comment
Suitable strategies for brand protection, brand
management and brand enforcement are devised well
when the attorney is aware of prevailing practices and
interpretation of the law in each African jurisdiction.
20
THANK YOU
Lita Miti-Qamata
IPAS IN AFRICA
Gregory Sadyalunda
WIPO
REGISTRY PRACTICES
& SEARCH
CAPABILITIES
Stephen Hollis
South Africa
INDUSTRIAL PROPERTY
AUTOMATION SYSTEM (IPAS)
HOW WE CAN BENEFIT FROM THIS
SYSTEM IN AFRICA.
By Stephen Hollis
BENEFITS OF IPAS
1.
IPAS is an integrated IP administration system that can automate the processing of trade marks,
patents and industrial designs. It is a workflow-based and highly customizable system that
supports all business processes of an IP office.
2.
Flexibility: Its modular design can be scaled up or down in terms of IP office size, IP legislation,
functionality, workflow complexity, IP data volumes and any other national IP requirements
(ALSO PCT and MADRID).
3.
Extensive customization is possible, including national IP legislation, workflow processes, actions
and statuses, legal time-periods and deadlines, templates of official correspondences,
certificates, gazettes, language, calendar support, data migration from legacy databases.
4.
The system is installed by WIPO at requesting Registries at no cost and Registry officials are trained
by WIPO to use the system. Future enhancements (e.g. new technologies or requirements by IP
Office) are seamlessly integrated through online installation of modules by WIPO.
5.
Risk assessments (trade mark searches) become more meaningful and and access to the records
of IP offices becomes more efficient and effective.
6.
Registries records are being digitized and all processes become more efficient.
26
FILING
NUMBER and
RECEIPT
ALLOCATION
REGISTRATION,
RENEWAL AND
RECORDAL
CERTIFICATES
IPAS
JOURNALS
CAN BE
PUBLISHED
MONTHLY +
OPPOSITION
NOTICES
27
AVAILABILITY
SEARCHES
AFRICAN REGISTRIES WITH IPAS
27
1.
Algeria
14.
Mozambique
2.
Botswana
15.
Namibia
3.
Egypt
16.
Nigeria
4.
Ethiopia
17.
OAPI
5.
Gambia
18.
Rwanda
6.
Ghana
19.
Seychelles
7.
Kenya
20.
Sudan
8.
Lesotho
21.
Swaziland
9.
Libya
22.
Tanzania
10.
Madagascar
23.
Tunisia
11.
Malawi
24.
Uganda
12.
Mauritius
25.
Zambia
13.
Morocco
26.
Zanzibar
27.
Zimbabwe
WHAT DOES THIS MEAN FOR TM
PRACTITIONERS IN AFRICA?

With knowledge of which Registries have the IPAS system installed, practitioners
can work with Registry officials to improve the quality of search data generated.

Where value-add can be achieved, this could benefit the practice of the local
practitioner by achieving a valuable and real competitive edge over other firms
who do not provide clients with the best possible search data and related risk
assessments.

More clients are requesting that we provide them with more detailed search data
– for instance, the closest three marks that the search revealed, even if they are
not problematic.

The default configuration by WIPO is to search only on phonetically similar marks.

Additional parameters can be searched on to generate more relevant data.

Trade marks are compared as to sound, sense and appearance – searching only
on phonetics introduces a risk that your search is not complete.
28
EXAMPLE OF IPAS SEARCH EXTRACT
29
SEARCHABLE PARAMETERS


DEFAULT:
MARK NAME SOUNDS LIKE TRADEMARK
POSSIBLE ADDITIONAL (No extra cost):
1. MARK NAME SOUNDS LIKE TRADE MARK
2. MARK NAME CONTAINS = TRADE*
3. MARK NAME CONTAINS = *MARK
4. MARK NAME CONTAINS = *TRADEMARK*
30
WHICH REGISTRIES PLAY BALL?
Country
Status
Algeria
The Registry determines their own search parameters.
Botswana
Egypt
The Registry determines their own search parameters.
Apparently, phonetics are not searched on.
Ethiopia
Searches conducted manually.
Records still need to be digitized.
Gambia
Searches conducted manually.
Records still need to be digitized.
Ghana
Registry only searches default parameter (phonetics) –
NO manual searches conducted on bulk of manual records!
Kenya
31
WHICH REGISTRIES PLAY BALL?
Country
Status
Lesotho
Searches conducted manually.
Records still need to be digitized.
Libya
Using a previous WIPO-supplied system – not yet IPAS.
Madagascar
Registry only searches on the default (phonetics) parameter
on IPAS. No manual searches of non-digitized records occur.
Malawi
Manual and electronic searches are conducted.
Mauritius
Searches conducted manually.
Records still need to be digitized.
If Registry official does not cite a mark, no data is released.
Morocco
IPAS has only been installed for patents – not trade marks.
Mozambique
32
WHICH REGISTRIES PLAY BALL?
Country
Status
Namibia
Awaiting feedback from Registry.
Nigeria
Searches conducted manually.
Records still need to be digitized.
OAPI
Searches conducted manually.
Records still need to be digitized.
Rwanda
Manual and electronic searches are conducted.
Seychelles
Manual and electronic searches are conducted.
Sudan
Searches conducted manually.
Records still need to be digitized.
Swaziland
Searches conducted manually.
Records still need to be digitized.
33
WHICH REGISTRIES PLAY BALL?
Country
Status
Tanzania
Searches conducted manually.
Records still need to be digitized.
Tunisia
The Registry apparently checks all parameters.
Uganda
Manual and electronic searches are conducted.
Zambia
Manual and electronic searches are conducted.
Zanzibar
Zimbabwe
34
Searches conducted manually.
Records still need to be digitized.
Manual and electronic searches are conducted.
THE WAY FORWARD

African IP Practitioners should keep engaging with their national IP
Offices to ensure that the Registries remain aware of the parameters
that can be utilized to optimize the value of search data generated
from IPAS.

The value of providing clients with better search data is not restricted
to risk assessments done on their behalf, but also provides the
lawyer’s practice with a strong and valuable competitive edge.

WIPO is constantly engaging with Registries to train Registrars and
staff on IPAS and where IP practitioners can become involved in this
process, additional value can be added as WIPO are not always
aware of all of the practical issues we encounter in practice – they
welcome assistance!
35
PROJECTS IN
AFRICA
Nicholas Körning
EPO
REGISTRAR’S
REPORTS
REGIONAL
UPDATES
NORTH AFRICA
Mohamed Eldib
Eldib & Co.
Egypt
EAST AFRICA
Dr Saudin Mwajake
NexLaw
Tanzania
WEST AFRICA
Olusola Ogundimu
Integrated Legal
Ghana
SOUTHERN AFRICA
Brenda Matanga
Bmatanga IP
Zimbabwe