The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23
Can “The Is” and “The Ought” be Married? Creating a Sustainable Legal Framework for Intangible Property in the East African Community
Anthony C.K. Kakooza
Abstract
The Common Market Protocol of the East African Community (EAC) serves the purpose of encouraging free movement of goods and services across the borders of the EAC Partner States. However, recent legal battles in Uganda and Rwanda highlight the fact that the territorial nature of Intellectual Property Rights is at variance with the spirit of free trade within the EAC, and the legal protection meant to go with such free trade. Coupled with this is the fact that national bor- ders sometimes cut across ethnic groupings that share cultural traits. There is an increasing need to protect Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs) from mis- appropriation and exploitation, which inevitably pit different communities and their host coun- tries against each other within the EAC. This is primarily due to the fact that the Partner States within the EAC have responded differently to the need for policy and legal frameworks regarding the protection of TK and TCEs. This paper looks at the contrast between the general interests of the EAC Partner States as portrayed in key treaties that they have signed, and their legal obliga- tions and interests as derived from their respective policy and legal frameworks pertaining to the protection of Intellectual Property, TK and TCEs. The paper points out the underlying challenges that have enabled the situation as it is to be different from what it ought to be in terms of gener- ating enjoyment of free movement of goods and services, as well as promoting a better IP and quasi-IP (TK and TCEs) environment in the EAC. The paper goes on to argue that specific re- forms are needed within the EAC region as a whole, as well as within each Partner State, so as to generate a win-win situation.
Key words:
Regional Integration, EAC, Intellectual Property, Trademarks, Quasi-IP, Traditional knowledge, Traditional cultural expressions
Dr. Anthony C.K. Kakooza is Dean-Emeritus, Faculty of Law, Uganda Christian University, Mukono (Email: [email protected]). 1
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1 Introduction The effective enjoyment of Intellectual Property Rights (IPRs) by all stakeholders, that is, the rights owners, the enforcement agencies, and the consumers of the Intellectual Property (IP), is only feasible if there are enforcement mechanisms that are seen to work at the domestic level. This also includes harmonization of the IPR policy and legislative structures at the regional level, in this case, the region of the East African Community (EAC). Intellectual Property Rights, simply put, are the rights derived from creativity of the mind. Enforcement of IPRs is directly linked to economic development, because they are related to the encouragement of new ideas and honest dealing. The creation and gen- eration of IPRs out of ideologies is globally evident in a number of sectors. These are inclusive of the entertainment industry films, music and drama); the arts industry (includ- ing fine art and handicrafts); industrial innovations and designs; and branding and mar- keting of products and services. One key feature that stands out in IPRs is that regardless of the fact that they originate from specific localities, the market reach for such products and services easily transcends national boundaries. It is not the intention of the author of this paper to act as a doomsday prophet in respect of potential conflicts in trade at the EAC level. Rather, the claim raised is that if the East African Community Partner States work towards strong and well harmonized IP enforcement mechanisms, IPR holders within the Community (both foreign and local) will be encouraged to contribute more to this area of knowledge-based economies, and thus boost socio-economic development in the region. It should be noted from the onset, however, that the key focus of this paper is on trademarks as a specific type of IP that crosses borders more easily than any other type within the EAC. Another kind of intangible property that is given attention here because of its cross-border nature, is regarded as quasi-IP because, technically, some of the es- sential characteristics of IP are missing: the term quasi-IP is used to refer to Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs – otherwise also known as Folklore). The paper is divided into six essential parts. In the first part, I present the background of the research problem with a narrowed down focus on trademarks and quasi-IP. I then present the road-map of the research paper, its aims and objectives, its scope, the signif- icance and justification of the research, and a brief mention of the methodology em- ployed in gathering information for this paper. The early phases of the study were guided by the research objectives. In the second part of the paper, I explore the aspects of In- tellectual Property, TK and TCEs that have potential for cross-border conflict. Such po- tential conflict is tied to trade practices within the region, and the nature of the EAC state boundaries. The third part of the paper looks at the current legal structure within the EAC as it pertains to intangible property vis-à-vis the status quo in similar regional struc- tures. This third part serves the purpose of bench marking and examining best practices in respect of issues relating to trademarks, TK and TCEs in other regions that are in situations similar to those of the EAC. Part four highlights the challenges relating to trademarks, TK and TCEs in the EAC region that hamper the free movement of goods and services. In part five, I make some recommendations for an effective and harmonized legal system for the protection of intangible property, particularly for the three core areas highlighted earlier; and in the final part I present my conclusions.
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1.1 Background Intellectual Property Rights are territorial in nature. This implies that once a legal entity comes up with any creativity that is worthy of IP protection, such protection is granted subject to the laws pertaining to the specific country within which the creator or owner of the IP resides or engages in business related to such IP. However, such a legal entity may also seek to exploit other avenues that allow for protection in more than one country or jurisdiction. For instance, with regard to trademarks, a type of IPR, protection of the mark can be achieved through registration with the World Intellectual Property Organi- zation (WIPO), a registration system for trademarks which allows for international pro- tection. Details of such registration systems are given below. In as far as IPRs are con- cerned, this paper has narrowed down its focus to trademark rights in goods and services. The focus on trademarks naturally follows because the exchange of goods and services in the EAC region through trade involves the movement of trademarked goods and ser- vices across the borders of the Partner States. The issue of how to resolve emerging conflicts relating to the protection of trademarked products across the region was not given consideration until recently, when such conflicts came to the fore through two cases that were determined in Uganda and Rwanda. These cases are also discussed in detail below. The other intangible property rights that have a potential for conflict are rights accru- ing from Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs) in the East African region. A World Intellectual Property Organization (WIPO) handbook1 on the Policy, Law and Use of Intellectual Property defines TK and TCEs as follows:
… traditional knowledge is considered as the content, substance or idea of knowledge (such as traditional know-how about the medicinal use of a plant, or traditional ecological management practices), as distinct from the form, expression or representation of traditional cultures (such as a traditional song, performance, oral narrative or graphic design), which are known as TCEs or expressions of folklore. Thus, TK and TCEs emanate from traditional ways of life of a cultural or ethnic com- munity. In the African setting, historically, our ethic communities were split between different countries during the birth of the colonial era in the 1880s. Lord Salisbury, who was British Prime Minister at the time2, remarked cynically that: “We have been giving away mountains and rivers and lakes to each other, only hindered by the small impediment that we never knew exactly where they were.” As a result, at the end of the scramble for Africa, over 10,000 African communities had been amalgamated into forty European colonies and protec- torates3. This included communities in the East African region, as explained in section 3.2 below. The absence of a regional framework for TK and TCEs in the East African
1 WIPO Intellectual Property Handbook: Policy, Law and Use, (WIPO Publication No. 489(E), 2nd Ed., WIPO 2004) para. 7.71 at p. 446. 2 Robert Gascoyne-Cecil, 3rd Marquess of Salisbury, was three times Prime Minister of the United King- dom, from 1885 to 1886, 1886 to 1892 and 1895 to 1902. See: Marjie Bloy, ‘British Prime Ministers 1760-1901’, The Victorian Web: Literature, history & culture in the age of Victoria,
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 region is therefore likely to negatively affect the free movement of goods and services across the region which emanate from such quasi-intellectual property. The free movement of goods and services which are tied to these two aspects is there- fore essential within the legal and policy framework of the EAC.
1.2 Problem Statement The EAC strives for harmony by advocating for local and cross-border protection of Intellectual Property and free movement of goods and services. Unfortunately, however, there is currently no harmonized legal framework in the EAC Partner States through which IP-, TK- and TCE-related conflicts in cross-border trade within the region can be avoided or resolved amicably. There is a need within the EAC for an Intangible Property protection mechanism that can, in turn, boost market confidence in line with the princi- ple objectives of the EAC Treaty.
1.3 Key research question How can the EAC implement an adequate and well harmonized intangible property pro- tection mechanism for cross-border goods and services in the region? A consideration of this general question involves a breakdown into smaller research questions that this paper attempts to answer. These are as follows: a) Which intangible properties are commonly or potentially traded across the EAC borders and are the underlying IPRs in such properties protected? b) Which intangible property protection frameworks are currently in place and are they in harmony with the EAC Treaty principles, particularly in respect of trade in goods and services? c) How have similar issues been handled in other regional blocs and what lessons can be utilized in presenting recommendations for the EAC region?
1.4 Research objectives The specific objectives of this paper are as follows: a) To identify aspects of intellectual property, Traditional Knowledge and Cultural Expressions that have a potential for cross-border conflict in the light of the EAC trade initiatives. b) To analyse the current legal position in the EAC and the individual Member States (with regard to the aforementioned aspects) in comparison with the status quo in similar regional structures. c) To draw recommendations in respect of an effective harmonized legal system of intangible property protection. These research objectives determine the structure of the remaining part of the paper. The research conducted is entirely exploratory desk research that generally follows a qualita- tive approach. In this approach, an analytical method has been applied to collect and analyse data related to the current regulatory framework and practice of intellectual prop- erty, particularly trademark law, within the East African region. Data has also been col- lected and analysed in relation to TK and TCEs in the region. The interpretation of such data is then presented as a response to each study objective as outlined above. The next 4
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 part of this paper discusses the status and interpretation of trademark law, TK and TCEs with regard to what they are and what they ought to be in the EAC.
2 Aspects of IP, TK and TCEs that have potential for cross-border conflict in the light of the EAC trade initiatives
2.1 Difference between IP principles and the EAC agenda A trademark has been defined as “a distinctive sign that identifies certain goods or ser- vices produced or provided by an individual or a company.”4 Once a trademark right has been given to the owner of certain goods or services, the owner of the mark is guaranteed an exclusive right to the use of the mark on his goods or services, or to authorize others to use the mark on their goods or services under a contractual arrangement. A right to a trademark is therefore a great tool for economic empowerment and financial develop- ment, as it can enable the owner of the mark to develop a brand that will receive global recognition as the market for such products expands. However, regardless of the potential for global market reach for trademarked prod- ucts, registration of a trademark normally takes place in the national office of the territory within which the owner of the mark seeks protection and recognition5. This is a key aspect of the principle of territoriality in IP protection. Registration of a trademark cannot be obtained if the mark is ‘substantially identical with’ or ‘deceptively similar to’ a trademark already on the Register in the national office where the current trademark registration is sought6. Deciding whether a mark is ‘substan- tially identical’ is done on a case-by-case basis, and is determined by means of a side-by- side comparison of the marks in order to identify their similarities and differences. A trademark is considered as ‘deceptively similar’ if it so nearly resembles the other trade- mark that it is likely to deceive or cause confusion. Deceptive similarity is assessed not by means of a side-by-side comparison of the marks, but by comparing the ‘impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence would have’ on the one hand, and the impression that such persons would get from the defend- ant’s mark.7 It is also important to note that the courts have to take into consideration all the surrounding circumstances when considering the probability of deception8. These aspects of trademark law are based on the territorial principle. It is noteworthy that any other mark that enters a domain that already has trademark protection can be rejected by the national office where it seeks similar protection if it is considered ‘sub- stantially identical’ or ‘deceptively similar’. Because of the territorial principle, the EAC agenda is a recipe for conflict where cross-border trade in the region is concerned. Part 3 of this paper presents details of the current legal framework under which the EAC functions. What can be mentioned at this stage is that the EAC is operating an
4 What is Intellectual Property?, (WIPO Publication No. 450(E)) 8. 5 Ibid, at p. 10. 6 Anne Fitzgerald, Intellectual Property (2nd ed. 2002 Lawbook Co.) 198. 7 See: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 per Windeyer J at 414-415; Berlei Hesti Industries Ltd v Bali Co. Inc (1973) 129 CLR 353; Polaroid Corp v Sole N Pty Ltd [1981]1 NSWLR 491, all cited in Fitzgerald A., ibid at p. 200. 8 See: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, cited in Fitzgerald A., ibid at p. 201. 5
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 integration agenda which rests on four pillars: Customs Union, Common Market, Mon- etary Union and Political Federation9. Of these four pillars, the first three have already been operationalized through the signing of Protocols, namely: i) The EAC Customs Union Protocol, which was signed on 2nd March 2004 and became operational in July 2005; ii) The EAC Common Market Protocol, which was signed in November 2009 and came into force in 2010; iii) The EAC Monetary Union Protocol, which was signed in November 2013. The objective of these Protocols is to strengthen cooperation amongst the EAC Partner States by removing taxes on goods manufactured within the region, removing restrictions on regional trade and establishment of businesses in other Partners States, and free move- ment of persons, labour and capital. The Monetary Union also envisages the creation of a single currency within the EAC10. Of particular interest for our present purpose is the EAC Common Market Protocol, which is essentially designed to remove trade barriers within the EAC region, so as to generate free movement of goods and services. The intention is to boost economic inte- gration by discouraging all forms of discrimination in cross-border trade, thus encourag- ing economic cooperation. On the other hand, however, it is clear that trademark pro- tection is a form of discrimination in which Intellectual Property law is used to give pri- ority to a previously registered mark over another under the national laws of any given territory. Thus, the principle of territoriality in trademark law is in direct conflict with the objectives of the EAC, particularly the Common Market Protocol. Such conflicts have already been played out in two disputes with remarkably different outcomes in Uganda and Rwanda, as discussed under 3.0 below. The position in respect of ownership and utilization of the cultural heritage of ethnic communities within the EAC is also not without conflicts. An understanding of the orig- inality and ownership of TK and TCEs in the region is at the centre of this issue, as discussed below.
2.2 The principle of ‘ownership’ in TK and TCEs One important aspect of TK and TCEs that is not unique to the East African region is that such knowledge is often shared by ethnic communities that are spread across state borders. The question of ownership of such property rights is therefore of major con- cern, and is made worse by the fact that there are hardly any domestic laws that address the issue. In many instances, ethnic communities that are located in different states do not have corresponding or harmonized laws in those states that address the issue as to how their TK and TCEs should be regulated. “Ownership” of TK and TCEs is quite a complex term to contextualize. In the field of Intellectual Property law, “ownership” is best understood with reference to the origi- nator or financer of the product that is deemed as Intellectual Property. This makes issues such as duration of rights, enforcement, and administration easier to follow up. However, when it comes to TK and TCEs, origin is not easily ascertainable, especially since TK
9 Remarks by Hon. Julius Wandera Maganda, Minister of State for EAC Affairs, Republic of Uganda, at the Regional Integration Symposium organized by the East African Law Students Association, Uganda Christian University (UCU) Chapter, at the UCU Main Campus, Mukono on 6th October 2017. 10 Ibid. 6
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 and TCEs have to satisfy the requirement of having existed for a good number of years. In the absence of any accurately ascertained origin, the term “ownership” is replaced by that of “custodianship” of the rights in the TK and TCEs. This focuses more on the community from which such property emanates. Understanding the ownership of TK and TCEs in this way enables the local communities to deal with matters related to cus- todianship better, because TK and TCEs are the cultural heritage of such communities. This approach gives the members of the communities a sense of identity, security and purpose. However, with communal ownership of such property rights in TK and TCEs, there is always the challenge of how to deal with misappropriation of the underlying property rights. Not every ethnic community within the EAC region is considered as a legal entity with the right to sue or be sued. Following up on misappropriation of TK and TCEs therefore poses a challenge, especially where the communities concerned are cross-border communities. Government intervention is therefore a good strategy to em- ploy. A case in point is that of the kikoi – a Kiswahili word for the distinctive colourful wrappers worn by men and women all over East Africa, from Kenya and Tanzania to the Democratic Republic of Congo (DRC). The kikoi is considered as part of the Traditional Cultural Expressions of various ethnic communities within East Africa, especially the Maasai community, which is on both sides of the border between Kenya and Tanzania. In 2008, a British company tried to register “Kikoy” as its trademark. The registration of trademark rights to this company would have ultimately given it sole commercial rights over the use of the name “Kikoy” and hence prevented free use of the term kikoi within East Africa. The government of Kenya took action and successfully opposed the appli- cation for trademark registration.11 We need to bear in mind, however, that this form of TCE is shared across East Africa and not just in Kenya alone. It is no surprise that Kenya is at the forefront in respect of guarding its TK and TCEs. It is far ahead of the other EAC Partner States in the creation of a legal framework for TK and TCEs. As is highlighted in the next part of this paper, the Partner States of the EAC have no common ground in the regulation of TK and TCEs. This makes it difficult when it comes to making concerted efforts towards protection of such communal rights across the region or between Partner States. Further, it can also complicate trade in goods and services associated with TK and TCEs within the region, as long as the question of ownership is not effectively resolved through domestic and territorial regulations that are in harmony with one another. The disparities in the legal framework within the region are illustrated in the next section.
3 The current legal position within the EAC and the individual Partner States in comparison with the status quo in similar regional structures
3.1 Different dimensions in trademark law Part 2.1 of this paper has shown how the EAC objective of free trade in goods and services across the region conflicts with the principle of territoriality under Intellectual
11 Victor Nzomo, ‘The Intellectual Property tale of how Kenya almost lost the Kikoi fabric’, IP Kenya: Intellectual Property from a Kenyan Perspective
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Property law, and more particularly trademark law. This section will show the particular legal provisions that highlight this division, and likely frictions in the areas of TK and TCEs across the region. Article 7(1) of the Treaty establishing the EAC lays the foundation for the operational principles of the EAC. Clause (c) stipulates that the objectives of the EAC shall include ‘the establishment of an export oriented economy for the Partner States in which there shall be free movement of goods, persons, labour, services, capital, information and tech- nology.’ This is emphasized further in Article 76 of the same Treaty which provides for the establishment of a Common Market. Clause 1 of Article 76 is to the effect that there shall be free movement of labour, goods, services, capital and the right of establishment. These provisions highlight the principle objective of the EAC Partner States which is that cross-border trade in the region should not face any hindrances that would prevent it from flourishing. This is inclusive of competitive strategies such as Intellectual Property Rights. However, such provisions should not be interpreted as absolute. This is because the EAC has other instruments which amount to derogation of the ‘free movement’ princi- ple. Article 5 of the Protocol on the establishment of the East African Community Com- mon Market (Common Market Protocol), for instance, provides for the scope of coop- eration in the Common Market. Clause (3)(k) of that Article caters for cooperation in the promotion and protection of Intellectual Property Rights. This is further clarified by the stipulations in Article 43 of the Protocol which provide for cooperation in IPRs. Con- sidering the territorial nature of IPRs alluded to earlier, these provisions go to show that even if the EAC advocates free movement of goods and services, it still shows respect for IPRs, expressing recognition of such rights across the region as the Partner States engage in cross-border trade. Article 43 (5) of the Common Market Protocol says that directives should be put in place for the EAC Partner States to cooperate in the administration, management and enforcement of IPRs. However, the picture on the ground is not reflective of this stipu- lation because the Partner States have no harmonized position on IP in terms of admin- istration, management or enforcement. There are no domestic legal frameworks to that effect, and the respective Partner State IP offices do not have frameworks in place that provide a hand-in-glove approach to the running of IP-related activities across the EAC region. The extent to which there is approximation of laws is reflected in the Kenyan and Ugandan trademark legislation. Section 36(3) of the Ugandan Trademark Act12 and Sec- tion 7(2) of the Kenyan Trademark Act13 both stipulate that registration of trademarks is a right given within the specific jurisdiction of the Partner State in which such registration has been sought and cannot be extended elsewhere. The wording of the provisions in both cases is remarkably similar, as shown below: Section 36(3) of the Ugandan Trademark Act provides that:
The right to the use of a trademark given by registration in Part A of the register, shall be subject to conditions or limitations entered on the register and shall not be taken to be infringed by the use of that mark in any mode, in relation to goods to be sold or otherwise traded in a place, in
12 Act No. 17 of 2010, Laws of Uganda (Revised Edition 2000). 13 Cap. 506 of the Laws of Kenya (Revised Edition 2012). 8
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relation to goods to be exported to a market or in any circumstances, to which, having regard to the limitations, the registration does not extend. Similarly, Section 7(2) of the Kenyan Trademark Act says:
The right to the use of a trade mark given by registration shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark in any mode, in relation to goods to be sold or otherwise traded in any place, in relation to goods to be exported to any market or services for use or available for acceptance in any place or country, or in any other circumstances, to which, having regard to any such limitations, the regis- tration does not extend. None of the other Partner States has similar provisions. These two related provisions from Uganda and Kenya highlight the fact that protec- tion of trademarks for goods and services in Kenya and Uganda is strictly premised on territoriality, on the basis of which it will not be deemed as infringement if the mark is used in places where it has not been registered. A trademark owner will have crossed the proverbial red line, however, if he or she tries to register a trademark similar to an existing trademark in another region14. The only exception would be circumstances under which concurrent use of such marks is favoured within the same jurisdiction. Concurrent use, under Sec. 27 of the Trademark Act15 of Uganda, applies to a situation where registration by more than one trademark owner is permitted for honest concurrent use or other special circumstances in respect of a) The same goods or services; b) The same description of goods or services; c) Goods and services or descriptions of goods and services which are associ- ated with each other; or d) Trademarks that are identical or nearly resemble each other, subject to given conditions and limitations. Similar provisions regarding concurrent use of marks are found in Section 15(2) of Kenya’s Trademark Act16, Section 20(2) of Tanzania’s Trade and Service Marks Act17 and Article 290 of Burundi’s legislation on Industrial Property 18. The legislation in Rwanda19 is not well articulated in connection with the concurrent use of trademarks that are identical or similar. The article that comes closest to the above provisions is Article 139. It stipulates that for the purposes of Article 136 (on confusing marks),
the Minister may determine requirements to be fulfilled by a well-known trademark in the Repub- lic of Rwanda or for registration of marks that are identical or closely resemble each other in respect of the same goods or services by more than one owner.
14 Sec. 25(2) of the Trademark Act of Uganda; Sec. 20 of the Tanzania Trademarks and Service Marks Act; Sec. 15 of the Trade Marks Act of Kenya. 15 Op cit, note 12 supra. 16 Op cit note 13 supra. 17 Trade and Service Marks Act, No. 12 of 1986. 18 Law No. 1/13 of July 28, 2009 relating to Industrial Property in Burundi. 19 Law No. 31/2009 of 26/10/2009 on the Protection of Intellectual Property. 9
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The status in South Sudan is hazy in as far as IP legislation is concerned. Although the draft Trademarks Bill of 2013 was released for Ministerial debate, no further steps have been undertaken – probably due to the unstable political situation. This newest member of the EAC thus currently relies on the Sudan Trade Marks Act of 1969 (from neigh- bouring Sudan) in admitting trademark applications20. Resulting from the aforementioned provisions on the territoriality of trademark law, a few related cases have arisen within the EAC with interestingly different outcomes. In Nairobi Java House Limited v. Mandela Auto Spares21, Justice Christopher Madrama overturned a ruling by the Registrar of Trademarks following an objection filed by the Respondent against the Appellant. In the Registrar’s ruling, registration had been refused in respect of Trademark Application no. 48064 for JAVA HOUSE & COFFEE in Part B of the trademark register under Class 43 of the Nice Classification22. Nairobi Java House Limited had argued before the Registrar that their marks should be allowed in Uganda on the basis of the legal provisions on ‘concurrent use’. However, their reasoning was that because the marks had been used previously in Kenya, this amounted to ‘use’ in Uganda as well. The Registrar rejected this argument and stated that:
I do not accept the argument that use of the mark in another country like Kenya amounts to use in Uganda mainly because of the principle of territoriality. However, on appeal, Justice Christopher Madrama, the then High Court Judge, set aside the Registrar’s ruling refusing the applications. In his judgment, the Honourable Judge noted as follows:
It is a matter of public interest for the EAC to consider what to do with marks registered prior in another Member State and sought to be registered in yet a different Member State of the Com- munity. . . I have considered the fact that Kenya and Uganda are part of the EAC and operate under the principle of complementarities under Article 7 of the [EAC] Treaty. The Community Law is that Member States, which include Kenya and Uganda, shall enact similar laws with regard to the removal of non-tariff and other technical barriers to trade and measures that restrict free movement of goods and services. He went on to add that
The decision of the Registrar stifles free movement of services within the EAC by restriction on the registration of a trademark registered prior in time in Kenya on the ground of registration of a trademark albeit registered later in time in Uganda. Ultimately, the judgment was to the effect that the Ugandan and Kenyan marks could be allowed under concurrent usage in Uganda. Justice Madrama’s decision gave priority to regional economic importance over the principle of territoriality under trademark law by stating the law as it ought to be, as opposed to what it is. He laid emphasis on evidence of the use of a mark in one Partner
20 Nzwili Fredrick, ‘As South Sudan joins the East African Community, some experts worry over its IP Laws’ (2016 March 8), Industrial Property Watch. Available at
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State of the EAC as relevant in establishing acquired distinctiveness through use in an- other Partner State. In so doing, however, this decision violates the principles in section 36(3) of the Ugandan Trademark Act and Section 7(2) of the Kenyan Trademark Act which have been quoted above. The two Acts have similar provisions on the importance of territoriality under Trademark law. The High Court decision also disregards the prin- ciple of the law enshrined in section 44 of the Ugandan Trademarks Act. This provision gives the Registrar of Trademarks the power to refuse to register a trademark if it is satisfactorily proved that the mark is identical with or closely resembles a trademark that has already been registered in Uganda. In another case that put the EAC Treaty to the test, two rival Tanzanian firms were engaged in a court battle over the right to a trademark in Rwanda23. The Bakhresa Group and Azania Group of Companies are rival firms in Tanzania. The Bakhresa business en- tity owns brands such as Azam wheat flour products, while the Azania Group of Com- panies, which is owned by Mikoani Traders Limited, also owns a variety of brands, in- cluding Azania wheat flour products. In 2009, Bakhresa Grain Milling Limited was in- corporated in Rwanda and subsequently registered a trademark for Azania through the Rwanda Development Board (RDB). In 2011, Mikoani Traders Limited also entered into the Rwandan Business environment with a view to setting up a grain milling factory pro- ducing Azania flour under the same Azania Trademark that it enjoyed in Tanzania. It was shocked to realize that the trademark was already registered in the name of its Tanzanian rival – Bakhresa Grain Milling Limited. In January 2015, the case came up in the Nyarugenge Commercial Court with lawyers for the Mikoani Business entity presenting the argument that Bakhresa had acquired the trademark in Rwanda in bad faith and against the principles of fair competition. The Rwanda Development Board defended its position in giving trademark rights to Bakhresa, and declared:
It is mandatory to register a trademark to claim a right; the protection is territorial. There is no agreement or Convention between EAC Member States on trademark protection . . . The office of the Registrar General followed the principle of ‘First to file, first to protect’ and since Mikoani’s Azania trademark is only registered in Tanzania, it does not have effect in another country.24 In February 2015, the Commercial Court gave its ruling in favour of Bakhresa Grain Milling (Rwanda) Limited25. Mikoani’s lawyers had also argued that the giving away of Mikoani’s official brand of AZANIA to a rival brand within the territory of Rwanda undermined the East African integration process. The Court rejected this argument and opined that Bakhresa received trademark rights to AZANIA in Rwanda under the law.26 The differences between the AZANIA case in Rwanda and the CAFÉ JAVAS case in Uganda are apparent. The Rwandan case gave credence to the territoriality of trademark rights in a particular EAC Partner State over and above the principles of economic inte- gration that the Court in the Ugandan case decided to focus on. It is likely that the Rwan- dan case created a strong precedent for future cases of this nature within the EAC bloc, but it is certain that such conflicts are likely to arise again. Nonetheless, the CAFÉ JAVAS
23Kenneth Agutamba, ‘Tanzania firms feud over brand name in Rwanda’, The New Times, Rwanda,
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 case – considering that it was never appealed against – creates a dark cloud over invest- ments in Uganda related to branded products and services that are of a cross-border nature, in the sense that business persons will always be compelled to look over their shoulders to ascertain if there is any competitor within the EAC region. A competitor with a similar brand might be allowed to register their trademark in Uganda and usurp part of the existing market, on the basis of the CAFÉ JAVAS judgment, and in the inter- est of EAC economic integration, as opposed to respecting trademark territoriality. There are other regional and international instruments that the EAC Partner States are parties to, which can help to identify future potential threats to the smooth flow of goods and services across the EAC. For instance, all the six Partner States of the EAC are members of the Africa Regional Intellectual Property Organization (ARIPO,) and, except for South Sudan, they are also party to the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement of the Word Trade Organization (WTO). The legal instrument for trademark protection under ARIPO is the Banjul Protocol on Marks, which caters for Trade and Service Marks by providing a centralized trademark registra- tion procedure. However, apart from Uganda and Tanzania, the other EAC Partner States are not signatories to the Banjul Protocol. The duration of trademark protection under the Banjul Protocol is ten years,27 while Article 18 of the TRIPS Agreement sets a period of at least seven years28. The EAC Partner States, too, have differing periods for the protection of trademark rights. Kenya, Rwanda and Burundi each have a term of ten years, which is renewable, while Uganda and Tanzania maintain a term of seven years, renewable. These differences in the duration of trademark protection would not, ideally, be a problem in the light of the territoriality principle of Intellectual Property law. How- ever, they could be a cause of confusion within the EAC as a regional market, if a trade- mark that is deemed abandoned in one state is still operational in another state. This also goes against the principle of adoption of common IP positions set out in Article 43(3) of the EAC Common Market Protocol. The EAC Partner States have, however, entered into other regional and international agreements with a view to strengthening and harmonizing their regional IP interests. For instance, save for South Sudan, all the EAC Partner States are signatories to the COTO- NOU Partnership Agreement. This obligates signatories to ensure an effective and ade- quate level of IP protection, which is crucial for reducing distortions and impediments to bilateral trade between the European Union (EU) and African, Caribbean and Pacific (ACP) countries29. The COTONOU Agreement is intended to prevent any frictions that may be a hindrance to international trade. It commits the signatory States to creating measures that would, among others, lead to a harmonized system of IP protection that guarantees smooth trade between the EU and ACP Countries. The EAC Partner States stand to benefit a lot from trading with developed markets within the EU and therefore have to diligently work against disharmony in their domestic IP legislation. This is be- cause the EU naturally gives more priority to trading within its own region, and in in- stances such as the COTONOU Agreement, it requires more commitment from the Af- rican signatories for the sustainability of trade relationships.
27 Section 7(12) of the Banjul Protocol on Marks. See:
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3.1.1 Lessons from the European Union A few lessons can be drawn from the European Union (EU) as a regional bloc. Part three of the Treaty establishing the European Community (EC Treaty) provides for the free movement of goods under the common rules on Competition, Taxation and Approxi- mation of Laws (Title V)30, similar in principle to the EAC Treaty provisions elucidated in 3.1 above. However, such freedom is restricted where the “protection of industrial and commercial property” is concerned. 31 This, in effect, includes Intellectual Property Rights and ultimately means that the regional body also respects the territorial nature of Intellectual Property Rights in fostering trade within the region. Nonetheless, in the interest of boosting trade initiatives within the EU market, while at the same time giving due cognizance to the territorial nature of IPRs, a number of strategies for harmonization of domestic laws were established by the EU. The EU rec- ognized the need to harmonize its IP laws, not only in the interest of smoothening the flow of trade in the region, but also because of the wide disparity between the legal sys- tems of the Member States. Article 95 (ex article 100a) of the EC Treaty has been utilized as an avenue through which Member States can adopt legislative acts “for the approxi- mation of the provisions laid down by law […] in Member States which have as their object the establishment and functioning of the internal market.” EU countries are there- fore at liberty to exploit this provision with a view to preventing hindrances to cross- border trade due to differences in their domestic laws.32 Trademark law was given first priority in the quest for harmonization in the EU mar- ket. In 1989, Directive 89/104 was passed with the objective of approximating aspects of trademark law which had a direct significance for the functioning of the common market. The Directive stipulates common conditions for obtaining a registered trademark in all Member States of the EU, and common grounds for refusal of registration, inva- lidity and exhaustion of rights. The territorial nature of trademark law is nonetheless re- tained under the Directive33. The take-home from the EU experience is that although the EU – similar to the EAC – strives for freedom of trade in goods and services, it respects the territoriality of trademark law for each Member State and does not want to be seen as usurping regional positions over and above national ones. The approximation of IP laws within the EU therefore enables business entities and IP owners to gain the confi- dence needed in investing within the region, while protecting their IP interests under a system that is common to all EU Member States. This is without the fear that anti-com- petitive tendencies or unfair business practices orchestrated by domestic legislation or case law would marginalize or erode one’s IP interests under those of a business com- petitor. The EU also provides for instances where a trademark can be registered to cover the whole territory of the EU and thus benefit from a single regulatory mechanism. Based on Article 308 of the EC Treaty, Council Regulation 40/90, which was adopted in 1993, provides for a single application for trademark registration to enable the rights holder to gain protection in the whole European Community. 34 In essence, an applicant who
30 EC Treaty Part Three, see:
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 chooses to utilize this regulation need not worry about unfair competition and issues of concurrent use that may disfavour his or her trademark, since the trademark is given protection in the whole EU market. The ARIPO Banjul Protocol on Marks35, juxtaposed with the EC Council Regulation 40/90 referred to above, could have served as the best solution to a single trademark registration system within the EAC. However, not all the EAC Partner States are contracting States to the Banjul Protocol save for Uganda and Tanzania. As such, the filing of a single trademark application under the auspices of the Banjul Protocol to cover the whole EAC region cannot work.
3.2 Regional dimensions in Traditional Knowledge and Traditional Cultural Expressions Another area that has the potential to cause friction relates to the harmonization of pro- tection and administrative mechanisms for TK and TCEs across the EAC region, in the light of different existing legal frameworks within the Partner States. The ethnic groups within the EAC include Bantu, Nilotic and Nilo-Hamites, whose communities are often spread across borders. Groups that share cultural traits but which straddle a national border include the Bahima in south-western Uganda, the Batutsi in Rwanda, the Turkana in north-western Kenya, the Karamojong in north-eastern Uganda, the Masaai who cut across southern Kenya and northern Tanzania, and the Sebei in eastern Uganda and western Kenya. However, despite various ethnic communities being spread out across the EAC, there is a lack of harmony in the measures being taken to protect their TK and TCE interests. As highlighted in part 2.2 of this paper, Kenya has so far been the most active in this respect. While there is no documented effort to protect the Masaai heritage in Tanzania, for instance, the Kenyan government has reacted to misappropriation of TK and TCEs belonging to the same community within Kenya36. The technical difficulties and potential conflicts attached to TK and TCEs across the EAC emanate from the different legal frameworks for protecting the EAC cultural her- itage as a whole. As of 2018, Kenya is the only Partner State within the EAC that has a legal framework that specifically provides for the protection of its TK and TCEs. In the National Constitution, Article 11(2)(a) provides for the promotion of all forms of “na- tional and cultural expression”37. It is also the only regional member with a policy on TK and TCEs which dates back to 200938. Policy Statement No. 10 stipulates that cross- border laws “shall apply with regard to TK, Genetic Resources (GR) and TCEs which are owned across national borders”. However, there is no explanation as to what amounts to “cross-border laws”. As a follow-up to this Policy Statement, in 2016 Kenya went further to enact legislation on TK and TCEs39. Under section 6(8) of this Act, it stipulates that in case of concurrent claims in respect of TK arising from different communities, the National Competent Authority shall determine the claims using “customary law, local information sources and any other means that may be applicable.” This provision is not
35 See fn 27 supra. 36 Op cit supra fn 11; also see:
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 clear as to the origin of such communities, but appears to relate to communities that are purely Kenyan. A much more elaborate provision is found in section 42(3) which stipu- lates that: “The National Competent Authority may determine cases of concurrent claims from communities of different countries with regard to traditional knowledge or tradi- tional cultural expressions through the application of customary law, local information sources, alternative dispute resolution mechanisms, and any other practical mechanisms.” This is an adequate provision that offers sufficient remedies in the event that cross-bor- der communities within the EAC should become involved in conflicts over ownership, accreditation, control and benefits accruing from exploitation of TK and TCEs. Alt- hough the Kenyan Government (through the National Competent Authority) has over- riding control in such matters, the provision recognizes the importance of customary law and other practical mechanisms for resolving such matters. The Kenyan legislation on the protection of TK and TCEs is, to a large extent, tailored around the Swakopmund Protocol40 that was engineered to protect TK and TCEs at a regional level by the ARIPO Member States. The Swakopmund Protocol says that the relevant National Competent Authorities of the Contracting States and the ARIPO Of- fice shall work together in registering the owners of TK and TCEs and maintaining the relevant records in instances where two or more communities in the same or different countries share the same TK and TCEs41. The ARIPO office is given a mandate under the Protocol to handle administration and enforcement matters where the TK and TCEs belong to cross-border communities.42 These Swakopmund provisions would thus serve as model laws for the EAC Partner States in the event of a dispute over cross-border TK and TCEs. However, Kenya is currently the only EAC Partner State that has ratified the Swakopmund Protocol. Burundi, although not a signatory to the Protocol, also caters for cross-border use of TK and TCEs in its Law relating to Industrial Property.43 Article 260 states that:
A local community which occupies both part of the territory of Burundi and part of the territory of a neighboring country may acquire rights in its traditional knowledge and enforce them in the territory of Burundi, in accordance with this Law. If the community’s traditional knowledge is also protected in the neighboring country, the registration and protection of such knowledge in the territory of Burundi shall not prevent this same community from acquiring rights in the same traditional knowledge and enforcing them in the neighboring country in question. Article 260 thus grants cross-border communities that are part of Burundi the freedom to decide whether to protect their TK and TCEs under the law of Burundi or under that of the other country to which the community belongs. The risk of conflicting Partner States can therefore hardly arise where such legislative provisions are in place. Tanzania, on the one hand, provides for TCEs in its Copyright and Neighbouring Rights Act No. 7 of 1999 and, on the other hand, provides for TK in its Traditional and Alternative Medicine Control Act No. 23 of 2002. Both laws make no mention of cross-border own- ership of TK and TCEs. This is regardless of the fact that Tanzania shares a lot of TK
40 The Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore came into force on 11th May 2015. See:
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 and TCEs with Kenya through cross-border ethnic communities like the Masaai. This is similar to the case in Rwanda, which shares cultural traits with Uganda along its borders. The IP legislation in Rwanda also makes minimal provision for the protection of TK and TCEs, but does not say anything about how to handle conflicts affecting cross-border communities.44 With Kenya and Burundi as the only two countries having legislation in place in re- spect of cross-border TK and TCEs, there is glaring disharmony in this sphere within the EAC region. This can negatively affect sound management of cultural rights at the regional level. Moreover, it can also negatively affect commercial exploitation of TK and TCEs across EAC borders or in outside markets. Conflicts in this field can easily arise over the ownership of TK and TCEs in cross-border communities, where the two host- ing countries both claim ownership, or over the commercial benefits that may accrue from the community’s dealings with the outside market, for instance through tourism. One could argue that allocation of the right to the commercial benefits may be easy, depending on which Partner State engages in commerce on behalf of its local ethnic community. However, the rights subsequent to engaging in commercial activities relating to TK and TCEs are more difficult to resolve. These include the right of attribution, access and benefit sharing. One may further argue that prior informed consent before exploitation of TK and TCEs is challenging with cross-border ethnic communities. The community in one country may give its consent to TK and TCE exploitation, while the other part of the same community in the other country may object to such exploitation. Ultimately, as is the case with Kenya, customary law and other practical mechanisms can and should be employed to resolve such scenarios. These are the evident challenges that can come with commercial exploitation of TK and TCEs in the region. The next part of the paper discusses such challenges and many more in greater detail.
4 Challenges that cut across the EAC region The Treaty establishing the EAC was signed in November 1999 and entered into force on 7th July 2000 following ratification by the three original Partner States of Kenya, Uganda and Tanzania. To recap briefly, Article 7 of the Treaty outlines the operational principles of the Community. These include the establishment of an export-oriented economy with free movement of goods, services, information and technology, among others. It is in this bracket that Intellectual Property falls. The EAC Partner States are also members of the World Trade Organization (WTO), save for South Sudan which is still undergoing the accession process. By virtue of membership of the WTO, the EAC Partner States are also signatories to the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement. The purpose of the TRIPS agreement is the provision of a uniform set of regulations across the globe that provide adequate standards of protection for intellectual property as well as greater predictability and stability in international eco- nomic relations. As the EAC undertakes various measures to strengthen the Treaty obligations, putting Article 7 of the Treaty into practical effect will require a harmonized policy and legislative
44 Op cit fn 19 supra. See Article 289 which simply states that the protection of traditional knowledge and folklore is granted under a ‘special law’. 16
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 framework for the protection of Intellectual Property Rights, among other areas of in- terest. In effecting measures to fulfil their obligations under the TRIPS agreement, it is also crucial to ensure that the Intellectual Property Rights of the Partner States are respected and equally enforced across the East African borders. However, in as far as growth and utilization of the Intellectual Property environment are concerned, challenges remain with regard to implementation of the EAC principles enshrined in the Treaty. These challenges can be articulated as follows:
4.1 Limited IP awareness amongst all stakeholders The absence of a robust understanding of Intellectual Property and the benefits of effec- tive administration and enforcement of this branch of the law have created an inadequate growth of this sector across the EAC region. Although the EAC Treaty and the Common Market Protocol have clear provisions on harmonization of domestic laws within the Partner States in this regard, as has been shown in part 3.1 above, there is no concerted effort to boost awareness of IP within the region. The limited awareness has a ripple effect in many ways. For instance, it affects the way cross-border agencies handle IPR- infringing goods that cross the EAC borders; it affects how IP disputes are resolved by the judicial tribunals within the EAC, in the sense that rulings across the region need to embody a mirror effect, otherwise owners of IP would be discouraged from investing in the region; it also affects how IP is taught in the various educational institutions. Inade- quate or imbalanced teaching of IP across the EAC region can negatively affect the growth and appreciation of innovation and creativity within the EAC.
4.2 Poor and uncoordinated administrative and enforcement mechanisms in the region The EAC Partner States have made imbalanced responses to the signing and ratification of regional instruments such as the Banjul Protocol on trademarks. As mentioned above, Uganda and Tanzania are currently the only signatories to the ARIPO Banjul Protocol. The implication is that the administrative and enforcement mechanisms accruing from the regional obligations of the EAC Partner States vary, and can complicate regional trade, which involves protection of trademark rights. It should be emphasized that stand- ardization of the treatment of IP matters across the EAC is fundamental to such a com- mon market in which goods and services are meant to move freely.
4.3 Limited competence in handling IP matters and matters concerning cross-border TK and TCEs Inadequate competence in the handling of matters concerning IP, TK and TCEs stems from poor appreciation of their significance. IP is not an integral part of education systems across the East African region, whether in elementary schools or in institutions of higher education. There are very few trainers of IP throughout the educational industry which has caused the growth and appreciation of IP across the EAC to move at a snail’s pace. Unfortunately, this has also created a public system in which various forms of IPR infringement are the norm across various sections of society, with enforcement agencies either disregarding such practices or simply being unable to identify them. As a result, this has stifled the growth of IP in the region. Considering that IP is tied to other business
17
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 interests, limited capacity in IP matters within the EAC also discourages economic growth or disables economic activities from exploiting their full potential. The same is also evident in the appreciation of TK and TCEs, where the communal custodians of cultural heritage have so far made a lukewarm response to the exploitation of their TK and TCEs. The potential of TCEs or folklore can be realized through (though not limited to) the tourism industry, while TK can contribute to the growth of the health industry. However, as has been shown above, due to the disparities in their legal and policy frameworks regarding TK and TCEs, the Partner States have not yet engaged in any concerted efforts to develop this nascent area for purposes of socio-economic de- velopment. This is partly due to a limited knowledge of how to fully exploit their TK and TCEs without negatively affecting the social values or sacred rites embedded within such cultural heritage. Another unfortunate outcome in this regard is that foreign entities or individuals have open and unlimited access to the East African cultural heritage, and continue to exploit the weak legal frameworks by misappropriating TK and TCEs for their own personal and commercial benefit, much to the detriment of the affected com- munities and host countries.45
4.4 EAC Partner States are signatories to different regional and international IP instruments Conflict is inevitable where Partner States to a regional body are also obligated to other regional bodies to which they are contracting parties. This creates different approaches to, and obligations in respect of, IP protection. Kenya, Uganda, Rwanda and Burundi are members of the Common Market for Eastern and Southern Africa (COMESA); Kenya and Uganda are members of the Inter-Governmental Authority for Development (IGAD); Rwanda and Burundi are part of the Economic Community of Central African States (ECCAS); Rwanda, Burundi and the Democratic Republic of the Congo (DRC) are members of the Economic Community of the Great Lakes Countries (CEPGL); and Tanzania is a Member of the Southern African Development Community (SADC)46. Multiple membership creates disharmony, and contracting parties are sometimes pushed against the wall in their efforts to implement conflicting obligations, or where they have to choose in their trade arrangements between two countries that belong to different regional bodies, such as the EAC and SADC. Ultimately, this amounts to the EAC Partner States lacking the political will to implement the objectives and principles of the EAC Treaty, due to divergent interests, and to what they consider as more im- portant domestic matters. All this culminates in legal uncertainties that are not good for regional trade, as they can negatively affect the investment climate47.
45 This could easily have been the case in connection with the misappropriation of the kikoi if the Kenyan Government had not acted swiftly. See fn 11 above. However, there are many related cases where misappropriation of TK and TCEs from the EAC region has gone on unchecked. 46 W. Bruade, ‘SADC, COMESA and the EAC: Conflicting regional and trade agendas’, Institute for Global Dialogue, Occasional Paper No. 57, Johannesburg, South Africa, October 2008 at p. 5, See:
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4.5 Limited autonomy and variance in IP administrative structures across the East African region The structure of IP government offices across the East African region is inconsistent, and this can affect smooth and effective implementation of administrative decisions, be- cause there is more red tape to be overcome in some government offices than in others. The key IP offices in the East African region are as follows: i) Burundi: Office of the Director of Industrial Property, Ministry of Trade, Indus- try and Tourism, based in Bujumbura. ii) Rwanda: Office of the Registrar General, Rwanda Development Board, based in Kigali. iii) Kenya: Kenya Industrial Property Institute (KIPI), Ministry of Trade and Indus- try, Nairobi; and, the Kenya Copyright Board (KECOBO), The State Law Of- fice – Office of the Attorney General, based in Nairobi. iv) United Republic of Tanzania: Copyright Society of Zanzibar (COSOZA), Ministry of Constitutional Affairs & Good Governance, Zanzibar; the Copyright Society of Tanzania (COSOTA), Dar es Salaam; the Business Registrations & Licensing Agency (BRELA), Ministry of Industry and Trade, Dar es Salaam; and the Zan- zibar Business and Property Registration Agency (BPRA). v) Uganda: The Uganda Registration Services Bureau (URSB), Ministry of Justice & Constitutional Affairs, based in Kampala. vi) South Sudan: Ministry of Justice, based in Juba. Firstly, some of the offices in the above list operate under a semi-autonomous structure, while other offices fall directly under the direction of ministries, in either the trade or judiciary sectors. Secondly, Burundi, Rwanda and Uganda have one government agency that handles all IP-related matters while Kenya has different offices with specialized han- dling of different IP rights. Thirdly, the unique situation in Tanzania is that it is a com- position of the United Republic of Tanganyika (mainland Tanzania) and Zanzibar. As such, despite the Union of these two territories in 1964, they still maintain different pieces of legislation for Intellectual Property protection. Thus, the territorial nature of protec- tion granted to IPRs in mainland Tanzania does not extend to Zanzibar and vice versa48. As for South Sudan, it is still under the auspices of the Sudan, and does not have any IP legislation or institutional structures of its own. The Ministry of Justice continues to op- erate under the policy and legal structure of neighbouring Sudan. Ultimately, all these differences amongst the IP units in the Partner States translate into disharmony in mat- ters related to administration and enforcement of IPRs across the region.
4.6 Imbalance in prioritization of Intellectual Property Rights in the region The EAC Partner States display different priorities when it comes to matters related to the protection of IPRs. This is reflected in the nature and status of the policy and legal frameworks in place. Kenya for instance, provides for the protection of IP, TK and TCEs in its National Constitution49; it is the only Partner State with unique (sui generis) legislation on the protection of TK and TCEs, and has a draft policy on IPRs. In April 2017, Uganda validated its IP policy and is in the process of passing the implementation plan for the
48 Mali, G. Trademark registration in Tanzania (2016). See:
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 same through Parliament. However, it does not have any specific mention of IP protec- tion in its Constitution, neither does it have any specific legislation concerning TK and TCEs. The same picture is reflected in the legislative structure in Tanzania. Rwanda is currently the only EAC Partner State with a national IP policy which was unveiled in November 2009. There is, however, no specific mention of IP in terms of protective measures stipulated in the National Constitution, neither is there any specific domestic legislation that addresses TK and TCEs. As is the case with Kenya, the Constitution of Burundi specifically provides for the protection of IPRs50. However, although the Law on Industrial Property provides for the protection of TK and TCEs51, there is no policy in place for IP in the country. As for South Sudan, it is not necessary at this stage to evaluate its status in terms of IP prioritization, due to the political instabilities that have plagued the country over the past few years. Nonetheless, by way of caveat, it can be argued that prioritization of IP interests can- not only be premised on the status of the policy and legal frameworks in each of the Partner States. This alone would present a lopsided picture. The true picture can be re- vealed by evaluating the national development plans and strategies of each of the Partner States with a view to ascertaining where IP falls within such plans. Kenya’s Vision 2030, for instance, aims at making Kenya a fully-fledged middle-income industrialized country by the year 2030. The same perspective is reflected in Tanzania’s Development Vision 2025, which targets transforming the economy into “a diversified and semi-industrialized economy with a substantial industrial sector comparable to typical middle-income coun- tries”52. Uganda also shares the same ambition in its Vision 2040, which focuses on trans- forming “Ugandan society from a peasant to a modern and prosperous country within 30 years”, with industrialization as one of the identified aims53. The closest connection with IP that is mentioned in Burundi’s Vision 2025 is in the development of a robust and competitive economy through modernization of the agricultural sector54, while Rwanda’s Vision 2020 talks of the medium-term goal of transformation from an agrarian to a knowledge-based economy55. South Sudan’s Vision 2040 also has promising perspectives for IP development. Its Strategic Goal (2) is to “Build a prosperous, productive and in- novative Nation”, with one of the key objectives being the promotion of industrializa- tion.56 On the whole, the policy and legal frameworks of each Partner State of the EAC, as well as their National Visions, spread over different years, provide a bird’s-eye-view of IP prioritization and development. They give a good idea as to when the free movement of goods and services under Article 7 of the EAC Treaty might be satisfactorily realized and implemented. However, we need to bear in mind intervening factors such as political instabilities in some of the Partner States that severely dent their objectives of achieving the stated goals within the given timelines.
50 Article 58 of the 2005 Constitution of the Republic of Burundi. 51 Article 260 op cit fn 18 supra. 52 The United Republic of Tanzania, Ministry of Finance and Planning, Tanzania Development Plan, Vision and Investment Priorities to achieve Middle Income Status by 2025, at p. 5. 53 Uganda Vision 2040, at p. 4. 54 Vision Burundi, 2025, at p. 46. 55 Republic of Rwanda, Ministry of Finance and Economic Planning, Rwanda Vision 2020, at p. 11. 56 South Sudan Vision 2040: Towards Freedom, Equality, Justice, Peace and Prosperity for All, at p. 23. 20
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4.7 The general territorial nature of Intellectual Property Rights vis-a-vis the free trade principle The nature of Intellectual Property law as it currently stands is that IPRs are granted within the specific jurisdiction within which an applicant has sought protection for an IP-related business. It should not be taken for granted that, because regional trade re- quires less restrictions in the exchange of goods and services, the rules that relate to IP protection ought to follow suit. Key players in regional markets therefore need to appre- ciate the territorial nature of IPRs and how to get around this in exploiting the free move- ment of goods and services. The aforementioned challenges apply to the current status quo within the EAC re- gional bloc. Resolving such challenges calls for a number of proposals that can be con- sidered in steering regional development through the EAC. It is to these proposals that the next and last part of this paper turns.
5 Recommendations for an effective harmonized legal system for the protection of intangible property This paper has shown where the protection of intangible property within the EAC region, more specifically trademark rights, TK and TCEs, is at variance with the key objectives of the EAC, with specific reference to the exchange of goods and services. This last part of the paper is an attempt to respond to the key research question, which is how to find ways and means to establish and implement an adequate and well-harmonized intangible property protection mechanism for cross-border movment of goods and services within the region.
5.1 Formulation of national IP policies that embrace regional interests It is evident from the national legislative structures and Visions of the Partner States that industrialization and the development of knowledge-based economies are given signifi- cant attention. Such objectives can be further cemented by realigning them with the in- terests of the EAC as a regional bloc, so as to guarantee mutual presence in the regional market and boost the confidence of donors and private stakeholders who would like to invest in the EAC as a regional market. Ironically, although IPRs are jealously guarded by territorial parameters, the intangible nature of IP makes it easily cross borders. Where stakeholders in IP-related goods and services are able to profit from national IP policies that take into account a regional market such as the EAC, or better still, if the EAC is able to develop a regional IP policy that is in harmony with the IP policies of its Partner States, this will ultimately boost economic growth in the region through investor confi- dence.
5.2 Periodic regional stakeholder sensitizations and capacity building IPRs pertain to a knowledge-based economy which adapts and transforms itself with socio-economic development. Gaining an understanding of IP, TK and TCEs is not a one-off achievement, but involves constantly updating oneself on issues pertaining to intangible property rights as they continue to evolve. The world as a global market is ever shrinking and the technology that drives it is a catalyst in that regard. Sensitization of various stakeholders involved in the economic integration of the EAC regional markets, is therefore paramount for creating an enabling environment in which key players such 21
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 as legal draftspersons, academics, business persons, revenue collectors, various enforce- ment agencies, the judiciary, licensing personnel and many others, can operate smoothly. If any key player is not at the same level of IP appreciation as the rest, the whole paradigm can be negatively affected and it would be difficult to re-align it to its right standard. Harmonization of the legal frameworks does not necessarily mean having the same laws in each Partner State. Borrowing from the concept of harmonization of IP laws in the European Union, it is important to ensure that the laws in the different Partner States embrace similar principles pertaining to IP protection and the utilization of TK and TCEs. This creates certainty in the judicial system, which is there to interpret the law, thus strengthening jurisprudence in the area of IP and economic integration. Regional stakeholder sensitization should aim at building up an appreciation of intangible property rights as they pertain to specific national interests, which in turn can enable the stake- holders to appreciate the broader perspectives. Stakeholders, for instance, are able to develop an understanding of how to utilize cross-border TK and TCEs by gaining an initial understanding of the value system embedded in their local cultural heritage.
5.3 Creation of regional IP and quasi-IP administration and enforcement mechanisms The existing disparities in the structure of IP offices across the EAC region can have a negative impact on socio-economic development in the region. Investors who wish to spread across the region may be used to a fast and efficient IP administrative system in one Partner State, and may be frustrated when faced with a less effective system in an- other Partner State. Other entities that wish to commercially exploit TK and TCEs through the right channels involving prior informed consent may be discouraged when cross-border communities do not share the same administrative structure with an ena- bling environment for the effective utilization of their intangible property. There is thus a need for regional offices that can work in harmony in the administration and enforce- ment of intangible property rights for the regional market as opposed to the domestic market.
5.4 Domestication of regional instruments – where possible – to ease re- gional harmonization of relevant laws Currently, only Uganda and Tanzania are signatories to the ARIPO Banjul Protocol on Marks. And only Kenya is a signatory to the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore. The inconsistent way in which the Partner States have embraced regional instruments hampers smooth development of har- monious legal frameworks to handle the protection of intangible property in the region. All the Partner States need to work out strategic formulae in line with their National Visions to enable them to fast track signing of the relevant regional instruments. They need to domesticate them and have equal protective and administrative measures in place that are similar to those of other Partner States.
5.5 Utilization of technology transfer measures within the EAC as one way of addressing the inadequate “political will” One way of strengthening economic integration is for the more advantaged Partner States to lift up the less advantaged members of the same economic bloc. Kenya is currently the most economically developed Partner State in the EAC region. But each of the Part- ner States has certain technical advantages over the other States. This drives trade in the 22
The African Review, Vol. 45, No. 2 (Special Issue) December, 2018:1-23 region and should be utilized to the greatest extent possible by each of the Partner States. It is important to work out free trade zone agreements that utilize technology transfer with zero tax restrictions and no work permits for technical personnel. Technology transfer agreements can enable owners of innovations and other expres- sions of human endeavour to negotiate franchise agreements within the EAC. This will bring industry players closer within the region as they exploit the vast East African market by spreading their brands across borders through license arrangements, without neces- sarily having to enter such markets themselves. In turn, the constant outcry over the absence of ‘political will’ to address economic integration will be reduced due to the in- creased presence of cross-border business within the region. The EAC political leaders would have to protect the interests of their nationals in other Partner States by advocating for mechanisms that favour economic integration.
6 Conclusion This paper has considered the question of how to harmonize intangible property protec- tion mechanisms within the East African Community so as to prevent jeopardizing the EAC treaty objectives of free trade in goods and services across the region. By focusing on trademark rights, Traditional Knowledge and Traditional Cultural Expressions, the paper has shown that these three aspects form the core areas of intangible property rights that need to be addressed so as to foster cross-border trade in the region. It is natural for the EAC political leaders to give priority to what matters most in their own countries, and probably this is the key reason why there is a slow response in addressing matters of mutual interest to the Community. However, economic integration can still be achieved at the regional level by coming up with measures that have a direct impact on each Partner State but still ultimately provide a benefit to the EAC as a whole. By working towards building up local IP capacities, developing IP networks across the region, and encourag- ing technology transfer at the regional level, the private stakeholders will indirectly push decision makers at the government level to create avenues for harmonizing the legal structures of the EAC. Essentially, micro to macro mechanisms that start from small stakeholders and move upwards, can be an effective strategy in realizing the goal of steering regional develop- ment through the East African Community.
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