Global IP Matrix - Issue 8

www.gipmatrix.com
1

Dear readers,
We are delighted to present you with issue 8 of
The Global IP Matrix magazine!
Once again, we have fantastic content delivered
to you by industry professionals who are
experts in their field.
This issue explores IP & Innovation in Africa,
anti-counterfeiting measures in the Caribbean,
IPR Infringement in China, plus many more
engaging articles around the IP ecosystem.
It’s been a challenging few months; however,
we are grateful that our clients and contributors
share our vision. Together, we are heading for
better times.
We cannot thank our authors enough for their
time and efforts to keep you, our audience up
to date with news and stories from their own
perspective and expertise.
Look out for our next edition, in January 2021
and until then, stay safe, healthy & happy.
Elvin Hassan – Editor
CONTENTS
Pages 5
Cementing Trademark Rights
Anomi Wanigasekera, Partner & Head of Intellectual
Property Division & Co-Authored by Navindi
Naotunna, Associate at Julius & Creasy Law firm,
Sri Lanka
Page 6
Offensive Trademarks Raise Doubts, or not?
Tatiana Pogrebinskaya, Trademark Attorney at
Gorodissky & Partners, Russia
Page 9
AFRICA AWAKENS: Achieving agenda 2063
through innovation and intellectual property.
Sarah Norkor Anku, Senior Partner at
Anku.Anku At -Law, Ghana
Page 13
Jurisdiction Matters:
High Court or Commercial Court?
Manisha Singh, Partner at LexOrbis,
India & Simran Bhullar Associate, India.
Page 16
Best methods for an effective patent landscape
analysis in just six simple steps!
Caitlin Kavanagh, Marketing Manager at Minesoft,
United Kingdom
Page 19
Opioid Addiction – A Patent Perspective
Alec Griffiths, IP Manager at Patent Seekers,
United Kingdom
Page 24
The Supreme People’s Court of China issued
opinions on strengthening the punishment of IPR
infringement.
Ray Zhao, Senior Partner at Unitalen Attorneys at
Law, China
Page 27
ONLINE STREAMING SERVICES IN NIGERIA:
The Gold, the Legal Considerations.
Ifeanyi E. Okonkwo, Associate at Stillwaters Law
Firm, Nigeria
Page 32
ANTI-COUNTERFEITING MEASURES
IN THE CARIBBEAN:
THE DEMAND FOR UNIFIED MEASURE.
Laura Castillo Sepúlveda, Partner at INNVENTIVA
- Espacio Legal, Dominican Republic
Published by Northon’s Media
PR & Marketing Ltd.
Carlos Northon
CEO & Founder Northon’s Media PR & Marketing LTD
Publisher of The Global IP Matrix & Women’s IP World
carlos@northonsprmarketing.com
Elvin Hassan
Editor for The Global IP Matrix & Women’s IP World
Head of International liaisons for Women’s IP World
elvin@womensipworld.com
Joanna Sofocleous
Senior Account Manager
joanna@womensipworld.com
Craig Barber
Head of Design for The Global IP Matrix &
Women’s IP World
info@northonsprmarketing.com
THE GLOBAL
IP MATRIX
EDITORIAL
BOARD
Gabriela Bodden
Partner at Eproint
www.eproint.com
Costa Rica
Marek Bury
Managing Partner and Patent
Attorney at Bury & Bury
www.bnb-ip.eu
Poland
Mr. Afamefuna Francis Nwokedi
Principal Counsel of
Stillwaters Law Firm
www.stillwaterslaw.com
Nigeria
Ms. Brenda Matanga
Managing Attorney & head of practice
at B Matanga IP Attorneys for Africa
www.bmatanga.com
Laura Castillo Sepúlveda
Partner at
Innventiva Espacio Legal
www.innventivalegal.com
2 www.gipmatrix.com
Zimbabwe
Latvia
3
Dominican Republic
Ms. Ruta Olman
Immediate past president of ECTA
& Associate partner of METIDA
www.metida.lt

Contributors
Mrs Sarah Norkor Anku, Senior partner at Anku.Anku
At-Law
www.ankuatlaw.com
Tatiana Pogrebinskaya, Trademark Attorney at
Gorodissky & Partners, Russia.
www.gorodissky.com
Laura Castillo Sepúlveda Partner at INNVENTIVA -
Espacio Legal
www.innventivalegal.com
Simran Bhullar (Associate) at LexOrbis, India
www.lexorbis.com
Caitlin Kavanagh, Marketing Manager at
Minesoft, UK
www.minesoft.com
Alec Griffiths, IP Manager at
Patent Seekers, UK
www.patentseekers.com
Cementing
Trademark Rights
Anomi I Wanigasekera - Partner and head
of IP at Julius & Creasy
www.juliusandcreasy.com
Co-Authored by Navindi Naotunna, Associate
at Julius & Creasy Law firm,
Sri Lanka
www.juliusandcreasy.com
Manisha Singh, Partner at LexOrbis, India
www.lexorbis.com
EDRADEMARK
AEERE
International Intellectual Property Attorneys
Trademark, Patent, Design, Copyright, Domain name
registration, litigation & enforcement services
125mm (H) x 180mm (W)
Ifeanyi E. Okonkwo, Associate at
Stillwaters Law Firm
www.stillwaterslaw.com
Ray Zhao, Senior Partner at
Unitalen Attorneys at Law, China
www.unitalen.com
Pakistan Office:
(Adjacent Rado Kronos/Hang Ten Mall Plaza Bldg.)
Email: UnitedTrademark@UnitedTm.com
Websites: www.utmps.com and www.unitedip.com
In July 2020, the Commercial High
Court of Colombo ruled that Tokyo
Cement Company (Lanka) PLC
had established a prima facie case
to use the word ‘Tokyo’ exclusively
along with the distinctive triangular
shape logo as its trademarks. This
is an important ruling because it
established that even though using
a geographical name is a public
interest right, it does not trump
acquired intellectual property rights
when the name itself does not act as
a trademark.
Background
Tokyo Cement Company, the Plaintiff, is
one of the leading cement manufacturers in
Sri Lanka. They are the owner of multiple
trademarks bearing the term ‘Tokyo’ and
‘Tokyo Super’ registered for manufacturing
cement in class 19. Most of their marks
contain a distinct shape that is readily
identifiable and distinctively associated
exclusively with the Plaintiff. Since 1982,
the Plaintiff has been using the trading
name and trademarks containing the word
‘Tokyo’.
The Defendant, Tokyo Elevators and
Escalators (Private) Ltd, is a specialised
elevator enterprise that designs, manufactures,
processes the elevators and parts, and has
been in business since 2011.
Tokyo Cement discovered that Tokyo
Elevators are using a billboard that had
incorporated ‘Tokyo’ along with a shape
that is misleadingly similar to their
trademarks and the distinctive shape of
their trademark.
Authored by Anomi Wanigasekera, Partner & Head of Intellectual
Property Division & Co-Authored by Navindi Naotunna, Associate at
Julius & Creasy Law firm, Sri Lanka - www.juliusandcreasy.com
Tokyo Cement made the fateful decision
to start proceedings for infringement of
its registered trademarks, tradenames,
and contravention of the provisions of the
Intellectual Property Act for dishonest acts to
gain unfair advantages.
The Plaintiff’s Arguments
Tokyo Cement’s first argument was that
they have the exclusive right to trademarks
comprising of the word or the name ‘Tokyo’
and the triangular shape logo because they
designed it for themselves and that they
have used it for a long time. They argued
they have used it since 1982 and are wellknown.
Therefore, although the trademark
is registered for manufacturing cement, no
other person is entitled to use it for any other
product. They further argued that even if the
trademark is not registered, no other person
can use its name and logo for any other
product as his logo and name goes along with
the acquired goodwill/reputation.
The Defendant’s Arguments
Tokyo Elevators argued that Tokyo Cement
had not placed any evidence on establishing
they have used the said triangular shape logo
along with the name ‘Tokyo’ from 1982 and
denied their claim. Their second argument
was that the Plaintiff is not entitled to deprive
the Defendants by using a Geographical name,
which is ‘Tokyo’. Further, they argued there is
no proof that the Defendants have misled any
public member and invited the court to make
a side-by-side comparison.
Decision
Gunawardhena J upheld Tokyo Cement’s
application.
Having examined both marks, his Honour
found that the mark and the name
‘Tokyo’ even compared side by side, had very
similar resemblances. His Honour accepted
that the law provides, trademarks do not
need to resemble or appear to a third party,
similar when it is compared side by side. It
is the mind’s impression of the mark that is
critically important (Societe Des Produits
Nestle SA v Multitech Lanka (Pvt) Ltd). His
Honour accepted that if the phonetic sound
misleads the public, then there is always
unfair competition.
Gunawardhena J accepted that the word
‘Tokyo’ is a Geographical name. However,
since the word ‘Tokyo’ is used along with
a triangular shape mark with two parallel
horizontal lines, and registered under class
19, his Honour held that Tokyo Cement has
exclusive rights for the mark. Tokyo Elevators
lost the claim because they had not registered
their mark, even though they claim to have
been using it.
Regarding the products of the parties,
his Honour relied on the judgment of the
High Court of Delhi, in Daimler Benz
Aktiegesellschaft Vs. Hybo Hindustan and
accepted that no person can use a reputed
trademark for propagating their products.
The crux of these findings came back
to the question of the Tokyo Elevators
trademark misleading the general
public. His Honour found that even
though they are two different products,
originating from different countries,
Tokyo Elevators are recurrently and
continuously unfairly competing
with Tokyo Cement by using similar
trademarks that are cherished
intellectual property rights of Tokyo
Cement.
Tokyo Elevators has appealed.
4 www.gipmatrix.com www.gipmatrix.com
5

Offensive Trademarks
Raise Doubts, or not?
Refusal to register based on this
norm is not explained by the
patent office’s examiner, and
sometimes it is not actually clear
why this legal norm was applied.
Yes, it happens.
As practice shows, when challenging
such refusals under the administrative
procedure, indicating only the relevant
clause and number of the article of the
Civil Code is regarded as not proved and
10, 14, 18, and 25 and services of classes 35, 39, 41, and 44, according to ICGS, this
designation is not “scandalous” and may be registered as a trademark (reg. No. 521942).
(Rospatent’s Decision dated 31 July 2014).
Surnames of prominent figures may be recognised as “scandalous”
marks.
Yes, they may be.
In some instances, when designations representing or comprising as their element
surnames, names, or alias names of any prominent figures in politics, economics,
science, culture, etc., both from the past and present, are claimed, their registration as a
trademark may be regarded detrimental to the public interests and (or) morality.
As discussed by Tatiana Pogrebinskaya, Trademark Attorney
at Gorodissky & Partners, Russia - www.gorodissky.com
Offensive trademarks are
designations that, by virtue
of Sub-clause 2 of Clause 3 of
Article 1483 of the Civil Code,
may not be registered as
trademarks if they represent
designations or comprise
elements detrimental to the
public interests, humanity,
and principles of morality.
Such designations may include further
designations that represent or comprise
words, phrases, images, three-dimensional
and any other designations or their
combinations, which, both themselves
and used as trademarks, contradict the
legal foundations of public order and (or)
may trigger indignation of the society
members based on the universal moral
principles.
The practice of applying this legal
prohibition on the registration of
“scandalous” marks is characterised as one
of the most challenging and controversial
issues due to objective reasons as well
as since each expert examining an
application relies on his own “moral code”.
Besides, public interest and morality are
shifting over time. All this gives rise to
various myths about this legal norm.
We will focus on some of them and
decipher what is true and what is not.
Patent offices of some countries
avoid applying the norm
prohibiting registration of
“scandalous” marks.
It is not true.
As a rule, the law of foreign countries concerning the protection of trademarks contains
a prohibition on the registration of “scandalous” marks, which is applied along with
other grounds for refusal, both during the expert examination of a claimed designation
for registration as a trademark and during appeals against trademarks if its registration
is detrimental to the public interests (or public order) and (or) morality.
It is impossible to overcome a refusal to register based on this norm.
It is not always true.
The analysis of practice shows that it is possible to overcome such a refusal. However, it
is usually very difficult. There are cases where it does not work (because the applicant
failed to find enough arguments to disprove the expert’s arguments), or it is impossible
in general. For example, if the claimed designation is semantically negative and evokes
unpleasant associations.
For instance, the patent office refused to register the claimed designation for the
goods “rum” (class 33 according to ICGS), since the word “CONTRABANDO” included
in it is translated from Spanish into Russian as “smuggling” — illegal transportation
of goods, valuables, and any other items across the national border accompanied by a
violation of the customs regulations. On this basis, it was concluded that registration of
such a mark is detrimental to the public interests, since any import and sale of smuggled
goods, particularly alcoholic products, violates the Russian Federation’s law. However,
the applicant was able to find enough arguments and provide the necessary evidence
that this designation did not contradict public interests. There even was the history
of the origin of this name (this rum was smuggled into Spain in a tourist’s suitcase)
(Rospatent’s Decision dated 31 July 2018). As a result, the mark was registered under
No. 674916.
is not taken into account during further
consideration of the dispute. However,
there are cases when challenging refusals to
register trademarks for other grounds, the
panel of the patent office for considering
such disputes may, at its discretion,
apply this norm as an additional ground
for refusing registration of the mark. In
such a case, the applicant, already during
consideration of the dispute, has to find
arguments proving that the designation
claimed by him in general and (or) its
registration as a trademark corresponds
to the public interests and (or) morality
principles.
One and the same designation
may be recognised as
“scandalous” for some goods and
services and “not scandalous” for
others.
Yes, it is true.
For example, the registration of the
designation
containing
the word element “Sexymoda” (translated
from English as sexy fashion) is
detrimental to the public interests for
part of the goods and services specified
in application No. 2012735078 for
registration of a trademark, in particular,
for: “Radioactive substances for medical
purposes” (class 05 according to ICGS),
“children’s pants [clothes]” (class 25
according to ICGS), “organisation of
[educational] competitions; amusement
parks” (class 41 according to ICGS). For
other claimed goods of classes 03, 05,
For example, the claimed designation
under application No.
2011716217 (for goods of Class 33 and services of Classes 41 and 43 according to
ICGS) reproduces the surname of a famous Russian chemist D. I. Mendeleev, for which
reason registration of a trademark in the applicant’s name will be detrimental to the
public interests. When making the decision refusing to register this mark, the patent
office considered the importance of that person and his scientific heritage for Russia. It
proceeded from the fact that the outstanding Russian scientist’s name and reputation
were the public domain. The grant of the exclusive right to the said designation in the
applicant’s name would give him unreasonable precedence over other business entities.
(Rospatent’s Decision dated 31 August 2012).
Along with this, let us note that there is also practice when the designations, which do
not exactly reproduce the surname of prominent figures, but which may cause someone
to see the veiled use of the surnames of such figures, are classified as “scandalous”.
For example, the claimed designation
was described as a coined word
designation “PU IN,” having no semantic meaning. A space between the two claimed
syllables makes it possible to put any letter between them. However, due to the wellknown
character of the name of Russian President Vladimir Putin, not only in the
Russian Federation but also worldwide, this designation may be perceived by the
consumer precisely in conjunction with the surname Putin. In this regard, Rospatent
considers that any use of the claimed designation as a means of labelling for food and
beverages (goods in Classes 29, 30, 32, and 33 according to ICGS) will have a tinge of
disrespect towards a well-known and acting politician, which, in fact, is detrimental to
moral principles.
(Rospatent’s Decision dated 8 December 2008 under application No. 2006721262)
6 www.gipmatrix.com www.gipmatrix.com
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Writen by Sarah Norkor Anku (Mrs), Senior Partner,
Anku.Anku at law - www.ankuatlaw.com
Africa can no longer
be ignored; the lion
awakens from its
slumber!
AGENDA 2063 is Africa’s blueprint and
master plan for transforming Africa into
the global powerhouse of the future. It is
the continent’s strategic framework that
aims to deliver on its goal for inclusive and
sustainable development and is a concrete
manifestation of the pan-African drive for
unity, self-determination, freedom, progress,
and collective prosperity pursued under Pan-
Africanism and African Renaissance. 1 It is
an agenda to achieve the Pan-African vision
of an integrated, prosperous, and peaceful
Africa, driven by its citizens, representing a
dynamic force in the international arena.
Agenda 2063 encapsulates not only Africa’s
aspirations for the future but also identifies
key Flagship Programmes, which can boost
Africa’s economic growth and development
and lead to the rapid transformation of the
continent. 2 The flagship programmes include
the establishment of the African Continental
Free Trade Area (AfCFTA) to accelerate
intra-African trade and boost Africa’s trading
position in the global market place and to use
trade more effectively as an engine of growth
and sustainable development by doubling
intra-Africa trade, strengthening Africa’s
common voice and policy space in global trade
negotiations. 3
The African Continental Free Trade
Agreement, which establishes AfCFTA, aims
to liberalise the market for goods and services
and facilitate the movement of capital and
natural persons with a view to creating a single
market in accordance with the Pan-African
vision. The second phase negotiations of the
Agreement will provide safeguard measures
to the Agreement, including negotiating
Investment, Competition, and Intellectual
Property Protocols.
It is expected that the Intellectual Property
Protocol will cover the trade aspects of
Intellectual Property rights that contribute to
regional trade and value integration. Until the
Intellectual Property Protocol is negotiated
and developed into a legally binding Regional
instrument, the various member states
will adhere to the existing laws governing
intellectual property within their territories.
Estimates from the United Nations Economic
Commission for Africa indicate that the
AfCFTA holds the potential of boosting intra-
African trade by 52.3%. Covering a population
of over 1.2 billion, with a combined GDP of
over USD$3.4 trillion, the AfCFTA has created
one of the world’s largest free trade areas.
It is further estimated that by 2050 Africa’s
population will double, rising from the 1.2
billion to 2.4 billion, with over 60 percent
(60%) of people under the age of 25, and such
a large young population presents significant
opportunities and challenges. 4 Currently,
Africa has the youngest population globally,
with more than 400 million young people aged
between the ages of 15 to 35 years. 5
Consequently, the AU has developed several
youth development policies and programmes
at continental level to ensure the continent
benefits from its demographic dividend. The
policies include the African Youth Charter,
Youth Decade Plan of Action, and the
Malabo Decision on Youth
Empowerment, all of which
are implemented through
various AU Agenda
2063 programmes. 6 The
Youth Decade Plan of
Action focuses on
five key priority
areas, including
Youth Employment
& Entrepreneurship
and Education &
Skills Development. 7
There is much emphasis on
youth entrepreneurship,
innovation, and
employment.
Some governments, including Ghana, have
encouraged innovation and creativity among
the youth in particular.
With support from some development
partners, some are creating a much needed
infrastructure and facilities to promote
innovation and facilitate the scaling – up of
start-ups. A typical example is the Ghana Tech
Lab facilities, a technology hub for digital
innovations that seek to inspire innovation,
creativity, and ideation. The tech hub has so
far trained 1212 innovators across Ghana
with 11 start-ups in incubation. Its Africa
AI Accelerator program has been designed
to promote local innovations in the field of
artificial intelligence, machine learning, and
data usage. 8 The program is structured to
support entrepreneurs with innovative high
growth AI solutions that are commercially
viable, socially driven, and creatively designed
and can also be refined and scaled through
an acceleration program. The first cohort of
the program consist of 10 AI start-ups from
Ghana, South Africa, Uganda, and Rwanda.
In recent times Africa’s innovative
achievements have received much public
attention.

The media giant CNN reported some of the
remarkable innovations that could change the
world. 9
The examples reported include the following:
• “3D printing is gaining traction in
Africa. In 2013, the WoeLabs tech hub in
Togo made the first “Made in Africa” 3D
printer from e-waste. They want to use
the 3D printer to revolutionise Africa.
They’re starting by putting a machine in
every school within 1km of the workshop.
Buni Hub is another tech center, based in
Tanzania that is building a 3D printer.
• Pneumonia is a deadly condition. It’s
responsible for 16% of all deaths of
children under five. A main contributing
factor to this is slow diagnosis. Ugandan
inventor Brian Turyabagye has created a
biomedical smart jacket that can diagnose
the condition four times faster than a
doctor. It’s also more accurate. It analyzes
the chest and then sends the information
via Bluetooth to a smartphone app.
• African countries are developing
groundbreaking technology for space
exploration. Look no further than the
Square Kilometer Array (SKA) in South
Africa, which, once completed, is set to be
the world’s largest telescope. It will allow
scientists to look many times deeper into
space.
Center The (TISC) United program Republic to of provide Tanzania innovators has been with one access of the to beneficiaries locally based, of the high-quality project. In addition,
technology the government, information through and related the services, Commission helping of them Science to exploit and their innovative potential
and to create, protect and manage their intellectual property rights. 10 Technology Tanzania (COSTECH)
in cooperation with WIPO, together with Japan Patent Organization (JPO) and Business
The United Republic of Tanzania has been one of the beneficiaries of the project. In addition,
the government, Registration through and Licensing the Commission Agency of Tanzania Science and (BRELLA), Technology have Tanzania developed (COSTECH) a department in to deal
cooperation with WIPO, together with Japan Patent Organization (JPO) and Business Registration
with intellectual property rights for local innovators and scientists called the Technology and
and Licensing Agency Tanzania (BRELLA), have developed a department to deal with intellectual
property Innovation rights for Support local innovators Centre (TISC). and scientists 11 Tanzania called the has Technology also engaged and Innovation in other Support support measures,
Centre (TISC). 11 Tanzania has also engaged in other support measures, which include funding
researchers, which include innovators, funding and start-ups. researchers, The result innovators, of such and government start-ups. support The result is the improved of such government
ranking of Tanzania in the Global Innovation Index 2020, with a remarkable innovation output,
ranking support second is in the Sub-Sahara improved Africa, ranking as shown of Tanzania in the selected in the comparative Global Innovation table and graph Index below. 2020, with a
remarkable innovation output, ranking second in Sub-Sahara Africa, as shown in the selected
comparative table and graph below.
TABLE 1: INNOVATION INPUT AND OUTPUT
COUNTRY
INNOVATION INPUT
SCORE
(0-100)
GLOBAL
RANKING
REGION
AL
RANKIN
G
INNOVATION OUTPUT
SCOR
E (0-
100)
GLOBAL
RANKING
REGIONAL
RANKING
Mauritius 45.77 47 1 22.94 60 1
South Africa 44.85 49 2 20.48 68 3
Kenya 35.03 92 5 17.22 78 4
Botswana 38.09 84 4 12.77 105 11
Innovation thrives in an environment where
it is encouraged. The Business and Industry
Advisory Committee to the OECD notes
that the ultimate cause of all innovation is
human creativity. However, innovation does
not occur in a vacuum; it requires a workable
structure of incentives and institutions.
Therefore, government policies that foster the
right enabling conditions for innovation, and
that allow entrepreneurship and markets to
flourish, can provide a climate that encourages
innovation and economic growth in the 21st
Century.’ Increasingly, one of innovation’s core
enabling conditions is intellectual property
protection. 12
The AfCFTA has created the requisite
environment for entrepreneurship and
markets to flourish and to encourage
innovation. Its Intellectual Property Protocol,
when developed, is expected to provide policy
guidelines to safeguard trade within the Free
Trade Area. The provisions should address
issues of counterfeit and piracy and to provide
measures for speedy and effective access to the
legal remedies, to facilitate the enforcement of
Intellectual Property Rights.
In 2015, the Director-General of WIPO,
Francis Gurry, aptly conveyed this Africa’s
awakening, and I conclude with his words:
“I believe that Africa is on the cusp of something
new and exciting. Today, the continent is
home to some of the world’s fastest-growing
economies, and African nations are embracing
the opportunities afforded by the knowledge
economy and the digital revolution to reduce
poverty, enhance agricultural productivity,
and boost industrial competitiveness in their
drive to secure sustainable and inclusive
development.
Africa has a great tradition of innovation
and creativity and has extraordinary creative
resources but has often struggled to realise
their full economic potential. That is changing.
Increasingly, African economies are seeking
to add value to their innovative and creative
resources through the IP system.
Although African economies still face many
competing and compelling policy priorities,
innovation and IP are slowly but surely rising
up the African policy agenda.” 13
Indeed, the lion
awakens from
its slumber!
1 The African Union Commission, Agenda 2063: The Africa We Want, 2020
https://au.int/en/agenda2063/overview
2 ibid
3 The African Union Commission, Flagship Projects of Agenda 2063, https://
au.int/en/agenda2063/flagship-projects
4 Sibanda M & Ogada, Boosting business competitiveness in Africa with
IP and innovation, October 2019, WIPO Magazine, https://www.wipo.int/
wipo_magazine/en/2019/05/article_0002.html.
5 The African Union Commission, Youth Development, https://au.int/
en/youth-development#:~:text=The%20Youth%20Decade%20Plan%20
of,Governance%2C%20Peace%20and%20Security
6 ibid
7 ibid
8 https://vc4a.com/make-it/africa-ai-accelerator-program/
9 CNN World Africa Tech Rising, African innovations that could change
the world, https://edition.cnn.com/2017/11/16/africa/gallery/africainnovations-that-could-change-the-world/index.html
10 See https://www.wipo.int/tisc/en/
11 Science Technology and Innovation Building alternative future scenarios
in STI, https://www.academia.edu/20139281/Science_Technology_and_
Innovation_Building_alternative_future_scenarios_in_STI
12 WIPO/OMPI Page 11 of 55 Version 1.5
13 Francis Gurry, Intellectual property for an emerging Africa, WIPO
October 2015 https://www.wipo.int/wipo_magazine/en/2015/si/
article_0001.html
• Nigerian inventor, Osh Agabi, has
created a device that fuses live neurons
from mice stem cells into a silicon chip --
for the first time. The device can be used
to detect explosives and cancer cells.
• Cameroonian entrepreneur, Arthur
Zang, has invented a touch-screen heart
monitoring device that records and
then sends heart activity to a national
healthcare center for evaluation. It could
have hugely positive potential for rural
populations far from hospitals.
• The South Africa based drone software
company aims to help farmers optimise
their output using artificial intelligence.
They have created a data-analytics
platform, ‘Aeroview’, which combines
satellite, drone, and artificial intelligence
technology to improve agricultural
practices.
• Where the rest of the world has lagged
behind, Africa has led the way with
mobile payments. M-Pesa is the most
popular service and has 30 million
users in 10 countries. Since it was first
introduced ten years ago, M-Pesa has
inspired a range of similar services
worldwide and has helped reduce barriers
to finance…”
50
Rwanda 38.59 79 3 11.52 112 14
United Republic
of Tanzania 30.41 112 13 20.73 67 2
Ghana 30.2 113 14 14.35 93 7
4511 Science Technology and Innovation Building alternative future scenarios in STI,
40https://www.academia.edu/20139281/Science_Technology_and_Innovation_Building_alternative_future_sce
35narios_in_STI
30
25
20
15
10
5
0
Mauritius South Africa Kenya Botswana Rwanda UR of
Tanzania
INPUT SCORE
OUTPUT SCORE
Ghana
It is interesting to note that these creative
activities have been carried out with minimum
access to technological information, which
means that Africa can achieve more when
technological information is made available
and easily accessible. There is a conscious effort
by some member states, with support from
the World Intellectual Property Organisation
(WIPO) Technology and Innovation Support
FIG 1: INNOVATION FIG 1: INNOVATION INPUT AND INPUT OUTPUT AND OUTPUT
10 www.gipmatrix.com
Innovation thrives in an environment where it is encouraged. The Business and Industry
Advisory Committee to the OECD notes that the ultimate cause of all innovation is human

Jurisdiction Matters:
High Court or Commercial Court?
Recently, the Madhya Pradesh High
Court resolved an issue regarding the
power of the High Court to entertain
a commercial dispute arising from a
design infringement suit instead of the
Commercial Court set up by the State
government at the district level. The
Court interpreted the language of the
Designs Act, 2000, and the Commercial
Court Act, 2015.
Facts of the case
The Plaintiff, Mold-Tek Packaging Ltd, is a
manufacturer and seller of plastic packaging
material. They have been in the industry since
1985 for developing a variety of tamper-proof
lids of plastic containers. They also submitted
design registration applications in 2015 and
2017 for the containers’ lids, lids with the spout,
jar, or container with the Controller General of
Patents, Designs, and Trademarks (CGPTDM),
Kolkata. In late 2019, the Plaintiff came to know
about the Defendant, S.D. Containers, which was
producing lids and containers of the same design
as that of the Plaintiff. It was also found that they
were supplying those products to some of the
existing customers of the Plaintiff.
As discussed by Manisha Singh, Partner & Simran Bhullar, Associate
at LexOrbis, India - www.lexorbis.com
products are commonly found in the market,
even before the design registration applications
were made. Hence, design registrations should
be refused.
The Defendants interpreted Section 19 and
22 of the Indian Designs Act, 2000, for their
counterclaim. Based on these provisions, they
sought the transfer of the case to the Madhya
Pradesh High Court.
The Commercial Court, through an order dated
23.03.2020, transferred the matter to the High
Court of Calcutta. The Plaintiff filed a petition
in the Madhya Pradesh High Court against the
said order.
The Plaintiff contended that the order of the
Commercial Court is untenable since a matter
can be transferred to the High Court only
when an appeal
against an order
passed
by the
CGPTDM is pending before the High Court.
They also stated that the original issue of
piracy of design arose within Indore’s territorial
jurisdiction and cannot be transferred to the
High Court of Calcutta. They further argued that
the Commercial Court ought to have decided
the application for a temporary injunction before
deciding the Defendant’s application for the
transfer of the case.
The Defendant maintained their original stance
and denied claim of design piracy and further
submitted that the Commercial Court must
transfer the suit to the High Court; however,
the Court should be the Madhya Pradesh High
Court instead of the
Calcutta High Court.
The Plaintiff then filed a civil suit in a
Commercial Court (District Court at Indore)
seeking a declaration that the Defendant has no
right to manufacture similar lids and containers
that look like the Plaintiff’s designs and also a
permanent injunction restraining the Defendant
from copying, using the designs of the Plaintiff
as stated in Design Application Nos. 299039 and
299041 for the containers and lids, respectively.
They further claimed an amount of INR 50
million as damages caused by the design
infringement. They also requested a
temporary injunction against the
Defendant during the pendency of
the case.
In their reply, the Defendant
challenged the status of the design
registration. They stated that the
Plaintiff’s designs lack originality,
and similar designs for the same
12 www.gipmatrix.com www.gipmatrix.com
13

YOUR MOST
TRUSTED
Findings of the Court
The Madhya Pradesh High Court considered the
following issues-
Whether the Commercial Court has correctly
interpreted the provisions of the Designs Act,
2000, while transferring the suit to the High
Court?
Whether the suit should be transferred to the
High Court of Calcutta, or is the Commercial
Court at Indore competent to decide the suit?
Since the Plaintiff and the Defendant
unanimously agreed that the High Court of
Calcutta does not have territorial jurisdiction,
the Madhya Pradesh High Court went on to
decide a more pressing matter - whether a civil
suit should be transferred to a High Court at
all?
The Court first examined the provisions of the
Designs Act and went on to explain the basic
provisions of the Act. Of which, Section 19
provides the grounds for cancellation of the
registration of a design. The provision refers to a
remedy of appeal against the order of CGPDTM
to the High Court. It also gives power to the
CGPDTM to refer any petition to the High Court
itself.
Section 22 of the Act deals with piracy of a
registered design. It provides that if a design
already exists at the time of application for
registration, it shall not be registered except
without a license or written consent from the
original creator of the design. It also states that
a defendant may take ground for its defense as
available under Section 19 of the Act. Further,
if the Defendant raises a ground as a defense
available under Section 19, the proceeding shall
be transferred by the Court in which the suit is
pending to the High Court for its decision. The
Court interpreted this provision mandatory due
to the use of the word “shall”.
It is important to note here that the Defendant
challenged the design of the Plaintiff by way
of counterclaim. However, no petition under
Section 19 was filed before the CGPDTM to
cancel the design registration.
Next, the Court examined the provisions of the
Commercial Court Act, 2015, that talks about
the type of cases a Commercial Court may
entertain, which includes intellectual property
matters; how the State Governments shall
constitute such courts and appoint Judges after
consultation with the concerned High Court;
how there shall be Commercial Divisions and
Commercial Appellate Divisions in High Courts;
and the territorial, pecuniary, and subject-matter
jurisdiction of Commercial Courts vis-à-vis the
Commercial Divisions of High Courts.
The Act also states that matters relating to
the Designs Act, 2000, shall be transferred to
the Commercial Division of the High Court
exercising ordinary original civil jurisdiction.
However, the Court stated that the Madhya
Pradesh High Court does not have an original
civil jurisdiction unlike the High Courts of
Calcutta, Madras, Mumbai, and Delhi, which
is why the state government has established
Commercial Courts at District level and
Commercial Appellate Courts at District Judge
level in the state.
The Court decided that the Commercial Courts
Act overrides other provisions contained in other
laws. Since the lawmakers specifically included a
provision of transfer of commercial disputes to
the High Court having the ‘ordinary original civil
jurisdiction’ and the High Courts which do not
enjoy the said jurisdictional powers cannot
entertain such suits. This is why the constitution
of special Commercial Courts has been made to
resolve such disputes. Even though the Designs
Act uses the term ‘High Court’ in its bare text
reading, after the enactment of the Commercial
Courts Act, such a suit is liable to be transferred
to the Commercial Court and not to the High
Court in a State where the High Court has no
ordinary original civil jurisdiction.
Moreover, the High Court will be entitled to
hear the case only in case of an appeal against the
decision of the CGPDTM. The Court reaffirmed
that an application for cancellation of registration
of design could only be entertained by the
CGPDTM exclusively.
To conclude, it was held
that the Commercial
Court at Indore had erred
in transferring the case to
the High Court of Calcutta
since it was competent to
decide the matter itself.
The challenged order was
quashed.
IP PARTNER
14 www.gipmatrix.com

Best methods for an effective
patent landscape analysis
in just six simple steps!
All of the greatest, most
renowned inventions start
with an idea.
Patents are often the only source of disclosure
of an invention, as most are never published
elsewhere. Hence, companies around the
world are protective of the value held in their
intellectual property and realise the importance
of monitoring the intellectual property of their
competitors.
As the rate at which new inventions are being
patented is ever-increasing, the continuous
monitoring of new patents is vital to ensure
corporate success and financial stability when
attempting to access new markets, exploit
existing ones, and scoping the profitability of
emerging products. Patent search and analysis
platforms, such as PatBase, are essential for
users to search, review, analyse and share
patent information, to harness the knowledge
found in patents, gain competitive intelligence
and build on the ideas of others to drive
innovation forward.
This article focusses on patent landscape
analysis, a process that helps inform policy
discussions, strategic research planning, and
technology transfer within a business.
What is a Patent
Landscape Analysis?
Publicly available patent data is an excellent
source of ideas and information that can be
used to identify opportunities and threats
to a business and improve its survivability
and profitability in the modern marketplace.
This information is of vital importance to
competitive intelligence, which makes use
of public information to accrue data on
competitors and the market environment to
drive strategic decision making. Businesses
that ignore patents as a potential source of
information risk building an incomplete
competitive intelligence picture and delaying
or even preventing innovation.
Authored by Caitlin Kavanagh, Marketing Manager at Minesoft, UK
www.minesoft.com
Patent landscape reports are intended to give a snapshot or overview of the patents in a specific
subject area or cover a technology type. Generally taking 1-2 weeks to complete, a landscape
report can cover hundreds or thousands of patent families. They can be used to visualise and
discover existing whitespace in relevant areas, gain actionable competitive intelligence by
understanding the current landscape, predict where your market is heading, and spot trends in
areas of interest to aid investment.
In this article, we have outlined six simple steps to help ensure an effective and comprehensive
patent landscape analysis.
Step 1 – Define goals
It’s important to understand what you’re trying to achieve through your patent landscape analysis
and clearly define these goals in advance. Depending on what the end goal is, you may want to
address some or all of these key questions (or come up with your own!) while conducting your
search.
• Is this a growing area of interest?
• What are the fields of current interest?
• Who are the key players?
• Where are the key players filing their inventions?
• Who are the “key opinion leaders” in this field?
• What is the legal status of the families in this area?
Step 2 – Broad overview
Once the scope of the study has been agreed upon, start reviewing the main articles and literature
on the topic. Studying a selection of basic literature will unearth some high-level keywords, as
well as identifying key players that are associated with the technology or subject area you’re
landscaping. Having a clear understanding of the area you’re investigating is critical when
analysing the final landscape and answering the key questions outlined above.
Using a commercial patent database, like PatBase, allows you to broaden your research by
investigating non-patent literature from trusted scientific resources.
Step 3 – Define your initial search strategy
After your preparation phase, you’ll need some time to devise a comprehensive search strategy.
Begin by generating general keywords used for the specific technology and build on that.
A successful search strategy should encompass keywords, classification codes, assignees, and
inventors. Searching your basic keywords within the title, abstract, and claims of patents will
help you discover additional relevant keywords and active assignees and inventors. Furthermore,
a statistical analysis of the IPC and CPC codes used to classify the initial answer set will identify
relevant classification codes to add to your search strategy.
Tools like the PatBase Thesaurus and Classification Explorer make it easier to compile a
comprehensive keyword search strategy with relevant synonyms from multiple languages and
to identify classification codes to broaden this strategy and find patents that may be missed by a
keyword search alone.
Results can now be narrowed down as needed, by limiting the geographical area, removing utility
models and design patents, removing irrelevant patent families identified by acronyms used in
multiple technology areas, and limiting by publication years. Focussing a search strategy can be
difficult and needs to be checked at every step to ensure relevant records are not eliminated. At
this juncture, you should have compiled a solid search strategy and be ready to run your initial
search.
Step 4 – Run an initial search
Once your results come back, take a quick review. Determine the percentage of your result set
containing relevant documents and judge whether it’s enough for a reliable patent landscape
analysis. Typically, if it’s 80% or more, your search strategy is sound.
A quick way of determining this is to use the Optimise function in PatBase and PatBase
Express and expanding the technologies categories (either IPC or CPC). This list shows the top
classification codes attached to the patent families found in the search. The list is ordered by most
frequently occurring technology codes across the entire result set. Make sure the most frequently
appearing classification codes are all relevant or identify new classification codes to include and
exclude the irrelevant ones.
It’s also important that the most important patents in the specified area are included in your
results. You can check this by sorting your answer set by “most cited” to reveal the most cited
publications in the area you’re landscaping and, therefore, the most significant.
Assuming your initial set meets your criteria, you can move on to Step 5.
Step 5 – Analyse and optimise your search
strategy
Improving your initial search requires identifying additional relevant keywords, classification
codes, active assignees, and inventors. Discover more keywords by reviewing classification
code definitions and checking the title and abstract of key patents. Depending on your subject
matter, you could expand your search further using a tool like Chemical Explorer, to specifically
search for any chemical terminology or structures across potentially millions of pages of patent
documents with just one click.
Top tips:
• For CPC and IPC classifications, use the codes from the basic keyword answer set to focus
your landscape.
• Identify the most frequently occurring assignees and inventors, ensure that areas in which
they are working are relevant by investigating their patent portfolio and website, and then be
sure to include their patent portfolio in your final landscape.
• Use advanced features in your patent
database, such as analytics, advanced
keyword highlighting, and cross-lingual
semantic searching to enhance the efficiency
and effectiveness of the review of patents
within your landscape.
• As many highly technical patents can be
100s of pages long, a tool like TextMine is
helpful to interrogate the patent text for
relevant key terms.
Step 6 – Visualise and
review
Visualise your landscape search by generating
statistical graphs. By viewing the data from
many angles (jurisdiction, year, assignee,
inventor, etc.) and at multiple levels (families,
priorities, applications, grants, etc.), you can
reveal answers to the key questions outlined
at the beginning of this article and easily draw
some conclusions; ensuring you stay focused
on your end goal.
Conclusion
Regular patent landscaping is crucial for
survival in any innovation-driven industry
to identify white space, monitor competitor
activity, and identify acquisition, licencing,
or collaboration opportunities. The world
of patent information continues to grow,
and patent search techniques are evolving
and becoming more complex. As a result, a
comprehensive patent landscape analysis can
be both time-consuming and complicated
– but Minesoft can help. Having access to a
comprehensive database of global patent data,
like PatBase, is a key first step but ensuring
a focussed and inclusive search strategy is
vital. The 6 simple steps outlined in this
article can help any user identify a complete
patent landscape and draw the appropriate
conclusions.
Minesoft offer several free whitepapers on
patent landscaping; access them at
www.minesoft.com.
PatBase, the online patent database, allows
you to optimise the way you search and review
patent literature. Trusted by top corporations
and law firms worldwide, our users rely on
PatBase as a robust and powerful platform
from which to search, review, share, and
analyse business-critical patent information.
16 www.gipmatrix.com www.gipmatrix.com
17

Opioid Addiction
– A Patent Perspective
J. Varbanov & Partners
European and Bulgarian Patent & Trademark Attorneys
Introduction
Opioids are a broad class of drugs that interact
with opioid receptors in your cells, creating
sensations of pain relief and pleasure. Opioids
can carry the risk of changing the brain’s
chemistry, leading to tolerance, such that a
larger dosage is required to produce the same
effect. Opioid addiction can be characterised
by an almost uncontrollable urge to use
opioid drugs. It can lead to life-endangering
health problems, such as overdosing, which in
turn may cause breathing to slow or stop, and
ultimately, death. The opioid addiction crisis
is one of the foremost global health concerns
of recent years and is largely believed to be
a direct result of the overstatement of the
benefits of opioids coupled with underplaying
the risks by large pharmaceutical companies
and advocates.
Authored by Alec Griffiths, IP Manager at Patent Seekers, UK
www.patentseekers.com
Patent filing analysis
Filings for opioid addiction treatment patents appeared to undergo a rapid rise between 1999 and
2005, with an almost equally dramatic drop in filings from thereon until 2013, where filings appear
to have stabilised. In 2005 the World Health Organisation made the addition of buprenorphine as
complementary medicine to the Model List of Essential Medicines, thereby lending credibility to
buprenorphine as a treatment and its role as an opioid agonist [2]. This global legitimising of the
drug may have led to 2005 becoming the peak year for patent filings. At first glance, it would appear
to be counter-productive to decrease the rates of innovation, given the governmental outcry and
efforts in recent years, yet, patent filings have taken a sharp decline since 2005, and even more so in
the last three years. This decline could be linked to numerous efforts to combat the crisis, including;
• A decrease in opioid prescription, wherein
the U.S. opioid prescriptions have dropped
by almost 40% between 2014 and 2019[3
• An increase in other treatment methods such
as mental health approaches [4]
One of the oldest and leading IP companies in Bulgaria
Professional, cost effective services and quality advices
Areas of practice:
*IP Protection
*IP Enforcement
*Anti-counterfeiting
*Litigations
*Domain name registrations
*IP watches
PO Box 1152, BG-1000 Sofia, Bulgaria
South Park Complex, bl.1A, 2nd fl., BG-1421, Sofia, Bulgaria
Tel.: (+359 2) 986 51 25, Fax: (+359 2) 980 32 47,
e-mail: jvp@jvpatents.com
www.jvpatents.com
North America, in particular, is at the forefront
of the effort to curb this crisis, due to the United
States and Canada having the highest opioid use
rate globally. The U.S. Department of Health
and Human Services declared a public health
emergency in 2017 due to the 42,000 deaths
attributed to opioid overdose in 2016 (more
than any year prior). An estimated 40% of these
deaths were related to prescription opioids and
2000 Canadian deaths in 2015, with a fivefold
increase in prescription opioid overdose deaths
in Ontario between 1991 and 2014.
Australia has seen massive leaps in opioid
prescription rates over a short period of time,
from approximately 3 million people in 2014
to approximately 14 million by 2019. Tramadol
addiction has exploded in Africa in recent
years, adding more stress to an already overstrained
health system. Reports also indicate
that similar events may be unfolding in Asia.
Many health professionals believe that Europe
may be next in line with evidence of an increase
in the prescription of strong opioids through
the continent. Global health initiatives and
awareness campaigns have risen in recent years
in an attempt to combat this health emergency,
which was responsible for 76% of deaths from
drug use disorders in 2015. This article takes a
look at the patents behind the fight to contain
this global concern, in an effort to see what we
may learn from them.
• Placing greater emphasis on prevention
techniques and efforts [5].
2017 saw the U.S. Department of Health and Human Services declare a public health emergency; this
appears to have done little to spur innovation, or the innovation it may have spurred has yet to be
publicly seen. The figures for 2019 are likely to be greater than represented due to patent applications
that would claim that year as a priority but have yet to be published. It is difficult to predict whether
the downward trend in patent filings will continue in the coming years, given how much publicity
and emphasis has been placed on counteracting this crisis in recent years, a resurgence may be
expected. However, the number of filings in 2018 looks far from promising.
Figure 1. Worldwide opioid addiction treatment-related patent filings between 1999-2019.
www.gipmatrix.com
19

Classification analysis
Figure 2 shows the number of publications placed in the top 20 International Patent Classifications over time. This provides a unique
insight into the fight against the opioid crisis, with classifications showcasing both drugs/medication for treating opioid addiction as well
as for combating the side-effects of an opioid overdose. The patent classifications showing the heaviest volume of activity are A61P25/36
(Drugs for opioid abuse) and A61P25/00 (Drugs for disorders of the nervous system), which comes as no surprise**. Other classifications
exhibiting relatively higher activity include A61P25/18 (Antipsychotics), A61P25/22 (Anxiolytics), A61P25/24 (Antidepressants),
A61P25/28 (treating neurodegenerative disorders of the central nervous system), and A61P25/32 (alcohol abuse), which all fall under the
parent classification of A61P25, noted as the second most active classification. The increased activity in these classifications could indicate
a desire to treat other conditions often associated with opioid addiction and abuse in an effort to increase the success of opioid addiction/
abuse treatments. For the most part, activity appears to have occurred in each classification in most years, with the exceptions of A61K31/44
(Medical preparations with non-condensed pyridines), A61P25/06 (Antimigraine), A61P25/20 (Hypnotics; Sedatives), and A61P9/10 (for
treating ischaemic or atherosclerotic diseases) which all appear to either have large gaps between activity or have not seen any activity at all
for a number of years.
Figure 3. Opioid addiction/abuse-related patent family map
Figure 2: The number of publications placed in the top 20 IPCs (International Patent Classifications) over time.
** The patent classification A61P25/36 was used in the creation of the initial dataset; as such, it is expected to be the
patent classification present with the highest level of activity. However, when removed from the dataset, it still retains
this position.
Technology Landscape Analysis
Figure 3 illustrates a set of documents clustered according to their semantic proximity, where a point corresponds to a patent family. The
map provides a visualisation of the technology clusters prevalent within the opioid abuse treatment portfolio and reveals a diverse set of
interests. A range of different treatment approaches are covered, from antagonising molecules to tamper resistant dosage forms. Morphine
addiction (dark grey dots) appears to show the greatest concentration of patents. However, the difference appears to be largely negligible,
with all concentrations appearing to be of almost equal size. Most clusters appear to relate to opioids in general; however, morphine
seems to be the most common of opioids that appears within the clusters (light blue dots & dark grey dots). Some clusters may indicate
the prevalence of health efforts centred around combination treatments, where other conditions are treated simultaneously with opioid
addiction in an effort to increase their effectiveness (purple dots, dark pink dots). Interestingly there appears to be some innovation
surrounding the continued exploitation of the rewarding properties of opioids. Furthermore, reducing their side effects (light pink dots)
potentially show a desire for the continued use of opioids and their powerful painkilling properties and an understanding of their equally
powerful addictive properties and a desperate need to address these if these drugs are to continue being prescribed.
Conclusion
In analysing the patent landscape
surrounding the fight against the opioid
crisis, it has revealed that the most
significant innovation levels in the
industry took place over a decade ago,
uncoincidentally peaking in the same year
that the WHO added buprenorphine as
complementary medicine to the Model
List of Essential Medicines. Since then,
however, patent filings have significantly
decreased. It will undoubtedly be a slow
and challenging process to reverse this
crisis, and although numerous countries
are now trying to combat the growing
incidents of opioid addiction/abuse, there
seems to be little in the way of innovation.
Perhaps this means that the current
technology and medicaments are deemed
enough, that patents were not the solution
to the problem, or maybe new approaches
that place emphasis on addiction/abuse
prevention and mental health initiatives
could be more effective approaches. Only
time will tell if the world is doing enough to
stem the tide, and the next few years will be
paramount in determining whether greater
innovation in this area is needed.
Be sure to take a look at next quarters’ issue
to see Part 2, where we take a look at global
distribution, the major players in the field,
and the controversy that surrounds them!
20 www.gipmatrix.com www.gipmatrix.com
21

The Whole World
of IP Services
in Munich
Academy @ IP Service World
New webinar series - get your certificate!
Europe’s Largest
IP Convention & Trade Fair
23 rd – 24 th November 2020
Keynotes from
80+ International Speakers
680+ Attendees
80+ Exhibitors
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Beat Weibel
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Rally Dakar Pilot
and DTM-Champion
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Vodafone
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CeramTec
Host
Hans-Josef Wolf
BASF SE
IP Service World – Follow us! #ipsw
22 www.gipmatrix.com
www.ipserviceworld.de

The Supreme People’s
Court of China issued opinions on
strengthening the punishment
of IPR infringement
On September 14, 2020, the China
Supreme People’s Court issued the
Opinions on Strengthening the
Punishment of IPRs Infringements
(hereinafter referred to as the
Opinions), stipulating and
improving judicial remedies for IPR
infringements to effectively deter
IPR infringements and create a
sound business environment under
the rule of law. The promulgation
of the Opinions is an important
measure for the People’s Courts to
thoroughly implement the Opinions
on Strengthening the Protection of
Intellectual Property Rights issued by
the General Office of the CPC Central
Committee and the State Office of
China.
Based on the trial practice of intellectual
property rights, the Opinions focus on the key
and difficult issues in trial practice and provide
measures such as behaviour preservation,
evidence preservation, obstruction of proof,
cessation of infringement, punitive damage,
statutory compensation, and heavier criminal
punishment, so as to effectively enhance the
actual effect of judicial protection.
In strict accordance with relevant laws and
regulations, the Opinions require courts at
all levels to pay attention to the coordination
and connection between different laws and
regulations, and comprehensively strengthen
the punishment of IPR infringement
ACTS. It includes the application of the
obstruction of the proof system in the factfinding
of the tort involved in the product
accused of infringement, from the high legal
compensation and the situation of the heavier
criminal punishment according to law.
According to the Opinions, if the holder of
an intellectual property right applies for both
a prior judgment to stop the infringement
and an application for act preservation in an
intellectual property infringement lawsuit,
the People’s Court shall examine the case in a
timely manner.
Written by Ray Zhao, Senior Partner at Unitalen Attorneys at Law,
China - www.unitalen.com
With respect to the product or other evidence
that has taken preservation measures,
or the accused infringer has damaged or
transferred the facts of the infringement
without authorisation so that the facts of
the infringement cannot be ascertained, the
People’s Court may presume that the right
owner’s claim on the evidential matters
involved in the evidence is established. Except
under special circumstances, at the right
holder’s request, counterfeit or pirated goods
and materials and tools mainly used for the
production or manufacture of counterfeit or
pirated goods shall be destroyed.
If the right owner requests in the procedure
of the second instance to include the
additional reasonable expenses paid for
stopping the infringing act into the amount of
compensation, the people’s court may examine
them together. In the case of counterfeiting
registered trademarks of commodities such as
emergency rescue, disaster relief, and epidemic
prevention materials during a specified period,
or violating intellectual property rights
again after being subjected to administrative
punishment for infringing intellectual property
rights, the offender shall be given a heavier
punishment according to law, and suspension
of sentence is generally not applicable.
The Opinion has centralised regulations so
that the right holder may make full use of the
relief measures in the people’s court to guide
the positive, comprehensive, accurate, and
honest proof at the same time. According
to law, the aspects of the profit and legal fees
for infringement provide proof guidance and
help the holder of the highly effective rights
and effectively inhibit infringing intellectual
property rights behaviour.
I. Strengthening
the application of
preservation measures
1. In case of infringement or imminent
infringement of intellectual property rights
involving core technologies, well-known
brands, popular programs, or infringement
of intellectual property rights in exhibitions
that will cause irreparable damage, the people’s
court shall, in accordance with the law, timely
examine and make a ruling.
2. If the holder of an intellectual property
right applies for both the prior judgment for
the cessation of the infringement and the act
preservation in the intellectual property right
infringement lawsuit, the people’s court shall
examine the application in time in accordance
with the law.
3. If the right owner has preliminary
evidence proving the existence of
ACTS of infringement of intellectual
property rights and the evidence
is likely to be destroyed or lost
or difficult to obtain later, and
the people’s court applies for the
preservation of evidence, the people’s
court shall examine the evidence and
make a ruling in a timely manner
according to law.
The technical investigation officer
may participate in the preservation
of evidence involving strong
professional technical issues.
4. With respect to the product or other
evidence that has taken preservation
measures, or the accused infringer has
damaged or transferred the facts of the
infringement without authorisation
so that the facts of the infringement
cannot be ascertained, the people’s court may
presume that the right owner’s claim on the
evidential matters involved in the evidence
is established. In cases of obstruction of
proceedings as prescribed by law, compulsory
measures shall be taken according to law.
II. Make a judgment to
stop the infringement
according to law
5. If the infringement facts are clear, and
the infringement can be ascertained to be
established, the people’s court may make a
judgment to stop the infringement in advance
according to law.
6. With regard to counterfeit or pirated goods
and materials and tools mainly used for the
production or manufacture of counterfeit or
pirated goods, the people’s court shall support
the right holder who, in civil proceedings,
proves the existence of the said goods and
requests speedy destruction, except in special
circumstances.
Under special circumstances, the people’s
court may order that materials and tools,
which are mainly used for the production or
manufacture of counterfeit or pirated goods,
be disposed of outside commercial channels,
to minimise the risk of further infringement.
If the infringer requests compensation, the
people’s court shall not support it.
III. Increase
compensation in
accordance with the law
7. The people’s court shall make full use of such
systems and methods as proof obstruction,
investigation and evidence collection, evidence
preservation, professional assessment, and
economic analysis to guide the parties to
provide evidence actively, comprehensively,
correctly, and honestly, improve the scientific
and rational calculation of damages amount,
and fully make up for the loss of the right
holder.
8. The people’s court shall make active use
of the relevant data provided by the party
concerned from the industrial and commercial
tax authorities, third-party commercial
platforms, websites of the infringer, publicity
materials, or documents disclosed in
accordance with the law, as well as the average
profit rate of the industry, etc. to determine the
profits from the infringement in accordance
with the law.
9. If the right owner requests, according to
law, to determine the amount of compensation
based on the infringement profit and has
provided evidence, the people’s court may
order the infringer to provide evidence of the
infringement profit in his possession;
If the infringer refuses to provide the
compensation without justified reasons or fails
to do so as required, the people’s court may
determine the amount of compensation based
on the right owner’s claim and the evidence on
the record.
10. For those who intentionally infringe
intellectual property rights of others, if the
circumstances are serious, the right owner’s
claim for punitive damages shall be supported
in accordance with the law, and the deterrent
effect of punitive damages on intentional
infringement shall be fully exerted.
11. The people’s court shall reasonably
determine the amount of compensation
prescribed by law.
Where the infringing act causes heavy losses
to the right owner or considerable profits to
the infringer, in order to fully compensate
the right owner’s losses and effectively deter
the infringing act, the people’s court may, at
the request of the right owner, determine the
amount of legal compensation close to or up to
the maximum limit.
The people’s court should consider when
determining legal compensation from high
factors, including the infringer to deliberate
whether there is infringement, whether the
infringement is for the main business, whether
there is any repeat infringement tort, whether
the duration is long, whether the area is vast,
whether it may endanger personal safety or
damage to the environment resources or harm
the public interests, etc.
12. If the right owner requests
in the procedure of the second
instance to include in the amount
of compensation the additional
reasonable expenses paid for
stopping the infringing act, the
people’s court may examine the
matter together.
13. The people’s court shall,
taking into account such factors
as the complexity of the case,
the specialty and intensity
of the work, trade practices,
and the guided price of the
local government, reasonably
determine the lawyer’s fee for
the compensation claimed by
the right owner according to the
evidence provided by the right
owner.
IV. Intensify criminal
crackdown
14. The number of illegal business operations
and illegal income committed to the crime
of infringing intellectual property rights
through online sales shall be determined
with comprehensive consideration given to
electronic data of online sales, records of bank
account transactions, delivery notes, records
of computer systems of logistics companies,
the testimony of witnesses, statements of
defendants and other evidence.
15. In the case of counterfeiting registered
trademarks of commodities such as emergency
rescue, disaster relief, and epidemic prevention
materials during a specified period of time,
or violating intellectual property rights again
after receiving administrative punishment
for infringing intellectual property rights, the
offender shall be given a heavier punishment
according to law, and suspension of sentence is
generally not applicable.
16. The illegal gains shall be strictly recovered
in accordance with the law, the application of
fines shall be strengthened, and the ability and
conditions for criminals to infringe intellectual
property rights again shall be deprived.
24 www.gipmatrix.com www.gipmatrix.com
25

ONLINE STREAMING
SERVICES IN NIGERIA:
The Gold, the Legal Considerations
Authored by Ifeanyi E. Okonkwo, Associate at Stillwaters Law Firm,
Nigeria - www.stillwaterslaw.com
C
M
Y
CM
MY
CY
CMY
1. Introduction –
The gold
Entertainment and Media
(E&M), according to PwC
analysis, is a disruptive and
fast-growing concern. i The
fusion of these two channels
provides an effective
engagement for consumers
who have been reported by
Google to spend not less than
16 hours of their time online ii ,
searching for entertainmentrelated
content iii .
The right ‘Content’ is fundamental to persons
or companies looking at delving into the
goldmine of online streaming services. A
person/company looking at establishing an
online streaming service must first ask –
What area of content do I want to focus on?
Is such an area viable to consumers? Is it a
service for world-consumers or service for a
particular country? Is it a self-made content or
one affected by copyright? What regulations
do I need to abide by? What are the various
copyright laws in the jurisdictions of interest?
Netflix understood these questions early
enough and carved a niche for itself to reach
consumers from various parts of the world.
They have a content sourcing department
where new content is always added.
Sadly, the journey to this goldmine is not
without legal bottlenecks.
2. The Legal Consideration
Online streaming involves the broadcasting
of content online. The same can then be
viewed or streamed through various channels
like online TV, PCs, Android, Apple phones,
etc. Content like films/motion pictures are
cinematography and are subject to copyright.
In Nigeria, specific legal considerations are
imminent before exploring the business of
online streaming.
a. Consent
Section 6(c) of the Copyright Act of Nigeria
(LFN 2004) stipulates that subject to the
exceptions allowed, copyright in a work shall
be the exclusive right to control in Nigeria, the
doing of any of the following acts (concerning
cinematograph film):
• Make a copy of the film
• Cause the film, in so far as it consists of
visual images and/or sound, to be seen
in public or heard in public
• Make any record of the soundtrack
• Distribute copies of the work to the
public, for commercial purposes,
by way of rental, lease, hire, a loan, or
similar arrangement.
Under section 8 of the Act, the same copyright
exists in a broadcast.
Section 9 goes further to state that where the
owner of a copyright in any literary, musical,
or artistic work authorises any person to
incorporate the work in a cinematograph
film, and a broadcasting authority broadcasts
the film, the owner of the copyright shall be
deemed to have authorised the broadcast in
the absence of any express agreement to the
contrary between the owner and that person.
However, in the case of a musical work, the
owner will be entitled to fair compensation.
K
So, establishing an online streaming content
without consent is an infringement of the
copyright belonging to the author/owner. The
broadcast exception only rests on an initial
consent by the copyright owner. Therefore,
the copyright owner’s initial consent or a
collective society (where rights have been
assigned to them) is needed for every
broadcast of copyrighted content.
But what does the term ‘broadcast’ connote in
relation to online streaming services, and is a
licence required? Read on.
26 www.gipmatrix.com
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b. Licencing
Section 51 of the Copyright Act defined
broadcast as sound or television broadcast
by wireless telegraph or wire or both, or by
satellite or cable programmes and includes
re-broadcast.
The National Broadcasting Commission
Act of Nigeria, LFN 2004, in section 2 gave
powers to the commission to receive, process,
consider applications for the establishment,
ownership, or operation of radio and
television stations, including cable television
services, direct satellite broadcast, and any
It would appear that the NBC Act covers
internet channels since the use of the internet
is made possible by satellites/WIFI, cables, etc.
Even Android phones or Phone Apps used in
watching cinematograph films survive by data,
WIFI, Satellite, etc. Also, the broadcast has
been defined to include re-broadcast.
The 2016 NBC Code is under review and said
to be undergoing the Presidential approval. It
is believed that the review would affect non-
Nigerian broadcast channels like Netflix and
Amazon Prime so that these entities would
require a licence as well.
photographs; whereas the WPPT deals with
protection for authors rights of performers
and producers of phonograms. Both Treaties
require countries to provide a framework
for the protection of those fundamental IP
rights over the internet. Right-holders should
effectively use technology (i.e., encryption
and other anti-circumvention) to protect their
rights and give licence of their works online.
Unfortunately, the Treaties do not cover the
field. Signal piracy takes various forms. It
could be physical or virtual; an unauthorised
redistribution of signals online is possible
through hacking into encrypted pay-tv signals
Intellectual Property News Direct From the Source!
Power is gained by sharing knowledge, not hoarding it.
To share your news, views and stories. Contact us today.
info@gipmatrix.com ot call +44 (0)203 813 0457
www.gipmatrix.com
other medium of broadcasting. No person
can operate in any of the mentioned services
unless by the provisions of the Act. It is to be
noted that NBC is precluded from granting
a license to religious bodies and political
parties.
Of interest is section 9 of the NBC Act; it
states that the commission must be satisfied
that the applicant is a body corporate
registered under the company and allied
matters Act or owned by the Federal
State, or Local Government. In addition,
the applicant must demonstrate to the
Commission’s satisfaction that he is not
applying on behalf of foreign interest, and can
comply with the objectives of the National
Mass Communication Policy as applies to
the electronic media, that is, radio and
television.
This above provision brings much confusion
as to whether or not online streaming falls
under broadcast to be regulated by the NBC.
Hence, the making of the NBC Code to spell
out the confines of the NBC powers.
According to the National Broadcasting
Commission Code (6th edition 2016), chapter
11:15:1 to 11:15:5 of the NBC Code provides:
An Internet radio, or television
broadcaster streaming signals from Nigeria
shall be licenced by the Commission. All
regulations governing news, programmes,
advertising, and sponsorship shall apply
to this category of broadcasting. The local
content for this category of a licence shall
be 60 percent. All conditions governing
other categories of the broadcast license
shall apply to this category of broadcasting.
All subscription internet radio, and
television that seek subscribers in Nigeria
shall be licensed by the Commission.
c. Assignment/
procurement
Copyrights are considered moveable property
capable of transfer. As such, instead of going
through the difficulties of sourcing and royalty
payment issues, a streaming company can
simply procure the entire ownership rights in
a work just like Netflix bought ‘Lion Heart”
from Genevieve Nnaji. Such a method comes
with great expense, but much more is to be
recovered if the content is worth it.
In such situations, the original author must
always be mentioned, and the integrity of the
work left intact, but ownership would rest on
the company. The owner may then use such
content as they please, including the right to
licence the same at a price to other bodies.
The contract must be appropriately worded
and made to cover every intellectual property
derivable in the work.
3. Trouble From
International Realm
a. International Treaties
The World Intellectual Property Organisation
(WIPO) administers the WIPO Copyright
Treaty (WCT), the WIPO Performances and
Phonogram Treaty (WPPT). Both treaties,
which became referred to as the ‘Internet
Treaties’ 1996, set down international norms
for accessing and using creative works on
the internet/digital networks. These treaties
serve as an update to the existing Berne
Convention, Rome Convention, and by
extension, TRIPS. The WCT deals with
protection for authors of literary and artistic
works, such as writings and computer
programs; original databases; musical works;
audio-visual works; works of fine art and
www.gipmatrix.com
in set-top boxes. An example is live sports
broadcasts. Sports stakeholders are lamenting
over a considerable loss of millions of dollars
of income. The Internet Treaties were found
wanting in the face of new broadcasting
technologies. Digital programme recording
devices, VOD (video on demand) services,
Internet Protocol TV (OPTV or Internet TV)
are all disruptive means that can transmit
programmes to televisions and computers and
mobile phones.
The discussion in WIPO as of 2006 on
webcasting, that is, broadcast over the
internet or video content intended for
internet streaming, yielded no result. There
were concerns regarding blocking legal uses
of a TV broadcast, streaming for personal,
scientific, and educational uses, inhibition
of technological innovation, an extension of
allowed years of protection, and interruption
of specific domestic laws.
b. Experience from
Developed Countries
Article 3 of The Harmonisation of Certain
Aspects of Copyright and Related Rights in
the Information Society (European Union)
mandates certain requirements for online
streaming services - Authors shall have
the exclusive right to authorise or prohibit
any communication to the public of their
works, by wire or wireless means, including
the making available to the public of their
works in such a way that members of the
public may access them from a place and at
a time individually chosen by them. Also,
it stipulates that ‘the rights referred to in
paragraphs 1 and 2 shall not be exhausted by
any act of communication to the public or
making available to the public as set out in
this Article.’
29

In ITV v. TVCatchcup, v TVCatchup provides
a service in the E.U that permits its users to
receive ‘live streams of free-to-air television
broadcast’ through the internet, including the
broadcasts transmitted by ITV. The justice
held in that case that TVC’s service falls
within the broad scope of communication
under Directive 2001/29, even if TVC used
a specific technical means different from the
original communication.
Another case was Stichting Brein v. Jack
Frederik Wullems (Filmspeler) vi . In that case,
Jack sold a device called the ‘filmspeler’
through his website and other online
distribution channels. Thus, when a customer
connects to the internet and turns on the
TV, the customer can stream the image or
audio from websites. Jack further installed
downloadable add-ons created by third
parties, and his website contained hyperlinks.
Via the hyperlinks, customers/subscribers
could watch a variety of live streaming content
without paying. Jack promoted his website via
the slogan ‘Never again pay for films, series,
sport, directly available without advertisements
and waning time. (no subscription fees, plug,
and play). Netflix is now past tense!’
The justice held that the device constituted
‘communication to the public’ because it
provides purchasers with immediate access to
unspecified copyrighted works on the internet
without the right holders’ consent. According
to the court, a new public is a public which
copyright holders did not take into account.
Thus, the device sold enlarges the pool of
users beyond that intended by the authors of
those copyrighted works.
In the United States, in American Broadcasting
Companies Inc. v. Aereo Inc, vii subscribers pay
a monthly fee to Aereo on Aereo’s website,
then, Aereo servers would select antennas to
catch the selected over-the-air broadcasts. The
broadcast would pass to Aereo’s transcoder,
which translated the broadcast signals into
digital format for the internet. Then, the data
would be saved in Aereo’s hard drive so that
a subscriber can access a specific folder on
multiple devices. Aereo believed its process
to be legal due to a Cartoon Network case,
where the court held that a form of streaming
was legal because the way the Cablevision
transmitted was not ‘to the public’.
When CBS, Comcast NBC, Disney, 21st
Century Fox, and other stakeholders sued
Aereo at the Federal court for copyright
infringement, the court held that Aereo’s
retransmission of a TV program by using
user-specific copies is just a ‘process’ for
transmitting performance. A large number of
paying subscribers lack a prior relationship
to the works, falling within the meaning of
‘public’. There was, however, a dissenting
opinion from Justice Antonin Scalia. He relied
on the traditional copyright infringement
theory. He predicted that the majority
decision would lead to an unpredictable
future since it adopted an improvised ‘looklike-cable
TV’ method and disrupted settled
jurisprudence on the volitional conduct
doctrine (a tort theory which requires
that a person must have committed an act
voluntarily to inure liability, as against passive
conduct). Secondary infringement may
thus robe in passive conduct, but not direct
infringement.
According to Justice Scalia, while in Video-
On-Demand (VOD) services like Netflix,
the company responds automatically to user
demand for videos on their system. Hence,
it is Netflix that choose the content. On the
other hand, in a Store- For-Copying or Copy-
Shop, the company does not provide content,
only copy machines. It is the customers
who choose the content, not the company.
Thus, in a Copy-Shop, the company may be
secondarily liable rather than directly liable
since there is no volitional conduct. Aereo’s
case applies to the copy-shop and since the
broadcasters sued for direct infringement,
there claim should fail. Unfortunately, the fine
reasoning of Justice Scalia’s position is only
but a minority opinion and not the decision of
the Supreme Court.
Six months later, another case came up – Fox
Broadcasting Co. DISH Network LLC viii .
In this case, Fox had several contracts
with various distributors. Fox entered
a retransmission agreement with other
multichannel video programming distributors
(MVPD) such as DISH, which retransmits
Fox’s programs to their subscribers. Later, Fox
sued DISH, alleging copyright infringement,
and breach of contract. The court held that
DISH did not engage in volitional conduct
to infringe because it was the subscribers
themselves that had created their online IDs,
downloaded the SlingPlayers, paid bills, and
most importantly, selected the programs that
were sent from the Set-Up-Boxes. None of
DISH’s employees actively responded to the
user’s request or intervened in the selection
process. DISH was, therefore, a licencee that
could not transfer title. DISH subscribers were
valid possessors of copyrighted work based
on the retransmission consent agreement
between Fox and DISH. Since DISH
subscribers were valid possessors, they could
transmit the programs rightfully to another
device for themselves or someone in their
households.
4. Evaluation and
Conclusion
When we follow the US court reasoning or
the EU court reasoning, we would naturally
come to the same end-point. The yardstick for
determining copyright infringement in online
streaming is whether consent is required,
whether there has been a public performance
or communication to the public, and whether
there has been a transmission irrespective of
what method was used in transmitting.
At an aggregation stage, it would appear to
many start-ups that consent is not an issue,
but this would very much play out in the
future when deciding whether there has been
an infringement or not. Whatever the business
model adopted, either by providing a platform
for subscribers to stream their content or
by building a platform with a mechanism
for customers to select content, violation of
‘public performance’ appears inevitable. Even
if a direct infringement is escaped there is a
secondary liability that may catch businesses
in the web of infringementix.
30 www.gipmatrix.com
The Nigerian situation is not much of a
difference. At first, consent of the copyright
owner is required except when the applicant/
user falls within the exceptions enumerated
under the first schedule of the Copyright
Act or any other exception(s) within the Act.
Nigerian law has slightly similar phrases with
the Internet Treaties and US and EU regime,
the argument that broadcast does not connote
online streaming would likely fail in our court
of law. The altitude of the Nigeria Court, no
doubt, will be to use traditional copyright
theory to determine liability either as a direct
or indirect infringement. ix
Hence in conclusion, how can an online
streaming business establish or succeed
without copyright infringement?
1. If the use is for commercial purposes
and copyright still exists in the work, go
with an intellectual property lawyer to
obtain consent and negotiate a favourable
deal with identified copyright owners.
2. To avoid chances of secondary liability,
get your intellectual property lawyer to
seek-out license from the NBC.
3. Retain the services of an intellectual
property lawyer; among other things,
this will help you understand and follow
the trend of the law and cases involving
copyright and online streaming (and other
connected aspects of IP law).
4. Establish a proper term of use. Do not
allow the website designer to copy and
paste any country’s/company’s terms of
use. Get an intellectual property lawyer to
do thorough work.
5. Develop a business model that will
ensure a win-win situation for all parties.
For example, copyright holders could
subscribe to your channel, and subscribers
can choose and stream their content
on your platform. That way, a win-win
is assured for the rights holders, the
platform provider, and the subscribers.
i https://www.pwc.com/ng/en/press-room/nigeria-will-be-the-worldsfastest-growing-e-m-market-pwc-
report.html
ii
https://www.prominence.global/how-consumers-spend-time-online/
iii https://www.go-gulf.com/online-time/
iv See Sarah Perez, JustWatch Debuts New Search Engine for Cord Cutters,
TECH CRUNCH (Feb. 5, 2015), https://techcrunch.com/2015/02/05/
justwatch-debuts-a-new-search-engine-for-cord-cutters/ (establishing that
“aggregation” is a type of streaming service that acts as a TV guide of all
streaming services); see also Nelson Granados, Only Top Video Streaming
Services Are Likely to Survive in the Trump Era, FORBES (Jan. 25, 2017,
10:48 AM), https://www.forbes.com/sites/nelsongranados/2017/01/ 25/
only-top-video-streaming- services-are-likely to-survive-in-the-trumpera/#5402e6dd3319
(explaining that another type of streaming service can
be in distribution); Sarah Perez, Sling TV Rolls Out a Better DVR With An
Option to Protect Recordings, Record From Fox, TECH CRUNCH (June
14, 2017), https://techcrunch.com/2017/06/14/sling-tv- rolls-out-a-betterdvr-with-anoption-to-protect-recordings-record-from-fox/
(implying that a
storage device is a type of online streaming service)
v See Sarah Perez, JustWatch Debuts New Search Engine for Cord Cutters,
TECH CRUNCH (Feb. 5, 2015), https://techcrunch.com/2015/02/05/
justwatch-debuts-a-new-search-engine-for-cord-cutters/ (establishing that
“aggregation” is a type of streaming service that acts as a TV guide of all
streaming services); see also Nelson Granados, Only Top Video Streaming
Services Are Likely to Survive in the Trump Era, FORBES (Jan. 25, 2017,
10:48 AM), https://www.forbes.com/sites/nelsongranados/2017/01/ 25/
only-top-video-streaming- services-are-likely to-survive-in-the-trumpera/#5402e6dd3319
(explaining that another type of streaming service can
be in distribution); Sarah Perez, Sling TV Rolls Out a Better DVR With An
Option to Protect Recordings, Record From Fox, TECH CRUNCH (June
14, 2017), https://techcrunch.com/2017/06/14/sling-tv- rolls-out-a-betterdvr-with-anoption-to-protect-recordings-record-from-fox/
(implying that a
storage device is a type of online streaming service)
vi 134 S. Ct. 2498 (2014).
vii 160 F. Supp. 3d 1139 (C.D. Cal. 2015).
ix https://digitalcommons.law.umaryland.edu/cgi/viewcontent.
cgi?article=1288&context=jbtl

THE WOMEN'S IP WORLD ANNUAL 2021
ANTI-COUNTERFEITING
MEASURES IN THE CARIBBEAN:
THE DEMAND FOR
UNIFIED MEASURES
The world is witnessing ongoing
globalisation, which has hauled
benefits and challenges. On the one
hand, the increasing globalisation,
access to new technologies, and global
and multilateral trade agreements
that have come to reduce taxes and
barriers considerably have made
international trade progressively
affordable and straightforward for
everyone. The rise of international
trade is not in dispute. This,
undoubtedly, translates into a
benefit for brands that can reach
all countries in the world regardless
of their location. However, just as
they benefit, they also face the great
challenge of counterfeiting. It is a
fact that globalisation has made the
commercialisation of counterfeit
products easier.
That said, it is necessary to put into force
effective legislations to respond to the
commercialisation of counterfeit products.
For that reason, this article focuses on current
antipiracy practices in the Caribbean region.
Additionally, the article will expose the different
measures that trademarks can and should
apply to safeguard their intangible assets as
well as the situation of some Caribbean islands.
Finally, the need for uniform legislation in this
regard is also noted.
I. The ABC to
counterfeiting
The Agreement on Trade-related Aspects
on Intellectual Property Rights (the TRIPs
Agreement) defines counterfeiting as the act of
trading goods bearing a registered trademark
without authorisation. It also includes the case
in which a product is imitated. Likewise, it
applies to copyrights in which songs, movies,
literary works, among others, are distributed
without authorisation and without paying
royalties nor another fee involved. In general,
the intent may be to deceive consumers on the
origin of the product. However, in the case of
well-known brands, the intent might not be
to deceive; in this case, consumers purchase
goods at a lower price and expect an inferior
quality product. Similar is the case of pirated
copyright goods in which, usually, the enduser
is aware of the illegality of the product.
In all cases, counterfeiting is an illegal act that
brings adverse effects to Intellectual Property
Rights (IPR) holders. With that in mind,
countries around the world need to join forces
to work against counterfeiting.
It is relevant to point out that counterfeiting has
always existed. One of the first counterfeitings
in history dates back to the 5th century under
the rule of Emperor Justinian. However, to
date, it is commonly said that the world is
facing a new generation of counterfeiters who
have created sophisticated systems to distribute
and sell their products in a clandestine way.
Likewise, it is difficult to distinguish the
illegal goods because modern counterfeiters
have shaped the known “real fakes,” meaning
that the product is a high-quality copy. As a
result, the new unlawful mechanisms make it
more difficult for brand owners and customs
authorities to detect and track counterfeit
goods.
32 www.gipmatrix.com
Written by Laura Castillo Sepúlveda Partner at
INNVENTIVA -Espacio Legal www.innventivalegal.com
II. A strategic view to
combat counterfeiting
Having explored counterfeit and how it affects
IPR owners, it is essential to study the different
strategies and actions available.
Firstly, it is crucial that brand owners must
count with a strong, tailor-made, and
strategic IP portfolio. In other words, brand
owners should have all their intangible
assets registered within all the countries they
commercialise their goods. They should
also consider registering their trademarks in
countries where there is a risk of distribution
of counterfeit products.
In that regard, it is essential to highlight that
while some countries like the Dominican
Republic, Jamaica, and Trinidad and Tobago
are ‘first to file’ jurisdictions, other countries
like Suriname have a ‘first to use’ system. In the
former case, IPRs start with the registration;
hence, brands need to register their IP assets
with priority in those jurisdictions. In the
latter, rights are acquired by use in commerce.
However, if there is a conflict pertaining to a
similar trademark, it is usually quite difficult
to prove that one was indeed the first to use it.
When it is not clear who is the first to use a
trademark, the registration date could also be
one factor that the courts weigh to determine
who is first to use and, therefore, can be
considered the owner. Thus, even though
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jurisdictions like Suriname follow the ‘first to
use’ system, it is always advisable to register all
IP assets based on the above. Additionally, it
is necessary to mention that it is mandatory
to have a valid registered trademark to start
judicial actions in many Caribbean islands.
Another strategy is to train consumers and
local customs authorities about counterfeiting.
It is also advisable that brand owners know
how their counterfeiters’ business is run; that
is, knowing where they are located, how they
operate and how their supply chain runs,
from production to the final delivery of the
product. Likewise, it is possible to hire special
investigators and contract intelligent platforms
that monitor possible counterfeits found on
web pages such as Alibaba, for example.
The above will help proceed with a possible
seizure, closure of the manufacturing plant,
and initiation of a judicial process. Whether
or not to proceed with these actions against
counterfeiters will depend on the number
of pieces involved as well as the costs. Brand
owners shall seek a balance between what
the aforementioned counterfeiting means for
them, the expenses of the legal process, and
how much they would receive in compensation
from the counterfeiter.
By the same token, it is of the utmost importance
that all countries join forces to help brand
owners to enforce their IPRs. That is, even
if proprietors have all their trademarks and
other IPRs registered and secured. Even if they
monitor their counterfeiters, the campaign can
only be successful if IP legislation worldwide
is extremely robust. Likewise, countries need
to count on strong customs authorities and
local systems capable of detecting and seizing
counterfeiting goods. The latter appears to be a
fundamental pillar when speaking about anticounterfeiting
campaigns because it is the last
step before the end user receives the goods.
This also gives information on who are the local
distributors of the manufacturer. However, as
is seen in the next section, some Caribbean
islands lack regulation on this aspect.
III. Anticounterfeiting
measures in the Caribbean:
the demand of a new era
As mentioned, the situation in the Caribbean
should be highlighted. It is observed that
each island has different legislations. This
makes it difficult to IPRs holders to manage
and administer their intellectual property.
However, the most disturbing aspect is the
fact that most of these islands do not have any
border measures. The situation of some of the
islands will be shown below:
*Trinidad & Tobago, Dominican Republic, St.
Lucia: these islands have a system whereby a
Notice of Objection to the Importation of
counterfeit goods can be filed at customs.
When allegedly counterfeit products arrive,
customs authorities notify the owner or his
representative. There is a deadline to initiate
or not initiate legal actions, but the pieces are
retained during the term.
*Jamaica, Turks &
Caicos and Grenada:
are examples of islands
in which the proprietor
or licensee of a
registered trademark
can by notice in writing
to the comptroller
of customs indicate
that they believe
counterfeit or pirated
goods in relation to
the said trademark,
are expected to arrive
and request that
the comptroller of
customs inform the
writer if and when this
occurs. These kinds
of regulations are not
proper as the owner
probably does not
know when counterfeit
products will arrive in
that particular country;
undoubtedly, this type
of information may be
challenging to obtain.
*Haiti, Bahamas,
British Virgin Islands,
St. Kitts & Navis,
Cayman Islands,
Barbados and Anguilla
are all examples of
islands that do not
have any customs
registration. Therefore,
it is needed to hire a
private investigator
who acts as a ‘mystery
shopper’.
Furthermore, once
the goods are seized,
it is necessary that
countries all around the
world have regulations
that allow easy access
to justice to initiate
civil, criminal, or
administrative actions.
This is enshrined in
the TRIPS Agreement as an obligation of all
contracting parties. However, only eight out
of twenty-six Caribbean Islands are signatory
members of the TRIPS Agreement (i.e.,
Barbados, Belize, Cuba, Dominican Republic,
Dominica, St. Kitts & Navis, St. Lucia, and
Trinidad and Tobago). Despite all, the other
islands are not a signatory of the TRIPS
Agreement; they do have civil, criminal, and
administrative procedures. However, the key is
on the efficiency of the process.
The above denotes that the legislation is not
only ununiform, but it is also insufficient. This
puts brand owners at a high-risk position that
gets worse, given the immensity and ease of
internet access to acquire counterfeit goods.
Finally, it is recommendable
that Caribbean islands come
together to agree on minimum –
and uniform– criteria for border
measures so that customs agents
have the capacity and authority
to seize allegedly counterfeit
products. The same applies
to enforcement measures; all
Caribbean islands should have
minimum rules for the proper
functioning of their civil, criminal,
and administrative procedures
concerning counterfeiting
matters. Undoubtedly, these
reforms will benefit not only IPRs
holders but the international
community as a whole.
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