An Introduction to the Law of Intellectual Property
THE INSTITUTE OF ACCOUNTANCY ARUSHA
DEPARTMENT OF BUSINESS MANAGEMENT
STUDIES
BUSINESS LAW
G.MALI
"An Introduction to the Law of Intellectual Property"
INTELLECTUAL PROPERTY
Introduction
The purpose of business law is to regulate the conduct of business in a given society. In so doing it protects both social and economic interests of the people at the same time promote competition among businessmen. Free competition if not regulated can abrogate the general nature and purpose of law in the society. In this context some interests such as intellectual property rights need to be protected for the benefits of the inventor.
Intellectual Property or IP
What is intellectual property?
It is the property springing from human intellect, intellect being an ability to think in a logical way and understand things. Intellectual property therefore can be an idea, design, formula resulting from human intellect and the law prevents others from using it without his authority.
The law of Intellectual property allows people to own their creativity and innovation in the same way that they can own physical property. The owner of IP can control and be rewarded for its use, and this encourages further innovation and creativity to the benefit of us all.
In some cases IP gives rise to protection for ideas but in other areas there will have to be more elabouration of an idea before protection can arise. It will often not be possible to protect IP and gain IP rights (or APRs) unless they have been applied for and granted, but some IP protection such as copyright arises automatically, without any registration, as soon as there is a record in some form of what has been created.
The four main types of IP are:
* patents for inventions - new and improved products and processes that are capable of industrial application
* trade marks for brand identity - of goods and services allowing distinctions to be made between different traders
* designs for product appearance - of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product itself or its ornamentation;
* Copyright for material - literary and artistic material, music, films, sound recordings and broadcasts
The laws which govern intellectual property in Tanzania are:
. The Patents Act, 1987;
2. Trade and Service Marks Act, 1986; and
3. The Copyright and Neighbouring Rights Act, 1999.
PATENTS
(The Patents Act, 1987)
Definition
A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. It is a name given to a bundle of monopoly rights which gives the patentee the exclusive right to exploit the invention for a given period of time.
Function of a Patent
A patent provides protection and exclusive monopoly right for the invention to the owner of the patent. The protection is granted for a limited period.
Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. (Section 35 and 65 of PA, 1987. These patent rights are usually enforced in a court of law by civil action which holds the authority to stop patent infringement (see section 66 of PA 1987, injunction, damages etc can be awarded). Conversely, a court can also declare a patent invalid upon a successful challenge by a third party (see section 63 of PA, 1987 on Invalidation of patent).
RIGHTS OF THE OWNER OF THE PATENT
A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the invention is protected. Under section 35 of the Patent Act, 1987 of the laws of Tanganyika, the owner of the patent has the right to preclude any person from exploiting the patented invention by any of the following acts:-
a) When the patent has been granted in respect of a product;
* Making, importing, offering for sale, selling and using product,
* Stocking such product for the purpose of offering for sale, selling or using;
b) When the patent has been granted in respect of a process:-
* Using the process;
* Doing any of the acts referred in paragraph (a) above, in respect of a product obtained directly by means of a process
The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms (See part X of the Patents Act, 1987). The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.
Why are patents necessary?
Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.
The role of patents in every day's life
Patented inventions have, in fact, pervaded every aspect of human life, from electric lighting (patents held by Edison and Swan) and plastic (patents held by Baekeland), to ballpoint pens (patents held by Biro) and microprocessors (patents held by Intel, for example).
All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.
PATENTABILITY
Patentability comprises the conditions that must be met for an invention to be granted a patent, and by extension it also refers to the substantive conditions that must be met for a patent to be held valid.
What kind of inventions can be protected?
An invention must, in general, fulfill the following conditions to be protected by a patent. It must show an element of novelty, that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called "prior art". It is provided by section 9(1) of the Patents Act, 1987 of the laws of Tanganyika that "an invention is new if it is not anticipated by prior art". Everything made available to the public anywhere in the world by any means such as written or oral disclosure is considered to be prior art provided that its availability occurs before the date of filing of application by the applicant. Therefore, an invention is not novel if there is a previously existing or divulged device or process that includes all of the elements of the claimed invention. Identifying such "prior art" by the patent examiner is accomplished by a search of literature (technical journals, published and issued patents, etc.) that predate the filing date of the particular patent application.
The invention must show an inventive step. Section 10 of the Patents Act states that "an invention shall be considered as involving inventive steps ....if it would not have been obvious to a person skilled in the art ..." This section is to the effect that even if an applicant's claim for an invention is technically novel, a patent can still be denied to the applicant if the applicant's subject matter is "obvious". The purpose of forbidding patents on obvious technologies is to prevent a person from obtaining exclusive rights to what is effectively already in the possession of the public, even if documentation of the exact form of the applicant's embodiment happens to be lacking.
Further, the invention must be of practical use or industrial application. The criterion for interpretation of the definition of industrial applicability is clearly set forth in the Patents Act, 1987, whereby section 11 provides that:- "an invention shall be taken to be capable of industrial application if according to its nature, it can be made or used in the technological sense in any kind of industry, including agriculture, fishery and services".
The decision of July 23, 1998 of the United States Court of Appeals for the Federal Circuit in State Street Bank & Trust Company v. Signature Financial Group, Inc., may be pursuasive in relation to the above cited section. The decision concerns with patent law and more particularly the patentability of business methods. Business method is patentable provided it has practical application.. Basically, since this decision, the protection of an invention by patent in the United States is possible as soon as it involves some pratical application and it produces a useful, concrete and tangible result in the industry.
In this case it was held that:
"(...) the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result -- a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades."
This is significant because previously "mathematical algorithms" and "methods of doing business" have not been considered patentable in the United States as it is for the case of Tanzania today (section 7(2)(c) of the Patent Act, 1987). It now seems that "everything under the sun" is patentable in the US provided it has something new to the industry.
Finally, its subject matter must be accepted as "patentable" under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable. Section 13 of the Patents Act, 1987 provides that "inventions which concern certain kind of products, or processes for the manufacture of such products, may by statutory instrument be excluded from patentability for a period not exceeding ten years..." Section 7(2) provides the list of things which are not to be regarded as inventions and therefore excluded from patentability. These include:-
a) discoveries, scientific and mathematical theories;
b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than microbiological and the products of such processes;
c) schemes, rules or methods of doing business, performing purely mental acts or playing games;
d) Methods for treatment of human or animal body by surgery or therapy, as well as diagnostic methods; but do not include products for use in any of those methods.
GRANTS OF PATENT
The first step in securing a patent is the filing of a patent application. A person seeking patent right is required to apply to the Registrar as it is required by section 18(1) of the Patents Act, 1987 of the laws of Tanganyika.
The patent application generally must contain a request, the title of the invention, as well as an indication of its technical field. It must include the background and a description of the invention, (section 18(1) (ii) of the Patents Act, 1987) in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention.
Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams which give better description of the invention. Further, the application must also contain various "claims". Patent claims are information which determines the extent of protection granted by the patent in technical terms. They are of the utmost importance both in examination proceedings and in litigation; for instance during infringement actions. There are usually in the form of a series of numbered expressions following the description of the invention.
There are two basic types of claims:
* the independent claims, which stand on their own, and
* the dependent claims, which depend on a single claim or on several claims (provided that they are in the same category).
Claims can also be classified in categories, i.e. in terms of what they claim. A claim can refer to
* a physical entity, i.e. a product or an apparatus (or device, system, ...); or
* an activity, i.e. a process (or method) or a use.
Further more, the application must contain an abstract of the invention which describes technical information.
The request shall state the name of and other prescribed data concerning the person making the application, the inventor and the agent if any (section 18(2) (a) of PA, 1987).
Where the person making an application is not an inventor the request shall be accompanied by a sworn declaration to the affect that the person making application has the right to the patent (section 18(2)(b) of PA, 1987.
...
This is a preview of the whole essay
* an activity, i.e. a process (or method) or a use.
Further more, the application must contain an abstract of the invention which describes technical information.
The request shall state the name of and other prescribed data concerning the person making the application, the inventor and the agent if any (section 18(2) (a) of PA, 1987).
Where the person making an application is not an inventor the request shall be accompanied by a sworn declaration to the affect that the person making application has the right to the patent (section 18(2)(b) of PA, 1987.
Examination Process
Typically, an application for a patent is examined before a patent is issued or granted for an invention. That is to say, the application is reviewed by the Registrar for patentability and compliance with application requirements. Where the Registrar is satisfied that the applicant has complied with the registration requirements will grant a patent, register and publish it as soon as possible.
TERMS AND TERRITORIAL RIGHT OF PATENT
As sectin 38(1) provides, the term of an issued patent is ten years after the date of filing of the application. It has to be noted that patent rights are territorial; a Tanzanian patent does not give rights outside of Tanzania. It is a deal between an inventor and the state in which the inventor is allowed a short term monopoly in return for allowing the invention to be made public. Thus, patent protection in multiple countries require separate filings of patent applications in each country, or region, where protection is sought. However, many of the international treaties are designed to afford some recognition of filing dates to patent applications filed in one country. In this respect, the most important treaty is the Paris Convention for the Protection of Industrial Property, 1883 as revised from time to time. It provides that an applicant from one contracting state shall be able to use its first filing date (in one of the contracting state) as the effective filing date in another contracting state, provided that he files another application within 6 months for industrial designs and trademarks or 12 months for patents and utility models from the first filing. Also the World Internatonal Property Organisation (WIPO) adminstered Patent Cooperation Treaty, 1970 which provides for a single international patent application to have the same effect as national application filed in the designated countries. An applicant seeking protection may file one application and request protection in many signatory states as needed. Tanzania is signatory of both treaties.
RIGHTS TO PATENT
The right to a patent belongs to the inventor. Where two or more persons have jointly made an invention, the right to the patent belongs to them jointly. If and to the extent to which or more persons have made the same invention independently of each other, the person whose application has been the earliest filing date has the right to the patent (section 14 of the Patents Act, 1987 of the laws of Tanganyika)
Inventions made in the execution of commission or by employee
In the absence of contractual provision to the contrary, the right to a patent for an invention made by a person in execution of a commission or of an employment contract belongs to a person having commissioned the work or the employer (section 16 of the PA, 1987 of the laws of Tanganyika). This applies when an employment contract does not require an employee to exercise any inventive activity unless by using data or means available to him through his employment (sect.16 (1)). However, the employee will be entitled to an equitable remuneration taking into account the importance of invention and any benefit derived from the invention by the employer (sect 16(3)).
INFRINGEMENT
Patent infringement is a legal term for when the subject-matter claimed in a patent has been utilized by someone other than the rightholder, without the owner's approval or in disagreement with the terms of use given by the owner
A person is said to infringe the patent if he does any of the following (sect.35 of PA, 1987):
i) If the invention is the product; makes, disposes of, uses or import the product or keeps it for disposal or otherwise
ii) If the invention is the process; uses it or offers it for use
iii) Supplies the means essential for putting an invention into effect to a person not entitled to it when he knows or should know that the means are suitable and they are intended to be used to put the invention into effect.
Remedies (sect.66 of PA, 1987)
An inventor whose patent is infringed is entitled to:-
e) an injunction to prevent infringement where infringement is imminent, or to prohibit the continuation of the infringement, once infringement has started;
f) Damages which is assessed on a loss of profit
g) Any other remedy provided for in the civil law, such as delivery of infringing articles.
Apart from civil action, any person who intentionally infringes a patent may be criminally prosecuted and where found guilty of an offence, shall on conviction be liable to a fine not exceeding one hundred thousand (100,000/=) or to a term of imprisonment of three years or both such fine and imprisonment (sect. 69(1)). In event of recidivism, the maximum penalties shall be doubled. Recidivism is deemed to have occurred within the proceeding five years the offender has been convicted of infringement of a patent.
Defences and Limitations of Patent Rights
Where a person is sued for patent infringement, may raise one of the following as defence to exculpate himself from liability:-
a) That, the use is for experimental purpose. This is called "experimental/research defence. In essence the defendant alleges that he is not liable to the patent owner even though he is practicing the invention claimed in the patent because its use is purely experimental or for purely research purposes. In other words the defendant argues that his practice of the patented invention is not intended for commercial exploitation so he should not have to pay the patent owner any damages or royalties. It is provided by section 37(1) of the Patents Act, 1987 that "the rights under the patent shall extend only to acts done for industrial or commercial purposes and in particular not to acts done for scientific research.
b) That, the rights under the patent do not extend to acts in respect of articles in question as they were n put on the market by the owner of the patent or with his express consent
c) That, the rights under the patent do not extend to the object in question as these objects which include articles on aircraft, land vehicles or vessels are of other countries and are temporarily or accidentally in the United Republic of Tanzania.
d) That the patent is no longer valid for expiration of time, or that the patent owner abandoned his right for non payment annual fees to the Registrar as required by the law (sect 39(3).
e) That, he was granted a compulsory license. Compulsory licence may be granted to a requesting third parties when the invention is not put into to practice within a specified period of time or is put into practice in a manner that is deemed to be insufficient for the needs of the country (see part XI of the Patents Act, 1987 of the laws of Tanganyika)
f) The patent has been seized by the government for public interest. (sect. 61 of the Patents Act, 1967). A patent might also be seized by the State under grounds of public utility. For example, during the anthrax scare that followed the September 11 attacks in the United States, the United States government was considering to seize from the Bayer Corporation the patent on the Cipro antibiotic. However, the anthrax attacks did not continue and eventually the patent was not seized
TRADE MARK
(Trade and Service Marks Act, 1986 of the Laws of Tanganyika - TSMC)
Introduction
A trademark is any visible distinctive sign used or proposed to be used upon, in connection with or relation to goods or services for the purpose of distinguishing in the course of trade or business the goods or services of a person from those of another (Section 2 of the TSMC 1986). Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks evolved into today's system of trademark registration and protection. The system helps consumers to identify and purchase a product or service because its nature and quality, is indicated by its unique trademark. When a trademark is used in relation to services rather than products, is called a "service mark".
A visible sign means any sign which is capable of graphic reproduction, including words, name, brand, devise, heading, label, ticket, signature letter number, relief, stamp, seal, vignette, emblem or any combination thereof (sect. 2 TSMC).
Functions of trade mark
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. It is provided by section 31 of the Trade and Service Marks Act, 1986 of the Laws of Tanganyika that: - "...the registration of a trade or service right mark shall, if valid give or deemed to have given to the registered proprietor the exclusive right to the use of a trade or service mark in relation to any goods including sale, importation and offer for sale or importation"
The essential function of a trademark is to uniquely identify the commercial source or origin of products or services. The use of a trademark in this way is known as 'trademark use' and a trademark owner seeks to enforce its rights or interests in a trademark by preventing unauthorised trademark use.
In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating national and international trade.
REGISTRABILITY REQUIREMENTS
Registrable Trade Mark
A trademark may be 'registrable' (i.e.. be eligible for registration) if amongst other things it functions as a trademark and is not generic or descriptive. It is provided by section 16(1) of TSMA, 1986, that "A trade or service mark shall be registered if it is distinctive". A trade or service mark is distinctive if it is capable, in relation to goods or services or in respect of which is registered or proposed to be registered, of distinguishing goods or services with which its appropriator is or may be connected in the course of trade or business from goods. Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three- dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, or fragrances used as distinguishing features.
In determining whether a trade or service mark is capable of distinguishing particular products or services from others, the following must be considered:-
a) The category to which the trade or service mark is inherent capable of distinguishing as aforesaid.
b) Regard shall be to the extent to which by reason of the use of the trade mark or service mark or of any other circumstances, the trade or service mark is infact capable of distinguishing. For example, marks which identify or describe a product or service, or which are in common use, or which are used as geographical indicators, must remain available for use to anyone. For this reason, a generic term such as 'apple' or descriptive terms such as 'red' or 'juicy' generally could not be registered in relation to apples.
In Nichols plc v Registrar of Trade Marks (Case C-404/2004) the applicant applied for the registration as a United Kingdom trade mark of the surname "Nichols", for vending machines, and food and drink typically dispensed through such machines. The respondent registrar in judging the capacity of a surname to distinguish goods or services, said that consideration would be given to the commonness of the name, based on a specified number of times that it appeared in an appropriate telephone directory, and to the number of undertakings engaged in the relevant trade. The registrar, having noted that "Nichols" or phonetically similar names appeared more than the specified number of times in the London telephone directory, refused registration in respect of food and drink, but granted it in respect of vending machines, on the ground that the size of the market in the first case was large, but in the second was more specialised. The applicant appealed against the second decision of the registrar.
On appeal the court said that the distinctive character of a mark was to be assessed in relation to (i) the goods or services involved and (ii) the perception of the relevant consumers, with a specific assessment in each case, and applying the same criteria to all categories of mark, even in the case of a common surname.
Generally, the proposed trade or service mark must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.
In addition to trademarks identifying the commercial source of goods or services, several other categories of marks exist. Collective marks are owned by an association whose members use them to identify themselves with a level of quality and other requirements set by the association. Examples of such associations would be those representing accountants, engineers, or architects. Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be granted to anyone who can certify that the products involved meet certain established standards. The internationally accepted "ISO 9000" quality standards are an example of such widely-recognized certifications.
Effect of Limitation of Absence of Colour
A trade or service mark is required to be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited may be taken into consideration in deciding on the distinctive character of the trade mark. If whenever in any circumstances a trade or a service mark is registered without limitation of colour, it shall be deemed to have registered for all colours (see section 17 of TSMA, 1986)
Registration Process.
A person proposes to use a trade or service mark is required to lodge his application to the Registrar of trademark (section 21 of TSMA, 1986). The application must be made in writing and has to include;
* The name and address of the applicant;
* The trade or business description of the applicant;
* trade or service mark proposed for registration
* A list of goods or services to which the sign would apply.
* A declaration the applicant or his proposed registered user is using or proposes to use the trade or service mark within Tanzania.
Where a person applying has applied for protection for any trade or service in a country which is a party to the Paris Convention for Protection of Industrial Property, 1983 is entitled to claim the benefits of the earlier application. When he succeeds, his application will be deemed to be the same date as the date of application in that country provided that application for registration in Tanzania is made within six months from the date of earlier application (section 22(1).
The rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the Registrar, or by the opposition of third parties who claims similar or identical rights. (Section 26 and 27)
Examination
Upon filing of application for registration of a trade or service mark and payment of the prescribed fee the Registrar is required to examine the application as to:-
a) Conformity with the formalities required;
b) The registrability of the trade and service mark;
c) Whether the trade and service mark is required to be associated
Where the Registrar is satisfied with the application of the applicant will accept the same and advertise the proposed mark in the Trade and Service Marks Journal (section 26(2)
Opposition of Third Parties (section 27)
Any person may, within the time limit as prescribed from the date of advertisement of an application give notice to the Registrar of opposition to the registration of a trade or service mark.. The opposing party must state the grounds for his opposition that the application does not satisfy the requirements of the law. Among the grounds which may be raised are:-
a) That, the trade mark can not be validly registered in respect of any goods or services because it is identical with a trade or service mark belonging to him or a different proprietor and already on the register in respect of the same goods or services or closely related goods or services; or
b) That, the mark or service can not be validly registered in respect of any goods or services because it so nearly resembles such a trade or service mark of different proprietor as to be likely to deceive or cause confusion as to the nature, geographical or origin; or
c) That, the trade or service mark can not be validly registered in respect of any goods or service because the use of it is contrary to the law or morality.
The notice of opposition must be made in writing with a statement of the grounds for the opposition. The Registrar is required to send a copy of that notice to the applicant who will within a prescribed time send to the Registrar a counter statement of the grounds on which he relies for his application. If the applicant sends such counter statement as aforesaid, the Registrar will furnish a copy thereof to a person giving notice of opposition. Thereafter, the Registrar shall hear the parties if so required and make decision thereof. A party dissatisfied by the decision of the Registrar may appeal to the High Court.
Where the application for registration of a trade or service mark has been accepted, the Registrar shall register the trade or service mark. The registration shall be effective as from the date on which the application for registration was received (section 28(1) (b) of the TSMA 1986 of the Laws of Tanganyika).
The registration of trade or service mark is be for a period of seven years from the date of registration but may be renewed from time to time (section 29).
Effect of Registration
One of the effects of registration is to disentitle any person to institute any proceedings to prevent or to recover damages for infringement of unregistered trade mark. However this restriction is not available for action against any person for passing off goods or service of another person or the remedied in respect thereof (section 30).
Upon registration, the registered proprietor acquires exclusive right to the use of the trade or service mark in relation to any goods including sale, importation and offer for sale or importation.
Trade or service mark infringement
Registering a trade mark provides the proprietor with certain exclusive rights. The infringement of these rights entitles him a right to action against the infringer. Pursuant to section 32(1) of the Trade and Service Marks Act, 1986 of the laws of Tanganyika the proprietor's exclusive rights are deemed to be infringed by any person who not being the proprietor of a trade mark or registered user thereof uses a sign either:-
* Identical with or so nearly resembling it as to be likely to deceive or cause confusion, in the cause of trade or business, in relation to any good in respect of which it is registered; or
* Identical with or nearly resembling it in the course of trade or business in any manner likely to impair the distinctive character or acquired reputation of the trade mark.
The elements for a successful trademark infringement claim have been well established under both statutes and case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created likelihood-of-confusion about the origin of the defendant's goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant's products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.
Seven factors for likelihood of confusion:-
To analyze whether a particular situation has developed the requisite "likelihood of confusion," courts have generally looked at the following factors:
. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);
2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
3. any evidence of actual confusion by consumers;
4. the intent of the defendant in adopting its mark;
5. the physical proximity of the goods in the retail marketplace;
6. the degree of care likely to be exercised by the consumer; and
7. The likelihood of expansion of the product lines.
Consumer Protection and Confusion
One of the public policy objectives given for trademark law is consumer protection, that is, to prevent the public from being misled as to the origin or quality of a product or service. A trademark owner also uses trademark law to prevent unauthorised third party use of a mark which is identical to the owner's mark, or which is so similar that use of the other party's mark would result in a likelihood of confusion.
For example, a manufacturer of electronic devices other than Panasonic using the Panasoanic as his trademark, or a soft drink manufacturer which calls its product 'Popsi' (in imitation of the PEPSI trademark) may amount to trademark infringement where the owner holds a trademark registration.
By identifying the source of goods or services, trademarks help consumers to identify their expected quality and assist in identifying goods and services that meet the individual consumer's expectations. Trademarks also fix responsibility. Without trademarks, a seller's mistakes or low quality products would be untraceable to their source. Therefore, trademarks provide an incentive to maintain a good reputation for a predictable quality of goods. For example, a consumer that purchases and likes Africafe (coffee) has a reasonable expectation that Africafe found anywhere in Tanzania will be of uniform taste and quality. Failure to maintain consistent quality can lead to abandonment of a mark, when the law will no longer protect the trademark because it has ceased to function as an indicator of a particular product. Marks may also be abandoned by "naked licensing", which involves the owner granting rights to use the mark to another parties without sufficiently controlling how or on what they use it. The mark is then released for general use.
Because the emphasis is on consumer protection, the user of a trademark does not "own" the mark in the same way that it may own a copyright. With some exceptions the protection of a trademark is limited to certain markets, which can be defined by either the type of product or service, or even a particular geographic area. For example, though "Lexis" (computers) and "Lexus" are confusingly similar marks, using the former for any news and information service and the latter for luxury cars means that the public is not likely to confuse one while looking for the other, and so neither can restrict the other's use. A trademark may also be limited geographically, if it can be determined that products or services do not compete because of the physical separation of their markets. Considering the national and even global nature of most manufacturers and distributors, the reach of print and broadcast advertising, and the disregard of the internet for geographic boundaries, this limitation is likely to be an issue in fewer and fewer cases. Attention is to be given to how close related markets are or how likely it is that the mark owner will "bridge the gap" and move into the other product or geographic market1.
Passing Off
Passing off is a common law tort. It occurs when misrepresentations made by the defendant damages the goodwill of the plaintiff. Passing off is committed when the deffendant presents his goods or services to the consumers thereby making them to believe that the goods are that of the plaintiff.
There are three essential elements of a claim for damages under the law of passing off, namely misrepresentation, damage, and goodwill. This was accepted by the House of Lords in the case of Reckitt & Colman Ltd v Borden Inc (1990) 17 IPR 1, in which the court said:
"First he [the plaintiff] must establish a goodwill or reputation attached to the goods or services...Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are goods or services of the plaintiff...Thirdly, he must demonstrate that he suffers [loss or damage as a consequence]."
The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the plaintiff, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
Passing off is often used as a form of intellectual property enforcement, particularly for unregistered trade marks or against trade marks which are marginally different from registered trade marks. It has to be distinguished from infringement of registered trademarks which is another tort preventing a defendant from misappropriating a trade mark or product get-up. Passing off is found in common law, as opposed to statute law such as the Trade and Service Marks Act, 1986 which regulates trade and service marks in Tanzania.
Passing off and the law of registered trademarks deal with overlapping factual situations, but deal with them in different ways. Passing off does not confer monopoly rights to any names, marks, get-up or other indicia. It does not recognize them as property in its own right.
Instead, the law of passing off is designed to prevent misrepresentation to the public where there is some sort of association between the plaintiff and the defendant. Where the defendant does something so that the public is misled into thinking the activity is associated with the plaintiff, and as a result the plaintiff suffers some damage, under the law of passing off it may be possible for the plaintiff to initiate action against the defendant.
Types of misrepresentation include:
* using the mark of the plaintiff's product
* using the get-up of the plaintiff's product
* using the plaintiff's advertising theme
* using the design or shape of the plaintiff's product.
For misrepresentation to be actionable, it must be one calculated to cause damage to plaintiff's goodwill. The plaintiff need not prove actual or special damage, a real and tangible probability of damage is sufficient for a claim of damages. Whether damage is done can be considered an acid test for which misrepresentations are actionable, and those that are beneath notice of the law.
One of the instances where passing off is actionable is the extended form of passing off, where a defendant's misrepresentation as to the particular quality of a product or services causes harm to the plaintiff's goodwill. An example of this is an English case of Erven Warnink v J Townsend & Sons (Hull) Ltd [1979] AC 731, in which the makers of advocaat sued a manufacturer of a drink similar but not identical to advocaat, but which was successfully marketed as being advocaat.
COPYRIGHT
(Copyright and Neighbouring Rights Act, 1999- CNRA)
A copyright is a form of intellectual property that grants its holder the sole legal right to copy their works of original expression, such as a literary work, movie, musical work or sound recording, painting, computer program, or industrial design, for a defined period of time.
Copyright gives the creators of a wide range of material, such as literature, art, music, sound recordings, films and broadcasts, economic rights enabling them to control use of their material in a number of ways, such as by making copies, issuing copies to the public, performing in public, broadcasting and use on-line. It also gives moral rights to be identified as the creator of certain kinds of material, and to object to distortion or mutilation of it. (Material protected by copyright is termed a "work".)
However, copyright does not protect ideas, or such things as names or titles. Unlike patent, a copyright is not a monopoly; it is a right of protection against copying.
The purpose of copyright is to allow creators to gain economic rewards for their efforts and so encourage future creativity and the development of new material which benefits the society at large. Copyright material is usually the result of creative skill and/or significant labour and/or investment, and without protection, it would often be very easy for others to exploit material without paying the creator.
History of Copyrights
Copyright does not appear to have been developed as a concept until the invention of the printing press. Prior to Gutenberg's development of movable type, which made mass reproduction of printed works quick and cheap, the process of copying a work was as labour intensive and expensive as creating the original. It appears publishers, rather than authors, were the first to seek protection for copying printed works. Given that publishers now obtain the copyright from the authors as a condition of mass reproduction of a work, one of the criticisms of the current system is that it benefits publishers more than it does authors. This is a chief argument of the proponents of peer-to-peer file sharing systems.
While European governments had previously granted monopoly rights to publishers to sell printed works, the modern concept of copyright originated in 1710 with the British Statute of Anne. This statute first accorded exclusive rights to authors rather than publishers, and it included protections for consumers of printed work ensuring that publishers could not control their use after sale. It also limited the duration of such exclusive rights to 28 years, after which all works would pass into the public domain.
The Berne Convention of 1886 first established the recognition of copyrights between sovereign nations. Under the Berne convention, copyright is granted automatically to creative works; an author does not have to "register" or "apply for" a copyright. As soon as the work is "fixed", that is, written or recorded on some physical medium, its author is automatically granted all exclusive rights to the work and any derivative.
Copyright law in Tanzania is based on the Copyright and Neighbouring Act, 1999. The Act was enacted to repeal the Copyright Act, 1966. Unlike the repealed law, no rights governed by this Act are recognized under common law (sect. 53). The Act defines copyright as "the sole legal right to print, publish, perform film or record a literally or artistic or musical work"
Types of Works Protected by Copyright
Copyright law protects 'literally' and 'artistic works'. The Copyright and Neighbouring Rights Act states that literally and artistic works include in particular the following:-
a) Books, pamphlets, and other writing including computer programme;
b) Lectures, addresses, sermons and other works of the same nature;
c) Dramatic and dramatico-musical works;
d) Musical works (vocal and instrumental), whether or not they include accompanying words;
e) Choreographic works and pantomimes;
f) Cinematographer works, and other audio visual works;
g) Works of drawing, painting, architecture, sculpture, engraving, lithography and tapestry;
h) Photographic works including works expressed by processes analogous to photography;
i) Works of applied art, whether handicraft or produced on an industrial scale;
j) Illustrations, maps, plans, sketches and three dimensional works relative to geography, topography, architecture or science.
These works are protected irrespective of their form of expression, their quality and purpose for which they are created.
Uncopyrightable Works
Not all works are protectable. Section 7 of the Copyright and Neighbouring Rights Act, 1999 lists down the works which are not protected. These include:-
a) Laws and decisions of courts and administrative bodies as well as official translation thereof;
b) News of the day published, broadcast or publicly communicated by any other means; and
c) Any idea, procedure, method of operation, concept, principle, discovery or mere data, even if expressed, described, explained, illustrated or embodied in a work.
Uncopyrightable works and works for which copyright protection has ended are referred to as "public domain" works
Procedures for Getting Protection
Copyright protection is automatic as soon as there is a record in any form of the material that has been created, and there is no official registration or form or fee. It is provided by section 5(1) of the CNA, 1999 that; "Authors of original literally and artistic works shall be entitled to copyright protection for their work by the sole fact of creation of such work.
But creators can take certain steps which may help to prove that material is theirs. For example, a copy could be registered to Copyright Society of Tanzania. The society is established by the Copyright and Neighbouring Rights Act, 1999 whose functions among other things include to promote and protect interests of the authors, publishers, etc and to maintain registers of their works, to publicize the rights of the owners and give evidence of the ownership where there is a dispute or infringement (section 74 of the Act).
Alternatively, a creator could send himself or herself a copy by special delivery post (which gives a clear date stamp on the envelope), leaving the envelope unopened on its return. It is important to note, that this does not prove that a work is original or created by the claimant or defendant. But it may be useful to be able to show that the work was in his possession at a particular date, for example where other persons claim that he have copied something of theirs that was only created at a later date.
Another useful step for a copyright owner to take when copyright material is published is to mark it with the international copyright symbol (c) followed by the name of the copyright owner and year of publication.
Ownership of Copyright
* In the case of a literary, dramatic, musical or artistic work, the general rule is that the author, i.e. the person who created the work, is the first owner of the economic rights under copyright. This is provided by section 15(1) of CNRA, 1999 which states that "the right in a work protected shall be owned in the first instance by the author or authors who created the work" This rule also applies to commissioned works. However, where such a work is made in the course of employment, the employer is the first owner of these rights, unless an agreement to the contrary has been made with the author (see section 15(4) of the Act). In some situations two or more people may be joint authors and/or joint owners of copyright. The work is said to be of joint authorship when it is created by two or more authors in collaboration, in which the individual contribution are indistinguishable from each other (section 4 of CNRA, 1999)
* In the case of a film, the principal director and the film producer are joint authors and first owners of the economic rights, and similar provisions as referred to above apply where the director is employed (see section 15(2) of the Act.
* In the case of a sound recording the author and first owner of copyright is the record producer; in the case of a broadcast, the broadcaster; and in the case of a published edition, the publisher.
Copyright is, however, a form of property which, like physical property, can be bought or sold, inherited or otherwise transferred (sect.18), wholly or in part. So, some or all of the economic rights may subsequently belong to someone other than the first owner. In contrast, the moral rights accorded to authors of literary, dramatic, musical and artistic works and film directors remain with the author or director or pass to his or her heirs on death (see section 15(7) of the Act).
Economic Rights of Copyright Owners
It is provided by section 9(1) of CNRA, that authors (copyright owners) generally has exclusive right to carry out or authorise or prohibit any of the following things in relation to their works:
* Reproduction Right. This is the right to reproduce the work in any way. For example, photocopying, reproducing a printed page by handwriting, typing or scanning into a computer, and taping live or recorded music are all forms of copying.
* Distribution Right. The distribution right is the right to distribute copies of the work to the public by sale, rental, lease, or lending.
* Public Performance Right. The public performance right is the right to recite, play, dance, act, or show the work at public place or to transmit it to the public. In the case of a motion picture or other audiovisual work, showing the work's images in sequence is considered "performance." It also includes public delivery of lectures, speeches and the like.
* Public Display Right. The public display right is the right to show a copy of the work directly or by means of a film, slide, or television image at a public place or to transmit it to the public. It includes putting copyright material on the internet or using it in on demand service where members of the public choose the time that the work is sent to them.
* Making an adaptation of the work, such as by translating a literary or dramatic work, transcribing a musical work and converting a computer program into a different computer language or code.
Copyright Infringement
Copyright is infringed when any of the above acts are done without authorisation, whether directly or indirectly and whether the whole or a substantial part of a work is used, unless what is done falls within the scope of exceptions to copyright permitting certain minor uses of material.
Under section 44(1) of the Act, the following acts are considered unlawful and are assimilated to infringement of the rights protected by the Act:-
. The manufacture or importation for sale or rental of any device or means specifically designed or adapted to circumvent any device or means intended to prevent or restrict reproduction of work, a sound recording, or broadcast, or to impair the quality of copies made.
2. The manufacture or importation for sale or rental of any device or means that is susceptible to enable or assist the reception of an encrypted programme, which is broadcast or otherwise communicated to the public, including satellite, by those who are not entitled to receive the programme
3. The removal or alteration of any electronic rights management information without authority;
4. The distribution, import for distribution, broadcasting, communication to the public or making available to the public, without authority, of works, performances, sound recordings or broadcasts, knowing or having reason to know that electronic rights management information has been removed or altered without authority (section 44(2)).
Exceptions to Copyright
There are a number of exceptions to copyright that allow limited use of copyright works without the permission of the copyright owner. For example, limited use of works may be possible for non-commercial research and private study, criticism or review, reporting current events, judicial proceedings, teaching in schools and other educational establishments, not for profit playing of sound recordings and to help visually impaired people (see section 35 of the CNRA, 1999).
The Fair Dealing Doctrine
Fair dealing is a doctrine of limitations and exceptions to copyright which is found in many of the common law jurisdictions of the Commonwealth of Nations. Although not specifically defined as fair dealing, the doctrine in Tanzania seems to be taken care of by section 35 of the Copyright and Neighbouring Rights Act, 1999. The provision is to the effect that it is not an ingringement of copyright rights where production is for:
a) reporting currrent event to the extent justified by the purpose of providing current information;
b) scientific research;
c) face to face teaching activities but does not include performances and phonograms which have been published as teaching or instructional materials;
The Supreme Court of Canada in CCH Canada Ltd v. Law Society of Canada has gone far in clarifying the concept of fair dealing.
In considering fair dealing it makes the following general observation: "It is important to clarify some general considerations about exceptions to copyright infringement. Procedurally, a defendant is required to prove that his or her dealing with a work has been fair.... Any act falling within the fair dealing exception will not be an infringement of copyright. The fair dealing exception, like other exceptions is a user's right. In order to maintain the proper balance between the rights of a copyright owner and users' interests, it must not be interpreted restrictively. ... 'User rights are not just loopholes. Both owner rights and user rights should therefore be given the fair and balanced reading that befits remedial legislation.'"
It then establishes six principal criteria for evaluating fair use.
. The Purpose of the Dealing: Is it for research, private study, criticism, review or news reporting? It expresses that "these allowable purposes should not be given a restrictive interpretation or this could result in the undue restriction of users' rights."
2. The Character of the Dealing How are the works were dealt with? Was there a single or multiple copies. Were these copies distributed widely or to a limited group of people? Was the copy destroyed after its purpose was accomplished? What are the normal practices of the industry?
3. The Amount of the Dealing: How much of the work was used? What was the importance of the infringed work? Quoting trivial amounts may alone sufficiently establish fair dealing. In some cases even quoting the entire work may be fair dealing.
4. Alternatives to the Dealing: Was a "non-copyrighted equivalent of the work" available to the user? Could the work have been properly criticized without being copied?
5. The Nature of the Work: Copying from a work that has never been published could be more fair than from a published work "in that its reproduction with acknowledgement could lead to a wider public dissemination of the work - one of the goals of copyright law. If, however, the work in question was confidential, this may tip the scales towards finding that the dealing was unfair."
6. Effect of the Dealing on the Work: Is it likely to affect the market of the original work? "Although the effect of the dealing on the market of the copyright owner is an important factor, it is neither the only factor nor the most important factor that a court must consider in deciding if the dealing is fair." A statement that a dealing infringes may not be sufficient, but evidence will often be required.
These factors may be more or less relevant to assessing the fairness of dealing depending on the factual context of the allegedly infringing dealing. In some contexts, there may be factors other than those listed here that may help a court decide whether the dealing was fair.
Duration of author's right (Sec. 14 of CNRA, 1999)
The term of protection or duration of copyright varies depending on the type of copyright work. The general rule is that the economic and moral rights of the author are protecting during his life and for fifty years after his death.
In case of a work of joint authorship, the economic and moral rights are protected during the life of the last surviving author and fifty years after his death. For the work published anonymously2 or under pseudonym3 the economic and moral rights are protected for fifty years from the date on which the work was either made, first available to public or first published, whichever date is the latest, provided that where the author's identity is revealed or is no longer in doubt before the expiration of the said period the then work will be protected during his life time and fifty years after his death.
Audiovisuals works are protected for fifty years from the date on which the work is either made, first made available to public, or first published, whichever date is the latest. Works of applied art are protected for twenty five years from the making of the work.
Remedies for infringement
. Civil Remedies (Sect. 36 and 37 of CNRA, 1999)
Any person whose rights are in eminent danger of being infringed or have been infringed, may institute proceedings in the United Republic of Tanzania for:-
a) An injunction to prevent the infringement or to prohibit the continuation of the infringement;
b) Payment of any damages suffered in consequence of the infringement, including any profits enjoyed by the infringing person that are attributable to the infringement. If the infringement is found to have been prejudicious to the reputation of the person whose rights were infringed, the court may at its discretion, award exemplary damages
2. Rights of destruction and delivery (section 38 and 39 of CNRA, 1999)
a) The injured party may require the destruction of all copies that have been manufactured or unlawfully distributed or which are intended for unlawful distribution.
b) The injured party may further require that the equipment such as moulds, plates, engraving stones, blocks, stencils and negatives which were destined exclusively for unlawful production of copies be rendered unusable, or if this is not practicable, destroyed.
c) If the appearance of the copies or equipment causing the infringement can be modified in some other fashion that work no longer constitutes an infringement of this rights of the injured party, in such case such injured party may only require that such measures be undertaken as to achieve this effect.
d) The injured party may require that the copies and equipment be delivered to him, in whole or in part, for an equitable price which shall not exceed production cost.
Exceptions
Where the infringement was neither intentional nor negligent the demands of injured party as said above may be set aside and require the defendant indemnify in money the injured party if execution of aforesaid demands would produce for him a serious and disproportionate injury. The damages payable shall be such an amount as would have constituted an equitable remuneration had the right been granted by contract. Payment of such damages shall constitute the injured party's consent to utilization within customary limits. (Section 41)
3. Offences and legal sanctions (sect. 42)
Apart from civil remedies available to the injured party, the infringer may also be charge for criminal offence under the same Act. It is provided by section 42(1) of the Copyright and Neighbouring Rights Act, 1999 of the laws of Tanganyika that "any person who knowingly violates or causes to be violated, the right protected under this Act shall be liable to-
a) A fine not exceeding Tsh.5, 000,000. or to imprisonment for a term not exceeding three years or both, for the first offence if the infringement was on commercial basis; and
b) A fine not exceeding Tsh.10, 000,000. Or to imprisonment for a term not exceeding five years or both, for each subsequent offence if the infringement was on commercial basis.
It is also an offence for a person to import or distribute copies or folklore4 copies derived from the United Republic of Tanzania, or copies of translations, adaptations, arrangement or other transformations of such expression of folklore made abroad without authority. A person found guilty of that offence is liable to a fine not exceeding Tsh.10, 000,000.or imprisonment for a term not exceeding ten years.
REFERENCES
. Joseph Lowenstein, "The Author's Due : Printing and the Prehistory of Copyright", University of Chicago Press, 2002
2. Lyman Ray Patterson, "Copyright in Historical Perspective", Vanderbilt University Press, 1968.
3. Brendan Scott, "Copyright in a Frictionless World", First Monday, volume 6, number 9 (September 2001),
4. Arthur Raphael Miller, Michael H. Davis, Intellectual Property: Patents, Trademarks, and Copyright, West Wadsworth; 3rd edition, 2000
5. Michael Perelman, Steal This Idea: Intellectual Property Rights and the Corporate Confiscation of Creativity, Palgrave Macmillan, 2002
6. Roger E. Schechter, John R. Thomas, Intellectual Property: The Law of Copyrights, Patents and Trademarks, West Wadsworth, 2003.
http://en.wikipedia.org/w/index.php?title=Trademark#Trade_mark_resources
2 Without giving a name
3 a fictitious name used when the person performs a particular social role
4 The traditions and stories of a country or community
0
