Snapshot of our Practice
Our IP & Technology Practice, which includes a vibrant Telecommunications practice, has been busy advising on a range of transactions in IP and technology over the past month, and we have been briefed on several IP transaction and advisory matters as well as Fintech, Crypto and payments matters. We have also been busy assisting entities that are data controllers and data processors with registration with the Office of the Data Protection Commissioner (ODPC).
Updates from Regulatory Bodies
Office of the Data Protection Commissioner
Registration of data controllers and data processors commences
The registration process of data controllers and data processors officially commenced on Thursday, 14 July 2022. The registration requirement arises under Section 18 of the Data Protection Act (No. 24 of 2019) (DPA) and the Data Protection (Registration of Data Controllers and Data Processors) Regulations, 2021. As such, all public and private organizations and individuals processing personal data of data subjects are now required to be registered with the ODPC. Applications for registration are submitted electronically on a designated portal on the ODPC’s website.
The registration process, inter alia, requires data controllers and data processors to outline the data processing activities being undertaken and the corresponding safety measures to ensure data privacy. It is paramount for data controllers and data processors to:
- understand their obligations under the DPA and its accompanying regulations and consequently to implement requisite measures to meet these obligations;
- ensure that information captured in the registration form and accompanying documents is accurate and sufficient; and
- continuously ensure that they are fulfilling their ongoing obligations under the DPA and its regulations, including notifying the ODPC of any changes to the registration particulars and submitting timely renewal applications.
Processing personal data without being registered with the ODPC attracts a maximum fine of Kenya Shillings three million (KES 3,000,000.00) or imprisonment for a maximum term of ten (10) years or both.
ARIPO
Republic of Cape Verde becomes full member state of ARIPO
On 14 July 2022, the Republic of Cape Verde deposited instruments of accession to ARIPO and its protocols at a ceremony held at the Cape Verde embassy in Geneva, Switzerland. By virtue of the accession, the Republic of Cape Verde became the 22nd ARIPO Member State and also acceded to the Lusaka Agreement on the establishment of ARIPO as well as the Harare, Banjul, Swakopmund and Arusha Protocols. The accession also marks Cape Verde’s official shift from an observer state to a full member state.
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WIPO
Assemblies of the Member States of WIPO
The Sixty-Third Series of Meetings of the Assemblies of the Member States of the World Intellectual Property Organization (WIPO) took place at the WIPO headquarters in Geneva, Switzerland from 14 to 22 July 2022. In compliance with health and safety measures related to the COVID-19 pandemic, the Assemblies were held in a hybrid format. The Assemblies consisted of 22 different assemblies of Member States and of the Unions administered by WIPO.
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Developments in the Intellectual Property Arena
Trademarks
Hashtags using trademarks deemed to be promotion, not infringement
A recent decision issued by the Taiwan Intellectual Property and Commercial Court (IPC Court) has ruled on the issue of whether promotion of products on social media through the use of a trademark as a hashtag constitutes trademark infringement.
In the case, the plaintiff, OP Bicycle Co Ltd, asserted claims of trademark infringement and false advertising against the defendant, Marechal Asia, for its use of various hashtags on social media, including ‘#lightweight’.
The IPC Court held that, where another’s trademark is used merely as a hashtag for promotional purposes, it is not being used to identify the source of the goods or services, and therefore, does not constitute trademark infringement since the defendant is not using the hashtag as a trademark. Moreover, the court pointed out that e-commerce consumers tend to be sophisticated about the fact that hashtags are merely marketing or commercial tools used to direct consumers to particular promotions and are therefore not likely to cause confusion.
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Source: World Trademark Review (21 July 2022).
Bowmans comments: This ruling highlights the continuing evolution of trademark law and its interplay with e-commerce and social media platforms. The increased popularity of such platforms as channels for brand promotion has necessitated the need for clarity on the instances where the use of a brand’s trademark as a hashtag in a post would be deemed to be trademark infringement.
Generally, if the use of a registered trademark in a hashtag suggests that there is a connection or link with the trademark owner, such use creates a likelihood of confusion or association with the trademark owner, thereby being more likely to be construed as infringement. However, infringement may not be held to occur where the post containing the hashtag trademark simply promotes the intended social media message or promotes the user’s own goods or services.
Patents
European Commission seeks views and input on compulsory licensing of patents
The European Commission (the Commission) has launched a public consultation on the compulsory licensing of patents, inviting interested parties to express their views on the topic. In particular, the Commission is looking for suggestions on how to build a more efficient and coordinated compulsory licensing scheme in the European Union, reduce current fragmentation and improve Europe’s resilience in managing crises such as the COVID-19 pandemic. The consultation also gathers views on improving harmonization, coordination between EU member states and coordination with the Commission.
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Source: European Commission (7 July 2022)
Bowmans comments: Compulsory licensing of patents allows a government to authorize the use of a patented invention without the consent of the patent holder. Compulsory licensing regimes play a key role in tackling emergencies as they help provide urgent access to key products and technologies.
Compulsory licensing has recently become the subject of debate in light of the 17 June 2022 announcement of the MC12 TRIPS waiver decision that temporarily removed patent barriers for COVID-19 vaccines. Crucially, the compulsory licensing leeway encompassed under the TRIPS waiver only covered vaccines, thereby leaving out patents on treatments and tests.
In this respect, we reiterate that while compulsory licenses are a necessary tool to deal with access to essential pharmaceutical supplies, these regimes are a last resort mechanism and should only be used in case of failure of voluntary agreements. As such, it is important to ensure that such regimes do not inadvertently disincentivize innovation in the pharmaceutical field.
Trade Secrets
Research finds that trade secret protections benefit small firms and consumers
New research published in the Journal of Financial and Quantitative Analysis has found that enhancing proprietary knowledge protection helps small, young and “shallow-pocket” firms maintain their competitive advantage, grow their market share and develop better new products – ultimately benefiting consumers.
This finding further contributes to the debate regarding whether proprietary knowledge protection helps or hinders market competition. The study, conducted by the University of Sydney Business School, found that countries which adopted laws to protect proprietary knowledge, i.e., trade secrets, saw increased sales performance and the entry of more companies into the stock market.
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Source: SSRN, Journal of Financial and Quantitative Analysis, Forthcoming (15 July 2022)
Bowmans comments: This research gives further credence to the notion that small and medium-sized enterprises (SMEs) are more likely to rely on proprietary knowledge to protect their innovations. This is mainly attributable to the fact that trade secrets do not require expensive or time-consuming procedures as with other forms of IPR, e.g., patents. Rather, trade secrets complement existing contractual and security measures. As such, in light of their importance among SMEs, which account for the majority of businesses worldwide and which are important contributors to employment creation and global economic development, policymakers in different jurisdictions should take an active role in enhancing legal protections for trade secrets.
Technology, Media and Telecommunications
Kenya
Tiktok announces initiatives to curb platform misuse this election season in Kenya
Tiktok has announced that it is putting in place a number of strategies to curb misinformation, hate speech and the spread of fake news on its platform amidst the forthcoming general elections in Kenya. In a media engagement on Thursday, 14 July 2022, the video-sharing platform stated that it was working with various stakeholders, including the government, to ensure that information is disseminated responsibly.
One of the initiatives that was announced is an Elections Hub, which is integrated within the Tiktok app to help spread factual and authoritative information about the general election. Similar strategies have proven beneficial to the electoral process. In South Africa, for instance, the in-app Election Hub set up for the 2019 general election was used by over 90 million TikTok users.
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Source: TechTrends KE (15 July 2022)
Bowmans comments: This announcement is welcome in light of the recent reports by various rights groups that social media users in Kenya are being exposed to political disinformation, hate speech and incitement ahead of the upcoming general elections. For instance, a recent report by the Mozilla Foundation highlighted a series of disinformation campaigns on the TikTok app. While hate speech is an offence under the National Cohesion and Integration Act (No. 12 of 2008), proving online hate speech through electronic evidence generally tends to be difficult, thereby allowing such content to prevail on online platforms. As such, platforms should pursue similar initiatives and take active steps to combat disinformation.
Africa
ECOWAS Court declares Buhari Twitter ban unlawful
Socio-Economic Rights and Accountability Project (SERAP) and 176 Nigerians have won the Twitter ban case against President Muhammadu Buhari-led administration. The ECOWAS Court declared the suspension unlawful and cautioned the Nigerian government against a repeat.
In 2021, following the deletion of a tweet by President Buhari, the Minister of Information, Lai Mohammed, announced the suspension of Twitter in Nigeria. The government threatened to arrest and prosecute users, while the National Broadcasting Commission asked all broadcast stations to stop citing Twitter as a news source. In the judgment, the court held that the suspension of Twitter is unlawful and inconsistent with the provisions of Article 9 of the African Charter on Human and Peoples’ Rights and Article 19 of the International Covenant on Civil and Political Rights.
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Source: Daily Post (14 July 2022)
Bowmans comments: The ruling by the ECOWAS Court serves to further underline the need for democratic states to appropriately weigh the impact of their decisions on fundamental human rights and freedoms. This decision also underscores the central place of media platforms in facilitating the exercise of the fundamental right of freedom of expression.
Global
Australia privacy watchdog probes retail giants Bunnings and Kmart over use of facial recognition technology
Australia’s privacy watchdog has launched an investigation into two retail giants over their use of facial recognition technology.
Choice, a consumer group, revealed last month that Bunnings and Kmart were using the technology – which captures images of people’s faces from video cameras as a unique faceprint that is then stored and can be compared with other faceprints – in what the companies say is a move to protect customers and staff and reduce theft in select stores.
Choice reported the two companies along with ‘The Good Guys’ to the Office of the Australian Information Commissioner (OAIC), raising questions over how people’s personal information was being handled through the technology. The OAIC announced on Tuesday, 12 July 2022, that it had decided to launch an investigation into the personal information handling practices of Bunnings and Kmart in how they use facial recognition technology in stores, and whether it was consistent with Australian privacy law.
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Source: The Guardian (12 July 2022)
Bowmans comments: This decision highlights the increasing focus taken by privacy regulators worldwide against the collection of biometric information. In recent times, a number of firms in the fast-food, logistics and technology space have faced legal action or increasing regulatory oversight over how they collect, store, and use customer and employee biometric information. While public interest in biometric data privacy is generally increasing, the ongoing flurry of legal action and regulatory oversight also highlights the need for regulators to issue further guidance on the lawful collection and use of biometric information.
Cryptos, AI, Blockchain +
UN report finds that Kenya has the largest share of its population with cryptocurrencies in Africa
A report by the United Nations Conference on Trade and Development (UNCTAD) says that 8.5 percent of Kenya’s population, or 4.25 million people, own cryptocurrencies. This places Kenya ahead of developed economies such as the United States, which is ranked sixth with 8.3 percent of its population owning digital currencies. War-torn Ukraine is ranked top, with 12.7 percent share of its population with cryptocurrencies, followed by Russia (11.9 percent), Venezuela (10.3 percent) and Singapore (9.4 percent). South Africa and Nigeria are ranked eighth and ninth globally, with 7.1 percent and 6.3 percent of their populations owning digital currencies respectively.
UNCTAD linked Kenya’s rising adoption of digital currencies to low fees charged by crypto exchanges, speed in sending remittances and Internet access. The crypto market, known for its wild price swings, has shed more than half of its value since November last year as investors pulled out money from riskier assets amid worries over soaring inflation and rising interest rates.
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Source: Business Daily (5 July 2022)
Bowmans comments: This announcement highlights the increased popularity of cryptocurrencies among Kenyan users despite the numerous losses suffered during the continuing global recession. Despite also facing a degree of informal regulatory restrictions from sector regulators such as the Central Bank of Kenya and the Capital Markets Authority, digital currencies still prove popular, especially in light of the increasing cost of traditional monetary remittance services.
