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Intellectual property in the digital age

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Added 15th April 2019 01:11 PM

Through NIISP, the government has been able to reach innovators, set up a hub & innovation fund and has ensured that innovators are educated about the importance of intellectual property.

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Through NIISP, the government has been able to reach innovators, set up a hub & innovation fund and has ensured that innovators are educated about the importance of intellectual property.

By Kenneth Muhangi

On April 26, 2019, Uganda will celebrate World Intellectual Property day with the rest of the world.

In the last 20 years, we have seen exponential growth in the sectors of business and technology. Yet somehow, this growth has not extended to the field of intellectual property. Uganda is still one of the lowest ranked countries in Africa in intellectual property applications.

According to the World Intellectual Property Organization (WIPO), by 2016, Uganda had only 17 Patent applications compared to 4 in Rwanda, 195 in Kenya and 2,178 in South Africa.

Although we are somewhat atoned by the number of Trade Mark applications;1,340 by 2016 to be precise, this is disconcerting compared to the 6,103 in Kenya and the whopping 34,094 in South Africa.

The disparity is alarming seeing as the Uganda Registration Services Bureau’s Intellectual Property Office, receives just a handful of applications for Industrial Designs or Utility Models.

It is also worth noting that most of the registrations in Uganda are handled by more or less a handful of law firms that have expertise in this field.

One such firm, KTA Advocates, has filed a number of IP applications in Uganda notably “The Jaguza app” that detects an animal`s attitude and is able to assist animal health workers and farmers engaged in animal husbandry to detect diseases without interaction with the animal from the comfort of the smartphone.

KTA has also advised on the protection and registration of the “Janzi”, a music instrument with two scales that was invented by a client, an improvement of the local “Adungu” musical instrument.

KTA is also presently advising the government and community on registering a geographical indication for the Ankole Cow breed. The Ankole cow, is a rare breed with beef that has low cholesterol and the cow can withstand drought and hard conditions a rarity for most cattle breeds.

KTA has also advised on Geographical Indications for Pepa Yam, Kola nut and cocoa as well as Kente cloth for the governments of Nigeria and Ghana respectively.

Promisingly, firms like KTA & organizations like Uganda Law Society (ULS) through its Intellectual Property Cluster & Uganda Registration Services

Bureau(URSB) have embarked on sensitization programs to promote IP registrations.

The Government has also taken commendable steps to improve penetration and spur innovation through projects like the NIISP National ICT Initiatives Support Programme (NIISP) that was created to facilitate the creation of an ICT Innovation ecosystem and marketplace for Ugandan innovative digital products.

Through NIISP, the government has been able to reach innovators, set up a hub & innovation fund and has ensured that innovators are educated about the importance of intellectual property.

Uganda also has a strong IP regime and has enacted IP legislation like the Trade Marks Act 2010 that protects trademarks, Copyright and Neighboring Rights Act 2006 for copyright, The Geographical Indications Act 2013, Plant Varieties Act 2014, Trade Secrets Act for trade secrets and Industrial Property Act 2014 for patents, utility models and industrial designs.

These have promoted the enforcement of IP rights but still need constant review if they are to keep up with the ever-changing nature of IP.

The Trade Marks Act 2010 for example only recognizes a trademark as a graphically represented sign or combination of signs, capable of distinguishing goods or services of one undertaking from those of other undertakings,.

This is in contrast with other jurisdictions such as USA and the UK, that recognize domain names as registrable trademarks. In order to acquire a Trademark, an applicant would have to prove that the domain is being used for some other purpose than for people to find and contact the applicant.

Consequently, eCommerce websites, like beforward, Jumia, Jumia food &, safeboda would generally be able to acquire trademarks owing to the distinctive nature of their domain names that become synonymous to the services they offer.

Allowing eCommerce sites to be able to register their domains, is imperative as it improves the businesses brand and provides comfort against Cybersquatting and typosquatting.

Cybersquatting is the practice of registering a domain name similar or deceptively similar to an existing name. Usually, the name is registered with the aim of selling

the domain name to that company or to postpaid advertising links on a website at the domain name in order to profit from visitors looking for the Trademark owner or its business. Or maybe the registrant is a competitor seeking to divert customers to a business competing with the trademark owner.

Typosquatting is a variation of cybersquatting where someone registers a domain name designed to benefit from typing mistakes made by internet users. This can involve registering/using a common misspelling of the target name/trademark.

None of Uganda’s IP laws also cover image rights that are widely seen as an important form of brand protection. Image rights are now a billion dollar industry with celebrities like Kylie Jenner making as much as USD 500,000 (United States Dollars Five Hundred Thousand) just to endorse an event or product.

The legal regime as regards image rights in Uganda has been largely unexplored, that is until the case of Asege Winnie V Opportunity Bank (U) Ltd& Anor H.C.C.S 756 of 2013, where KTA Advocates successfully argued that an individual has the right to control the commercial use of his or her name, image, likeness, or other unequivocal aspects of one's identity.

Ideas vs Expressions & Trade Secrets

Notably, IP law generally offers protection for the final expressions of ideas but do little to protect the actual idea. Consequentially, many Tech-preneurs, lose their ideas to savvy businessmen and larger companies that are approached to fund the execution of the ideas.

Suffice to say, such business concepts/ideas, may be categorized as trade secrets, protectable under the ambit of the Trade Secret Protection Act, 2009.

The act also provides a much need correlation between trade secrets and unfair competition by criminalizing espionage and acquiring confidential information by unlawful means.

Trade secrets are generally peculiar in nature and are not categorized as traditional intellectual property (IP) rights since they are usually a combination of business models and business methods. However, holders of trade secrets under the 2009 act, enjoy similar rights to intellectual property in cases of transfer and enforcement.

A trade secret is defined under Section 2 of the Trade Secret Protection Act, 2009, to mean information including but not limited to a formula, pattern, compilation, program, method, technique, or process, or information contained or embodied in a product, device or mechanism which-

(a) is, or may be used in a trade or business;

(b) is not generally known in that trade or business

(c) has an economic value from not being generally known; and

(d) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

At international level, protection of trade secrets is provided by the World Trade Organization’s 1994 TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights). Article 39 of the TRIPS Agreement is specifically dedicated to "undisclosed information" and set forth the minimum requirements that information shall meet to be protected under the Agreement.

IP & Blockchain

Technology has provided a way to facilitate the protection of IP rights like trade secrets through the use of blockchain technology.

A blockchain is a continuously growing list of records, called blocks, which are linked and secured using cryptography. By design, blockchains are inherently resistant to modification of the data.

Once recorded, the data in any given block cannot be altered retroactively without the alteration of all subsequent blocks, which requires collusion of the network majority.

The versatility of blockchain means it is being widely considered as a way to manage & protect IP rights. Blockchain offers a unique code for each IP right and this code is linked to a smart key which is only held by the owner.

Transfer of the property would then require surrender of the smart key by the owner and without it, a transfer of IP cannot be effected.

Blockchain technology also underpins ‘smart contracts’, which are programmable contracts that self-execute when certain conditions are met, and offer the possibility that transactions could complete much more quickly when combined with a blockchain registry. For instance,

a patent owner could issue a license automatically on receipt of funds into the vendor’s account.

The result would also be to speed up & cheapen the exploitation of IP rights. With the ledger updating immediately, the registration gap would be eliminated for rights like copyright.

Blockchain ledgers also create time-stamped records that cannot be altered and this makes them an ideal solution for proving authorship over IP rights.

For trade secrets, the privacy of the network allows for registration that would otherwise have been impossible at a public registry because of the nature of trade secrets that are after all, secret.

For creatives that innovate concepts or processes, the blockchain provides the comfort of knowing that should an idea they pitch be appropriated, it would be easy to provide evidence of breach among other causes of action available to them.

Harnessing a blockchain-based IP enforcement system mainly through “smart IP registries” could also help creators monitor exactly how and by whom their creations are being used.

Innovators having real-time data about the exploitation of their copyright/patents/utility models/designs would also help in IP valuation that's always a sticky issue in infringement claims & mergers and acquisitions.

This is because each transaction forms an audit trail that shows how many times an IP right has been exploited and this gives insight into how much would be lost if an IP asset were to be counterfeited.

Public Ledgers with ownership details of IP assets/products would also help e-commerce as it becomes easier for potential customers to contact the rightful owners of products and possibly identify counterfeiters.

These ledgers may also be used by law enforcement to check for genuine trademarks in real time thus promoting anti-counterfeit enforcement.

Blockchain could also integrate with certification marks that confirm that a product conforms with advised standards.

With banks also embracing blockchain technology, payments will also be easier. In early 2019, it was reported that US investment bank JP Morgan had created a crypto-currency (JPM Coin) to help settle payments between clients in its wholesale payments business.

In conclusion, it is undisputed that IP has evolved and continues to evolve. These are indeed exciting times for IP practitioners & it is imperative that regulators and policymakers invest in keeping abreast

with new technologies/developments if Uganda is to truly take part in the fourth industrial revolution.

The writer is a Partner- Technology, Media, Telecommunications, Intellectual Property at the KTA Advocates and Lecturer IP & Technology law.

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