ADM:1060223

NAME:OSCAR KIPROP
CODE:DCLS 086

Critically analyse all the various types of intellectual property rights covered so far in the course unit.as
you analyze each individual intellectual property right, ensure that you define it, analyse judicial cases
where it is discussed, find the protection relevant to each right as enshrined in law, identify various
examples of this type of right to demonstrate your point(e.g coca cola as a trademark) and explore the
registration process, both local and international for each right.

Abbreviations
Intellectual property rights: IPRs

The industrial property act: IPA

World intellectual Property Organisation: WIPO

Agreement on Trade Related Aspects of Intellectual Property: TRIPs

Introduction
Intellectual property rights find its expression from the twin issues of rule of law and trade 1.
There are two school of thought when in comes to property ownership from a western outlook.
These are the deontological or natural rights approach and the consequentialist or utilitarian
approach. The deontological school teaches that a person has a natural right to a person’s
creation irrespective of the consequences. John locke(1632-1704) tried to link natural rights to
property. in his book two treaties of government(1690) he justified private property ownership
based on the premise that every individual should own what he/she produces from the

1
Moni Wekesa and Ben Sihanya,intellectual property rights in kenya,1st edition,Konrad Adenauer stiftung,sports
link publishers(pg 1)
commons, with respect to IPRs, the production of ideas comes from a persons labour, the ideas
themselves coming from a commons without getting exhausted and that the ideas can become
property without being wasteful

The utilitarian school believes that IPRs in one’s creation is necessary as a means in
advancement of technology and human society. IPRs are seen as an incentive. This theory was
propagated by Jeremy Bentham(1748-1832) who belittled the natural rights theory by
saying:2natural rights is simple nonsense: natural and imprescriptible rights, rhetorical
nonsense-nonsense of stilts.

It is from these two schools of thought that the modern idea of according of exclusive rights to
an individuals invention is propagated.in modern times IPRs come in many forms: patents,
copyright, trademark,geographical indicators

each of these have their own protection under local and international law

Patents
The word ‘patent’ is a short form for letters patent(es) which means a document issued by or in
the name of the sovereign addressed to all subjects. This document granted rights to craftsmen
and artisans to practice their trade thereby subverting merchant guild regulations which
regulated competition

Its definition in relation to IPRs is that it is a an IPR that grants an inventor exclusive rights in the
use and distribution of their invention for a limited time. Patents are only granted for inventions
which meet certain standards; novelty, inventive step and industrial applicability. However,
some states have statutory regulations which exclude some inventions from being patentable

2
J Bentham ‘an introduction to the Principles of Morals and Legislation(edited by JH Burns and HLA Hart(1970)
Novelty: section 23 of the IPA provides for novelty. For an invention to be patentable it must
be new.an invention is new if it is not anticipated by prior art. prior art applies if there is
disclosure before application3.prior art consists of everything made available to the public
through oral or written disclosure for example exhibition or scientific conventions.in
windsurfing international inc. v. Tabur Marines 4 a boy had developed a sail board in England. He
used to play with it in public on a number of occasions. A patent application on the same was
denied on the ground that the sail board had been anticipated by the boy’s toy sail board.
Already the sailboard had been published therefore it was not new. It had been anticipated by a
prior art.

Inventive step: under section 24 of the IPA an invention should not be obvious to a person of
ordinary skill.for example in farming plants need water and nutrients to thrive. If a farmer mixes
two common applied products and uses it to farm, he cannot patent it since it is assumed
farmer have been doing that already.

This however does not mean that the invention must be complex.it may be simple but not
obvious to one working in a particular area of expertise.it has been debated whether the person
of ordinary skill should be an expert in the field or a simple practitioner. Lord Molton in Gillete
Safety Razor v. Anglo American trading5 Stated that “in ascertaining its effects, the court must
consider what it would convey to the public to whom it was addressed i.e. to mechanicians. I
recognise that it would be most unfair to subsequent patentees if we tested this by what it
could convey if we tested this;a mechanical genius; but, on the other hand, it would be equally
unjust for the public to take it as though it was read only by mechanical idiots.”

Industrial application:sec 24 of the IPA states that, ‘an invention shall be considered
industrially applicable if, according to its nature, it can be made or used in any kind of industry,
including agriculture, medicine, fishery and other services.

3
The industrial property act section 23(2)
4
windsurfing international inc. v. Tabur Marines (1984)EWCA Civ J0131-3
5
Gillette Safety Razor V. Anglo American Trading (1913) 30 RPC 465
Statutory regulation: an invention is not patentable if it is excluded from patentability by the
state.in Kenya for example section 26(a,b)6 provides for non-patentable inventions and it states
that the following shall be non-patentable: plant varieties as provided for by the seed and plant
varieties Act but not parts thereof or products of biotechnological process and inventions
contrary to public order ,morality, safety, principles of humanity and environmental
conservation.

Registration process
The registration process varies minutely from country to country but all of the share the same
distinctive elements. An application is filled with a detailed description of the invention, a claim
defining the scope of protection requested and a visual representation either In form of
blueprints or video rendering.

An examination is then made by the respective body assigned the responsibility of overseeing
patents to ensure its legal compliance.

If the patent passes the examination a publication is then made publicly known either through a
gazette notice or public participation

Once the patent is granted the patentee pays a fee to periodically to enforce the patent

Rights and obligations of patentee’s

Rights

right to be granted a patent

exclusive rights to make, import, offer for sale,sell or use the product

right to exclude all others from dealing with the patent

right to exploit the patent through contractual licensing

obligations

disclosure of the invention through claims

6
The industrial property act sec 26)(a,b)
information concerning foreign corresponding applications and grants

duty to pay necessary fees

refraining from unfair, abusive, anti-competitive or inequitable terms or provisions in contractual

licenses, assignments or patent application

copyright
copyright refers to a set of exclusive rights granted to the author or creator of an original work,
including the right to copy, distribute and adapt the work. The work is usually in form of literary
work such as books, novels films broadcasting scripts etc, musical work such as music
composed, artistic work such as paintings, works of sculpture, architectural works in the form of
buildings or models, industrial art, pictorial woven tissues, dramatic works, audio-visual works,
sound recordings

copyright does not protect ideas, only their expression or fixation

registration process
registration of copyright is fairly simple in modern times due to the prominence of information
technology.one can simply go to the government website and follow the instructions.

Statutes and treaties pertaining to copyright

There are five main statutes and treaties which protect,promote,regulate and enforce copyright

They are:

Berne convention for the protection of literary works or 1886(as revised in paris in 1971), which is
administered by WIPO

WIPO internet treaties

Agreement on Trade Related Aspects of Intellectual Property(TRIPs) administered by the world trade
organization

Rome convention on the rights of performers and producers of Phonograms Treaty of 1961

Universal Copyright Convention

Berne convention
Its functions on three principles

National treatment:where works of one member state are accorded the same protection in each
member state

Automatic protection:protection is granted automatically and its not subject the formality of a copyright
notice,registration or deposit

Independence of protection:enjoyment and exercise of the rights granted is independent of existence of

protection on the country of origin

Universal copyright convention

It was aimed at limiting moral rights which had been extensively provided for in the berne convention

RIGHTS GIVEN BY COPYRIGHT

Copyright gives the owner two rights,economic and moral rights7

ECONOMIC RIGHTS

These rights allow the copyright holder to make money from their work.examples of these rights include:

Exclusive distribution of copies of the work

Translation of the work to other languages

Adaptation of the work into other forms of media

Public performance of the work such as song dance

Sections 26-30 of the copyright act(Kenya) focus on the nature of the copyright from the perspective of
material rights

Section 26 has limited these rights. For example, copyright does not include the right to control
accidental inclusion of an artistic work in an audio visual work or broadcast :inclusion of not more than
two short passages in a collection of literary or musical work designed for use in a registered school,
university or learning institution.8

7
The copyright act 2001 sec 26,28,29,32
8
The copyright act cap 130 sec 26
Moral rights

Authors are entitled to various moral right9.these rights are provided In the copyright act 2001

moral rights consist of four categories:

the author has the right to paternity, the right to be named as the author of a work

right to the integrity of the work, that is the right to protect the work from being modified,
misquoted, mutilated and disparaged in a matter that compromises the honour of the author

freedom to not to have a work falsely attributed to the author. This crucial as false attribution
might lead to one’s arrest or prosecution

right to privacy

duration of copyright works

different copyright works last for different durations

for example, in Kenya the duration for the various works is provided for under section 23(2-4) of
the copyright act, 2001.

Literary, musical, and dramatical or artistic works last for the lifetime of the author plus 50 years

Audio visual works and photographs last 50 years from the end year in which the work was
either made or first made available to the public, or first published

Sound recordings last 50 years from the end year in which the recording took place

Broadcasts last 50 years after the end year from which the broadcast took place

After these periods the works can be used by anyone without seeking permission or approval of
the copyright owner. The author however still keeps their moral rights so they can somewhat
control its use. For example by preventing modification of the work

Copyright infringement
Copyright infringement occurs when another third party violates the rights of an author

9
The copyright act 2001 sec 32
Exceptions and limitations
Copyright does not include the right to control.”fair dealing” for purposes of criticism ,review
scientific research,private use and reporting of current events for as long as the authoris
acknowledged as such

It does not cover the inclusion of not more than two short passages of a copyright-protected
work in a collevtion of literary or musical works that is for use by an educational institution

Broadcasting of a work, or reproduction of a broadcast, for educational purposes in an

educational institution

Reproduction under direct control of the government or by public libraries, noncommercial

documentation centres and research institutions and where no income is derived

These provisions are elaborated in sections 26-29 of the copyright act, 2001 10

Legal remedies
Damages to compensate for harm caused by the infringement

Injunction to restrain or prevent further use of a work

Destruction order to destroy all illegal distribution of a protected work

Declaration of ownership to determine the rightful owner of a work

Anton piller orders to allow the owner of the work to enter into the domicile of an infringer to
seize material relating to the copyrighted works

It is irrelevant that a defendant did not realize that he or she was unlawfully dealing with a work

10
The copyright Act,2001 sec 26-29
The court in Alternative Media Limited v Safaricom Limited11 relying on Halsbury’s Laws of
England12, stated that innocence of a defendant while infringing copyright is no defence as
copyright is a propriety right and therefore the intention or motive of the defendant is
immaterial

TRADEMARK
A trademark is a name , mark, sign, signature, symbol, sound, shape or smell or related expressions
which serves as a distinctive identificatio feature for a product or company

Purpose of trademarks
Trademarks incentivize companies to uphold certain standards and to enhance product quality for
example Kentucky fried chicken imposes specific criteria for a restaurant seeking to join its franchise

Trademarks can also in itself be of high value for example the cocacola brand not the company itself is
worth 74 billion dollars this is due to its recognizability and reputation

It facilitates transparency in the market by distinguishing products of various enterprises in the market

It protects the innovator against trade libel where the products of the provider may be unjustifiably or
unreasonably disparaged

Registration and use

Registrability
A trade mark is registrable if it is:

 Not prohibited
 Not contrary to public order
 It must relate to the use of the trademark in a trademark sense

There are absolute and relative grounds for registrability

11
Alternative Media Limited v Safaricom Limited(2005) 2 KLR 253
12
Halbury’s laws of England,14th edition,vol 9(2) paragraph 314
Absolute grounds cover where the trademark is not registrable as the registrar has no
discretion in its registration while on relative grounds the registrar may accept or refuse
registration

The principle the Registrar uses is that there should be no likelihood of confusion or deception.
In Wagamama v. City Centre Restaurants Plc13, Wagamama is a Japanese food outlet in West
London. Rajamama was established after Wagamama and was an Indian Restaurant.
Wagamama went to court claiming breach of TM as the names were likely to confuse
consumers and the public. In the course of the proceedings, the Rajamama restaurant changed
the name to Raja Mama’s.

The Chancery Div, per Laddie, J. held that there was a likelihood of confusion. The decision has
been upheld by the European Court of Justice Advocate-General. Laddie J. was hesitant to apply
the Benelux doctrine of association (Benelux – Belgium, Netherlands Luxemburg). The Benelux
doctrine states that even where there is non-origin association and even if the public is not
confused, the registration of a subsequent mark may still be refused i.e. the doctrine of
association is broader than the doctrine of confusion used by the USA, UK, and Kenya and
captures issues of tarnishment, blurring and genericisation.

Registration
Applicants are required to send applications to the registrar in writing and in the prescribed
form.this depends on the class of goods and registration required. The application must be
accompanied by a power of attorney where applicable

The registrar is supposed to advertise that there is an application for the Trademark. Registrar
may accept a notice of opposition i.e. opposition to registration of the Trademark. The notice
must be filed within 60 days from date of advertisement

The Registrar may accept registration, refuse registration, or object to certain parts of the
application and order an amendment.

13
Wagamama v. City Centre Restaurants Plc(1995)EU. L.R. 313
The Registrar must give grounds for refusal especially where the applicant seeks them. The
Registrar’s decision is both appealable and reviewable.

Upon acceptance of the application the Registrar is obligated to ensure the advertisement of
the application in the Kenya Gazette. The practice has been that the party pays registration fees
to The Kenya Industrial Property Institute.

The Registrar may accept a notice of opposition by any person aggrieved by or interested in the
Trademark. The notice must be filed within 60 days from the date of advertisement in the KIPI
Journal.

The Registrar has to hear both parties and make a decision. Should the opposition fail to
persuade the Registrar; the application for registration will be granted.

Geographical indicators
These are distinctive signs used on products that have a specific orgin.it indicates that a product
posses’ qualities, characteristics or a reputation uniquely tied to the place of origin

This link between quality and origin is what Is recognized as geographical indicator

For example, champagne which is a sparkling wine exclusively produced in the champagne
region of France. Only wines produced according to specific methods within the region can
legally be called champagne. Tequila whch is an alcoholic drink made from the blue agave plant
in the region surrounding the city of tequila in Mexico. Only drinks made In that designated area
can be called tequila

In conclusion IPRs come in many forms more than what ive written and they server as both an
incentive tool to further development and research in human society and it also serves as a
protection mechanism for the inventors and authors of various works and even for the
community of a certain location and it important to preserve IPRs