INTELLECTUAL PROPERTY LAW
Intellectual Property Rights
are rights awarded by society to individuals or organizations principally over
creative works. They give the creator the right to prevent others from making
unauthorized use of their property for a limited period of time.
What
is Intellectual Property?
Intellectual property refers to creations of the mind: inventions;
literary and artistic works; and symbols, names and images used in commerce.
Intellectual property is divided into two categories:
i.
Industrial Property Includes
patents for inventions, trademarks, industrial designs and
geographical indications.
ii.
Copyright covers
literary works (such as novels, poems and plays), films, music, artistic works
(e.g., drawings, paintings, photographs and sculptures) and architectural
design. Rights related to copyright include those of performing artists in
their performances, producers of phonograms in their recordings, and
broadcasters in their radio and television programs.
Intellectual
property rights are like any other property right. They allow creators, or
owners, of patents, trademarks or copyrighted works to benefit from their own
work or investment in a creation.
The
value of Intellectual Property
This
section explains the value of intellectual property and why it is important to
Kenya’s integration into the global economy. It explores the benefits of IP
protection in strengthening national economies, driving innovation and
technology, fostering new ideas, and enhancing society and culture:
i.
IP
benefits the economy: IP protection benefits the economy in
terms of GDP, employment, tax revenues, development and competitiveness. IP
rights (IPR) also promote foreign direct investment (FDI) and technology
transfers in developed and developing countries, driving development and
economic growth.
ii.
IP
attracts FDI: The
strength of a country’s IPR regime is one of the factors influencing decision
of producers and firms to transfer technology or invest in a country. FDI is
important because it supports economic development through the transfer of
technology and managerial skills and through the creation of employment
opportunities. For developing countries, particularly for those in the early
stages of development, technology transfer from foreign high-income economies
and the spill over effects from FDI have been considered the most important
sources of innovation, since most such countries lack the capital and the
skills to conduct state-of-the-art research.
iii.
IP
promotes innovation:
Innovation is a key ingredient of sustained economic growth, development and
better jobs. Effective IP protection increases research, development and
innovation. It attracts venture-capital investment for R&D and for the commercialization
of innovative products and services. IPR promotes cultural expression and
diversity, promotes the dissemination of new technologies, and promotes
development.
iv.
IP
helps firms monetize their inventions and grow: Firms
use IPR to help develop, create value, conduct trade and benefit from their
works and inventions. A firm’s ownership of IP rights helps to reassure
investors that they should inject money into the company. The use of IP in
fostering investment is not only important for established firms that are
already reliant on patents, trademarks and copyrights—protecting their value,
innovation and reputation—but even more so for new firms seeking to establish a
secure stream of investment and innovation. Firms also can use their IP to penetrate
new and profitable markets, to develop products, services and processes and to
collaborate through licensing or establishing strategic alliances.
v.
IP
protection helps small and medium enterprises: SMEs
that rely on IP of all sorts reported higher growth, income and employment than
those that do not – in some cases as much as 20% more.
i.
IP
benefits consumers and society: IPR
supports the development of a continuous stream of innovative, competitive
products and services that benefit consumers. IPR promotes consumer trust and
more effective protection against counterfeit and pirated goods– and helping
protect consumers from inferior and dangerous counterfeits. IPR is helping to
address many of society’s most important needs, – and helping protect consumers
from inferior and dangerous counterfeits to a truly ‘digital economy’.
Just as adequate
IP protection and enforcement mechanisms support the numerous societal,
consumer and economic benefits described in this section, inadequate IP
protection and inadequate enforcement against IPR violations have the opposite
effect.
PATENTS
What
is a Patent?
A patent is an exclusive right granted for an
invention – a product or process that provide a new way of doing something, or
that offers a new technical solution to a problem.
A patent provides patent owners with
protection for their inventions. Protection is granted for a limited period,
generally 20 years.
Why
are patents necessary?
Patents
provide incentives to individuals by recognizing their creativity and offering
the possibility of material reward for their marketable inventions. These
incentives encourage innovation, which in turn enhances the quality of human
life.
What
kind of protection do patents offer?
ii.
Patent protection means an invention
cannot be commercially made, used, distributed or sold without the patent
owner’s consent.
iii.
Patent rights are usually enforced in
courts that, in most systems, hold the authority to stop patent infringement.
iv.
Conversely, a court can also
declare a patent invalid upon a successful challenge by a third party.
What
rights do patent owners have?
i.
A patent owner has the right to decide
who may – or may not – use the patented invention for the period during which
it is protected.
ii.
Patent owners may give permission to, or
license, other parties to use their inventions on mutually agreed terms.
iii.
Owners may also sell their invention
rights to someone else, who then becomes the new owner of the patent
iv.
The right to receive royalties in the
event of compulsory licensing
v.
Once a patent expires, protection
ends and the invention enters the public domain. This is also known as becoming
off patent, meaning the owner no longer holds exclusive rights to the
invention, and it becomes available for commercial exploitation by others.
What kinds of inventions
can be protected? (Patentability)
An invention
must, in general, fulfil the following conditions to be protected by a patent.
i.
It must be of practical use;
ii.
It must show an element of “novelty”,
meaning some new characteristic that is not part of the body of existing
knowledge in its particular technical field. That body of existing knowledge is
called “prior art”.
iii.
The invention must show an “inventive
step” that could not be deduced by a person with average knowledge of the
technical field.
iv.
Its subject matter must be accepted as
“patentable” under law i.e. the invention must not be excluded by statute e.g.
because of “national security”.
In
Kenya the inventor must apply to KIPI and the patent may be granted or
declined. If a patent is granted, there
should be an application to register it whereby the patentee must disclose the
patent to the state.
Steps
to Obtain a Patent in Kenya
1. Prepare a patent application
2. File the application
3. Request for examination (within 3 years
from the filling date)
4. Search and examination is done
5. Examiner either approves or rejects
application
6. Respond to examiner’s objections and
requirements.
7. Examiner reconsiders and either
approves or calls for further amendments.
8. If final decision is rejection you may
appeal.
9. If final decision is approval then a
patent is granted
10. Publication of the contents of the patent
in the Kenya Gazette or the Industrial property Journal.
The application for a patent should
contain:
1. Request
2. Description: The description
should disclose the invention and at least one mode for carrying out the
invention;
3. One
or more claims: The claim or claims should define the matter for which
protection is sought and should be clear and concise and fully supported by the
description;
4. One or more drawings (where necessary);
and
5. An
abstract: The abstract should merely serve the purpose of technical
information; in particular, it should not be taken into account for the purpose
of interpreting the scope of the protection sought
A patent may be
obtained/owned by a natural or juristic person.
Inventions made by
scientists in research institutions established under the Act (e.g. KEMRI) are
patented by favour of the research institute and not the individual inventor
but the inventor must be named.
Compulsory
Acquisition
This may be done by the
government where:
• The patentee has refused to work the
patent
• The patentee has refused to licence
other persons to work the patent on equitable terms.
• The owner of the patent has been promptly
and adequately compensated.
The inventor’s employer
may also own a patent regarding the employee’s invention but the invention must
have occurred in the course and within the scope of the employment.
Obligations
of the Patentee
1. Disclose the invention to KIPI
2. Give information on concerning foreign
corresponding applications and grants.
3. Duty to pay the prescribed fees.
4. Obligation to refrain from unfair
5. Abusive and uncompetitive terms and
provisions in contractual terms and licenses, assignments or patent
applications.
Patent
Infringement
This
is the unauthorized use of or dealing with a patented product or process contrary
to the interests of the patentee, with or without his consent, licence or
permission.
It
is conduct which goes against the claims as stated in the patent application
and in particular, the final grant.
A
case on patent infringement may be brought by the patentee or his personal
representative.
An
inventor whose patent is infringed is entitled to an injunction, delivery of
the infringing articles and damages, which may be assessed on a loss of profits
or royalty basis. He will also be given
‘certificate of contested validity’ which entitled him to larger costs in any
future infringement action. If the patentee loses the grant of enough to
convert the defendant’s products or process.
Defences
to Patent Infringement
1. That the invention had been published
and therefore lacked novelty
2. Absence of specificity in the claims i.e.
the claims are not specific enough
3. Non-patentability of the subject matter
because of exclusions
Remedies
1. Injunctions
2. Damages
3. Account of profits
4. Delivery up – an order that requires
the defendant to deliver up all infringing material including all equipment and
contraptions.
5 Criminal Sanctions
They are available
under the Intellectual Property Act and the Trade Marks Act. They may take the form of fines, imprisonment
and forfeiture (delivery-up)
Fundamental
Weaknesses in the Enforcement of Criminal Sanctions
• Lacklustre government attitude
towards IP and IP rights
• General public ignorance
• Lack of resources
• Limited knowledge by judges and
magistrates
TRADE
MARKS
What is a trademark?
A trademark is a distinctive sign that identifies certain goods or
services produced or provided by an individual or a company.
The
system helps consumers to identify and purchase a product or service based on
whether its specific characteristics and quality – as indicated by its unique
trademark – meet their needs.
What do
trademarks do?
i.
Trademark protection ensures that the
owners of marks have the exclusive right to use them to identify goods or
services, or to authorize others to use them in return for payment. The period
of protection varies, but a trademark can be renewed indefinitely upon payment
of the corresponding fees.
ii.
Trademark protection is legally enforced
by courts that, in most systems, have the authority to stop trademark
infringement.
iii.
In a larger sense, trademarks promote
initiative and enterprise worldwide by rewarding their owners with recognition
and financial profit.
iv.
Trademark protection also hinders the
efforts of unfair competitors, such as counterfeiters, to use similar
distinctive signs to market inferior or different products or services.
v.
The system enables people with skill and
enterprise to produce and market goods and services in the fairest possible
conditions, thereby facilitating international trade.
What kinds of
trademarks can be registered?
A
trademark can be anything Trademarks may be one or a combination of words, letters
and numerals.
They
may consist of drawings, symbols or three dimensional signs, such as the shape
and packaging of goods. In some countries, non-traditional marks may be
registered for distinguishing features such as holograms, motion, colour and non-visible
signs (sound, smell
or
taste).
In
addition to identifying the commercial source of goods or services, several
other trademark categories also exist. Collective marks are owned by an
association whose members use them to indicate products with a certain level of
quality and who agree to adhere to specific requirements set by the
association. Such associations might represent, for example, accountants,
engineers or architects.
Certification
marks are given for compliance with defined standards but are not confined to
any membership. They may be granted to anyone who can certify that their
products meet certain established standards. Some examples of recognized
certification are the internationally accepted “ISO 9000” quality standards and
Ecolabels for products with reduced environmental impact.
Registration
of Trademarks
Trademarks must be
registered to be protected. However,
notorious, famous or well-known marks may be protected even if unregistered in
a particular country or area.
The proprietor must use
it in order to continue to enjoy protection.
Trademarks exist infinitely but one has to renew registration after
certain periods of time. In Kenya it is
10 years.
The
registration procedure is as follows:
1. Preliminary search – an application
should conduct a search to find out whether the trademark is registerable or
not and also whether there exists in the records a trademark which could be
confused with the intended trade mark.
It is advisable since;
• It will help one in determining whether
the application has a chance for success, or whether it would be a waste of
time and money to try and register it in its present form.
• It will also help one avoid
trade-mark infringement and potential lawsuits if one went straight ahead in
applying for registration.
2. Applying for registration – such
application should be accompanies by seven (7) representations of the mark.
3. Examination – this includes a formal
and substantive examination.
4. Advertisement – if the examiner finds
no grounds to refuse a trade mark application, then the Trade mark is
advertised in the Industrial Property Journal or Kenya Gazette to allow any
interested party an opportunity to raise objections to the pending application
prior to registration. The information
included in the gazette notice include; the number and filing date, the
representation of the mark, the class, the specification of the goods or
services, the name and address of the applicant, any other claims (Colour,
claims, disclaimers).
5. Opposition – Any aggrieved party with
valid grounds may oppose the registration of a trade mark so advertised in the
Kenya Gazette. An opposition must be
within 60 days of the publication date, by filing a statement of opposition.
6. Registration – If there is no
opposition to the trade mark after the statutory 60 days period from the date
of advertisement, or if an opposition has been decided in the applicants
favour, the application will be registered and the Institute will issue a
Certificate of Registration and enter the registration in the Trade Marks
Register.
7. Fees
Use/Importance
of Trademark
1. To distinguish the goods of one traded
from those of another.
2. It refers to a particular quality more
so like designer quality, like Gucci, Channel etc., the trademarks are associated
with quality.
3. Trademark protects the investment of
the inventor, labour capital and goodwill, this attribute has been questioned
that it has no legal basis.
4. Identifying the origin of a product
i.e. when you see Omo you associate it with Unilever. This issue has become redundant in scholarly
terms because of the issue of franchising e.g. Nandos in Kenya makes different
tasting (read worse) chicken from the Nandos in South Africa.
5. To promote the marketing and sale of a
product when has a trademark.
TM
Infringement
This is the use of TM
in the TM sense without license from the TM owner.
Defences
to TM infringement
1. Lapse of the title to the TM
2. Non-use of the TM
3. Confusion – the plaintiff’s TM is
neither distinctive nor distinguished
4. Innocence – however, this is not an
absolute defence as the defendant has constructive notice by reason of the TM
being registered.
Remedies
to TM infringement
1. Damages
2. Accounting of profits or gains
3. Destruction of the infringing material
4. Self-help remedies e.g. advertisement
or promotional campaigns.
COPYRIGHTS
What are Copyright and Related Rights?
Copyright laws grant authors, artists and other creators’
protection for their literary and artistic creations, generally referred to as
“works”. A closely associated field is “related rights” or rights related to
copyright that encompass rights similar or identical to those of copyright,
although sometimes more limited and of shorter duration. The beneficiaries of
related rights are:
i.
Performers (such as actors and
musicians) in their performances;
ii.
Producers of phonograms (for example,
compact discs) in their sound recordings; and
iii.
Broadcasting organizations in their
radio and television programs.
Works
covered by copyright include, but are not limited to: novels, poems, plays,
reference works, newspapers, advertisements, computer programs, databases,
films, musical compositions, choreography, paintings, drawings, photographs,
sculpture, architecture, maps and technical drawings.
What rights do
copyright and related rights provide?
The creators of
works protected by copyright, and their heirs and successors (generally
referred to as “right holders”), have certain basic rights under copyright law.
They hold the
exclusive right to use or authorize others to use the work on agreed terms. The
right holder(s) of a work can authorize or prohibit:
i.
Its reproduction in all forms, including
print form and sound recording;
ii.
Its public performance and communication
to the public;
iii.
Its broadcasting;
iv.
Its translation into other languages;
and
v.
Its adaptation, such as from a novel to
a screenplay for a film.
Copyright and
the protection of performers also include moral rights,
i.
the right to claim authorship of a
work, and
ii.
The right to oppose changes to the work that
could harm the creator’s reputation.
Creators
often transfer these rights to companies better able to develop and market the
works, in return for compensation in the form of payments and/or royalties
(compensation based on a percentage of revenues generated by the work).
The economic
rights relating to copyright are of limited duration beginning with the
creation and fixation of the work, and lasting for not less than 50 years after
the creator’s death.
This term of
protection enables both creators and their heirs and successors to benefit
financially for a reasonable period of time. Related rights enjoy shorter
terms, normally 50 years after the performance; recording or broadcast has
taken place.
What are the
benefits of protecting copyright and related rights?
i.
It is an essential component in
fostering human creativity and innovation.
ii.
Giving authors, artists and creators
incentives in the form of recognition and fair economic reward increases their
activity and output and can also enhance the results.
iii.
By ensuring the existence and
enforceability of rights, individuals and companies can more easily invest in
the creation, development and global dissemination of their works.
iv.
This, in turn, helps to increase access
to and enhance the enjoyment of culture, knowledge and entertainment the world
over and
v.
Stimulates economic and social
development.
Copyright
infringement
This is the dealing
with a work controlled by copyright in a manner contrary to the interests of
the owner of the copyright without the owner’s consent, authority, licence or
permission.
Remedies to copyright infringement
i.
Civil action suits,
ii.
Administrative remedies,
iii.
Criminal prosecution.
iv.
Injunctions,
v.
Orders requiring destruction of
infringing items,
vi.
Inspection.
Proof of copyright infringement
1. There must be similarity – the issue is
that similarity is a matter of fact and similarity is difficult in music.
2. There must be evidence of access – is
there evidence that one person accessed the work of another? Dates are
required.
3. The material copied must itself be
copyrightable.
DEFENCES
TO COPYRIGHT INFRINGEMENT
1. Non-subsistence of Copyright – © does
not subsist in the work i.e. if it is not original and its plain news or plain
facts.
2. Fair dealing - this is defined under
Section 26(1) of the Copyright Act 2001 as where one uses a work for criticism
or review, private use.
3. Consent – be it written or verbal
4. Public interest – if the copyright is
used for the benefit of the public
5. Compulsory Licence by the State – where
the issue is of public interest e.g. educational or health information.
6. The works have fallen into the public
domain and anyone can use it without infringing the © e.g. where the © has
lapsed.
Compulsory licensing
In
certain circumstances, the state may order the copyright owner to licence the
work if it is important in the public interest e.g. health/educational
interest.
This
may be used where the owner has only produced or licensed few copies, is
charging exorbitantly or has refused to licence it on reasonable terms.
The
copyright owner is entitled to compensation at the going market rates.
The Tort of PASSING OFF
What
is Passing Off?
Passing
off is governed by the law of tort
Passing
off relates specifically to a misrepresentation made by one party which damages
the goodwill of another party. In most cases this will be achieved by one party
passing off the other party’s goods or services as those of their own.
In
most cases businesses will have rights under the law of passing off in relation
to slogans, names, packaging and other advertising elements where the company
will have accrued some form of goodwill.
What are the elements to passing
off?
The
goods or services in question must have goodwill attached to them. This specifically means that the goods will
have particular identifying features or specifics that will enable members of
the general public or a specific section of the general public to associate
with those particular goods or services.
There
must be a misrepresentation on behalf of the defendant that will lead or be
likely to lead those members of the general public to believe that the goods
offered by him are in fact the goods or services of the other company. Please note that this misrepresentation does
not have to be intended it just has to lead the public to believe that.
This
misrepresentation damages the goodwill of the claimant.
What is the link between passing
off and trademarks?
Passing
off is often relied upon when a something is unregistered as a trade mark. For example a slogan or a name has not been
registered as a trade mark but it has sufficient goodwill attached to it. The legal action often involved with passing
off can be much more time consuming and less straightforward than that of trade
marks. If you’re name or slogan can be
registered as a trade mark then it is the best policy to register it rather
than relying on the tort of passing off.
If I have already registered my
trade mark can I rely on passing off?
There
is existing case law where when dealing with the same facts an action brought
for infringement of a trade mark was unsuccessful whereas the action brought
for passing off was successful. Passing
off should therefore not be ignored as a legal remedy.
Does Passing off simply apply to
Businesses to Business?
A
case concerning passing off had the effect of bringing the law of passing off
into the realm of celebrity endorsements and created a significant use for it
where a trade mark cannot be registered.
It was held that false endorsements amount to passing off under UK law.
As
it is the case for many celebrities to use their image to endorse various
products if a company uses a celebrity image without permission in an
advertisement for their product this may result in passing off if the following
is proven:
That
at the time of the acts complained of he had a significant reputation or
goodwill;
That
the actions of the defendant gave rise to a false message which would be
understood by a not insignificant section of the general public that his goods
have been endorsed, recommended or approved by the claimant (in this case the
celebrity).
A
once purely business to business tort following this case an individual, albeit
a famous individual, is able to bring a claim of passing off against a
business.
What remedies are available for passing
off?
i.
Damages or an account of the defendants’
profits
ii.
An order for the delivery up or the
destruction of the infringing articles or products
iii.
An injunction
iv.
An enquiry to establish loss
Defences are available.
The
following can be used as defences against a claim of passing off:
i.
The claimants mark, slogan etc. is not
distinctive
ii.
The mark, slogan etc. has become generic
iii.
The defendant may be innocently using
his or her own name
iv.
The claimant has given consent
