Who is to blame for growing trademark infringement cases?

GRAIN MILLERS Bakhresa Group and Azania Group had a protracted legal battle over ‘Azania’ brand name, a suit whose significance should have left an impression on every other firm or individuals seeking to have a trademark. But no. Hair dye producers Minintco Ltd and Dresoceco Ltd were into own legal punches. And before one could think we have seen the last of this kind of standoff, Innscor International Ltd versus Chicken Inn Ltd and Pizza Inn Ltd are hitting hot and cold over a brand. A rise in trademark and brand name infringement cases in commercial courts in the recent past is leading many to imagine the existence of underlying weaknesses in the legal framework. Most cases stem from use of trademarks or brand names of renowned firms (often international) by local companies in an attempt to take advantage of the fact that they were previously not registered and protected in the country. In a way, the ‘stealing’ of trademarks is often with the intention to grow their ventures riding on renowned brand names. For instance, a local entrepreneur had previously named their hotel ‘Four Seasons Hotel Kigali’ despite not having any affiliations to the Canadian international luxury hospitality company. Such instances have seen Rwanda Development Board (RDB) take the flak for not doing due diligence when registering trademarks and brand names. According to Article 134 of the 2009 law on the Protection of Intellectual Property, a mark can only be registered as a trademark if it is distinctive, not imitative and not confusing to the general public. A mark is considered distinctive if it distinguishes the nature, product or service of a company from other companies. Article 137 of the same law states that marks that could mislead the public or traders on the origin and characteristics of the products cannot be registered. “A mark is confusing if it is likely to mislead the public or traders, particular as regards the geographical origin, quality, nature or characteristics of finished products or services under consideration,” the law says. However, contrary to the intellectual property law, some outright imitations of renowned trademarks and brand names were registered, leading to legal battles. But RDB says that it is guided by the legal framework as well as conventions that uphold principles such as ‘first file, first protection.’ Blaise Ruhima, the division manager for intellectual property at RDB, said in the process of registration of trademarks they do due diligence, including publishing the applications on public platforms to allow for opposition. The applications are published monthly on the Industrial Property Journal available on the RDB website and they give the public 60 days to file a protest. “From January, we also started publishing these applications in the Official Gazette. When they get published, anyone anywhere in the world can see it, and can make an opposition using lawyers,” Ruhima said. RDB speaks out on court cases Louise Kanyonga, the registrar-general at RDB, said most of court cases are linked to issues of territorial principle. “In a lot of the disputes we have seen concerns that have been raised about due diligence, even if we were aware that there is an intellectual property right registered, say in Botswana, and is not registered in Rwanda, it cannot be protected in Rwanda. That is one of the key messages that we need to get out there,” she said. Kanyonga said the same principle requires that Rwandan corporations seeking to enter regional and global markets protect their intellectual property in the markets they are keen on entering. “Even for our local businesses, if they plan on doing business regionally and globally, they should protect their intellectual property in countries where they intend to do business,” she said. Kanyonga said local businesses seeking international protection of their intellectual property across various markets in the world, can do so through RDB. “You can come to RDB, file for a local application and, using the international systems, indicate the various countries where you want your intellectual property protected,” she said. The only exception to the territorial principle is ‘renowned’ marks, which is often contentious and is determined by courts. The registrar-general’s office has in recent years seen an increase in the number of intellectual property applications and registrations, showing an increase in awareness. In 2016, the office received and registered over 500 local trademark applications and 448 international ones. In the same year, there were 96 patent registration applications, of which only five were local, while out of 97 industrial design registrations, only five were local. Copyright registrations average about 300 annually. The registrar-general said the increasing trend of international applications shows awareness by international firms seeking trademarks protection in Rwanda. “This is why you see a trend of international businesses being registered here as they understand that they can only have their intellectual property protected if it is registered in that territory,” she said. Silver lining in court cases The disputes and court cases, officials say, have provided an opportunity for the Government to learn on where the system requires strengthening. RDB chief executive Clare Akamanzi said the court cases are a good test for the systems in place and show that there are legal frameworks on the issue. “It shows that there is a way to address them and enforce rights. For RDB, it is also a way of learning since this office was only put in place in 2009. It teaches us a few things about how we do certain things right,” she said. Legal and marketing perspective Legal minds say that, from most of the cases that they have handled, low levels of innovation and intentions to capitalise from other people’s ideas are to blame. Safari Kizito, the managing partner at Bona Fide Chambers, who has handled a number of copyright infringement cases, blamed the rise in cases on lack of innovation and the fact that few businesses value intellectual property. “People do not want to start from scratch and want fruits from trees they did not plant. You find people travelling to other countries, see trademarks they like and want to replicate the same here,” Kizito said. He said the situation has been made worse by the fact that most business people prefer to battle it out in court as opposed to settling amicably. He said that the country’s ability to handle disputes in the area can be a make or break in terms of attracting investors since most are interested in seeing how intellectual property-related cases are handled. Allan Odipo, a marketing consultant, said the growing middle class, refined tastes and preferences as well as increased disposable incomes make Rwanda an easy target for businesses trying to imitate reputable brands. editorial@newtimes.co.rw

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Who is to blame for growing trademark infringement cases?