Page 14 – CIP – The Anton Mostert Chair of Intellectual Property

Readers will have observed from perusing the articles on this blog that I have commented on a number of occasions on the proclaimed intention of the Government to pass legislation curtailing or prohibiting the use of trade marks on tobacco products, both on their packages and in advertising. I have expressed the view that by so doing the Government will be depriving the trade mark owners of their valuable items of property which is at odds with Section 25 of the South African Constitution, unless compensation is paid for such depravation or expropriation. In this regard see the items entitled “Trade Marks Going Up in Smoke” and “Fire Fighting”.

The proposition which I have propounded has been the subject of comment by other writers and legal commentators and it is to be the subject of a public lecture to be delivered by Prof. Harms of the University of Pretoria on 13 March 2013. The views of Prof. Harms are awaited with interest.

Hans Muhlberg in his “Muhlberg’s Brief” criticized my abovementioned proposition, as he is entitled to do, and opined that it has little merit. I am happy that there should be a lively debate on the issue and I am more than willing to entertain diverse points of view. I have given due consideration to Muhlberg’s arguments but in the final analysis my views as previously expressed remain unchanged. I will shortly be publishing a fully reasoned academic article on the subject and I will deal with the substance of his criticisms in that article. The article will also form the basis of my inaugural address marking my investiture as a Professor at Stellenbosch University, on 21 May 2013. The title of my inaugural address is “Deprivation of Trade Marks through State Interference in their Usage”. (Editor: For more information on Prof Dean’s inaugural address please contact the Chair of IP).

There is, however, one issue on which I want to challenge Muhlberg at this stage. Muhlberg points out that, in terms of my proposition, the Government will be liable to pay huge sums in compensation to brand owners and he mentions the trade marks ROTHMANS, DUNHILL and PETER STUYVESANT, specifically. These are of course all trade marks in which the Remgro/Rupert Group has an interest. He then goes on to say “it is worth noting that Stellenbosch’s chair of IP law is Rupert funded” and he uses this statement to insinuate that the proposition that I have advanced is an instance of “he who pays the piper calls the tune”. I reject this statement out of hand. It is a slight on Stellenbosch University, the Anton Mostert Chair of Intellectual Property Law, and me personally. It impinges on our academic integrity.

Muhlberg was obviously commenting on my article entitled “Trade Marks Going Up in Smoke” which had appeared about a month previously on this blog. He presumably read the entire article and in doing so he could not have failed to come across the following statement: “It will be recalled that a few years ago the Government yet again made noises about stopping South African Rugby from using the SPRINGBOK emblem which is a registered trade mark owned by S A Rugby. At the time, Prof. Owen Dean, the current incumbent of this chair of intellectual property law, expressed the view in the media that by preventing S A Rugby from using the SPRINGBOK emblem the Government would be depriving South African rugby of an item of property and that this could not be done without paying due compensation”.

At the time when I developed the trade mark depravation argument (roughly 4 years ago) I was still in active legal practice at Spoor & Fisher (who do not represent SA Rugby) and I had no connection with Stellenbosch University. The formation of the Anton Mostert Chair of Intellectual Property Law was approximately two years in the future and was not even in contemplation. Last year, when the renowned cigarette plain packaging case came before the Australian court, in view of its topicality and relevance to South Africa, I adapted my argument dealing with the possible forfeiture by S A Rugby of their valuable item of property, the SPRINGBOK emblem, to suit the circumstances of what was unfolding in the international tobacco industry. Exactly the same situation prevailed in both instances.

The clear fact of the matter is that my trade mark deprivation proposition had been developed in a different ball game to the tobacco industry. This would have been clear to Muhlberg from a reading of my article and one cannot therefore but wonder at his motives in misleadingly suggesting that my argument had been developed to suit the tobacco interests of the Rupert Group of Companies. The corollary of this is that the argument is therefore contrived and self-serving and of tainted merit.

A further consideration which belies his insinuation is that, in keeping with the policy of the University of Stellenbosch, although the Anton Mostert Chair of Intellectual Property was created with an endowment from the Rupert Group, this was done on the strict understanding and subject to the condition that the Chair would have complete independence and the donor would have no say or sway over the conduct over its affairs. I would not have accepted the position of the incumbent of the Chair on any other basis. The Chair adopts a fiercely independent line and approach and this will be evident to anyone who has read the articles on this blog.

Perhaps an apology from Mulberg would not go amiss!

Professor Owen Dean

THIS EVENT IS NOW CLOSED.

The lecture is available as a podcast and audio recording here.

The Chair of Intellectual Property Law will present its annual public lecture on 7 March 2013 with Professor Charles Gielen from Groningen University (Netherlands). The topic of Prof Gielen’s address is “Apple v Samsung – the design wars”. He will examine the significance of trademarks and registered designs for the proprietor’s global advertising strategy and the value of distinctive packaging and product design. The discussion will focus on the matter between Apple Inc. and Samsung Electronics in the USA. As a prominent IP practitioner of international renown, Prof Gielen was directly involved in the case and will present his views on the matter and its impact on intellectual property rights. To read more about Prof Gielen click here.

Attendance is free. Limited seating available. Please RSVP before 28 February 2013 to book your seat.

Date:

Thursday 7 March 2013

Time:

18:30 for 19:00

Professor Charles Gielen

Duration:

50 minutes (refreshments to follow)

Place:

The JC de Wet Hall

Stellenbosch University Faculty of Law

Ou Hoofgebou Room 1023

Corner of Victoria & Ryneveld Street, Stellenbosch

Attire:

Smart casual

RSVP:

Before 28 February 2013

Email: annettev@sun.ac.za

Call: 021 808 9371 (08:00-14:00)

To download the invitation click on the image below.

About the speaker:

Professor Charles Gielen PhD (born on 15 March 1947) holds a law degree from the Catholic University of Brabant in Tilburg and a doctorate degree from the University of Utrecht, the Netherlands.

He is a partner of the Dutch law firm NautaDutilh (www.nautadutilh.com) and works in their Amsterdam office. He is professor of IP law at the University of Groningen. He specialises in intellectual property law. He mainly handles patent and trademark litigation. In trademark matters he acts for Diageo Plc., L’Oreal, the LVMH Group, Intel, Coca-Cola, BMW, Burberry and Lego. In patent matters he handled litigation for Pharmacia, Aventis Pharma, Medtronic and Global Biochem Technology.

He has published several books and articles on subjects involving intellectual property law (in particular patent and trademark law) and is a member of editorial boards responsible for publishing law reviews on intellectual property and competition law such as the European Intellectual Property Review, the European Trademark Reports and “Intellectuele Eigendom & Reclamerecht”.

He is also member of the standing advisory committee to the Dutch government on trademark and design law.

He is past-President of the “Vereniging voor Intellectuele Eigendom” (www.aippi.nl), the Dutch group of the International Association for the Protection of Industrial Property (AIPPI; www.aippi.org ) and forms part of the Executive Committee of this Association. He chairs the Program Committee of AIPPI and is past co-chairman of the Working Committee of Q 114 (Biotechnology including plant breeders rights).

He is past member of the Board of Directors and its Executive Committee of the International Trademark Association (INTA; www.inta.org). He is also past President of the International League of Competition Law (LIDC). He is member of the Board of the anticounterfeiting organisation SNB-REACT in Amsterdam.

On November 8, 2006 he received INTA’ s President Award for outstanding service to the International Trademark Association. On October 6, 2007 the Council of Presidents of AIPPI appointed him Member of Honour of AIPPI for outstanding contributions to and an extraordinary engagement for the fulfilment of the aims of the Association. In 2009 he was appointed member of honour of the Vereniging voor Intellectuele Eigendom.

Chambers Global 2006: “one of the most esteemed lawyers” in the IP-field. In the Chambers Global Guide 2008 and the Chambers Europe Guide 2008 he is revered as the icon of trade mark law in the Netherlands. The International Who’s Who of Business lawyers 2008 under Trademarks: “The Netherlands hosts the highest polling lawyer in Europe: Charles Gielen of NautaDutilh received more votes than any lawyer here, is “very well known” for his litigation and academic work.”

Following the publication of Prof Owen Dean’s latest book, “Awakening The Lion – The Case Of The Lion Sleeps Tonight” by Tafelberg, and the University’s subsequent press release (available here), our incumbent chair of IP has been inundated with requests for an interview with him from various members of the media. It is not surprising that this unique book, and the internationally headlining story it recounts, would attract widespread interest – least of all from South African radio. It is, after all, a proudly South African story about the worldwide victory in a case that made legal history and restored to a South African family that which was rightfully theirs.

If you missed any of these interviews live on radio, you can listen to the recordings below. Click on the Play Button. Please allow sufficient time for the file to download and start playing.

“The Money Show” with Bruce Whitfield

Talk Radio 702 / 567 Cape Talk 106FM

Language: English

Duration: 13 min 46 sec

File Size: 16.5MB

“Naweek Aktueel” with Melissa Tighy

Radio Sonder Grense (RSG) 100-104Fm

Language: Afrikaans

Duration: 4 min 2 sec

File Size: 4.8MB

“People of Note” with Jean Badenhorst (Part 1)

Fine Music Radio 101.3FM

Language: English

Duration: 30 min 0 sec

File Size: 36 MB

“People of Note” with Jean Badenhorst (Part 2)

Fine Music Radio 101.3FM

Language: English

Duration: 28 min 51 sec

File Size: 34.6MB

“Afternoon Drive” with Craig Berman

ChaiFM 101.9FM

Language: English

Duration: 7 min 40 sec

File Size: 5.5MB

COPYRIGHT NOTICE

This post contains links to sound recordings which contain voice recordings and embodies other sound recordings. Copyright in this material (and its constituent parts) belongs to the individual authors/creators of the respective works or the assigned copyright owners. It is reproduced or referred to here in terms of sections 18 and 19, read with section 12(1)(b), of the Copyright Act 98 of 1978 for the exclusive purposes of criticism and review of a work.

It is a fact of life that attempts have been made in certain other countries to usurp control of the term or mark ROOIBOS, despite the fact that it is a well-known South African description for a particular plant which gives rise to ROOIBOS tea. The term ROOIBOS is as typically South African as “braaivleis” and “biltong”. It is really part of our South African heritage. The South African authorities have nonetheless taken no concrete or effective steps to protect and control the use of this term in South Africa or elsewhere.

Probably the first attempt to hijack ROOIBOS in another country took place in America roughly ten years ago. After protracted legal battles, South African interests prevailed and registrations of the term for tea products in the United States held by local traders were cleared away. A similar episode is now taking place in France. This was reported in the Sunday Times of 3 February 2013. Application has been made by a French company to register ROOIBOS as a trade mark in respect of beverages in France, and thereby to secure a monopoly in its use, and we are about to have a replay of the American episode.

As pointed out the Sunday Times article, the French attitude to South African objections to the registration of the term ROOIBOS by a local French trader is that such objections must be based on the existence of protection for the term in South Africa, and that without having local South African protection, objectors do not have a leg to stand on. Alas there is currently no such protection in place in South Africa and it is manifest that the South African authorities have been beating about the bush for at least the past ten years and have failed to secure protection for ROOIBOS in its own back yard. The French attitude is reasonable because the World Trade Organisation’s TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property) clearly specifies that a country cannot claim that a so-called “Geographical Indication” (“GI”) (which ROOIBOS is in the international context) is entitled to international protection unless the term is protected in the home country. South Africa is a member of this agreement and the Government is well aware of its terms. The fact that we on occasions pay lip services to the agreement is beside the point.

According to the Sunday Times article, the South African Rooibos Council (SARC) has applied to register ROOIBOS as a Certification Mark under the South African Trade Marks Act, which registration is intended to serve as the basis for international protection granted to GI’s. The article rightly says that it is complex and time consuming process to obtain a Certification Mark registration and it requires a body of rules to be established regulating the circumstances and conditions subject to which the mark can be used. Sunday Times describes this process as a “legal quagmire”.

While it is correct that the Trade Marks Act makes provision for the registration of Certification Marks and Collective Marks, it is doubtful whether either of these facilities are appropriate in the case of ROOIBOS. A Certification Mark is a mark which is capable of distinguishing goods certified by one person in respect of various characteristics (including geographical origin) from other uncertified goods. A Collective Mark is a mark capable of distinguishing the goods of persons who are members of an association from the goods of persons who are not members thereof. Both of these types of marks must, however, meet the criterion of having distinctiveness, which is laid down for registration of any form of trade mark under the Trade Marks Act. While the expert authorities concede that, in the case of a Service Mark or a Collective Mark, the criterion of distinctiveness will not be as strictly applied as would be the case in respect of a conventional trade mark, the fact remains that both Certification and Collective Marks are required to be distinctive in order to be registrable.

While the principle of “distinctiveness” under Trade Mark Law is a complex one and many court cases have been fought on it, the basic departure point is that a mark which is purely descriptive in respect of the goods for which it is used cannot be distinctive. For instance, the word BREAD cannot be registered as a trade mark in respect of bread. That term is incapable of identifying and distinguishing one baker’s product from the equivalent products made by others. Moreover, an ordinary descriptive word in one language cannot be registered in another language which is commonly known is South Africa.

The word “Rooibos” is defined in the Concise Oxford Dictionary (note the English Dictionary!) to mean “an evergreen shrub of the genus Aspalathus with leaves used to make tea; a shrub or small tree, Combretum apiculatum, with spikes of centred yellow flowers”. A search for “Rooibos” using the Google search engine, brings up similar information. In other words, the word “Rooibos” is considered to be part of the English language and it is entirely descriptive of the very product to which the term is applied in trade. This situation brings to mind a recent case in which the court held that the word “lotto”, although commonly accepted in South Africa to designate the State Lottery, being an ordinary dictionary word in the English language, was not registerable as a trade mark in respect of a lottery. While it is true that a descriptive term can acquire distinctiveness through extensive use, it is open to some doubt as to whether a generally accepted generic term can be said to be distinctive, in the trade mark sense, of the goods to which it is applied, namely, in this instance, “rooibos” for tea.

However, despair not! A solution is at hand. Section 15 of the Merchandise Marks Act, 1941, provides that the Minister of Trade and Industry may, after such investigations deemed appropriate, by notice in the Government Gazette, prohibit either absolutely or conditionally, the use of any mark, word and the like in connection with any trade, trade mark, mark or trade description applied to goods. The provision has been used in the past to protect marks such as the WINGED SPRINGBOK of South African Airways, SABC/SAUK, various markings used in connection with Dutch cheese, UNICEF, the OLYMPIC SYMBOL, and various FIFA marks used in relation to the World Cup. This provision is eminently suitable for granting appropriate protection to ROOIBOS. Unlike the Trade Marks Act, the Merchandise Marks Act does not require a mark to be distinctive in order to enjoy protection and no formalities, conditions, rules for use, etc must be provided in order to secure the protection. The Minister can simply publish a notice in the Government Gazette, as has been done in numerous instances in the past, prohibiting the use of ROOIBOS in relation to beverages unless they comply with the generic description mentioned previously and are produced in South Africa. This is a simple and effective means of protection which can be obtained within a matter of a couple of months and with the minimum of fuss and bother.

One cannot believe that the Minister of Trade and Industry would have any objection to granting protection under the Merchandise Marks Act to ROOIBOS, an item of national heritage, when he has been prepared to grant this protection in the instances previously mentioned and, most pertinently, in connection with Dutch cheese.

This solution which is being advanced is not a new one, indeed, it was suggested to the DTI around ten years ago at the time of the American saga. However, as is unfortunately invariably the case, the DTI is generally not receptive to any suggestions or advice coming from the specialist intellectual property community in South Africa, no matter how sensible and well-intended they may be.

Really, it is time for the Government to stop beating about the ROOIBOS and to take prompt steps to achieve protection for this item of national heritage and to bring about much needed service delivery in this area, thus paving the way for important international protection for ROOIBOS as a GI.

The DTI commented to the Sunday Times that the so-called “Traditional Knowledge Bill”, once it is passed (oh woeful day!) will provide protection for GI’s. It is true that the Bill purports to grant such protection, through registration under the Trade Marks Act, but once again the Government is not seeing the wood for the trees because, as has been pointed out ad nauseam by the specialist intellectual property community, any registration under the Trade Marks Act must comply with the basic principles of Trade Mark Law and so the requirement of “distinctiveness” will apply, which brings us back to square one. This is yet another illustration of just how ill-conceived and inoperative the Traditional Knowledge Bill is. The Government’s obsession with the Traditional Knowledge Bill and its refusal to heed the criticism and advice of the specialist intellectual property community in regard to it is unfortunately a case of “none so deaf as those who will not hear”.

The solution to the problem of protecting the term ROOIBOS is straightforward and at hand and all that is required is for the government to shake off its prejudice and inertia and do the necessary. It is a travesty that it has not already long since done so.

Prof Owen Dean

Professor Owen Dean’s much anticipated book, “Awaking the Lion – The case of The Lion Sleeps Tonight” has been published by Tafelberg Publishers. It takes the form of a so-called “short” book and is only available electronically as an e-book from Amazon, Kobo, Kalahari and Leisure Books.

The book tells the story behind the story of a copyright saga that made international headlines, and gives Prof Dean’s first-person account of the pioneering and proudly South African case that made legal history. It deals with the saga of the song, Mbube, which later became the world-renowned song The Lion Sleeps Tonight.

After Solomon Linda, a struggling South African musician, composed the work he signed away his rights. In this book, Prof Dean, copyright expert and counsel for the Linda family, tells the gripping story of the battle for reparation for the impoverished Linda family against international entertainment giant Walt Disney and others more than 50 years after Linda’s death. This is a legal thriller with a happy ending and a truly South African flavour. It is a must read for students, academics and laymen alike.

The format of a Tafelberg short book requires the author to have his say within the confines of 10 000 to 12 000 words. As a colleague of Prof Dean and a fellow of his Chair of Intellectual Property Law, I had the benefit of having access to all the documentation and the full court record comprised in The Lion Sleeps Tonight case. This documentation is voluminous (to say the least) and encompasses about one thousand pages.

It is no mean feat to digest such a volume of information and material and to do proper justice to it in a work of 12 000 words and, moreover, at the same time deal with the inside story of what went on behind the scenes in preparing and conducting the litigation.

Prof Dean has acquitted himself of his task admirably and has presented a lucid and interesting account of this exceedingly complex subject matter in a manner which makes for easy reading and understanding. He has certainly succeeded in condensing and summarising large bodies of information in a few short sentences or paragraphs without detracting from the comprehensive nature and flow of the narrative or stripping the facts of its particular nuances. I mention a few notable examples.

The factual history, which gave rise to the case, is sufficiently outlined in approximately 2 pages of the book. By contrast, the article published in Rolling Stone Magazine by Rian Malan (which was the spark which ignited the case) covered the same ground, and yet it comprised some 39 pages. To read the full text of Malan’s article, republished by ColdType Modern Classics, click here. Similarly, the BBC World Service radio program “Greatest Hits Of The World – Part 2” which covered the same story, took up 18 minutes of narration. To listen to the Podcast of this program click here.
The author outlines the legal basis of the Linda Estate’s claim against Walt Disney in but two pages. The Particulars of Claim used in the court action instituted against Walt Disney and the other Defendants required 21 pages. Full text of the particulars of claim is available here.
The author’s summation of the court’s judgement in the counter-application brought before the court by Walt Disney took up 3 paragraphs, while the court’s judgement [click here] comprised 5 pages.
The author’s analysis of the retrospective operation of the Copyright Act, 1978 in relation to the ownership of the copyright in works made prior to 1979, and of Section 5(2) of the Imperial Copyright Act, which made provision for the all-important reversion or interest in copyright, took up a few paragraphs. His doctoral thesis entitled “The Application of the Copyright Act, 1978, to works made prior to 1979” which dealt with this issue consists of 445 pages. The full text is available here.
The evolution of the song Mbube through Wimoweh into The Lion Sleeps Tonight, with each subsequent version being a reproduction of a substantial part of the preceding version giving rise to copyright infringement, is dealt with in one paragraph, almost in passing. However, making this factual judgement and outlining the considerations that led to the aforementioned conclusion would ordinarily require many pages of dense legal text. In fact, the original legal opinion written at the time (by Prof Dean for Gallo Music) outlining these facts comprised 37 pages and could comfortably give rise to a discussion covering many more pages. To read the opinion click here. Listening to the three versions of the song and comparing them best illustrate this point. To listen to:
- “Mbube” originally recorded by Gallo Records as performed by Solomon Linda and “The Evening Birds”, click here.
- “Wimoweh” by Pete Seeger and “The Weavers”, click here.
- “The Lion Sleeps Tonight” by Hugo Peretti, Luigi Creatore and performed by Anita Darian and “The Tokens” with English words by George David Weiss, click here.
To this analysis can be added an appraisal of the version of The Lion Sleeps Tonight performed by the 1997 Broadway Cast for the musical “The Lion King” [click here], which was later used in the Walt Disney Film by the same name.

Solomon Linda (left) and the members of “The Evening Birds”

In short, it is to the author’s credit that he was able to deliver his message in around 30 pages, whereas a book of around 250 pages would have not been amiss and would have given him the freedom to give full expression to the story. The book is but the tip of the iceberg of the story of “The Lion Sleeps Tonight” case. Furthermore, the author should be commended for the level of care and effort invested in this book to make it accessible and particularly entertaining reading for everyone regardless of their interest in, or knowledge of, law or intellectual property.

Despite Prof Dean’s close contact with the impoverished and demoralised Linda family before and throughout the legal proceedings (which spanned several years), his portrayal of the family is succinct and objective. He paints a portrait of Solomon Linda’s musical career at the height of the Sofiatown era in Johannesburg that is similarly restrained yet accurate and fitting within the context of the narrative. Indeed, Solomon Linda’s socio-economic circumstances are graphically represented by a photograph of him, together with his group, “The Evening Birds”. His description of the press conference given after the successful conclusion of the case, and the impact that it made on the world at large, is similarly understated. Indeed, Prof Dean’s humility is present throughout the book to such an extent that it is only noticeable to those who are familiar with the events of the case. A more accurate picture is obtained by perusing the text of the press statement which was released at the time, together with some of the (many) newspaper articles which appeared at the time [click here]. The reaction of the Linda sisters to the outcome of the litigation is illustrated in the annexed photograph of them, together with Hanro Friedrich (the family attorney) taken at the time of the conclusion of the case. This evokes the author’s concluding sentence to the effect that the family and other victors in the case ought to live happily ever after.

The surviving Linda family with Hanro Friedrich (middle front).

The book has been described as a fascinating and heart-warming story. This it certainly is. However, while it cannot really be classified as legal literature, it is a worthwhile supplement to the author’s legal writings on the subject of The Lion Sleeps Tonight case, not in the least his discussion of it contained in his “Handbook of South African Copyright Law”. It brings a human dimension to his academic legal analysis of the case and is thus a worthwhile supplement to his substantial oeuvre of legal literature.

Cobus Jooste

COPYRIGHT NOTICE:

This review article contains photographs and links to sound recordings, public documents of record, other articles and newspaper clippings. Copyright in this material belongs to the individual authors/creators of the respective works or the assigned copyright owners. It is reproduced or referred to here in terms of sections 18 and 19, read with section 12(1)(b), of the Copyright Act 98 of 1978 for the exclusive purposes of criticism and review of a work.

EDITORS NOTE:

The eBook is sold for between ZA R25.00 and R35.00, available here:

The CIP is proud to announce the publication of Prof Dean’s latest book, “Awakening The Lion – The Case of The Lion Sleeps Tonight” by Tafelberg Publishers.

This book tells the story behind the story of a copyright saga that made international headlines and features Prof Dean’s first-person account of the pioneering and proudly South African case that made legal history.

Prof Dean is the incumbent of the Chair of Intellectual Property

Background: After Solomon Linda, a struggling South African musician, composed what became the world-renowned song The Lion Sleeps Tonight (originally called Mbube), Linda signed away his rights. In this book Prof Owen Dean, copyright expert and counsel for the Linda family, tells the gripping story of the battle for reparation for the impoverished Linda family against international entertainment giant Walt Disney and others more than 50 years after Linda’s death. This is a legal thriller with a happy ending and a truly South African flavour. A must-read for students, academics and laymen alike.

The ebook (R25.95) is now available from Amazon, Kobo, Kalahari.com and Leisure Books.

The full text is also available here.

A multi-media illustrated book review of this publication is available here.

INTRODUCTION

As will be apparent from perusing the articles posted on this blog indicated by the keywords “traditional knowledge”, The Vine Oracle has been forthright in its criticism and condemnation of the Department of Trade and Industry’s Intellectual Property Laws Amendment Bill which seeks to introduce a special form of protection for so-called “traditional knowledge” into each of the Trade Marks, Copyright, Designs and Performance Protection Acts (the Bill is commonly known as the “Traditional Knowledge Bill”). The Vine Oracle has been the proponent of the viewpoint that, if some form of special protection for traditional knowledge is required, this should be provided in a sui generis statute which is customised to meet the requirements and characteristics of the subject matter sought to be protected. The desired type of protection cannot be achieved by amending the aforementioned intellectual property statutes, without doing serious damage to the basic tenets of such statutes, because specialised protection for traditional knowledge is not compatible with the fundamental principles of intellectual property law as embodied in these statutes and the desired objective is incapable of being achieved for this reason. The Vine Oracle has gone as far as formulating a draft sui generis bill, which can be found by perusing its earlier article entitled “NEW Traditional Knowledge Bill – Sui Generis Protection For TK.”

INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY

One of the foremost non-governmental expert intellectual property institutions is The International Association for the Protection of Intellectual Property (AIPPI). It describes itself on its website as “The world’s leading international organisation dedicated to the development and improvement of the regimes for the protection of intellectual property. It is a politically neutral, non-profit organisation, domiciled in Switzerland which currently has almost 9 000 members representing more than 100 countries. The objective of AIPPI is to improve and promote the protection of intellectual property on both an international and national basis. It pursues its objective by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to intellectual property.”

The AIPPI dates from 1897 and its membership includes lawyers, patent attorneys, judges, scientists, engineers and academics. It is generally regarded as one of the most authoritative voices on matters pertaining to intellectual property and is held in high regard by the World Intellectual Property Organisation (WIPO).

The AIPPI recently held its 43rd World Intellectual Property Congress in Seoul, Republic of Korea, from 20 to 23 October 2012. One of the Working Sessions at the congress was devoted to the question of “The relevance of traditional knowledge to intellectual property law”.

GAUGING INTERNATIONAL OPINION

Given its interest in, and criticism and condemnation of, the Traditional Knowledge Bill, The Vine Oracle decided to participate in the congress in Seoul with a view to doing some soul searching (not to be confused with exploring the city) in regard to its attitude towards the Traditional Knowledge Bill and the issue of traditional knowledge in general. The question which arose with The Vine Oracle was whether it was being unfair in its attitude towards the Bill and whether its views were in or out of harmony with the international thinking on the question of the relationship between intellectual property and special protection for traditional knowledge. The Vine Oracle consequently attended the congress and took part in the discussions and deliberations concerning the relevance of traditional knowledge to intellectual property law.

It transpired that many of the delegates participating in the TK discussions were familiar with the South African Traditional Knowledge Bill and had a very low estimation of it, even holding it out to ridicule! It was a source of some embarrassment to The Vine Oracle to be seen as the representative of a country that had spawned what was perceived to be such poor legislation. The Traditional Knowledge Bill was held up as an example of how not to go about providing for specialised protection or traditional knowledge, and more particularly expressions of folk law which is, of course, what the Bill is really about. To this extent, The Vine Oracle found that its own views were not only shared by the meeting, but indeed even stronger criticism of the Bill than that offered by The Vine Oracle was expressed.

ADOPTION OF RESOLUTION

The purpose of the working session was to prepare a resolution for adoption by the congress reflecting the view of the AIPPI as an organisation on the issue of traditional knowledge.

The workshop duly formulated and prepared a resolution which was adopted at a plenary session of the congress. The resolution thus reflects the official view of the organisation and the collective view of its 100 or so national groups. These national groups reflect a microcosm of the international community and they include many developing, and developed, countries which have a rich heritage of traditional knowledge. They range from South American to European and Oriental countries. Countries, like South Africa, having a western culture as well as an indigenous culture (e.g. Canada, New Zealand, Peru, Australia, India and the like) formed an important component of the group.

The full text of the resolution as adopted is available here. The product of all the Working Committees, the summary reports, resolutions and group reports per nation is available here and here.

The main thrust of the resolution was to arrive at a harmonised definition of the term “traditional knowledge” with a view to achieving a harmonised international approach to the protection of traditional knowledge.

As a precursor to the congress, the various national groups had been asked to express their views on the manner in which traditional knowledge should be protected. The majority of the groups considered that so-called “defensive protection” of traditional knowledge is in principle desirable but there was no majority in favour of so- called “positive protection”. The draft resolution was prepared taking these considerations into account.

SPECTRUM OF VIEWS

In general, views on the nature and extent of protection for traditional knowledge cover a wide spectrum. On the “left wing” of the spectrum are those who take the view that existing intellectual property law gives adequate protection, to the degree warranted, to traditional knowledge and therefore that no special protection is required; moving towards the centre, there are those who hold the view that the existing laws are adequate, but that provision should be made to ensure that where rights are claimed in property by a third party (for instance by registering a patent or design), the rights of traditional communities to continue using their TK undisturbed should be entrenched – this is the so called “defensive protection” of traditional knowledge; moving away from the centre, towards the “right wing” of the spectrum, there are those who believe that some form of special protection for traditional knowledge – so called “positive protection” – may be appropriate, but such protection should be granted in customised or sui generis legislation; finally, on the far “right wing” are those who favour amending existing intellectual property laws so as to grant special protection for traditional knowledge (the South African government is the only known proponent of this view).

It became abundantly clear from the discussions that by far the majority of the delegates were of a left wing persuasion favouring no special protection for traditional knowledge, save perhaps for protection of a defensive nature. There were few supporters of the right wing approach of adopting sui generis legislation, while no-one subscribed to the far right wing position of amending existing IP legislation to cater specially for traditional knowledge. Needless to say, The Vine Oracle did not offer any support for the far right wing view and inclined towards the majority view. WIPO is, of course, sponsoring the sui generis legislation approach and this factor was given due recognition by the meeting.

In addition to adopting a harmonised definition of traditional knowledge, the resolution provided that harmonised treatment of TK internationally is to be encouraged, that legal certainty is desirable, protection for TK should be aligned with the principles of existing IP systems, and that this may be achieved by way of sui generis treatment. Finally the organisation resolved that defensive protection of TK is to be encouraged and that the specifics of this should be the subject of further study.

CONCLUSION

The message that came through loud and clear from the congress was that the mainstream of international opinion on the subject of traditional knowledge is that nothing more than defensive protection is required and that, if it is desired to go further than this, special protection should be provided for in sui generis legislation. In the final analysis, it became clear to The Vine Oracle that the view which it holds, and has been propounding, is in keeping with international thinking on the subject and, if anything, it inclines towards a somewhat right wing approach by international standards. Its viewpoint that the South African government’s approach to the protection of traditional knowledge is way out of line and is untenable is a generally prevailing one. The far right wing view is supported by no-one and, on the contrary, is simply dismissed. The Vine Oracle is therefore content in the knowledge that its criticism and rejection of the Traditional Knowledge Bill is reasonable and is in harmony with the general informed international view. There is thus every justification for attempting to apply the brakes to the runaway train being driven by the Department of Trade and Industry.

Owen Dean

Introduction

Because intellectual property rights are territorial in nature (i.e. they have to be recognised by the country in which protection is sought), since the expansion of cross-border trade in the 19^th century, authors, creators, designers, inventors and traders have sought similar protection in other countries to that which they enjoy in their domestic legal systems, or, at least, be afforded the protection enjoyed by nationals of the foreign country. This need initially gave rise to a number of bilateral agreements, and then multilateral treaties or conventions.

These treaties or conventions can be broadly classified as falling into three kinds (or a combination of these), depending on what is sought to be achieved. First, they may require that signatories provide a minimum level of protection in terms of their domestic law, which should also extend to protecting the interests of foreigners. This latter requirement is the principle of “national treatment,” which requires that foreigners be afforded the same protection as nationals of the relevant state. The problem, however, is that national law often requires registration before any rights are afforded to a person, which places a considerable burden on authors, creators, designers, inventors and traders in securing registration in the various countries. The second kind of multilateral treaty or convention is thus concerned with facilitating the registration process in multiple jurisdictions. An example of such a centralised registration system is the African Regional Intellectual Property Organisation (ARIPO), which provides for patent and trade mark registrations in multiple jurisdictions pursuant to the Harare (1982) and Banjul Protocols, respectively. The last kind of multilateral treaty seeks to go even further, and aims to harmonise the laws of the signatories to the treaty, as well as providing for a common registration system. Examples of this approach are the African Intellectual Property Organisation (known by its French acronym OAPI), comprising 16 West African states, established under the Bangui Agreement of 1977, and the European Union’s Trademark Directive (and the Community Trade Mark Regulation).

Proposed establishment of PAIPO

At the forthcoming meeting of African Union (AU) science and technology ministers on 12-16 November in Brazzaville, Democratic Republic of Congo, one of the matters for consideration will be the Final Draft Statute of the Pan-African Intellectual Property Organization, produced by the AU’s Scientific, Technical and Research Commission (the “Draft Statute”). The Draft Statute seeks to establish the Pan-African Intellectual Property Organization (PAIPO), a specialised agency of the AU tasked with matters concerning intellectual property in Africa (Article 2).

According to the Draft Statute, PAIPO’s stated objectives (Article 5) include: the promotion of harmonisation of intellectual property laws of its member states, with membership being restricted to the members of the AU; to provide for common administration and management services of intellectual property; and, to provide a vehicle for addressing political issues and developing African common positions relating to intellectual property matters. Thus, among PAIPO’s main goals is to harmonise intellectual property laws and to provide a centralised registration system to facilitate registration, building on existing institutions like ARIPO.

Other than being the constitutive document for PAIPO, the Draft Statute provides no details (not even by way of a separate explanatory memorandum) on the substantive legal requirements and principles for the proposed basis of harmonisation of the different forms of intellectual property.

PAIPO and its critics

Critics have been quick to condemn the PAIPO initiative, claiming that it panders to the demands of foreign intellectual property rightsholders (by seeking to adopt “first-world” standards of protection), and that it fails to adequately appreciate, or address, the needs of the least-developed countries in Africa, particular in the area of providing affordable healthcare. For example, they require that the Draft Statute expressly include among its goals the utilisation of the rights afforded by TRIPS to promote access to affordable medicines, educational resources, and other public goods. A petition has been circulated to oppose the adoption of the Draft Statute and the establishment of PAIPO on the basis proposed.

In my opinion, unless there is a subtext which I have been oblivious to, or a particular context out of which this initiative was born (or is being driven), the text of the Draft Statute does not support a clear basis for such criticism. For example, among the stated objectives of PAIPO is to maximise the benefits of the intellectual property system to improve public health. I too could, for example, become easily exercised about the potential inclusion of traditional knowledge within the intellectual property framework (which is a stated objective), but because the Draft Statute is so thin on detail, it is something which I would prefer to address when more concrete proposals are made in this regard. Having said that, the lack of consultation and transparency in the process leading up to the production (and potential adoption) of the Draft Statute is something that should be condemned. Intellectual property has become a highly politicised issue, and it is imperative that there be an inclusive and transparent process when initiatives of this nature are embarked upon.

My principal concern at this point in time is of a more pragmatic nature. One has to question the wisdom of trying to establish an African centralised registration system. Would the resources which are to be spent in such an endeavour not be better utilised in ensuring that the intellectual property registries and laws of the various African states are improved in order for them to participate in existing international registration systems such as the Madrid Agreement and Protocol, administered by WIPO, for trade marks? There is no cogent argument for proliferating registration systems, and for focusing on, comparatively, parochial initiatives in an era of ever-expanding cross-border trade.

The fact that I spent about 20 minutes on the African Union’s website attempting to find the Draft Statute (and failed to locate it via that route), and that the ARIPO website was unavailable when I attempted to access it, convinces me that this is an ill-conceived initiative, built on structures that have proven to be dysfunctional (and largely ignored), and, therefore, unsuited to warrant the extra resources which would be dedicated to them.

Sadulla Karjiker

Australia is notorious for being a country plagued by rampant bush fires. Over the years, valuable agricultural land, forestry, residential areas and even towns have been threatened or wiped out by uncontrollable bush fires. These bush fires have given rise to considerable damage and even loss of life. It is perhaps therefore not surprising that Australians should have a pathological fear of fire imbued in their psyches. There is an involuntary will to fight fire whenever smoke appears.

In a fresh desire to eradicate smoke by stamping out fire, the Australian government has reached a conclusion that trade marks or brands, and in particular brands for tobacco products, are a fire causing smoke and therefore should be attacked with vigour. While it is trite that there is no smoke without fire, it is as yet unproven that tobacco advertising or tobacco branding on cigarette packs actually causes or encourages smoking. Undaunted, however, the Australian government has seen red in tobacco brands and is determined to stamp them out. It has therefore adopted legislation banning advertising of cigarette brands and, even further reaching, preventing brands from being featured on cigarette packs as sold in Australia.

As reported in an earlier article on this blog under the title “Trade Marks Going Up in Smoke” a group of the major international tobacco companies brought litigation before the Australian court to have the legislation declared unconstitutional. The Australian court has now given its decision in this litigation and has dismissed the case brought by the tobacco companies and held that the legislation does not conflict with the Australian constitution.

In our earlier article, “Trade Marks Going Up in Smoke,” the Vine Oracle expressed the view that, if the South African government were to pass legislation preventing the use of tobacco trade marks, it too would be acting unconstitutionally as such legislation would contravene Section 25 (the so called “property clause”) of the South African constitution.

The question now arises whether, assuming that the decision of the Australian court is not reversed on appeal, it would constitute good authority for the proposition that the South African court should hold against a claim that legislation preventing the use of tobacco trade marks would impinge against the South African constitution. This is not an idle or academic question because the South African government has now publically announced its intention of following the Australian lead and will compel tobacco companies to use plain packaging for their tobacco products and to refrain from using any form of branding on those products. In fact, the government proposes to go further and to introduce pictorials which illustrate the alleged health consequences of tobacco products on cigarette packs in lieu of branding.

The High Court of Australia has rendered its decision in the litigation but has not as yet published its reasons for that decision. It is expected that the reasons for the decision will be made available later this year. Accordingly, a proper analysis of the Court’s decision is not possible as this stage, but it is probably fair to assume that the court rejected the arguments advanced by the tobacco companies and upheld the counter-arguments advanced by the Australian government in support of the legislation. The arguments advanced for and against in the litigation will be briefly summarised below.

Section 51 (xxxi) of the Australian constitution states that the Australian parliament has the powers to make laws with respect to “the acquisition of property on just terms from any state or person for any purpose in respect of which parliament has power to make laws”. The tobacco companies argued that depriving them of the use of their trade marks in relation to tobacco products amounts essentially to an acquisition of those trade marks by the state, as a form of property, on terms that were not “just” since no compensation was offered to the tobacco companies for the loss of their property. The Australian government replied to this argument by saying that it does not intend to acquire or expropriate any of the tobacco companies property rights, it is merely curtailing those rights; the ownership of the trade marks is not changing hands. The counter to this on the part of the tobacco companies was that “the Commonwealth and other persons will receive a substantial part of the benefit that inured to the Plaintiffs as the owner of that property, amounting to some identifiable benefit or advantage relating to the ownership or use of property”.

The relevant provision of the Australian constitution is echoed to some extent in the Bill of Rights which is comprised in the South African Constitution. There is, however, a significant difference in the approach and meaning of the South African section.

Section 25 of the Constitution provides that no-one may be deprived of property except in terms of the law of general application, and no law may permit arbitrary deprivation of property. Property may be expropriated only in terms of the law of general application, provided that the expropriation is for a public purpose or in the public interest and subject to the payment of compensation, the amount of which must be agreed between the parties or decided or approved by a court. The amount of the compensation must be just and equitable.

Whereas the emphasis in the Australian provision is on the state acquiring property from another party, the South African section deals with the deprivation of property from a party. It may be correct to argue that the Australian government did not acquire the ownership of the relevant tobacco trade marks by preventing their use, but that is not to say it did not deprive the tobacco companies of that property. The acquisition of property requires a passing of ownership from the erstwhile owner to the state (as was correctly pointed out by the Australian government in their defence) but deprivation of property is a different matter. The state can deprive a trade mark proprietor of his trade marks either by assuming ownership of them or by destroying them. This latter factor marks the difference between the Australian provision and the South African provision. It is a very important and significant difference, especially in the present context.

As was argued in our previous article “Trade Marks Going Up in Smoke,” by preventing registered trade marks from being used for a period of 5 years or longer, those trade marks become liable to cancellation on the grounds of non-use and thus can be destroyed or obliterated. The action of the South African government in preventing tobacco trade marks from being used thus sets up and commences a chain of circumstances which will lead to the destruction of the trade marks and to their deprivation from the tobacco companies which own them.

In consequence, the Vine Oracle opines that the decision of the Australian court, even if shown ultimately to be correct under Australian law, has no persuasive value in South Africa by virtue of the important difference between the corresponding provisions of the Australian constitution and the South African constitution, as described above. Any challenge to the South African legislation preventing tobacco companies from using their brands in relation to cigarettes will have to be evaluated in terms of the South African constitution.

It is the Vine Oracle’s view that preventing the use of tobacco trade marks will indeed amount to a deprivation of property owned by the tobacco companies and the constitution requires that it must be accompanied by just and equitable compensation to the tobacco company. It is therefore necessary for the legislation banning the use of tobacco brands to make provision for the payment of reasonable compensation to the brand owners for it to be constitutionally valid. The value of all the trade marks registered in South Africa in relation to tobacco products will undoubtedly amount to many billions of rand and it will be interesting to see whether the government has the courage of its convictions to ban the use of tobacco trade marks in these circumstances. With respect, funds of that magnitude can be better spent on the social upliftment of the South African population, particularly previously disadvantaged persons. Indeed, if the government is steadfast in its belief that it is in the public interest that cigarette smoking should be prevented, it should grasp the nettle and make this practice unlawful rather than seek to achieve its goalby indirect methods of questionable effectiveness and propriety.

Prof Owen Dean

The South African government has created a new tradition in drafting and processing legislation through Parliament. This tradition manifests itself in the drafting of half-baked legislation with little or no regard to the provisions of the Constitution and then fighting a huge public outcry against the legislation on the grounds that it is unconstitutional. In some instances the government then concedes that aspects of the legislation are unconstitutional and it seeks to undertake the revision of that legislation on the floor of Parliament in an attempt to circumvent the claims of unconstitutionality. In many, if not all, cases, the problems are not completely removed and give rise to the possibility of the legislation becoming the subject of litigation before the Constitutional Court at enormous cost to all parties concerned, including, and most of all, to the South African tax payer. This tradition of legislating is not welcome. By and large the government adopts the departure point that it is the fountain of all knowledge on what is constitutional and what is not and pooh poohs the views of independent experts..

Glaring examples of this new tradition in legislating are the Protection of State Information Bill (the so-called “Secrecy Bill”), the Traditional Courts Bill, and the Intellectual Property Laws Amendment Bill (referred to as the “Traditional Knowledge Bill”). There has been much debate in Parliament and in the media about these bills and their constitutional transgressions.

It seems that in the case of all three of the mentioned bills, the government appears to have another or second agenda. It is widely believed that a principal objective of the Secrecy Bill is to silence media comment and criticism of actions and circumstances which do not stand up well to public scrutiny. In the case of the Traditional Courts Bill and the Traditional Knowledge Bill, the objective of the government appears to be to ingratiate itself with traditional leaders and peoples living in rural circumstances. The forthcoming elections for the leadership of the ANC and the parliamentary elections in 2014 may be in the background of this objective.

The Traditional Courts Bill and the Traditional Knowledge Bill have in common that their effects will be to place traditional leaders and rural peoples in a favoured position and one which is at variance with the normal laws which apply to the remainder of the population in their fields of application. In so doing, they ride rough shod over individual rights which are protected in the Constitution. There can be little doubt that these two bills in their present form are at variance with the Constitution and ought to be struck out by the Constitutional Court if they come before it. In both instances there have been strong pleas from interested and knowledgeable parties that the bills should either be abolished or radically redrafted so as to rid them of their iniquities. In the case of the Traditional Courts Bill, Parliament is still grappling with this dichotomy. On the other hand, in the case of the Traditional Knowledge Bill, Parliament went ahead regardless, and spurning informed comment, passed the bill last year. Thereupon it proceeded to the State President for signature and assent. The shortcomings of the Traditional Knowledge Bill and its harmful effect on intellectual property law were discussed in an earlier article on this blog under the title “Mad Hatter in Wonderland”.

To his credit, the State President has perhaps paid greater heed to the serious objections voiced against the Traditional Knowledge Bill and it has now been announced that he has declined to assent to it and has referred it back to Parliament. This development is as welcome as it is unexpected.

The official notification issued by the Government in regard to this development states that the bill has been sent back to Parliament on the following grounds:

“(i) The Bill ought to have been referred to the National House of Traditional Leaders as required in terms of Section 16 of the Traditional Leadership and Governance Framework Act, 2003.

(ii) The provisions of the Bill will affect certain matters listed in Schedule 4 of the Constitution (which are not necessarily the main subject matter of the Bill), in particular, traditional leadership and cultural matters, and should therefore be dealt with in terms of Section 76 of the Constitution.”

President Zuma is quoted as saying in this regard, “I have considered the Bill, the submissions and the legal opinion on the matter. I am of the view that the Bill as it is now cannot be constitutional”.

One cannot but question why Parliament, and in particular the Trade and Industry Portfolio Community, to whom these arguments and others castigating the Bill on its merits were advanced ad nauseam by a multitude of different parties, could not have reached the same (correct) conclusion. With respect, the Trade and Industry Portfolio Committee (with the notable exception of those members representing opposition parties) displayed an inability and/or unwillingness to give proper attention and weight to the comments and objections to the Traditional Knowledge Bill which were placed before it and it displayed arrogance in dismissing out of hand the clamour of critical views expressed to it by acknowledged experts in the field of the intellectual property law (after all what do they know about the subject!).

When Parliament reconsiders the Traditional Knowledge Bill at the behest of the State President, it ought to subject the bill to a fundamental re-evaluation. It should be chastened by the vote of no confidence in it on this issue expressed by the State President. Furthermore, it should ask itself whether, now that the intellectual property legal experts have been shown to have been correct in their criticism of the Bill on constitutional issues, they might perhaps also be equally correct in their unequivocal condemnation of it on its substantive merits (it has variously been politely described inter alia as fundamentally flawed and as inoperable). Is there not a salient lesson to be learned from this episode, namely that in a highly technical and esoteric field, there is a lot to be said for paying due regard to the views of the experts? Above all, the government should give serious consideration as to whether the objectives of the Bill, both the stated and unstated ones, can remotely justify doing inestimable harm to intellectual property law in South Africa. In the long term, the harm done by the Bill to intellectual property law will greatly outweigh the perceived short-term benefits and expediencies of the Bill.

CIP – The Anton Mostert Chair of Intellectual Property

THIS EVENT IS NOW CLOSED.

COPYRIGHT NOTICE

COPYRIGHT NOTICE:

INTRODUCTION

INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY

GAUGING INTERNATIONAL OPINION

ADOPTION OF RESOLUTION

SPECTRUM OF VIEWS

CONCLUSION

Introduction

Proposed establishment of PAIPO

PAIPO and its critics

Prof Owen Dean

Prof Owen Dean

Latest Posts

Notice