Friday, 21 April 2017


What you need to know about the ASA's predicament in South Africa

The Advertising Standards Authority's future in South Africa is in grave doubt and it not only affects them and their employees, but the entire advertising fraternity and all consumers. Here are some facts that you need to know about what is happening:
  • The ASA is a non profit body that has been in existence for 50 years, set up to assist self regulate advertising disputes. When working effectively it has allowed for speedy and relatively inexpensive dispute resolution for both competitors and consumers.
  • On 21 October 2016, the Advertising Standards Authority (ASA) went into Business Rescue (an intervention that attempts to prevent a company from its financial distress to prevent its liquidation).
  • The reasons why the ASA is in distress are:
    • lack of funding
    • lack of membership participation
    • high operational costs
    • costly litigation (the Herbex (pending) appeal and a damages claim of +-R17 million, set down for 6 March 2018)
    • decreasing use of its services (including competitor claims)
  • On 25 April 2017 is the ASA's second meeting of creditors and a special AGM has been called by the business recue practitioners to table a number of resolutions based on their research:
    • a new management team and board
    • a leaner organisation structure (from 20 to 13)
    • a long term funding model
    • a streamlined adjudication process
  • By 30 April 2017 the ASA needs to secure at least R5 million to cover its historical debt. Within a short time thereafter, a further R3 million is required to fund its operating capital in the immediate future. As a result a fund raising initiative is being launched at the special AGM.
  • The special AGM is taking place at the SAB World of Beer 15 President Street Newtown at 10am on the 25th. (Afro Leo just pointed out that this venue is interesting because it is a reminder of the 2015 packaging fight between SAB (now AB InBev) and  Brandhouse Beverages over the Amstel Lite packaging (see here reported on this blog for example). It is poignant because the case illustrates the very need for the ASA i.e. this type of case (based on imitation - a special ground under the ASA code) would not easily be adjudicated in a court because imitation alone is not passing off and the courts are very reluctant to rule favourably on unlawful competition claims where there is no passing off - eg Cochrane Steel).
  • The proposal for ongoing short term funding requires a commitment of R1.34 million per month from its members in proportion to their ad-spend.
  • A failure to secure short term funding will result in an application to liquidate the ASA which will be to the detriment of creditors, up to 20 people will lose their jobs and the ASA services will be lost and/or left to the courts (with cost and other disadvantages) and/or government (which will mean the advertising industry will be regulated by the state).
  • In the longer term the ASA intends to cover its costs through a hybrid model which includes an advertising levy (66%) and a contractually negotiated rates from media (34%).
  • The ASA has applied to become an industry ombudsman under the Consumer Protection Act. This could alleviate its litigation challenges (over jurisdiction) and over time resolve some funding issues. (Afro Leo points out that accreditation may take some time because of strategic differences between the National Consumer Council and other stakeholders)
  • The ASA are attempting to also deal with potential jurisdictional challenges through stronger member contracts requiring media, marketers and advertisers to agree to be bound by their Codes (which incidentally include the Sponsorship Code).
  • Their are various risks to accepting the Business Rescue Plan - the retrenchment process will be costly, there is an unquantified risk of a damages claim which could bankrupt the ASA, the ongoing jurisdiction battles over non members is subject to an appeal which could severely hamper the ASA if the appeal by them is not successful.
Here is the invitation to the special AGM.
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Thursday, 20 April 2017

Darren Olivier

Looking for INTA Accommodation?

If you are still in need of accommodation at INTA, I have access to a booking at the Renaissance Barcelona Fira Hotel for standard single room which is very close the convention centre. I need to cancel the booking today if it is not going to be used (my firm has kindly block booked for me elsewhere), so please email me here if you would like to take over the booking.

In the meantime, our friend Hans Muhlberg has been busy posting to the Afro-IP LinkedIn Group, take a look. Hans always has a great, and often entertaining, perspective.


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Friday, 7 April 2017

Darren Olivier

5 IP Reasons To Concentrate on Zuma - Azumi V Zuma's Choice Pet Products

The South African president’s name is in the news this week but perhaps not in a way in which you know.

The recent UK case of Azumi Ltd v Zuma’s Choice Pet Products Ltd & Zoe Vanderbilt is a case about a high end Japanese restaurant called Zuma suing a pet shop called Zuma’s Choice Pet Products and for using the tag line “Dine in with Zuma” for trade mark infringement on the basis of dilution (tarnishment), and succeeding.
Zuma restaurant
offending website

Practitioners may be interested in the judgement for a number of reasons:

·         It is another useful example of how to properly apply the European checklist test for trade mark infringement (in this case, dilution). Local courts and some attorneys and advocates still struggle to apply it properly (see earlier notes here, for example).

·         It illustrates that the requirement for showing risk of economic harm in tarnishment cases can be deduced from the nature of the case without necessarily showing actual evidence of loss of sales/change in economic behaviour. In this case it was the unpleasant association between dog food and human food that gives rise to the risk and the judge accepts that on the face of it.

·         Whether the South African government or even Jacob Zuma himself would have an interest in this case is interesting. Zuma has connotations other than as a Japanese restaurant and is current head of state. Is Article 6ter of the Paris Convention (S4 and S55-59 UK Trade Mark Act) wide enough to assist them? Put differently what if this was a “come dine with Mandela” dog food case, and why (or should) it be any different?

·         What if it was a “come dine with Trump” dog food case? This would be different because the Trump companies are likely to have a protectable interest in the name (there is an official Trump restaurant) as a trade mark and may be able to establish their own infringement on trade mark grounds. Incidentally, the Jacob Zuma Foundation has filed extensively for the protection of Jacob Zuma as a trade mark in South Africa.

·         The case contains a counterclaim based on “groundless threats”. This is a special provision in the UK Trade Marks Act (S21) to prevent bullying by trade mark owners. It was raised by the defendant/respondent in this case allowing them to cite the firm and the individual attorney in the papers; a stressful position to be in for anyone. But for a finding that the company name objection (only) was an unjustified threat, the attorney and firm were exonerated. Lesson: be careful when drafting those LODs, even in for local use (some companies have offices in the UK, for example).

Local UK press reported on it here.
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Wednesday, 5 April 2017


.Africa Arrives Today - Own The Continent

Finally ....

From today (Tuesday, 04 April 2017) trademark owners can secure dotAfrica (".africa") domain names matching their registered trademarks before the new dotAfrica generic Top Level Domain (gTLD) is launched to the public in July.
The dotAfrica Sunrise Period will run for the next sixty days and will see the securing of valuable brand names in the form of registered trademarks and unregistered, validated trademarks. "During Sunrise, brand owners across Africa will be encouraged to apply for .africa domain names that match their registered or validated intellectual property," says Lucky Masilela, CEO of ZA Central Registry Non Profit Company NPC (ZACR NPC).
According to Mr Masilela, .africa is the new generic Top Level Domain (gTLD) for the African continent. "It is an African initiative created by Africans for Africans and the International Internet community. In order to ensure responsible growth, the .africa registry will place special emphasis on securing the rights of intellectual property owners, Internet users and the broader African community during the Sunrise Period and beyond," he explained.
Africa is home to an array of world-leading brands valued in the hundreds of millions of dollars that require protection. The Africa Brand Index by Ornico lists the following amongst the top 25 social media brands on the continent: SuperSport, Woolworths, Vodacom, Safaricom, FirstBank, Jumia, Airtel, Pick n Pay, MTN and others. For its part, Brand Africa has at least six homegrown African brands included in its global listing of the Top 100 Most Valuable Brands.
"Brand owners should extend their presence into the .africa gTLD from this week to ensure that they secure their chosen brand as a workable domain name," said Mr Masilela.
This week's Sunrise Period follows last week's news that the Internet Corporation for Assigned Names & Numbers (ICANN) approved the launch plan and dates for .africa. ICANN’s approval of the .africa Launch Plan has triggered a final countdown process starting on 4 April 2017 leading to General Availability on 4 July 2017 when the public can apply for .africa domain names.
Confirmation of the .africa launch dates follows the delegation by ICANN of the rights to administer the new, pan-African .africa gTLD to ZACR on 15 February 2017. Delegation means .africa names can be published on the web.

How it all works

About .Africa

dotAfrica (.africa) is the new generic Top Level Domain (gTLD) for the African continent. It is an opportunity to forge a unique online identity which will associate your products, services and/or information with the continent and people of Africa.
The Registry Operator for .africa is the ZA Central Registry Not-for-Profit (ZACR – NPC) trading as Registry Africa.
.africa is endorsed and supported by the African Union Commission (AUC), individual African governments, regional governmental agencies and organisations and  enjoys widespread support from the African community.
.africa will bring the continent together as an Internet community under one umbrella allowing e-commerce, technology and infrastructure to flourish. It is truly an African initiative established by Africans for Africa and the world.
Visit for further details, or follow the conversation online using the hashtag #dotAfrica.
This news brought to you by Afro-Corne.

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Friday, 24 March 2017

Afro Leo

Geeks On A Plane touched down in Africa on Monday

A group of investors, technology fundis and interested entrepreneurs touched down in Africa on Monday, March 20.

The group, labelled “Geeks on a Plane” (#GOAP), will be visiting four of Africa’s technology start-up hubs over the 13 day visit, which wraps up on April 2.

Organized by 500 Startups, Geeks on a Plane (#GOAP) is a tour for startups, investors, and executives to learn about high-growth technology markets worldwide. We travel by planes, trains, and automobiles to the most exciting international startup scenes with the sole mission of uniting geeks and exploring cross-border opportunities. The result: a lifelong bond with fellow travelers, a wealth of new friends and business contacts in exploding technology markets, and a stronger appreciation for the cultural and economic ties that bind us globally.”

The Silicon Valley “Geeks” hope to ignite conversation with various techno incubation projects, innovators looking for start-up funds and generally get a feel for the emerging industries.

First stop is Lagos, Nigeria, (also often referred to as the ‘Yabacon Valley’), where they will attend a series of events, including a “Nollywood media and tech party night”. The second leg, Accra, Ghana which is fast becoming known as one of Africa’s leading technology centres. The geeks will join the Enterprise Africa Summit as well as get a glimpse of a $200 M business innovation hub called “Ghana Cyber City”.

In Johannesburg, they will be hosted to a panel event led by a not for profit organisation that gives “hand-ups” to start-ups.

While in South Africa, they will enjoy a three day safari and experience local culture by touring Soweto, the Cape Winelands and Table Mountain. They will also get to meet up with SiliconCape, a community of tech entrepreneurs, developers, creatives and angel investors who are passionate about entrepreneurship. 

The 500 Startup group is a tech accelerator organisation that operates tours all around the globe for investors to network and identify tech trends the world over.

"The African region is definitely of interest as we continue to look for and source deals from traditionally underrepresented ecosystems," said 500 Startups founding partner Dave McClure.

Afro Leo thinks this is inspiring:

“the future is for geeks”,

“have you ever seen a lion need glasses”

“have you ever heard of a lion seeing through glasses”

Welcome to Africa! Just don’t forget the IP, geeks. Facebook was stolen, there is a movie about it (our post on that here); Snapshot shares have been snapped up because of the IP in its data (Reinhardt Biermann covered it for us here) and well, here is a post from me just for you: Important IP Considerations for Entrepreneurs.
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