International Trademark Association (INTA) Interview

Blockchain and Cryptocurrency in Africa: Are International and Home-Grown Brands getting ready?

Even though Africa seems like a late bloomer when it comes to the adoption of cryptocurrencies, the continent is widely converted to mobile money, representing over 50 percent of the world’s mobile money services.

For instance, a Google search trend shows that the region with the highest interest in the term  “bitcoin” is Africa and particularly Kenya, Nigeria, and South Africa—even though this interest is predominantly limited to trading activities on exchanges.

Brenda Kahari, founder and partner of the firm B.W. Kahari, has been a lawyer specializing in intellectual property (IP) and commercial transactions in Harare, Zimbabwe for more than 30 years. Thanks to her deep knowledge of the economic, social and, of course, legal dynamics in Africa, she gives us keys to understand cryptocurrencies and the applications of blockchain in this continent, as well as discusses the legal and IP challenges and opportunities they represent

Extracted from: https://www.inta.org/Programs/Pages/Podcasts.aspx

THE MADRID PROTOCOL IN ZIMBABWE: 3 years on!

Zimbabwe became a member of the Madrid System on the 11^th of December of 2014 and the Protocol entered into force on the 15^th of March 2015. On the 15^th of March 2018 the Madrid Protocol reached three (3) years in operation. The Trademarks (Madrid Protocol) Regulations were published in the Government Gazette of Zimbabwe through the Statutory Instrument 39/2017, dated 13 March 2017, bringing the Madrid Protocol into operation in Zimbabwe. Zimbabwe was the 94^th member of the Madrid System when it acceded to the Madrid Protocol The Madrid Protocol now has 100 members. This indicates that the Madrid Trademark System is continuing to grow and expand to include countries throughout the world.

Initially, there were worries regarding the enforceability of the Madrid system in Zimbabwe as the national laws had not been amended to incorporate Madrid Protocol and the regulations for implementation had not been published. However, the relevant laws and regulations are now in place and Madrid Protocol has been incorporated into and will be enforced under Zimbabwe laws.  Although there remains some technical issues, such as, broad band capacity, digitalization and systems compatibility, the Madrid System in the Zimbabwe Trademark Office has evolved over time and these issues are being sorted out. Our office was the first to file an application for International Registration with the Zimbabwe Trademark Office as the office of origin, designating countries, including EU, USA, Canada to name a few. The trademark has now been registered using the system in a number of countries through the WIPO International Bureau.

Should you require further explanation or assistance, please do not hesitate to contact us.

ZIMBABWE: What you need to know about Plant Breeders’ Rights: procedure and requirements?  

Plant breeders’ rights (PBR) in Zimbabwe, also known as plant variety rights (PVR), are rights granted to the breeder of a new variety of plant that give the breeder exclusive control over the propagating material (including seed) and harvested material (cut flowers, fruit, foliage) of a new variety for 20 years from the date of grant and renewable for an additional five years thereafter subject to justification by the applicant and the Registrar’s discretion.

As with other intellectual property rights PBR’s enable the breeder to choose to become the exclusive marketer of the variety, or to license the variety to others. In order to qualify for these exclusive rights, a variety must be new, distinct, uniform and stable and has a suitable denomination.

This conditions are explained as follows:

• New.
• Distinct.
• Uniform.
• Stable.
• Denomination.

The largest organisation in the world that deals with the administration of Plant Breeders Rights is the Union Internationale pour la Protection des Obtentions Végétales (UPOV). Some time ago, the Zimbabwe government amended its legislation to allow membership in UPOV. However, the government had failed to satisfy certain prerequisites to allow its membership. Accordingly, Zimbabwe is not a member of UPOV until such time as all the prerequisites are satisfied. However, registrations for protection of plant breeders rights are permitted under the Plant Breeders Rights Act and the Seeds Act.  Moreover, it is important to note that even though Zimbabwe is not yet a member of UPOV, the UPOV guidelines are followed. The following is a list of some of the requirements that need to file an application for Plant Breeder Right’s in Zimbabwe:

• The completed application forms.
• The DUS report (Distinctness, Uniformity, & Stability) from the country of Origin.
• Consent Form from the respective Plant Breeder.
• The completed and Power of Attorney.
• Photographs of the various type of seed, plant, flowers and or fruit.

Once the Plant Breeder Rights application forms have been completed, they are filed together with an application fee of USD $1,000.00 per application. If the application passes the examination process then the next steps are the publication stage and objection period, the latter is three (3) months.

ARIPO: Changes to the Harare Protocol  

Requirement to request substantive examination. As you will recall, in our E-news Flash in 2017 we informed you that ARIPO had made it mandatory to file a request for substantive examination for every patent application. Patent applications are now only examined upon request and subject to the payment of the examination fee. The Applicant is provided with a maximum time of 3 years from the international filing date (for PCT applications entering national and regional phase) and 3 years from the date of filing at ARIPO (for Paris Convention Patent applications which may or may not claim an earlier priority date)  to file a request for substantive examination. Missing the deadline for filing request for examination can prove disastrous for the patent as the application will be deemed to have lapsed if no request has been submitted by the due date. The above rule has gone a long way to streamline the substantive examination of patent applications at ARIPO.

Expedited/ Accelerated Examination or Delayed commencement of substantive examination. In the past, there had been no straightforward procedure provided by the Protocol to expedite the examination of patent applications or to delay its examination in the event the applicant desires to await acceptance or clarification of claims.  At the ARIPO Administrative Council Meeting on 20 to 22 November 2017, amendments were approved to the Harare Protocol on Patents and Industrial Designs making way for a new rule which allows a patent applicant to request an Expedited/ Accelerated Examination or Delayed commencement of substantive examination. This change became effective on 1 January 2018. This new rule 18(7) specifies that the Proprietor may upon request submitted through the appropriate ARIPO form require that ARIPO substantively examine the patent application in a certain ‘preferential manner’ adhering to a modified timeframe. This modified timeframe will depend on how complex the examination process turns out to be.

Below are some of the requirements to be met before a request for expedited/delayed examination may be filed at ARIPO:

Expedited examination:

• a request for substantive examination has been filed;
• the applicant agrees to respond immediately to any clarifications sought by the examining division;
• the application does not become abandoned and reinstated before the conclusion of the examination; and
• a search report is provided based on claims corresponding to the claims of the ARIPO application

Delayed examination:

• a request for substantive examination has been filed;
• a written explanation providing the reason behind the request is submitted with the request; and
• the application does not lapse due to non-payment of formalities.

Under the amended rules, a request for expedited examination can be filed along with payment of the official fee of $700.00. Please don’t hesitate to contact if you require additional information or would like to enquire our fees to attend to the same.

ARIPO: Changes to Banjul Protocol on Marks Fee Schedule – specifically substitution of the word ‘Mark’ with ‘Class’

At the previously held Administration Council  there was also a change in the form of a substitution/ replacement of the word ‘Mark’ with the word ‘Class’ for fee items 11, 13, 14, 15, 18 and 19 of the Banjul Protocol on Marks. These fees items refer to the following Recordals:

11. Request for correction of error(s), change(s), or alteration(s) of Application or Registered Mark,
12. Application for Registration of Registered User,
13. Application by Registered Proprietor and Registered User of Mark to Vary Entry of Registered User,
14. Application by Registered Proprietor and Registered User of Mark to Vary Entry of Registered User,
15. Registration of assignments, transmission or other form of transfer, and
16. Application to ARIPO to register a license or other similar rights.

Although ARIPO states that this change was merely a clarification in the multiple interpretations that existed on how the official fees for these records were calculated, the change has resulted in substantial increase in the official fees. For example, with regards to filing for a Change of Name recordal which would fall under fee item 11 above, for 1 (one) mark with 2 (two) classes designating all 10 (ten) member states the fee prior to this language change is $500 but with the change of language the fee will be $1,000, which is a 100% increase in the calculated fee. For more information and our updated fee schedule please do not hesitate to contact us.

Zimbabwe: Legislation affecting Commercial Transactions 2018:

CHANGES MADE TO THE INDIGENISATION AND ECONOMIC EMPOWERMENT POLICY

The amendments to the Indigenisation and Economic Empowerment Act [Chapter 14:33] have been carried through in the Finance Act (No.1 of 2018) and these changes seek to rebuild confidence in the Zimbabwean economy. The Act is seen as a good step in the right direction to redress the disproportionate equity transfers and the impoverishment of the people of Zimbabwe.

Previously, the law required that there be a 51% ownership of shares in every company and any other business owned by indigenous Zimbabweans. The current position requires that this stipulation be applicable to the diamond and platinum industries alone and not to the entire mining sector. In these two extractive industries, ownership has to be effected through an appropriate designated entity, and the owners may opt for the participation of a community share ownership scheme or employee share ownership scheme or trust. The appropriate designated entities consist of the Zimbabwe Mining Development Corporation and any other entity incorporated by this organization, the Zimbabwe Consolidated Diamond Company and the National Indigenisation and Economic Empowerment Fund.

The raison d’etre of the amendments is to promote the ‘Open for Business’ policy initiative in a move to repair the country’s economy and instill investor confidence. The previous legislation was a hindrance to the promotion of trade and international relations which are key for a country’s economy. With this change, investors will have more confidence in the economy as there is an allowance for full ownership and control of other mining sectors. The existing businesses are not required to comply with the law with immediate effect, but instead can formulate a revised indigenisation plan which will be submitted to the designated Minister for approval.

The 12 reserved sectors which had been previously reserved for black Zimbabweans has now been made open to Zimbabweans of all races. Foreign investors who seek to invest in these sectors are required to seek permission from the Minister. Any person who is not a citizen who commenced operating in the reserved sector may continue to operate only if they register with the Zimbabwe Revenue Authority and the Unit, and opens and maintains a bank account in accordance with the Bank Use Promotion Act (Chapter 24:24).  The Unit is established by the amendments to the Act. The rationale for compliance with these provisions is to curb illicit money flows and the promotion of local banks. These amendments serve to improve the economy as a whole and not just the mining sector. There is also a promotion of start-ups and small to medium enterprises

In as much as the previous policy was created to advance the ownership of key minerals by indigenous Zimbabweans, it cannot be argued that this policy was discriminatory and did more bad than good for the general populace The previous legislation regarding indigenisation was poorly implemented, as it was hampered by corruption and mismanagement.  The amendments do serve to undo the effects of the former policy, and to promote investment, more so, foreign direct investment which is key for the recovery of an ailing economy. The country is adopting a systemic approach to lessening trade deficits and increase business investment. The transition from the previous extremist approach which resulted in the isolation of the country to a more inclusive policy is welcomed. This change does mean that there is a higher trajectory of economic growth which will be sustainable. Local and foreign businesses are both being given an opportunity to explore and invest in mining ventures in other sectors of the economy, which promise to be profitable. An example can be given by the small-scale miners who have proved that they are contributing more than the larger mines. This enabling legislation will empower the locals and foreigners and it will be beneficial to the economy.

It is important to note that investors seek a place where there is less resistance, has sure and unwavering economic policies which promote their interests and also protects their private property rights. Without these elements, investors will be hesitant to place their investment capital in this nation. The competitiveness of the business sector will be enhanced given the encouragement of foreign participation in the economy. These changes in economic policy are a good step in the right direction and actual investments do need to be made to counter the effects of the Mugabe-regime.

MONEY LAUNDERING AND PROCEEDS OF CRIME BILL GAZETTED

In the move to further curb illicit financial flows and to mitigate the risk of money-laundering, the Money Laundering and Proceeds of Crime (Amendment) Bill of 2018 has been introduced into the legal framework.The Bill serves to do the following:

• The implementation in domestic law of the International Convention for the Suppression of the Financing of Terrorism (adopted by the General Assembly of the United Nations Organisation by Resolution 54/109 of 9 December, 1999 and related UN Security Council Resolutions 1267 of 15 October, 1999 and 1373 of 28 September, 2001)
• Comply with FATF Recommendations
• Strengthening of legislative defences against misuse of our financial system for the purpose of money laundering or the financing of terrorist activities

Zimbabwe is showing its commitment to the implementation of AML/CFT systems which are in compliance with recommendations and measures which have been placed and issued by inter-governmental organisations. These have been described as a representation of standards which all states should adhere to. It is important to note that compliance is crucial, as non-compliance will inevitably result in the isolation of the country from the international financial system. Zimbabwe is a member of the Eastern and Southern African Anti-Money Laundering Group (since 1999). By virtue of its membership of this group, the recommendations issued by the FATF are to be implemented. In the most recent evaluation and assessment of the country’s legislation and financial systems, the country was found to have been non-compliant with the recommendations and urged to improve these systems.

The Bill establishes the Financial Intelligence Unit, which was previously established as the Bank Use Promotion and Suppression of Money Laundering Unit under the Bank Use Promotion Act. This Unit will be in the administrative establishment of the Reserve Bank of Zimbabwe. The functions and powers of the Financial Intelligence Unit are set out, which are all in line with the recommendations set out by the FATF. The Financial Intelligence Unit is set out as an independent body, tasked with effectively combating financial crimes. In the Ministerial report dated of 12 April 2017, the Minister stated that in regard to the level of compliance with the FATF recommendations, the country was compliant with 11 recommendations, largely compliant with 8 recommendations, partially compliant with 15 recommendations and not compliant with 6 recommendations.

The key areas which the amendment addresses are professional bodies whose trust accounts were depicted as being instrumental to the carrying out of financial crimes. Safeguards have been put in place to eliminate these activities. The monitoring of non-financial businesses is also seen to be enhanced by the amendment. Customer due diligence measures are also put in place where the customer is to provide verification of their identity when carrying out transactions in certain circumstances. Customer due diligence obligations extend to correspondent banks, high risk customers and politically-exposed persons.

These additions to the current legal framework which have been put in place to counter terrorism financing and money-laundering are comprehensive. The enactment of the Bill will be a great step in the right direction as Zimbabwe cannot afford to be isolated from the international financial system, more so with regard to the moves being made to better international relations with regard to trade and investment.

NEW INSURANCE REGULATIONS RELATING TO MICRO INSURANCE COMPANIES

Newly incorporated insurance regulations, Statutory Instruments 39 and 40 of 2018, have been set out in the Government Gazette (the ‘Gazette’) on micro insurance companies. The regulations stipulate certain requirements with regard to capitalisation of these insurance firms, together with the fees required for registration and obtaining a licence. The additional amendments also include the rate of levy for micro insurance companies.

Statutory Instrument 39 of 2018

The regulations published in the Gazette on 23 March 2018 are cited as Insurance (Amendment) Regulations, 2018 and amends the Insurance Regulations of 1989, published in Statutory Instrument 49 of 1989, also referred to as principal regulations. The amendment regulations require that the minimum unencumbered capital for micro insurance companies will be US$300 thousand.

To enable the registration of micro insurance companies and application fee of US$200 is required, together with the registration fee of US$1 thousand. Micro insurance agents who are individuals are required to pay a licence fee of US$20 whereas micro insurance agents who are corporate agents are required to pay a licence fee of US$ 50.

Statutory Instrument 40 of 2018

The regulations are cited as Insurance and Pensions Commission (Levy) (Amendments) Regulations, 2018 and amends the Insurance and Pensions Commission (Levy) Regulations, published as Statutory Instrument 21 of 2016.

The rate of levy, as defined in terms of section 30 (1) of the Act for micro insurance companies have been stated to be as follows:  a + bx, where

a= a fixed levy of US$300 per company per quarter

b= rate of 0,005

x=estimated net written permission for the quarter.

If a micro insurance company carries on any other insurance business the regulatory rates of levy will apply as per the stated calculations.

These amendments are in light of the recent developments of the insurance regulatory framework, which allows for financial inclusion and the provision of insurance services to low-income earners. These changes seek to enhance the corporate governance in the industry and regulating the registration and formalization of micro insurance companies. The risk to low income earners will be mitigated. A culture of transparency and accountability in the industry will be fostered, which affords the protection of the respective consumers. This is all being done in a move to promote the efficiency and effectiveness of this sector of the economy. This close in the regulatory gap dissuades unregistered providers and promotes good market conduct. The changes are also set to increase the country’s insurance penetration ratio.

THE PROGRESS OF ESTABLISHING JUDICIAL COURT FOR COMMERCIAL MATTERS

The establishment of the Commercial Court as a division of the High Court was gazetted in 2017, and there are measures and mechanisms which still need to be put in place to activate operations in this Court. This is being done to curb the backlog and to be in line with the efforts to make reforms which promote the ‘ease of doing business’ which is a policy aimed at improving the economic standing of the country.

This introduction is necessary as the courts have been hampered with commercial disputes which are not resolved expeditiously. Consequently, business operations are slowed down to an indefinite standstill with pending issues given the existing backlog. Investors want to be assured that their investments are protected adequately by the law and the establishment of a court to deal strictly with commercial matters. The international best practice is to have a Commercial Court as seen in other jurisdictions, which has led to better ratings of their countries by the World Bank. The World Bank depicts an effective commercial arbitration regime as being key for foreign investors. This is due to the fact that the system is tailored to their disputes, mitigating risks due to the provision of legal certainty in relation to enforcing rights, due process and increased access to justice.

The establishment of a Commercial Court will give the country a competitive advantage, ensuring the facilitation of speedy resolutions of business disputes. The first feature is the provision of a sound, generally applicable and open legal framework for all commercial cases.  This process is fast and minimizes costs, and will be able to deliver good justice for the business community with transparency, fairness, consistency and independence. It is thereby important to establish market confidence through the court, through giving access to a sound system to resolve disputes together with the enforcement of contracts. Debts and damages will essentially be paid where this is required by justice.

It is essential that the justice system keep up with changing business practices and business needs. This will enable the streamlining of court procedures towards achieving fast arbitration services and a design which ensures that the disputes are dealt with quickly and efficiently. This Court is set to be operational during the course of this year and it will shorten the time period in which a case will be disposed of.

Advertising Standards Authority Zimbabwe Relaunched & Ready for Change  

As Robert Mugabe loosened his grip and stepped down from power in Zimbabwe, everyone looks forward to more trade, investment and an improved economy. With increased trade and investment, it is hoped that the advertising industry will not only continue upon its path of recovery but also become more robust.

The self-regulatory body for the advertising industry in Zimbabwe, the Advertising Standards Authority (ASA) had become dormant during the early 2000s as result of the economic crisis in Zimbabwe. When the government announced abandonment of the Zimbabwe dollar and adopted the US dollar as legal currency in April 2009, there was improvement in trade and commerce and the advertising industry began to make its way back in all aspects of the media, including social media. In March 2017, the ASA relaunched and rebranded itself as ASAZIM.

As an independent body, ASAZIM works in conjunction with all entities involved in advertising in Zimbabwe: Zimbabwe Association of Accredited Practitioners in Advertising (ZAAPA), Marketers Association Zimbabwe (MAZ), Advertising Media Association (ADMA) and the Consumer Council of Zimbabwe (CCZ). The organization is governed by an Executive Committee which is made up of representatives from the aforementioned organizations. A primary objective of ASAZIM is to provide prompt, accessible and cost-efficient mechanism to ensure advertising is “legal, decent, honest and truthful”.

In this respect, the Code of Standards (sometimes referred to as the Code of Advertising Practice) is ASAZIM’s guiding document. This Code of Standards (the ‘Code’) was drafted based on the International Code of Advertising Practice, prepared by the International Chamber of Commerce and accepted worldwide as the basis for domestic systems of self-regulation, ASAZIM recently revised the Code to be specifically tailored to the Zimbabwean market place. It was revised by representatives of the organizations mentioned as well as those involved in communication industries. Since its re-launching, ASAZIM continues to review the Code taking into consideration current practices and use of social media and privacy rights which will likely result in further changes to the Code to meet the need of industry and consumers in Zimbabwe.

ASAZIM aims to protect consumers, ensure fair play between competitors and make sure that the advertising profession is not brought into disrepute. In terms of the Code there are an agreed set of rules and ASAZIM has established procedures to resolve disputes about advertising. ASAZIM does not initiate its own investigations; it reacts to complaints from consumers or from competing advertisers /marketers. Its website (http://www.asazim.co.zw) makes it easy for a consumer to lodge an online complaint without costs. If a complaint is heard by ASAZIM and a decision is made that an advertiser has failed to adhere to the ASAZIM Code, a penalty will be imposed, and the advertiser may be required to cease and desist. In the event of the offender fails to pay the penalty stipulated or otherwise comply with the decision, ASAZIM will issue an instruction to all ADMA members to stop accepting any advertising copy from that advertiser.

Since its re-launch ASAZIM has already considered a few disputes the names of which appear under Cases and Rulings section of their website (http://www.asazim.co.zw/cases-rulings/). Complaints that are filed with ASAZIM are heard by an Executive Sub-committee set up to consider and hear disputes and the decision of the Sub-committee is communicated within 5 working days of the hearing.

Limitations:

Although the actions undertaken by ASAZIM are encouraging and have been well received, there are, however, limitations as to its effectiveness: (1) Although most companies participate, membership is not compulsory; (2) ASAZIM has no legal powers of subpoena or any ability to act unless they receive a complaint; (3) The levy of the $1,000 fine may not be much of a deterrent in some cases depending upon the nature of the complaint; (4) Enforcement is reliant upon the offending party being ‘banned’ which may not be effective if the offending firm does not rely upon ADMA or ADMA members fail to enforce the ban.

If they are to be effective they will need to have greater authority to act granted to them by their members, encourage all those involved in the advertising industry to join by having a certification registration and procedure for those in the industry to qualify. The government of Zimbabwe has recently introduced a separate Commercial Court at the High Court and it would behoove ASAZIM to undertake the necessary procedure to have its decisions recognized through registration in the Commercial Court.

São Tomé and Príncipe joins ARIPO Protocols for Patents, Industrial designs and trademarks 

An African country officially known as ‘Democratic Republic of São Tomé and Príncipe’, became the 19^th Member of ARIPO on 19 May 2014.  São Tomé and Príncipe, a former Portuguese colony, is primarily Portuguese speaking island nation in the Gulf of Guinea, off the western equatorial coast of Central Africa. It consists of an island group around two main islands which are: São Tomé and Príncipe, located about 140 kilometres apart and about 250 and 225 kilometres, respectively, off the north-western coast of Gabon.

Sào Tomé and Príncipe deposited its Instrument of Accession to the Harare Protocol on Patents and Industrial Designs within the Framework of ARIPO on 19 May 2014. The number of active ARIPO Member States now party to the Harare Protocol are 18. Since Sào Tomé and Príncipe is also a member of the Patent Cooperation Treaty (PCT), this means that any international application filed on or after 19 August, 2014 may include the designation of the Sào Tomé and Príncipe for an ARIPO patent and industrial designs. Further, since 19 August 2014 it has been possible for residents of the Sào Tomé and Príncipe to file patent and industrial design applications with ARIPO as a receiving Office.

On 27 November, 2015, São Tomé and Príncipe solidified its ties with ARIPO by depositing its Instrument of Accession to the Banjul Protocol on Marks. The Banjul Protocol will enter into force, with respect to São Tomé and Príncipe on 27 February, 2016 and with effect from 27 February, 2016, São Tomé and Príncipe becomes eligible for designation as a Member States under the Banjul Protocol. The accession of the Banjul Protocol by São Tomé and Príncipe brings the number of Member States party to the Protocol to ten (10). Likewise, residents of Sào Tomé and Príncipe will be able to file trademark applications with ARIPO as a receiving Office.

Food Labels Required to State Fortification