Questions and Answers for Intellectual Property:

Section 13 of the lndustrial Property Act 1 of 2012 provides that Patents are available for any inventions,
whether products or processes, in all fields of technology. What are the requirements for patentability?

Section 13: <Patents are available for any inventions, whether products or processes, in all fields of
technology, provided the invention is new, involves an inventive step and is industrially applicable=.

1. Novelty

2. Inventiveness

3. Utility

Novelty:

• Novelty for an invention to be 8new9 and hence patentable: It must reveal a difference when
compared with a particular body of knowledge (known as the 8prior art9 or 8state of the art9) at a
particular 8cutoff9 date (the 8priority date9).

• Test for novelty by comparing an invention with the state of the art as it existed immediately
before the priority date to which the invention is entitled. If there is a substantial difference (i.e. there is
something in the invention which does not appear in the state of the art) then the invention can be
regarded as new.

• When the invention cannot be regarded as new then we usually say that <it has been
anticipated through lack of novelty=.

According to section 14 of the IPA;

1) An invention is new if it is not anticipated by prior art.

(2) For the purposes of subsection (1) disclosure to the public of the invention may not be taken into
consideration if it occurred within six months preceding the filing date or, where applicable, the priority
date of the application, and if it was by reason or in consequence of:

(a) acts committed by the applicant or his or her predecessor in title, or of an unauthorized
disclosure; or (exception to the prior art)

(b) an abuse committed by a third party with regard to the applicant or his or her predecessor in
title.

(3) For the purposes of subsection (1), prior art also includes matter contained in an application, open to
public inspection, for a patent, despite that the application was lodged at the Office and became open
to public inspection on or after the priority date of the relevant invention, if:

(a) that matter was contained in that application both as lodged and as open to public inspection; and
(b) the priority date of that matter is earlier than that of the invention.

The Determination of Newness/Novelty – considerations

• In Namibia unlike South Africa, when a patent is granted there is a novelty search, SA on the
other hand only examine for formal requirements, not content.

• When assessing invention for novelty, one must compare the claim in the application against the
prior art.

(1) You first need to determine what the inventive concept is.

(2) This is done by interpreting the claims. The object of the claims of a patent specification is to
cover an invention in all its variations and aspects, if dealing with more than one aspect, by generically
defining it. The claims must be read in the light of the description and drawings and interpreted through
the eyes of a person skilled in the art

• The various features of a claim are called its integers. As a first step the essential integers of each claim
of a patent specification must be established from all of the integers identified for each claim

Gentiruco AG v Firestone SA (Pty) Ltd 1971 SA 1972 (1) SA 589 (A) at 646 and Stauffer Chemical
Company and another v Safsan Marketing and Distribution Co (Pty) Ltd and others 1987 (2) SA 331 (A) at
347:

Essential integers are those of which the elements covered by them contribute to define the invention,
even if only apparently marginally.

G I Marketing CC v I Fraser-Johnson 1996 (1) SA 939

(A): In establishing whether an integer is essential or not the court distinguished between: (I) words
which merely define the field of application of the claimed invention, and

(ii) words which import some limitation or special quality or characteristic of the invention’
Inventiveness

S.25(10) follows the EPC definition of inventive step:

<an invention shall be deemed to involve an inventive step if it is not obvious to a person skilled in the
art, having regard to any matter which forms, immediately before the priority date of the invention, part
of the state of the art by virtue only of subsection (6) (and disregarding subsections

(7) and (8).

Non-inventiveness is a ground for revocation of the patent.

Section 15(1) An invention must be considered as involving an inventive step if, having regard to the
prior art relevant to the invention claimed in the application and as defined in sections 12(1) and 14 but
excluding section 14(3), it is not obvious to a person skilled in the art.

15(2) For purposes of subsection (1), an invention is deemed obvious when the prior art provides
motivation to try the invention, or when the method of making a claimed product is disclosed in or
rendered obvious by a single piece or combination of pieces of prior art.

1. The State of the Art for Inventiveness

The state of the art is not the same as the state of the art for novelty. It is narrower, more restricted.
The prior art must be considered as a whole 3 thus can mosaic unlike for novelty requirement.

2. Who is the addressee/person skilled in the art?

A notional person- the assessment of inventiveness is done through the eyes of a person reasonably
skilled in the art, to distinguish this person from a specialist. Such a person must be cognizant of those
features of the art with which the well-informed worker should be acquainted and be adequately
qualified properly to understand the technology of the appropriate field of invention.

As regards the specific technical field of an invention under assessment, the person skilled in the art is
generally assumed to have full knowledge of it. The extent of the knowledge of the notional person
must be contrasted with that person9s creative abilities.

3. How to determine whether the invention is obvious?

The term 'obvious' connotes that which does not go beyond the normal progress of technology but
merely follows plainly or logically from the prior art]. In this regard an improvement that follows the
logical and expected path to be taken by a person skilled in the art cannot be inventive.

• An invention that is a logical result of ordinary development is thus also obvious, as the subject-
matter thereunder is of such a nature that a person skilled in the art would naturally have attempted it.

[The Guidelines Part C chapter IV par 9.9] says that an invention that provides an unpredictable,
advantageous or surprising technical effect is inventive] Likewise technical progress that is a probable
outcome of development and not a mere possibility is also obvious. In the EPO it was said that this arises
when the solution to the technical problem resulted from ordinary to day to-day trial-and-error
development.

• Mere verification of previous predictions cannot give rise to a valid patent.

• Must involve a real inventive step forward

How to determine inventiveness?

(I) As with novelty the claims of a patent are involved in the assessment for inventiveness/

(ii) It seems apparent that when the specific disclosure of an invention as described in detail in a
patent specification (even if by way of a number of embodiments) is found

to be obvious in the light of the prior art, all of the variations or variants under the claims will also be
obvious.

(iii) (iii) A number of relevant disclosures can under certain circumstances be viewed as a whole
against the relevant claim or claims.

Secondary considerations in assessing inventiveness

• If by invoking the abstract meaning of the concepts 'obvious' and 8inventive9 no clear decision
can be arrived at; secondary considerations can be used as an aid.
• While the basic tests deal with the relationship between an alleged invention and the state of
the art, the secondary considerations deal with aspects such as the impact of the invention on the
appropriate technological fraternity, the effort involved in creating the invention, and the commercial
success of the invention.

Four steps:

1. What is the inventive step in the patent?

2. What was the state of the art at the priority date 3 in relation to the inventive step.

3. Decide whether the invention is a step forward on the state of the art

4. Decide whether a person skilled in the art (and thus in possession of the knowledge of one
skilled in the art) would, in light of the state of the art, when considering the same problem as the
inventor, regard the step forward by the inventor as obvious.

Utility:

Section 16. provides that an invention may be considered to be industrially applicable if it can be made
or used in any kind of industry.

(I) Capable of producing results aimed at.

(ii) Frank & Hirsch v Rodi & Wienenberger 1960 (A) R&W held patent in 8improvements in and
relating to extensible chain bands, especially in relation to wristwatch bracelets9 - called Fixoflex.

(iii) F&H imported articles which R&D claimed infringed the patent. R&D sued and F&H claimed that
the patent was invalid. One of grounds was that it was not useful.

What are the essential elements set out under the Berne Convention for the Protection of Literary and
Artistic works (1886)?

The Berne Convention deals with the protection of works and the rights of their authors. It is based on
three basic principles and contains a series of provisions determining the minimum protection to be
granted, as well as special provisions available to developing countries that want to make use of them.

(1) The three basic principles are the following:

(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same protection in
each of the other Contracting States as the latter grants to the works of its own nationals (principle of
"national treatment")

(b) Protection must not be conditional upon compliance with any formality (principle of
"automatic" protection)
(c) Protection is independent of the existence of protection in the country of origin of the work
(principle of "independence" of protection). If, however, a Contracting State provides for a longer term
of protection than the minimum prescribed by the Convention and the work ceases to be protected in
the country of origin, protection may be denied once protection in the country of origin ceases

(2) The minimum standards of protection relate to the works and rights to be protected, and to the
duration of protection:

(a) As to works, protection must include "every production in the literary, scientific and artistic
domain, whatever the mode or form of its expression" (Article 2(1) of the Convention).

(b) Subject to certain allowed reservations, limitations or exceptions, the following are among the
rights that must be recognized as exclusive rights of authorization:

the right to translate,

the right to make adaptations and arrangements of the work,

the right to perform in public dramatic, dramatic-musical and musical works,

the right to recite literary works in public,

the right to communicate to the public the performance of such works,

the right to broadcast (with the possibility that a Contracting State may provide for a mere right
to equitable remuneration instead of a right of authorization),

the right to make reproductions in any manner or form (with the possibility that a Contracting
State may permit, in certain special cases, reproduction without authorization, provided that the
reproduction does not conflict with the normal exploitation of the work and does not unreasonably
prejudice the legitimate interests of the author; and the possibility that a Contracting State may provide,
in the case of sound recordings of musical works, for a right to equitable remuneration),

the right to use the work as a basis for an audiovisual work, and the right to reproduce,
distribute, perform in public or communicate to the public that audiovisual work.

The Convention also provides for "moral rights", that is, the right to claim authorship of the work and
the right to object to any mutilation, deformation or other modification of, or

other derogatory action in relation to, the work that would be prejudicial to the author's honor or
reputation.

(c) As to the duration of protection, the general rule is that protection must be granted until the
expiration of the 50th year after the author's death. There are, however, exceptions to this general rule.
In the case of anonymous or pseudonymous works, the term of protection expires 50 years after the
work has been lawfully made available to the public, except if the pseudonym leaves no doubt as to the
author's identity or if the author discloses his or her identity during that period; in the latter case, the
general rule applies. In the case of audiovisual (cinematographic) works, the minimum term of
protection is 50 years after the making available of the work to the public ("release") or 3 failing such an
event 3 from the creation of the work. In the case of works of applied art and photographic works, the
minimum term is 25 years from the creation of the work.

( (2) The Berne Convention allows certain limitations and exceptions on economic rights, that is,
cases in which protected works may be used without the authorization of the owner of the copyright,
and without payment of compensation.

These limitations are commonly referred to as "free uses" of protected works, and are set forth
in Articles 9(2) (reproduction in certain special cases), 10 (quotations and use of works by way of
illustration for teaching purposes), 10bis (reproduction of newspaper or similar articles and use of works
for the purpose of reporting current events) and 11bis (3)

ephemeral recordings for broadcasting purposes).

The Appendix to the Paris Act of the Convention also permits developing countries to implement non-
voluntary licenses for translation and reproduction of works in certain cases, in connection with
educational activities. In these cases, the described use is allowed without the authorization of the right
holder, subject to the payment of remuneration to be fixed by the law.

The Berne Union has an Assembly and an Executive Committee. Every country that is a member of the
Union and has adhered to at least the administrative and final provisions of the Stockholm Act is a
member of the Assembly. The members of the Executive Committee are elected from among the
members of the Union, except for Switzerland, which is a member ex officio.

The establishment of the biennial program and budget of the WIPO Secretariat 3 as far as the Berne
Union is concerned 3 is the task of its Assembly.

The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in 1908, completed
at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in 1967 and at Paris in 1971,
and was amended in 1979.

The Convention is open to all States. Instruments of ratification or accession must be deposited with the
Director General of WIPO.

Under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the
principles of national treatment, automatic protection and independence of protection also bind those
World Trade Organization (WTO) Members not party to the Berne Convention. In addition, the TRIPS
Agreement imposes an obligation of "most favored-nation treatment", under which advantages
accorded by a WTO Member to the nationals of any other country must also be accorded to the
nationals of all WTO Members. It is to be noted that the possibility of delayed application of the TRIPS
Agreement does not apply to national treatment and most-favored obligations.

Section 137 and 138 of the lndustrial Property Act 1of 2012 sets out the grounds that justify prohibition
of registration of a mark. What are these?

Not meeting the requirements for section 134 for registration

• Reg. likely to cause confusion or offend a section of the public

• Inherently deceptive or the reg. of such is likely to mislead the public as to the geographical
origin of the g/s

• Consists exclusively of a sign which has become customary in the current language or among
bona fide traders in regard to the g/s concerned.

• it is identical with or an imitation of a hallmark adopted by any state or inter-govt. Org without
permission;

• the applicant for reg. has no bona fide intention of using mark once reg.

What is the relevance of Mega Power Centre Au Talisman Plant and Tool hire v Talisman Franchise
Operations (Pty) Ltd 2014 NASC (18 Dec 2014) to the Law of intellectual property?

In that case, it was held even if many people knew of the plaintiff9s businesses abroad and might have
been misled into believing that the first defendant9s tie shops were somehow associated to them,
plaintiff had no business of any kind in SA- no likelihood of damage to plaintiff9s patrimony

The owner of a patent application or a patent may enter into a contract with one or more other persons
to authorise such person or persons to exploit the invention covered by the patent application or the
patent in Namibia". What form can this be licensing take?

According to section 51 of the IPA the owner of a patent application or a patent may enter into a
contract with one or more other persons to authorize such person or persons to exploit the invention
covered by the patent application or the patent in Namibia.

Different types of licensing

A. Contractual licensing

• The granting of a license deals with the permission given to someone else to exploit a patent
against an agreed financial compensation or royalty for the benefit of the grantor of such a license.
Licensing is by way of a contract that needs not be in writing; could be implied.

• A license agreement can make provision for the involvement in any or all of the exclusive
conducts that a patentee is entitled to under the relevant patent rights. • Can be non-exclusive license,
exclusive license or sole license which limits the rights of exploitation to the licensee only. Once any
patent rights have ceased, any license thereunder also terminates. • See section 52 Patents Act for
certain conditions that may not be in a license. B. Compulsory Licensing:

• Compulsory license for non-working or insufficient-working

• (section 55) a) Any person may, after the expiration of a period of four years from the date of
filing of the patent application or three years from the date of the grant of the patent, whichever period
expires last, in the prescribed form and manner make an application to the Tribunal to exploit a
patented invention in Namibia. • b) On receipt of an application the Tribunal may grant such person a
compulsory license to exploit the patent on such terms and conditions as determined by the Tribunal, if
the patented invention was not adequately exploited in Namibia by the owner of the patent or his or
her licensee by working the invention locally. • c) A compulsory license may however not be granted if
the owner of the patent satisfies the Tribunal that circumstances exist which justify the lack of adequate
exploitation of the invention.

• ii. Compulsory licenses: dependent patents (s56) It is possible that patent rights can be obtained
while the exploitation or working of an invention thereunder will result in the infringement of an earlier
patent.

• Such subsequent patents can be identified as 8dependent patents9. The holder of a subsequent
patent will in the normal course of events attempt to negotiate for its exploitation against a financial
benefit in favor of the holder of a relevant earlier patent.

• If a license cannot be obtained, the relevant tribunal can be approached for a compulsory
license to permit such exploitation and working. Compulsory license must include a condition that such
license shall be used only for the purpose of permitting the dependent patent to be worked and for no
other purpose.

There are also three criteria:

▪ the invention in the dependent patent must involve <an important technical advance of considerable
economic significance in relation to the invention claimed in the prior patent=.

▪ must grant the owner of the prior patent on reasonable terms a cross license to use the invention
claimed in the dependent patent.

▪ the use of unauthorized in respect of the prior patent is not assignable except with the assignment of
the dependent patent.

Discuss the historical development of international intellectual Property Law.

• A historical overview shows how intellectual property has formed an integral part of society
since time immemorial. Surely before the introduction of patents, copyright, trademarks, and signs were
protected by moral rules and religious doctrines.

• As we will later learn, a sign is a mark with the basic function of distinction as well as a function
of identification. Probably, the first protected signs were tribal signs, signaling the tribe to which
someone belonged.
• They could not be adapted by another tribe without losing their specific functions and therefore
their defining characteristics. The signs and their functions enabled the bearers to establish a specific
relationship with one another in a social context.

• Trademarks are the commercial successor of signs. It is worth emphasizing that signs do not only
work in an economic context, but in any context where distinction and identification are of interest.

• The territorial period is dominated by the principle of territoriality, the principle that intellectual
property rights do not extend beyond the territory of the sovereign which has granted the rights in the
first place.

• The principle is the product of the intimate connections to be found territorially and itis one of
the foundational principles of International Intellectual Property Law.

• It was a principle which courts recognized in the interests of international comity. This principle
allows countries to design their intellectual property laws in a manner that facilitates the achievement
of specific societal goals.

• The principle of territoriality meant that an intellectual property law passed by country A did not
apply in country B. Intellectual property owners faced a classic freeriding problem, or putting it in
another way, some countries were the beneficiaries of positive externalities.

• The international intellectual property system evolved in response to the principle of

territoriality.

• States began to take a greater and greater interest in the possibility of international cooperation
on intellectual property, as a result of increased cross-border trade.

• At first this interest manifested itself in the form of bilateral agreements.

• Bilateralism in intellectual property in the nineteenth century was important in that it

contributed to the recognition that an international framework for the regulation of intellectual
property had to be devised, and it suggested a content in terms of principles for that framework. But
this bilateralism was more by way of prelude.

• The protection it gave authors was never satisfactory. The main movement towards serious
international co-operation on intellectual property arrived in the form of two multilateral pillars: The
Paris Convention of 1883 and the Berne Convention of 1886.

• The Paris Convention formed a Union for the protection of industrial property and the Berne
Convention formed a Union for the protection of literary and artistic works. • The Paris and Berne
Conventions ushered in the multilateral era of international cooperation in intellectual property. The
twentieth century saw the proliferation of international intellectual property regimes.

• Examples of areas that became the subject of international agreements include trade marks
(Madrid Agreement (Marks), 1891 and Madrid Agreement (Indication of Source), 1891), designs (Hague
Agreement, 1925), performance (Rome Convention, 1961), plant varieties (International Convention for
the Protection of New Varieties of Plants, Acts of 1961 and 1991), patents (Patent Cooperation Treaty,
1970), semiconductor chips (Treaty on Intellectual Property in Respect of Integrated Circuits, 1989).
• The Paris and Berne Conventions also underwent numerous revisions. Treaty-making in
intellectual property was accompanied by the rise of international organizational forms.

Critically discuss primary trademark infringement under the lndustrial Properties Act 1 of 2012. Refer to
decided cases.

The intellectual property rights9 registering entities do not have policing mechanism to prevent
infringement of the registered IP rights 3 therefore the IP right holder must be pro-active in protecting
the right.

There are two major categories of TM infringement, namely:

✓ Statutory infringement

✓ Common law infringement

Statutory Infringement:

Refer to section 182 of the Industrial Property Act of 2012.

a) Primary Infringement (s. 182 a.)

b) Extended/ Secondary Infringement (s. 182 b.)

c) Dilution (s. 182 c.)

Common Law Infringement:

Manifests as a protective mechanism against infringement of unregistered trademarks and this is done
through rules of unlawful competition.

SPORTSHOE (PTY) LTD v PEP STORES (SA) (PTY) LTD 1990 (1) SA 722 (A)

• Sports shoe was sold by the respondents carrying the words Grand Prix, which is a registered
trade mark globally.

• The court found that Grand Prix was adapted and that such were to be distinctive, however that
such term being was used to be a label on clothing, particularly footwear, which is unusual and
contrived.

• It was further stated that the Grand Prix term was used to prove good quality, but the court
found that the public did not understand it that way.

• The trade mark Grand Prix was used in the manner of which the trade mark did not embarrass
other traders by ascribing such words to describe said shoe. The onus lies upon the appellant to prove
invalidity of a mark, and cannot be inferred due to the respondent using such term as a licensee.

• The licensing of the said trademark is permitted, provided a link is maintained in form of the
trade connection between the proprietor and the goods. Providing deception is avoided.

• The applicant failed to prove that a reputation was acquired and that distinctiveness was
established.
• No passing of could be found as the applicant was found to be expensive and up-market selling
at specialty sports shops, whereas the respondents product is lightweight and out of price range,
different outlets also not attracting same or similar customers, therefore no common field.

• Substantial differences exist between both products, thus bearing no connection by using the
term Grand Prix. the interdict on the respondent is refused.

Define intellectual Property and in light of that definition give intellectual Property Law and what it
entails?

• 8Intellectual Property9 is a generic term that probably came into regular use during the
twentieth century, used to refer to a group of legal regimes, each of which, to different degrees, confers
rights of ownership in a particular subject matter.

• The term property connotes ownership that is exclusive,1 but the owner(s) have the right to
license or sell their intellectual property. Under intellectual property law, owners are granted certain
exclusive rights4 intellectual property rights (IPR)4to the discoveries, inventions, words, phrases,
symbols, and designs they create.

• The various aspects of the subject differ in purpose and detailed rule. Nonetheless, there is
educational convenience in studying them together, as we will in this guide. As aforementioned, the
subject matter of intellectual property is distinct.

• Inventions, literary works, artistic works, designs and trademarks formed the subject matter of
early intellectual property law.

• The twenty-first century has seen new subject matter added to present intellectual property
systems (for example, the protection of computer software as part of copyright, the patentability of
micro-organisms as part of patent law), and new systems created to protect existing or new subject
matter (for example, plant variety protection).

• Trying to define the essence of intellectual property is difficult. There is no particular potency
about the expression <intellectual property= however, there is a general consensus as to its core
content (patents for inventions, literary, dramatic, musical and artistic copyright, copyright in
recordings, films and broadcasts, registered and unregistered design rights and trademarks)

• That is, most definitions, in fact, simply list examples of intellectual property rights or the
subject matter of those rights (often in inclusive form) rather than attempting to identify the essential
attributes of intellectual property.

• One should also note that individual intellectual property statutes provide definitions of the
subject matter of their application.

• For example, copyright statutes will typically define terms such as 8literary work9, as well as
stating that copyright in a work consists of particular exclusive rights.

• Patent statutes define the term 8patent9 in terms of an invention and then specify the criteria
of patentability.
• The definitional dimensions of intellectual property are further complicated by the fact that
intellectual property regimes are the products of different philosophical and legal traditions. The term
8copyright9, for example, refers to those common-law systems that characterize the exclusive rights of
authors in essentially economic terms (the rights to reproduce the work, to publish it and to adapt it are
examples).

• A definition of intellectual property that moves beyond lists or examples and attempts to deal
with the essential attributes of intellectual property has to focus on two elements:

• the property element and the object to which the property element relates. Intellectual
property rights are often described as intangible rights.

• The idea behind this classification is that the object of the right is intangible. All property rights
place the right holder in a juridical relation with others.

• The key difference between rights of real property and intellectual property rights is that in the
latter case the object of the right is non-physical. One can think of it as an abstract object rather than a
physical object.

• It is possible that one can 8own9 the abstract object without owning a particular physical
manifestation of the abstract object. A letter sent to a friend, for example, results in the property in the
letter passing to the friend, but not the copyright.

• Property rights by their nature allow the right holder to exclude others from the use of this
prime resource and so they are likely to produce instances of rights conflict.

• Paragraph 1 of Article 16, <Property=, of the Constitution of the Republic of Namibia begins as a
broad-ranging statement of property rights: All persons shall have the right in any part of Namibia to
acquire, own and dispose of all forms of immovable and movable property individually or in association
with others.

• The language used for the Article, e.g. <own and dispose of all forms of immovable and movable
property= is sufficient to include all forms of modern intellectual property under the protection of
Article 16. In summation, Intellectual property (IP) is the term that describes ideas, inventions,
technologies, artworks, music and literature (traditional forms) that are intangible when first created
but become valuable in tangible form as products. • Suffice it to say, that IP is the commercial
application of imaginative thought to solving technical or artistic challenges. It is not the product itself,
but the special idea behind it, the way the idea is expressed, and the distinctive way it is named and
described.

• The word 8property then, is used to describe this value, because the term applies only to
inventions, works and names for which a person or group of persons can claim ownership.

• Ownership is important because experience has shown that potential economic gain provides a
powerful incentive to innovate

What are IPRs, and why are they important?

• Under intellectual property law, owners are granted certain exclusive rights4intellectual
property rights (IPR)4to the discoveries, inventions, words, phrases, symbols, and designs they create.
• Through IPR9s protection, owners are given the opportunity to license or sell their innovations
to others, which is an important way of creating value with these assets.

What are the three main types of IPRs?

• Copyrights - Copyright is the body of laws which grants authors, artists and other creators
protection for their literary and artistic creations, which are generally referred to as <works. = •
Trademarks - A trademark is a distinctive sign, which identifies certain goods or services as those
produced or provided by a specific person or enterprise. The system helps consumers identify and
purchase a product or service because its nature and quality, indicated by its unique trademark, meets
their needs.

• Patents - A patent is an exclusive right granted for an invention, whether a product or a process,
which must be industrially applicable (useful), be new (novel) and exhibit a

sufficient <inventive step= (be nonobvious). A patent provides protection for the invention to the owner
of the patent.

Would you do business in a country with poor IP protection? Why or why not.

WHY NOT? - Company will not gain financial benefits from investing in research and coming up with new
inventions. The reverse can be true 3 it will be easy for the company to gain access to other companies9
inventions without paying for them where there is no legal protection for those inventions.

Can you think of a reason why a company might decide to file a patent on an intellectual asset?

Some companies obtain patents mainly to license or sell them to others, thus making money from their
inventions without having to manufacture or service anything themselves. In turn, other companies
actively seek patents that they can purchase because they want to speed up their own R&D efforts.

Describe the historical development of intellectual property.

• 'Intellectual property' is a 20th Century term.10 As understood today, it comprises four law
areas: trademark, patent, copyright, and trade secrets law.

• The concept of intellectual property, however, is well known in history. Protection of intellectual
product can be traced far back in history, but only since the 16th and 17th Century do we encounter
written intellectual property laws and privileges, first in England (copyright) and Venice (patents).

• A historical overview shows how intellectual property has formed an integral part of society
since time immemorial. Surely before the introduction of patents, copyright, trademarks, and signs were
protected by moral rules and religious doctrines. • The Territorial Period:

• The territorial period is dominated by the principle of territoriality, the principle that intellectual
property rights do not extend beyond the territory of the sovereign which has granted the rights in the
first place.

• The principle is the product of the intimate connections to be found territorially and itis one of
the foundational principles of International Intellectual Property Law. It was a principle which courts
recognized in the interests of international comity.
• This principle allows countries to design their intellectual property laws in a manner that
facilitates the achievement of specific societal goals. The principle of territoriality meant that an
intellectual property law passed by country A did not apply in country B.

• Intellectual property owners faced a classic freeriding problem, or putting it in another way,
some countries were the beneficiaries of positive externalities. On a much more positive note, the
principle permitted states to tailor their national intellectual property laws to suit their level of
technological and economic development.

• In other words, pursuant thereto, each state can design their intellectual property laws in a
manner that facilitates the achievement of specific societal goals such as encouraging the development
of home-grown industries or protecting public health.

• The principle undoubtedly emerged as a result of the Peace of Westphalia treaty which is often
viewed as the progenitor of modern nation-state. The treat brought to an end the Thirty Years' War in
1648 in Europe.16 The origins of IPR9s in particular copyrights and patents are usually traced back to the
privileges granted by European sovereigns.

• The International Period:

• The international intellectual property system evolved in response to the principle of

territoriality.

• States began to take a greater and greater interest in the possibility of international cooperation
on intellectual property, as a result of increased cross-border trade. At first this interest manifested
itself in the form of bilateral agreements.

• Bilateralism in intellectual property in the nineteenth century was important in that it

contributed to the recognition that an international framework for the regulation of intellectual
property had to be devised, and it suggested a content in terms of principles for that framework. But
this bilateralism was more by way of prelude.

• The protection it gave authors was never satisfactory. The main movement towards serious
international co-operation on intellectual property arrived in the form of two multilateral pillars: The
Paris Convention of 1883 and the Berne Convention of 1886.

• The Paris Convention formed a Union for the protection of industrial property and the Berne
Convention formed a Union for the protection of literary and artistic works. • The Paris and Berne
Conventions ushered in the multilateral era of international cooperation in intellectual property. The
twentieth century saw the proliferation of international intellectual property regimes. • The Global
Period:

• On 15 April 1994, the Uruguay Round concluded in Marrakech with the signing of the Final Act
Embodying the results of The Uruguay Round of multilateral trade negotiations. More than 100
countries signed the Final Act.

• It contained a number of agreements including the Agreement Establishing the World Trade
Organization and the TRIPS Agreement.
• The TRIPS Agreement was made binding on all members of the World Trade Organization
(WTO). There was no way for a state that wished to become or remain a member of the multilateral
trading regime to side-step the TRIPS Agreement. • Post TRIPS era:

• The TRIPS Agreement marks the beginnings of the global property epoch. The TRIPS Agreement
is built on the edifice of the principles of territoriality and national treatment.

• But it also represents the beginnings of property globalization via the trade linkage. • The TRIPS
Agreement reaches all those states that are members of the multilateral trading system or which, like
China, wish to become members. All of the TRIPS Agreement is binding on all members of the WTO.

• The TRIPS Agreement incorporates various other intellectual property conventions by reference.
States, therefore, have to implement a common and enlarged set of intellectual property standards,
standards that become common to more states by virtue of their participation in regional and
multilateral trade regimes.

More and more standards are becoming mandatory rather than permissive for states. States, for
example, have less discretion to determine what can be patentable and what cannot.

• The post-TRIPS era has been a period in which countries have had to engage in the task of
national implementation of their obligations under the TRIPS Agreement. Least developed countries
have the advantage of a ten-year transitional period under the agreement, but they have been under
pressure from developed countries to move sooner rather than later on its implementation.

• The TRIPS Agreement operates under an institutional arrangement designed to promote

compliance.

What is the rationale for protection of intellectual Property?

• Rationale for modern intellectual property protection is closely related to the economic benefit
associated to such IP rights. An intellectual property right remains the crucial policy tool for the
promotion of innovation and economic growth.

• As an instrument of economic policy, intellectual property rights are aimed at compensating

right holder in creating an incentive for innovation and contributing to investment for additional
research and development.

• The increasing importance of knowledge as a driving force of innovation and economic growth
worldwide, intellectual property rights are becoming the central to modern economy. As a result, an
intellectual property protection policy stimulates economic growth on a macro-economic level.

• Technological advancement and enhanced human capital are principal engines of economic
growth in most of the industrialized nations. Strengthening of intellectual property protection in
developing countries has led to a dramatic increase in foreign direct investment which is believed to
have contributed to economic growth.

• The impact of intellectual property protection on a macro-level is aptly illustrated by the

difference intellectual property can make to the economic prosperity of different regions within one
country. There is a direct correlation between the national patent filing profile of a country and its
economic prosperity.

• In a micro-economic level, an intellectual property right allows for the conversion of knowledge
and information into an income. Thus, the companies which invest in latest products and technologies
during the time of economic recession will be those that will be best positioned to take advantage of the
recovery.

• Such investment in research and development creates new technical know-how, which has got
the potential to be converted into cash-flow. This know-how will create an economic benefit as
compared to that of the competitor9s technical know-how.

Section 131 of IPA defines a trademark... "...other than a certification or a collective trade mark, means a
mark used or proposed to be used by a person in relation to goods or services for the purpose of
distinguishing those goods or services from the same kind of goods or services connected in the course
of trade with any other person."

ln light of the above, distinguish between a registrable and no registrable marks.

Elements of a Trademark

• Mark

• means any sign capable of being represented visually, including a device, name, signature, word,
letter, numeral, figurative element, shape, colour or container for goods, or any combination of such
signs…=

• Trademark functions:

• Indicate that all the goods and services bearing the mark emanate from the same commercial
source.

• Distinguish particular goods or services from other goods or services. Market and sell goods or
services. May become a guarantee of quality.

• Who may apply for registration of a trademark?

• According to section 139 of the IP Act, any person who has a bona fide claim to proprietorship of
the mark and bona fide uses or intends to use the mark as a trade mark may apply for the registration of
the mark as a trade mark.

To have a bona fide claim to proprietorship an applicant for registration of a mark in use must claim, in
good faith, to be entitled to be registered as proprietor of the mark, and if the mark is not in use, the
applicant can make such a claim if he has a sufficiently present and unconditional intention to use the
mark.

• The term 'proprietorship' is not defined in the Act. However, the section 10 of the neighbouring
South Africa9s Trade Marks Act no 194 of 1993 contains a similar provision on registration of a
trademark.
• It was held in Tekno-Medical Optik Chirurgie GMBH v Registrar of Trade Marks and Another24
that the word 'proprietor' as used in the Act does not import common 3 law ownership of the trademark
but is used in the sense of 'one who has the exclusive right or title to the use' of it.

• One can claim to be the proprietor of a trademark if one has appropriated a mark for use in
relation to goods or services for the purposes stated, and so used it. The word 'appropriate' in this
context comprehends 'originate', 'acquire' and 'adopt',

• Registrable Trademarks According to Section 134 of IPA < …

• (1) In order to be registrable, a trade mark must be capable of distinguishing the goods or
services of a person in respect of which it is proposed to be registered from the goods or services of
other persons, either generally or, where the trade mark is proposed to be registered subject to
limitations, in relation to use within those limitations.

• (2) A trade mark is considered to be capable of distinguishing within the meaning of subsection
(1) if,

• at the date of application for registration, it is inherently capable of so distinguishing or if it

became capable of distinguishing by reason of prior use thereof.

• Therefore, it can be said that in order to establish whether a mark is distinguishable within the
meaning of the provision of the Act, the enquiry can be done at two stages.

• The first stage is whether the mark was, at the date of application for registration, capable of
inherently distinguishing the appellant9s goods from those of another person; and, if the answer to the
first question is no, the enquiry does not just end there as the next question will be whether the mark
was distinguishable by reason of its use to date.

• A trademark will not be registered on objective grounds contained in the provisions of section
137.

• Section 137 of IPA states that a mark is not registrable and cannot be validly registered if 3

• ▪ it is incapable of distinguishing the goods or services of one person from those of other
persons;

• ▪ it is contrary to public order or morality;

• ▪ it is inherently deceptive or the use thereof is likely to mislead or deceive the public or other
traders, including as regards the geographical origin of the goods or services concerned, or their nature
or characteristics;

• ▪ it consists exclusively of a sign or indication which serves, in trade, to designate the kind,
quality, quantity, intended purpose, value, geographical origin, or time or mode of production of the
goods or rendering of the services; Case study 71

• ▪ it consists exclusively of a sign or indication which has become customary in the current
language or amongst bona fide traders in regard to the goods or services concerned;
• ▪ it is identical with, or is an imitation of or contains as an element, an armorial bearing, flag or
other emblem of, a name of or abbreviation or initials of the name of, or official sign or hallmark
adopted by, any State, intergovernmental organisation or organisation created by an international
convention, unless authorised by the competent authority of that State or organisation;

• ▪ its use would be likely to cause confusion or would offend any class of person or would be
contrary to law;

• ▪ the applicant for registration has no bona fide claim to proprietorship or no bona fide intention
of using it as a trade mark; or

▪ the application for registration was mala fide.

John, a street vendor was arrested for selling DVDs of the highly commended Namibian movie
"Katutttra" without a licence, under Sections 29(1), 29(3), 29(4) & 33 of the Copyright and Neighbouring
Rights Protection Act 6 OF 1994. What are the prospects of him being found guilty as charged? Refer to
relevant statutory provisions and case law.

• According to section 29 of Copyrights and Neighbouring Rights Act infringement occurs when a
person who is not licensed, does or causes another to do an act which the owner has the exclusive right
to do or authorize.

• In Namibia Acts can be of reproduction, copying, publishing, performance or broadcasting

nature.

• ✓ Who is not licensed by owner

• ✓ Does an act/ causes another to do an act (reproduction, copying, publishing, performance or

broadcasting)

• ✓ Exclusively vested in the owner of the copyright

• ✓ Towards a substantial part of a work

• ✓ No exceptions applicable

• Whatever form infringement takes- these elements must be present. To constitute indirect
infringement as per section 29(2), a person who, without the license of the owner of the copyright:

• a) imports into Namibia an article for a purpose other than for his or her private and domestic
use;

• b) sells, lets or by way of trade offers or exposes for sale or hire in Namibia an article;

• c) distributes in Namibia an article for the purposes of trade, or for any other purpose, to such
an extent that the owner of the copyright in question is

prejudicially affected;

• or d) acquires in Namibia an article relating to a computer program

• S v Marume 2007 (1) NR 12 (HC)

• The accused sold fake DVD9s which was in contravention of the Copy Rights and Neighbouring
Rights Protection Act 6 of 1994.

• The accused admitted that he had sold 3 DVDs with regard to selling, letting or exposing for sale
or hire an article that constitutes an infringement of a copyright. He stated that he did not know that he
needed a licence from the owner of the copyright to do so.

• An essential element of the offense created by section 33(1)(a)(ii) is that the articles in question
must be infringing copies of a work in which copyright exists.

• Hoff J pointed out that the prosecutors for the State had led no evidence on the nature and
description of the DVDs that the accused had sold and that the court was not informed of what the
DVDs were supposed to be copies of.

• There was also no submission on what the original work is, who the owner of the copyright is
and whether the DVDs were infringing copies of the original work.

• The only evidence that the prosecutors had was the unclear statement of the Sergeant Kotze
that he arrested the accused for selling fake DVDs under the Copyright Act. The Sergeant in submitting
his statement had not explained what he meant by <fake= and why he was of the view that the DVDs
were not genuine and how the alleged copyright was infringed.

To protect the rights arising out of trademark registration, the lndustrial Property Act provides the
proprietors with possible action in cases of infringement. Section 182 only provides for protection in
respect of registered trademarks. What are the remedies available to a proprietor in terms of this
Section? Are there any defences that can be raised by the alleged infringer?

• Read section 183 of the Industrial Property Act of 2012 as it sets out the available remedies for
trademark infringement(s). Nevertheless, they are as follow:

• An order for the removal of infringing mark from all the infringing goods.

• Where the infringing mark is inseparable or incapable of being removed; an order that all such
goods or materials be delivered up to the claimant.

• Damages:

• Or in lieu of damages, and at the option of the claimant, a reasonable royalty which would have
been payable by the licensee for the use of the trademark concerned. • POSSIBLE PLAUSIBLE DEFENSES:
• 1. Use of own name, name of place of business, name of predecessors in business or their places
of business, in good faith.

• 2. Description or indication which points to the kind, quality, quantity, intended purpose, value,
geographical origin etc. of the goods or services.

• 3. Import of goods which bear a mark for which consent has been obtained by the seller.

• 4. Use of features, i.e. container, shape, configuration, colour or pattern which is registered as a
mark- in good faith.

• 5. Use of a mark within the scope of limits entered in the register against that mark • 6. Mark is
identical/confusingly similar but is registered.

• In other words, is there a likelihood of confusion? likelihood of confusion exists when consumers
viewing the allegedly infringing mark would probably assume that the product or service it represents is
associated with the source of a different product or service identified with a similar mark. Make use of
rules of comparison to ascertain possibility of confusion.

Brief Summary of what a Patent is:

• A patent is a title granted under the Industrial Property Act to protect an invention. Simply put,
a patent is an <intellectual property right= in an invention.

• In much more legalistic definition, a patent is a document, issued, upon application, by a

government office (or a regional office acting for several countries), which describes an invention and
creates a legal situation in which the patented invention can normally only be exploited (manufactured,
used, sold, imported) with the authorization of the owner of the patent.

Brief Summary of Exclusive Rights of the Patentee:

• The patentee of the patent has the exclusive right to exercise, make, utilize, conveyor offers the
patented substance or article or to practice or utilize or the process or techniques associated with the
invention.

• Such rights can be exercised either by the Patentee himself/herself or by his/her licensees or
agents.

• As per section 41:

The applicant has the right to be granted the patent, where the relevant provisions of this Act have
been satisfied;

• The owner has the right to exploit the patent;

• the owner has the right, within the limits specified in section 43,

• to exclude all other persons from exploiting in Namibia the patented invention without his or
her authority,

• so that he or she has and enjoys the whole profit and advantage accruing by reason of the
invention; and d the applicant or the owner has the right to assign, or transfer by succession the patent
application or the patent and to conclude license contracts for the exploitation of the patented
invention in Namibia by other persons as provided for in Part 8.

What constitutes made available to the public in relation to disclosures:

Certain Geographical names have been acquired a lot of importance in the commercial market,
particularly with regard to the goods uniquely associated with such names. Discuss in the context of
International Law relating to Geographical Indications.

• Geographical indications (GIs) are indications which identify a good as originating in the territory
of a member or region or locality in that territory where a given quality, reputation or other
characteristic of the good is essentially attributable to is geographical origin.

• Most commonly, a GI includes the name of the place of origin of the products. For example,
agricultural products typically have qualities that derive from their place of production and are
influenced by specific local factors, such as climate and soil.

• The unique features of a place always give special characteristics to its inhabitants. Likewise,
many places have their unique specialties. Even the same type of product made in different places may
have different flavors.

• Take wine for example. Good wine is produced out of good grapes, as the quality of a wine
depends on raw materials and vilification technique. Grape variety, climate, soil, humidity, vineyard
management and vilification technology are the six factors that determine the quality of a wine.

• For example, the Champagne sparkling wine produced in Champagne, France, is famous for its
quality and characteristics.

• To give another example, Dongtinghu Biluochun, a famous Chinese tea variety, features tea
leaves with slender hairs rolled into a snail-like spiral, lasting fresh fragrance and pure taste. Of the
Yunnan Pu9er tea varieties, the fermented one has a refined fragrance, features a red liquid color and
produces a lasting sweet taste, while the unfermented one exudes pure fragrance, an orange liquid
color and long-lasting taste.

• As far as IP rights are concerned, these well-known products whose quality or characteristics are
entirely (or predominantly) dependent on the local geographical environments are often represented by
their geographical names. Once registered, such a geographical name is known as a <geographical
indication= (GI) or the name of the place of origin.

• Namibia does not have a sui generis legal instrument for the protection of GIs. However,
products can be protected by registering it as collective marks under the existing IP Act.30 GI9s are
similar to trademarks only to the extent that they both function as source indicators.

• However, the fundamental distinction lies in the fact that while trademark identifies goods or
services as originating from a specific producer, GIs do not identify the producer, but the geographical
region from where the product originates.

• Namibia is still exploring the best possible means to protect GIs and is engaged in deliberations
at both regional and global platforms.
• Namibia is a member of the World Intellectual Property Organisation, and by virtue thereof is
signatory to the TRIPS agreement falling under the World Trade Organisation (WTO). The TRIPS
Agreement entered into force on 1 January 1995.

• It is binding upon all Member States of the WTO and thereby comprises almost all relevant
markets in the world. It is the first multi-lateral treaty that comprehensively addresses geographical
indications.

Pursuant to Art. 22 (3) TRIPS, geographical indications for products other than wines and spirits are
protected against misleading use of the respective designation.

• The provision reads as follows:

• "A Member shall, ex officio, if its legislation so permits or at the request of an interested party,
refuse or invalidate the registration of a trademark which contains or consists of a geographical
indication with respect to goods not originating in the territory indicated, if use of the indications in the
trademark for such goods in that Member is of such a nature as to mislead the public as to the true
place of origin."

• Protection against misleading use means that it needs to be assessed in each particular Member
State whether consumers are misled by the use of a designation similar or identical to the geographical
indication at issue.

• It may well be that the designation, which is (still) a geographical indication in its country of
origin, has become or has always been a generic term in another country.

What is the difference between GI and Trademark?

• Geographical indications and trademarks are both signs designating the sources of goods. A GI
indicates a specific product originating from a specific area that gives the product its unique features
and characteristics, whereas a trademark indicates the products or services of a specific company.

• The reputation of a trademark comes from business operation, publicity and promotion of an
enterprise, while the reputation of a GI is derived from the gift of nature and cultural heritage. It is
precisely because of this that a trademark can be transferred, while a GI cannot be transferred to others
outside the particular region.

Provide 3 main objectives of the Berne Convention:

• to conserve wild flora and fauna and their natural habitats

• to promote cooperation between states

• to give particular attention to endangered and vulnerable species including endangered and
vulnerable migratory species

Explain how Computer Programs are protected in Namibia:

• Computer technology plays an increasingly important role in modern society. Computers cannot
operate without instructions, hence the need for programs and operating systems. These programs and
the necessary reference material are referred to as computer software.
• Creating CP requires heavy investment and protection against unauthorized copying and use is
thus crucial.

• What happens when there is no protection?

• Producers will not be able to recoup investment. Insufficient protection leads to:

• ▪ Foreign programs obtained are not usually adapted to specific needs of countries. ▪

• ▪ Difficulty in securing financing of necessary translations or local adaptations

• Computer viruses tend to be more widespread in countries with minimal protection. This is
because they are distributed with pirated software which is not subjected to the same quality control as
authorized products. The best software is only released in countries with Minimal possibilities of piracy.

• During the Feb-Mar 1985 period, a decision was made by a joint WIPO/UNESCO committee to
use copyright.

• Generally accepted that CP were considered works, subject to copyright protection, because CP
are basically writings which are original intellectual creations. Therefore, any technical features of these
ideas which provide technical solutions could then be patented. • Patent Law and CP:

• Art 27.1 of TRIPS-applies to all fields of technology.

• In that instance, the patentability requirement is broad enough to cover software-related

inventions which have a technical effect.

• An example: instruction addressed to a person skilled in the art on how to solve a particular
technical problem using particular technical means.

• Copyright law and CP:

• The object code of CP shares the copyright status of other literary and artistic works stored in
the computer system in a machine-readable form.

• The combination of the different elements (on their own hardly qualify as original works) that
make up a computer program qualifies it as original works.

• Ideas and abstract methods of solving problems- algorithms- not protected under copyright.

• Because CP programs quickly become outdated, the term of 50 years9 protection after the
death of an author is considered too long.

• Therefore, once a CP becomes obsolete, it will not be used and protection cannot be invoked.
This term will therefore only apply for works which remain of interest to users. • International
protection of copyrights:

• Article 10(1) of TRIPS Article 4 of WIPO Copyright Treaty Protection granted should be the same
as that provided for in the Berne Convention.

National laws may regard CP as a separate category of works but protection should not be lower than
that granted for literary works under the Convention.
• TRIPS goes further to explain that protection applies to CP programs whether it is source or
object code. WIPO CT- provides that protection applies to CP in whatever mode of form they are
expressed

• Copy Rights and Neighbouring Rights Protection Act 6 Of 1994:

• According to that Act a "computer program" means a set of instructions fixed or stored in any
manner and which, when used directly or indirectly in a computer, directs its operation to bring about a
result.

• As per section 1(d) a computer program, includes: I. a version of the program in a programming
language, code or notation different from that of the program; or ii. a fixation of the program in or on a
medium different from the medium of fixation of the program; • The term "author", in relation to a
computer program, which is not computer-generated, the person who exercised control over the
making of the program, or in the case of a computer program, which is computer-generated, means the
person by whom the arrangements necessary for the creation of the program were undertaken.

• Section 14- Nature of copyright in computer programs:

• Copyright in a computer program vests the exclusive right to do or authorize the doing of any of
the following acts in Namibia:

• a) Reproducing the program in any manner or form;

• b) publishing the program if it was hitherto unpublished;

• c) making an adaptation of the program;

• d) reproducing or publishing an adaptation of the program; and

• e) letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy of the
program.

• Section 24-General exceptions regarding protection of computer programs: • (1) Subject to

section 29 (2) (d), the provisions of section 15 (1) (b) and (c), (2), (3), (4), (5), (12) and (13) shall apply
mutatis mutandis with reference to a computer program.

• (2) The copyright in a computer program shall not be infringed by a person who is in lawful
possession of that program, or an authorised copy thereof, if-

• (a) such person makes copies thereof to the extent reasonably necessary for back-up purposes;

• (b) a copy so made is intended exclusively for personal or private purposes; and

• (c) such copy is destroyed when the possession of that program, or authorised copy thereof,
ceases to be lawful.

• CP and Moral rights:

• In terms of s. 25(1)(b) the author shall have the right to object to a distortion, mutilation or
other modification of the work where such distortion, mutilation or modification is or would be
prejudicial to the honour or reputation of the author, but an author of a computer program or a work
associated with a computer program, may not prevent or object to modifications that are necessary on
technical grounds or for the purpose of commercial exploitation of the work. • Infringement:

• As per s. 29 on infringement: acquires in Namibia an article relating to a computer program, if to

such person's knowledge the making of that article constituted an infringement of that copyright or
would have constituted such an infringement had that article been made in Namibia.

• In terms of s. 32 on onus of proof- name published=owner.

• Industrial Property Act and CPs:

• Section 17 which makes provision for matters excluded from patentability refers to
<programmes for computers=

• S17(1)(d) Software patents?? Look at European position EPO guideline- if a computer program
has a technical character, then it is not excluded from patentability.

Prior Art:

• Section 12(1)- <prior art= means the art at a date immediately prior to the filing date or, where
appropriate, the priority date of an application claiming the invention.

• Evidence-invention known Three categories:

• PA Category 1:

• Section 12(1) of IPA Prior art means, all matter disclosed to the public, anywhere in the world,
by publication in any form, or by oral disclosure, by use or in any other way

• What constitutes <all matter=? Everything, no matter what type of information <made available
to the public=?

• The public is not just Namibia 3 it is absolute novelty so anywhere in the world. Matter can be
made available actively or passively. When subject-matter has come to the notice of a person who is
free to disseminate it, the disclosure can be said to have taken place actively or passively.

• A non-confidential disclosure to a specific person in making available to the public. If there is no

confidentiality, there is no inhibiting fetter or prohibition on further disclosure. In such a case disclosure
of subject-matter to only one other person who is free to disseminate it is adequate to result in its
forming part of the prior art. If communicated through a generally non-confidential disclosure e.g.
written document like a report, lecture etc. then it is made available to the public if it is accessible to the
public at large.

• Passively: In such a case, it must have been made available to the public at large to form part of
the state of the art, e.g. in a library.

• Confidential disclosures:

• A secret disclosure will not destroy novelty as it was not made available to the public. • See
Levin and Another v Levin and Others (644/09) [2011] ZASCA 3
prior to filing patent application, exhibited the invention in confidence to certain persons with object of
persuading them to place orders for the invention.

• Held that the exhibition of the invention in confidence did not amount to prior publication
(under 1952 Act). <by written or oral description=? The quality of a disclosure, whether by way of
description, whether actively or passively, is according to the ordinary dictionary meaning- of being to
'set forth in words; recite characteristics of a thing.

• For prior description by way of a published document see Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA 589 (A) at 650:

• The subject-matter of the state of the art must recite the essential integers of a patent under
attack in such a way that the same or substantially the same technology was identifiable or perceptible
and hence made known.

• It must be clear enough to enable a person having knowledge of the appropriate technical field
readily to perform the invention directly from the description, without, for example, requiring further
experimentation or reference to other disclosures, except if such a reference is to a disclosure actually
forming part of the disclosure under investigation to form part of the state of the art any disclosure
must be 8enabling9.

• PA Category 2:

• Section 14(3) Prior art also includes matter contained in an application, open to public
inspection, for a patent, despite that the application was lodged at the Office and became open to
public inspection on or after the priority date of the relevant invention, if:

• a) that matter was contained in that application both as lodged and as open to public
inspection; and

• b) the priority date of that matter is earlier than that of the invention9 The subject-matter of co-
pending Namibian patent applications also forms part of the prior art in so far as it has become open for
public inspection.

• This broadens the matter that forms part of the prior art to include matter that is not <available
to the public. All of the matter disclosed in a complete application that goes through to publication of
acceptance and that is of an earlier filing date than the priority date of an invention for which it allegedly
serves as anticipation will be taken into account as part of the prior art.

• This is so because the date of publication of acceptance of such an application is also the date of
becoming open for public inspection. This will not be the case for subject matter that has been removed
by amendment prior to the advertisement of acceptance. • PA Category 3:

• Traditional Knowledge Knowledge developed by or in possession of a local or indigenous

community and which originated at a date prior to the priority date of the relevant invention

Who can apply for a Patent:

• According to section 19 of the IPA:

• (1) The right to a patent belongs to the inventor.

(2) If two or more persons have jointly made an invention, the right to apply for the patent belongs to
them jointly.

• (3) If and to the extent to which two or more persons have made the same invention
independently of each other, the person whose application has the earliest filing date or, if priority is
claimed, the earliest validly claimed priority date, and which application leads to the grant of a patent
has the right to the patent for the duration of the patent. • (4) The right to a patent may be assigned or
may be transferred by succession or otherwise by operation of law. An application would usually be
made by the inventor unless the inventor has granted that right to apply to someone else OR co-
inventors 3 section 49. An applicant can be either a natural person or a juristic person.

Copyright:

• A copyright is an exclusive right that accrues to the author or maker of an eligible original work
that has been captured in a material form to copy, adapt, publish, distribute, perform, broadcast,
transmit or otherwise use the work for a limited period of time OR authorize others to do so.

• Copyright Protection:

• Copyright is a form of intellectual property law which protects original works of authorship
including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer
software, and architecture.

• In Namibia, the protection and promotion of copyright in Namibia is administered in terms of

the Copyright and Neighboring Rights Protection Act, 199421 (The Copyright Act). • Copyrights include
all forms and methods of public communication, not only printed but also sound, films, television,
cinema; etc. Copyright protects the form of expression of the idea not the idea itself.

• The creativity which is protected is creativity in choice and arrangement of words, musical
notes, colors, shapes, and so on. Copying: taking and using the form in which the original work was
expressed by author, is therefore prohibited. • Elements:

• It is important to note that before a copyright is vested in an individual, the following elements
must be met, all elements are mutually inclusive.

• Authorship Section 1(1): provides several scenarios of authorship:

• (a) literary or musical work, or an artistic work- the person by whom the arrangements
necessary for the creation of the work were undertaken;

• (b) Photograph- the person who is responsible for the composition;

• (c) A sound recording- the person by whom the arrangements for the making of the sound
recording were made;

• (d) A cinematograph film- the person by whom the arrangements for the making of the film
were made;

(e) A broadcast- the first broadcaster;

• (f) A programme-carrying signal- the first person emitting the signal to a satellite;

• (g) Published edition- the publisher of the edition;

• (h) a computer program, which is not computer-generated- the person who exercised control
over the making of the program. A computer program, which is computer-generated- the person by
whom the arrangements necessary for the creation of the program were undertaken.

• 2. Eligibility Copyright subsists in the work (finished product), not the idea.

• 3. Originality The work must be original 3

• must not be copied from another work, but originated from the author.

• Originality refers to the original skill and labour in execution, and not to original thought or
expression of thought.

• Note that creativity is not required to make a work original.

• The work must emanate from the author himself and not be copied.

• It must be shown that some labour, skill and judgement were invested in the works to prove
originality successfully. The amount of this labour, skill and judgement depends on the case at hand. It is
equally important to note that team effort does not bar originality. • 4. Material form:

• There can be no copyright in an idea. a song or story still in the creator9s mind therefore will not
be eligible for copyright; and copyright vests only once the idea is reflected in any of the forms listed in
section 2(1).

• Limited duration of time;

• According to section 6 (1),

• Copyright conferred by section 3 or 4 shall endure for a period of 50 years:

• ✓ literary works 3from the end of the year the author died

• ✓ for other works- from the date of publication, performance, broadcast etc. Once the term of
copyright has expired the work falls in the public domain and anyone may freely copy it.

• The term of copyright is thus important when one has to determine whether copyright subsists
in a work.

• Rights comprised in copyright:

• The owner of a work protected by copyright may use the work as he wishes, he may exclude
others from using it w/o his authorization. Owner9s usage must however be with due regard to legally
recognized rights and interests of others. Rights bestowed on the owner are referred to as <exclusive
rights=.

• Original authors also have <moral rights=- these rights are inalienable. This is in addition to the
<exclusive rights= of an economic nature- these can be transferred to another e.g. licensing.
Authorization to use copyrighted work:

• is usually in relation to:

• copying or reproducing the work-

• most basic right performing the work in public Making a sound recording of the work

• Making a motion picture of the work

• Broadcasting the work

• Translating the work Adapting the work.

• Neighboring Rights:

• There exist rights related to or <neighbouring to= copyright. Referred to as <related rights=
Three kinds:

• -rights of performing artists

• -rights of producers and phonograms in their phonograms

• -rights of broadcasting organizations in their radio and television programs. • Limitation of

Copyright Protection:

• ❖ Temporal: does not exist indefinitely, there is a set duration.

• ❖ Geographic: protection is against acts done in that country restricted acts are dependent on
the laws of a country.

• ❖ Permitted use: fair use of works i.e. reproduction exclusively for personal and private use of
person reproducing works exceptions laid down by law: s15-24, s50 of Act, Berne Convention

Elements:

• To constitute direct infringement, there must be:

• ✓ Non-owner

• ✓ Who is not licensed by owner

• ✓ Does an act/ causes another to do an act (reproduction, copying, publishing, performance or

broadcasting)

• ✓ Exclusively vested in the owner of the copyright

• ✓ Towards a substantial part of a work

• ✓ No exceptions applicable Whatever form infringement takes- these elements must be

present.

To constitute indirect infringement as per section 29(2):

• a person who, without the license of the owner of the copyright:

• a) imports into Namibia an article for a purpose other than for his or her private and domestic
use;

• b) sells, lets or by way of trade offers or exposes for sale or hire in Namibia an article;

c) distributes in Namibia an article for the purposes of trade, or for any other purpose, to such an extent
that the owner of the copyright in question is prejudicially affected; or

• d) acquires in Namibia an article relating to a computer program,

Section 29: copyright infringement in Namibian Courts:

• Southern Sun Africa v Sun Square Hotel (Pty) Ltd (A 66/2016) [2018] NAHCMD
105 (23 April 2018)

• In that case, the Applicant, a South African company and an owner of the copyright
in original artistic works in the 8SUN SQUARE9 logo, registered in South Africa, sought
relief against the Respondent for copyright infringement, damages and royalties.

• The Applicant belonged to the Tsogo Sun group of companies operational since
1969 which provided hotel, gaming and related services in Africa.

• Whilst the respondent was SUN SQUARE HOTEL (PTY) Ltd, a Namibian
company, which provided hotel and related services in Oshikango, Namibia.

• The Applicants first became aware of the Respondent9s existence in July 2015
when the Applicants received photographs of the Respondent9s hotel signage, facilities
and guest amenities.

• The Respondent provided similar services to that of the Applicant and used a logo
identical to its logo as seen above. The applicants approached the Respondent
requesting the Respondent to change its name and to desist from using the Applicant9s
SUN SQUARE logo trade-mark and to cease reproducing and/or adapting the
Applicant9s original copyright works, proved fruitless.

• After such approaches, the Applicant launched an application, seeking an order in

the following terms: 81. An interdict restraining the Respondent from using the SUN
SQUARE logo trade mark, or any other name or mark that is confusingly and/or
deceptively similar to the Applicant9s SUN SQUARE logo trade mark. Case study 45 2.
• An interdict restraining the Respondent from reproducing and/or adapting the
Applicant9s original copyright works.

• The delivery-up of any goods bearing reproduction or adaptation of the Applicant9s

copyright works i.e. infringing copies, including but not limited to signage, stationary, staff
uniforms, guest amenities and marketing and advertising materials.

• Payment of reasonable royalties which would have been payable to the Applicant
under the circumstances by a licensee. 5. Payment of additional damages.

• The Court found that: The Applicant contended that the Respondent had, without
a license, reproduced its SUN SQUARE logo (i.e. its artistic works).

• In terms of s 2(1) of the Copyright Act, artistic works are eligible for copyright if
they are original. Copyright is conferred on an author of works which is eligible for
copyright.

• The work is considered to be original if it has not been copied from an existing
source and if its production required substantial (or not trivial) degree of skill, judgment or
labour.

Copyright is infringed when a person who without a licence from the owner of the
copyright does or causes any other person to do, in Namibia any act which the owner has
exclusive right to do, or to so authorize.

• There was no real dispute in that case that the Applicant was the author of the
works in question. It is also apparent from the evidence that the logo used by the
Respondent is a replica of the logo which the Applicant claimed copyright in.

• From the evidence, it was clear that the Respondent had reproduced the entire, or
almost the entire, works of the Respondent, and had thereby infringed the Respondent9s
copyright in the works in question.

• Having found that the Respondent had infringed the Applicant9s copyright, the
conclusion was clear that any goods bearing reproduction or adaptation of the
Applicant9s copyright works, which is in the possession or under the control of the
Respondent, were counterfeit goods, and should be delivered-up.
What constitutes a <substantial part=:

• The doing of an act in relation to a work shall, unless the context otherwise
indicates, be construed as a reference also to the doing of that act in relation to a
substantial part of that work 3 s 1 of Act It is thus sufficient to show copyright infringement
resulted in an 8substantial part9 of the work being reproduced, copied, published,
performed or broadcasted.

• Assessing 8substantive part9 Judged qualitatively, not quantitatively; A court may

infer infringement by comparing the copyright work with the infringing work and without
direct evidence of copying; It must be shown:

• Existence of sufficient objective similarity between works; Original work was the
source where infringing work was derived- causal connection- whether direct or indirect;
Ask: has defendant copied or is it original work?

• The Principle of Substantive similarity…

• This principle must be applied cautiously.

• Some subject matter of works may be common cause- i.e. legislative texts; these
are common property to all who write on the subjects related thereto.

• If similarities result from following an Act, not copying. Even coincidental use of
same ratio decidendi, submissions or paraphrasing may not constitute copying.

• Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 Briefly, in that case
Fax directories alleged the copying by respondent of a directory. As proof, they
highlighted that the respondent had copied about 28 fictitious entries from its directory.

• The court held: it was highly probable that many more entries were copied even
though extent of copying was difficult to prove. Copying was therefore substantial, even
if precise extent unknown- infringement.

Piracy:
• Copying of copyright materials for commercial purposes • ▪ Unauthorized
commercial dealing in copied materials

• ▪ There must be commercial gain:

• ▪ Subsequent sale or distribution of illegally reproduced work ▪ Usually through an

organized chain or distribution network ▪ NASCAM regulates this.

Interdict:

• Normal remedy for infringement where:

• ▪ The plaintiff9s copyright and breach is clearly established;

• ▪ There is no claim of right to act on part of defendant either because of existence

of a license or payment of royalty;

• ▪ The defendant has not given an undertaking not to repeat the infringement; • ▪
Provided it is unclear whether there is likelihood of a future infringement occurring; • ▪
Granted pendent lite, on a balance of fairness.

Unlawful Competition:

• The starting point is that competition is as indispensable for the operation of an

efficient free market economy which is essential to freedom of trade, occupation and
profession.

• Nonetheless it is limited; the former by the common law principles of unlawful

competition as a form of delict under the Aquilian action and the latter by the correlating
rights of others.

• However, it is also impacted by several statutes which, Include the IP Act and the
Competition Act, 2003 (Act No.2 of 2003).

• Occurs when there are two entities, with the same goal, and one of them conducts
itself in a manner which enables it to gain an unfair competitive advantage over the other
through unlawful means. In legalistic terms, it is the conduct of an entity which is
prohibited by law, carried out intentionally, which causes another entity damage.
• It is namely a remedy for those who have not registered their trademarks; but have
established their trademarks due to prolonged prior use. Unlawful competition is
recognised as a remedy under delict 3 an actio legis acquiliae for patrimonial loss. •
PLEASE NOTE THAT Unlawful competition has been prohibited in the following
international instruments that are applicable in Namibia, namely article 10bis of the Paris
Convention and article 39 of TRIPS.

• Elements of unlawful competition: • ▪ Conduct;

• ▪ Wrongfulness (unlawfulness) • ▪ Fault;

• ▪ Causation; • Damage.

• Unlawful competition vs. Acts of unfair competition: • Unlawful competition is a

common law infringement against intellectual property rights. Section 194 of the IP Act
specifically outlines the acts that constitute acts of unlawful competition. What is unlawful
about competition? Competition must be fair!

• The only thing that should determine the supremacy of goods should be quality,
and the demand and supply by consumers. Breaching the statutory and common law
rules of competition results in unlawful competition. READ FURTHER THE
COMPETITION ACT OF 2003. ▪

• Market economies=free competition

• ▪ Free competition satisfies supply and demand

• ▪ Consumers and economy benefit

• ▪ Competition cannot however go unregulated

• ▪ Acts of unfairness begin to emerge

• ▪ All participants in the market should therefore play by the same rules.

• ▪ Breach of these rules constitutes unlawful conduct

• ▪ It is therefore important that proof of unlawfulness is given

• ▪ Basic test? Public policy- boni mores This is an objective norm, a community9 s
sense of justice, good morals, manifested in public opinion

• ▪ Interests of the competing parties should be weighed

• ▪ Interests of society must be considered

• ▪ Morals of the marketplace, business ethics Certain forms of unlawful practices

are prohibited in terms of the Competition Act 2 of 2003 chapter 3&4 2. Unfair Competition
Practices Making false representations about a rival.

• ▪ Passing off.

• ▪ Intimidating a competitor.

• ▪ Unfair use of a competitor9s fruits and labour.

• ▪ Misuse of confidential information to advance one9s business at the expense of

competitor. 3.

Passing off

• This is the intentional or negligent misrepresentation that goods or services are

those of another or are associated with those of another causing the public to or likely to
be confused into believing that such goods or services are those of the other.

• It9s a species of unlawful competition and registration of a mark is immaterial. It

should be noted that passing off erodes a party9s <goodwill.

• In the case of Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty) Ltd 3

• Court stated that the delict of Passing-off is a representation by one person that
his business is that of another or that it is in some way or other associated with that of the
applicant.

• An applicant has the burden to prove on a balance of probabilities that there is

confusion or deception.

• In order for the Court to determine whether a representation amounts to passing-

off the Court has to enquire whether there is a reasonable likelihood that a substantial
members of the public may be confused into believing that the business of the applicant
is that of the respondent.

Elements:

• Goodwill or reputation associated with mark/brand Relates to the opinion of the

relevant section of society towards the product/service.

• The mark must in the mind of the public be associated with goods emanating from
that party.

• Reputation must have been in existence when the defendant entered market- mere
proof of large-scale advertising is not sufficient to establish reputation.

• The reputation must have been in existence at time the misrepresentation took
place.

• If a party uses another9s mark who appears to have ceased business, onus lies
on such party to prove that the mark retained a residual renown denoting its business. If
defendant relies on abandonment, that must be proved on a balance of probabilities.

• Misrepresentation:

• Deception resulting in damage/likely damage to goodwill Imitation of another rival

trader is not prohibited provided it is clear that goods/services are not those of the other.

• To determine passing off, comparison of goods/services of both parties must be

made. • In assessing the likelihood to cause confusion or deceive, court must have regard
to all the features of the goods in question and the kind of customer who is likely to buy
them (the ordinary purchaser).

Case:

Namib Mills (Pty) Limited v Bokomo Foods Namibia (Pty) Ltd (HC-MD-CIV-MOT-GEN-
2018-

00398) [2020] NAHCMD 100 (16 March 2020)

• Facts
• The applicant, Namib Mills, launched this application on an urgent basis seeking
an order to interdict the respondent, Bokomo, from selling vetkoek flour in the packaging
3 8the getup9, which the applicant claimed, appeared like its get-up of the vetkoek flour
and thereby passing off its vetkoek flour as that of the applicant.

• The applicant further sought an interdict restraining the respondent from allegedly
trading in contravention of the provisions of Section 194(1) of the Industrial Property Act.
The notice of motion was later amended and broadened the extend of the interdicts
initially sought, so as to include the applicant9s three flour products namely, cake, white
and brown bread flour produced and sold by the respondent.

• The applicant alleged that the respondent9s get-ups amounted to an unlawful

passing-off of its vetkoek, cake and bread flour as being connected or in fact being its
flour products. • The applicant further alleged that the respondent9s conduct contravened
the provisions of

Section 194(1) of the IP Act, by using get-ups similar to the applicant9s get-ups, for the
packaging of its range of products, thereby taking unfair advantage of its flour products
to its detriment and thereby misappropriating its get-ups.

• The applicants further alleged that the respondent used the same mustard yellow
on their packaging of the vetkoek flour. It is common cause that the applicant is the largest
grain processing company in Namibia. It mills and sells maize meal, wheat flour pasta
and similar products.

• The applicant9s get-up or pack design for its range of products has 8three
constituent characteristics9 which are: about two-thirds of the top of the pack is white; the
brand 8Bakpro9 is situated in the top third of the pack; a picture of either a cake or bread
appears in the middle of the pack; and the remaining third bottom of the pack has what is
referred to in the papers as an 8slash9 or a band in particular colour depending on the
type of product appearing in the picture.

• For instance, the slash colour for brown bread flour is brown, and for white bread
flour is blue, for cake is red and for vetkoek is mustard-yellow. It was pointed out that the
applicant applies the pack architecture across the range of all its products in order to
ensure consistency and brand reliability or loyalty in the minds of the consumers.

• Respondents Case in opposition to the interdicts sought, the respondent raised

four grounds of defence:

• Firstly, is contented that when the applicant complained about the alleged passing-
off, it commissioned a market survey which concluded that no passing was taking place.
• Secondly during 2017 it took a strategic decision to change all its flour products get-up
in phases. The first step was designing a new logo in order to build brand loyalty;
secondly, rebranding of its range of flour packs.

• Thirdly it decided to launch its own vetkoek flour, because it was losing market
share in respect of its white flour with the introduction of the applicant9s vetkoek flour for
the reason that the vetkoek vendors who used to buy its white flour to make vetkoek,
were buying the applicant9s vetkoek flour because it was better priced and the vendors
were made to believe the applicant9s vetkoek flour was made specifically to make
vetkoek;

• Fourth to ensure that its logo and its get-ups are distinguishable and distinctive
from the applicant9s logo and get-ups. The respondent is a Namibian company, known
as Bokomo.

Apart from producing and selling wheat flour in Namibia, the respondent also distributes
other products such as breakfast cereals, rusks and the likes.

• The parties are direct competitors in the market for wheat flour and other similar
products. The applicant markets and sells its products under the brand 8Bakpro9,
whereas the respondent markets and sells its products under the brand 8Bokomo9.

• It is common cause that the applicant is the dominant market leader while the
respondent is a follower. Towards the end of August 2018, the applicant, through its
lawyer, sent a letter to the respondent pointing out that the get-up of its (the respondent9s)
vetkoek flour is similar to the get-up of its (the applicant9s) vetkoek product which is likely
to cause confusion and deception amongst the consumers.
• The applicant thus demanded that respondent ceased selling its vetkoek product
in its current get-up and further demanded that the respondent should amend the get-up
of its vetkoek flour. The respondent refused to accede to the applicant9s demands.

• After the respondent received the applicant9s complaint that it was passing-off the
applicant9s products through the get-up, it commissioned a market survey conducted by

Vision Africa, a company specialising in market survey, in order to demonstrate that no

passing-off is taking place.

• The survey concluded that the consumers 8who think that (Bokomo) products are
imitations of (Bakpro) products are statistically insignificant9. With respect to the
applicant9s claim that its vetkoek flour is unique, Mr Hamm states that the respondent
caused an analysis of the applicant9s vetkoek flour to be conducted, which revealed that
the applicant9s vetkoek flour was none other than its white bread flour packed as vetkoek
flour.

• In this connection Bokomo confirms that the respondent9s vetkoek flour is also not
unique as it is also just white bread flour, however in the respondent9s case the packaging
clearly states that the content is white bread flour. • Issues:

• Whether the respondents committed the common law delict of passing-off?

• Whether the respondent traded in contravention of s 194(1) of the IP Act, by using

get-up for the packing of its range of flour products which takes unfair advantage of and
causes detriment to the applicant by misappropriating the get-up and/or substantial
imagery and elements of the get-up of the applicant9s range of products for its competitive
products Rules Unfair competition or unlawful competition 3 S 194 of the IP Act: 8Any act
of competition contrary to honest practices in industrial or commercial matters is
unlawful.9 • The court used Gillette Company v LA-Laboratories Ltd Gillette accused LA-
Laboratories of infringing their trademarks, they both sell razors either way the razors that
LA made were similar to those of Gillette.

• The question that was put to the ECJ by a factional court for advise was whether
the requirement in Article 6(1)(c) of Directive 89/104 (whose provisions are equivalent to
our section 194(1)) relating to the use of the trade mark by a third party within the meaning
of that provision must be in accordance with honest practices in industrial or commercial
matters. the condition of honest use constitutes in substance the expression of a duty to
act fairly in relation to the legitimate interests of the trademark owner.

Furthermore, that the use of the trade mark will not be in accordance with honest practice
in industrial or commercial matters when it is done in such a manner that it may give the
impression that there is a commercial connection between the reseller and the trademark
owner; that the use will also not be in accordance with honest practice if such use affects
the value of the trademark by taking unfair advantage of its distinctive character or repute.

• In Kerly9s Law of Trade Marks and Trade Names states the following with regard
to the approach to be adopted by the national courts in the European Union: 8The
assessment is an objective one, and the national court must carry out an overall
assessment of all the circumstances, and, in particular, assess whether the defendant
might be regarded as competing unfairly with the proprietor of the trade mark.

• In the UK the test has been formulated essentially as follows: would reasonable
members of the trade concerned say, upon knowing all the relevant facts that the
defendant knew, that the use complained of is honest?

• Although somewhat simplistic, there is much to be said for this approach, as long
as all relevant factors are taken into account.9 In Schultz v Butt whether the appellant
was competing unfairly with the respondent by making a model of the hull of a ski-boat
designed by the respondent, the respondent9s design having existed over a long period
of time with considerable expenditure of time, labour and money.

• The court held that the making of such a mould by the appellant to sell boats in
competition with the respondent was unfair and unjust. Passing off in the Mega Centre
Talisman Case The wrong known as passing-off is constituted by a representation,
express or implied, by one person that his business or merchandise, or both, are, or are
connected with, those of another…
• Where they are implied, such representations are usually made by the wrongdoer
adopting a name for his business which resembles that of the aggrieved party's business;
and the test then is whether in all the circumstances the resemblance is such that there
is a reasonable likelihood that ordinary members of the public, or a substantial section
thereof, may be confused or deceived into believing that the business of the alleged
wrongdoer is that of the aggrieved party, or is connected therewith.

• Whether there is such a reasonable likelihood of confusion or deception is a

question of fact to be determined in the light of the particular circumstances of the case.
(authorities omitted) Passing off is a form of wrongful competition.

• It is unlawful because it results, or at any rate is calculated to result, in the improper

filching of another's trade and an improper infringement of his goodwill because it may
cause injury to that other's trade reputation.9

• In Sparletta Case whether the get-up used by the respondent on its cans of PINE
SIP is so similar to that used by the applicant on its cans of PINE-NUT that a substantial
number of purchasers is likely to be deceived or confused into believing that the PINE
SIP product is the product of the applicant or is, in some way or another connected or
associated with the applicant9s product. The use of different names in otherwise similar
get-ups does not necessarily exclude the probability of deception; regard must be had to
all the circumstances including the degree of similarity of the get-ups without the names,
and the precise manner in which the names are used. • Application:

• The court adopted the ECJ case regarding the stance of honest practice, court
stated 8that it is a well-founded development of our law relating to the concept of honest
practice in industrial or commercial matters.9

• In terms of the IP Act The burden is on the applicant to prove, on a balance of

probabilities that respondent9s act of competition is contrary to honest practice.

• The test to be applied, as I indicated earlier, is objective, that is: would reasonable
members of the trade, upon knowing all the relevant facts, say that the respondent knew
that the conduct complained of is honest?
• In the courts view, the respondent9s version, assessed against the applicant9s
version, cannot be said to be false or implausible and thus liable for rejection out of hand.

• This is said for a number of reasons: First, on the applicant9s own version the
respondent alerted the applicant that it intended to introduce new packaging. It would not
have done so if it was not acting honestly.

• Furthermore, it is not in dispute that the introduction of vetkoek flour by the

applicant caused the respondent to lose market share of the white bread flour of which it
had been a market leader. And perhaps more importantly, its decision to change its pack
design has, in my view, been fully and satisfactorily explained.

• It would have been odd or strange, and in fact suicidal to the respondent9s
business if it did not introduce vetkoek flour to compete side by side with the applicant9s
vetkoek flour. It would be recalled that the applicant specifically alleges that the
respondent has 8adopted a get-up with similarities to the Bakpro range and more
importantly has appropriated the mustard-yellow colour.

• Further, that it is indisputable that a colour can form an integral part of a brand9s
identity. The applicant went as far as to allege that in the case of the mustard-yellow
colour applied to vetkoek flour, it means and/or signifies the applicant9s product. As
Professor Wadlow has said on the subject matter in his book, The Law of Passing-Off
(1990) namely that:

• 8It is increasingly recognised that certain colours are more appropriate than others
for packaging of particular goods. Yellow for lemon flavoured drinks, brown for potato
products and green for vegetables such as peas and beans9 Both the Bokomo and
Bakpro logos are situated at the top of the packaging. In the case Bokomo, the logo is
red whilst the Bakpro logo is blue.

• The Bokomo logo is written in capital letters whilst the Bakpro logo is written in
both upper and lowercases, in a cursive-like font. Both Bokomo and Bakpro display
images of the finished products either a bread or cake or a vetkoek.
• In both cases the bottom of the packs is the blue a colour in respect of the white
bread flour; a brown color in respect of the brown bread flour; red color in respect the
cake flour; and mustard-yellow in respect of the vetkoek flour.

Both packs, say the 2.5 kg, appear equal in sizes. Those are the main features visible at
the distance. Having done that the court was of the view that the differences in the getups
described are significant and sufficient enough to differentiate the get-up of the applicant
from the get-up of the respondent.

• My over-all conclusion is that the differences between the get-ups are sufficiently
apparent, obvious, distinguishable and distinctive from each other and there is no
reasonable likelihood of confusion between the two get-ups.

• The court also noticed similarities in the respective packs. Those are the dominant
white background; the brown colour at the bottom of the pack in respect of brown bread
flour; the blue colour at the bottom of the pack in respect of the white bread flour; red in
respect of the cake flour; and mustard yellow in respect of the vetkoek flour.

• However, the differences are overwhelming as opposed to the negligible

similarities between the respective get-ups. I am therefore of the considered view that
there is no reasonable likelihood that even an average customer would be confused by
the get-ups. It follows therefore that, there is no substance in the applicant9s allegation
that respondent has adopted or appropriated the essential elements of the applicant9s
range of products.

• A further factor which militates against the applicant’s allegation that the respondent
acted contrary to honest practice in the trade is the fact that the respondent is open and
transparent about the content or make of its vetkoek flour, namely that it is a mere white
bread flour 8packed and sold as vetkoek flour.

• The narration of the content appears on the packaging for everybody to see and take
note of. Under those circumstances I am of the considered view that the respondent
cannot be said not to act in the manner contrary to honest practice in the market place.
• Taking all these facts into consideration, I am of the view that no reasonable
members of the wheat flour industry knowing all the facts that the respondent knew at the
relevant time, would have concluded that the respondent9s conduct complained of by the
applicant is contrary to honest practice in the wheat flour market.

• It follows therefore that the respondent9s version prevails. Accordingly, the

applicant9s cause of action based on the IP Act must fail. In terms of Passing off The
issue for decision under this cause of action is whether the respondent9s use of the get-
up on its flour products carries the likelihood that a substantial number of purchasers of
its products is likely to be deceived or confused into believing that the respondent9s flour
products are the products of the applicant or are in some way or another connected to or
associated with the applicant9s products.

• The burden of proof is on the applicant to show a reasonable likelihood of

confusion amongst a substantial numbers of the public who may be confused into
believing that the business of the respondent is that of the applicant or is closely connect
to the applicant9s business. In other words, the inquiry is wide in the case of alleged
passing-off than in the case of a statutory infringement or breach.

• It is common ground that the applicant did not lead evidence of confused or
deceived customers from the marketplace. The Court stated <I interpose here to express
my grave doubt as to the existence of an 8vetkoek lady9 who does not know or cannot
differentiate between Bokomo, Bakpro or Snowflake flours. = There remains one issue
for consideration raised on the papers by the respondent concerning the applicant9s
alleged 8innovative product9, being the mix of its vetkoek flour. Based on the description
of the nutritional information on the package, the content of pack is merely white bread
flour.

• This fact has been admitted by the applicant. However, the applicant contends that
it was a mistake which has since been rectified. In addition, the respondent submitted,
that it carried out an analysis of the ingredients of the applicant9s vetkoek flour which
revealed that white bread flour forms part of the ingredients.
• The applicant concedes that its vetkoek flour is a mix of bread flour and cake flour
however the ratio of the mix is the trade secret. I find the evidence before me to be rather
inconclusive to make a far-reaching finding that the applicant approached the court with
dirty hands.

• This is also in light of my findings in respect of both applicant9s claims, namely

that the applicant failed to make out a case in either claim. It would suffice to just observe
that despite the serious allegations of falsification and deception to customers, the
applicant did not take the court into confidence with regard to its alleged trade secret.

• There are procedures and ways in place to determine the issue of trade secret in
legal proceedings, without revealing the trade secret. The applicant did not offer to follow
those procedure as a sign of its honesty and transparency.

• Furthermore, in my view both ethical and moral considerations dictate, that as a

responsible corporate citizen, there is an obligation on the applicant to be honest and
transparent to its customers to at least, as a bare minimum, disclose to its customers that
its so-called vetkoek flour is a mix of white flour and cake flour without necessarily
disclosing the ratio of such mix.

• But, as I said, this was not an issue this Court was called upon to determine in the
present matter. The matter is best left to the conscience of the applicant and its ethical
obligation toward its customers • Conclusion:

• Application dismissed

Sources of IP:

National Instruments:

• At the moment, we only have three nationally crafted sources of Intellectual

property law in Namibia. They are all contained in statutes, i.e. they do not originate from
the other sources of sources operative in Namibia such as customary law.
• Namibian Constitution Act 1 of 1990 Namibia attained its independence on 21
March 1990 with the birth of the new Constitution. This new Constitution became the
supreme law of the country and all acts committed in the country should be in line with
the Constitution.

The constitutional provisions that are of particular relevance to this course are Articles 16
and 144. Article 16 guarantees the right to property, it states as follows: • Article 16
Property

• (1) All persons shall have the right in any part of Namibia to acquire, own and
dispose of all forms of immovable and movable property individually or in association with
others and to bequeath their property to their heirs or legatees: provided that Parliament
may by legislation prohibit or regulate as it deems expedient the right to acquire property
by persons who are not Namibian citizens.

• (2) As seen above, the article starts off as a broad ranging statement of property
rights, not specifically excluding intellectual property rights, nor specifically including that
category of rights. Perhaps at the time of the time of drafting, the drafters were unaware
of the concept of intellectual property and intellectual property rights. In the absence of
specific reference in the Constitution, it is important to interpret the general terms of
property stated therein to extend to intellectual property.

• In light thereof, Article 16 is the appropriate starting position for interpreting

intellectual property rights under our Constitution.

• Article 144 of the constitution states: Unless otherwise provided by this

Constitution or Act of Parliament, the general rules of public international law and
international agreements binding upon Namibia under this Constitution shall form part of
the law of Namibia.

• The article therefore provides constitutional authority for the national application of
international agreements relating to intellectual property in so far as Namibia is a
signatory thereto.

• Copyright and Neighboring Rights Protection Act 6 of 1994:

• The Act came into operation in May 1994. The main objective of the Act as
recorded in its preamble is to provide for the protection of copyright and performers9
rights, and to provide for matters incidental thereto.

• The 1994 Act was amended in 2001, the recognition and protection of traditional
knowledge and expression of folklore was one of the motives behind the amendments.

• The Ministry of Information and Communication Technology is the custodian of the

Act.

Section 2 of the Act sets out the numerous works that are eligible to copyright protection:
• (a) literary works;

• (b) musical works;

• (c) artistic works;

• (d) cinematograph films;

• (e) sound recordings;

• (f) broadcasts;

• (g) programmer-carrying signals;

• (h) published editions; and

(I) computer programs. The same section19 further goes on to mention that a work shall
not be ineligible for copyright by reason only that the making of the work, or the doing of
an act in relation to the work, constituted an infringement of copyright in any other work.

• Industrial Property Act 1 of 2012 & its subsequent regulations:

• The Industrial Property Act, 2012 (Act No. 1 of 2012) was signed into law by the
President on February 28, 2012, and entered into force on August 1, 2018, according to
the Government Notice No. 113 of 2018.
• The Industrial Property Regulations were published in the Namibian Government
Gazette on 1 June 2018. The Act repealed legislations pertaining to patents, trademarks,
designs, namely, the Trade Marks Act, Act No. 48 of 1973, The Patents and Designs Act,
Act No. 9 of 1916, the Patents and the Designs and the Trademarks and Copyright
Proclamation Act, Act No. 17 of 1923.

• In the same vein, the Act consolidates the same laws on Trade Marks, Patents
and Industrial design. The Act provides for significant changes to IP legislation in Namibia
including inter alia:

• (I) the implementation of the international registration system for patents, industrial
designs and trademarks;

• (ii) the establishment of a 20-year patent term;

• (iii) the introduction of a substantive examination system for patents;

• (iv) the protection of well-known trademarks under Article 6bis of the Paris
Convention and the recognition of the registration of collective marks;

• (v) the reduction to three years of the non-use grace period for trademarks; and
(vi) the creation of the Industrial Property Office and the Industrial Property (IP) Tribunal.

Regional Instruments:

• The Namibian Republic is also part of the African Regional Intellectual Property
Organization (ARIPO), that was created as a part of article 3 of the Lusaka Agreement in
1976. ARIPO has two Protocols, the Harare Protocol on Patents and Industrial Designs
and the Banjul Protocol on Marks.

• The most recent addition protocol in addition to the above is the Swakopmund
Protocol on the Protection of Traditional Knowledge and Expressions of Folklore. The
Protocol was adopted within the framework of ARIPO Adopted by the Diplomatic
Conference of ARIPO at Swakopmund (Namibia) on August 9, 2010.

International Instruments:
• International agreements forms part of our law by virtue of article 144 of the
Namibia Constitution.

• Namibia is member of the World Intellectual Property Organisation, and by virtue

thereof is signatory to a number of international treaties and instruments which she
incorporated in the new Industrial Property Act abovementioned.

Most of our national instruments on intellectual property relate directly to the level of
compliance to these instruments. On the wider international are they are Madrid
Agreement concerning international registration of marks, the Patent Cooperation Treaty,
Hague Agreement, Paris Convention and the TRIPS agreement falling under the World
Trade Organisation.

• Namibia is also a signatory to the Beijing Treaty on Audiovisual Performances. The

treaty provides for the intellectual property rights of performers in audio-visual
performances.

Namibia has unfortunately not yet ratified nor domesticated the treaty.