STUDY GUIDE
LAW OF INTELLECTUAL
PROPERTY
LLB HONOURS
LPIP 3871
Centre for Open, Distance and eLearning
Materials Development and Instructional Design Department
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Acknowledgements
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LAW OF INTELLECTUAL PROPERTY
Contents
About this study guide
1
How this study guide is structured ................................................................................... 1
Course overview
3
Welcome to the LAW OF INTELLECTUAL PROPERTY Intellectual of Property LPIP
3871 .................................................................................................................................. 3
LAW OF INTELLECTUAL PROPERTY Intellectual of Property LPIP 3871—is this
course for you? ................................................................................................................. 3
Exit Learning Outcomes ................................................................................................... 3
Time frame ....................................................................................................................... 3
Study skills ....................................................................................................................... 4
Need help? ........................................................................................................................ 5
Assignments ..................................................................................................................... 5
Assessments ...................................................................................................................... 5
Getting around this study guide
5
Margin icons ..................................................................................................................... 5
Unit 1
7
Introduction to Intellectual Property Law ........................................................................ 7
Introduction ............................................................................................................. 7
The definitional dimensions of Intellectual Property.............................................. 8
One product can have many intellectual property rights ...................................... 14
What is the importance of Intellectual Property education for students? ............. 15
Unit summary ................................................................................................................. 18
References ...................................................................................................................... 19
Unit 2
20
The History of Intellectual Property ............................................................................... 20
Introduction ........................................................................................................... 20
Intellectual property - a part of human history ..................................................... 21
The Territorial Period ........................................................................................... 23
The International Period ....................................................................................... 24
The Global Period ................................................................................................. 25
Post TRIPS era ...................................................................................................... 25
Unit summary ................................................................................................................. 26
References ...................................................................................................................... 26
Unit 3
27
Sources of Intellectual Property law in Namibia ............................................................ 27
Introduction ........................................................................................................... 27
National Instruments ............................................................................................. 28
Regional Instruments ............................................................................................ 31
International Instruments ...................................................................................... 32
Unit summary ................................................................................................................. 32
References ...................................................................................................................... 33
Unit 4
34
Copyright ........................................................................................................................ 34
Introduction ........................................................................................................... 34
Copyright Protection ............................................................................................. 35
Elements .......................................................................................................................... 36
Rights comprised in copyright ......................................................................................... 42
Neighboring Rights .......................................................................................................... 42
Limitation of Copyright Protection.................................................................................. 42
Copyright Infringement ........................................................................................ 43
Elements .......................................................................................................................... 43
Infringement of the copyright in a literary or musical work ............................................ 47
Computer programs and intellectual property ...................................................... 51
What happens when there is no protection? .................................................................... 51
History of Computer Programs (“CP”) protection .......................................................... 52
Patent Law and CP........................................................................................................... 52
Copyright law and CP ...................................................................................................... 52
International protection of copyrights.............................................................................. 53
Copy Rights and Neighbouring Rights Protection Act 6 Of 1994................................... 53
CP and Moral rights ......................................................................................................... 54
Industrial Property Act and CPs ...................................................................................... 55
File Sharing and Digital Right Management ........................................................ 55
Indirect (secondary) copyright liability ........................................................................... 55
File Sharing in Namibia ................................................................................................... 59
Digital Right Management(DRM) ................................................................................... 60
Exceptions to Copyright infringement .................................................................. 63
Unit summary ................................................................................................................. 64
References ...................................................................................................................... 65
Unit 5
66
Trademarks ..................................................................................................................... 66
Introduction ........................................................................................................... 66
Definition of a Trademark .................................................................................... 67
Elements of a Trademark ................................................................................................. 67
Trademark functions ........................................................................................................ 68
Who may apply for registration of a trademark? .................................................. 69
Registrable Trademarks ........................................................................................ 69
Limitation to Trademark Rights............................................................................ 70
Prohibition of registration: third party rights ................................................................... 71
Limitation to trademark rights ......................................................................................... 72
Trademark Infringement ....................................................................................... 73
Statutory Infringement ..................................................................................................... 73
Common Law Infringement............................................................................................. 74
Remedies for Trademark Infringement ................................................................. 74
Unit summary ................................................................................................................. 76
References ...................................................................................................................... 76
Unit 6
77
Industrial Designs ........................................................................................................... 77
Introduction ........................................................................................................... 77
What is an Industrial design? ................................................................................ 78
Registration of an ID ............................................................................................. 78
Limitations of rights .............................................................................................. 79
Acts of infringement ............................................................................................. 80
Unit summary ................................................................................................................. 81
References ...................................................................................................................... 82
Unit 7
82
Patents............................................................................................................................. 82
Introduction ........................................................................................................... 82
Justification for granting patent rights .................................................................. 84
Regulatory overview and historical context ......................................................... 85
International instruments ................................................................................................. 85
NATIONAL INSTRUMENTS ........................................................................................ 88
Industrial Property Act: Preliminaries .................................................................. 89
Priority Date (“PD”) ........................................................................................................ 89
Prior Art (“PA”) ............................................................................................................... 90
Patentability requirements .................................................................................... 92
Novelty ............................................................................................................................ 92
Inventiveness ................................................................................................................... 95
Utility ............................................................................................................................. 100
Patent monopoly ................................................................................................. 100
Who Can Apply for A Patent? ....................................................................................... 101
Ownership ...................................................................................................................... 101
Exclusive Rights of The Patentee .................................................................................. 102
Licensing ....................................................................................................................... 103
A.
Contractual licensing........................................................................................... 103
B.
Compulsory Licensing ........................................................................................ 103
Patent application procedure ............................................................................... 106
Patentable Inventions ..................................................................................................... 107
Patent right infringement .................................................................................... 110
Types of Infringement ................................................................................................... 110
Elements of Infringement .............................................................................................. 111
Unit summary ............................................................................................................... 111
References .................................................................................................................... 112
Unit 8
113
Unlawful Competition .................................................................................................. 113
Introduction ......................................................................................................... 113
Unlawful Competition ................................................................................................... 113
Unit summary ............................................................................................................... 122
References .................................................................................................................... 122
Unit 9
123
Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources ..... 123
Introduction ......................................................................................................... 123
Traditional knowledge ........................................................................................ 124
How to Provide Legal Protection to Traditional Knowledge?....................................... 124
IPRs in agriculture .............................................................................................. 128
IPRs and medicine .............................................................................................. 133
Unit summary ............................................................................................................... 134
References .................................................................................................................... 135
Unit 10
136
Protection of Geographical Indication Rights .............................................................. 136
Introduction ......................................................................................................... 136
What is a geographical indication? ..................................................................... 137
Geographical indication rights protection ........................................................... 139
Scope of protection ............................................................................................. 139
Unit summary ............................................................................................................... 140
References .................................................................................................................... 141
Unit 11
142
Questions and Short Answers ....................................................................................... 142
Introduction ......................................................................................................... 142
Copyrights ............................................................. Error! Bookmark not defined.
Trademarks ......................................................................................................... 145
Patents ................................................................................................................. 146
General ................................................................................................................ 146
LAW OF INTELLECTUAL PROPERTY
About this study guide
LAW OF INTELLECTUAL PROPERTY [LPIP 3871] has been produced
by the Materials Development and Instructional Design Department. All
study guides produced by the Materials Development and Instructional
Design Department are structured in the same way, as outlined below.
How this study guide is structured
The course overview
The course overview gives you a general introduction to the course.
Information contained in the course overview will help you determine:
▪ If the course is suitable for you.
▪ What you will already need to know.
▪ What you can expect from the course.
▪ How much time you will need to invest to complete the course.
The overview also provides guidance on:
▪ Study skills.
▪ Where to get help.
▪ Course assignments and assessments.
▪ Activity icons.
▪ Units.
We strongly recommend that you read the overview carefully before
starting your study.
The course content
The course is broken down into units. Each unit comprises:
▪ An introduction to the unit content.
▪ Unit outcomes.
▪ New terminology.
▪ Core content of the unit with a variety of learning activities.
▪ A unit summary.
▪ Assignments and/or assessments, as applicable.
▪ Answers to Assignment and/or assessment, as applicable
Resources
For those interested in learning more on this subject, we provide you with
a list of additional resources at the end of this study guide; these may be
books, articles or web sites.
Your comments
1
About this study guide
Introduction to Intellectual Property Law
After completing LAW OF INTELLECTUAL PROPERTY OF
INTELLECTUAL PROPERTY we would appreciate it if you would take
a few moments to give us your feedback on any aspect of this course. Your
feedback might include comments on:
▪ Course content and structure.
▪ Course reading materials and resources.
▪ Course assignments.
▪ Course assessments.
▪ Course duration.
▪ Course support (assigned tutors, technical help, etc.)
Your constructive feedback will help us to improve and enhance this
course.
2
Course overview
Welcome to the LAW OF INTELLECTUAL PROPERTY Intellectual of Property LPIP
3871
The course content will cover the following areas:
Meaning of intellectual property and its development; Categories of
intellectual property; Copyright; Trademarks and names; Registered
marks; Patents; Validity; Property rights and exploitation; Confidential
information and privacy; The international patent system and technology
transfer; Intellectual Property Rights and the International Transfer
System; Economic Development and Reform of the Patent System.
LAW OF INTELLECTUAL PROPERTY Intellectual of
Property LPIP 3871—is this course for you?
[Pre-requisite: Law of Property (LPPR 3630)]
Exit Learning Outcomes
Exit
Outcomes
The exit learning outcomes for this course are:
✓
Explain the concept of Intellectual Property and trace its
development;
✓
Identify the categories of Intellectual Property Rights;
✓
Describe the international IP system and its impact on national
Learning
law;
✓
Distinguish between the principles and laws governing the
different forms of intellectual property rights
✓
Analyse the potential impact of intellectual property rights
protection to economic development.
Time frame
4 hours per week for 14 weeks- 56 contact hours
Students require 30 hours’ formal study time
Students require 28 hours self-study time
How long?
3
Course overview
Sources of Intellectual Property law in Namibia
Study skills
As an adult learner your approach to learning will be different to that from
your school days: you will choose what you want to study, you will have
professional and/or personal motivation for doing so and you will most
likely be fitting your study activities around other professional or domestic
responsibilities.
Essentially you will be taking control of your learning environment. As a
consequence, you will need to consider performance issues related to time
management, goal setting, stress management, etc. Perhaps you will also
need to re-acquaint yourself in areas such as essay planning, coping with
exams and using the web as a learning resource.
Your most significant considerations will be time and space i.e. the time
you dedicate to your learning and the environment in which you engage in
that learning.
We recommend that you take time now—before starting your self-study—
to familiarize yourself with these issues. There are a number of excellent
resources on the web. A few suggested links are:
▪ http://www.how-to-study.com/
The “How to study” web site is dedicated to study skills resources. You
will find links to study preparation (a list of nine essentials for a good
study place), taking notes, strategies for reading textbooks, using
reference sources, test anxiety and so on.
▪ http://www.ucc.vt.edu/stdysk/stdyhlp.html
This is the web site of the Virginia Tech, Division of Student Affairs.
You will find links to time scheduling (including a “where does time
go?” link), a study skill checklist, basic concentration techniques,
control of the study environment, note taking, how to read essays for
analysis, memory skills (“and many more”).
▪ http://www.howtostudy.org/resources.php
Another “How to study” web site with useful links to time management,
efficient reading, questioning/listening/observing skills, getting the
most out of doing (“hands-on” learning), memory building, tips for
staying motivated, and developing a learning plan.
The above links are our suggestions to start you on your way. At the time
of writing these web links were active. If you want to look for more go to
www.google.com and type “self-study basics”, “self-study tips”, “selfstudy skills” or similar phrases.
4
Need help?
Help
LECTURER: Ms. Lineekela Usebiu
EMAIL: lusebiu@unam.na
For routine enquiries please contact the Student Support Department at
+264 61 206 3416.
For further assistance you can go to your nearest Regional UNAM Centre.
Assignments
The assessment will comprise of two tests, one assignment and group class
participations/presentations which will constitute 40% of the final mark.
Please see tutorial letter for instructions on the submission of assignments.
Assignments
Assessments
Assessments
All assessments are compulsory, and no make-up will be given without
good cause shown. (Refer to Rule 17.14). There will also be two
compulsory assignments. NO LATE ASSIGNMENTS WILL BE
ACCEPTED. The dates for the different assessments will be
communicated to you. Also refer to Rule 17.14.
Students are expected to take cognisance of the university plagiarism
policy when writing assignments.
Getting around this study guide
Margin icons
While working through this study guide you will notice the frequent use of
margin icons. These icons serve to “signpost” a particular piece of text, a new
task or change in activity; they have been included to help you to find your
way around this study guide.
A complete icon set is shown below. We suggest that you familiarize yourself
with the icons and their meaning before starting your study.
5
Getting around this study guideSources of Intellectual Property law in
Namibia
6
Activity
Additional
reading
Answers
to
Assessments
Assessment
Assignment
Audio
Case study
Discussion
Exit Learning
Outcomes
Feedback
Group
Activity
Help
Recommended
website
Summary
Note
it!/Warning
Outcomes
Prescribed
Reading
References
Reflection
Study skills
Terminology
Tip
Video
Unit 1
Introduction to Intellectual
Property Law
Introduction
‘Intellectual Property’ is a generic term that probably came into regular
use during the twentieth century, used to refer to a group of legal regimes,
each of which, to different degrees, confers rights of ownership in a
particular subject matter.
Similar to the way our law recognises ownership rights in material
possessions such as cars and homes, it grants rights to intangible property,
such as the expression of an idea or invention. Our law protects intellectual
property in four main distinctive areas: copyrights, patents and trademarks.
Upon completion of this unit you should be able to:
▪ describe the essence of Intellectual Property;
▪ define the concepts related to Intellectual Property Law; and
▪ identify the categories of Intellectual Property Rights.
Outcomes
Constitution of Namibia, Act 1 of 1990
Dean, O and Dyer A (Eds) (2014) Introduction to Intellectual Property
Law. Oxford University Press: Cape Town
Prescribed reading
7
Unit 1 Sources of Intellectual Property law in Namibia
1. The Definitional Dimensions of Intellectual Property
The term property connotes ownership that is exclusive,1 but the owner(s)
have the right to license or sell their intellectual property. Under
intellectual property law, owners are granted certain exclusive rights—
intellectual property rights (IPR)—to the discoveries, inventions, words,
phrases, symbols, and designs they create. The various aspects of the
subject differ in purpose and detailed rule. Nonetheless, there is
educational convenience in studying them together, as we will in this
guide.
As aforementioned, the subject matter of intellectual property is distinct.
Inventions, literary works, artistic works, designs and trademarks formed
the subject matter of early intellectual property law. The twenty-first
century has seen new subject matter added to present intellectual property
systems (for example, the protection of computer software as part of
copyright, the patentability of micro-organisms as part of patent law), and
new systems created to protect existing or new subject matter (for example,
plant variety protection).
Trying to define the essence of intellectual property is difficult. There is no
particular potency about the expression “intellectual property” however,
there is a general consensus as to its core content (patents for inventions,
literary, dramatic, musical and artistic copyright, copyright in recordings,
films and broadcasts, registered and unregistered design rights and
trademarks).2
That is, most definitions, in fact, simply list examples of intellectual
property rights or the subject matter of those rights (often in inclusive form)
rather than attempting to identify the essential attributes of intellectual
property.
1
2
8
Available
at:
https://saylordotorg.github.io/text_internationalbusiness/s17-02-intellectual-property-rights-a.html
Phillips (Respondent) v Mulcaire (Appellant) [2012] UKSC 28
One should also note that individual intellectual property statutes provide
definitions of the subject matter of their application.3 So, for example,
copyright statutes will typically define terms such as ‘literary work’, as
well as stating that copyright in a work consists of particular exclusive
rights.
Patent statutes define the term ‘patent’ in terms of an invention and then
specify the criteria of patentability. The definitional dimensions of
intellectual property are further complicated by the fact that intellectual
property regimes are the products of different philosophical and legal
traditions.
The term ‘copyright’, for example, refers to those common-law systems
that characterize the exclusive rights of authors in essentially economic
terms (the rights to reproduce the work, to publish it and to adapt it are
examples). 4
A definition of intellectual property that moves beyond lists or examples
and attempts to deal with the essential attributes of intellectual property has
to focus on two elements:5 the property element and the object to which
the property element relates. Intellectual property rights are often described
as intangible rights. The idea behind this classification is that the object of
the right is intangible. All property rights place the right holder in a
juridical relation with others.
The key difference between rights of real property and intellectual property
rights is that in the latter case the object of the right is non-physical. One
can think of it as an abstract object rather than a physical object. It is
possible that one can ‘own’ the abstract object without owning a particular
physical manifestation of the abstract object. A letter sent to a friend, for
example, results in the property in the letter passing to the friend, but not
the copyright.
3
4
5
Gray v News Group Newspapers Ltd [2011] EWHC 349 (Ch), [2011] 2
WLR 1401, para 77
Ibid. p2
Dr. Peter Drahos. The universality of intellectual property rights: origins
and development. University of London, Queen Mary Intellectual
Property Research Institute. (London, United Kingdom)
9
Unit 1 Sources of Intellectual Property law in Namibia
Property rights by their nature allow the right holder to exclude others from
the use of this prime resource and so they are likely to produce instances
of rights conflict.
Paragraph 1 of Article 16, “Property”, of the Constitution of the
Republic of Namibia begins as a broad-ranging statement of property
rights:
All persons shall have the right in any part of Namibia to acquire,
own and dispose of all forms of immovable and movable property
individually or in association with others.
The language used for the Article, e.g. “own and dispose of all forms of
immovable and movable property” is sufficient to include all forms of
modern intellectual property under the protection of Article 16.
In summation, Intellectual property (IP) is the term that describes ideas,
inventions, technologies, artworks, music and literature (traditional forms)
that are intangible when first created but become valuable in tangible form
as products. Suffice it to say, that IP is the commercial application of
imaginative thought to solving technical or artistic challenges. It is not the
product itself, but the special idea behind it, the way the idea is expressed,
and the distinctive way it is named and described.
The word ‘property then, is used to describe this value, because the term
applies only to inventions, works and names for which a person or group
of persons can claim ownership. Ownership is important because
experience has shown that potential economic gain provides a powerful
incentive to innovate.
10
The various forms of intellectual property protect different interests in intangible property.
Categories of intellectual property rights (IPRS)
If the item is
THINK
• A new mechanical/electrical device/
Patent
•A chemical composition/process or living matter
Patent
•A design that gives a new/original appearance to a useful item/
Industrial Design
•An original book, pamphlet or other written material, drawing or painting, sculpture, song
movie photograph or software
Copy Right
• A word or logo used on packaging for a product, or in connection with services to identify
producer or seller goods or services
Trademark
• A geographical term associated with particular product characteristics, quality or reputation
Geographical Indication
Figure 1 Source: Exhibition adopted from: Briefing Paper, (2003). Intellectual
Property and Developing Countries: An Overview. Completed under the United
States Agency for International Development
LEGAL RIGHT
WHAT FOR?
HOW?
PATENT
NEW INVENTIONS
COPYRIGHT
ORIGINAL/CREATIVE
ARTISTIC FORMS
APPLICATION
AND
EXAMINATION
ORDINARILY
EXISTS
AUTOMATICALLY
Table 1
11
Unit 1 Sources of Intellectual Property law in Namibia
Figure 3
Source: The
basics of
intellectual
property
https://twitter.com/eu_ipo/status/894468162443370496
Activity1
12
1. What are IPRs, and why are they important?
2. What are the three main types of IPRs?
3. Would you do business in a country with poor IP protection? Why or
why not.
4. Can you think of a reason why a company might decide to file a patent
on an intellectual asset?
Feedback
1. Under intellectual property law, owners are granted certain
exclusive rights—intellectual property rights (IPR)—to the
discoveries, inventions, words, phrases, symbols, and designs they
create. Through IPR’s protection, owners are given the opportunity
to license or sell their innovations to others, which is an important
way of creating value with these assets.
2. (i) Copyrights - Copyright is the body of laws which grants
authors, artists and other creators protection for their literary and
artistic creations, which are generally referred to as “works.”
(ii) Trademarks - A trademark is a distinctive sign, which
identifies certain goods or services as those produced or provided
by a specific person or enterprise. The system helps consumers
identify and purchase a product or service because its nature and
quality, indicated by its unique trademark, meets their needs.
(iii) Patents - A patent is an exclusive right granted for an
invention, whether a product or a process, which must be
industrially applicable (useful), be new (novel) and exhibit a
sufficient “inventive step” (be nonobvious). A patent provides
protection for the invention to the owner of the patent.
3. WHY NOT? - Company will not gain financial benefits from
investing in research and coming up with new inventions. The
reverse can be true – it will be easy for the company to gain access
to other companies’ inventions without paying for them where
there is no legal protection for those inventions.
4. Some companies obtain patents mainly to license or sell them to
others, thus making money from their inventions without having
to manufacture or service anything themselves. In turn, other
companies actively seek patents that they can purchase because
they want to speed up their own R&D efforts.
For example, even Daimler, which registered 2,000 patents in
2009, pays 2,600 to outside inventors to use their innovations in
Daimler products.6
13
Unit 1 Sources of Intellectual Property law in Namibia
One product can have many intellectual property rights
Figure 3
Source: There can be many intellectual property rights in one product.
https://twitter.com/eu_ipo/status/872362204238147584
All the IP rights that we have briefly described so far can be contained in
a single product. That means, they can also be used in combination to help
inventors protect their innovations.
For example, a company might use a patent in order to ensure that it is the
only one that offers a particular technical feature, and registered or
unregistered designs to protect the features relating to the appearance of
the product. It can also use trademarks to communicate the source of the
product.
It might also choose to keep some aspects of the production process secret.
If it makes serious efforts to maintain secrecy then it can enjoy the
protection of trade secrets. Students may well be unaware, for example, of
the range of IP it takes to make and market a mobile phone.
1.
Peter Thomas, “Patents Are the Future of Innovation
Management,”
Technicity,
2010,
accessed
February
10,
2011,
http://www.daimler-technicity.de/en/christianhahner.
6
14
This will help students understand how to protect different aspects of their
own intellectual creations.
A car might have one hundred patents associated with it in various parts
and components. In contrast, in the pharmaceutical industry, one patent
may be all that’s needed to cover one product: a patented drug is the
product in itself. What’s more, much of the innovation in new cars today
resides in software.
For example, the Chevrolet Volt has more software than a state-of-the-art
fighter aircraft. Almost 40 percent of the car’s value comes from software,
computer controls, and sensors.7
2. What is the importance of Intellectual Property education for
students?
Innovation is one of the areas covered by the sustainable development
goals (SDGs). Namibia has committed herself to achieve the SDGs by
2030. Innovation, presumably has been incorporated therein with the
view to creating a more competitive economy with higher employment.
Therefore, it has never been so important to foster the "virtuous circle"
leading from Research and Development (R&D) investment to jobs – via
innovation, competitive advantage and economic success – as in today’s
world of increasingly globalised markets and the knowledge economy.
This process depends on several different factors, but an efficient system
of intellectual property rights (IPR) undoubtedly ranks among the most
important, given IP’s capacity to encourage creativity and innovation, in
all its various forms, throughout the economy.
IP plays a very important role in today's knowledge-based economy.
Start-up companies use IP to prevent large industrial competitors copying
their products. Large companies use IP to reap the benefits of their
investments. Even seemingly "traditional" sectors such as the steel
industry use IP to protect their intangible assets.
“Intellectual Property Rights around the Globe”, section 13.2 from the
book Challenges and Opportunities in International Business (v. 1.0). The book is
licensed under a Creative Commons by-nc-sa 3.0 license.
7
15
Unit 1 Sources of Intellectual Property law in Namibia
There are mechanistic accounts that treat law as the natural outgrowth of
market forces and tend to suggest that there is little that can be done to
intervene. However, the law does not naturally follow from economic
forces. Law is instead a place where we argue about how we should
order our economy. It was this realization that makes it important for us
to learn about intellectual property law and to advocate for changes to IP
law.
It is worth studying IP law today for at least two reasons. First, it is
emerging as a key influence on both our economy and our society. It sets
the terms of access to (and development of) all kinds of things that matter
to our politics, our society, and our individual life chances. It also
defines – indeed, creates – one of the most important sources of capital in
contemporary life. Patents, copyrights, and trademarks are the deeds to
the property of the information age.
There is a global increase in innovation and the dissemination of
information. That is, we are living in a world where knowledge and
creativity are at the heart of economic progress.
This has inevitably increased attention to the importance of the
knowledge economy and has given prominence to issues such as
intellectual property rights (IPRs). 8
In this context, it is therefore important for students to understand the
dynamic effects of the protection of IPRs, as well as the relationship of
these rights to competition, their importance in international technology
transactions and how these rights relate to the overall economic
development strategies of nations.9
This context indicates the need for trained human resources and
intellectual capital to be considered key elements in innovation strategies
of our country and businesses; both for the creation, maintenance and
consolidation of an appropriate intellectual property regime within
Namibia, and for her participation in international forums for discussion,
such as, the World Trade Organization (WTO) and World Intellectual
8
Ana Maria Nunes Gimenez, et.al. The Challenges of Teaching and
Training in Intellectual Property. Journal of Technology Management &
Innovation vol.7 no.4 Santiago dic. 2012. Volume 7, Issue 4. Available at:
http://dx.doi.org/10.4067/S0718-27242012000400014 J.Technol. Manag. Innov.
2012,
9
Maskus, Keith E. (2008). Teaching the economics of intellectual property
rights in the global economy. In: TAKAGI, Yo; ALLMAN, Larry; SINJELA,
Mapazi A. (Orgs.). Teaching of Intellectual Property: Principles and Methods.
Cambridge University Press, New York.
16
Property Organization (WIPO), so that, among other things, our national
interests are preserved and defended.
Second, it also plays an important role in the shape of inequality around
the world today. Remember that because information is so profoundly
sharable, it may also be an important place to go to redress inequality.
In order to further highlight the importance of IP education, here are few
examples of valuable intellectual property/ assets that we have today:
▪ Coca-Cola (registered trademark): The 2013 value of the brand (brand
= trademarks and the whole Coca-Cola customer experience) is
estimated to be USD 79.2 billion (EUR 70.2 billion).
▪ Apple iPod touch music player (registered trademarks and registered
designs, some patents): The extremely successful iPod bases its
competitive advantage not so much on technical innovation as on
customer experience and distinctive design. Apple has filed several
US 'design patents' (known in Europe as registered designs) on the
iPod's design. Apple also applied for user interface-related patents on
the iPod. From the launch of the iPod in 2007 to 2013 Apple sold
more than 100 million units.
▪ Harry Potter (registered trademarks and copyright): The author of the
original Harry Potter book, J.K. Rowling, held all the associated IP
rights. This meant that she was the only person allowed to write a
sequel to that book. In April 2012 she was reported to have earned
USD 910 million – almost a billion dollars (or EUR 807 million) from
her IP rights to the Harry Potter story. The Harry Potter brand has
been estimated to be worth as much as USD 15 billion (EUR 13.3
billion). For comparison: At 2013 prices, gold was worth around
EUR 31 000 per kg. That means J.K. Rowling converted her
imagination into the equivalent of 22 000 kg of gold – true intellectual
property magic!
▪ Instant camera technology (patents): Before the advent of digital
cameras, instant camera technology was very valuable. In 1991,
Kodak was found to have infringed seven instant photography patents
held by Polaroid and was required to pay Polaroid USD 925 million
(EUR 820 million) in damages – after a court case lasting more than
14 years. This was the largest patent settlement ever paid out, at least
until recently, when Apple was awarded USD 1.05 billion (EUR 891
million) in 2012 in its fight with Samsung. Patents were highly
important to Polaroid, as they allowed them to keep the market for
instant photography technology exclusively to themselves (except for
Fujifilm, which obtained a Polaroid licence).
17
Unit 1 Sources of Intellectual Property law in Namibia
▪ DNA copying process (patents): The polymerase chain reaction (PCR)
is a biochemical technology in molecular biology used to amplify one
or more copies of a piece of DNA across several orders of magnitude,
generating thousands to millions of copies of a particular DNA
sequence (Wikipedia). The PCR technique was developed by Kary
Mullis and patented by Cetus Corporation, a biotech company where
Mullis worked when he invented the technique in 1983. In 1991,
Cetus sold the rights to the PCR patents to Hoffman-La Roche for
USD 300 million (EUR 266 million). Kary Mullis was awarded the
Nobel Prize in Chemistry in 1993. PCR is now a common technique
used in research labs for a variety of applications.
×Information on valuable IPR available at:
https://euipo.europa.eu/knowledge/pluginfile.php/81475/mod_resour
ce/content/5/IPTK_Basics%20EN%2004_2018_actual.pdf
Unit summary
Summary
In this unit we have studied about the true meaning of intellectual
property and its distinction vis a viz tangible property. We have also
explored the various intellectual property rights that form the basis of the
intellectual property system. Intellectual property rights are important and
the intellectual property system is designed to protect humankind’s
intellectual achievements. Most importantly, a single item can contain
various intellectual property rights.
Finally, we have learnt, that universities are important protagonists in
social and economic development, they are seen as a key element in
national innovation and called upon to engage more with society. The
incorporation of the teaching of intellectual property in the curricula of
universities is of great importance for the promotion and protection of
IPRs in society.
18
References
References
Peter Thomas, “Patents Are the Future of Innovation Management,”
Technicity, 2010, accessed February 10, 2011, http://www.daimlertechnicity.de/en/christianhahner.
Ana Maria Nunes Gimenez, et.al. The Challenges of Teaching and Training
in Intellectual Property . Journal of Technology Management & Innovation
vol.7 no.4 Santiago dic. 2012. Volume 7, Issue 4. Available at:
http://dx.doi.org/10.4067/S0718-27242012000400014 J.Technol. Manag.
Innov. 2012.
MASKUS, KEITH E. (2008). Teaching the economics of intellectual
property rights in the global economy. In: TAKAGI, Yo; ALLMAN, Larry;
SINJELA, Mapazi A. (Orgs.). Teaching of Intellectual Property:
Principles and Methods. Cambridge University Press, New York.
19
Unit 2 Sources of Intellectual Property law in Namibia
Unit 2
The History of Intellectual
Property
Introduction
'Intellectual property' is a 20th Century term.10 As understood today, it
comprises four law areas: trademark, patent, copyright, and trade secrets
law.1 The concept of intellectual property, however, is well known in
history. Protection of intellectual product can be traced far back in
history, but only since the 16th and 17th Century do we encounter written
intellectual property laws and privileges, first in England (copyright) and
Venice (patents
This unit gives a short historical overview of the development of
intellectual property, locating its roots already in pre-historical society.
Upon completion of this unit you should be able to:
Outcomes
▪
describe the evolution of intellectual property law in humankind’s
history.
▪
explain the emergence of intellectual property as part of the positive
legal order of states.
▪
explain that the protection of intellectual property at an international
level can roughly be divided into three periods.
▪
recognise that the international intellectual property system evolved
in response to the principle of territoriality.
10
Daniel Stengel. Intellectual Property in Philosophy. Law and Social Philosophy.
2004, Vol. 90, No. 1 (2004), pp. 20-50
20
Prescribed reading
Additional Reading
•
Daniel Stengel. Intellectual Property in Philosophy. Law and
Social Philosophy. 2004, Vol. 90, No. 1 (2004), pp. 20-50
•
Dr. Peter Draho. ‘The Universality of Intellectual Property Rights:
Origins and Development’ in Intellectual Property and Human
Rights, World Intellectual Property Organization, Geneva, 1999,
13-41. [translated into French and Spanish]. (Reprinted in Baldo
Kresalja Rossello (ed.), Annuario Andino de Derechos
Intelectuales, Palestra Editores, Lima, 2009, 17-46.)
•
Emmanuel Oke. Territoriality in Intellectual Property Law:
Examining the Tension between Securing Societal Goals and
Treating Intellectual Property as an Investment Asset. Scripted.
Oke 313 Volume 15, Issue 2, October 2018
Leo Gross. The Peace of Peace of Westphalia, 1648-1948. The American
Journal of International Law , Jan., 1948, Vol. 42, No. 1 (Jan, 1948), pp.
20-41)
1. Intellectual Property - a part of human history
A historical overview shows how intellectual property has formed an
integral part of society since time immemorial. Surely before the
introduction of patents, copyright, trademarks, and signs were protected
by moral rules and religious doctrines.
As we will later learn, a sign is a mark with the basic function of
distinction as well as a function of identification. Probably, the first
protected signs were tribal signs, signalling the tribe to which someone
belonged. They could not be adapted by another tribe without losing their
specific functions and therefore their defining characteristics.
The signs and their functions enabled the bearers to establish a specific
relationship with one another in a social context. Some tribal signs
became the work of artists or priests and for reasons of power, of
21
Unit 2 Sources of Intellectual Property law in Namibia
financial or religious interest someone may have claimed to be the only
one to be allowed to reproduce a sign or painting.
There are different examples that show ancient cultures being familiar
with the protection of intellectual goods based on religious or structural
interests. For example, in Ghana, the monarch the was custodian of
copyright for every new design of fabrics.11 Trademarks are the
commercial successor of signs. It is worth emphasizing that signs do not
only work in an economic context, but in any context where distinction
and identification are of interest. The cross and the half-moon as religious
marks are comparable to trademarks of a specific religion. Both functions
of identification and distinction are essential to religious signs. Today,
trademarks of any kind are protected as long as they fulfil specific formal
requirements. The history of copyright is slightly different from the
history of trademarks.
The idea of owning knowledge and information was first developed in the
Greek city states.12 Some authors agree on religious secrets, e.g. chants
and rituals, as the first intellectual property good.13 Although these
secrets belonged to and were identified with a specific group, they were
not made public due to the very nature of secrets.
The typical feature of intellectual property is that the information itself is
shared with the public, while the owner does not lose his Claim to the
information. Intellectual property finds its roots in the instant, when
someone else becomes aware of information, but does not use it, because
someone else's rights in the information are recognised. In this sense of
recognition, protection for artistic goods like dramas can be found as
early as in ancient Greek society. Even if no written laws prevented
plagiarism, it was ostracised by the ethical norms of the society. The
development of copyright in music can be traced back to the 14th
Century.14
11
Ida Madieha Azmi, et al. Distinctive Signs and Early Markets: Europe,
Africa and Islam, in: The Prehistory and Development of Intellectual Property
Systems, ed. by Allson Fir.
12
Christopher May. The Hypocrisy of Forgetfulness: The Contemporary
Significance of Early Innovations in Intellectual Property. Review of International
Political Economy , Feb., 2007, Vol. 14, No. 1 (Feb. 2007), pp. 1-25.
13
See Supra. Page 20-21
14
See Supra. Page 20-21
22
2. The Territorial Period
The territorial period is dominated by the principle of territoriality, the
principle that intellectual property rights do not extend beyond the
territory of the sovereign which has granted the rights in the first place.
The principle is the product of the intimate connections to be found
territorially and itis one of the foundational principles of International
Intellectual Property Law.15
It was a principle which courts recognized in the interests of international
comity. This principle allows countries to design their intellectual
property laws in a manner that facilitates the achievement of specific
societal goals.
The principle of territoriality meant that an intellectual property law
passed by country A did not apply in country B. Intellectual property
owners faced a classic freeriding problem, or putting it in another way,
some countries were the beneficiaries of positive externalities.
On a much more positive note, the principle permitted states to tailor their
national intellectual property laws to suit their level of technological and
economic development. In other words, pursuant thereto, each state can
design their intellectual property laws in a manner that facilitates the
achievement of specific societal goals such as encouraging the
development of home-grown industries or protecting public health.
The principle undoubtedly emerged as a result of the Peace of Westphalia
treaty which is often viewed as the progenitor of modern nation-state.
The treat brought to an end the Thirty Years' War in 1648 in Europe.16
The origins of IPR’s in particular copyrights and patents areusually traced
back to the privileges granted by European sovereigns from the time of
15
Emmanuel Kolawole Oke. Territoriality in Intellectual Property Law:
Examining the Tension between Securing Societal Goals and Treating Intellectual
Property as an Investment Asset. Scripted, Volume 15, Issue 2, October 2018
16
Peace of Westphalia, European settlements of 1648, which brought to an
end the Eighty Years’ War between Spain and the Dutch and the German phase of
the Thirty Years’ War. Some scholars of international relations credit the treaties
with providing the foundation of the modern state system and articulating the
concept of territorial sovereignty.
Available at: https://www.britannica.com/event/Peace-of-Westphalia
23
Unit 2 Sources of Intellectual Property law in Namibia
the 15th century and these privileges were expressly limited to a specific
territory under the control of a sovereign.17
It is important to note that despite increased globalisation and the growth
of international agreements involving IPR’s, the principle remains the
basic tenet of intellectual property.
3. The International Period
The international intellectual property system evolved in response to the
principle of territoriality. States began to take a greater and greater
interest in the possibility of international co-operation on intellectual
property, as a result of increased cross-border trade.
At first this interest manifested itself in the form of bilateral agreements.
Bilateralism in intellectual property in the nineteenth century was
important in that it contributed to the recognition that an international
framework for the regulation of intellectual property had to be devised,
and it suggested a content in terms of principles for that framework. But
this bilateralism was more by way of prelude. The protection it gave
authors was never satisfactory.
The main movement towards serious international co-operation on
intellectual property arrived in the form of two multilateral pillars: the
Paris Convention of 1883 and the Berne Convention of 1886.
The Paris Convention formed a Union for the protection of industrial
property and the Berne Convention formed a Union for the protection of
literary and artistic works.
The Paris and Berne Conventions ushered in the multilateral era of
international cooperation in intellectual property. The twentieth century
saw the proliferation of international intellectual property regimes.
Examples of areas that became the subject of international agreements
include trade marks (Madrid Agreement (Marks), 1891 and Madrid
Agreement (Indication of Source), 1891), designs (Hague Agreement,
1925), performance (Rome Convention, 1961), plant varieties
(International Convention for the Protection of New Varieties of Plants,
Acts of 1961 and 1991), patents (Patent Cooperation Treaty, 1970),
semiconductor chips (Treaty on Intellectual Property in Respect of
17
24
Ibid. Page. 316
Integrated Circuits, 1989). The Paris and Berne Conventions also
underwent numerous revisions.
Treaty-making in intellectual property was accompanied by the rise of
international organizational forms.
4. The Global Period
On 15 April 1994, the Uruguay Round concluded in Marrakech with the
signing of the Final Act Embodying the results Of The Uruguay Round of
multilateral trade negotiations. More than 100 countries signed the Final
Act. It contained a number of agreements including the Agreement
Establishing the World Trade Organization and the TRIPS Agreement.
The TRIPS Agreement was made binding on all members of the World
Trade Organization (WTO).
There was no way for a state that wished to become or remain a member
of the multilateral trading regime to side-step the TRIPS Agreement.
5. Post TRIPS era
The TRIPS Agreement marks the beginnings of the global property
epoch. The TRIPS Agreement is built on the edifice of the principles of
territoriality and national treatment. But it also represents the beginnings
of property globalization via the trade linkage. The TRIPS Agreement
reaches all those states that are members of the multilateral trading
system or which, like China, wish to become members.
All of the TRIPS Agreement is binding on all members of the WTO. The
TRIPS Agreement incorporates various other intellectual property
conventions by reference. States, therefore, have to implement a
common and enlarged set of intellectual property standards, standards
that become common to more states by virtue of their participation in
regional and multilateral trade regimes. More and more standards are
becoming mandatory rather than permissive for states. States, for
example, have less discretion to determine what can be patentable and
what cannot.
The post-TRIPS era has been a period in which countries have had to
engage in the task of national implementation of their obligations under
the TRIPS Agreement. Least developed countries have the advantage of
a ten-year transitional period under the agreement, but they have been
25
Unit 2 Sources of Intellectual Property law in Namibia
under pressure from developed countries to move sooner rather than later
on its implementation. The TRIPS Agreement operates under an
institutional arrangement designed to promote compliance.
Unit summary
In this unit you learned about the evolution of intellectual property law.
Summary
We studied the emergence of intellectual property as part of the positive
legal order of states. We further learnt that the protection of intellectual
property at an international level can roughly be divided into three periods.
References
Daniel Stengel. Intellectual Property in Philosophy. Law and Social
Philosophy. 2004, Vol. 90, No. 1 (2004), pp. 20-50
References
•Dr. Peter Draho. ‘The Universality of Intellectual Property Rights: Origins
and Development’ in Intellectual Property and Human Rights, World
Intellectual Property Organization, Geneva, 1999, 13-41. [translated into
French and Spanish]. (Reprinted in Baldo Kresalja Rossello (ed.),
Annuario Andino de Derechos Intelectuales, Palestra Editores, Lima, 2009,
17-46.)
Emmanuel Oke. Territoriality in Intellectual Property Law: Examining the
Tension between Securing Societal Goals and Treating Intellectual
Property as an Investment Asset. Scripted. Oke 313 Volume 15, Issue 2,
October 2018
Leo Gross. The Peace of Peace of Westphalia, 1648-1948. The American
Journal of International Law , Jan., 1948, Vol. 42, No. 1 (Jan, 1948), pp.
20-41)
26
Unit 3
Sources of Intellectual Property
law in Namibia
Introduction
In this unit, we will briefly look at sources of intellectual property law in
Namibia. We shall explore the application scope of the various sources and
their operations, albeit briefly.
The numerous sources will be examined in details in the remainder of the
unit with reference to the individual intellectual property rights.
Upon completion of this unit you should be able to:
▪ explain the Sources of Intellectual Property Law in Namibia
Outcomes
▪ explain what the Namibian Constitution say about Intellectual
Property
▪ describe Regional and International instruments relating to
Intellectual Property
27
Unit 3 Sources of Intellectual Property law in Namibia
Prescribed reading
Namibian Constitution Act 1 of 1990.
Copyright and Neighbouring Rights Protection Act 6 of 1994.
Industrial Property Act 1 of 2012.
Swakopmund Protocol on the Protection of Traditional Knowledge and
Expressions of Folklore on 9 August 2010 at Swakopmund.
Banjul Protocol on Marks was adopted on November 19, 1993.
(Geneva) Act of The Hague Agreement 1999.
The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS).
Industrial Property Regulations. Government Notice 114 of 2018 (GG
6616). came into force on date of publication: 1 June 2018.
Additional reading
1. National Instruments
At the moment, we only have three nationally crafted sources of
Intellectual property law in Namibia. They are all contained in statutes,
i.e. they do not originate from the other sources of sources operative in
Namibia such as customary law.
Namibian Constitution Act 1 of 1990
Namibia attained its independence on 21 March 1990 with the birth of the
new Constitution. This new Constitution became the supreme law of the
28
country and all acts committed in the country should be in line with the
Constitution.18
The constitutional provisions that are of particular relevance to this
course are Articles 16 and 144. Article 16 guarantees the right to
property, it states as follows:
Article 16 Property
(1) All persons shall have the right in any part of Namibia to acquire,
own and dispose of all forms of immovable and movable property
individually or in association with others and to bequeath their
property to their heirs or legatees: provided that Parliament may
by legislation prohibit or regulate as it deems expedient the right
to acquire property by persons who are not Namibian citizens.
(2) As seen above, the article starts off as a broad ranging statement
of property rights, not specifically excluding intellectual property
rights, nor specifically including that category of rights. Perhaps at
the time of the time of drafting, the drafters were unaware of the
concept of intellectual property and intellectual property rights.
In the absence of specific reference in the Constitution, it is important to
interpret the general terms of property stated therein to extend to
intellectual property. In light thereof, Article 16 is the appropriate starting
position for interpreting intellectual property rights under our Constitution.
Article 144 of the constitution states:
Unless otherwise provided by this Constitution or Act of Parliament, the
general rules of public international law and international agreements
binding upon Namibia under this Constitution shall form part of the law of
Namibia.
18
See Article 1(6) – “This Constitution shall be the Supreme Law of Namibia.”
29
Unit 3 Sources of Intellectual Property law in Namibia
The article therefore provides constitutional authority for the national
application of international agreements relating to intellectual property in
so far as Namibia is a signatory thereto.
Copyright and Neighbouring Rights Protection Act 6 of
1994
The Act came into operation in May 1994. The main objective of the Act
as recorded in its preamble is to provide for the protection of copyright and
performers’ rights, and to provide for matters incidental thereto.
The 1994 Act was amended in 2001, the recognition and protection of
traditional knowledge and expression of folklore was one of the motives
behind the amendments. The Ministry of Information and Communication
Technology is the custodian of the Act.
Section 2 of the Act sets out the numerous works that are eligible to
copyright protection:
(a) literary works;
(b) musical works;
(c) artistic works;
(d) cinematograph films;
(e) sound recordings;
(f) broadcasts;
(g) programme-carrying signals;
(h) published editions; and
(i) computer programs.
The same section19 further goes on to mention that a work shall not be
ineligible for copyright by reason only that the making of the work, or the
doing of an act in relation to the work, constituted an infringement of
copyright in any other work.
19
of 1994
30
Section 2(4) of the Copyright and Neighbouring Rights Protection Act 6
Industrial Property Act 1 of 2012 & its subsequent
regulations
The Industrial Property Act, 2012 (Act No. 1 of 2012) was signed into
law by the President on February 28, 2012, and entered into force on
August 1, 2018, according to the Government Notice No. 113 of 2018.
The Industrial Property Regulations were published in the Namibian
Government Gazette on 1 June 2018.
The Act repealed legislations pertaining to patents, trademarks, designs,
namely, the Trade Marks Act, Act No. 48 of 1973, The Patents and
Designs Act, Act No. 9 of 1916, the Patents and the Designs and the
Trademarks and Copyright Proclamation Act, Act No. 17 of 1923. In the
same vein, the Act consolidates the same laws on Trade Marks, Patents
and Industrial design.
The Act provides for significant changes to IP legislation in Namibia
including inter alia: (i) the implementation of the international
registration system for patents, industrial designs and trademarks; (ii) the
establishment of a 20-year patent term; (iii) the introduction of a
substantive examination system for patents; (iv) the protection of wellknown trademarks under Article 6bis of the Paris Convention and the
recognition of the registration of collective marks; (v) the reduction to
three years of the non-use grace period for trademarks; and (vi) the
creation of the Industrial Property Office and the Industrial Property (IP)
Tribunal.20
2. Regional Instruments
The Namibian Republic is also part of the African Regional Intellectual
Property Organization (ARIPO), that was created as a part of article 3 of
the Lusaka Agreement in 1976. ARIPO has two Protocols, the Harare
Protocol on Patents and Industrial Designs and the Banjul Protocol on
Marks.
The most recent addition protocol in addition to the above is the
Swakopmund Protocol on the Protection of Traditional Knowledge and
20
Namibia: Industrial Property Act, 2012 (Act No. 1 of 2012). Available
at: https://www.wipo.int/news/en/wipolex/2018/article_0014.html
31
Unit 3 Sources of Intellectual Property law in Namibia
Expressions of Folklore. The Protocol was adopted within the framework
of ARIPO Adopted by the Diplomatic Conference of ARIPO at
Swakopmund (Namibia) on August 9, 2010.
3. International Instruments
International agreements forms part of our law by virtue of article 144 of
the Namibia Constitution.
Namibia is member of the World Intellectual Property Organisation, and
by virtue thereof is signatory to a number of international treaties and
instruments which she incorporated in the new Industrial Property Act
abovementioned. Most of our national instruments on intellectual property
relate directly to the level of compliance to these instruments. On the wider
international are they are Madrid Agreement concerning international
registration of marks, the Patent Cooperation Treaty, Hague Agreement,
Paris Convention and the TRIPS agreement falling under the World Trade
Organisation.
Namibia is also a signatory to the Beijing Treaty on Audiovisual
Performances. The treaty provides for the intellectual property rights of
performers in audio-visual performances. Namibia has unfortunately not
yet ratified nor domesticated the treaty.
Unit summary
In this unit you learned about the sources of intellectual property law in
Namibia as well as the scope of their application and operations
Summary
32
We have seen that the Supreme law lays a very basic, almost inadequate
basis and foundation for intellectual property rights protection. However,
despite that fact, the Constitution makes it possible for Namibia to find
different sources of Intellectual property through its own statutes as well
as intellectual property treaties.
References
References
Copyright and Neighbouring Rights Protection Act 6 of 1994.
Industrial Property Act 1 of 2012.
Namibian Constitution Act 1 of 1990.
Swakopmund Protocol on the Protection of Traditional Knowledge and
Expressions of Folklore.
33
Unit 4 Sources of Intellectual Property law in Namibia
Unit 4
Copyright
Introduction
A copyright is an exclusive right that accrues to the author or maker of an
eligible original work that has been captured in a material form to copy,
adapt, publish, distribute, perform, broadcast, transmit or otherwise use the
work for a limited period of time OR authorize others to do so.
Outcomes
Upon completion of this unit you should be able to:
▪ explain the elements of a copyright
▪ analyse the mechanisms for copyright protection nationally and
internationally
▪ describe the works that are qualified for copyright protection
▪ discuss the rationale behind copyright infringement and the test for
infringement
Copyright and Neighbouring Rights Protection Act 6 of 1994.
WIPO Intellectual Property Handbook 2nd ed. WIPO Publication.
Prescribed reading
34
1.Copyright Protection
Copyright is a form of intellectual property law which protects original
works of authorship including literary, dramatic, musical, and artistic
works, such as poetry, novels, movies, songs, computer software, and
architecture.
In Namibia, the protection and promotion of copyright in Namibia is
administered in terms of the Copyright and Neighboring Rights
Protection Act, 199421 (The Copyright Act).
Copyrights includeall forms and methods of public communication, not
only printed but also sound, films, television, cinema; etc. Copyright
protects the form of expression of the idea not the idea itself. The
creativity which is protected is creativity in choice and arrangement of
words, musical notes, colors, shapes, and so on. Copying: taking and
using the form in which the original work was expressed by author, is
therefore prohibited.
Figure 3
Source: https://www.quickcompany.in/articles/types-of-copyrights-in-india
21
Act No. 6 of 1994
35
Unit 4 Sources of Intellectual Property law in Namibia
Figure
1:
Copyright’s reserved.
Source: https://images.app.goo.gl/vHjoZFP1QngVofuv8
Elements
It is important to note that before a copyright is vested in an individual, the
following elements must be met, all elements are mutually inclusive.
Authorship
Section 1(1): provides several scenarios of authorship:
(a) literary or musical work, or an artistic work- the person by whom the
arrangements necessary for the creation of the work were undertaken;
(b) Photograph- the person who is responsible for the composition;
(c) A sound recording- the person by whom the arrangements for the
making of the sound recording were made;
(d) A cinematograph film- the person by whom the arrangements for the
making of the film were made;
(e) A broadcast- the first broadcaster;
(f) A programme-carrying signal- the first person emitting the signal to a
satellite;
(g) Published edition- the publisher of the edition;
(h) a computer program, which is not computer-generated- the person
who exercised control over the making of the program. A computer
program, which is computer-generated- the person by whom the
arrangements necessary for the creation of the program were
undertaken;
36
Case study
See: Haupt t/a Softcopy v. Brewers Marketing Intelligence (Pty) Ltd
& other SCA
How do we determine whether or not one is an author?
Look at type of works/creation.
The Exceptions to the Author being the First Owner
Subject to section 27 of Act, the ownership of any copyright conferred by
section 3 or 4 in a work shall vest in the author or, in the case of a work of
joint authorship, in the co-authors of the work.
Where a literary or artistic work is made by an employee in the course of
his or her employment by the proprietor of a newspaper, magazine or
similar periodical under a contract of service or apprenticeship, and such
work is so made for the purpose of publication in a newspaper, magazine
or similar periodical, that proprietor shall be the owner of the copyright in
the work for publication purposes.
Certain works created on commission, the person who commissions such
work shall, subject to subsection (1), be the owner of any copyright
subsisting in the work.
Works created by or under the control of the State and other organizationsownership shall vest in them.
Eligibility
Copyright subsists in the work (finished product), not the idea.
In accordance with section 2(1) of Copyright and Neighbouring Rights Act
8 of 1994, the original work of any of the following descriptions of works
shall be eligible for copyright:
(a) literary works;
includes, irrespective of literary quality and
in whatever mode or form
expressed – such as novels, stories and
poetical works; dramatic works, stage
directions, cinematograph film scenarios
and broadcasting
37
Unit 4 Sources of Intellectual Property law in Namibia
scripts; textbooks, treatises, histories,
biographies,
essays
and
articles;
encyclopaedias and dictionaries;
letters, reports and memoranda; lectures,
speeches and sermons; and tables and
compilations,
but does not include a computer program.
(b) musical works;
means a work consisting of music, exclusive of any
words or action intended to be sung, spoken or
performed with the music.
(c) artistic works;
Means, irrespective of its artistic quality (a) a painting, sculpture, drawing, engraving or
photograph;
(b) a work of architecture, being either a building
or a model of a building; or
(c) a work of craftsmanship not falling within
either a model of a building;
(d) cinematograph films;
38
means the fixation by any means on film or any
other material of a sequence of images capable,
when used in conjunction with a mechanical,
electronic or other
device, of being seen as a moving picture and of
being reproduced, and includes the sounds
embodied in a soundtrack associated with the film,
but shall not include a computer program;
(e) sound recordings;
means a fixation of sounds capable of being
reproduced, but does not include
a sound-track associated with a cinematograph
film;
(f) broadcasts;
includes the emitting of programme-carrying signals
to a satellite; and, when used as a verb, shall be
construed accordingly;
(g) programme-carrying signals;
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Unit 4 Sources of Intellectual Property law in Namibia
means a signal embodying a programme which is
emitted and passes through a satellite;
(h) published editions;
means the first print by whatever process of a
particular typographical arrangement of a literary or
musical work
(i) computer programs.
means a set of instructions fixed or stored in any
manner and which, when used directly or indirectly
in a computer, directs its operation to bring about a
result
Section 2(2) and 2(3) relate to broadcasts
Whilst section 2(4) provides that work shall not be ineligible for copyright
by reason only that the making of the work, or the doing of an act in relation
to the work, constituted an infringement of copyright in any other work.
The type of work is important as each type has its own rules for
determining authorship, the rights protected, exceptions to protection, term
and duration of right, and manner of infringement.
It is also important to note that what appears to be a single work at first
glance may involve more than one copyrighted work, i.e. a sound
recording: it will have the copyright in the sound recording itself, a right in
40
the associated music (musical works) and copyright in associated words
(literary works).
A film also makes for a great example, as it will include sounds in the
soundtrack, dramatic works, stage directions, scripts which all relate to
different copyright works.
Originality
The work must be original - must not be copied from another work, but
originated from the author.
Originality refers to the original skill and labour in execution, and not to
original thought or expression of thought.
Note that creativity is not required to make a work original. The work must
emanate from the author himself and not be copied. It must be shown that
some labour, skill and judgement were invested in the works to prove
originality successfully. The amount of this labour, skill and judgement
depends on the case at hand. It is equally important to note that team effort
does not bar originality.
Material form
There can be no copyright in an idea.
a song or story still in the creator’s mind therefore will not be
eligible for copyright; and
copyright vests only once the idea is reflected in any of the
forms listed in section 2(1)
Limited duration of time
According to section 6 (1), Copyright conferred by section 3 or 4 shall
endure for a period of 50 years:
✓ literary works –from the end of the year the author died
✓ for other works- from the date of publication, performance,
broadcast etc.
Once the term of copyright has expired the work falls in the public domain
and anyone may freely copy it. The term of copyright is thus important
when one has to determine whether copyright subsists in a work.
Why do you think the term is so long?
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Unit 4 Sources of Intellectual Property law in Namibia
Rights comprised in copyright
The owner of a work protected by copyright may use the work as he
wishes, he may exclude others from using it w/o his authorization. Owner’s
usage must however be with due regard to legally recognized rights and
interests of others.
Rights bestowed on the owner are referred to as “exclusive rights”.
Original authors also have “moral rights”- these rights are inalienable.
This is in addition to the “exclusive rights” of an economic nature- these
can be transferred to another e.g. licensing.
Authorization to use copyrighted work is usually in relation to:
copying or reproducing the work- most basic right
performing the work in public
Making a sound recording of the work
Making a motion picture of the work
Broadcasting the work
Translating the work
Adapting the work
Neighboring Rights
There exist rights related to or “neighbouring to” copyright.
Referred to as “related rights”
Three kinds:
-rights of performing artists
-rights of producers and phonograms in their phonograms
-rights of broadcasting organizations in their radio and television
programs.
Limitation of Copyright Protection
❖
Temporal: does not exist indefinitely, there is a set duration.
42
❖
Geographic: protection is against acts done in that countryrestricted acts are dependent on the laws of a country.
❖
Permitted use: fair use of works i.e. reproduction exclusively for
personal and private use of person reproducing works exceptions
laid down by law: s15-24, s50 of Act, Berne Convention.
Copyright Infringement
According to section 29 of Copyrights and Neighbouring Rights Act
infringement occurs when a person who is not licensed, does or causes
another to do an act which the owner has the exclusive right to do or
authorize. In Namibia Acts can be of reproduction, copying, publishing,
performance or broadcasting nature.
Elements
To constitute direct infringement, there must be:
✓ Non-owner
✓ Who is not licensed by owner
✓ Does an act/ causes another to do an act (reproduction, copying,
publishing, performance or broadcasting)
✓ Exclusively vested in the owner of the copyright
✓ Towards a substantial part of a work
✓ No exceptions applicable
Whatever form infringement takes- these elements must be present.
To constitute indirect infringement as per section 29(2), a person who,
without the license of the owner of the copyright:
a) imports into Namibia an article for a purpose other than for his or her
private and domestic use;
b)
sells, lets or by way of trade offers or exposes for sale or hire in
Namibia an article;
c)
distributes in Namibia an article for the purposes of trade, or for any
other purpose, to such an extent that the owner of the copyright in
question is prejudicially affected; or
d)
acquires in Namibia an article relating to a computer program
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Section 29: copyright infringement in Namibian Courts
Southern Sun Africa v Sun Square Hotel (Pty) Ltd (A 66/2016) [2018]
NAHCMD 105 (23 April 2018)
Case study
In that case, the Applicant, a South African company and an owner of the
copyright in original artistic works in the ‘SUN SQUARE’ logo, registered
in South Africa, sought relief against the Respondent for copyright
infringement, damages and royalties.
The Applicant belonged to the Tsogo Sun group of companies operational
since 1969 which provided hotel, gaming and related services in Africa.
Whilst the respondent was SUN SQUARE HOTEL (PTY) Ltd, a Namibian
company, which provided hotel and related services in Oshikango,
Namibia.
The Applicants first became aware of the Respondent’s existence in July
2015 when the Applicants received photographs of the Respondent’s hotel
signage, facilities and guest amenities. The Respondent provided similar
services to that of the Applicant and used a logo identical to its logo as seen
above.
The applicants approached the Respondent requesting the Respondent to
change its name and to desist from using the Applicant’s SUN SQUARE
logo trade-mark and to cease reproducing and/or adapting the Applicant’s
original copyright works, proved fruitless.
After such approaches, the Applicant launched an application, seeking an
order in the following terms:
‘1.
An interdict restraining the Respondent from using the SUN
SQUARE logo trade mark, or any other name or mark that is confusingly
and/or deceptively similar to the Applicant’s SUN SQUARE logo trade
mark.
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2.
An interdict restraining the Respondent from reproducing and/or
adapting the Applicant’s original copyright works.
3.
The delivery-up of any goods bearing reproduction or adaptation
of the Applicant’s copyright works i.e. infringing copies, including but not
limited to signage, stationary, staff uniforms, guest amenities and
marketing and advertising materials.
4.
Payment of reasonable royalties which would have been payable
to the Applicant under the circumstances by a licensee.
5.
Payment of additional damages.
The Court found that:
The Applicant contended that the Respondent had, without a license,
reproduced its SUN SQUARE logo (i.e. its artistic works). In terms of s
2(1) of the Copyright Act, artistic works are eligible for copyright if they
are original. Copyright is conferred on an author of works which is eligible
for copyright. The work is considered to be original if it has not been
copied from an existing source and if its production required substantial
(or not trivial) degree of skill, judgment or labour.
Copyright is infringed when a person who without a licence from the
owner of the copyright does or causes any other person to do, in Namibia
any act which the owner has exclusive right to do, or to so authorize.
There was no real dispute in that case that the Applicant was the author of
the works in question. It is also apparent from the evidence that the logo
used by the Respondent is a replica of the logo which the Applicant
claimed copyright in. From the evidence, it was clear that the Respondent
had reproduced the entire, or almost the entire, works of the Respondent,
and had thereby infringed the Respondent’s copyright in the works in
question.
Having found that the Respondent had infringed the Applicant’s copyright,
the conclusion was clear that any goods bearing reproduction or adaptation
of the Applicant’s copyright works, which is in the possession or under the
control of the Respondent, were counterfeit goods, and should be
delivered-up.
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Unit 4 Sources of Intellectual Property law in Namibia
The court granted the relief sought by the Applicants.
The claimant must prove:
ownership of the copyright in the articles for which protection is being
claimed;
that defendant imported the articles in issue for a purpose other than
own private or domestic use or distributed articles;
To such an extent that he was prejudicially affected;
To the defendant’s knowledge; the making of articles in issue either:
Constituted an infringement of the claimant’s copyright or
Would have constituted an infringement if articles had been made in
Namibia.
Claimant had no license from owner to do what they did.
It should be noted that section 29(2) only applies if: to such person's
knowledge the making of that article constituted an infringement of that
copyright or; it would have constituted such an infringement had that
article been made in Namibia;
What if they had no ‘’knowledge’’ of possible infringement? Can
ignorance be an excuse?
‘’Knowledge’’
Means- notice of facts such as would suggest to a reasonable man that a
breach of Copyright law was being committed.
The court must then hypothetically take the imported article as though it
were made in Namibia by the person who made it, if such a person would
have made it here w/o infringing copyright, then any other person who
imports article into the country and sells w/o license infringes copyright.
Twentieth Century Fox Film Corporation and Another v
Anthony Black Films 1982 (3) SA 582
Case study
BRIEF FACTS:
The respondent bought video cassette copies of applicant’s film in
England from second applicant. The second applicant was a registered
46
manufacturer and made videos lawfully. The Respondent sold copies in
SA. The Applicant sought to interdict respondent from importing, selling
or letting videos. It alleged that respondent’s conduct was considerably
reducing the marketable value of videos in SA and brought an action for
infringement of s23(2) of the Copyright Act (RSA Act).
The court ruled that that the importation of video cassettes did not
constitute an infringement of the copyright in question.
You MUST read case in full to understanding the reasons for judgement.
Infringement of the copyright in a literary or musical work
Shall be infringed by a person who permits a place of public entertainment
to be used for a performance in public of the work, where the performance
constitutes an infringement of the copyright in the work.
This shall not apply in a case where the person permitting the place of
public entertainment to be so used was not aware and had no reasonable
grounds for suspecting that the performance would constitute an
infringement of the copyright- awareness of infringement
What constitutes a “substantial part”
the doing of an act in relation to a work shall, unless the context otherwise
indicates, be construed as a reference also to the doing of that act in relation
to a substantial part of that work – s 1 of Act
It is thus sufficient to show copyright infringement resulted in a
‘substantial part’ of the work being reproduced, copied, published,
performed or broadcasted.
Assessing ‘substantive part’
Judged qualitatively, not quantitatively;
A court may infer infringement by comparing the copyright work
with the infringing work and without direct evidence of copying;
It must be shown:
Existence of sufficient objective similarity between works;
Original work was the source where infringing work was
derived- causal connection- whether direct or indirect;
Ask: has defendant copied or is it original work?
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Unit 4 Sources of Intellectual Property law in Namibia
The Principle of Substantive similarity…
This principle must be applied cautiously.
Some subject matter of works may be common cause- i.e.
legislative texts, these are common property to all who write on
the subjects related thereto.
If similarities result from following an Act, not copying.
Even coincidental use of same ratio decidendi, submissions or
paraphrasing may not constitute copying.
Case study
Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164
Briefly, in that case Fax directories alleged the copying by respondent of
a directory. As proof, they highlighted that the espondent had copied
about 28 fictitious entries from its directory.
The court held: it was highly probable that many more entries were
copied even though extent of copying was difficult to prove. Copying
was therefore substantial, even if precise extent unknown- infringement.
Piracy
▪ Copying of copyright materials for commercial purposes
▪ Unauthorized commercial dealing in copied materials
▪ There must be commercial gain:
▪ Subsequent sale or distribution of illegally reproduced work
▪ Usually through an organized chain or distribution network
▪ NASCAM regulates this
ACTION BY OWNER OF COPYRIGHT FOR INFRINGEMENT
Infringements of copyright shall be actionable at the suit of the owner of
the copyright. Refer to s. 30 of the Namibian Copyright Act.
Copyright owner can seek relief by way of:
▪ Delictual damages
▪ Reasonable royalty
At the option of the plaintiff, an amount of damages may be calculated on
the basis of a reasonable royalty which would have been payable under the
circumstances by a licensee or sub-licensee in respect of the copyright
concerned.
48
The Act goes on to state that in calculating the reasonable royalty, the court
must take into account in addition to all material considerations:
✓ the extent and nature of the infringement and;
✓ the amount which could be payable to the owner in respect of the
exercise of copyright by some other person.
To base a claim on this remedy, the plaintiff must give notice in writing to
any exclusive licensee or sub-licensee of his intention to proceed in this
way. There is no requirement for fault in a claim for a reasonable royalty.
In Metro Goldwyn Meyer Inc & others v Ackerman & another 558
JOC (SEC), [1996] 1 All SA 584 (SE), the court held that when
determining a reasonable royalty, the court exercises a value judgment. In
exercising such judgement, the court felt it necessary to assess the nature
and extent of the infringement as well as the amount that the copyright
holder usually charged for use of the copyright.
This remedy allows the court to demand that the infringing copies or plates
(used in the copying process) be delivered to the plaintiff.
One may sue for damages along with this remedy.
Interdict
Normal remedy for infringement where:
▪ The plaintiff’s copyright and breach is clearly established;
▪ There is no claim of right to act on part of defendant either because of
existence of a license or payment of royalty;
▪ The defendant has not given an undertaking not to repeat the
infringement;
▪ Provided it is unclear whether there is likelihood of a future
infringement occurring;
▪ Granted pendente lite, on a balance of fairness.
What is a balance of fairness?
Court must strike a balance between the prospect of the copyright owner
being successful in the main action and:
▪ The prospect of each party suffering harm as a result of the court
either interfering or not granting interim relief;
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Unit 4 Sources of Intellectual Property law in Namibia
▪ The seriousness and irreparability of the harm;
▪ The difficulties of proving the extent of any harm;
▪ The risk of not recovering the amount of damages caused by the harm;
Where there is no guarantee that defendant will not infringe in future,
interdict should be granted.
▪ delivery up of infringing copies or plates
▪ additional damages
These damages are additional to the damages claimed by the plaintiff.
These damages are in the nature of penal or exemplary damages. The court
takes cognizance of all relevant factors including:
▪ The flagrancy (evident, obvious) of the infringement;
▪ Any benefit shown to have accrued to the defendant by reason of the
infringement and whether the court is satisfied that effective relief
would not otherwise be available to the plaintiff.
▪ The amount is purely within the court’s discretion and is likely to be
fixed more easily in some cases over others.
Anton Piller orders
These are orders that can be made by the court in a civil action to allow an
applicant to enter the respondent's premises to inspect, search and seize in
order to preserve evidence and prevent the destruction of incriminating
evidence. They are particularly effective in cases of alleged trademark,
copyright or patent infringement. In order to obtain such an order, the
applicant must prove that:
▪ it has a cause of action or has suffered damages;
▪ the offending party possesses specified documents or objects that
constitute vital evidence to substantiate the applicant's claim; and
▪ there is a well-founded belief that the evidence may be hidden, moved
or destroyed before the case comes to trial.
Anton Piller orders are often used together with Mareva injunctions, which
are used to restrain defendants from removing assets from the jurisdiction
of the court.
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Criminal law provisions
Refer to section 3322
(3) A person convicted of an offence under section 33(1) or 33(2) shall(a) in the case of a first conviction, be liable to a fine not exceeding N$ 12
000 or to imprisonment for a period not exceeding three years or to both
such fine and such imprisonment; or
(b) in the case of a second or any subsequent conviction, be liable to a fine
not exceeding N$20 000 or to imprisonment for a period not exceeding five
years or to both such fine and such imprisonment, in respect of each article
to which the offence relates
other common law remedies
2. Computer programs and intellectual property
Computer technology plays an increasingly important role in modern
society. Computers cannot operate without instructions, hence the need for
programs and operating systems. These programs and the necessary
reference material are referred to as computer software. Creating CP
requires heavy investment and protection against unauthorized copying
and use is thus crucial.
What happens when there is no protection?
Producers will not be able to recoup investment.
Insufficient protection leads to:
▪ Foreign programs obtained are not usually adapted to specific needs of
countries.
▪
▪ Difficulty in securing financing of necessary translations or local
adaptations.
Computer viruses tend to be more widespread in countries with
minimal protection. This is because they are distributed with
22
Criminal Procedure Act 57 of 1977
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Unit 4 Sources of Intellectual Property law in Namibia
pirated software which is not subjected to the same quality
control as authorized products. The best software is only
released in countries with Minimal possibilities of piracy.
History of Computer Programs (“CP”) protection
During the 1970s to 1980s international discussions were held for
protection of CP. A question arose as to which form of intellectual property
CP should take on in order to be afforded adequate protection, should there
be protection through Patents or Copyright? Sui Generis system?
During the Feb-Mar 1985 period, a decision was made by a joint
WIPO/UNESCO committee to use copyright. Generally accepted that CP
were considered works, subject to copyright protection, because CP are
basically writings which are original intellectual creations. Therefore, any
technical features of these ideas which provide technical solutions could
then be patented.
Patent Law and CP
Art 27.1 of TRIPS-applies to all fields of technology. In that instance, the
patentability requirement is broad enough to cover software-related
inventions which have a technical effect. An example: instruction
addressed to a person skilled in the art on how to solve a particular
technical problem using particular technical means.
Copyright law and CP
The object code of CP shares the copyright status of other literary and
artistic works stored in the computer system in a machine-readable form.
The combination of the different elements (on their own hardly qualify as
original works) that make up a computer program qualifies it as original
works. Ideas and abstract methods of solving problems- algorithms- not
protected under copyright.
Because CP programs quickly become outdated, the term of 50 years’
protection after the death of an author is considered too long. Therefore,
once a CP becomes obsolete, it will not be used and protection cannot be
invoked. This term will therefore only apply for works which remain of
interest to users.
52
International protection of copyrights
Article 10(1) of TRIPS
Both provide for the protection
of CP as literary works
Article 4 of WIPO Copyright Treaty
Protection granted should be the same as that provided for in the Berne
Convention.
National laws may regard CP as a separate category of works but
protection should not be lower than that granted for literary works under
the Convention.
TRIPS goes further to explain that protection applies to CP programs
whether it is source or object code.
WIPO CT- provides that protection applies to CP in whatever mode of
form they are expressed.
Copy Rights and Neighbouring Rights Protection Act 6 Of
1994
According to that Act a "computer program" means a set of instructions
fixed or stored in any manner and which, when used directly or indirectly
in a computer, directs its operation to bring about a result.
As per section 1(d) a computer program, includes:
i.
a version of the program in a programming language, code or
notation different from that of the program; or
ii.
a fixation of the program in or on a medium different from the
medium of fixation of the program;
The term "author", in relation to a computer program, which is not
computer-generated, the person who exercised control over the making of
the program, or in the case of a computer program, which is computergenerated, means the person by whom the arrangements necessary for the
creation of the program were undertaken.
Excludes CP from definition of literary works;
Section 2 of Act lists CP as a “works eligible for copyright”
Copyright will however only subsist if first published or made in Namibia.
(s4(f))
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Unit 4 Sources of Intellectual Property law in Namibia
Duration is years either from:
▪ the end of the year in which the film, photograph or program is made
available to the public with the consent of the owner of the copyright;
or
▪ if such film, photograph or program was not so made available to the
public within 50 years of its making, the end of the year in which the
film, photograph or program was made;
Section 14- Nature of copyright in computer programs
Copyright in a computer program vests the exclusive right to do or
authorize the doing of any of the following acts in Namibia:
a)
Reproducing the program in any manner or form;
b)
publishing the program if it was hitherto unpublished;
c)
making an adaptation of the program;
d)
reproducing or publishing an adaptation of the program; and
e)
letting, or offering or exposing for hire by way of trade, directly or
indirectly, a copy of the program.
Section 24-General exceptions regarding protection of computer programs
(1) Subject to section 29 (2) (d), the provisions of section 15 (1) (b) and
(c), (2), (3), (4), (5), (12) and (13) shall apply mutatis mutandis with
reference to a computer program.
(2) The copyright in a computer program shall not be infringed by a person
who is in lawful possession of that program, or an authorised copy thereof,
if(a) such person makes copies thereof to the extent reasonably necessary for
back-up purposes;
(b) a copy so made is intended exclusively for personal or private purposes;
and
(c) such copy is destroyed when the possession of that program, or
authorised copy thereof, ceases to be lawful.
CP and Moral rights
In terms of s. 25(1)(b) the author shall have the right to object to a
distortion, mutilation or other modification of the work where such
distortion, mutilation or modification is or would be prejudicial to the
honour or reputation of the author, but an author of a computer program or
a work associated with a computer program, may not prevent or object to
54
modifications that are necessary on technical grounds or for the purpose of
commercial exploitation of the work.
Infringement
As per s. 29 on infringement: acquires in Namibia an article relating to a
computer program, if to such person's knowledge the making of that article
constituted an infringement of that copyright or would have constituted
such an infringement had that article been made in Namibia. In terms of s.
32 on onus of proof- name published=owner.
Industrial Property Act and CPs
Section 17 which makes provision for matters excluded from patentability
refers to “programmes for computers” S17(1)(d)
Software patents?? Look at European position
EPO guideline- if a computer program has a technical character, then it is
not excluded from patentability
Protection-of-Computer-programs-by-Copyright-in-South-Africa.pdf
3. File Sharing and Digital Right Management
File sharing relies on computers forming networks to allow the transfer of
data. Each computer (or node) may agree to share some files, and filesharing software allows users to search for and download files from other
computers in the network. Individual nodes are called clients if they request
information, servers if they fulfill requests, and peers if they do both.
Technology is essentially neutral, in that it may be used for sharing noninfringing materials of all kinds, however at the same time it can also be
used to share infringing material.
Indirect (secondary) copyright liability
This doctrine of liability is based on the US Act provision that the
copyright owner has the right to “do or to authorize” the doing of any one
of the exclusive acts reserved to the copyright owner, it is a form of
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Unit 4 Sources of Intellectual Property law in Namibia
vicarious liability. Therefore, if you authorize someone to do a restricted
act, you are guilty of secondary infringement. The key question is when
can a company/service provider be held liable for the infringing acts of its
users?
Sony v. Universal Studios (The Betamax case) 464 U.S. 417,442
Case study
Sony launched the Betamax video cassette recorder which enables people
to record live TV. Universal Studios owns the copyright in many TV
shows, movies and other programs. It licenses these to the TV networks
for public performance (but not for distribution). Universal alleged that the
primary purpose of the Betamax is “librarying” –people building up
libraries of movies. Sony stated that the primary use is “time-shifting” –
enabling people to watch their favourite shows at different times. The
lower courts found that this “time-shifting” function is a fair use of
copyright. The question for the Supreme Court was whether or not Sony
be held liable under indirect copyright infringement principles for the acts
of its end users?
The court held that Sony should not be liable because the product is
“capable of substantial non-infringing uses” — the “COSNU” defense. As
a result of this decision several loopholes existed.
A&M Records Inc v Napster Inc 239 F.3d 1004
Case study
Napster was launched in May 1999. It had one million users by the time of
the suit (December 1999). By that time, it had created an efficient,
specialized search engine dedicated to MP3 audio files by combining a
centralized search index with direct P2P file transfers, making it effortless
to find and transfer MP3s.
In using its proprietary software, users contacted Napster’s servers,
requested a file, and were then routed directly to computers that had the
file, in the same manner that operators and switchboards connect telephone
calls.
The court held that Napster had “actual knowledge” of the infringing
activity for purposes of contributory infringement, and that Napster could
supervise and control its users’ conduct for purposes of vicarious liability.
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Napster argued that surely, under the Sony Doctrine/CONSU Defense, it
was “capable of substantial non-infringing uses”, and could therefore not
be held liable for the infringing acts of its users.
The court expanded the concept of vicarious infringement of copyright:
▪ If you have the right and ability to control the infringement and receive
a direct financial benefit, then you are liable
▪ Napster had the ability to kick users off its system
▪ Financial benefit? (The service was free). The court says any benefit is
sufficient
Loopholes created
▪ All “knowledge” of infringing activity could be disclaimed by
removing any logs of transfer activity. E.g. Aimster accomplished this
by encrypting all transfers so it would be incapable of knowing what
files were being sent over its network.
▪ Decentralizing the search index could eliminate a Napster-like scenario.
e.g. Gnutella, split indexing duties evenly across all peers in the
network & Grokster limiting indexing duties to certain super nodes.
Case study
In re Aimster Copyright Litigation 334 F.3d 643
“[A] service provider that would otherwise be a contributory infringer does
not obtain immunity by using encryption to shield itself from actual
knowledge of the unlawful purposes for which the service is being used.”
at 650–51. Aimster failed to produce any evidence that its service [had]
ever been used for a non- infringing use, let alone evidence concerning the
frequency of such uses.” at 653”
The court upped the ante, rejecting Aimster’s argument that mere capacity
for non-infringing use should satisfy the COSNU defense, and required
instead that Aimster demonstrate actual substantial non-infringing uses; in
this inquiry, the question was how probable the non- infringing uses were.
In an ironic twist, although Aimster had avoided knowledge of infringing
uses, it also could not prove any actual non-infringing uses of its network
because it had intentionally blinded itself to all uses. Court held that
“willful blindness” constituted knowledge sufficient to invoke contributory
liability (at 650) FIRST LOOPHOLE CLOSED.
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Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd. (Grokster II),
380 F.3d 1154, 1162 (9th Cir. 2004)
Case study
Instead of having a central file index the way that Napster did, in this case,
each user downloads a copy of the Grokster program and then users swap
files between themselves directly. Grokster has no ability to control or
monitor the infringing acts of its users.
“the software design is of great importance… [Napster] employed a
centralized set of servers that maintained an index of available files. In
contrast . . . neither StreamCast nor Grokster maintains control over index
files.” (at 1163)= no contributory infringement.
“[had] no ability to actually terminate access to file sharing functions” (at
1165) = no vicarious liability.
Grokster case findings in the Supreme Court:
The court crafted a new “inducement” theory and unanimously reversed
the Ninth Circuit. Inducement requires the intention to encourage or induce
infringement; and affirmative steps taken to encourage infringement. There
were plenty of instances of bad conduct by Grokster, they specifically
targeted ex-Napster users.
The company’s tech support helped users to exchange copyrighted files as
Grokster’s newsletter showed reviews of how good Grokster was at getting
infringing material. SECOND LOOPHOLE CLOSED.
Therefore:
There are three kinds of secondary liability:
A.
Contributory infringement (Betamax)
Requires knowledge on the part of the secondary infringer and material
contribution. The knowledge could be actual or constructive (i.e. you
should have known). But not liable if “capable of substantial noninfringing uses” This is not strict liability.
B.
Vicarious infringement (Napster)
Where you have the right and ability to control the infringement and
receive a direct financial benefit from the infringement. This is still strict
58
liability (i.e. you can be held liable even if you didn’t know of the
infringement).
C.
Inducement (Grokster)
Requires the intention to encourage or induce infringement; and
affirmative steps taken to encourage infringement.
Bit Torrent
It is a file-sharing technology, but it does not have a centralized indexing
system and it does not have a search function. You have to find a “torrent”
file, which tells you that somewhere in the Internet there is a “tracker” – a
computer acting as a traffic cop for the underlying file. The tracker tells
you from which users you can get the file and you then start downloading
from all of the users that have the file. While you download, you are
simultaneously uploading.
Bit Torrent never advertised or encouraged their technology for infringing
use (unlike Grokster). It was originally designed to permit companies like
Microsoft to rapidly deploy software updates (so that their servers didn’t
crash when everyone tries to download from one source at the same time).
Bit Torrent has no control over infringement (unlike Napster) and the
technology has substantial non-infringing uses (like BetaMax).
File Sharing in Namibia
Covered in the Copyright Act
Section 29 Infringement
1.
Copyright shall be infringed by a person who, without the license
of the owner of the copyright, does or causes any other person to do, in
Namibia, any act which the owner has the exclusive right to do or to
authorize.
2.
Without derogating from the generality of subsection (1), copyright
shall be infringed by any person who, without the license of the
owner of the copyright and at a time when copyright subsists in a
work:
a. Imports an article into the Republic for a purpose other than for
his private and domestic use;
b. Sells, lets, or by way of trade offers or exposes for sale or hire in
the Republic any article;
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Unit 4 Sources of Intellectual Property law in Namibia
c. distributes in Namibia an article for the purposes of trade, or for
any other purpose, to such an extent that the owner of the
copyright in question is prejudicially affected; or
d. acquires in Namibia an article relating to a computer program, if
to his knowledge the making of that article constituted an
infringement of that copyright or would have constituted such an
infringement if the article had been made in the Republic.
Section 33- criminal sanctions
Namibia: s29 (2) Indirect Infringement
s33 Criminal Infringement
Digital Right Management(DRM)
DRM refers to technical protection measures designed to restrict access to
copyrighted content (e.g. a music file, a piece of software etc.) or control
copying thereof. A range of access control measures exists. It is based on
digital technology. It aims to limit the utility of contents after distribution
and post-sale enforcement of IP Law.
Unilateral licensing
Anti-competitive
Regardless of fair use
Common examples include authentication that is required of Windows
software, region coding - DVD players that can only be used in certain
regions, or iTunes downloads that cannot be freely transferred between any
devices (they only play on iPods).
Mr Video (Pty) Ltd and Others v Nu Metro Filmed Entertainment
(Pty) Ltd and Others [2010] 2 All SA 34 (SCA) (29 September 2009)
Case study
Mr V. was dealing in zone 1 encoded DVDs which they had imported from
the USA and he offered them for hire from the various outlets operated by
the franchisees and also supplied their customers with a pamphlet
describing how local DVD players can be 'decoded' to enable them to play
zone 1 films.
An 'infringing copy' in relation to a cinematograph film is defined in s 1 of
the Act as a copy of the film or a still photograph made therefrom; . . .being
in any such case an article the making of which constituted an infringement
of the copyright in the . . . cinematograph film . . . or, in the case of an
60
imported article, would have constituted an infringement of that copyright
if the article had been made in the Republic.'
Zone 1 DVDs are not available for lawful distribution in South Africa.
There is no evidence to show that the person who manufactured the zone
1 DVDs in the USA had the right to do so in South Africa. In fact, the
probabilities are overwhelmingly against such a suggestion”.
The court held that there was indeed copyright infringement
“the infringing DVDs were acquired for an unlawful purpose and there is
no lawful use to which they could be put in this country”
Restricting the copying of audio and visual material is especially difficult
because of the existence of the “analogue hole”. If one’s eyes can see it
and your ears can hear it, then it can be recorded and duplicated (even if
only by means of a camcorder pointed at the screen). Analogue media (e.g.
records, tape cassettes) had a form of in-built copy protection because they
are degraded with each copy made. Not so with digital copies, which makes
DRM all the more important to copyright owners in the digital age.
In most cases, DRM efforts get thwarted by determined hackers who
release “patches” or “fixes”.
Recent example: AACS, the copy protection technology for HD-DVD and
Blu-ray was released on the internet. It was a 128 bit integer.
One perverse effect of DRM is that the illegal files that don’t include DRM
are more valuable to users than the legal DRM files (e.g. because the
unprotected song can play on their Apple iPod and Microsoft Zune, for
example).
US: THE DIGITAL MILLENNIUM COPYRIGHT ACT (DMCA)
At the very start of the Internet, in early 90s, content owners began to fear
that the Internet would result in mass copyright infringement.
Simultaneously, internet service providers (e.g. AOL, Yahoo) and
infrastructure owners (e.g. AT&T) were terrified that they would be held
liable for copyright infringement based on what was being transmitted
through their servers or posted on their websites.
Remember, direct copyright infringement is strict liability (it doesn’t
matter if you knew you were infringing or not), so if AT&T’s users were
uploading infringing material then AT&T would also be infringing the
copyright by transmitting that digital data.
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Unit 4 Sources of Intellectual Property law in Namibia
The result was the DMCA, which includes two grand compromises:
The content distributors got safe harbors
The content owners got anti-circumvention provisions
DMCA Safe Harbors
17 U.S.C. section 512
The safe harbors are a limitation on copyright liability. They limit both
secondary and direct copyright infringement liability.
They are optional. You are not required to use them. A failure to qualify
for a safe harbor does not make you liable. If you don’t infringe copyright
(or assist infringement) you don’t need the safe harbors.
SAFE HARBORS
512(a): “Pipes”. Not liable for merely “transmitting, routing, or providing
connections”. Companies like AT&T that provide the backbone of the
internet infrastructure negotiated this safe harbor;
512(b): “Caching”. Not liable for “intermediate or temporary storage.” E.g.
Google’s cached webpages.
512(c): “Hosting”. Not liable for “storage at the direction of a user”. This
is the safe harbour that YouTube rely on. (Note that YouTube in fact
change the file format of the uploaded video to make it uniform and
playable on the site. Does this take it outside the safe harbour protection?
Possibly, there is no clear answer).
512(d): “Searching”. Not liable for “referring or linking users to an online
location containing infringing material”. All search engines rely on this
safe harbour.
The Digital Millennium Copyright Act
There are all sorts of requirements for a company to remain in a safe
harbor. The company must have a notice and take down procedure. The
service provider must disable access to infringing material upon getting a
notice from the copyright owner. There are many recent cases about who
has the “duty to police”. E.g. must eBay continually monitor its own site
for infringing material or can it merely wait for take-down notices from
the copyright owners? (Recent case: Tiffany v. eBay). The company must
have a policy of terminating repeat offenders. That is why websites like
YouTube will terminate your user account if you repeatedly upload
copyright infringing material.
62
If the company has red flag knowledge, then it must act of its own accord
(i.e. even without receiving a take-down notice). Red flag knowledge =
awareness of activity from which infringement would be apparent. eBay
would be expected to implement measures to automatically disallow a
post for “imitation Rolex watch”, for example. YouTube should
automatically block the attempted upload of a 2Gigabyte file called
“Shrek 3”.
South Africa- Electronic Communications and Transactions Act 25 Of
2002. Namibia- New Electronic Transactions Bill?
Exceptions to Copyright infringement
s15 sets out the general exceptions regarding protection of literary and
musical works, as:
(1) Copyright shall not be infringed by a fair dealing in the use of a literary
or musical work.
Any fair dealing with a literary, musical, or artistic work, or with a
broadcast or a published edition, does not infringe that copyright when it
is for purposes of research or private study by, or the personal private use of,
the person using the work
for purposes of criticism or review of that work or another work
for purposes of reporting current events –
in a newspaper, magazine or similar periodical; or
by means of broadcasting or in a cinematograph film.
for purposes of judicial proceedings or reporting on judicial proceedings.
for purposes of quoting from the work.
for purposes of illustration for teaching.
What constitutes "fair dealing"?
•
There is no definition of fair dealing in the Act, fair dealing is
decided on a case-by-case basis.
•
English law has no definition, the American approach: s107 of the
United States’ Copyright Act lists a set of criteria to be taken into
account when assessing fair use of a work:
the purpose and character of the use;
the nature of the copyrighted work;
the amount and substantiality of the portion used; and
the effect upon the copyright holder’s potential market.
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Unit 4 Sources of Intellectual Property law in Namibia
•
These criteria have also been used in Australia with the addition of
a fifth criterion – whether the work can be obtained within a
reasonable time at a normal commercial price.
•
There should however be a balance maintained between the
interests of the author or copyright holder to inhibit reproductions
of his work and the rights of the public to use the works for the
purposes specified.
s16 General exceptions in respect of reproduction of works.
s18 General exceptions regarding protection of artistic works.
s19 General exceptions regarding protection of cinematograph films.
s20 General exceptions regarding protection of sound recordings.
s21 General exceptions regarding protection of broadcasts.
s22 General exceptions regarding protection of programme-carrying
signals.
s23 General exceptions regarding protection of published editions.
s24 General exceptions regarding protection of computer programs.
s50 Exceptions from prohibition against use of performance without
consent of performer.
Unit summary
Summary
64
In this unit you learned about the different elements of a copyright. We
have also looked at the mechanisms provided by our Copyrights Act for
copyright protection nationally. We have equally incorporated the
copyright protection mechanisms internationally. We have discovered the
numerous categories of the works that are qualified for copyright
protection in Namibia, and indeed beyond. Finally, we learned about what
infringement of copyrights is and the test for infringement.
References
Criminal Procedure Act 57 of 1977.
References
A&M Records Inc v Napster Inc 239 F.3d 1004.
Fax Directories(Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164.
Haupt t/a Softcopy v. Brewers Marketing Intelligence (Pty) Ltd & other
SCA.
Metro Goldwyn Meyer Inc & others v Ackerman & another 558 JOC
(SEC), [1996] 1 All SA 584 (SE).
Mr Video (Pty) Ltd and Others v Nu Metro Filmed Entertainment (Pty) Ltd
and Others [2010] 2 All SA 34 (SCA) (29 September 2009).
Re Aimster Copyright Litigation 334 F.3d 643.
Southern Sun Africa v Sun Square Hotel (Pty) Ltd (A 66/2016) [2018]
NAHCMD 105 (23 April 2018).
Sony v. Universal Studios (The Betamax case) 464 U.S. 417,442.
TRIPS.
Twentieth Century Fox Film Corporation and Another v Anthony Black
Films 1982 (3) SA 582.
WIPO copyright treaty.
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Unit 5 Sources of Intellectual Property law in Namibia
Unit 5
Trademarks
Introduction
Trademarks consists primarily of signs that are capable of distinguishing
goods or services of one firm or company from those of another. They
serve to indicate the source of origin of the item on which they are found
or for the services to which they relate.
In this unit we are going to discover what constitutes a trademark. We are
going to study the constituent elements of a trademark and their
functions. Not all trademarks are registrable, certain trademarks are
excluded and cannot be registered for various reasons.
We will finally look into trademark infringement at common law and in
terms of the newly enacted Industrial Property Act. Thereafter, we will
proceed to examine the available remedies by looking into various court
decisions.
Outcomes
Upon completion of this unit you should be able to:
▪ Define a Trademark
▪ Outline the elements of a Trademark
▪ Understand the different functions of trademarks
▪ Identify which trademarks are registrable
▪ Understand the limitations on trademarks
Industrial Property Act 1 of 2012
Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty) Ltd
Prescribed reading
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1.Definition of a Trademark
A trademark of a company distinguishes their goods and services from
the rest of similar products.
The primary national legislation: Industrial Property Act (IPA) 1 of 2012
Section 131 of IPA defines a trademark…
“…other than a certification or a collective trade mark, means a mark
used or proposed to be used by a person in relation to goods or services
for the purpose of distinguishing those goods or services from the same
kind of goods or services connected in the course of trade with any other
person.”
Source: https://www.colormatters.com/color-and-marketing/colorbranding-legal-rights
Elements of a Trademark
i Mark
ii “…means any sign capable of being represented visually, including
a device, name, signature, word, letter, numeral, figurative
element, shape, colour or container for goods, or any combination
of such signs…”
iii Distinguishes
iv Same kind of goods or services of
v Different parties
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Unit 5 Sources of Intellectual Property law in Namibia
Trademark functions23
Indicate that all the goods and services bearing the mark emanate from the
same commercial source.
Distinguish particular goods or services from other goods or services.
Market and sell goods or services.
May become a guarantee of quality.
What is a trademark?
Activity
A trademark, or a brand, is a sign used for a good or service
to identify the source of the good or service.
Feedback
23
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2.Who may apply for registration of a trademark?
According to section 139 of the IP Act, any person who has a bona fide
claim to proprietorship of the mark and bona fide uses or intends to use
the mark as a trade mark may apply for the registration of the mark as a
trade mark.
To have a bona fide claim to proprietorship an applicant for registration
of a mark in use must claim, in good faith, to be entitled to be registered
as proprietor of the mark, and if the mark is not in use, the applicant can
make such a claim if he has a sufficiently present and unconditional
intention to use the mark.
The term 'proprietorship' is not defined in the Act. However, the section
10 of the neighbouring South Africa’s Trade Marks Act no 194 of 1993
contains a similar provision on registration of a trademark.
It was held in Tekno-Medical Optik Chirurgie GMBH v Registrar of
Trade Marks and Another24 that the word 'proprietor' as used in the Act
does not import common – law ownership of the trademark but is used in
the sense of 'one who has the exclusive right or title to the use' of it. One
can claim to be the proprietor of a trademark if one has appropriated a
mark for use in relation to goods or services for the purposes stated, and
so used it. The word 'appropriate' in this context comprehends 'originate',
'acquire' and 'adopt'.
3.Registrable Trademarks
According to Section 134 of IPA
“ …(1) In order to be registrable, a trade mark must be capable of
distinguishing the goods or services of a person in respect of which it is
proposed to be registered from the goods or services of other persons,
either generally or, where the trade mark is proposed to be registered
subject to limitations, in relation to use within those limitations.
24
(2015/59773) [2017] ZAGPPHC 404 (28 July 2017)
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Unit 5 Sources of Intellectual Property law in Namibia
(2) A trade mark is considered to be capable of distinguishing within the
meaning of subsection (1) if, at the date of application for registration, it
is inherently capable of so distinguishing or if it became capable of
distinguishing by reason of prior use thereof.
Therefore, it can be said that in order to establish whether a mark is
distinguishable within the meaning of the provision of the Act, the
enquiry can be done at two stages.
The first stage is whether the mark was, at the date of application for
registration, capable of inherently distinguishing the appellant’s goods
from those of another person; and, if the answer to the first question is no,
the enquiry does not just end there as the next question will be whether
the mark was distinguishable by reason of its use to date.
Recommended case law readings:
Beecham Group Plc and Another v Triomed (Pty) Ltd
Christian Louboutin v Yves Saint Laurent (US)
Case study
4. Limitation to Trademark Rights
A trademark will not be registered on objective grounds contained in the
provisions of section 137.
Section 137 of IPA states that a mark is not registrable and cannot be
validly registered if ▪ it is incapable of distinguishing the goods or services of one person
from those of other persons;
▪ it is contrary to public order or morality;
▪ it is inherently deceptive or the use thereof is likely to mislead or
deceive the public or other traders, including as regards the
geographical origin of the goods or services concerned, or their nature
or characteristics;
▪ it consists exclusively of a sign or indication which serves, in trade, to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, or time or mode of production of the goods or
rendering of the services;
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▪
it consists exclusively of a sign or indication which has become
customary in the current language or amongst bona fide traders in
regard to the goods or services concerned;
▪ it is identical with, or is an imitation of or contains as an element, an
armorial bearing, flag or other emblem of, a name of or abbreviation
or initials of the name of, or official sign or hallmark adopted by, any
State, intergovernmental organisation or organisation created by an
international convention, unless authorised by the competent authority
of that State or organisation;
▪ its use would be likely to cause confusion or would offend any class
of person or would be contrary to law;
▪ the applicant for registration has no bona fide claim to proprietorship
or no bona fide intention of using it as a trade mark; or
▪ the application for registration was mala fide.
Prohibition of registration: third party rights
Section 138 (1) provides that a mark is not registrable and cannot validly
be registered if :
a
subject to subsection (2), it is identical with or confusingly
similar to, or it or an essential element thereof constitutes a
reproduction, imitation or a translation of, a trade mark which
is entitled to protection under the Paris Convention as a wellknown trade mark and which is well known in Namibia, if the
use of the mark is to be in relation to the identical or similar
goods or services in respect of which the trade mark is well
known, and such use of the mark is likely to cause deception
or confusion.
The trade Mark must be well known in Namibia on the day of
application. To qualify as well known the mark must have acquired a
reputation in Namibia.
Case study
e.g. McDonalds Corporation v Joburgers Drive Inn Restaurant (Pty) Ltd:
MacDonalds obtained 52 TMs in SA incorporating “MacDonald”.
McDonalds had not been trading in SA and Joburgers planned to establish
chain using McDonalds TM.
McDonalds successfully interdicted Joburgers using SA Franchise
Association Evidence and 2 market surveys.
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Unit 5 Sources of Intellectual Property law in Namibia
b
it is identical with or confusingly similar to, or it or an
essential element thereof constitutes a reproduction, imitation
or translation of a trade mark which is well known and
registered in Namibia for goods or services which are not
identical or similar to those in respect of which registration is
applied for, if the use of the mark would be likely to take
unfair advantage of, or be detrimental to the distinctive
character or the repute of the well-known mark or the interests
of the owner of the well-known trade mark are likely to be
prejudiced by such use, despite the absence of deception or
confusion; or
c
it is identical to a registered trade mark or to a trade mark in
an application belonging to a different proprietor with an
earlier filing or priority date, in respect of the same goods or
services or closely related goods or services, or if it so nearly
resembles such a trade mark as to be likely to deceive or cause
confusion.
Read: Pleasure foods(Pty) Ltd v Timi Foods CC
On-Line Lottery Service v National Lotteries Board
Limitation to trademark rights
▪ Classification (Section 133 of IPSA)
▪ Goods/services registered in respect of particular class/es.
▪ Disclaimer
The Registrar may require the disclaimer of a word or any part of a trade
mark which, in his view, is not registrable as such. This would include any
word, which is common to the trade or otherwise has a non-distinctive
character, distinctive such as for example a geographical term, a name or a
laudatory term.
Admission
Furthermore, an admission may be required by the Registrar. For
instance, that a certain word, e.g. "flower" or "sun", or a representation,
e.g. a human figure, is common to the class. Accordingly, no exclusive
rights can be obtained in an admitted word or representation.
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E.g. Edgars Club
The applicant is not entitled to any exclusive rights in the word “CLUB”
apart from the mark.
Association
If certain trademarks resemble each other or are similar, and are filed in the
same or different classes, the Registrar may require that such trade mark
registrations be associated. This means that the registrations have to be
assigned together to another party.
PLEASE READ PART 8 OF THE INDUSTRIAL PROPERTY ACT OF
2012 AS IT DEALS WITH THE DURATION OF A TARDEMARK.
Trademark Infringement
Please note that the intellectual property rights’ registering entities do not
have policing mechanism to prevent infringement of the registered IP
rights – therefore the IP right holder must be pro-active in protecting the
right.
There are two major categories of TM infringement, namely:
✓
Statutory infringement
✓
Common law infringement
Statutory Infringement
Refer to section 182 of the Industrial Property Act of 2012
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Unit 5 Sources of Intellectual Property law in Namibia
a)
Primary Infringement (s. 182 a.)
b)
Extended/ Secondary Infringement (s. 182 b.)
c)
Dilution (s. 182 c.)
Common Law Infringement
Manifests as a protective mechanism against infringement of unregistered
trademarks and this is done through rules of unlawful competition.
We will examine this type of infringement in depth in Unit 6.
Case study
Recommended Case Law Reading:
Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty)Ltd 1990 (1) SA 722
Laugh It off Promotions CC v SAB International 2006 (1) SA 144
5.Remedies for Trademark Infringement
Read section 183 of the Industrial Property Act of 2012 as it sets out the
available remedies for trademark infringement(s). Nevertheless, they are
as follow:
Interdict
An order for the removal of infringing mark from all the infringing goods.
Where the infringing mark is inseparable or incapable of being removed;
an order that all such goods or materials be delivered up to the claimant.
Damages;
Or in lieu of damages, and at the option of the claimant, a reasonable
royalty which would have been payable by the licensee for the use of the
trademark concerned…
POSSIBLE PLAUSIBLE DEFENSES
1. Use of own name, name of place of business, name of predecessors in
business or their places of business, in good faith.
2. Description or indication which points to the kind, quality, quantity,
intended purpose, value, geographical origin etc. of the goods or
services.
3. Import of goods which bear a mark for which consent has been
obtained by the seller.
4. Use of features, i.e. container, shape, configuration, colour or pattern
which is registered as a mark- in good faith.
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5. Use of a mark within the scope of limits entered in the register
against that mark
6. Mark is identical/confusingly similar but is registered.
In other words, is there a likelihood of confusion? likelihood of
confusion exists when consumers viewing the allegedly infringing mark
would probably assume that the product or service it represents is
associated with the source of a different product or service identified with
a similar mark. Make use of rules of comparison to ascertain possibility
of confusion, for example:
Does the mark cause bewilderment, doubt or uncertainty?
Which type of customer is the target?
If there is awareness of a known mark but not total recollection, does the
new mark cause confusion?
Is the idea represented by the mark the same as that of another mark even
though the appearance may differ?
Are the dominant features of the mark the same as another?
Length of period of confusion not important
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Unit 5 Sources of Intellectual Property law in Namibia
Unit summary
Summary
In this unit you learned about the subject matter of a trademark. We have
also looked at the various components of a trademark and their functions.
We have discovered that not all trademarks are registrable, certain marks
are excluded and cannot be registered for various reasons.
We saw that before the enactment of the new IP Act, infringements on the
trademark were handled in terms of common law. The newly enacted
Industrial Property Act complimented this position. We saw this by the
evidence of the application of the Act by the Courts.
References
Beecham Group Plc and Another v Triomed (Pty) Ltd.
References
Christian Louboutin v Yves Saint Laurent (US).
Laugh It off Promotions CC v SAB International 2006 (1) SA 144.
McDonalds Corporation v Joburgers Drive Inn Restaurant (Pty) Ltd.
Mega Power Centre v Talisman Franchise case.
On-Line Lottery Service v National Lotteries Board.
Pleasure foods(Pty) Ltd v Timi Foods CC.
Sportshoe (Pty) Ltd v Pep Stores (SA) (Pty)Ltd 1990 (1) SA 722.
Tekno-Medical Optik Chirurgie GMBH v Registrar of Trade Marks and
Another (2015/59773) [2017] ZAGPPHC 404 (28 July 2017).
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Unit 6
Industrial Designs
Introduction
In this unit you will learn about all industrial designs (IDs) and their
protection in Namibia. IDs are clearly distinguishable from patents and are
a category of intellectual property rights in themselves. We will discover
how IDs are registered in Namibia and the duration of such rights.
Thereafter we will examine what constitutes infringement of those rights
and the remedies thereto.
Upon completion of this unit you should be able to:
Outcomes
▪ define what is an Industrial Design
▪ outline the registration requirements of an IDs
▪ explain what constitutes IDS infringement & remedies thereto
IP Act
Prescribed reading
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Unit 6 Sources of Intellectual Property law in Namibia
1. What is an Industrial design?
An industrial design (ID) constitutes the ornamental or aesthetic aspect of
an article. A design may consist of three-dimensional features, such as the
shape or surface of an article, or of two-dimensional features, such as
patterns, lines or color. 25
The IP Act has specifically defined the word “design”26 to mean:
any feature or combination of features of form or shape or
configuration, or any feature or combination of features of pattern
or ornamentation, including any composition of lines or colours,
applied to an article to give it an appearance having such features
discernable by the eye, but does not include any feature serving
solely to obtain a functional or technical result.
An ID may alternatively be defined as the appearance of an article
produced by any industrial process or manually. It is that shape and
decorative ornaments of a finished article to the eye that constitutes an
industrial design.
To be protected, an industrial design must be new or original and nonfunctional. This means and industrial design is primarily of an aesthetic
nature, and any technical features of the article to which it is applied are
not protected by the design registration. Industrial designs protect the
ornamental features associated with articles used in commerce.
2. Registration of an ID
In terms of section 99 of the IP Act, the owner of a design may, in the
prescribed manner and on payment of the prescribed fee, apply for the
registration of the design.
25
The Role of Intellectual Property in Sustainable Tourism Development
in Namibia Two case studies by Dr. Malan Lindeque for the World Intellectual
Property Organization. 2019
26
Section 92 of the IP Act
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The owner of a design can be the creator of the design or an employer
who commissioned an employee create a particular design.
A design is only capable of registration if it is new or original. It cannot
be registered if a similar one exists on the register.
It also cannot be registered if it resembles another that has been published
before. Finally, a design cannot be registered if it is the subject of an
earlier application by another applicant.
Requirements for Novelty
A design is new if it has not been disclosed to the public anywhere in the
world, by publication in any form, or by use or in any other way, prior to
the filing date or, where applicable, the priority date of the application for
registration.
Once the ID has been registered, the person registered as the owner of a
design registration has, for the duration of the registration the right to
exclude all others from making, importing, using or disposing or offering
to dispose of in Namibia any article included in the class or classes in
which the design is registered and bearing or embodying the registered
design or a design not substantially different from the registered design,
when such acts are undertaken for commercial purposes.
The registration in respect of a design expires 15 years after the filing
date of the application for its registration. However, in order to maintain
it, a prescribed annual renewal fee must be paid to the Registrar in the
manner prescribed, starting one year after the filing date of the
application for the registration of the design.
3. Limitations of Rights
The rights of the owner of a registered design do not extend to –
a
b
c
d
e
acts in respect of articles which have been put on the market
in Namibia by such owner, or with his or her written consent;
the use of articles on aircraft, land vehicles, or vessels of other
countries which temporarily or accidentally enter the airspace,
territory or waters of Namibia;
acts related to experimental use of the design or acts done on a
non-commercial scale for scientific research;
use of the design for teaching purposes; or
acts that are done privately and on a non-commercial scale.
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Unit 6 Sources of Intellectual Property law in Namibia
Voluntary licences27
The owner of an application for a design registration or a design
registration may enter into a licence contract with one or more other
persons to authorise such person or persons to exploit the design covered
by the registration or the application in Namibia.
There are two types of licenses and they each grant the licensee different
rights. They are:28
a)
licence to make
✓ enables the licensee to make an article bearing or embodying a
registered design.
✓ It also carries with it the right to exploit the article, including the
right to use or offer to dispose of or dispose of the article.
b)
exclusive voluntary licence to exploit.
✓ an exclusive voluntary licence carries with it the right for
the licensee to exploit articles bearing or embodying the
registered design to the exclusion of all others, including the
owner of the design registration.
✓ to institute proceedings against third parties for the
infringement of the design registration (licence contract
must specifically provide for such right).
4. Acts of Infringement
As aforementioned, the exclusive right of the ID owner is retained for the
term of the patent subject to payment of fees and working/exploiting the
ID. Infringement will involve an unauthorized use or exploitation of the
patented invention by a third party.
27
28
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See section 116 of IP Act
See section 118 of IP Act
No person other than the owner of the design registration may exploit, in
Namibia, a design registered in Namibia in regard to articles included in
the class or classes in which the design is registered unless he or she has
been authorised to do so by the owner of that design registration by way
of licence, in writing and signed by the licensor.
The provisions of section 108 in relation to the limitations within which
an ID may be exploited apply hereto.
Where there is infringement, initiative for enforcement lies with the ID
owner. The owner has the responsibility to detect infringements and
inform infringer in a written communication of the infringement and
implication to sue should infringement continue. If infringer is persistent,
ID owner can consider granting a license. This usually results in settling a
dispute and benefits the owner.
If ID owner does not wish to license, he may have recourse to legal action
(SEE s71 of IPA on remedies) inclusive of seeking an interdict. Some
infringers may wish to pursue the suit so as to have the patent invalidated
by bringing evidence before the court to point out defects that were not
detected prior to granting the patent.
Unit summary
Summary
In this unit you learned all about industrial design and their protection in
Namibia. ID are clearly distinguishable from patents and are a category of
intellectual property rights in themselves. You have also learnt on the
registration and duration of such rights in Namibia. Only once registered
can an ID be infringed. In this unit we have briefly outlined the acts of
infringement and the relevant remedies.
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References
References
IP Act.
The Role of Intellectual Property in Sustainable Tourism Development
in Namibia Two case studies by Dr. Malan Lindeque for the World
Intellectual Property Organization. 2019
Unit 7
Patents
Introduction
A patent is a title granted under the Industrial Property Act to protect an
invention. Simply put, a patent is an “intellectual property right” in an
invention. In much more legalistic definition, a patent is a document,
issued, upon application, by a government office (or a regional office
acting for several countries), which describes an invention and creates a
legal situation in which the patented invention can normally only be
exploited (manufactured, used, sold, imported) with the authorization of
the owner of the patent.
We can therefore denote from the given definitions that the term patent is
often used as synonymous with ‘invention’, the terms are not
synonymous. Patents are granted for inventions. A patent is the grant of
exclusive rights by the state for an invention.
EXHIBIT B
In order to understand what a patent is, carefully read the following
example:
Thomas Edison found that an electric current passed through a tungsten
filament in a vacuum produces light and he used that finding to develop a
light bulb. That invention entitled him to the grant of a patent.
In Namibia patents are available for any inventions, whether products or
processes, provided the invention is new, involves and inventive step and
is industrially applicable. A patent gives its owner (the "patentee") the
right to prevent others from making, using, importing, or selling an
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invention. In other words, patenting an invention gives the patent owner a
monopoly over the invention.
A patent is granted under a country’s domestic laws, which may be
affected by international laws. A patent may come with conditions or
exceptions, depending on what the law in a given country says.
A patent over an invention allows the owner of the patent to benefit from
the technological progress introduced by the invention for a certain
period of time. The period of protection is thus limited. In addition to that
the inventor must, in “exchange” for protection, disclose their invention.
All other persons are excluded from commercially exploiting the
invention for that period.
BRIEF CASE NOTE
Free World Trust v Électro santé Inc 2000 SCC 66 [Canada]
Patent protection rests on the concept of a bargain between the inventor
and the public. In return for disclosure of the invention to the public, the
inventor acquires for a limited time the exclusive right to exploit it. It
was ever thus. Even before the Statute of Monopolies (1623), the Crown
rewarded an inventor with a limited monopoly in exchange for public
disclosure of “a new invention and a new trade within the kingdom … or
if a man hath made a new discovery of anything”: Clothworkers of
Ipswich Case (1653), where the court went on to say that the effect of an
unjustified monopoly was “to take away free-trade, which is the birth
right of every subject”.
Upon completion of this unit you should be able to:
Outcomes
▪
▪
▪
▪
▪
describe the content of a patent
explain the justifications for granting patent rights
list patentability requirements
identify patent infringement
differentiate between a patent and IDs
IP Act
×see reference list at the end of chapter.
Prescribed reading
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Unit 7 Sources of Intellectual Property law in Namibia
1. Justification for granting patent rights
▪ Serves as a reward for innovation.
▪ The invention constitutes property- the inventor therefore has a
“natural right” of ownership of invention."
▪ Giving them a right to control the destiny of that invention, to use and
profit from it, even after (and especially after) disclosing the
technological innovation to others.
▪ Protection results in public benefits- once a patent has been registered,
a duplicate cannot be made.
▪ This encourages people to become more innovative.
▪ To make advances over existing technology.
▪ Public benefits from this because there is always a better and more
advanced model- Utilitarian justifications.
NB THE JUSTIFICATIONS PROVIDED HERE ARE NOT EXHAUSTIVE. CAN
YOU THINK OF MORE??
▪ Does granting a patent right actually act as an incentive?
▪ How can patenting stifle innovation?
▪ Are there more appropriate ways to protect one’s inventions?
1.
Activity
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What is an invention?
Feedback
it is a solution that may produce certain effects by applying natural laws
and forces. For example, an object placed in water will be buoyed by the
water, with the buoyancy equal to the weight of the water displaced by
the object. This phenomenon represents a natural law, which is not
eligible for patent protection. On the other hand, the design of a ship
made by applying this natural law is a technical solution that is eligible
for protection. An invention generally consists of several technical
features, including relations between them.
For example, to make a sword you have to take a series of steps. First,
you refine iron ore into slags, melt the slags into a steel ingot, and press
the ingot into a billet. Then, you forge the billet into a steel bar, and make
a crude sword out of the steel bar. The crude sword is further sharpened
to form the blade. Finally, you engrave a pattern on the blade, polish it
and mount a handle to produce a finished sword. These steps themselves
are technical features, as are the order of the steps, which cannot be
changed at will.
2. Regulatory overview and historical context
International instruments
Paris Convention
In 1873 there was an exhibition of inventions in Vienna, during which
concerns were raised about the absence of protection for inventions. The
display removes novelty & increases the possibility of theft. Foreign
inventors did not want to display their commodities because they feared
there was inadequate legal protection. This resulted in efforts towards
protecting innovations.
The Convention makes provision for:
National treatment -afford to nationals of other Contracting States the same
protection as to its own nationals. If not a national of a contracting state,
must be domiciled or have industrial/commercial establishment in a
country contracting state.
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Right of Priority -a regular first application filed in one of the Contracting
States, allows the applicant to, within a period of 12 months, apply for
protection in any of the other Contracting States.
Compulsory licenses- may be granted (article 5)- Government forces you
to license it out- fee payable to you. The inventor has a right to be named
in the patent (Art 4ter)
The Agreement on Trade-Related Aspects of Intellectual
Property Rights (“TRIPS”)
BRIEFLY
The Uruguay Round of multilateral trade negotiations held in the
framework of the General Agreement on Tariffs and Trade (“GATT”)
was concluded on December 15, 1993. The agreement embodying the
results of those negotiations, the Agreement Establishing the World
Trade Organization (“WTO Agreement”), was adopted on April 15,
1994, in Marrakech.
Those negotiations included, for the first time within the GATT,
discussions on aspects of intellectual property rights related to
international trade. The result of those negotiations, contained in an
Annex to the WTO Agreement, was the Agreement on Trade-Related
Aspects of Intellectual Property Rights (the “TRIPS Agreement”).
The WTO Agreement, including the TRIPS Agreement (which is binding
on all WTO Members), entered into force on January 1, 1995. The
former agreement established a new organization, the World Trade
Organization, which began its work on January 1, 1995.
TRIPS Provides for minimum standards.
Article 2 -It provides that Paris Convention is incorporated by reference
[art 1-12, 19].
Article 3 - confirms national treatment although it uses the term ‘no less
favorable’- this is not in Paris Convention.
Section 5 deals with Patents specifically and provides for criteria for
invention as well as exceptions that members may choose to make e.g.
public morality.
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Patents Co-operation Treaty (PCT)
The PCT is an agreement for international co-operation and rationalization
with regard to:
-the filing;
-searching;
-examination; and
-dissemination of technical information.
It is an agreement under the Paris convention and it is only open to
parties/countries who are parties to Paris.
PCT Has an international and a national phase. It establishes an
international system which enables the filing, at a single patent office, of
a single application (international application) in one language having
effect in each of the countries party to the PCT which the applicant
designates.
Provision is made for the formal examination of the international
application by a single patent office (the receiving office). Each
international application is subjected to an international search which
results in a report citing the relevant prior art (evidence that invention is
already known) which may have to be taken into account in deciding
whether the invention is patentable; that report is made available to the
applicant and is later published. Further, PCT provides an option for an
international preliminary examination of the international application.
This goes to the offices that have to decide whether or not to grant the
patent; and to the applicant- a report containing an opinion as to whether
the claimed invention meets certain international criteria for patentability.
NB: each country that the inventor specified must nevertheless still
evaluate the application in terms of national laws. The result is a bundle
of national patents in the successful countries.
Patents and the Budapest Treaty on the international recognition of the
Deposit of Microorganisms for the purposes of patent procedure.
With this treaty, disclosure is necessary for patenting. Where
microorganisms are used, and cannot be adequately disclosed in writing,
then a sample must be deposited with an institution equipped to deal with
microorganisms like an international library.
Patent Law Treaty (PLT)
The purpose is to streamline formal procedures in respect of national and
regional applications. Except for filing dates, it provides that there are
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certain requirements/formalities that the contracting states can ask for in
the patent application.
Strasbourg Agreement concerning International Patent
Classification
Classification system-IPC;
Came in force 1975.
Divided technology into 8 sections, 20 subsections, 118 classes, 624
subclasses 67000 groups.
Each of the sections etc. has a title and there is a coding system- according
to the technical features of the item.
What about a single treaty for all nations??
NATIONAL INSTRUMENTS
Brief Historical overview of Namibian Patent Law
The History of Namibian Patent law can be traced to South African
Patent law. The practice of granting patent monopolies spread to northern
Europe; eventually monopolies for inventions were granted in the
Netherlands by the Estates General as privileges. The Estates General
controlled the Cape region during Dutch colonisation.
When the Cape was later occupied and colonised by Britain, British
patents were sometimes also extended to the colonies; patent protection
in the Cape Colony could at that time have been obtained only via a
British patent that was accordingly extended.
The Cape Colony and the Natal Colony enacted their own patent statutesThe Cape Patents Act 17 of 1860 and the Natal Patents Act 4 of 1870
respectively - comprised mainly the English patent law of that time.
OFS - Orange Free State Ordinance 12 of 1884 as replaced by Ordinance
10 of 1888, which later became Chapter CXll of the Orange Free State
Law Book ZAR ‘Octrooiwet’ 6 of 1887.
After Anglo-Boer was a Patent Proclamation was enacted for the
Transvaal Colony - The Transvaal Proclamation 22 of 1902. Four
colonies united in 1910 into the Union of South Africa. In 1916 the
Union of South Africa enacted the Patents, Designs, Trade Marks and
Copyright Act 9 of 1916.
This statute was replaced by the 1952 Patents Act, which was in turn
replaced by the 1978 Patents Act. And has now been repealed by the
Industrial Property Act 1 of 2012.
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The Industrial Property Act
The Act was Modelled on the European Patent Convention (EPC). Its
formulation follows the approach of the British Patents Act 1977 which
was drafted in light of the EPC of which the United Kingdom is a member.
The EPC established the European Patents Office (EPO).
The administrative organs of the European Patents Office include the
Technical Board of Appeal and the Enlarged Board of Appeal. The
decisions of the Technical Board of Appeal and the Enlarged Board of
Appeal influence the judicial interpretation of the requirements of
patentability under English case law, from which guidance is sought from
time to time by the South African judiciary and which Namibia will most
probably follow if faced with the same.
The EPO, as examining authority for European patents, uses a
comprehensive set of Guidelines in the assessment of patent applications.
The Guidelines can also be found at www.epo.org/patents/law/legaltexts/guidelines.html
Section 13 of the Act provides that:
Patents are available for any inventions, whether products or processes, in
all fields of technology, provided the invention is new, involves an
inventive step and is industrially applicable.
3. Industrial Property Act: Preliminaries
Priority Date (“PD”)
Section 1 of the Act defines PD as the date of the earlier application or
applications that serves or serve as the basis for the right of priority
provided for in the Paris Convention and claimed in a convention
application.
It is therefore, the date of the lodging of the first application for patent for
invention. The priority date of a patent or a pending application is normally
the earliest filing date of its application, whether originating in Namibia or
by way of a convention application from abroad.
Why is it important?
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If an invention that is the subject of a patent or patent application is not
new or is obvious, in the light of subject matter forming part of the state of
the art, preceding the priority date of an application or patent; the invention
cannot qualify for protection.
Prior Art (“PA”)
Section 12(1)- “prior art” means the art at a date immediately prior to the
filing date or, where appropriate, the priority date of an application
claiming the invention. Evidence-invention known
Three categories:
PA Category 1: Section 12(1) of IPA
Prior art means, all matter disclosed to the public, anywhere in the world,
by publication in any form, or by oral disclosure, by use or in any other
way.
What constitutes “all matter”?
Everything, no matter what type of information
“made available to the public”?
The public is not just Namibia – it is absolute novelty so anywhere in the
world.
Matter can be made available actively or passively.
When subject-matter has come to the notice of a person who is free to
disseminate it, the disclosure can be said to have taken place actively or
passively.
A non-confidential disclosure to a specific person in making available to
the public. If there is no confidentiality there is no inhibiting fetter or
prohibition on further disclosure.
In such a case disclosure of subject-matter to only one other person who is
free to disseminate it is adequate to result in its forming part of the prior
art.
If communicated through a generally non-confidential disclosure e.g.
written document like a report, lecture etc. then it is made available to the
public if it is accessible to the public at large.
Passively: In such a case, it must have been made available to the public at
large to form part of the state of the art, e.g. in a library.
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Bristol Myers Co Application [1968] FSR 407 - even if you
communicate the invention to a single member of the public without some
inhibiting condition on that person, then it is sufficient to make it available
to the public.
Note that it is only non-confidential information – i.e. made available to
the public
Confidential disclosures
A secret disclosure will not destroy novelty as it was not made available to
the public.
See Levin and Another v Levin and Others (644/09) [2011] ZASCA prior to filing patent application, exhibited the invention in confidence to
certain persons with object of persuading them to place orders for the
invention. Held that the exhibition of the invention in confidence did not
amount to prior publication (under 1952 Act).
“by written or oral description”?
The quality of a disclosure, whether by way of description, whether
actively or passively, is according to the ordinary dictionary meaning- of
being to 'set forth in words; recite characteristics of a thing.
For prior description by way of a published document see Gentiruco AG
v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 650:
The subject-matter of the state of the art must recite the essential integers
of a patent under attack in such a way that the same or substantially the
same technology was identifiable or perceptible and hence made known.
It must be clear enough to enable a person having knowledge of the
appropriate technical field readily to perform the invention directly from
the description, without, for example, requiring further experimentation or
reference to other disclosures, except if such a reference is to a disclosure
actually forming part of the disclosure under investigation to form part of
the state of the art any disclosure must be ‘enabling’.
PA Category 2: Section 14(3)
Prior art also includes matter contained in an application, open to public
inspection, for a patent, despite that the application was lodged at the
Office and became open to public inspection on or after the priority date of
the relevant invention, if:
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a)
that matter was contained in that application both as lodged and as
open to public inspection; and
b)
the priority date of that matter is earlier than that of the invention’
The subject-matter of co-pending Namibian patent applications also forms
part of the prior art in so far as it has become open for public inspection.
This broadens the matter that forms part of the prior art to include matter
that is not “available to the public.
All of the matter disclosed in a complete application that goes through to
publication of acceptance and that is of an earlier filing date than the
priority date of an invention for which it allegedly serves as anticipation
will be taken into account as part of the prior art.
This is so because the date of publication of acceptance of such an
application is also the date of becoming open for public inspection. This
will not be the case for subject matter that has been removed by amendment
prior to the advertisement of acceptance.
PA Category 3: Traditional Knowledge
Knowledge developed by or in possession of a local or indigenous
community and which originated at a date prior to the priority date of the
relevant invention.
4. Patentability Requirements
Section 13: “Patents are available for any inventions, whether products or
processes, in all fields of technology, provided the invention is new,
involves an inventive step and is industrially applicable”.
1. Novelty
2. Inventiveness
3. Utility
Novelty
For an invention to be ‘new’ and hence patentable:
It must reveal a difference when compared with a particular body of
knowledge (known as the ‘prior art’ or ‘state of the art’) at a particular ‘cutoff’ date (the ‘priority date’).
Test for novelty by comparing an invention with the state of the art as it
existed immediately before the priority date to which the invention is
entitled. If there is a substantial difference (i.e. there is something in the
invention which does not appear in the state of the art) then the invention
can be regarded as new.
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When the invention cannot be regarded as new then we usually say that “it
has been anticipated through lack of novelty”.
According to section 14 of the IPA;
1)
An invention is new if it is not anticipated by prior art.
(2)
For the purposes of subsection (1) disclosure to the public of the
invention may not be taken into consideration if it occurred within
six months preceding the filing date or, where applicable, the
priority date of the application, and if it was by reason or in
consequence of:
(a) acts committed by the applicant or his or her predecessor in
title, or of an unauthorized disclosure; or (exception to the
prior art)
(b) an abuse committed by a third party with regard to the
applicant or his or her predecessor in title.
(3)
For the purposes of subsection (1), prior art also includes matter
contained in an application, open to public inspection, for a patent,
despite that the application was lodged at the Office and became
open to public inspection on or after the priority date of the relevant
invention, if:
(a) that matter was contained in that application both as lodged
and as open to public inspection; and
(b) the priority date of that matter is earlier than that of the
invention.
The Determination of Newness/Novelty – considerations
(i)
In Namibia unlike South Africa, when a patent is granted there is
a novelty search, SA on the other hand only examine for formal
requirements, not content.
(ii)
When assessing invention for novelty, one must compare the claim
in the application against the prior art.
(1) You first need to determine what the inventive concept is.
(2) This is done by interpreting the claims.
The object of the claims of a patent specification is to cover an
invention in all its variations and aspects, if dealing with more than
one aspect, by generically defining it.
The claims must be read in the light of the description and
drawings and interpreted through the eyes of a person skilled in the
art
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Unit 7 Sources of Intellectual Property law in Namibia
iii)
The various features of a claim are called its integers.
As a first step the essential integers of each claim of a patent
specification must be established from all of the integers identified
for each claim
Gentiruco AG v Firestone SA (Pty) Ltd 1971 SA 1972 (1) SA 589 (A)
at 646 and Stauffer Chemical Company and another v Safsan
Marketing and Distribution Co (Pty) Ltd and others 1987 (2) SA 331
(A) at 347.
Essential integers are those of which the elements covered by them
contribute to define the invention, even if only apparently marginally.
G I Marketing CC v I Fraser-Johnson 1996 (1) SA 939 (A):
In establishing whether an integer is essential or not the court distinguished
between:
(i) words which merely define the field of application of the claimed
invention, and
(ii) words which import some limitation or special quality or characteristic
of the invention'
(iii) In Netlon Ltd and another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A)
at 861H–862B Trollip JA said in regard to the requirement that an
invention must be new:
The defense (or objection) of anticipation relates to the claims and not to
the description of the invention in the body of the specification in suit..’
and ‘the question then considered is whether the prior publication
'describes' the invention in suit as claimed; that is, whether it sets forth or
recites at least the latter's essential integers in such a way that the same or
substantially the same process or apparatus is identifiable or perceptible
and hence made known or the same or substantially the same product can
be made from that description in the prior publication; if the description in
the prior document differs, even in a small respect, provided it is a real
difference, such as the non-recital of a single essential integer, the
anticipation fails; the opinions of expert-witnesses that the prior
publication does or does not anticipate a claim in suit must be disregarded
for that is for the Court to decide.’
(iv) When in documentary form, a disclosure must be clear enough to
enable a person having knowledge of the appropriate technical field readily
to perform the invention directly from the description, without, for
example, requiring further experimentation or reference to other
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disclosures, except if such a reference is to a disclosure actually forming
part of the disclosure under investigation.
[Gentiruco AG v Firestone SA (Pty) Ltd 1971 SA 1972 (1) SA 589 (A) at
650]
(v) The whole content of a prior application/patent will be used to check
for anticipation.
How does the court make the comparison?
See McKelvey v Deton Engineering at 375-376:
The court will adopt a ‘whole contents approach’ i.e. it compares the claims
of the later application with the disclosure or contents of the earlier
application and not merely with the claims.
The claims delineate the scope of your monopoly but the whole contents
approach is that you should not award a patent if the matter has been
disclosed even if it has not been specifically claimed.
(vi) Even where the elements of a disclosure cannot clearly be established
as falling within the claim under assessment, if once the prior art is
performed by a person skilled in that art it leads, at least in the majority of
cases, to a variation falling within the claim, the claim remains anticipated.
(vii) A small but real difference will still lead to novelty
[Veasey v Denver Rock Drill & Machinery Co Ltd 1930 AD 243 at
282].
(viii) Prior art cannot be combined into a mosaic. To constitute an
anticipation the prior description must be contained in a single prior
publication – cannot be synthesized or mosaiced from different
publications unless such publication is comprised of separate parts, even if
published separately so long as they are so interrelated or integrated that
they in fact form one single publication which is to be read as a whole.
Inventiveness
S.25(10) follows the EPC definition of inventive step:
“an invention shall be deemed to involve an inventive step if it is not
obvious to a person skilled in the art, having regard to any matter which
forms, immediately before the priority date of the invention, part of the
state of the art by virtue only of subsection (6) (and disregarding
subsections (7) and (8)”
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Unit 7 Sources of Intellectual Property law in Namibia
NOTE: non-inventiveness is a ground for revocation of the patent.
Section 15(1) An invention must be considered as involving an inventive
step if, having regard to the prior art relevant to the invention claimed in
the application and as defined in sections 12(1) and 14 but excluding
section 14(3), it is not obvious to a person skilled in the art.
15(2) For purposes of subsection (1), an invention is deemed obvious when
the prior art provides motivation to try the invention, or when the method
of making a claimed product is disclosed in or rendered obvious by a single
piece or combination of pieces of prior art.
1. The State of the Art for Inventiveness
The state of the art is not the same as the state of the art for
novelty. It is narrower, more restricted.
The prior art must be considered as a whole – thus can mosaic
unlike for novelty requirement.
2. Who is the addressee/person skilled in the art?
A notional person- the assessment of inventiveness is done through the
eyes of a person reasonably skilled in the art, to distinguish this person
from a specialist.
Such a person must be cognizant of those features of the art with which
the well-informed worker should be acquainted and be adequately
qualified properly to understand the technology of the appropriate field of
invention.
As regards the specific technical field of an invention under assessment,
the person skilled in the art is generally assumed to have full knowledge
of it.
The extent of the knowledge of the notional person must be contrasted
with that person’s creative abilities.
It has been said that such a person must be wholly unimaginative
(Speedmark Holdings (Pty) Ltd v Roman Roller CC (CP) case number
90/3788].
While having the ability to absorb unlimited amounts of new knowledge.
Such a person should be so gifted mentally as to be able to distinguish the
ordinary application of the state of the art (workshop adjustments) from
real inventive activity.
3.
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How to determine whether the invention is obvious
a)
What does “inventiveness” or “non-obviousness” mean?
(i)
The Act does not set out a particular measurable degree of
inventiveness or increased skill.
‘Being obvious' in the context of patent law simply implies that a technical
improvement is too plain to qualify for protection [As specifically said in
the Guidelines for Examination in the European Patent office part C
chapter IV par 9.3. : The term 'obvious' connotes that which does not go
beyond the normal progress of technology but merely follows plainly or
logically from the prior art].
In this regard an improvement that follows the logical and expected path
to be taken by a person skilled in the art cannot be inventive.
(ii)An invention that is a logical result of ordinary development is thus also
obvious, as the subject-matter thereunder is of such a nature that a person
skilled in the art would naturally have attempted it.
[The Guidelines Part C chapter IV par 9.9] says that an invention that
provides an unpredictable, advantageous or surprising technical effect is
inventive]
Likewise technical progress that is a probable outcome of development and
not a mere possibility is also obvious. In the EPO it was said that this arises
when the solution to the technical problem resulted from ordinary to dayto-day trial-and-error development (EPO T 348/86 Cardiac
defibrillator/MEDITRONIC, (1988) 3 EPOR 159)
See Transvaal and Orange Free State Chamber of Mines v General
Electric Co 1967 (2) SA (T) at 38.
(iii)
Mere verification of previous predictions cannot give rise to a valid
patent.
(iv)
Must involve a real inventive step forward.
[AECI Explosives and Chemicals Ltd v Ensign-Bickford (South
Africa) (Pty) Ltd, Bulk Mining Explosives (Pty) Ltd, Dantex
Explosives (Pty) Ltd (TPD) case number 79/3210 at 19 to 21].
A step which could easily have been taken by a person skilled in the art is
not regarded as inventive, as it involves no ingenuity [Veasey v Denver
Rock Drill & Machinery Co Ltd 1930 AD 243 at 271 and 282].
But a real inventive step forward need not have been of exceptional
magnitude.
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[Schlumberger Logelco Inc v Coflexip SA [2002] JOL 10174 (SCA) at
31]
But it should not be of a trifling nature only [Marine Construction and
Design v Hansens Marine Equipment 1972 (2) SA 181 (A) at 422].
(v)
The direction of technological development can also be used to
distinguish between obviousness and inventiveness.
An alleged invention that lies so much off the track of what was known
before as not to naturally suggest itself to a person thinking about the
subject is inventive.
(b) How to determine inventiveness?
(i)
As with novelty the claims of a patent are involved in the
assessment for inventiveness [Ensign-Bickford (SA) (Pty) Ltd v AECI
Explosives and Chemicals Ltd 1999 (1) 70 (SCA)].
(ii)
It seems apparent that when the specific disclosure of an invention
as described in detail in a patent specification (even if by way of a number
of embodiments) is found to be obvious in the light of the prior art, all of
the variations or variants under the claims will also be obvious.
(iii)
A number of relevant disclosures can under certain circumstances
be viewed as a whole against the relevant claim or claims. [Transvaal and
Orange Free State Chamber of Mines v General Electric Co 1967 (2) SA
(T) at 38, Firestone SA v Gentiruco AG 1970 (2) SA 782 (T) at 76. But it
should not be done with hindsight (Gentiruco AG v Firestone SA (Pty) Ltd
1971 SA 1972 (1) SA 589 (A))]
Claim mosaicking should be used with caution especially in the event of a
large number of disclosures indicating different solutions to the problems
[Speedmark Holdings (Pty) Ltd v Roman Roller CC (CP) case number
90/3788 in referring to Gillette v Perma Sharp 1966 FSR 284 at 291].
If the disclosures are in the same field of technology, mosaicking is
permissible, but unrelated and conflicting disclosures cannot be mosaicked
to prove obviousness.
[The Guidelines part C chapter IV par 11.8 says that mosaicking must not
be of unrelated pieces of subject-matter or be combined with hindsight in
an attempt to prove an alleged invention obvious].
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(c) Secondary considerations in assessing inventiveness
If by invoking the abstract meaning of the concepts 'obvious' and
‘inventive’ no clear decision can be arrived at, secondary considerations
can be used as an aid.
While the basic tests deal with the relationship between an alleged
invention and the state of the art, the secondary considerations deal with
aspects such as the impact of the invention on the appropriate technological
fraternity, the effort involved in creating the invention, and the commercial
success of the invention.
(i)
In the case of indicators that relate to the technical advancement
introduced by an invention the fact that it solves a technical problem that
has awaited solution for a long time can be regarded as a strong indication
of inventiveness.
[Veasey v Denver Rock Drill and Machinery Co Ltd. 1930 AD 243 at 289290. Schlumberger Logelco Inc v Coflexip SA [2002] JOL 10174 (SCA)].
(ii)
the efforts of the inventor- the conducting of experiments may aid
in coming to a decision on inventiveness, though only when the person
involved in such experimentation has the appropriate technical
background.
(iii)
Continuous and active but unsuccessful efforts by others skilled in
the art to solve a technical problem that was solved by the alleged invention
have also been said to be an indication of its inventiveness.
(iv)
Positive acknowledgement by persons skilled in the art that an
invention represents an important step forward can be an indication of its
inventiveness, especially when such an acknowledgement originates from
competitors. The same applies to the reception of an invention by others
with surprise, skepticism, or incredulity.
(v)
The progress of industry in a different direction from that in which
the invention is found also serves as an indication of inventiveness.
(vi)The commercial success of an invention that is brought about by factors
other than its intrinsic value cannot be regarded as indicating
inventiveness.
But the combination of commercial success with one or more other
indicators relating to the technical value of the alleged invention such as
the fulfilling of a long-felt need [Levin v Number Plates and Signs 1942
CPC 412] or the overcoming of a technical valueis a very useful indication
of inventiveness.
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(vii)Admissibility of evidence by Expert Witnesses:
such conclusions themselves are inconclusive, the court must evaluate the
technical evidence presented by the expert witness but not let the expert
witness make the final call as to inventiveness.
Thus the decision as to inventiveness rests with the court and the court is
not bound by subjective opinions of expert witnesses.
The mechanics on how to apply section 15 to a case is as follows:
▪ Ensign case;
▪ Determine the art to which the invention relates;
▪ Determine who should be regarded as a person skilled in the art to
which the invention relates;
▪ Determine the state of the art at the relevant time;
Four steps:
1.
What is the inventive step in the patent?
2.
What was the state of the art at the priority date – in relation to the
inventive step.
3.
Decide whether the invention is a step forward on the state of the art
4.
Decide whether a person skilled in the art (and thus in possession of
the knowledge of one skilled in the art) would, in light of the state
of the art, when considering the same problem as the inventor, regard
the step forward by the inventor as obvious.
Utility
Section 16. provides that an invention may be considered to be industrially
applicable if it can be made or used in any kind of industry.
(i) Capable of producing results aimed at.
See Frank & Hirsch v Rodi & Wienenberger 1960 (A)
R&W held patent in ‘improvements in and relating to extensible chain
bands, especially in relation to wristwatch bracelets’ - called Fixoflex.
F&H imported articles which R&D claimed infringed the patent. R&D
sued and F&H claimed that the patent was invalid. One of grounds was
that it was not useful.
5. Patent Monopoly
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Who Can Apply for A Patent?
According to section 19 of the IPA:
(1) The right to a patent belongs to the inventor.
(2)
If two or more persons have jointly made an invention, the right to
apply for the patent belongs to them jointly.
(3)
If and to the extent to which two or more persons have made the
same invention independently of each other, the person whose
application has the earliest filing date or, if priority is claimed, the
earliest validly claimed priority date, and which application leads to
the grant of a patent has the right to the patent for the duration of the
patent.
(4)
The right to a patent may be assigned or may be transferred by
succession or otherwise by operation of law.
An application would usually be made by the inventor unless the inventor
has granted that right to apply to someone else OR co-inventors – section
49. An applicant can be either a natural person or a juristic person.
Ownership
▪ A patent may be owned jointly (Joint ownership), refer to s.50 – equal
undivided shares in patent unless there is an agreement to the contrary.
▪ Section 45 duration of a patent, unless otherwise provided for in the
Act, is 20 years from the date of application. This is subject to
payment of the prescribed renewal fees by the patentee concerned or
an agent. The fees are paid annually from the end of the first year after
the date of filing of the complete application.
In case of non-payment, the patent lapses or is deemed to be withdrawn.
However, section 46 (2) provides that if the owner of a patent or the
applicant for a patent fails to pay the prescribed fee within the prescribed
period, the Registrar may on request by the owner or applicant, grant a
grace period not exceeding six months within which the annual fee and any
prescribed surcharge must be paid by the owner or applicant.
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In any event, patent holder may apply to invoke the provision of s. 47 and
apply for the restoration of patent.
Exclusive Rights of The Patentee
As per section 41:
a
the applicant has the right to be granted the patent, where the
relevant provisions of this Act have been satisfied;
b
the owner has the right to exploit the patent;
c
the owner has the right, within the limits specified in section
43, to exclude all other persons from exploiting in Namibia
the patented invention without his or her authority, so that he
or she has and enjoys the whole profit and advantage accruing
by reason of the invention; and
d
the applicant or the owner has the right to assign, or transfer
by succession the patent application or the patent and to
conclude license contracts for the exploitation of the patented
invention in Namibia by other persons as provided for in Part
8.
Obligations of the applicant or the owner of a patent
As per section 42
a
b
c
d
e
f
the applicant must disclose the invention in a clear and
complete manner and in particular to indicate the best mode
for carrying out the invention, in accordance with the
requirements of the Act;
the applicant must give information concerning corresponding
foreign applications and grants,
the owner must exploit or work the patented invention in
Namibia within the prescribed time limits;
the applicant or the owner must pay any prescribed fees;
the owner must comply with the requirements of section 70(4)
before instituting any infringement proceedings; and
the applicant or owner must comply with any other
requirements provided for under this Act.
Take note of Section 19 (4) provides that: The right to a patent may be
assigned, or may be transferred by succession or otherwise by operation of
law.
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Licensing
According to section 51 of the IPA the owner of a patent application or a
patent may enter into a contract with one or more other persons to authorize
such person or persons to exploit the invention covered by the patent
application or the patent in Namibia.
Different types of licensing
A.
Contractual licensing
The granting of a license deals with the permission given to someone else
to exploit a patent against an agreed financial compensation or royalty for
the benefit of the grantor of such a license.
Licensing is by way of a contract that needs not be in writing; could be
implied.
A license agreement can make provision for the involvement in any or all
of the exclusive conducts that a patentee is entitled to under the relevant
patent rights.
Can be non-exclusive license, exclusive license or sole license which limits
the rights of exploitation to the licensee only.
Once any patent rights have ceased, any license thereunder also terminates.
See section 52 Patents Act for certain conditions that may not be in a
license.
B.
Compulsory Licensing
i. Compulsory license for non-working or insufficient-working
(section 55)
a) Any person may, after the expiration of a period of four years
from the date of filing of the patent application or three years
from the date of the grant of the patent, whichever period
expires last, in the prescribed form and manner make an
application to the Tribunal to exploit a patented invention in
Namibia.
b) On receipt of an application the Tribunal may grant such
person a compulsory license to exploit the patent on such
terms and conditions as determined by the Tribunal, if the
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patented invention was not adequately exploited in Namibia
by the owner of the patent or his or her licensee by working
the invention locally.
c) A compulsory license may however not be granted if the
owner of the patent satisfies the Tribunal that circumstances
exist which justify the lack of adequate exploitation of the
invention.
ii.
Compulsory licenses: dependent patents (s56)
It is possible that patent rights can be obtained while the
exploitation or working of an invention thereunder will result in
the infringement of an earlier patent. Such subsequent patents can
be identified as ‘dependent patents’.
The holder of a subsequent patent will in the normal course of events
attempt to negotiate for its exploitation against a financial benefit in favor
of the holder of a relevant earlier patent.
If a license cannot be obtained, the relevant tribunal can be approached for
a compulsory license to permit such exploitation and working.
Compulsory license must include a condition that such license shall be
used only for the purpose of permitting the dependent patent to be worked
and for no other purpose.
There are also three criteria:
▪ the invention in the dependent patent must involve “an important
technical advance of considerable economic significance in relation to
the invention claimed in the prior patent”.
▪ must grant the owner of the prior patent on reasonable terms a crosslicense to use the invention claimed in the dependent patent.
▪ the use of unauthorized in respect of the prior patent is not assignable
except with the assignment of the dependent patent.
▪ Syntheta (Pty) Ltd v Janssen Pharmaceutica NV 1999 (1) SA 85
(SCA)].
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▪ The applicant can apply to have such a license terminated if the
circumstances that led to the granting have ceased to exist and are
unlikely to re-occur – Tribunal decides.
iii.
Compulsory license in public interest
Section 57 provide that (1) Where:
a) the public interest, in particular national security, nutrition,
health or the development of other vital sectors of the national
economy, so requires;
b) a national emergency or circumstances of extreme urgency
have arisen, including a public health crisis, which requires the
use of the patented invention;
c) the Namibian Competition Commission (hereafter “the
Commission” established in terms of the Competition Act,
2003 (Act No. 2 of 2003) (hereafter “the Competition Act”) has
determined that the manner of exploitation, of the patent by the
owner of the patent or his or her licensee, constitutes a
restrictive business practice prohibited under Part I or Part II of
Chapter 3 of the Competition Act, and the Minister is satisfied
that the exploitation of the invention in accordance with this
section would remedy such practice;
d) an interested party has unsuccessfully endeavored at least for a
period of six months to obtain the patent owner’s license for the
use of the patented invention on reasonable terms and
conditions, and the refusal of the patent owner to grant a license
has the effect that the trade or industry or agriculture of
Namibia, or the trade of a class of persons in Namibia, or the
establishment of any new trade or industry in Namibia is being
prejudiced and it is in the public interest that a license should
be granted; or
e) a patented product relates to a pharmaceutical product in
respect of which Namibia has insufficient or no manufacturing
capacity as contemplated in the Decision of the General
Council of the WTO of August 30, 2003 or in Article 31bis of
TRIPS, and a license for the importation of the patented product
is required as contemplated in the said decision or article,
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subsection (3), decide that, even without the consent of the
owner of the patent, a third person designated by the Minister
may be authorized by way of a compulsory license to exploit a
patented invention, including by the importation of the patented
invention, on such terms and conditions as determined by the
Minister.
The exploitation of the patented invention under a license granted under
this section is limited to the purpose for which it was authorized and is
subject to the payment to the owner of the patent of an adequate
compensation therefore, taking into account the economic value of the
Minister’s authorization, as determined in the said decision, and, where a
decision has been taken under subsection (1)(c), the need to correct the
restrictive business practices.
Any compulsory license granted under section 55 or 56 is non-exclusive
and is not transferable except to a person to whom the business or the part
of the business in connection with which the rights under the license were
exercised has been transferred.
Read section(s) 57 to 62. Exploitation of patented invention by
Government or person authorized by Government.
In accordance with section 63 of IPA:
Where a vital public interest requires that one or more acts of
exploitation, including stocking, be performed with respect to a patented
invention, the Minister may decide that the patented invention be, even in
the absence of the consent of the owner of the patent, exploited by a
government ministry, office or agency as defined in the Public Service
Act, 1995 (Act No. of 1995) (hereafter “government entity”) or by a third
person, including a contractor, subcontractor, or any other person, firm or
corporation undertaking any activity for a non-commercial purpose for or
on behalf of a government entity, designated by the Minister. Public
interest includes, but is not limited to, public health, nutrition, agriculture,
national emergency, relief, social service, socio-economic development
and national security purposes.
Authorization in relation to the use of an invention may be given either
before or after the use of the invention.
6. Patent Application Procedure
Visit:
http://www.bipa.gov.na/intellectual-property/patents-and-utilitymodels/
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In Namibia, we have the Business and Intellectual Property Authority
(BIPA) an entity established under the auspices of the Ministry of Trade
and Industry. The entity was established with the main aim of protecting
entrepreneurship and innovation.
It must be noted that the world-wide standard requirement of the patent
procedure requires that any patent application for an invention must be
made in writing; citing the complete specifications as this document makes
up the most important part of the application, making a full disclosure of
the invention and the claims defining the subject matter for which
protection is being claimed/sought.
Patentable Inventions
In order for an invention to be patentable it must meet the following
important criteria: novelty, inventive step, practical viability and
conformity to natural and statutory laws.
To be granted a patent the invention must:
✓
Be new
✓
It should not have been produced, described or explained to the
public;
✓
It must be inventive (unique). It need not be obvious or self-evident;
✓
It must be applicable to industrial use (be able to be reproduced);
and
✓
It must conform to natural and statutory laws.
Excluded from patentability are the following:
Scientific theories, mathematical methods, discoveries.
Literally, dramatic, musical, or artistic work or other aesthetic
creations.
Schemes, rules of performing a mental act, computer programme,
presentation of information
Plant varieties or animal hybrids
Alleged inventions where there is no sufficient information
Perpetual mobile machines which contradict known laws of
thermodynamics
There are two types of application that an inventor can apply for:
1.
conventional application and
2.
non-conventional application
Registration Process:
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A.
Different Methods to Apply for a Patent:
The applicant can submit the application forms or can ask a patent
attorney for assistance.
B.
Patent Application Forms:
Application forms are obtainable from the Ministry of Trade and
Industry, Patent Office
C.
Where to Submit the Application Forms:
Applications must be filed at the PZN Building, 3 Ruhr Street,
Northern Industrial Area, Windhoek, Namibia
D.
Responsibilities of The Applicant:
Do a search in the Patent Office registers to ensure you are not
infringing any existing patents.
A provisional or complete specification must be prepared by the applicant
him/herself or the agent on behalf of the applicant and submitted to the
Patent Office.
File a provisional specification.
One can do this without the help of an attorney, but you must make sure
to provide a very clear, detailed description of your invention in the
application.
You need the following application forms for a provisional patent: A
patent application form No.1 and No.2; revenue stamps must be attached
to the form P1.
File a complete specification
For this, one will need the help of a patent attorney. The specification must
be signed by a patent attorney.
The following documents need to be submitted. (Forms)
▪ A detailed description of the invention – a description in detail to
enable a person ordinarily skilled in the inventions art to replicate the
technology only by studying the description.
▪ Drawings – where applicable.
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▪ Claims – The claims identify specifically the aspect of the described
idea in which the applicant is claiming, so to say, rights of the
exclusive use for a limited period of any patent sought thereof.
▪ Abstract
▪ Deed of Assignment – if the applicant differs from the inventor.
▪ A Power of Attorney – if an agent acts on behalf of the applicant.
▪ A Priority document – a copy of the patent application originally filed
in another country.
Filing Fees Payable on Patent Documents:
▪ Registration fee N$12.00 (Patent Form No.1 and 3 and 9)
▪ Renewal fee N$4.00 (Patent Form No. 11)
Patent Treaty Corporation (PCT) Patent
▪ The following documents to be submitted by the client:
▪ A copy of the PCT Examination Report;
▪ English Translation of the PCT Examination Report;
▪ PCT Pamphlet (English translation)
Responsibility of The Patent Office:
▪ Investigate the existing patents in Namibia before acceptance.
▪ Checking of application documents and the registration thereof.
▪ Open a Namibian Patent File.
▪ Numbering of the application – Allocate a registration number to the
new patent
▪ Send out a list of outstanding documents, if any.
▪ Typing of all registration related documents.
▪ Grant a patent if all the required documents have been submitted. –
Typing and sealing of the Letters Patent.
▪ Filing of all patent’s documents.
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▪ Daily updating (any amendments) and keeping of patent registers,
including issuing of renewal certificates for a period of 3rd, 7th and
10th respectively.
▪ PCT Patents follows the same route as above except that it requires
that a PCT patent should first be granted before it enters the national
phase.
7. Patent Right Infringement
As aforementioned, the exclusive right of the patent owner is retained for
the term of the patent subject to payment of fees and working/exploiting
the patent- failure may lead to a compulsory license being granted.
Infringement will involve an unauthorized use or exploitation of the
patented invention by a third party.
Where there is infringement, initiative for enforcement lies with the
patent owner. The owner has the responsibility to detect infringements
and inform the infringer in a written communication of infringement and
implication to sue should infringement continue (s70 of IPA). If infringer
is persistent, patent owner can consider granting a license. This usually
results in settling a dispute and benefits the owner.
If patent owner does not wish to license, he may have recourse to legal
action (SEE s71 of IPA on remedies) inclusive of seeking an interdict.
Some infringers may wish to pursue the suit to have the patent
invalidated by bringing evidence before the court to point out defects that
were not detected prior to granting the patent. Majority of patent
infringement disputes never reach the court- usually settled through
negotiation. Few go past pre-trial stage(settle).
Types of Infringement
▪ Look at section 69 of IPA.
▪ Direct and deliberate infringement w/o any attempt to avoid
infringement. i.e., copying/ minor modifications- prima facie
infringement.
▪ Deliberate but veiled infringement- third parties gain inspiration from
disclosure and attempt variant inventions but still within the claims of
the patent holder- Most common type of infringement.
▪ Accidental infringement- something that embodies the idea of patent
holder- may however not be copied
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Elements of Infringement
Patent owner must prove:
1.
The carrying out of a prohibited act(s69) i.e., making, using,
selling or importing the patented product OR the use of a patented
process or making, using, selling a product made through patented
process.
2.
Which is done after publication of the patent application.
3.
Within the country where patent has been granted.
4.
Act relates to a product or process falling within the scope of the
claim of patent (elements present, same form, function and same
relationship to all elements).
Unit summary
Summary
In this unit you learned about a patent as a distinct specie of IPRs. You
have studied the justifications for granting patent rights. You have read
on the patentability requirement. Only once a patent is registered can it be
infringed. Once infringed, there are common law and statutory remedies
available.
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References
References
AECI Explosives and Chemicals Ltd v Ensign-Bickford (South Africa)
(Pty) Ltd, Bulk Mining Explosives (Pty) Ltd, Dantex Explosives (Pty) Ltd
(TPD) case number 79/3210
Bristol Myers Co Application [1968] FSR 407
Ensign-Bickford (SA) (Pty) Ltd v AECI Explosives and Chemicals Ltd
1999 (1) 70 (SCA)
Frank & Hirsch v Rodi & Wienenberger 1960 (A)
Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 650
G I Marketing CC v I Fraser-Johnson 1996 (1) SA 939 (A)
Levin and Another v Levin and Others (644/09) [2011] ZASCA .
Marine Construction and Design v Hansens Marine Equipment 1972 (2)
SA 181 (A) at 422
McKelvey v Deton Engineering at 375-376:
Netlon Ltd and another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A)
Schlumberger Logelco Inc v Coflexip SA [2002] JOL 10174 (SCA) at 31]
Speedmark Holdings (Pty) Ltd v Roman Roller CC (CP)
Stauffer Chemical Company and another v Safsan Marketing and
Distribution Co (Pty) Ltd and others 1987 (2) SA 331 (A) at 347.
Syntheta (Pty) Ltd v Janssen Pharmaceutica NV 1999 (1) SA 85 (SCA)
Transvaal and Orange Free State Chamber of Mines v General Electric Co
1967 (2) SA (T) at 38.
Veasey v Denver Rock Drill & Machinery Co Ltd 1930 AD 243 at
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Unit 8
Unlawful Competition
Introduction
The starting point is that competition is as indispensable for the operation
of an efficient free market economy which is essential to freedom of
trade, occupation and profession. Nonetheless it is limited; the former by
the common law principles of unlawful competition as a form of delict
under the Aquilian action and the latter by the correlating rights of others.
However, it is also impacted by several statutes which, Include the IP Act
and the Competition Act, 2003 (Act No.2 of 2003).
Outcomes
Upon completion of this unit you should be able to:
▪ outline the meaning of unlawful competition
▪ analyse the elements of unlawful competition
▪ evaluate the circumstances where unlawful competition occurs
▪ explain passing-off an element of unlawful competition
IP Act
Part I or Part II of Chapter 3 of the Competition Act, 2003 (Act No.2 of
2003)
Prescribed reading
1. Unlawful Competition
When does, unlawful competition occur?
Occurs when there are two entities, with the same goal, and one of them
conducts itself in a manner which enables it to gain an unfair competitive
advantage over the other through unlawful means. In legalistic terms, it is
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Unit 8 Sources of Intellectual Property law in Namibia
the conduct of an entity which is prohibited by law, carried out
intentionally, which causes another entity damage.
It is namely a remedy for those who have not registered their trademarks;
but have established their trademarks due to prolonged prior use. Unlawful
competition is recognised as a remedy under delict – an actio legis
acquiliae for patrimonial loss.
PLEASE NOTE THAT Unlawful competition has been prohibited in the
following international instruments that are applicable in Namibia, namely
article 10bis of the Paris Convention and article 39 of TRIPS.
Elements of unlawful competition’
▪ Conduct;
▪ Wrongfulness (unlawfulness)
▪ Fault;
▪ Causation; and
▪ Damage
Unlawful competition vs. Acts of unfair competition
Unlawful competition is a common law infringement against intellectual
property rights. Section 194 of the IP Act specifically outlines the acts that
constitute acts of unlawful competition.
What is unlawful about competition?
Competition must be fair! The only thing that should determine the
supremacy of goods should be quality, and the demand and supply by
consumers. Breaching the statutory and common law rules of competition
results in unlawful competition. READ FURTHER THE COMPETITION
ACT OF 2003.
▪ Market economies=free competition
▪ Free competition satisfies supply and demand
▪ Consumers and economy benefit
▪ Competition cannot however go unregulated
▪ Acts of unfairness begin to emerge
▪ All participants in the market should therefore play by the same rules
114
▪ Breach of these rules constitutes unlawful conduct
▪ It is therefore important that proof of unlawfulness is given
▪ Basic test? Public policy- boni mores
This is an objective norm, a community’ s sense of justice, good
morals, manifested in public opinion
▪ Interests of the competing parties should be weighed
▪ Interests of society must be considered
▪ Morals of the marketplace, business ethics
Certain forms of unlawful practices are prohibited in terms of the
Competition Act 2 of 2003 chapter 3&4
2.Unfair Competition Practices
Making false representations about a rival.
▪ Passing off.
▪ Intimidating a competitor.
▪ Unfair use of a competitor’s fruits and labour.
▪ Misuse of confidential information to advance one’s business at the
expense of competitor.
3. Passing off
This is the intentional or negligent misrepresentation that goods or
services are those of another or are associated with those of another
causing the public to or likely to be confused into believing that such
goods or services are those of the other. It’s a species of unlawful
competition and registration of a mark is immaterial. It should be noted
that passing off erodes a party’s “goodwill”.
In the case of Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty)
Ltd – Court stated that the delict of Passing-off is a representation by one
person that his business is that of another or that it is in some way or
other associated with that of the applicant. An applicant has the burden to
prove on a balance of probabilities that there is confusion or deception. In
order for the Court to determine whether a representation amounts to
passing-off the Court has to enquire whether there is a reasonable
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likelihood that a substantial members of the public may be confused into
believing that the business of the applicant is that of the respondent.
Elements of passing off
Goodwill or reputation associated with mark/brand
Relates to the opinion of the relevant section of society towards the
product/service.
The mark must in the mind of the public be associated with goods
emanating from that party.
Reputation must have been in existence when the defendant entered
market- mere proof of large-scale advertising is not sufficient to establish
reputation. The reputation must have been in existence at time the
misrepresentation took place.
If a party uses another’s mark who appears to have ceased business, onus
lies on such party to prove that the mark retained a residual renown
denoting its business. If defendant relies on abandonment, that must be
proved on a balance of probabilities.
Case study
Mega Power Centre v Talisman Franchise case
Tie Rack Plc v Tie Rack stores (Pty) Ltd and another 1989 (4) SA 427
In that case, it was held even if many people knew of the plaintiff’s
businesses abroad and might have been misled into believing that the first
defendant’s tie shops were somehow associated to them, plaintiff had no
business of any kind in SA- no likelihood of damage to plaintiff’s
patrimony.
Lorimar Production Inc and Others v Sterlling Clothing
Manufacturers and others 1981 (3) SA 1129
Three different applications against three different respondents. The
Applicant produced TV series “Dallas”;
Respondent 1 and 2 used names from the series on their clothing. Whilst
Respondent 3 named its restaurant the “Dallas Restaurant” with menu
items inclusive of descriptions which referred to some of the characters on
series.
The Court fund that the characterizations and concepts from the series
formed valuable assets and it may be assumed by members of the public
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that the product emanated directly from or associated to the production
company.
Court held: Any goodwill generated pertained to the entertainment
industry.
The names and characters in the series did not have any reputation in terms
of clothing or the restaurant business
Requirement of goodwill had not been met
No evidence had been put before court that the public was deceived or was
likely to be deceived.
No prima facie case of deception, no passing off
Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty) Ltd (HCMD-CIV-MOT-GEN-2018/00398)
Case study
The applicant was Namib Mills (Pty) Limited, a private company the
largest grain processing company in Namibia. It mills and sells maize
meal, wheat flour pasta and similar products. The respondent was Bokomo
Namibia (Pty) Limited, also a private company. The parties were direct
competitors in the market for wheat flour and other similar products. The
applicant markets and sold its products under the brand ‘Bakpro’, whereas
the respondent markets and sold its products under the brand ‘Bokomo’.
It is common cause that the applicant was the dominant market leader while
the respondent was a follower.
The applicant sought an order restraining and interdicting the respondent
from selling vetkoek flour in the packaging which is substantially similar
to the get-up of the applicant’s vetkoek flour, thereby passing it off as
emanating from the applicant or being otherwise connected in the course
of trade with the applicant. The applicant has been using its trademark,
‘Bakpro’, for the last 32 years in Namibia.
The applicant’s get-up or pack design for its range of products had ‘three
constituent characteristics’ which are: about two-thirds of the top of the
pack is white; the brand ‘Bakpro’ is situated in the top third of the pack; a
picture of either a cake or bread appears in the middle of the pack; and the
remaining third bottom of the pack has what is referred to in the papers as
a ‘slash’ or a band in a particular colour depending on the type of product
appearing in the picture. For instance, the slash colour for brown bread
flour is brown, and for white bread flour is blue, for cake it is red and for
vetkoek it is mustard-yellow.
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The applicant applied the pack architecture across the range of all its
products in order to ensure consistency and brand reliability or loyalty in
the minds of the consumers.
It was applicant’s case that pack design constitutes an important visual
asset. It is the phenomena on the basis of which consumers make
purchasing decisions. The applicant says further that it has expended
considerable resources in building up the reputation of its range of products
through marketing and promotion.
The applicant alleged that the respondent changed its packaging to one
which mimics and adopts package architecture of the applicant. This was
particularly in respect of the vetkoek flour get-up, the respondent used the
mustard-yellow colour, the same way as the applicant did.
Whilst the respondent stated that after the respondent received the
applicant’s complaint that it was passing-off the applicant’s products
through the get-up, it commissioned a market survey conducted by Vision
Africa, a company specialising in market survey, in order to demonstrate
that no passing-off is taking place. The survey concluded that the
consumers ‘who think that (Bokomo) products are imitations of (Bakpro)
products are statistically insignificant’.
In whose favour do you think the Court ruled?
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Carefully read the complete case – it is the Namibian version the Talisman
case studied above. The case is unofficially referred to as the ‘vetkoek
case’.
Misrepresentation
Deception resulting in damage/likely damage to goodwill
Imitation of another rival trader is not prohibited provided it is clear that
goods/services are not those of the other.
To determine passing off, comparison of goods/services of both parties
must be made.
In assessing the likelihood to cause confusion or deceive, court must have
regard to all the features of the goods in question and the kind of customer
who is likely to buy them (the ordinary purchaser)
Guidelines:
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See- Kellogg Co and Another v Bokomo Co-Operative Ltd 1997(2) SA
725
Whether or not there is a likelihood of confusion or deception lies in the
hands of the courts to decide.
The court must place itself in the position of a person of average
intelligence and ordinary sight, purchasing the good with ordinary caution.
It is important that the class of persons likely to buy the products in
question must be considered. Take note that that a side-by-side comparison
might not give accurate findings, room should be made for imperfect
recollection as well as the possibility of imperfect articulation.
Fancy words used as trade names enhance likelihood of confusion.
READ CAREFULLY THE BRIEF SUMMATION OF THE CASE ON THE NEXT
PAGE…
Pioneers Food (Pty) Ltd v Bathaville Milling (Pty Ltd) (215/2013)
[2014]ZASCA 6 (12 March 2014)
Features likely to lead to confusion or deception:
▪ The use of the same three colours, white, green and red;
▪ The prominent use of the red star symbol;
▪ The prominent use of the name STAR capitalised in red lettering; and
▪ The use of the slogan 'THE PEOPLES CHOICE' versus its own
slogan 'THE CLEVER CHOICE'.
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Regarding the element of misrepresentation, the court stated that
misrepresentation is proved by showing a reasonable likelihood that
members of the public may be confused by the get-up adopted by the
respondent for its STAR product into thinking that it is WHITE STAR or
related to WHITE STAR.
In deciding whether there was a reasonable likelihood of confusion, the
court stated that:
“…the two products must not only be considered as they would appear if
sold side-by-side, but also on the basis of their being displayed separately
in separate premises. Allowance must be made for imperfect recollection
on the part of the consumer.”
In this regard, the court considered that, while there were some similarities
between the two get-ups, principally caused by the combination of a
broadly white background with the symbols and lettering in red and green,
the moment a customer saw a package the differences would become
obvious and concluded that the differences were sufficient and obvious to
hold that there would be no likelihood of confusion between the two. The
court referred in this regard specifically to the following differences:
1.
the red star on WHITE STAR’s packaging was more elongated
with a burst of smaller stars at the top, while STAR’s packaging has a
symmetrical red star with a picture of a mealie cob in the centre on a green
circular ground; and
2.
the font in which the word 'STAR' is printed was found to be
noticeably different and the word 'STAR' was more prominent of the
STAR’s packaging.
The court also stated that, in assessing whether there is likelihood of
confusion, consideration must be had to the value of the goods in question
and the class of customers who will buy the goods and the circumstances
in which such goods will be displayed for sale. In the given circumstances,
the court found that maize meal is the most brand-loyal product in South
Africa (as evidenced by market surveys) and consumers buying maize
meal will ordinarily be looking for their “usual” brand as part of routine
domestic shopping. They are more likely to take added care to ensure that
they purchase the product they know and like.
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Unit summary
Summary
In this unit we have looked at unlawful competition as a stand-alone
common law infringement against intellectual property rights. We have
also distinguished between unlawful competition and unfair practices. We
now better understand the essence of the infringement as we have studied
its various elements.
References
Competition Act, 2003 (Act No.2 of 2003)
References
IP Act.
Kellogg Co and Another v Bokomo Co-Operative Ltd 1997(2) SA 725.
Lorimar Production Inc and Others v Sterlling Clothing Manufacturers and
others 1981 (3) SA 1129.
Mega Power Centre v Talisman Franchise case.
Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty) Ltd (HC-MDCIV-MOT-GEN-2018/00398).
Paris Convention.
Pioneers Food (Pty) Ltd v Bathaville Milling (Pty Ltd) (215/2013)
[2014]ZASCA 6 (12 March 2014).
Tie Rack Plc v Tie Rack stores (Pty) Ltd and another 1989 (4) SA 427.
TRIPS.
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Unit 9
Traditional Knowledge, Traditional
Cultural Expressions and Genetic
Resources
Introduction
Traditional knowledge refers to the knowledge or practices passed down
from generation to generation that form part of the traditions or heritage
of Indigenous communities’ knowledge or practice for which Indigenous
communities act as the guardians or custodians.
Whilst traditional Cultural expression refers to ways in which Indigenous
communities express their traditional culture. Such ways are part of their
heritage or identity and have been passed down from generation to
generation.
Genetic resources include for example, microorganisms, plant varieties,
animal breeds, genetic sequences, nucleotide and amino acid sequence
information, traits, molecular events, plasmids, and vectors. They
constitute unique subject matter for IP protection ever since IP systems
began to protect innovation in the modern life sciences.
Upon completion of this unit, you should be able to:
▪ explain the concept of traditional knowledge
▪ explain how to provide legal protection to TK
▪ identify the use of TK in medicine & agriculture
Outcomes
Prescribed reading
IP Act
The Harare-based ARIPO adopted the Legal Instrument for the Protection
of Traditional Knowledge and Expressions of Folklore in Lesotho in 2007
The Swakopmund Protocol on the Protection of Traditional Knowledge
and Expressions of Folklore on 9 August 2010.
TRIPS
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1. Traditional Knowledge
There is not one generally accepted definition of Traditional Knowledge
(TK). TK represents the cooperative efforts of communities and it is not
limited to any specific field of technology or the arts.
Traditional knowledge systems are found in the fields of medicine and
healing, biodiversity conservation, the environment and food and
agriculture. It is generally accepted that traditional knowledge, as
representative of cultural values, is generally held collectively.
However, the reference to ‘traditional’ in traditional knowledge is not to
mean that the knowledge so characterized is ancient and static.
Traditional knowledge is traditional only in so far as the knowledge
referred to is part of the – often - only orally transmitted cultural tradition
of a given community.
Traditional knowledge about plants, in particular their medicinal
facilities, holds extreme societal values and is, above this, in high demand
by manufacturers of industrially produced pharmaceuticals. More than
80% of the medicines used worldwide are of plant origin.
The African Regional Intellectual Property Organization (ARIPO)
maintains that “a significant part of the global economy is based on the
appropriation of traditional knowledge”.
How to Provide Legal Protection to Traditional Knowledge?
There is a general lack of proper and adequate legislation to protect these
areas- though having great potential to contribute to development. There
are approximately 53 recognized traditional communities in Namibia.
Intellectual property law as it stands now in international treaties, domestic
legislation and decided cases, is unable to properly protect traditional
knowledge.
There is a need to curb unauthorized trading of this knowledge. The need
to create a so-called sui generis protection for traditional knowledge was,
therefore, seen to be a logical consequence. The Harare-based ARIPO
adopted the Legal Instrument for the Protection of Traditional Knowledge
and Expressions of Folklore in Lesotho in 2007.
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In the existing Namibian legislation, there is only S.12 of the IPA which
mentions how TK forms part of the prior matters pertaining to patent
applications. As a rule, intellectual property law aims at protecting
unknown knowledge generated by an individual.
Would a sui generis form of protection be more appropriate?
The Swakopmund Protocol on the Protection of Traditional Knowledge
and Expressions of Folklore was created to investigate the protection of
traditional knowledge,on 9 August 2010. Namibia has ratified this
Protocol, and it came into force in May 2015.
The preamble of the Swakopmund Protocol acknowledges the value of
traditional knowledge systems and their contribution to local and
traditional communities.
It further expresses the need to recognize and reward the contributions
made by such communities to the conservation of the environment; to
food security and sustainable agriculture; to the improvement in the
health of the populations; to the progress of science and technology; to
the safeguarding of cultural heritage; to the development of artistic skills,
and to enhancing a diversity of cultural contents and artistic expressions.
The Preamble also underscores the need to respect the continuing
customary use, development, exchange and transmission of traditional
knowledge and expressions of folklore by traditional and local
communities, as well as the customary custodianship of traditional
knowledge and expressions of folklore. Further, the Preamble further
emphasizes that the protection of traditional knowledge and expressions
of folklore must be “tailored” to the specific characteristics of both.
The Preamble also underscores the need to respect the continuing
customary use, development, exchange and transmission of traditional
knowledge and expressions of folklore by traditional and local
communities, as well as the customary custodianship of traditional
knowledge and expressions of folklore. In addition to that, the Preamble
further emphasizes that the protection of traditional knowledge and
expressions of folklore must be “tailored” to the specific characteristics
of both.
Section 1 of the Protocol has as its purpose to the protection of the
holders of traditional knowledge against infringements of their rights and
to protect expressions of folklore against misappropriation, misuse and
“unlawful exploitation beyond their traditional context”.
Section 2 has definitions of expressions of folklore and traditional
knowledge. Expressions of folklore are:
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Unit 9 Sources of Intellectual Property law in Namibia
any forms, whether tangible or intangible, in which traditional culture and
knowledge are expressed, appear or are manifested, and comprise the
following forms of expressions or combinations thereof:
▪ verbal expressions, such as but not limited to stories, epics, legends,
poetry, riddles and other narratives; words, signs, names, and
symbols;
▪ musical expressions, such as but not limited to songs and instrumental
music;
▪ expressions by movement, such as but not limited to dances, plays,
rituals and other performances; whether or not reduced to a material
form; and
▪ tangible expressions, such as productions of art, in particular,
drawings, designs, paintings (including body-painting), carvings,
sculptures, pottery, terracotta, mosaic, woodwork, metal ware,
jewellery, basketry, needlework, textiles, glassware, carpets,
costumes; handicrafts; musical instruments; and architectural forms.
As per that Protocol ”Traditional knowledge” refer to any knowledge
originating from a local or traditional community that is the result of
intellectual activity and insight in a traditional context, including knowhow, skills, innovations, practices and learning, where the knowledge is
embodied in the traditional lifestyle of a community, or contained in the
codified knowledge systems passed on from one generation to another. The
term shall not be limited to a specific technical field, and may include
agricultural, environmental or medical knowledge, and knowledge
associated with genetic resources.
The protection of traditional knowledge is not bound to any formality
(Section 5(1)). The beneficiaries of traditional knowledge are the holders
of that knowledge, i.e., the local and traditional communities, but also
recognized individuals within the communities who are involved in the
creation, preservation and transmission of traditional knowledge (Section
6).
The right to authorize the exploitation of rights to traditional knowledge
vests in the “owners” of the rights. Owners shall also have the right to
prevent anyone from the exploitation of their rights (Section 7(1) and (2)).
The owners of traditional knowledge have the right to assign the right to
somebody else and to conclude licensing agreements. However, traditional
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knowledge belonging to a local or traditional community may not be
assigned (Section 8).
Compulsory licenses are possible in case that traditional knowledge is not
sufficiently exploited by the rights holders and there is an interest of public
security or public health (Section 12).
The fair and equitable sharing of benefits generated by the commercial or
industrial use of the knowledge is to be part of the mutual agreement
between the parties (Section 9). The use of traditional knowledge “beyond
its traditional context” shall be acknowledged to the holders (Section 10).
A special rule protects genetic resources: Section 15 clarifies that
authorised access to traditional knowledge associated with genetic
resources does not imply the right to access genetic resources (Section 15).
Part III of the Protocol, devoted to expressions of folklore
Part II. The protection of expressions of folklore is also not bound to
formalities (Section 16). Beneficiaries of expressions of folklore are the
owners of the rights in expressions of folklore shall be the local and
traditional communities:
a)
to whom the custody and protection of the expressions of folklore
are entrusted in accordance with the customary laws and practices
of those communities; and
b)
who maintain and use the expressions of folklore as a
characteristic of their traditional cultural heritage.
Having noted these quotations from the Protocol, the contribution of the
Swakopmund Protocol can be summarized in the following five points:
First: Looking back to the development of the debate on the protection of
traditional knowledge, the Swakopmund Protocol is an important step
forward to conceptualize the much-demanded sui generis protection of
traditional knowledge (and expression of folklore for that matter).
Secondly: The Protocol gives the Namibian constitutional recognition and
confirmation of customary law an additional international blessing. It relies
in its orientation to acknowledge and protect traditional knowledge on the
respective existing customary law. In other words, it binds existing
customary law into its international framework and acknowledges by this
that all efforts to protect traditional knowledge will only work when they
provide space for the law that is closest to traditional knowledge:
customary law.
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Thirdly: The Protocol follows the established trend to link the use of
traditional knowledge to the two principles that became prominent in the
Convention of Biological Diversity, viz. the principle of prior informed
consent and the principle of sharing benefits.
Fourthly: The Protocol offers an approach to the determination of holders
of traditional knowledge and expressions of folklore, which will certainly
influence the on-going debate about the need to concretize traditional
knowledge rights, but also to balance the realm of legally protected
interests and public interests in intercultural communication.
Fifthly: The tasks assigned to the National Competent Authority and the
references therein to customary law are not only a clear indication that
education and the creation of awareness will be paramount to the success
of the Protocol, but also the active engagement of traditional authorities
which, inter alia, have the task to ascertain and even develop their
customary law - a task, which is a special challenge when it comes to
traditional knowledge!
There is also the draft Bill on Access to Genetic Resources and protection
of Associated Traditional Knowledge. This Bill acknowledges the
inadequacy of the current IP regime in the protection of TK and argues for
a sui generis protection system for TK. It aims to prevent exploitation of
indigenous resources such as the devil’s claw and hoodia.
Main objectives:
▪ regulate access to genetic resources and associated TK based upon
prior informed consent;
▪ To protect local communities’ rights over and TK thereof;
▪ To promote a fair and equitable mechanism for benefit sharing;
▪ To establish necessary administrative structures and processes to
implement and enforce such principles.
2. IPRs in agriculture
Agriculture is the backbone of food security and livelihood in most
developing countries.
The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) obliges member States under Article 27.3(b) to provide for
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intellectual property protection to plant variety (PV). The countries can
either provide protection for PV through patents, or sui generis protection
or through a combination of the two.
If a country follows the patent regime in order to protect PV- follow the
standard set out in the TRIPS for the protection of PV, if sui generis
protection of plant variety (PVP) –ensure that the protection is effective.
It has been identified that the most appropriate protection of PV for
developing countries is to make use of the sui generis approach. Gives the
developing countries the right to determine the scope and contents of the
rights to be granted under the sui generis system.
There is already an established sui generis system established by the
Convention of International Union for the Protection of Plant Varieties
(UPOV). This system as provided for by the UPOV is said to be for
industrialized countries and does not necessary take into consideration the
needs of the small farmers who make up the majority in developing
countries.
Plant Variety Protection
This is an intellectual property system for plant varieties. The system is
specifically designed to protect plant varieties, grant breeders’ exclusive
rights on the propagating material of new plant varieties that they have
developed.
It is intended as an incentive for research and development by enabling
the breeders to recoup the cost of researching and developing(R&D) the
biological resource. It has been stated that an ideal PVP regime needs to
provide incentives and attract research investment in at least two
directions:
Firstly, it should support breeding targeted to the nutritional and other
needs of the populace without unduly disturbing existing traditional,
farming systems and diversity.
Secondly, such a system should support the development of non-food,
premium or other food crops that can be sold to generate wealth, that to
the greatest extent possible is captured at local and national levels… PVP
should be for the benefit of society’
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Unit 9 Sources of Intellectual Property law in Namibia
International Law
1.
The OAU Model Legislation on the Protection of the Rights of Local
Communities, Farmers and Breeders, and for the Regulation of
Access to Biological Resources
Article 9 of this law provides explicitly that:
(1) Patents over life forms and biological processes are not
recognized and cannot be applied for.
(2) The collector (of GRs) shall, therefore, not apply for patents
over life forms and biological processes under this legislation
or under any other legislation relevant to the regulation of
access and use of a biological resource, community innovation,
practice, knowledge and technology, and the protection of
rights therein.
The African Model law may seem too radical and against
biotechnological inventions but still there should be ways to
strike a balance.
When it comes to protection of PV, the human right to food
should override recouping R&D expenses, as it is often
contended. It is proposed that the concept of farmers’ rights be
taken seriously for the benefit of not only farmers but also as a
stimulant for protection of landraces.
1.
The Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS)
Sets down global minimum standards for the protection and
enforcement of nearly all forms of intellectual property rights. It
contains provisions that allow a degree of flexibility and sufficient
room for countries to accommodate intellectual property systems
and developmental needs. This means that the countries have the
freedom in the formulation of their national legislation.
Article 27.3(b) provides that members may exclude from
patentability: ‘…plants and animals other than micro-organisms,
and essentially biological processes for the production of plants or
animals other than non-biological and microbiological processes.
However, members shall provide for the protection of plant varieties
either by patents or by an effective sui generis system or by any
combination thereof…’
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Members are allowed to choose the type of protection for plant varieties.
The wording of this article specifically provides for a flexibility standard
of protection which all members have thereedom to choose the most
suitable type of IP system of protection based on their developmental needs
and priorities.
These are:
▪ Patents
▪ An effective sui generis system; or
▪ A combination of both.
States will have to define the components of such a system themselves,
define the subject matter for protection, the requirement for protection, the
scope and the duration of protection. When crafting PVP the country must
be innovative enough to develop a legal framework that will reflect the
characteristics and specificities of the agricultural system, practices and
needs of the farming communities.
When adopting the sui generis system, the member state has to ensure that
what it has adopted is an effective protection as required by TRIPS.
There is no general consensus of what effective entails, it is interpreted to
mean that national legislation must provide for the implementation of
judicial procedures for right holders to execute their rights.
Section 16 (g) of the Namibian Industrial Property Act excludes the
patenting of plants and animals other than micro-organisms and any
essentially biological processes to produce plants and animals other than
non-biological and microbiological processes.
The protection of plant varities by an effective sui generis system under
Article 27.3 (b) thus presents an alternative option for the protection of
plant varieties in Namibia
3.
The International Union for the Protection of New Varieties of
Plants (UPOV)
Established by the International Convention for the Protection of
New Plant Varieties for Plants in Paris 1961.
The Convention has been reviewed several times 1972, 1978 and
1991 in orders to reflect technological developments in plant
breeding.
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Unit 9 Sources of Intellectual Property law in Namibia
Breeders’ Rights
Breeders’ rights were developed because plant breeders found it
difficult to meet two of the fundamental requirements of patent law,
these being inventiveness and the written description on how to
make and use the invention.
The UPOV 1991 Act requires that a plant variety must be novel,
distinct uniform and stable to be eligible for protection.
A variety is considered to be novel if it has not been sold or
otherwise disposed of within a specific time-frame, in addition the
plant variety needs to be distinct (D) from the earlier known ones;
must be uniform (U).
This requirement simply means that the variety needs to display the
same essential characteristics in every plant; the last requirement is
that it must be stable(S) by retaining the same essential
characteristics upon reproduction. These requirements are known as
the DUS. It also makes provision for farmers’ exemptions or
privileges.
4.
Draft protocol for the protection of New Varieties of Plants (Plant
Breeders Rights) in SADC.Aims to establish plant breeders’ rights
in SADC in order to allow farmers access to the wide range of
improved varieties to contribute to the attainment of the regional
goal of economic development and food security.
One of the main objectives of the protocol is to encourage
development of plant varieties and to ensure protection of new
varieties and breeders’ rights.
5.
Draft ARIPO Legal Framework for the Protection of New Varieties
of Plants
Recognizes the need to have an effective sui generis system of
intellectual property protection of new varieties that meets the
requirements of article 27.3(b) of TRIPS.
The Purpose of the Legal Framework is to grant and protect
breeders’ rights. Therefore, policy makers in developing countries
should view PVP as a tool to be adopted and used for national
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agricultural development goals rather than a mere obligation and
compliance with the international obligations.
Accordingly, the IP regime on agricultural products and produce
should be based on the social, economic and technological
development indicator of the country and not based on the general
approaches used by other countries
4. IPRs and Medicine
In the 21st century, ironically, access to affordable medicines is a global
issue. The prices for new medicines are high, particularly those that are
patent-protected. New medicines require R&D which is expensive, w/o
protections, innovators are reluctant to. There is therefore a lack of
medicines and vaccines to treat neglected diseases.
The IP tool that can be used in relation to access to medicines is patents
protection. Patent protection encourages innovation and ensuring
availability of new products. High levels of IP protection in developing
countries increase the problem of access to affordable medicines.
Extensive patent protection for new medicines delays the onset of generic
competition, and because generic competition is the only proven method
of reducing medicine prices in a sustainable way, such high levels of IP
protection are extremely damaging to public health outcomes.
2001 Doha Declaration on the TRIPS Agreement and Public Health
States declared, inter alia that:
a.
They recognized that intellectual property protection is important
for the development of new medicines.
b.
They recognized the concerns about its effects on prices.
c.
They then Reaffirmed flexibilities in TRIPS- flexibilities include:
the right to grant compulsory licenses and the freedom to
determine the grounds upon which such licenses are granted.
a
the right to determine what constitutes a national emergency
or other circumstances of extreme urgency, it being
understood that public health crises, including those relating
to HIV/AIDS, tuberculosis, malaria and other epidemics, can
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Unit 9 Sources of Intellectual Property law in Namibia
represent a national emergency or other circumstances of
extreme urgency.
b
The effect of the provisions in the TRIPS Agreement that are
relevant to the exhaustion of intellectual property rights to
leave each member free to establish its own regime for such
exhaustion without challenge, subject to the MFN and
national treatment provisions of Articles 3 and 4.
Thus, developing countries may determine, when it comes to medicines,
in their own ways the definition of an invention, the criteria for judging
patentability, the rights conferred on patent owners and what exceptions
to patentability are permitted.
The IPA makes no provision for access to medicine. Except with
reference to “public health” as a ground for granting compulsory licences
and as an exclusion of patentability. Law Reform thus necessary.
Unit summary
In this unit you learned about the concept of traditional knowledge and how
to provide legal protection to TK. You have further identified the use of
TK in medicine & agriculture.
Summary
134
References
IP Act.
References
The Harare-based ARIPO adopted the Legal Instrument for the Protection
of Traditional Knowledge and Expressions of Folklore in Lesotho in 2007.
The Swakopmund Protocol on the Protection of Traditional Knowledge
and Expressions of Folklore on 9 August 2010.
TRIPS.
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Unit 10 Sources of Intellectual Property law in Namibia
Unit 10
Protection of Geographical
Indication Rights
Introduction
Geographical indications (GIs) are indications which identify a good as
originating in the territory of a member or region or locality in that
territory where a given quality, reputation or other characteristic of the
good is essentially attributable to is geographical origin.29
Most commonly, a GI includes the name of the place of origin of the
products. For example, agricultural products typically have qualities that
derive from their place of production and are influenced by specific local
factors, such as climate and soil.
In this unit we are going to briefly examine the scope of protection for
geographical indication rights.
Outcomes
Upon completion of this unit you should be able to:
▪ explain the relevance and need for geographical indication protection
▪ explain the status quo of geographical indication protection in
Namibia and its scope of protection
Prescribed reading
IP Act
Geographical Indications and Trademarks: The Road from Doha.
Worldwide Symposium on Geographical Indications.
TRIPS
29
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1.What is a geographical indication?
The unique features of a place always give special characteristics to its
inhabitants. Likewise, many places have their unique specialties. Even
the same type of product made in different places may have different
flavors.
Take wine for example. Good wine is produced out of good grapes, as the
quality of a wine depends on raw materials and vinification technique.
Grape variety, climate, soil, humidity, vineyard management and
vinification technology are the six factors that determine the quality of a
wine. For example, the Champagne sparkling wine produced in
Champagne, France, is famous for its quality and characteristics.
To give another example, Dongtinghu Biluochun, a famous Chinese tea
variety, features tea leaves with slender hairs rolled into a snail-like
spiral, lasting fresh fragrance and pure taste. Of the Yunnan Pu’er tea
varieties, the fermented one has a refined fragrance, features a red liquid
color and produces a lasting sweet taste, while the unfermented one
exudes pure fragrance, an orange liquid color and long-lasting taste. As
far as IP rights are concerned, these well-known products whose quality
or characteristics are entirely (or predominantly) dependent on the local
geographical environments are often represented by their geographical
names. Once registered, such a geographical name is known as a
“geographical indication” (GI) or the name of the place of origin.
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Image showing various GIs registered in India
Source: https://www.ipcalculus.com/geographical_indication.html
Source: https://www.indiasmeforum.org/ciprpf_gi.php
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2. Geographical indication rights protection
Namibia does not have a sui generis legal instrument for the protection of
GIs. However, products can be protected by registering it as collective
marks under the existing IP Act.30 GI’s are similar to trademarks only to
the extent that they both function as source indicators. However, the
fundamental distinction lies in the fact that while trademark identifies
goods or services as originating from a specific producer, GIs do not
identify the producer, but the geographical region from where the product
originates.
Namibia is still exploring the best possible means to protect GIs and is
engaged in deliberations at both regional and global platforms.
3.Scope of Protection
Namibia is a member of the World Intellectual Property Organisation,
and by virtue thereof is signatory to the TRIPS agreement falling under
the World Trade Organisation (WTO).
The TRIPS Agreement entered into force on 1 January 1995. It is
binding upon all Member States of the WTO and thereby comprises
almost all relevant markets in the world. It is the first multi-lateral treaty
that comprehensively addresses geographical indications.
Pursuant to Art. 22 (3) TRIPS, geographical indications for products
other than wines and spirits are protected against misleading use of the
respective designation. The provision reads as follows:
"A Member shall, ex officio, if its legislation so permits or at the
request of an interested party, refuse or invalidate the registration
of a trademark which contains or consists of a geographical
indication with respect to goods not originating in the territory
indicated, if use of the indications in the trademark for such goods
in that Member is of such a nature as to mislead the public as to the
true place of origin."
30
See section 187 of the IP Act
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Unit 10 Sources of Intellectual Property law in Namibia
Protection against misleading use means that it needs to be assessed in each
particular Member State whether consumers are misled by the use of a
designation similar or identical to the geographical indication at issue. It
may well be that the designation, which is (still) a geographical indication
in its country of origin, has become or has always been a generic term in
another country.
What are the differences between a GI and a trademark?
Activity 1
Feedback
Geographical indications and trademarks are both signs designating the
sources of goods. A GI indicates a specific product originating from a
specific area that gives the product its unique features and characteristics,
whereas a trademark indicates the products or services of a specific
company. The reputation of a trademark comes from business operation,
publicity and promotion of an enterprise, while the reputation of a GI is
derived from the gift of nature and cultural heritage. It is precisely
because of this that a trademark can be transferred, while a GI cannot be
transferred to others outside the particular region.
Unit summary
In this unit you learned about one type of intellectual property geographical indications, what it is; examples of GIs and its scope of
protection in Namibia.
Summary
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References
References
Saima Litauleni Nghihalwa. An analysis of the registration of traditional
product names, terms, symbols and other cultural expressions as
trademarks in Namibia. A dissertation submitted to the university of cape
town in partial fulfilment of the requirements for the degree Master of
Laws (intellectual property law). University of Cape Town Faculty of Law
School For Advanced Legal Studies
Geographical Indications and Trademarks: The Road from Doha.
Worldwide Symposium on Geographical Indications. Organized by
(WIPO) and the United States Patent and Trademark Office
(USPTO)2003. Document prepared by Burkhart Goebel, International
Trademark Association (INTA).
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Unit 11 Sources of Intellectual Property law in Namibia
Unit 11
Questions and Short Answers
Introduction
This unit uses a question-and-answer format with several Q&As to
help the students to acquire a basic yet comprehensive understanding of
the history, types, and general rules of the IP system and all the contents
learned throughout this guide.
After you completed this unit, you should be able
▪ examine the meaning of the term original in relation to copyright;
▪ explain section 137 of Industrial Property Act;
Outcomes
▪ outline the Paris convention ;
▪ explain why we need IP;
1. Copyrights
Activity1
The United World Creative Conference (UWCC) is held every four years
and showcases the work of young creative individuals. It is held over four
days, usually at a university campus and the programme includes musical
performances, poetry readings, dramas, visual art installations and various
exhibitions. The 2014 UWCC was fraught with controversy.
A problem arose when Mike, a self-styled “photo performance artist” took
a photograph of an animal sculpture that was being exhibited by Lewis.
Lewis is a Namibian sculptor famous for his life-like sculptures of lions
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and leopards. Lewis is well-known among the art crowd as a very serious
and emotional artist dedicated to protecting endangered wildlife.
Mike had wrapped a bright pink ostrich feather boa (scarf-like apparel)
around Lewis’ most famous work, “Lion Crying”, and taken the
photograph using his digital camera. He superimposed the words “Mike
Makes Magic” on the photograph. The photograph was then projected onto
a screen at Mike’s exhibition stand. Lewis is unhappy with Mike’s use of
the photograph.
Upon entering Mike’s exhibition stand and seeing the photograph, he ran
out screaming “The horror, the horror! My life’s work – gone, kapoof!”
A second commotion arose when Jam-Jar, a local band accused Prof X, a
UNAM academic, of infringing its copyright. In 2011 Jam-Jar had released
their critically acclaimed album, MESS. MESS comprised of five tracks
(songs), the most popular one being “Inside”. “Inside” has received a
reasonable amount of airtime but only on Base FM, 106.2 and usually
during the late night “Night Flight”. Prof X had just published a collection
of poetry, called Ode to Mess and was launching it at the UWCC. The
opening line of Prof X’s first poem is “Weeping willow, why do you weep?
Is it because you just want to sleep?”
The chorus of Jam-Jar’s “Inside” song is “Weeping willow, wazzup with
the weep? Is it cos you just got no sleep?” Prof X is outraged that a “bunch
of pipsqueak rappers” would accuse him of such dishonesty. He swears
that he had never heard of the band or their music before their wild
accusations at the UWCC. In fact, the only radio he listens to is which is
devoted to classical music. Prof X does not even have a television set.
Jam-Jar claims that Prof X’s use of their work has resulted in a loss of sales
at the UWCC and want compensation. They further claim that Prof X’s
actions have resulted in their peers no longer regarding them as cutting
edge and that Prof X deliberately chose to launch his poetry collection at
the UWCC, knowing that Jam-Jar would be there. They believe that he has
a vendetta against them because they were all noisy first year students in
his Media Studies course at UNAM.
NOTE BEFORE ANSWERING ANY QUESTIONS
"artistic work" means as per s. 1, irrespective of its artistic quality(a) a painting, sculpture, drawing, engraving or photograph;
(b) a work of architecture, being either a building or a model of a building;
or
(c) a work of craftsmanship not falling within either a model of a building;
or
Discuss whether Lewis would be successful in a claim that his moral
rights have been infringed. Your answer should include a discussion
on the nature of moral rights.
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Unit 11 Sources of Intellectual Property law in Namibia
Feedback
Activity 2
144
Once a work qualifies for copyright protection, two distinct rights arise
Economic rights and Moral rights. In this instance, it is important to first
define what a copyright is. A CR is an exclusive right granted to the author
or maker of an eligible original work that has been captured in a material
form to use (adapt, perform, translate, copy) or permit others to use such
work within a specified period (usually 50years, refer to s. 6).
Only an author can have moral rights, and there are inalienable; personal
rights; and it cannot be sold or transferred to others; may however be
waived in a contract of sale between author and third party. Lewis is the
artist who is the maker of the animal sculptor ‘Lion crying’, as he is
responsible for the arrangements that made it necessary for the existence
of the finished sculpture. A sculpture which is an artistic work (refer to s.
1) is eligible for CR protection as per s. 2. Therefore, presumably he is
entitled to CR protection as per the CR & NR Protection Act of 1994.
Article 6bis of the Berne Convention Namibia ratified this Convention, and
it therefore applies in our jurisdiction by virtue of article 144 of the
constitution); as well as s.25 of the Act provide that an author has a right
to claim authorship of his work and to object to any distortions, mutilations,
or modifications that would be prejudicial to the honour or reputation of
the author. Such a right is a moral right and aims to protect the
author’s/maker’s non-economic interest, reputation and integrity. The
essence of an author’s/makers’s moral right injury lies in the assault upon
the author’s personality as it is the personality that is embodied in the
author/maker’s creation.
Mike in taking a putting a pink bow around Lewis’s work alone is an
infringement to Lewis’s MR vested in CR with regards to that sculpture;
Mike had the audacity to even photograph work and exhibit it with the pink
tie. This intentional distortion is likely to be prejudicial to Lewis’s
reputation as he has established himself as an artist who is very serious and
emotional artist dedicated to protecting endangered wildlife. The distortion
does not embody Lewis’s personality, and therefore such distortive act is
actionable.
REMEDIES:
Civil law remedies as per s. 30
Carefully consider and examine the content and meaning of the terms
'original' and 'work' in relation to copyright generally and to Mike’s
photograph specifically.
Feedback
Activity1
Feedback
The elements for one to be granted CR in a work are mutually inclusive
and must all be met:
•
Author/Maker
•
Eligible
•
Original work
•
Captured in material form
•
Limited duration
Original work must originate from the author of the work, original skill and
labour in the execution of work. In this instance, Mike simply
photographed an already existing artistic work, no originality of skill.
Advise Jam-Jar as to the success of bringing a copyright infringement
action against Prof X. Your answer should include a consideration of
the factors that Jam-Jar will need to prove. [Do not discuss the
requirements of originality for subsistence of copyright. You can
assume that there is copyright in both Jam-Jar and Prof X’s works
Assuming there is originality on both works by the parties involved, the
claimant (JAM JAR) must prove on a balance of probability that Prof. X’s
work is an infringement of their CR in their jams. He who alleges must
prove.
S, 29 of the CR Act provides that an infringement of a CR occurs where a
person who is not licensed does an act which the owner has an exclusive
right to do (e.g., to copy, adapt, translate, broadcast etc.).
Elements:
Non-owner
Not licensed
Does
an
act
exclusively vested in owner of CR
towards a substantial part
of the work. Direct infringement occurred.
JAM JAR must prove CR; in this instance Prof not licensed to adapt
musical work of JJ into literary work and therefore no permission. The
adaption was towards a substantial part of the work. Judged qualitatively,
sufficient objective similarity between the works – causal link. The
exceptions to be made to the protection of CR in musical works in s. 15 do
not apply here, and therefore JJ has high chance of succeeding.
2.Trademarks
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Unit 11 Sources of Intellectual Property law in Namibia
Section 137 of the Industrial Property Act sets out the grounds that
justify prohibition of registration of a mark. What are these?
Activity1
Feedback
•
Not meeting the requirements for section 134 for registration
•
Contra bones mores
•
Mala fides application
•
Reg. likely to cause confusion or offend a section of the public
•
Inherently deceptive or the reg. of such is likely to mislead the
public as to the geographical origin of the g/s
•
Consists exclusively of a sign which has become customary in the
current language or among bona fide traders in regard to the g/s concerned.
•
it is identical with or an imitation of a hallmark adopted by any
state or inter-govt. Org without permission;
•
the applicant for reg. has no bona fide intention of using mark once
reg.
3.Patents
1.
Activity
2.
What are the essential elements set out under the Paris Convention
on Industrial Property of 1883?
What international conventions protect patent rights?
General
Activity
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1.
2.
3.
4.
5.
Why do we need an IP system?
What is the territoriality principle of IP?
What is the territoriality principle of IP?
How does the international community coordinate IP protection?
What are the differences between the protection of an invention
and an industrial design?
Summary
This is a short a unit . We did not cover specific topic here but took you
through some important issues by why of questions and answers.
Summary
References
IP Act.
References
The Harare-based ARIPO adopted the Legal Instrument for the Protection
of Traditional Knowledge and Expressions of Folklore in Lesotho in 2007.
The Swakopmund Protocol on the Protection of Traditional Knowledge
and Expressions of Folklore on 9 August 2010.
TRIPS..
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