DRAFT GUIDELINES ON
INTELLECTUAL PROPERTY RIGHTS
October 2008
Address:
La Maison de Carn
Royal Road
Rose Hill
Mauritius
Telephone:
Fax:
e-mail:
Website:
Intellectual Property has taken a wide dimension for Small and Medium Enterprises and
in many cases, has been the reason for their success and growth. The Council is of the
view that these guidelines can bring
importance of intellectual property for their enterprises and how to make optimum use of
it for their profitability. It is hoped that this guidance will assist research and training
institutions to identify and draw maximum benefit from IP generated by both its staff and
students.
It is also hoped that this document will be of help in understanding both the general legal
framework as well as the practical aspects underlying intellectual property in Mauritius.
stakeholders
including
institutions,
universities,
legal
practitioners,
organisations responsible for Small and Medium Enterprises, to help identify different
issues underlying the interpretation and use of IP, and how these can be improved.
INTENDED AUDIENCE
This document is addressed to various stakeholders in the educational and business
communities. The issues raised in the guidelines can serve as starting point for all those
concerned by the implementation of IP in research institutions, universities and small and
medium enterprises. In addition to the text dealing with specific topics, references, useful
websites and relevant institutions are included to provide readers with a wide range of
perspectives to assist them in their understanding of the many complex issues presented
by Intellectual Property law.
EXPECTED OUTCOME
This draft working document is being circulated by the MRC to numerous stakeholders
for a first consultation. The aim is to refine the level of guidance that can be used to meet
the current and expected requirements, and produce a document that can be used for
reference purposes.
Note :
Although the document reflects as much as possible the current status in intellectual property in Mauritius,
readers should bear in mind that due to the complexity and constantly evolving nature of the issues
considered, the Mauritius Research Council does not guarantee that the information presented is in every
respect complete. Readers are therefore encouraged to consult the latest available international guidelines
and resources in relation to the relevant facts.
TABLE OF CONTENTS
Issues that are dealt with circumscribe the following areas:
1. COPYRIGHT
o Original works
o Irrespective of the quality of the work
o Irrespective of the purpose for which the work has been created.
o Applies to the form of expression of an idea
o Recorded, fixed or otherwise reduced to a material form
o Fixed permanently
o De Minimis principle
o No formality required for copyright
o Publication of the work
o Residence of the author
o Proving Copyright infringement
o Ownership of the rights
o Duration of copyright
o Copying of a substantial part of the work
o Nature of the plaintiffs input
o Primary and secondary infringement
o Causality
o Participation of the copyright owner in the proof of copyright
o Burden of proof
o Work conducted under employment and commissioned works
o Presence of copyright clause in the contract of employment.
o Works which are commissioned by the employer
o Acceptance of a commissioned work
o Correction of commissioned work
o Fulfilment of stipulated purpose
o Refusal to correct or amend
o Case law on copyright
o Case law on Infringement by authorization
TRADEMARK
o Guidelines on how to apply for trademark registration
o The need to apply for registration
o Requirements that must be met to be registrable
o General guidelines to fill up the application form for trademarks
o Objection of an SME
o Reports to IP tribunal
o Non use of a trademark
o Publishing
o Registration
o Duration of a trademark
o Test to be applied for confusing similarity
o Difference between an action in infringement and passing off
o Summary for criteria involved
o Case law on trademarks
INDUSTRIAL DESIGNS
o What is an Industrial Design?
o Registration of an Industrial Design
o Requirement for an Industrial Design to be registered
o The Locarno Classification
o Guidelines on how to fill the application form
o Duration
o Withdrawal of application
o The situation at the University of Technology of Mauritius
o The situation at the IVTB, Phoenix
o The situation at Sir Kher Jagatsingh
o The situation at CITEC
o The situation at the IVTB school of fashion and design
PATENTS
o Background
o Patent description in application file
o Industrial Design and Design Patent
o Cost of a Patent
o Compulsory Licensing
o Case law on Patent
PASSING OFF
o Definition
o Test for determining whether there has been a misrepresentation
o Elements of Passing off
o Passing Off within the Unfair Practices Act
o Case law on Passing off
IP AND UNIVERSITIES
o Guidelines for sponsorship agreement
o Balance of benefits
o Identification of the IP
o Relevant acts involved
o Agreement made on the share of benefits
o The IP protection clause
o Template for IPPC
o Guidelines for photocopying and templates
o Academic Assignment
IP PRE DIAGNOSIS
o Importance of IPPD for SME
o What is an IPPD
o Stages of an IPPD
GLOSSARY
Copyright
Copyright means the economic right subsisting in a work1.
For copyright protection to be afforded, the tenets of copyright need to be addressed.
A. Tenets of Copyright
I. Original Works
Copyright protection will apply to original works in the artistic, literary or scientific
domains.
The essential prerequisite for a work to be protected by copyright is that it should be
original.
Original means that a sufficient degree of effort and intellect has been used in the
creation of the work.
Indeed, case law2 has upheld this cumulative requirement by establishing that sufficient
skill, judgment and labour, or selection, judgment and experience, or even labour,
skill and capital has to present for the work to be considered as original. There needs to
be a sweat of the brow. Judgment will also include a commercial judgment of the
subject-matter of copyright. For instance, an anthology of saleable poems was held by the
Court to be as much entitled to protection as an anthology of beautiful poems3. Similarly,
a random combination of grids of numbers on cards distributed with a daily newspaper
still attracted copyright protection4. A journalist who records a long interview and then
listens to the tape to select brief extracts for the drafting of a report shows the necessary
skill and judgment5.
S 2 of the CA 97
Macmillan v. Cooper 1923 93 LJPC 113
3
Lord Devlin in Ladbroke v. William Hill 1964 1 WLR 273 HL dealing with football fixture lists
which consisted in fact of a compilation of 16 forms of known bets.
4
Express Newspapers v. Liverpool Daily Post 1985 FSR 306
5
Express Newspapers v. News (U.K.) 1990 FSR 359
2
book which does not in fact convey the preparation of delectable meals; yet his work will
be protected by copyright.
III. Irrespective of the purpose for which the work has been created
A work will be afforded copyright protection whether the work is useful for a particular
purpose or not. The argument is also that what finds no use at present may have a fitting
use in the future.
IV. applies to the form of expression of an idea and not an idea itself
The CA 97 at S2 provides that a work does not include any idea, procedure, system,
method of operation, concept, principle, discovery or mere data, even if it is or they are
expressed, described, explained, illustrated or embodied in a work.
The exclusion of the protection on the idea, procedure, system etc is necessary to prevent
monopolistic behaviour of copyright owners. For instance an author who works as bag
designer can protect the particular design of a red bag having 3 pockets which he has
conceived (the form of the expression), but it would be most inconvenient if by doing so
he could have obtained copyright protection on every bag(the idea). Similarly, a novelist
can have copyright protection on a story he has written which purports to explain how a
particular murder is committed (the expression of the idea), but he cannot claim copyright
protection on the tales of all murders written by other authors(the idea).
10
the terms of the contract of employment of the lecturer that he will be entitled to some
protection.
Ibid
Walter v. Lane 1900 AC 539
9
Shetland Times v. Wills 1997 FSR 604
10
Exxon v. Exxon Insurance 1982 RPC 69, CA
8
11
Ownership of the rights is vested in the copyright owner. It is the copyright owner who is
entitled to institute civil proceedings against the person infringing his economic rights.
The copyright owner is not necessarily the author of the work as under S9(1) of the
Copyright Act, copyright shall be transmissible as movable property. Akin to the
Mauritian property law which itself follows on the steps of French civil law, copyright
thus circumscribes the 3 elements relating to property which are explained briefly below:a. Usus meaning the use of the property by reproducing the work or doing a public
performance of the work.
11
12
b. Fructus meaning that the fruits derived from the exploitation of the property can
be reaped by the copyright owner for instance when distributed copies of the work
are sold or rented.
c. Abusus meaning that the property may be transmitted or disposed again from one
person to the other. Indeed, there is nothing in the CA 97 which prevents the
copyright owner from transferring the right again to another person by sale, even
without the authorisation of the author.
It is to be underpinned that copyright in its strict legal sense does not include the moral
right of the author, that is the right of the author to claim the authorship of his work; to
remain anonymous or use a pseudonym; or to object to the distortion, mutilation or
alteration of the work where such acts would be prejudicial to his honour or reputation.
Even if the economic rights pass from one hand to hand, the moral right unassignable,
according to S5(3) of the CA 97. The moral right is always attached to the author of the
work.
Where copyright i.e the economic right vested in the work is transmitted, the
transmission has nevertheless to be made in writing according to S9(2) of the CA 97.
It is important to note the presumption that, unless the contrary is proved, the economic
right vested in the work is not assigned when the ownership of a copy of the work is
assigned. Otherwise, any buyer would claim that he has a right to reproduce the work and
resell it.
II.
Duration of copyright
Redress can be sought only following infringements occurring during the period that the
work is covered by copyright by law. For a chart on copyright duration of the author of
specific types of work, see the Annex.
III.
S 4 of the CA 97 relating to the economic rights of the author provides that the rights
apply in relation to the whole or substantial part of the work.
13
The test for determining whether a substantial part of the work was copied is qualitative
and not quantitative14.
Instructions on a weed killer made using the skill and judgment of the author cannot be
reproduced even if other words are used15. The extent of the defendants alteration is thus
of utmost importance for the Courts to determine whether there has been any substantial
copying. There is always a spectrum for resemblance of ones work to another. Along the
spectrum of resemblance, there is a point where the author of the work can no longer
claim that his work has been copied since the defendant himself has reworked it to such
an extent and has input his skill and judgment so that it has become another work of its
own. The test is whether a substantial part of the plaintiffs work subsists in the work of
the defendant so that it appears to be a copy of it16.
The character of the plaintiffs work is significant as it may possess features that is of
qualitative importance and that if reproduced will amount to substantial copying even
though a minor part of it is taken in quantity. This applies mainly to artistic, dramatic and
musical works where a specific verses of the play may be characteristic of the play taken
as a whole.
IV.
a. The nature of the plaintiffs input by his skill or judgment into the work is relevant, all
the more if the work is a secondary work or derivative work obtained by selecting or
compiling information from the primary work. Case law holds to the effect that a
defendant who has copied substantially from the primary work but sparsely from the
secondary work will not be liable for copyright infringement of the latter17
b. The nature of the plaintiffs input is all the more important if the plaintiffs input into
the work was just enough to earn him copyright. A Simple drawing for instance, though
14
Ladbroke v. William Hill 1964 1 WLR 273; PCR v. Dow Jones Tolerate 1998 EMLR 407
Elanco v. Mandops 1980 RPC 213
16
Redwood Music v. Chapell 1982 RPC 109 dealing with the adaptation of a song and whether a
substantial part of the plaintiffs song was copied.
17
Warwick Film v. Eisinger 1969 1 Ch. 508: An author published an edition of Oscar Wildes trials
which was already published beforehand but he included linking passages in his own published
work. The defendant copied large chunks of the original edition and barely copied from the
secondary work. The Court held that there was no copyright infringement of the work of the
plaintiff.
15
14
VI. Causality
The plaintiff has to prove the causal link between the work done by him and the
unauthorised reproduction made by the defendant. He should be in a position to show that
the defendant has used the original work to arrive at the work the latter produced. If the
defendant has arrived at his work totally independently of the work of the plaintiff, then
there is no copyright infringement.
V.
Copyright, as well as trademarks, patents and industrial designs provide the holder of the
intellectual property with a private right which has to be distinguished from a right
emanating from public order. It is innovative to appreciate that copyright infringement is
a criminal offence under S44(1) of the CA 97 which means that if infringement is
18
Kenrick v. Laurence 1890 25 QBD 99: The plaintiff was suing for copyright infringement of a
hand showing near a ballot box showing people how to vote. The Court held that withholding
copyright protection in such circumstances would tantamount to giving a monopoly on the
copyright holder on the simple drawings of all hands.
15
reported to the police, the latter may take action on a reasonable level of proof shown.
The offences under S44(1) occur without the authorisation of the copyright owner.
Thus, the copyright owner needs to do a positive action for the public authorities to help
him and he will have to draw up a complaint first at the Anti-Piracy Unit of the Mauritius
Police Force. The police on its own cannot institute investigations about a possible
infringement.
VI.
Burden of proof
The burden of proving that there is copyright infringement resulting in the success of a
claim in damages is on the plaintiff, and the case will be decided on the balance of
probabilities.
The burden of proving that there is copyright infringement resulting in a criminal offence
rests on the prosecution, and the case will be decided beyond reasonable doubt.
16
TYPE OF WORK
DURATION
3. Work published anonymously or under a 50 years from the date on which the
pseudonym
5. Broadcasted work or work communicated to 50 years from the end of the year
the public
17
18
19
words, to identify one or other of the companies. Thus, the de minimis principle was
established, that is, words which are too minimal to be afforded copyright protection.
20
The sweat of the brow doctrine afforded copyright protection to works which are the
result of labour only, was rejected in the United States Supreme Court in this case. It was
thus held in the latter Court that the white pages section in a typical telephone directory
was not protected by copyright because of a lack of creativity , not owing its origin to an
act of authorship. The court, did, however, recognise that a compilation of facts could be
the subject of copyright because the author had to choose which facts to include and in
what order to place them. Similarly, the yellow pages section of a telephone directory
could be patented because of the presence of original material.
21
bring an action for copyright infringement because he had produced the guide in the
course of his employment and therefore, the PHLS owned the copyright.
It had to be remembered that a man employed under a contract of service may sometimes
perform services outside the contract. Obiter dicta, Lord Denning observed that in most
cases of false attribution of authorship, there will also be a cause of action for libel or
passing off and the damages for those causes of action would cover false attribution as
well, so there would be little extra award for false attribution.
22
23
thereby liable for infringement of copyright in the story. The university was alleged to
have authorised the act of unlicenced copying.
No adequate notice was placed on the machines for the purpose of informing users that
the machines were not to be used in a manner that would constitute an infringement of
copyright.
Nevertheless, in Mauritius, infringement would occur even if a notice is not affixed, as
S13 of the Mauritian Copyright Act 1997 allows private reproduction for personal
purposes following particular criterion irrespective of the presence of a notice.
24
25
the bhojpuri song while there was a corresponding lack of protest from the respondent
and the latters own witness contradicted his affidavit about the date on which the song
kaisan joli ba chokaria was aired on radio. Thus, the interim order was converted into
interlocutory one.
ii.
iii.
iv.
the public interest did not arise only when there was an inquiry to
be disclosed and the defendant ought not be restrained solely
because what he wanted to publish did not show misconduct on
the part of the plaintiff.
26
If the defence of public interest is raised, the court should weigh up the competing
interest. If there is a matter that the public should be made aware, the press can serve a
very useful function, albeit financially motivated.
purveyors of other peoples ideas and works who have created the situation and who have
been enjoying a very lucrative market.
28
Vide Infra
29
30
The Act provides that the Society is given the following statutory duties :-
(a)
(b)
(c)
(d)
(e)
(i)
(ii)
(f)
(g)
31
(h)
(i)
(j)
(k)
(l)
(m)
(n)
There are two classes of membership that can be adhered to the MASA: 20
32
Full member: - This is for people whose work has been finished
and exploited.
Associate member:- The work is deposited but has not yet been
completed.
It is to be noted that the treatment for both classes are the same but only the full member
has voting right at the assembly.
The requirements for membership are:1) the member has to be a mauritian citizen
2) the work should emanate from the creator and it is the creator who has to apply
for membership
3) There is no age requirement
Music Publishers
Composers / Authors
33
The application form is also accompanied by a declaration to allocate their legal rights to
the MASA to represent them in case of any occurred infringement.
IMPORTANT NOTE: - It should also be noted that SMEs indulging in jewellery designs can also apply to the
MASA for membership so as to offer a better protection to the work. This can be done by
submitting a copy of their work and filling the application , as mentioned above.
34
Before an application for trademark registration is lodged one has to be sure that the mark
that is being registered corresponds to what the law provides for it. It is worthy to note
that according to the statistics for 2007 only 44% of registrants are mauritians.
21
35
The law provides that it should be capable of distinguishing the goods or services
of one enterprise from those of another enterprise.
It should not be against public morality or order. This refers to the use of indecent
words to term a particular product.
It should not ressemble or be identical to the flag or emblem of the State or any
intergovernmental organisation.
Before applying for a trademark, it is wise to check the Registers that are
available at the Industrial Property Office in Port Louis so as to prevent
registration of a mark which has already been registered. This saves both
time and cost.
The mark is usually a word or a picture. Nonetheless, for marks which are threedimensional or otherwise and thus cannot be drawn or printed on paper, an
indication of it has to be made in the application form. It is to be noted that this
36
should be made explicit on the application form and this relates only to the shape
with the specific design with the isometric dimension.
6. The trademark will usually bear one or more colours. If the applicant wants to
register the colour itself so that no other person can use this colour again for a
commercial purpose, then it has to be specified on the form.
7. The Controller will have to classify the figurative elements of the mark according
to the Vienna Classification 1985.(Please note that the Vienna Classification is
not used in the IP office of Mauritius).
8. The type of mark has also to be specified: trademark, service mark or collective
mark.
9. If a trademark has already been registered in another country, a priority claim may
be made to the Controller so that the application is processed faster.
10. The applicant can apply for one class or more of goods or services. This
classification is done according to the Nice Classification which is divided in 34
goods and 11 services. The most commonly registered classes in this multi class
filing system is Class 25 related to textile goods and Class 29 linked to foodstuffs.
The fees varies according to the number of classes for which the application is
being made.
11. There is a supplemental box to provide for other information.
Where a mark consists of or contains a word or words in characters other than Roman,
the application and the additional reproductions of the mark shall be accompanied by a
37
transliteration and translation of each of such words, and stating the language to which
each word belongs, unless the Controller otherwise directs22.
* After publication and until registration, applicant will have the same privileges and
rights as he would have where the mark has been registered.
22
PIDTA Regulations
38
To seek relief from any decision of the Controller. However, no relief can
be sought to prevent the controller from investigating any allegation of an
offence under any of the Industrial property enactments.
Any interested person may request the Controller to remove from the
register a mark. The requirement is that the mark should not have been
used for a continous period of 3 years.
The mark should not have been used and the mark will not be removed if
the Controller is satisfied that there are reasonable circumstances that
prevented the use of the mark and there was no intention not to use or
abandon the same in respect to those goods or services.
Publishing
39
Residence
* If the applicants ordinary residence or principal place of business is outside Mauritius,
he has to be represented by a legal practitioner resident and practising in Mauritius.
Registration
Upon approval of the application, the Controller registers the mark and issues a
Certificate of Registration.
Duration of a Trademark
The registration of a trademark is valid for 10 years from the date of filing
of the application.
23
This is defined as any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality of goods or services, of
different enterprises which use the same sign under the control of a registered owner of a collective mark.
40
Saville Perfumery Ltd. v. June Perfect Ltd & F. W. Woolworth & Co. Ltd, judgment of the House
of Lords of 30 July 1941 reported in Reports of Patent, Design and Trade Mark cases Vol. LVIII
No. 6
41
showing that by something outside the actual mark itself he has distinguished his
goods from those of the registered proprietor25. Therefore, when the plaintiff sues
for trademark infringement made by another mark, consideration has to be made
first and foremost of the words used within the general get-up, rather than the
words isolated in the midst of the get-up.
S36(2)(g) of the PIDTA provides that : no mark shall be registered, where it is identical
with a mark belonging to a different proprietor and already on the Register, or with an
earlier filing or priority date, in respect of the same goods or services or closely related
goods and services, or where it so nearly resembles such a mark as to be likely to deceive
or cause confusion. The equivalent of this section of the Mauritian legislation is to be
found in the English Trademarks Act 1938 before it was amended by the English
Trademarks Act 1994.
Since the relevant provision of the English Trademarks Act 1938 and the corresponding
provision under the Mauritian PIDTA Act are similar, guidance can be sought from
English case law in resolving trademark issues under in the Mauritian context.
Case law: Wagamama Ltd v. City Centre Restaurant Plc and another 1995 FSR 713
The plaintiff initiated an action both in passing off and trademark infringement. He was
successfully running a noodle Japanese restaurant in London since 1992 under the name
WAGAMAMA and had acquired a good reputation and goodwill on the market. The
defendant started to run an Indian Restaurant under the name RAJAMAMA and later the
name changed to RAJA MAMAs. It was held that the defendant infringed the trademark
of the plaintiff as the names were confusingly similar.
42
syllable of the word Arystoc which denoted a trademark for stockings, such that the
trademark Arystoc and Rysta were spelt out in a confusingly similar manner.
Allowance is made for imperfect recollections and the effect of careless pronunciations
and speech on the part not only of the person seeking to buy under the trade description,
but also of the shop assistant ministering to that persons wants.
Furthermore the test for determining whether confusion would arise is made taking into
consideration the following issues:-
1. The first impression of the buyer who is not familiar with the word. Otherwise,
someone acquainted with using a particular trademark will not make any
confusion on the use of the latter.
2. there is little relevance in comparing the 2 trademarks by dissecting it letter by
letter, and syllable by syllable, having regard to the way the words are spelt out in
ordinary day-to-day conversation.
3. Thus, there is no relevance in appreciating the phonetic of the word pronounced
with the clarity to be expected from a teacher of elocution26.
26
27
43
In considering the issue of confusing similarity, the Court or the Controller of the
Industrial Property Office will have to cumulatively look at the following issues which
have been sorted out through case-law and the common law doctrine relating to
trademark infringement:1. It is the first impression of the buyer who is not familiar with the word which has
to be taken into account. Otherwise, someone acquainted with using a particular
trademark will not make any confusion on the use of the latter28.
2. there is little relevance in comparing the 2 trademarks by dissecting it letter by
letter, and syllable by syllable, having regard to the way the words are spelt out in
ordinary day-to-day conversation [Elrectiko TM (1935) 52 RPC 136]. Marks
should thus be compared in their entirety as individual minute details of the
mark might render it distinctive but an overall evaluation of it in comparison with
another mark would not reveal any clear distinctiveness.
3. Distinctiveness of the mark is not an ocular test alone29; both what the ear hears and
the eye sees must be considered in ascertaining distinctiveness as a trademark may and
does in all but few cases) consist of words. Marks may differ from spelling or appearance
but the fact that the spelling is confusingly similar will lead to a likelihood of confusion
in direct oral communication or through orders by telephone30.
28
44
4. There is furthermore not convenient to appreciate the phonetic or spelling of the word
pronounced with the clarity to be expected from a teacher of elocution31. The spelling in
ordinary language uttered in simple words by the ordinary reasonable citizen should be
considered.
5. Marks in the same families of words may earn an acquired distinctiveness which
makes it difficult for other registrants to register a mark in the same family. For e.g if
trademark X has acquired distinctiveness and its related products are XA, XB, XC, then
all the derivated trademarks will have a common feature X. A registrant seeking to
register XD may not be able to do it because of the filing priority of the marks in the
family which all share a common feature.
6. If the competing marks bear words which are common to the trade32 e.g aquafresh
for toothpaste and aqua for perfume used in toiletry, both of these works will be
common to the trade for hygienic products and would not cause any confusion. Similarly,
two pizza restaurants which have registered their trademarks pizza house and pizza
parlour have the word pizza as a word common to the trade. Thus, there is no
possibility of confusion between the 2 trademarks.
7. The existence of various similar marks in the relevant classes will lend credence to
the fact that a particular trademark is not confusingly similar, for e.g if PLAY exists as a
trademark, then REPLAY, IVPLAY, or ROCKPLAY cannot be said to infringe as a
confusingly similar mark.
8. Although the marks should be considered in their entirety, the first part of the words
should be given more consideration in determining distinctiveness as there is a natural
tendency in ordinary speech to slur the endings of word33.
9. The class of the customers concerned should also be considered. A customer buying
airplanes will have a particular knowledge on the subject-matter and is not likely to
confuse trademarks. Thus whether he will be buying a boeing from AIRFRANCE or
AIRFRANCIS would not provide any foundation for confusion to arise.
31
45
10. The nature of the goods is yet another important consideration. A distinction is made
between goods which are bought on a regular basis( like a sack of peanuts) and goods
which are bought occasionally or on long intervals(like cars or refrigerators, television
sets or beds). It is less likely that there would be confusion when the buyer purchases
inexpensive items involved in everyday domestic use than expensive items where a
second thought is expedient.
11. The geographical location of the businesses trading in the concerned trademarks.
The peculiarities of the commercial sector in Mauritius which are reflected in the
relative smallness of the population and the limited area of the island were considered as
relevant by the Court to grant an order restraining a business operating at Tamarin from
using a company name which was similar to the registered trademark of the plaintiff who
runs a business in Quatre-Bornes albeit the fact that the two businesses were trading in
different types of goods34.
12. The test for confusing similarity can furthermore be backed by a survey. The basic
rules and methodology for conducting a survey would include35:
1)
(2)
(3)
(4)
(5)
(6)
(7)
34
46
An examination of the two wrappings shows that the respondents wrapping was
deliberately designed and calculated to ressemble the applicants wrapping. The intention
to pass off respondents goods as those of the applicant and reap for himself the benefits
of a goodwill which does not belong cannot be more glaring. The interim writ of
injunction is converted into an interlocutory one.
47
It is contended that there is no trademark as it was not renewed after the lapse of 7 years.
Indeed, the combined effect of section 3 and 11 of the Trademarks Act is that the
applicants action in so far as it prays for the protection of a trademark, which must
necessarily be a registered trade mark, is misconceived.
But the applicants are also complaining that the acts and doings of the respondent amount
to unfair practice and concurrence dloyale, secondly to a faute under Article 1382
and thirdly to a false trade description as defined in Section 2 of the Trademark Act and
prohibited under section 14 . It is clear that the respondents wrapping was deliberately
designed and calculated to resemble that of the applicants so that the respondent may pass
off his goods as those belonging to the applicants and have a free ride on their goodwill.
48
The Controller of Customs did not give the reasons for acceptance to the appellant.
According to Wade, the absence of a rule of law requiring the giving of reasons for a
decision is not commended. There is a strong case to be made for the giving of reasons as
a cardinal element of administrative justice. First, the giving of reasons is required by an
ordinary mans sense of justice and is also a healthy discipline for all who exercise power
over others.
Secondly, the hallmark of good administration is for administration to give reasons for
their decisions. Thirdly, a decision maker may be unable to show to an appellate body or
a reviewing authority that it has reached the correct decision in accordance with the law
unless it satisfactorily explains its decisions [from Padfield v. Ministry of Agriculture and
49
Fisheries ; R v. Secretary of State and Industry exparte Lohrho]. In England, this body
always states the reasons in writing.
It is submitted that the word scrabble cannot be registered since it gave no direct
reference to the character or quality of the board games. Reference was made to Kodak
Ltd v. London Steroscopic and Photographic Co Ltd; Eastman and Co TM; Compagnie
Industrielle des Petroles TM and Re Magnolma Metal Cos trademarks. Reference was
furthermore made to dictionary meanings to show that the word meant making words
with blocks.
The 3 TM of the appellant which did not cover fireworks and firecrackers had been
amended to cover those products following the letter of consent filed in court. Section
12 A of the TM provides for a veg proprietor of a trademark to amend a registered TM,
i.e alterations in the mark itself and does not extend to alterations in the register of TM.
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In the present case, the similarity is not confined to drawing and outline :the dominant
colours in both marks are red, white and black. The common features cannot be due to co
incidence but deliberate copying. One of the reasons why the applicants trademark is not
entitled to protection is , bluntly, that it did not belong to him, he is trying to
misappropriate anothers property. The applicants are scheming to benefit from an
unconscious association of ideas between their goods and those of another trader who
over the years spent large sums of money to advertise the quality of his goods and we are
not prepared to give him the benefit of such improper dealing. The construction of
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Class of persons who are the probable purchasers as their degree of literacy and
education are important.
52
If there are series of marks having a common feature or common syllable, where
there are different proprietors.
The test is not to look at them side by side but in the absence of the other trademark. The
rule regarding elements common to the trade is that they may often be ignored as not
being distinctive. Here, the words, having regard to their distinctive and conspicuous
character, do import sufficient likeness to the marks as to make the registration of the
appellants objectionable.
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the applicant company and thus to put a stop to concurrences dloyales. Therefore, the
appeal cannot succeed.
54
It has to appeal and be judged by the eye, which focuses on the visual aesthetic
side of the product as well as its ornamental aspect.
Design also touch the students and staff of the IVTB in Mauritius as they produce
designs as part of their courses and are sometimes commissioned to do that.
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It has to be new, that is free from any previous public disclosure. This is the basic
requirement to make a registration and involves publication in tangible form
before the application for registration.
However, disclosure to the public made within 12 months of the filing date (or
priority date) of the application or by reason or consequence of an act committed
by the applicant or his predecessors in title or of an abuse committed by a third
party36
It is to be noted that protection for industrial design of a particular product and for
trademark can be cumulated.
The Locarno Classification comprises a list of 32 classes and 223 subclasses with
explanatory notes and an alphabetical list of goods in which industrial designs are
36
56
incorporated, with an indication of the classes and subclasses into which they fall. This
list contains some 6,831 indications of different kinds of goods.37
Full information about the applicant should be given regarding the full name,
telephone number, email , fax number, nationality and residence.
The Industrial design belongs to the creator and this should be specified in the
application form and even if he is not, the person who is the creator should be
disclosed. It is also pertinent to attach a statement justifying the applicants right
to registration of the industrial design.
Duration
The duration for the industrial design is 5 years and is renewable for the same period.
There can be renewal for 2 further consecutive periods of 5 years upon payment of a fee
and compliance with any other required condition.
Withdrawal of Application
This is possible for an applicant to withdraw his application upon completion of the
required form.
37
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Automotive Engineering
Building and Utility Maintenance
Electronics and Telecommunications
Food and Beverages Services
Hospitality and Tourism Management
Industrial Engineering
IT and Multimedia
Printing and Graphic Design
Textile Production
Wood Technology
These fields require very strict observation of IP, as they are domains, which require
much creativity and human input. Basics of IP are significant to be taught and clarified,
as the students are the future of SMEs.
2. Students should be informed about how to protect their IP rights as well to respect
those of others. A fine demarcation should be made between being inspired by the
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4. For recipes that are produced and created by the students, due recognition should
be given as well as inform them of their rights and legal use that can be done.
Recipes that are reproduced have to be with the prior consent of the student
except for personal purposes.
prospects to the hotel industry or in cooking competitions as the recipes that they
have created have definite monetary value.
5. Cakes decorations can also be designs, thus have to be protected. This involves
much creativity and if a particular design has been created by a student, it has to
be determined whether it is his work or it shall be attributed to the IVTB. If this
written down, it will be conferred copyright without any formality.
6. Even the fashion shows which external firms sometimes sponsor. A proper
arrangement should be made so that the students are not exploited and if ever the
designs of the students are used, they are duly compensated for that.
7.
Students can also be encouraged to put a mark to their creations. This will give
them further protection as well as facilitate commercialisation. The Guidelines on
Registration of Marks for SMEs can be applicable in this situation as well.
8. The students should be encouraged to register the designs whose ownership are
allocated to them. This ensures that their designs are not copied by outside firms
or other institutions. The Guidelines on Registration and Application of Industrial
designs can be applicable. These students have to be able to realise that protection
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of their industrial property, that is, the designs, are a central part of their work so
as to achieve competitiveness, even at international level.
9. The IVTB may create innovation incentive programs whereby the students and
the staff is encouraged towards creativity and to innovation. In return , they may
be given monetary incentives or other benefits
10. Concerning the staff, if they are commissioned to do designs on behalf of the
IVTB, this should be stipulated in their contract of employment. Otherwise, it
should be conducted through a formal written agreement so as to avoid any
conflict that might arise.
Graphic Design
Fashion Design
1) The school has no formal arrangement about what the student produces and to
whom the legal rights resulting from his creation belongs. This should be clarified
that a written arrangement is desirable to address the issue with whom the legal
right to exploit the work reside. For instance, if the IVTB is providing the
infrastructure and consumables to be used in the production of the design, the
rights would reside in it. However, the practice at the IVTB is that the designs are
usually given out to the students. The IVTB may continue to so but should inform
the students and make this a formalised procedure.
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2) There are two levels of studies. One of them is only furniture making, that is, the
design is already given out by the trainer and the student just has to produce a
furniture according to the given instructions and specifications. This would
require no copyright protection as the student is just reproducing what has already
been designed.
3) Another level of studies requires the design to be created by the student and also
to be produced by him. In this situation, the issue to whom the legal rights pertain
should be clear. The students uses the materials, consumables and the equipment
of the IVTB, this is why the legal right is usually vested in it. However, the
student will always be given the moral right. In order to make the situation
clearer, it is suggested that a formalised agreement should be made with the
student about the intellectual property issues and how the institution would deal
with it.
4) Another issue is the protection of the PORTFOLIO created by the student. This is
usually a collection of the best works of the student. This may be shown to
potential sponsors or employers. However, if the designs are not properly
protected, there may be chances of intellectual property theft. The students may
protect it by registering the designs in the port folio or he even have instant
copyright protection if the work satisfies the criteria of being eligible to copyright
protection.
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5) Another factor is that the students should be made aware that designs given out at
the institutions should not be passed off as being theirs after the training is over as
this would amount to infringement.
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These projects are completely done by the students, with the guidance of the trainer. They
do all the research and create the system needed through their own input. They create
something new, based on their research and experiments. Moreover, what they produce is
geared towards the needs and demands of the particular project assigned to them.
However, the students are responsible just for the submission of a project report and the
decision whether to implement the project or not rests with the company. It should also
be noted that should the project be implemented, there is much commercial value
attached to it, this is where having a clear stand about where the intellectual property
rights reside and to whom these rights belong, gain ground.
Related to this issue, is the sponsorship agreement that would occur between the student
and the company for whom the project is being made.
It is also to be noted that sometimes creativity is involved whilst at others, they just select
from existed systems. When creativity is involved, there is a need for protection.
N.B regarding the work placement that is within their syllabus, refer to Item 4.
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What is a Patent?
The law defines a patent by the title granted to protect an invention.
Schemes, Rules, or methods for doing business, performing purely mental acts or
playing games
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Methods for treatment of the human or animal body by surgery or therapy, as well
as diagnostic methods practiced on the human or animal body
Plants
Animals
Biological processes for the production of plants and animals
Plant varieties
It has to be new that is not anticipated by prior art (the law defines prior art as
anything disclosed to the public, anywhere in the world, by publication in tangible
form or by oral disclosure, by use or in any other way, prior to the filling.
It has to involve an inventive step (this is possible if the invention has not been
obvious to a person having ordinary skill in the art)
Note that to be patentable, the invention should not be contrary to public order or
morality.
Right to Patent
-
If two or more persons have done the invention, it should belong to them jointly.
If two persons have come up the same invention independently the right goes to
the person who has first filed the application.
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This conferred right is however subject to the fact that the competent authority
can allow the exploitation of the patent by a government agency or any third party
where the following circumstances stand out: 1) There is an issue of public interest, national security, nutrition, health or the
development of vital sectors of the national economy
2) That the manner of exploitation, by the owner of the patent or his licensee, is
anti competitive.
The name or any other relevant information about the applicant, the inventor or
the agent and if the applicant is not the inventor, there should be a statement
attached to justify this right to the patent. If the applicant is a corporate body, this
should be specified in the required area.
An address in Mauritius. This is normally applicable for agents to which all the
correspondence would be sent regarding the application, in case the applicant is
not based in Mauritius. It should also be noted that where agents are used, a
power of attorney appointing an approved agent or legal practitioner shall be
registered with the Registrar General and shall accompany the application or
within 2 months from its filing date.
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2) If the application is claiming priority, a description has to be made at the time of filing
of the application and the following information is needed: -
Date of filing
The national Industrial Property Office, in which the application has been filed,
would be asked to submit a certified copy of the date of the earlier application
within a period of 3 months of the date of application.
4) The application form also contains disclosure sections about the following matters: -
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Right of Priority
This is claimed when an application contains a declaration which pertains to the fact that
an earlier application has been made nationally, regionally, and internationally by the
applicant, his predecessor or any state party to the convention or any member of the
World Trade Organisation. The discretion is on the controller to accept or reject the
declaration.
Duration
The patent is valid for a period of 20 years after the filing of the application for the
patent.
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However, this is subject to the payment of an annual fee to the Controller annually,
following the year of the filing date.
This is of paramount significance as failure to pay the annual fee would amount to
automatic withdrawal of the patent application, thus the patent will lapse.
Cost of a patent
A patent application costs R3, 000.
The continual annual maintenance fee for a period of 20 years amounts to R227, 000.
Patents are non-renewable.
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Compulsory licensing
Compulsory licensing is granted in the following circumstances:a. On the grounds of public interest including national security, nutrition, health or
the development of other vital sectors of the national economy;
For instance it may be envisaged that on an outbreak of an epidemic, a particular
patented drug is out of reach of customers because the brand is sold at an inflated
price. Then, the government may allow compulsory licensing to produce generic
drugs on the ground of public health.
b. If a patent holder is exploiting the patent in an anti-competitive behaviour.
An anti-competitive behaviour would be tantamount to an abusive use of the patent in
view of monopolising a sector of an industry.
An application for compulsory licensing appears to be free under the PIDTA as it is not
provided for in the Schedule to the Act relating to fees for applications and renewal.
It is the Permanent Secretary of the Ministry responsible for issues related to Intellectual
Property [the Competent Authority in the Act] who is responsible for making the request
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for compulsory licensing to the IP Controller. He will then give 21 days for the owner of
the patent to make written representations. A hearing may also be granted to the patent
holder to make oral representations as to why his patent is being circumvented in the
particular circumstances.
The PS will also grant the terms and conditions on which the patent should be delivered
to the Government or an individual on whose request the compulsory licensing is made.
If the patent holder is unsatisfied with the decision of the competent authority, he may
apply to the Supreme Court by way of judicial review.
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Reynolds v Herbert Smith: - A clear definition is given of what inventions are and also
the distinction with discovery is made discovery adds to human knowledge but it does
so only by lifting a veil and disclosing something which before had been unseen or dimly
seen. Inventions also add to human knowledge but not merely by disclosing. Invention
necessarily involves also the suggestion of an action to be done and it must be an act
which results in a new product or a new result or a new process or a new combination for
producing an old product or an old result.
Diamond v Chakrabarty :- The Courts of United States accepted the fact that the
defendant came up with a new kind of bacteria and this was not natures handy work but
rather the work of the inventor.
Chiron v Murex :- This case talks about the industrial application of the work. Industrial
application does necessarily imply profit making.
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The UK Intellectual Property Office has advanced the need for IP audits in order
to help UK business recognise, protect and maximise the value of the Intellectual
Property assets to compete in the global economy39
Conducting an IP audit will allow the SME to be in control of it and this can be
licenced to one or more people at a cost.
38
39
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This will help a better enforcement of their rights as the IP assets are easily
identifiable and valued.
This is closely attached to the notion of Added Value. This is likely to act as a
market penetration strategy for a company which has a high trademark value as it
would help it to introduce new products more easily as well as reduce promotion
costs.
Creating an IP culture is significant for an enterprise and this can be done through
the establishment of an IP coordinator at work. The coordinator would be
responsible for any IP external liaison as well as compliance. One of the functions
is to act as a watchdog ensuring that the enterprises IP rights are not being
infringed and in return that the latter is not infringing third party rights,
consciously or unconsciously. The IP coordinator would also be kept updated
about changes in legal practices as well relevant case law decided that would
ultimately act as guidance for future IP decisions.
Usually, IP audits can also lead to technology development which can facilitate
in a future merger/ acquisition deal.
Many SMEs might be interested in creating a niche market and thus ok targeting a
selected area of the market would mean that much focus would be on the brand
name and industrial design.
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Licensee perspective:- How much can it afford to add to its cost of goods sold?
Licensor perspective:- What rate of return on Research and Development does
it expect?
-
3) Fund raising
4) Taxation
5) Financial Reporting
6) Litigation
40
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A step precluding the IP audit would be to sensitise the staff about the importance
of IP as well as the IP audit. IP auditing should not be seen as a threat, rather as a
benefit to the employee, who would have more credit and feel valued by the
prestige achieved by the trademark or other intangible assets of the enterprise.
This can be done through explanatory programmes , staff gatherings or
conducting workshops.
1. IDENTIFICATION
This involves identifying the existing assets. This is defined as assetscapable of
being disposed of separately without disposing of a business of the entity.
Identifying the IP of an enterprise is a first step to the audit.
The process would involve a screening of what constitutes of intangible assets as well
as contracts with the personnel and outside firms. These are sometimes referred to as
the Intellectual Capital comprising of four basic elements such as
1) Human centered assets, which comprise of the skills and expertise
attached to the workforce of an organisation.
2) Intellectual Property assets, which are related to know how, copyright,
patent, designs and trademarks. This evaluation is usually conducted to
assess the return on investment, commercial potential and competitive
advantage.
3) Infrastructure assets mean the various technologies, methodologies and
processes involved in an enterprise.
4) Market assets mean the goodwill in terms of market share, branding and
commercial value of various strategies.
The ISA 38 infers that an asset meets the identifiability criterion in the definition of an
intangible asset when it : 1) is separable ,is capable of being separated or divided from
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the entity and sold, transferred, licensed, rented or exchanged , either individually or
together with a related contract, asset or liability or 2) arises from contractual or other
legal rights, regardless of whether those rights are transferable or separable from the
entity or from other rights and obligations
Once these have been identified, the focus should be on the IP assets which, in simple
terms relate to
Another step in the Identification process is to assess the external factors likely to affect
the intangible assets of an SME. This will include the company brand, product get up,
goodwill, and product certification; export certification (more likely to apply to SMEs
that operate in the areas of handicraft or jewellery design).
For the purpose of SMEs, they should identify what types of intangible assets they would
have. These are more knowledge based and relate to their competitive advantage. Some
examples are trademarks, brand image and business reputation.
2. EVALUATION PROCESS
The evaluation of IP assets is based on three criteria:1) legal rights actually exist to prevent the use of the intellectual property
2) the ownership of the rights can be proven and enforced
41
This is where Mauritius should have a well defined accounting structure of what would be accountable
as intangible assets.
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3) the legal rights relate to a product, service or business that produces an income
stream42
There are currently different methods for evaluation that can be used:-
Income Approach: - This refers to the income producing capacity that can be generated
from the existing IP assets and is usually suitable for the valuation of trademarks, patents
and copyright. Usually, this is the most commonly used evaluation method. This, being
the most popular method of valuation accounts for the income that would be generated
from the use of the IP asset during its economic life and can be applied on one of the
following: -
The second method is the Incremental Income method. This requires forecasting
future income from the use of the IP asset and then discounting it to present
value. This would mean segregating the income that can be generated from
higher sales through the use of the trademark or the manufacturing patent. The
advantage of using such a method is that it projects income based on clear
assumptions. However, the drawback is that the assumptions may not reflect
actual income generation thus, due to changes introduced by different
circumstances and market variations.
Market Approach: - This method is used to compare the value of sales of similar or
comparable IP assets in the market. A major drawback is the lack of an active market
where the trends are readily identifiable and usually there is a lack of appropriate data.
42
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This method would be less applicable to SMEs as they have a small part of the market
and comparison would be inaccurate. In Mauritius, the IP market is not yet developed as
far as SMEs are concerned, thus making it more difficult to evaluate the market trends
regarding the fluctuations that IP would bring on a particular market. However, this
method can be used to compare the outcome and accuracy of the other approaches.
Cost Approach: - This is based on the cost that the company would have to incur if it
were to replace the IP asset internally or externally. This may be based on the
reproduction or replacement cost. The creation costs of the IP asset can also be
considered, although it may not always be representative of the value of the protected
technology. This is used mostly in cases where the future benefits are not evident and that
the historical cost involved would rarely reflect the future income generation. However,
taking into account that time can be lost on the market in the fields of electronics and
high tech products, as they tend to have a short life cycle, it would not be prudent to take
into account the cost factor. In practice, this is used to supplement the income approach.
Another emerging approach is the Option based approach especially in case of patents in
capital markets. This is unlikely to apply to SMEs who are mostly sole traders or
partnerships.
SMEs should conduct the one which is easier for them in terms of procedure and
expertise, taking into consideration the cost involved. The actual accounting system
provides for the computation of tangible assets such as property, motor vehicles and plant
and machinery, but for intangible assets auditing is the reassurance of accounting
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Purchasing price
Legal costs
The commodity credit and trademark, customer list and sales network
generated within enterprises should not be identified as auditable elements
of intangible assets operation.
Accounting Perspective
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2) Other intangibles which are capitalised at purchase cost and for this to be
done, it has to be appropriately measured.
3) Some of the additional information required to conduct an evaluation is
-
sales, projections for the next 5 or 10 years, for each trademark, logo, design
financial results for the last 5 or 10 years , indicating sales volumes, costs,
expenses for each trademark, including brand design, legal fees as well as
registration procedural fees.
These are general financial information that SMEs would be able to provide fairly and
readily.
Quantity :- This is related to the volume of sales. However, this depends on the type of industry.
A pharmaceutical patent is more likely to generate a higher volume of sales than a mechanical
patent.
Price :- A branded-patented product will have a higher price than one which is not.
Cost :- This relates to the cost generated in the production of the patented or branded
product. This can be reduced through economies of scale with increased volume of sales.
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Cost of the use of technology and further registration cost, renewal costs and on going
research and development costs have also to be taken into consideration.
Capitalisation factor:- The method usually used is the discounted cash flow method.
This involves taking up cash flows arising in future periods and discounting them at a
discount rate. This may be a multiple, applied to a singles years cash flow or profits. It
can also be applied to cash flows for a number of years, with a declining factor over each
successive year, given that cash flows in the future are riskier and more uncertain, and are
valued less highly than more immediate cash flows.
PASSING-OFF
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The best definition of passing-off is given by a House of Lords decision in the UK,
Erven Warnink Besloten Vennootschap v. J. Townend & Sons, 1979 AC 731, as cited
in NHL v Pepsi 42 CPR 3d (1992) 390 (BCSC):
"A misrepresentation made by a trader in the course of trade to prospective customers of
his or ultimate consumers of goods or services supplied by him, which is calculated to
injure the business or goodwill of another trader (in the sense that this is a reasonably
foreseeable consequence) and which causes actual damage to a business or goodwill of
the trader by whom the action is brought or will probably do so.
In another case, namely Consumers Distributing Co v. Seiko Time Canada Ltd 1984
SCR 583 , cited in Prosser, The Law of Torts 1971, passing-off is defined as:
The making of some false representation to the public, or to third persons, likely to
induce them to believe that the goods or services of another are those of the plaintiff. This
may be done, for example, by counterfeiting or imitating the plaintiffs trademark or
trade name, his wrappers, labels or containers, his vehicles, the badges or uniforms of his
employees, or the appearance of his place of business.
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The House of Lords held in Reckitt and Colman Products Ltd v. Borden Inc43,
in an action for passing off, an applicant must show three things namely: (a) It has a goodwill or reputation attached to the goods or services in the mind of
the purchasing public;
(b) misrepresentation by the respondent to the public, whether intentionally or
not, leading or likely to lead the public to believe that the goods or services
offered by him are those of the applicant, whether the public is aware of
applicants identity as the manufacturer or supplier of the goods and services
is immaterial so long as they are identified as coming from applicant;
(c)
An action in passing off would involve going through further steps than those
made in an action for trademark infringement. Indeed, the goodwill, misrepresentation
and likelihood of damage as well as the causal link have to be cumulatively established.
Trademark infringement on the other hand would require the test in AECI v. De Guardia
De Pointe to be applied, i.e. whether the dispassionate purchaser would make a confusion
between the infringing product and the one having the registered trademark keeping in
mind his improper recollections from memory and a possible assistance by the
shopkeeper.
The different elements of passing off has been included into the Mauritian legislation
under the Protection from Unfair Practices Act at S5 (Confusion) corresponding to
element (c) above; S6 (Damaging goodwill) corresponding to element (c) as well; S7
(Misleading the public) corresponding to element (b).
Furthermore, the Protection from Unfair Practices Act protects confidential information
at S9 (1), which reads as follows:
Any act or practice which, in the course of industrial or commercial activities, results in the
disclosure, acquisition or use by others of secret information without the consent of the person
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lawfully in control of such information and in a manner contrary to honest commercial practices,
shall constitute an unfair practice.
According to the Act, information is secret where: a. It is not, as a body or in the precise configuration and assembly of its components,
generally known among or readily accessible to persons who normally deal with the kind
of information in question;
b. it has commercial value because it is secret; and
c. it has been subject to reasonable steps under the circumstances by the rightful holder
to keep it secret.
The Unfair Practices Act covers furthermore another element, which is discrediting
anothers enterprise or activities. This is laid down under S8 which reads as follows:(1)
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The general rule appears to be that competition, unless regulated by law or produced by a
legal monopoly, is free so that every individual may freely exercise an economic activity
of his choice, organise it freely and seek customers in competition with others even
where this activity inevitably has adverse effects on a competitor. Any damage caused
thereby remains unproductive of any liability, the justification being the countervailing
legality of free competition and the freedom of enterprise and of human endeavor.
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The House of Lords approved the champagne, sherry and scotch whisky cases and went
further in holding that the rights enjoyed by a class of traders including the plaintiffs to
describe their product as Advocaat applied to a specific egg and spirit drink of an
identified recipe and constituted a valuable part of their goodwill. Accordingly, the
defendants were restrained from applying the mark Advocaat to a drink not made
according to that recipe.
Lord Diplock confirmed the view that the action for passing off is based on a property
right in the goodwill attached to the plaintiffs business. He went on to identify five
characteristics when must be present in order to create a valid cause of action for passing
off as: 1) a misrepresentation
2) made by a trader in the course of trade
3) to prospective customers of his or ultimate customers of goods and services
supplied by him
4) which is calculated to injure the business or goodwill of another trader
5) which causes actual damage to a business or goodwill of the trader by whom the
action is brought or (in a quia timet action) will probably do so.
Lord Oliver reduced the list to 3 elements :1) Existence of plaintiffs goodwill
2) Misrepresentation as to the goods or services offered by the defendant
3) Damage or likely damage to the plaintiffs goodwill as a result of the
misrepresentation.
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This case put forward the principle that no man is entitled to steal anothers trade by
deceit one of equal importance.
The test of common field of activity is concerned with making an objective determination
of the likelihood of damage to goodwill. This can only occur if there is at least a
possibility of confusion. Yet, the test can be criticized because of diversification of large
businesses and their field of activity.
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commerce in England in the future and should be able to rely on the goodwill he had in
connection with the name. Such international extent on the goodwill will not be common
but if an international reputation has been achieved, there is a danger that another person
carrying out business using the same name could cause confusion and customers might
think that they were dealing with plaintiffs business. This is particularly so in the case of
large multinationals as MC DONALDS. This case is an example of a remedy being
available without proof of any actual or immediate damage; indeed the damage is purely
speculative as the plaintiff might never open a restaurant in UK. The decision can be
justified on the basis that the defendant attempted to cash in on the plaintiffs goodwill.
Also, there is the danger that the defendants food not being of a high quality that the
plaintiffs reputation which it enjoyed in UK might have been harmed as a consequence.
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OCEAN RESTAURANTS LTD V TSIM SHA TSUI &CO LTD (1999) SCJ 171
Ocean Restaurant is at Flic en Flac while Grand Ocean is in Caudan and both serve
Chinese cuisine. An injunction was not granted to prevent the defendants from using
ocean in its name.
Appellant conceded that Respondent was not using the word ocean with the deliberate
intention of misleading the members of the public and the clients of the appellant. He
relied rather on the ground that appellant had already acquired the right to use the fancy
name, ocean.
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Passing off was actionable without the need to prove that the act complained of was done
fraudulently or with malicious intent, although the fact that one trader deliberately and
without apparent justification employed anothers name has always been important in the
courts decision as to whether the act complained of, should have stopped.
Appellant cannot claim to have acquired the monopoly of the use of the word ocean.
As pointed out by Slade J, it is considerations of public policy, which override other
considerations in the matter ordinary words cannot be monopolised.
The case of Erven Warnick v J Townsend &Sons (Hull) Ltd was quoted. It was
contended that the use of the word ocean coupled with the fact that both restaurant
served Chinese cuisine was a case of passing off. But the latters restaurant is called
Grand Ocean City and not just ocean and respondent has stated that it had never
intended its restaurant to be known as ocean. We also take judicial notice that many
Chinese restaurants have the common word dragon in their name and this has not given
rise to confusion.
Whether the plaintiffs and defendants name, marks or get up are so alike as to likely to
deceive is a question of fact for the court to decide upon the evidence in each case.
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If this averment is taken to its logical end, it would be tantamount to saying that any
publication with the format and size of Le Defi would be precluded to appear because its
editorial make use of the common word Le Defi, meaning challenge.
Also, various newspapers which were produced show that at least 2 other papers have a
similar format, namely The Star and Mauritius Today. Le Defi does not establish that the
applicant does have a goodwill in the format, presentation and name, Le Defi.
Essential law for Journalists: - Where the owner of a publication claims an injunction to
restrain the issue of another publication with a similar, though not identical name, he
must show not only that the assumption of the name by the defendant is calculated to
deceive the public but also that there is a probability that the plaintiff will be injured by
such deception. An injunction will not be granted if the new journal has such distinctive
marks that persons of ordinary intelligence would not mistake it for the old one.
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3) Though Emcard contains the whole name of the applicant, car and card have
different connotations and it cannot be said that one resembles or includes
another. The word Emcard is written with the word Em written on top of the word
card
4) When the huge investment already effected by the respondent is pitched against
any loss to the applicant in the hypothetical event that it may get back in the
telephone business, it is clear that the balance of convenience is in favour of the
applicant.
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96
The queen and Prince Albert made etchings for their own amusement, intended only
for their own private entertainment, although they sometimes had prints made to give
to friends. Some of the etchings were sent to a printer for prints to be made from them.
While at the printers, someone surreptitiously made some additional prints from the
etchings which come into rounds of the defendant who intended to display the prints
in an exhibit. The defendant advertised his intention to hold the exhibition and was
sued by the Queens consort. It was held that relief would be given against the
defendant even though he was a third party. The defendant had argued that the prints
were not improperly taken but it was said that his possession must have originated in a
breach of trust, a breach of confidence or a breach of contract and therefore, an
injunction was granted preventing the exhibition.
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Lord Greene also emphasised that an obligation of confidence is not limited to cases
where the parties are in a contractual relationship; that the law will prevent an abuse of
position by the recipient of confidential information. He also indicated that there need
to be nothing special about the information concerned and that others may be able to
derive information for themselves but will need to invest some effort to obtain that
information. In other words, the recipient of confidential information will be prevented
from making unfair use of the information outside that contemplated by the person
giving it. It can be said that a person fixed with a duty of confidence is in an analogous
position to that of a trustee. However, in the case of the person fixed with an
obligation of confidence, the nature of the duty is always negative, he must not use or
divulge the information outside the authority given to him by his confidant.
Validity of restrictive covenants, following French case :a) restricted in time and space
b) not provide in scope as to prevent the employee from earning a living
c) maintenance is fundamental to protect the legitimate interest of the business of
employer
There has been a breach of the restrictive covenant. But the third respondent is not a
competitor as defined in the restrictive covenant. The common factors do not show a
link between second and third respondents. But, as the applicant itself has chosen to
limit the application of the restrictive covenant to an entity holding a management
licence.
SEAGAR V COPYDEX
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The defendant designed a carpet grip using details from the public domain but also
incorporating ideas it had discussed with the plaintiff some years before. The
defendant claimed that it had forgotten about the latter so it was effectively a case of
subconscious copying. Nevertheless and notwithstanding, the apparent innocence of
the defendants actions, Lord Denning found for the plaintiff. It would appear,
therefore, that the state of mind of the person using the information in breach of
confidence does not affect liability, although it could be relevant when it comes to
determine damages.
However, the plaintiff was not granted an injunction and had, at best, a weak case.
When information was communicated in the expectation that the plaintiff would be
paid, it was doubtful whether an injunction was the appropriate remedy if there was
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STEPHENS V AVERY
Secrets of a personal nature are also protected, even if it is relating to a sexual conduct of
a lurid nature. There was no reason why such information expressly communicated in
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FRASER V THAMES TV
Three actresses formed a rock group with the assistance of a manager and developed an
idea for a TV series known as The Rock Follies. They discussed the idea orally with
the Thames TV in confidence and it was agreed that the actresses were to have first
refusal should the series proceed. When Thames TV decided to proceed, one of the
actresses could not get a release from another port and Thames TV replaced her with
another actress. It was held that the court would prevent a person dislodging an idea in
written or oral form until it became general public knowledge provided that :
1) the circumstances imputed an obligation of confidence
2) the content was clearly identifiable, potentially attractive in a commercial sense
and capable of being brought to fruition.
For a third party to be fixed with an obligation of confidence, he must know that the
information was confidential and had been imparted in confidence. Even though it was
disclosed to several people, it was disclosed to each and all of them in confidence. The
disclosure to others was also plainly in confidence and therefore confidence remained
intact. The replaced actress got damages.
FRASER V EVANS
The plaintiff was a public relations consultant who has been engaged by the Greek
Government to prepare a report. The contract included an express term stating that the
plaintiff must not divulge any of the information covered in the report during and after
the currency of the contract. A copy of the report had been surreptitiously obtained and
came into the hands of the Sunday Times. The plaintiff was granted an exparte order
restraining publication of the report or parts of it in the newspaper on the grounds that it
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would be defamatory and could be breach of confidence. The plaintiff considered that an
article based on the report would show him in a bad light. On the defendants appeal, it
was held that the plaintiff was not entitled to an injunction. Although the plaintiff owned
a duty to the Greek government, no reciprocal duty was imposed by the contract, neither
could such a duty be implied. The court can give effect to an obligation of confidence
only at the instance of the party to whom such obligation is owed. It was also held, obiter,
that although the plaintiff owned the copyright in the report, this did not extend to
preventing the use of the information contained within it, once again illustrating the
distinction between idea and expression in copyright.
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The following principles were located as far as confidentiality between master and
servant is concerned
1) if there was a contract of employment, the employees obligations were to be
determined from that contract
2) In the absence of any express terms, the employees obligations would be implied.
3) While still in employment, there was an implied term imposing a duty of good
faith or fidelity on the employee. This duty might vary according to the nature of
the contract, but would be broken if the employee copied or deliberately
memorised a list of customers.
4) The implied term imposing an obligation on the employee after the termination of
his employment was more restricted than that imposed by the duty of fidelity. It
might cover secret processes of manufacture or designs, or special methods of
construction or other information of a sufficiently high degree of confidentiality
as to be classed as a trade secret.
5) Whether information fell within this implied term to prevent use or disclosure by
an ex employee depended on circumstances, and attention should be given to the
following:
a) Nature of employment: - Higher obligation where employee handled
confidential material
b) Nature of Information :- should be an authentic trade secret or at least
highly confidential
c) Whether the employer stressed the confidential nature of the material
d) Whether the information could be easily isolated from other material the
employee was free to use , this being useful evidentially rather than being
a conclusive test.
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information was over and above the employees normal skill in the job and amounted to a
trade secret.
MORISON V MOAT
A medicine was made known as Morisons Vegetable Universal Medicine. There was
a dispute between the son of the person who had originally devised the recipe and the
partner, Thomas Moat, who had improperly told his son of the recipe. It was held that
there was equity against the defendant. It was a breach of faith and of contract by the
partner, Thomas Moat to tell his son of the secret who therefore derived his knowledge
under a breach of faith and of contract and could not claim a title to the recipe. Although
the term Breach of Confidence was not used at this stage, it was clear that the breach of
faith was actionable per se and was not dependent upon the existence of a contract. There
was no contractual relationship between the son of the originator of the recipe and the son
of the defendant.
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Rights of Performers
Under the Copyright Act, a performer is a person who presents a work or expressions of
folklore by a personal rendition or interpretation, which take most often the form of
visual representations.
A performer is entitled to protect his performance from copyright infringement by other
parties.
Indeed, a performer of a work is the sole person who can authorise the following acts on
request of a party: a. broadcasting a performance of the work or distribution of the work by cable;
b. communication of the performance to the public;
c. fixing and unfixed programme;
d. reproduction of the fixation of a performance.
Nonetheless, when a performer has authorised the incorporation of his performance in an
audiovisual fixation, the authorisation is no longer needed.
The protection given to the performer will exist for 50 years dating from
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Derogations
The authorisation of the performer for broadcasting or distribution by cable is not
required when the broadcast or distribution is made from the fixation of the performance
as in any case it is the performer himself who has the exclusive right to fix the
performance and consequently there is a presumption that the fixation has been lawfully
created and is being used lawfully for broadcasting and distribution purposes.
An authorisation is also unsolicited when the broadcast or distribution by cable has
already been authorised by a person who initially broadcast the performance as we have
seen earlier that a broadcasting organisation has the exclusive right to authorise or
prohibit the rebroadcasting of its broadcasts and the fixation thereof.
No authorisation is required when the work is communicated to the public when the
communication is made from the fixation of the performance or a broadcast or
distribution by cable of the performance. It would have been inconvenient for
broadcasting organisations to seek the authorisation of the performer every time the
performance is communicated to the public through the television *or radio*. The
Copyright Act 97 has thus provided broadcasting organisations with a specific regime by
soothing copyright laws but still remaining within the realms of legality with regards to
Copyright protection.
Authorisation for the reproduction of a fixation is normally not required as the very fact
that the performance has been fixed would infer that it is legally valid and that its
reproduction would be regulated by an agreement. Instances when authorisation is needed
are thus limited by statute.
Authorisation for the reproduction of a performance is only required where the
performance was initially fixed without the performers authorisation (the performer is
the sole person who can authorise the fixing of an unfixed programme). Here the
Copyright Act 97 is not legalising what would appear to be an unlawful act, that is
reproduction of a performance from a fixation created without the authorisation of the
performer, but is catering for situations which may have arisen before the promulgation
of the Copyright Act 1997.
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Authorisation for the reproduction of a fixation is also required where the reproduction is
made for a purpose which is different from that for which the performer gave his
authorisation or for a purpose different from that for which it was originally fixed. The
performer may have given his authorisation to reproduce the fixation only for educational
purposes or for sensitisation campaigns and any reproduction for another purpose would
not be permitted except with the consent of the performer.
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agents in more than 10 countries where they know there is massive use and diffusion of
their performance.
The CA 97 provides at S25 (1) that an authorisation for the acts mentioned in S24 may be
given by the performer himself or his duly appointed representative to whom the
performer has delegated his power in writing.
The authorisation given by the performer, or the claim of the duly appointed
representative of the performer that he holds such a position, shall be valid unless the
recipient (that is the other party to which the authorisation is granted) knew or had good
reason to believe that the claim or appointment was not a valid one. This section of the
law seeks to protect the recipient of the authorisation so that the latter (if he is a
broadcaster for instance) may still be allowed to broadcast the work. Yet, the course of
action, which will follow, will probably be the notifying of the performer of the work or
his real representative and they may consequently enter into proceedings against the fake
agent.
Producers
Under the CA 97, a producer is the person who has taken the initiative and financial
responsibility for the making of an audiovisual work or a sound recording. In the realms
of cinematography, one person may take the initiative to produce the work but another
person may be responsible for financing the undertaking. Consequently, there may be a
confusion of roles with regards to whom should stand as the official producer of the
work. The contract of production will thus have to be explicit on the roles of each party to
the undertaking and determine who is the actual producer of the work for the purposes of
intellectual property. The contract of production as well as other contracts with
stakeholders (i.e actors, musicians, cameramen etc) will also have to be explicit about the
identity of the producer.
It is important to remember that according to S7(6) of the CA 97, the producer of an
audiovisual work owns the economic rights relating to the work other than the rights in
any musical work included therein. The rationale is that producers of work are the main
drivers of such undertakings and adequate compensation for their efforts and input has to
be given to them.
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(i)
is engaged in any activity, other than an activity relating to the information and
employs
less
(ii)
(iii)
This will help them to value their assets and make the optimum use of it.
Small enterprises will not get exploited and will reap the required financial
benefits for the products that are emanating from the creations of their
minds.
Small enterprises may be led in contracts or other deals that would lead to
a forfeiture of their rights, as they are not aware that such rights exist.
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By knowing the registration procedure and making right use of it, the
small and handicraft enterprise is ensuring maximum protection for
trademark and industrial design in sheer legality.
Effective and Timely IP protection will help save time and cost in legal
proceedings and litigation once the issue of any probable future IP
infringement arises.
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If SMEs are able to understand the importance of licensing as well as the benefits that can
be reaped from it, this would help the application of IP in their business.
WHAT IS LICENSING?
A licensing agreement is a partnership between an intellectual property rights owner
(licensor) and another who is authorized to use such rights (licensee) in exchange for an
agreed payment (fee or royalty). A variety of such licensing agreements are available,
which may be broadly categorized as follows:
Usually, this may form part of one single contract or part of a contract of merger or
business acquisition.
Licensing can bring much financial benefit to an SME, through selling its
licensing rights or even leasing it over a period of time.
Licensing can help an SME to recover the cost it has incurred for Research and
Development.
The main advantage for a licensor is that licensing can generate additional income
which can be ploughed back in the business for further expansion.
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The main advantage for a licensee is that it can carry out a number of activities
such as, manufacturing, selling, importing, exporting various goods or services
which it may be prevented from doing otherwise.
LICENSING
.
Copyright License Agreements :- these are mainly for the exploitation of works that have
a copyright attached to it. For this licensing agreement to take place, it is significant that
the work fulfils all the criteria of having a copyright46. These usually happen in cases of
literary and artistic works. (In some countries, this is usually managed by collective
management organizations that represent the rights of its members).
There are some particularities concerning licensing agreement:1) A licensing agreement is a contract.
2) If there is no prohibition in a licensing agreement, it does not imply that the act is
allowed.
- FIELDS OF USE:- This relates to the uses the licensee would make of the licence
agreement that is distributing and selling the technology to a particular class of
customers, commercializing the technology, using it for a particular purpose such as
research.
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1) Lump sums:- These are usually payable upon the happening of an event, in this
case, the signing of the agreement. In case of no further payments, it will be
considered as a fully paid up license.
After drafting the license agreement, it is important to know how to manage it.
Several views have to be considered:TECHNICAL ASSISTANCE: This is necessary to move the licensed technology into
production. This will have the benefit of reaping more income for the licensee, thus
more royalty for the licensor. There may also be direct assistance whereby the
licensee operates from the premises of the licensor. Moreover, there may also be
consultation, that is the right of the licensee to contact the licensor by mail or fax or
any other means of communication.
Licensors may also conduct AUDITING. This is conducted by the licensor, at his
own cost. However, there may be an agreement between the licensor and the licensee
whereby the latter would pay for the auditing or agree on a discrepancy on the
amount of royalty that is paid and that which the licensor should receive.
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Royalties
Royalties are usually paid throughout the number of years of the lifespan of the patent.
When there are assignments, usually the pay back is done through royalties.
It is to be noted that failure to pay royalties could lead to a breach of the contract and can
cause the licensor to terminate the contract. A royalty is more convenient for
assignments. This is so as an assignee that fails to pay royalties does not risk the loss of
rights in relation to the patent, since the assignee owns the patent unconditionally. The
only recourse would be the recovery of damages for non-payment. This is why it is
undesirable to assign a patent for future royalty payments.
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In some cases, a lump sum payment is preferable as the patent owner saves himself from
the technical failure, market failure or the regulatory failure that would otherwise lead to
a reduction or non payment of royalties. Thus, the patent owner secures himself in getting
a one off payment at one single occasion.
Many companies who are in need of capital for continuation or re investment purposes
might opt for a lump sum payment rather than debt or equity capital. An example would
be companies indulging in research and development that would need capital to re invest
to conduct further research on other projects.
Whilst lump sum would connote more security, the disadvantage to the licensor is that if
the patent generates greater returns, this might exceed the amount of the lump sum.
In making a decision between lump sum and royalty, the advantages and disadvantages
have to be weighed against each other as well as the financial factors involved in each
type of income.
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PHOTOCOPY
Guideline to library:
Therefore, library attendants should see:a. whether the photocopy is being made for the entire book or not. Photocopy of an
entire book should not be permitted.
b. One person is doing only one copy for himself. [Check number of students in
particular class].
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Date:
I, Mr/Mrs/Miss..., hereby declare that I authorise
Mr/Mrs/Miss..to photocopy pages . to of my exercise
book of . in copies.
The signature of the copyright owner can be verified on the Student ID of the
latter on a suspicion of forgery.
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A sponsorship agreement will need to involve one or more of the relevant acts mentioned
above. The sponsorship agreement will need to address the nature of the intellectual
property involved and then lay down the different acts which relate to the work and
which can be accomplished by the sponsor.
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Rocksters Co Ltd, a registered company limited by shares, operating in the textile industry
and having the main objective of manufacturing clothing and footwear, while having
office at 24 Rue Brabant, Port Louis obliges itself to commit the sum of the tune of
R50,000 ( fifty thousand rupees) only to Mr Carl Donair, student in textile designs, of 18
Avenue Hillcrest Quatre-Bornes, to create and manufacture 4 original designs for t-shirts
in view of the partial fulfillment of his school curriculum, being agreed that the said sum
will be used in the purchase of knitting equipment and cloth paint, and that the said sum
represent a partial sponsorship for the activity of Mr Carl Donair.
As a counterpart to the sponsorship, Mr Carl Donair is engaging himself to allow
Rocksters Co Ltd to exploit the work created by him for a period of 12 months dating
from the creation of the work, for the acts of reproduction and licensing, being agreed that
the share of benefits on the net profits derived from the work will be of the percentage of
40% for Mr Carl Donair and 60% for the Rocksters Co Ltd, the amount of which should
be debited in consolidated fund on all the revenue obtained for the relevant acts, at latest
at the end of the expiry of 7 days following the end of the period of 12 months.
ACADEMIC ASSIGNMENT
An assignment contains text and/or graphics.
Text should include letters, numbers and symbols.
Graphics should include drawings, photography, bar chart, pie charts and other diagrams.
For the purposes of this legal analysis, an assignment shall be taken as including a
dissertation, or a project the finalisation of which yields into the production of an object,
or the making of a process to be used in industry. It will also include a mini-project,
dissertation or thesis.
Furthermore, it may also include desktop publishing aspects.
It is usually imposed as a coursework for students at undergraduate/postgraduate level in
the partial fulfilment of their semestrial or yearly programme. Each module may have its
own coursework, and the latter may count for a percentage of the final marks for the
module. Marking of the assignments and the criteria thereof will vary depending on the
regulations of the university.
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IV. Assignment with text and/or graphics yielding a product embodying an industrial
design.
Copyright and Industrial Design
V. Assignment with text and/or graphics yielding a product which can be commercialised
under a trademark
VI. Assignment with text and/or graphics yielding a product and affording cumulative
protection.
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Though a work placement can occur in any public or private body, it occurs statistically
more in companies specialised in a particular field of business. The term hosting body
used thereafter will represent the place where the student is fulfilling the work placement.
Usually, both the hosting body and the university will require that a report be produced
by the student at the end of the work placement. The report will include the theoretical as
well as the practical explanations of the work undertaken by the student.
The intellectual property issue at stake is whether the student, while doing a work
placement can produce a work which can constitute some form of intellectual property.
Students in design and textile courses enrol for work placement where the domain of their
work is to design a line of clothes with a particular design and theme for instance
Nature or fire. The student will then have to draw ideas within the ambit of this field
and come up with the design of clothes that is his creation but yet are made at the hosting
body accommodating him. In this situation, a written agreement will help clarify this
situation by establishing:
a. the author of the work
b. the amount of input from the company which can justify a co-ownership( if the
ownership of the work is not taken to be attributed to the hosting body itself)
c. whether the use of the consumables and utilities of the company has any effect on
the ownership of the work for e.g furniture made using the timber of the hosting
body, an article written using the computer of the hosting body etc.
d. the period during which the economic right may be transferred to the company
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3. There are also industrial placements that are done in collaboration with public and
private sector enterprises. These work by way of work placements of student with
companies and the students make a commercial project for the company. This
may regard any aspect of the functioning of the company or improvement of a
system within the company. These projects form part of their course structure and
whilst, no remuneration is planned, some companies do offer a stipend allowance.
Some of the projects are implemented whilst others are not. This can be covered
under the Sponsorship agreement Item.
5. There is also a non disclosure agreement that the student has to sign when starting
a work placement with the company, that is the student agrees not to disclose any
acquired information or data relating to the company or its internal running.
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6. For trainers and lecturers, nothing is specified in the contract of employment but
the practice has been that whatever work that the trainers have done on behalf of
UTM , the IPR resides with the latter. This, however, depends on the nature of the
work as well as the context and content. For instance, if there is an article being
written on behalf of the UTM for a local newspaper, the IPR rights will reside in
the institution.
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assign to the University the intellectual property rights to which these Regulations apply.
2.
(a) the ownership of and the sole right to exploit any patentable invention or discovery;
(b) all rights in any design produced; and
(c) copyright in any computer program and any design capable of commercial
exploitation produced by the student in the programme of the students programme of
study or research.
3.
or herself, or by a publicly funded body, or by any body other than one which has entered
into a contract for a specific piece of research with the University, the assignment shall
only apply to those items of intellectual property referred to in paragraph 2 above.
4.
Where the whole part of a students programme of study or research is funded by, or
involves the use of facilities provided by a third party, under a contract made with the
University, the assignment shall apply to the items of intellectual property referred to in
paragraph 2 above and also to copyright in any work (including any report, essay,
dissertation and thesis) produced by the student during or as a result of that programme or
part programme.
5.
Where the whole or part of a students programme of study or research is funded by,
or involves the use of facilities provided by, a third party, under a contract made with the
University, the following provisions shall apply:-
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(a)The University may in its own name or as agent for the student transfer or assign to the
third party rights to which these regulations apply on such terms as it may think fit; and
(b)The student shall, in accordance with any relevant terms of agreement between the
University and the third party, keep confidential all information relating to the work or
business of the third party, acquired by the student during that programme, or part
programme, of study and neither use for the students own benefit nor, save with the
consent of the third party, disclose to any other person such information.
6.
Where rights are vested in the University in pursuance of these Regulations the
University may exploit those rights, using its best endeavours to that end and granting to
the student such reasonable share in any benefit accruing to the University as shall be
agreed from time to time by the University. If the University does not wish to exploit
rights vested in it, it may at the request of the student, return the rights to the student.
7.
A student shall not without the consent of the University publish any work which
might prejudice the exploitation of the rights to which these Regulations apply by the
University or any third party to which rights have been transferred or assigned.
8.These regulations shall not apply to the case where a student has assigned his/her
intellectual property to his/her employer under a contract of employment and where the
student has retained that employment during his/her period of registration at the
University. In such cases the University shall enter into negotiations with the employer
to ensure that the interests of the University are protected. Such students shall however
be subject to the terms of regulations 9 below.
9.
The student shall treat as confidential all knowledge and Information (including
knowledge and information relating to the materials, processes, machinery and apparatus
used in experiments and trials) relating to any work taking place within the University
which his/her supervisor indicates to the student is to be treated as such.
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AND COMMISSIONED
WORKS
An artistic, scientific or literary work conducted under an authors employment would be
subject to copyright protection. While the moral right will undeniably remain with the
author of the work, the question which arises is on whom and under which conditions
will the economic rights relating to the work be assigned. There are 2 hypotheses which
are possible:
a. All the economic rights are assigned in the employer for a maximum period of 50 years
from the date on which the work was created or first published, and if the work is a
photographic work, for a maximum period of 25 years.
b. All the economic rights remain vested in the employee and are protected for the
lifetime of the employee and 50 years thereafter; and in the case of a photographic work
for a period of 25 years after the creation of the work.
c. There may be a sharing of economic rights in which case it will be established that
some economic rights will remain with the employee, and other economic rights will be
assigned to the employer. Whilst the economic rights remaining with the employee will
be protected for the lifetime of the employee and 50 more years, the economic rights
assigned to the employer will be protected for a maximum of 50 years from the creation
of the work.
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law provides that the employer-employee relationship subjugates the copyright into the
employer as of right, even if there is no clause in the contract of the employment. The
employee-employee relationship thus seems to override S9 (2) of the CA which provides
that an assignment of an economic right should be made in writing for it to be valid. The
presumption of the law is that assignment of the right to the employer is inferred during
employment even if there is no express assignation made through a copyright clause.
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amended work, he may terminate the commissioning contract but shall pay to the author
an equitable remuneration to account for the efforts made by the author.
Refusal to correct or amend
Similarly, if the author of the work refuses to correct or amend the work to fit with the
stipulated purpose, the commissioner may terminate the commissioning contract but shall
offer the author an equitable remuneration.
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Arbitration
Conciliation
Negotiation
Mediation
ARBITRATION
This is known as a private form of adjudication. The lack of formality and the
confidentiality involved would be an asset in such types of disputes as they would help
solve the IP issues in the desired conditions.
The Mauritian law provides for this, following the French law, in the Code de Procedure
Civile.
The law prescribes the need for a compromis. This is possible even without the
presence of a contract clause stipulating the need for one.
Le compromis est la convention par laquelle les parties un litige soumettent celui-ci
larbitrage dune ou plusieurs personnes.
This differs from the arbitration clause as it takes place when the dispute has already
arisen contrary to the former where it is anticipated.
The arbitration agreement need not be in writing. This can be agreed in a processverbal which has been signed both by the parties and the arbitrator. However, it is
always prudent to make a written agreement.
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However the law stipulates that the agreement has to abide to two conditions, failure of
which it would be nullified: 1) The object of the arbitration should be determined
2) The arbitrators or the manner in which they are to be appointed are clearly
designated.
In Mauritius, the MCCI offers the arbitration facilities on diverse issues through its
Permanent Court of Arbitration. Those who are interested in indulging in ADR to resolve
conflicts about IP are recommended to contact the MCCI to have more information about
the formalities and procedures involved.
It is to be noted that the decision of the Arbitrator is binding upon both parties and any
interested party can acquire an Exequatur order from the Judge in Chambers in order
to make the award executory. This is going to take care of the imperium side of the
sentence.
The various forms of appeal are available, unless the parties have renounced this right,
which is done in most cases.
This form of dispute resolution would be practical as it allows a third party to judge the
IP issues from a business as well as commercial perspective.
The Mauritius Chamber of Commerce and Industry has a Permanent Court of Arbitration.
[ It is worthy to note that Arbitration in relation to IPR has gained ground internationally
as the WIPO Arbitration and Mediation Center offers regular workshops to encourage
that such disputes be settled as far as possible, by out of court settlements].
134
MEDIATION
This is another form of dispute resolution, which can be used in IP infringement cases. It
differs from arbitration as there is no binding award and the degree of flexibility is larger.
It is more informal and the aim is to make parties reach a settlement.
Mediation is usually a voluntary process and all the stages such as where the parties
should meet is decided on a convenience basis.
At the mediation, ordinarily, the parties meet in a joint session. The mediator makes an
opening statement which explains the mediation objectives. Apart from the joint session,
the mediator will also meet the parties , individually, privately and in total confidence. It
should be noted that in circumstances where the two parties refuse to meet in a joint
session, the mediator will have to adopt a more interactive role to meet the aims of the
mediation.
What makes mediation a more appealing alternative to arbitration is the fact that the
mediator guides the course of negotiation but has no authority to make any determination
or decision on the subject matter of the dispute.
Another aspect is that the mediation can be ended simply by the party announcing its
withdrawal. The mediation can also be suspended and may agree to re activate it and this
will enable the discussions to be picked up from where they left off, taking into account
subsequent events and re evaluations.
Mediation will help resolve IP issues such as copyright infringements, patents, trademark
issues amongst others by applying the following three stages: 1) It opens channels of communication between the parties
2) The second stage attempts to develop bridges of understanding between the
parties. This is paramount significance as in IP issues, the fact that two parties are
claiming to have same rights on a particular intangible property can lead to a
much adversarial approach.
135
The outcome for mediation is usually an agreement for settlement. Once this is signed, it
is binding and enforceable as any contract.
136
The legal world has recently, been interested in human genome sequences as a source of
intellectual property.
Debates have arisen whether doctors have a right to the research and subsequent
patenting of a patient s discarded biological tissue.
The United Nations(UN) also responded to the Guayami patent with a Draft Declaration
on the Rights of Indigenous Peoples.including human genetic materials as cultural
property that indigenous populations are entitled to control. The UN supported a view,
as taken up by many protestors, that individuals should have property rights in their
biological material and should not be forced to comply with the whims of researchers
when it comes to the human body. In response to the UNs stance that indigenous people
should have control over their genetic material, Henry Greely, a Stratford Law professor,
protested that the idea that the US government owns the person or his genetic
material is absolutely rubbishThe donors involved can continue, obviously, to use their
own DNA to run their bodies. Greely believes that once separated from the body, the
genetic material of indigenous people no longer shares a relationship with the body that it
137
was taken from. This view does not assuage concerns regarding the prevalent popular
belief that ownership of another persons genetic material invades that persons privacy
violates his or her bodily integrity, often for purposes of economic exploitation, and
offends his or her human dignity.
The second controversial claim for intellectual property over an indigenous persons
biological material concerns the Hagahai patent. Here, biomedical researchers
successfully patented the T lymphotrophic virus found in blood of the Hagahai people
in Papua New Guinea, believing that it could be developed into a diagnostic tool or
vaccine for certain types of leukemia. The scientists who filed the Hagahai patent claimed
to have negociated a profit sharing agreement with the Hagahai, a tribe that had no
contact with outsiders until 1984, when some tribe members sought help for an illness
that afflicted the group. Public interest groups were outraged. RAFI described the
incident as an egregious act of biopiracy and human bioprospecting.
It appears as though biological material taken from human beings can, in fact, constitute a
patentable invention. In fact, the Supreme Court laid out the last test for patenting
biological material in Diamond v Chakrabarty (447 US 303) where the majority
supported the notion that anything under the sun that is made by man constitutes
patentable subject matter as long as there is a human made aspect to it.
138
which are then patented? Should the consent over use of research inputs also extend to
the patenting of research outputs?
\A landmark case in the US in the 1980s is the Amgen v Genetics Institute where it was
held that the DNA sequence used to invent erythropoietin had to be included in the patent
claim to secure intellectual property rights.
One verified impact of IPR on the principle of sovereign rights of countries over their
genetic resources and to some degree on sustainable use, has been the direct and indirect
misappropriation of biological and genetic resources and traditional knowledge.
The arguments regarding the negative impacts of IPR over biodiversity conservation,
specifically in the area of agro biodiversity, also point out to: a tendency to homogenize
agricultural diversity; displacement of native and traditional crops; restriction on saving,
using and selling farm saved seeds by small farmers and indigenous communities, among
others.
Furthermore, patents have been critiqued as legitimising bio piracy, enhancing the
concentration of research and development capacities in hands of private sector
conglomerates (usually involving biotechnology companies, universities, research
institutions) or dependant on private sector funds, promote widening of the technology
gaps between North and South, limit availability of research materials.
BENEFIT SHARING
The use and economic exploitation of genetic resources has brought a wide range of
benefits to developing and developed countries, alike, including economic benefits.
139
Biotechnology and non-biotechnology developments over the past two decades have
contributed significantly to the generation of these benefits. At the same time, however,
these developments have also exacerbated debates over the control of biological and
genetic resources and use of IPR over biological and genetic materials on which
biotechnology relies to continually progress. The main challenge to be confronted in
implementing the ABS principles under the CBD is to determine how the benefits (in
terms of sharing research results, capacity building, monetary income, IPRs) are to be
effectively shared. To an important extent, non monetary and often sidelined benefits
such as joint research possibilities, publication of research papers, strengthening project
development capacities, finding new contracts, among others, can have a long lasting and
building effect on overall national research capacities.
140
studying his tissues, and that if the fiduciary bond of trust is broken, the patient may sue
for breach of that duty. This decision notably drew a distinction between the legal context
of access to the genetic material, and the legal context of patenting a subsequent
invention which made use of that material.
The
invention related to a cell line infected with a Papua New Guinea Human T
lymphotrophic Virus variant, and to vaccines for humans against infection with and
diseases caused by HTLV I and related viruses.
The patent which was later abandoned- sparked controversy over whether the Hagahai
donors consent had, or should have been obtained before the resulting cell line was
patented. Reports of what actually happened vary greatly. But the fact that the genetic
material came from an indigenous group made the case particularly sensitive, and gave
rise to accusations of biopiracy. Nor was it ever determined whether in this case consent
should have been obtained solely from the individual or from Hagahai people, or from
the state.
141
IP PRE DIAGNOSIS
Industrial property
Intellectual property
An IP pre diagnosis is not designed to make specific advices for the company, rather it
would show it the available avenues of action that can be undertaken in order to build and
cultivate an IP culture in the enterprise.
A diagnosis on the actual state of the company regarding its needs in relation to
industrial property.
The competitive advantages that can be acquired if good use of industrial property
is made.
142
Preparation
Delivery
1) PREPARATION
This starts by the signing of an agreement between the organisation conducting the IP
pre diagnosis and the SME. A visit may also be conducted to collect information
concerning the company, its sector of activity and its competitors. A feasibility study
may also be conducted to get more information about the strengths and weaknesses of
the company.
This meeting is significant in order to get a grasp of the different aspects of the
company such as :
-
Financial situation.
evaluation of deficiencies.
-
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The recommendations must be oriented towards attaining the objective which is defined
by the company in the light of the overall context in which it is operating, that is the
stakeholders and economic, social and organisational environment.
The recommendations should be designed in such a way that it is easy to implement and
geared towards the capacity of the enterprise.
144
(1) the sales of nike products are diminished due to misleading advertisements on the
squatter website.
(2) The bad quality of the products on the squatter website discredits the products of
the original company.
145
Background
I. Framework
The ICTA( Information and Communication Technologies Authority) set up under the
ICTA 2002 is the competent authority in Mauritius to authorize or regulate the
registration, administration and management of domain names for Mauritius [S18(1)(y)
of the ICTA 2002].
Therefore, for registration of .mu domains, ICTA is country-code Top Level Domain
(ccTLD) manager.
II. Fees:
Registrar fees
The registrant will have to pay an annual fee to the domain registrar who usually provides
other value added services like web-hosting and email.
146
Registry fees
In turn, the registrar will have to pay a wholesale price to the registry operator for each
registration or renewal of a domain name. In Mauritius, the pricing for one year which a
registrar has to pay to registry operator is 32 euros.
147
Therefore, dispute resolutions which are available for .mu domain name disputes are:
1. the ICTA which gives its decision, which can be challenged by judicial review.
2. mediation by CoCCa ombudsman
3. arbitration by an expert.
4. the Court which is the last resort.
Though not mentioned by the CCTLD dispute resolution policy, negociation will also be
possible and is carried by 2 lawyers who have expertise in the matter.
Till 3rd March 2008, 2 .mu domain name complaints have been lodged to the CoCCA
Complaints Officer for review: the cracks.mu complaint and the wordpress.mu
complaint.
148
WEBSITE LINK
ORGANISATION
1. www.wto.org
World
Trade
Organisation
(WTO)
information on TRIPS
2. www.wipo.int
3. www.biodiv.org
4. www.upov.int
5. www.patent.gov.uk
UK Patent Office
6. www.european-patent-office.org
7. www.uspto.org
8. www.icann.org
9. www.ipria.org
10. www.publaw.com
specialising
in
publishing
and
12. www.ivtb.mu
13. www.utm.ac.mu
15. www.uom.mu
University of Mauritius
16.www.masa.mu
149
Institutions
Persons
1. Industrial Property
Office
Post held
o Mr
Acting
Beergonauth
o IP issues in
Controller
Mauritius
o Trademark
application
and
registration
o Industrial
Design
application
and
registration
o Patent
applications
2.
University
Technology
of Mr
Nawaz Associate
of Mohamudally
Mauritius
o IPR
in
Professor, Head
courseworks
of
and
School
of
Business
Informatics
dissertations
&
o Reprographic
Software
reproduction
Engineering
of works
o IPR
in
relation
to
trainers
and
their contract
of
employment
3. Mauritius Chamber Mr Barlen Pillay
Head of Legal
of
Services
relating to IP
Department
for
Medium
and
Large
Commerce
Industry
and
o Issues
150
enterprises
o The
application of
Alternative
Dispute
Resolution
for
IPR
disputes
o The
Permanent
Court
of
Arbitration at
the MCCI
4. Mauritius Society Mr Gerard Louise
Director
of Authors
o IP in relation
to copyright
o Protection of
literary
and
artistic work
o Equitable
remuneration
5.
School
of Mr V Munbodh
Information
Technology
Director
o IP protection
in
and
Electronics
Real
Industry
projects
o Copyright in
Software
Development
projects
o Work done by
trainers
6.IVTB
Training Mr Putty
o General
IP
151
Center , Phoenix
Mrs Bina
practice at the
IVTB
o Formal
agreement on
student
registration
o IP issues in
Design
and
fashion shows
7.
University
of Dr Gunputh
Mauritius
Mrs Sewgoobin
Head of Legal
Department
o Lack
of
IP
implementati
on
o Contract
of
employment
of lecturers
Program
design
Coordinator
o Design
creation
o Sponsorship
agreement
o Formal
agreement on
registration of
students.
9. Institut Superieur
de Polytechnic
o No
IP
awareness in
modules
programmes
o Work
placements
152
o No
formal
agreement
o Lecture notes
o Industrial
Jagatsingh School of
Design
in
Furniture Making
relation
to
furniture
making
o Portfolio and
IP in relation
to it.
o Formal
agreements
on
student
registration.
153
GLOSSARY
1. Alienation : Power of disposing of or transferring an interest in property.
3. Appeal : This has been rightly defined in the English case of Edlesten v LCC
(1918) 1 KB 81 as being the transference of a case from an inferior to a higher
tribunal in the hope of reversing or modifying the decision of the former
154
9. Author : It refers to the person who creates a work. The Copyright Act 1997
defines it as being the person who has intellectually created a work
10. Assets: Physical property or rights which have a value in monetary terms. They
are usually categorised in fixed, current, tangible or intangible assets. See also
intangible assets in relation to IPR.
11. Audio visual work : A series of related images and accompanying sounds or a
cinematograph or other film.
13. Burden of Proof : The obligation of proving facts. In general, the burden lies on
the party who substantially asserts the affirmative of the issue. It may shift,
depending upon the circumstances of the case as well as the issues to be proved.
155
16. Confidential Information : Data that is not in the public domain. Vide the Unfair
Practices Act
17. Contract : A legally binding agreement. Under the Mauritian law, this is
basically French derived and dealt under the Code Civil Mauricien. In the IPR
field, these would be usually conducted in cases of duty of confidentiality as well
for copyright, sponsorship or work placement agreements.
20. Confusion : Refers to the attitude that a member of the general public might
adopt in case a product is being passed on as being that of another enterprise and
the law has determined several tests. One of the common ones adopted in
Mauritian case law is that of improper recollection of the ordinary purchaser.
21. Copy : Reproduction of a work in a written form, the form or a recording or any
other material form.
156
22. Damage: Loss or harm, physical or economic , resulting from a wrongful act or
default and generally leading to the award of a measure of compensation. Damage
is also dealt under the Code Civil Mauricien as being three types, that is,
dommage corporel, dommage matrielle ou dommage mentale.
25. Evidence: Testimony and production of documents and things relating to the
facts into which the court enquires and the methods and rules relating to the
establishing of those facts before the court. Under the Mauritian law, the laws
relating to evidence are governed by the Courts Act. In relation to IPR, evidence
would be needed both on civil and criminal grounds.
27. Exclusive Licence : License granted to the exclusion of all other persons,
including the copyright owner. (Vide Licence)
157
28. Fine : Monetary penalty payable on conviction. In IPR, fines are usually payable ,
under the Copyright Act, in case of infringements.
29. Force Majeure : An event that can generally be neither anticipated nor
controlled. Under the Mauritian law, this is French derived and dealt in the Code
Civile Mauricien.
30. Forfeiture : A punishment whereby the offender lost all his interest in his
property. Under the Copyright Act, the law provides for forfeiture of apparatus in
case the latter is being used for infringing purposes.
32. Injunction : An order of the court directing a person to refrain from doing or
continuing to do an act complained of, or restraining him from continuing an
omission.
35. in personam : Against a person- Used to indicate e.g proceeding against a person
(action in personam)
158
36. in statu quo : In the state or position in which something was or is.
37. Industrial Design : Any composition of lines or colours or any three dimensional
form, or any material, whether or not associated with lines or colours, is deemed
to be an industrial design. There are some conditions applied to it which is further
elaborated in the Section 27(1) PIDTA 2002.
39. Joinder of causes of action : The joining in one action of several causes of action
against the same defendant.
43. Published work : A work that has been reproduced and made available to the
public in such copies as to satisfy its reasonable requirements, with the express
authorisation of the copyright owner.
159
45. Ratio Decidendi : The reason for a judicial decision, usually this is the statement
of law applicable to the problems of a particular case.
46. Trademark : This is any visible sign capable of distinguishing the goods
47. Service Mark : This is any visible sign capable of distinguishing the services of
an enterprise from those of other enterprises.
48. Work of joint ownership : A work jointly created by 2 or more authors in which
the individual contribution of each author cannot be readily assessed.
160