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Mauritius Research Council

DRAFT GUIDELINES ON
INTELLECTUAL PROPERTY RIGHTS

October 2008

Address:
La Maison de Carn
Royal Road
Rose Hill
Mauritius

Telephone:
Fax:
e-mail:
Website:

(230) 465 1235


(230) 465 1239
mrc@intnet.mu
www.mrc.org.mu

PURPOSE OF THE GUIDELINES


The shift from the notion of tangible property to intangible property has made it
necessary to consider the importance of intellectual property in the field of business as
well as education.
The purpose of this guidance is to provide an overview of the current state of the law, the
way intellectual property is being treated in different institutions, as well as how the law
has to be applied in a more user friendly manner.

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

SMEs a step close towards recognising the

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.

BASIS OF THE GUIDELINES


The drafting of this working document has involved desktop researching of both local
and international case law analysis, reviewing current local legislations, and a review of
best practice of the application of IP. Furthermore, meetings were conducted with
different

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

o The situation at MASA

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

INTELLECTUAL PROPERTY AUDIT


o Introduction
o The need for an IP audit
o Areas where an IP audit can be used
o An example of the success of an IP audit
o Before conducting an IP audit
o Steps for an IP audit
o Identification
o Evaluation Process
o Different methods of evaluation
o Accounting Perspective

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

TRADE SECRETS/ CONFIDENTIAL INFORMATION


o Intellectual property and breach of confidence
o Case law on breach of confidence

RIGHTS OF BROADCASTING ORGANISATIONS


o Duration of protection of Broadcasting rights
o Rights of performers
o Derogations
o The limits of an authorization
o Representation of the performer

IP AND SMALL AND MEDIUM ENTERPRISES


o The need for SME to protect their IP assets
o The case of PICKWIK
o Relevant authorities in ensuring IP protection
o Licensing in relation to SME
o How can licensing benefit an SME
o Issues in licensing
o Licensing in relation to patenting

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

ALTERNATIVE DISPUTE RESOLUTION


o Arbitration
o Mediation
o The permanent court of Arbitration of the MCCI

BIO PIRACY AND IP

IP PRE DIAGNOSIS
o Importance of IPPD for SME
o What is an IPPD
o Stages of an IPPD

TRADEMARK INFRINGEMENT ON THE NET


o What is a domain name
o Framework
o Complaints resolution
o ICANN Uniform Domain Name dispute resolution policy

LIST OF USEFUL WEBSITES

PEOPLE MET AND INSTITUTIONS VISITED

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.

II. Irrespective of the quality of the work


Copyright protection is afforded to a work irrespective of its quality, that is irrespective
of whether one, in his judgment, may consider the work to harness an aesthetic,
attractive, long-lasting or durable characteristic. For instance, a cook may write a recipe
1

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).

V. The work has to be recorded, fixed, or otherwise reduced on a material form


This canon tallies with the tenet that only expression of the ideas are protected.
In concrete terms, it is only when a novelist puts his idea on paper and narrates how the
murder occurs in his story that he will be afforded copyright protection. Case-law holds
to the effect that the act of creation and fixation of the work are indivisible6, that is for
purposes of copyright, creation has to include fixation as well. An author cannot claim
that he created the work in his mind and was on the point to put it on a material form.
While copyright protection is also afforded to a lecture or sermon under the Copyright
Act, the lecture has to be recorded on a material form. Otherwise, it will be only under
6

Merchandising Corporation of America v. Harpbond 1983 FSR 32

10

the terms of the contract of employment of the lecturer that he will be entitled to some
protection.

VI. The work has to be fixed permanently.


A temporary fixation of the work would not be sufficient to attract copyright protection.
Indeed, the make-up of a person does not have permanence enough for copyright7, but the
drawing of the persons face with the make-up will be entitled to copyright protection. If
a record of a speech is made by a reporter on paper, then the reporter is entitled to literary
copyright on the work he reduced to material form through his skill and labour8.

VII. The De Minimis principle


The De Minimis principle is to the effect that insignificant works would not be afforded
copyright protection, and would not thus fall within the meaning of a literary, scientific
and artistic work. Indeed, the copying of a book title would not be afforded copyright
protection. Similarly, the copying of newspaper headlines on the internet was held not to
be substantial enough to attract copyright following a landmark case9. On the same
reasoning, the mere copying of a trademark would not amount to copyright
infringement10, although it might amount to a trademark infringement.

VIII. No formality required for copyright


There is no formality prescribed for attracting copyright according to S3(3) of the CA
1997. No registration or notice of claim to Copyright is necessary. Indeed, copyright is
known to flow naturally from the act of creation. The copyright notice which is
sometimes present on published works(, name of copyright owner, year of first
publication) is applicable to parties which are not members of the Berne Convention.
Under the Universal Copyright Convention of 1952, the copyright notice as provided
above is sufficient to provide for copyright 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

IX. Publication of the work


According to S31(1)(b) of the CA 97, the artistic, literary or scientific work has to be first
published in Mauritius, or published in another country and published in Mauritius not
later than 30 days thereafter.
A published work means a work which, with the express authorisation of the copyright
owner and, depending on the nature of the work, is reproduced and made available to the
public in such copies as to satisfy its reasonable requirements.
Publication takes place wherever the publisher invites the public to acquire copies, not
where the copies are received11. Moreover, the Court held that 6 copies of an unpopular
song on sale amounted to publication and it was not necessary that the song be promoted
first12.

X. Residence of the Author


Copyright protection shall be afforded to a work whose author is a citizen of, or habitual
resident, in Mauritius or another country party to the Berne Convention13, according to
S31(1)(a) of the CA 97. Unfortunately, Habitual residence is not given a definition in
the Act.

B. Proving Copyright infringement


I.

Ownership of the rights

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

British Northrop v. Texteam 1974 RPC 57


Francis Day v. Feldman 1914 2 Ch 728
13
th
Mauritius ratified the Berne Convention on the 10 May 1989
12

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.

Copying of a substantial part of the work

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.

Nature of the plaintiffs input

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

in theory it can be afforded copyright protection on infringement of a substantial part of


it, was held not to carry any protection unless an exact replica of the drawing was made18.

V. Primary and secondary infringement


Copyright infringement might involve numerous persons for dealings made with a copy
of the original work. For instance, in the process of pirating and selling compact discs,
one person may be making copies of the work only while another person is made to sell
them, give them on rent or communicate the work to the public. The doctrine makes a
distinction between primary infringement which is the mere act of copying and secondary
infringement which involves other dealings in the work, and which are also punishable by
law. The CA 97 provides for economic rights at S4 which include both rights liable to
primary infringement and secondary infringement. The rationale is that a person cannot
absolve himself from the whole fraudulent undertaking simply by saying that he had no
knowledge that the copy under his hand was an infringing one. Case law has held to the
effect that a person committing a secondary infringement

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.

Participation of the copyright owner in the proof of copyright

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.

C. The Outcome of copyright infringement


The person aggrieved of copyright infringement can either choose to report the
infringement to the police, following which criminal proceedings will be instituted; or
make a claim in tort to recover damages for the infringement; or choose both courses of
action to obtain redress.

16

DURATION OF ECONOMIC RIGHTS

TYPE OF WORK

DURATION

1. Literary, artistic work

Lifetime of the author and for 50 years


thereafter.

2. Work of joint authorship

Lifetime of the last surviving author


and for 50 years thereafter.

3. Work published anonymously or under a 50 years from the date on which the
pseudonym

work was first published. (However, if


before the expiry of the 50 years, the
identity of the author is revealed the
duration of the economic right will be
the lifetime of the author and 50 years
thereafter)

4. Audio visual work

50 years from making of the work

5. Broadcasted work or work communicated to 50 years from the end of the year
the public

during which the express authorisation


was granted.

Photographic work or work of applied art

25 years from the making of the work.

17

CASE LAW ON COPYRIGHT

What is meant by publication of a work?


BRITISH NORTHROP V TEXTEAM BLACKBURN [1973] FSR 241
Facts: The plaintiffs company manufactured looms and weaving machinery. The
defendant company, run by a former managing director of the plaintiffs company
together with ex-employees began marketing the most frequently requested of the many
spare parts needed for the machines. The plaintiff alleged that the defendants spares
infringed design copyright in drawings for the parts. In interlocutory procedures, the
defendants asserted inter alia that copyright by first publication in the UK or a
convention country had not been proved since publication only took place when and
where members of the public who had ordered them RECEIVED them.
The Court held that publication takes place whenever the publisher invites the public to
acquire copies. A work is issued to the public when reproductions of the work are put on
offer to the public by gift or on sale. The place of first publication is where the offer is
made, not where the copies are received.

What is meant by a literary work?


UNIVERSITY OF LONDON PRESS LTD V UNIVERSITY TUTORIAL PRESS
LTD 1916 115 LT 301
Facts: The University of London assigned to the plaintiff publishers copyright in
examination papers set by it for school matriculation examinations. The defendants
published a number of these papers without licence together with criticism of them and
model answers, including three on mathematics set by two co-plaintiffs, Professor Lodge
and Mr Jackson. An action for copyright infringement raised the issue of the existence of
copyright.
This case explained the meaning of a literary work. This is defined as a work which is
expressed in print or writing, irrespective of the question whether the quality or style is
high. The word literary seems to be used in a sense somewhat similar to the use of the

18

word literature in political or electioneering literature and refers to written or printed


matter. Therefore, papers set by examiners are literary work within the meaning of the
law.

Does a literary work need to be understood by the general public?


EXPRESS NEWSPAPERS V LIVERPOOL DAILY POST [1985] F.S.R 306
The plaintiff publisher organised a competition millionaire of the month in which
contestants received a free card containing a sequence of five letters and matched it
against sequences published in the Sunday Express, the Daily express and the Star.
Each Day or weeks newspaper would contain a grid of five by five letters and 2
additional lines of five letters. Matching these within an individual card gave a claim to
various prizes and further opportunities. The defendants copied each days or weeks grid
and lines into their own newspapers. On a motion for an interlocutory injunction to
restrain infringement of copyright in the varying grids and lines, the main issue was
whether they amounted to literary works.
This combination of letters is a literary work because compilations involves the exercise
of skill and labour or possibly only labour. Literary works are works that afford
information or instruction capable of conveying an intelligible meaning. It is not
necessary that the work be understood by the general public. On the contrary, it is
sufficient that it is understood by a limited group with special knowledge.

Can short words be afforded copyright protection?


EXXON CORPORATION V EXXON INSURANCE CONSULTANTS [1982] R.P.C
69
Facts: The plaintiffs constituted companies of the Exxon Petroleum group objected to the
use by the defendants of Exxon as part of their corporate name. They secured relief
against passing off but on a claim for infringement of copyright in the word, they failed
before the Court of Appeal. The reason was that the word conveys no information, no
instruction, no pleasure. It is merely an artificial combination of four letters of the
alphabet which serves a purpose only when it is used in juxtaposition with other English

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.

Is there a presumption of authorship?


VEERARAGOO V ROODHUR (1993) SCJ 403
The work Ambalaba was a derivative work of Marie Therese mo joli bateau. There
was a dispute as to the identity of the author of the work.
The case reiterates that there is a presumption at Section 7(2) of the Copyrights Act 1997
whereby the physical person whose name is indicated on a work be presumed to be the
author of the work in the absence of proof to the contrary. Mr Veeraragoo thus remains
the author of the impugned work. The interim injunction was made interlocutory.

Can designs reached by reverse engineering be afforded copyright


protection?
INTERLEGO V TYCO INDUSTRIES [1988] R.P.C 343 JC
The plaintiff and its associated companies made and marketed the LEGO toy brick
system internationally. The defendants intended to make a competing system in Hong
Kong, which the plaintiff, alleged, constituted infringement of its copyright in designs for
the bricks since the defendant had reached their designs by reverse engineering. In part
the claims related to drawings made after 1972. These were virtually copies of earlier
drawings to which were added written instructions for modifying the dimensions of the
joining knobs on the bricks. The defendants accordingly denied that they attracted
copyright.
It was mentioned that designs reached through reverse engineering, that is where the final
product is being reworked backwards to find the original design drawings, could indeed
be afforded copyright protection.

Does the result of labour only matter for copyright?


FEIST PUBLICATIONS INC V RURAL TELEPHONE SERVICE CO INC (1991)
111 SCR 1282

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.

What happens to copyright for a work created during employment?


WALTER V LANE [1900] A.C 539, HL
On five occasions in 1896, the Earl of Rosebery delivered speeches on subjects of public
interest to public audiences. Reporters attended on behalf of the Times and other
newspapers. The Reporters for the Times took down the speeches in shorthand, wrote out
their notes, corrected, revised and punctuated their reports for publication, and the reports
were published in the Times, the speeches being given verbatim as delivered by Lord
Rosebery. In 1899, the Respondent published a book, incorporating these reports.
It was thus held that the reporters were authors of the work and as a result of the terms of
the reporters employment. The copyright therefore belonged to the Times. In this case, it
can be argued that the reporters had used skill and judgment in making , correcting and
revising the reports. However, if a person is simply writing down dictation, the person
dictating will be the author for copyright purposes as the person doing the writing is
simply the agent by which the work is done.

NOAH V SCHUBA [1991] F.S.R 14


The plaintiff, Dr Noah, was a consultant epidemiologist with the Public Health
Laboratory Service. In his own time, he wrote A Guide to Hygienic Skin Piercing
which was published and distributed by the PHLS. The first defendant wrote an article
for a health and beauty magazine which included substantial extracts from the guide
without the plaintiffs permission. The defendants claimed that the plaintiff could not

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.

Who is a joint author?


WISEMAN V GEORGE WIEDENFIELD & NICHOLSON (1985) FSR 326
The second defendant turned his novel The English Way of Doing Things into a play
with the same title. He did so on the suggestion of the plaintiff who, at various stages of
the adaptation made suggestions and criticisms. The plaintiff subsequently claimed to be
co-author of the ploy and so entitled to a share in the copyright.
To be a joint author, a collaborator must make some contribution to the literary or
dramatic form in which alone copyright can subsist.

What amounts to substantial copying of a work?


SPECTRAVEST INC V APERKNIT LTD [1988] FSR 161
In considering whether a substantial part of the plaintiffs work has been reproduced by
the defendant, attention must primarily be directed to the part which is said to have
reproduced and not to those parts which have not.
The test seems therefore to identify parts taken by the defendant to then isolate them from
the remainder of the defendants work and then finally, to consider whether those parts
represent a substantial part of the plaintiffs work. The test will be qualitative rather than
quantitative.
An alternative test would be whether the act complained of is likely to harm the copyright
owners economic interest? Copying even small portion of the authors work would be
restrained if used in a work which competed with the authors work or with a work that
the author might publish in the future. However, this is difficult to apply and could mean
that copying even a small unimportant part could infringe copyright.

22

RAVENSCOFT V HERBERT [1980] R.P.C 193


The plaintiffs work was a book of non-fiction. He detailed the history of the spear which
forms part of the Hapsbury treasure in the Hofburg Museum, Vienna. He had traced this
spear back through time and had identified it as the spear which pierced the side of Jesus
at the crucifixation, the spear used by many legendary historical personages and the
source of inspiration for Hitlers Germany. He had researched the history of the spear by
orthodox methods and by using mystical meditation through the medium of Dr Stein. The
first defendant had read the plaintiffs book and thought it would make a good basis for a
novel. He wrote a work of fiction about the post war fate of the spear. The prologues of
each section of the book recounted the story of the Hofburg spear from the crucifixation
to the end of the 1939 war. The first defendant admitted using the plaintiffs work as a
source but denied copyright such as a substantial part as to amount to infringement of
copyright.

This amounts to a question of fact


1) Has there been copying?
2) Whether such copying is substantial?

In this case, four principal matters were put forward:


-

volume of material taken quality wise

how much of this volume forms the subject matter of copyright

Animus furandi on the part of the defendants

Extent to which plaintiff and defendant books are competing works.

Is a notice required to confirm that photocopying is unlawful?


MOORHOUSE V UNIVERSITY OF NEW SOUTH WALES [1976]RPC 151
A student twice copied a story from the plaintiffs book , The Americans , Baby on a
self service coin in the slot photocopying machine in the universitys library. The
proceedings were in the nature of a test case to determine whether the university was

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.

What is meant by a commissioned work?


MAURITIUS ADVERTISING BUREAU CO LTD V FOOD AND ALLIED
INDUSTRIES (1996) SCJ 235
The respondent had in February, caused advertisement showing the same or almost the
same type, form, style and colour of advertisement drawings of chicken duly imagined ,
created and fashioned by the applicant . The issue before the Court was the identity of the
copyright owner having paid the applicant to effect the work. The economic rights of the
work may be assigned to the person who has commissioned the work if that person had
undertaken to pay or has agreed to pay the sum for the creation of the work. The
applicant has not been paid in this respect, and the respondent was not the copyright
owner. Thus the interim order was made interlocutory.

What does the producer of an album own?


UNDERGROOVE PRODUCTION LTD V MR PERCY AROUFF (2001) SCJ 308
The applicant is a musical and audiovisual production company. It claims that when it
produces an album for an artist, it becomes the producer of that album and of that artist.
The subject matter of the application concerned the production of the album called
Premie Komba for the group MONASTER comprising of 2 singers. Both the
applicant and the respondent claimed to be the producer for that film. It was further
argued that he is actively distributing the MONASTER album. The balance of
convenience was in favour of granting the injunction for the applicant, given the
affidavits documents and circumstances of the case.

24

What is the importance of the notice of protection of the MASA?


YIP TONG V POWER MUSIC SHOP (2004) SCJ 36
The respondent had traded the applicants song Seggae Nu Lamisik Racinetatane
overseas when this was destined only on the territoire mauricien and had also failed to
pay royalties. It was also alleged that the first defendant was falsely passing off the album
or song in question. From the evidence, it is clear that the plaintiff was the producer or
maker of the sound recording entitled Seggae Nu Lamizik and that as copyright owner,
he was entitled to authorise the reproduction and distribution of the work. He did so by
means of a written contract with the first defendant granting the latter exclusive
distribution rights in the islands of Mauritius and Rodrigues, in consideration for a lump
payment of R 35,000. The contract did not contain any provision for the payment of
royalties.
From the evidence , it cannot be gathered that there was any agreement of the inclusion
of the words vente uniquement sur le territoire mauricien on the label cover. Non
compliance with the need to affix the stamp of the MASA does not per se constitute an
infringement of the plaintiffs rights as producer but this might constitute a criminal
offence.
The stamp of the MASA is a notice of protection put on each copy of a sound recording
which is made for commercial purposes, to ensure that authorised copies can be identified
against pirated copies on the market.

Can there be copyright infringement after a work is translated?


VEERARAGOO V SOOPAYA (2006) SCJ 280
The applicant claims to be the author, composer and singer of an original sega song
entitled Li zoli sa marmaille la which was recorded in Mauritius in 1967. He claims
that , it came to his knowledge that respondent no 1 had copied, adapted , translated and
arranged the said song into bhojpuri under the title kaisan joli ba chokariya . Each of
applicant and respondent is claiming that his song is the original and that the other song is
a derivative or copy which has been plagiated and illegally produced. Breach of copyright
is therefore not an issue. The applicant , however, lodged an action as soon as he heard

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.

What amounts to public interest?


LION LABORATORIES V EVANS [1984] AER 417, C A J
The defendant, a newspaper editor wished to publish information concerning doubts
about the reliability of the Lion Intoximeter 3000, a device used to measure levels of
intoxication by alcohol. The device had been used to breathalyse almost 700 motorists
suspected of being unfit to drive through drink. The plaintiff had obtained an injunction
preventing the defendant from publishing the information on the basis that the
information was confidential and because publication would infringe copyright. The
defendant appealed. The defendants appeal was allowed. The defence of public interest
applied to both the confidence and the copyright issues because it was in the public
interest that the information be published. Further, the operation of the defence of public
interest was not limited to cases where there had been any wrong doing on the part of the
plaintiff. The court identified matters relevant to the application of the defence of public
interest, as follows :i.

there was a difference between what was interesting to the public


and what amounted to public interest.

ii.

it was a fact that the media, for example, newspaper proprietors,


had a private interest to increase circulation by publishing what
appealed to the public.

iii.

the public interest might be best served by giving the information


to the police or some other responsible body rather than the
press.

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.

Can copyright infringement occur in Mauritius in relation to well-known


marks?
POLO LAUREN CO LTD PARTNERSHIP V REGENT LTD &ORS (2004) SCJ 45
The defendants have been illegally trading with the trademark of Ralph Lauren. It is the
contention of the respondents that since the words Ralph and Lauren are not
registered in Mauritius in the nature of the applicant, nothing prevents them using those
words, the more so that before the striking out of the trademark which was registered in
the name of Audally Brothers and Co.ltd , they were entitled to use it and did so for
several years au vu et au su the authorities.
It is clear from the debates in the Hansard that the intention of the legislator is to afford
protection to well-known marks (international) albeit not registered in Mauritius and this
in compliance with Art 16(2) of TRIPS. The unfair Practices Act which came into force
in 2003 has now made provision for protections of well known trademarks not registered
in Mauritius as provided in the Paris Convention. Even before this, there exists the
common law right protection against passing off of goods of another person. There is a
long line of case law to support this statement.
It is furthermore seem obvious that if the trademark is a really inherent distinctive one,
most customers will assume that any company with that mark in its name is either an
offshoot of the owner of the mark or that owner having changed its name.
It is held that the delay to enter the present application was not self-triggered. On the
issue of balance of convenience, it was argued that thousands of people would lose their
jobs and that the business was conducted au vu et au su the authorities. By enriching
those laws, the state has at the heart the future of the economy and the desire to make
Mauritius a safe haven for counterfeits. Consequently, it was a matter of public order and
the upholding of law and order in the public interest which should prevail when gauged
against the private interest of the respondent. The fault of the loss of jobs lies with those
27

purveyors of other peoples ideas and works who have created the situation and who have
been enjoying a very lucrative market.

What can a remedy for copyright infringement?


POLO RALPH LAUREN CO LTD PARTNERSHIP V DINOO (2004) SCJ 44
The application is one for protection against infringement of copyright of an artwork or
symbol. It is also an undisputed fact that the respondents had never been authorised by
the owner of the artistic work to make use of it and that for several years, the artistic
work had been indiscriminately used by many in a trademark with regards to making an
interim order into an interlocutory one.
The court should rarely attempt to solve difficult issues of law in deciding whether to
grant an injunction and any view as to the strength of the parties should be reached only
where it is apparent from the affidavits evidence and any exhibited contemporary
documents. The major factors relevant to the courts discretion were :1) extent to which damages could be a likely remedy
2) Balance of convenience
3) Maintainance of statu quo
4) Any clear view the court was able to reach to the relative strength of the parties
cases.

28

CASE LAW ON INFRINGEMENT BY AUTHORISATION

METRO GOLDWYN- MAYER STUDIOS INC V GROSKTER 125 S Ct 2764


This case held that where an article is good for nothing else but infringement, there is
no legitimate public interest in its unlicensed availability, and there is no injustice in
presuming or imputing an intent to infringe. Conversely, the doctrine absolves the
equivocal conduct of selling an item with substantial lawful as well as unlawful uses, and
limits liability to instances of more acute fault than the mere understanding that some of
ones products will be misused.
A&M RECORDS V NAPSTER, Inc 239 F 3d 1004 ( 9th Cir 2001)
Napster was alleged to contribute to infringing activity. The following statement came
from the district court without the support services defendant( Napster) provides,
Napster users could not find and download the music they want with the ease of which
the defendant boasts.
Napster is an integrated service designed to enable users to locate and download MP3
music files. By so doing, Napster provides the site and facilities for direct infringement.
Napster system does not read the content of indexed files, other than to check that they
are in proper MP3 format. Napster, however, has the ability to locate infringing material
listed on its search indices, and the right to terminate users access to the system.
As a practical matter, Napster, its users and the record company plaintiffs have equal
access to infringing material by employing Napsters search function.
AIMSTER COPYRIGHT LITIGATION 334 F.3d 643 (7th CIR 2003)
The case talks about the test to be applied to see whether the provider of services knows
its being used to infringe copyright. The court makes a distinction between the provider
of services and the seller of a product. The provider of services has a continuing relation
with its customers and therefore should be able to prevent, or at least limit, their
infringing copyright by monitoring their use of the service and terminating them when it
is discovered that they are infringing. The Court also quoted the Sony case19 that mere
19

Vide Infra

29

constructive knowledge of infringing uses is not enough for contributory infringement.


In copyright law, willful blindness is knowledge. The court held that a service provider
that would otherwise be a contributory infringer does not obtain immunity by using
encryption to shield itself from actual knowledge of the unlawful purposes for which the
service is being used.

CBS INC V AMES RECORDS AND TAPES LTD (1982) CH 91 (CHANCERY


DIVISION)
It was held that by hiring out the records, the defendants were doing no more than
authorise the borrower to play it, the knowledge that borrowers were likely to tape the
records could not amount to authorising infringement of copyright. Whitford J said Any
ordinary person would, I think, assume that an authorisation can only come from
somebody having or purporting to have authority and that an act is not authorised by
somebody who merely enables or possibly assists or even encourages another to do that
act, but does not purport to have any authority which he can grant to justify the doing of
the act.

SONY CORP OF AMERICA V UNIVERSAL CITY STUDIOS (1984) 464 US 417


The US Supreme Court in was of the view that where an article is good for nothing else
but infringement, there is no injustice in presuming or imputing an intent to infringe.

30

MAURITIUS SOCIETY OF AUTHORS (MASA)


MASA is a statutory body, that has been designated by the Copyright Act 1997.

The Act provides that the Society is given the following statutory duties :-

(a)

determine the criteria for, and classes of, membership of the


Society;

(b)

represent and defend the interests of its members in Mauritius and


abroad;

(c)

contribute by all appropriate means to the promotion of national


creativity in the artistic, literary and scientific fields;

(d)

administer within Mauritius on an exclusive basis such economic


rights of its members as it may determine;

(e)

negotiate with any users of a work-

(i)

the conditions of, and the fees to be paid for., the


authorisation to be given to do an act covered by any
economic rights referred to in paragraph (d);

(ii)

the amount of equitable remuneration where the right to


such remuneration is administered by the Society;

(f)

grant any authorisation which it is permitted to give under this Act;

(g)

collect copyright fees from the users of a work on behalf of its


members and distribute those fees among those members;

31

(h)

make reciprocal agreements with foreign societies of authors for the


issue of exclusive authorisation in respect of their members' works
and for the collection and distribution of copyright fees deriving
from those works-,

(i)

endeavour to obtain the transfer of membership of Mauritian


authors who are members of foreign societies of authors and
safeguard in favour of Mauritian authors whose membership has
been transferred all the advantages which may have accrued to them
before the transfer;

(j)

help in the preparation of standard forms of contracts for the benefit


and use of its members;

(k)

foster such harmony and understanding between authors and the


users of their works as are necessary for the protection of the
authors' economic rights;

(l)

provide its members with information or advice on all matters


relating to copyright;

(m)

establish and administer a Provident Fund and a Benevolent Fund


for its members and their heirs;

(n)

do any further activities which it has been authorised to do by any


authors whose economic rights or rights to equitable remuneration it
administers20.

There are two classes of membership that can be adhered to the MASA: 20

Section 34 Copyright Act 1997

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

The MASA has application forms for memberships for:-

Music Publishers

Composers / Authors

There is also a contract template available for those contracted


between author/composer and the publisher.

Application form of composers/authors


In order to be member of the MASA, an application form has to be filled and submitted.
The application form contains personal and biographical details, details of the closest
relative or heir, bank account details. There is a declaration section whereby the applicant
gives the power of attorney to the Society to take any legal action, whether in civil or
criminal proceedings and to sue for recovery of damages whenever the work of the
applicant is being infringed by another person.

33

Application form of music publishers


This application is accompanied by :1) A specimen of the contract that the company uses in obtaining rights from
composers/authors/arrangers.
2) Copies of all contracts whereby the business has assigned the rights in musical
works in the catalogue of foreign publishers.
3) Copies of all business/music publications.
4) The name and nationalities of the Directors in the business
5) If it is a company :-

a copy of the certificate of incorporation

The names and nationalities of the Directors in the business

Written authorization of directors duly signed and designating by


a particular person to represent the company.

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

GUIDELINES ON HOW TO APPLY FOR TRADEMARK REGISTRATION

The need to apply for trademark registration


Trade mark registration is needed in order to secure ones person brand name and also to
prevent other people from using the same trademark and thus benefiting from the
goodwill attached to the trademark.
It is easier for the registered owner to initiate legal proceedings upon a person who has
infringed his legal rights.
Although other remedies or actions are available, this is the easiest way to fight
trademark infringement.
The consent of the trademark owner is needed for any type of use that has been put on the
market

Marks at S35 PIDTA means a visible sign capable of distinguishing the


goods(trademark) or services (service mark) of one enterprise from those of another
enterprise The Act introduces the concept of service mark.

It is important to make a difference between trademark and tradename . The trademark is


a word, name , symbol or device , or any combination thereof adopted and used by a
person to identify goods made or sold by him /her and to distinguish them from goods
made or sold by others whilst tradename is a word, name, symbol or device or any
combination thereof used by a person to identify his business, vocation, or occupation
and distinguish it from the business, vocation or occupation of others21

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

Source :- Business and Professions Code 14208 (Australia)

35

Requirements that a mark must meet to be registrable


-

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 be misleading to the public.

It should not ressemble or be identical to the flag or emblem of the State or any
intergovernmental organisation.

It should not be confusingly similar to a well known mark in Mauritius.

The mark should not have been previously registered.

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.

General guidelines to fill up the Application form for Trademarks


1. Application submitted in triplicate, that is in three copies.
2. Applicant or agent of applicant may register for a trademark
3. The applicant must give his full name, address, nationality and residence; and if
the applicant is a company, the State of incorporation of the company.
4. There is some space provided for the representation of the mark; normally the
mark has to be printed and placed in the available space.
5.

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.

There is also a Declaration for Withdrawal of Application which contains


information about the name and service of the applicant as well as the
name of their attorneys. This should be accompanied with the prescribed
fee.

There is also an application for Renewal of registration of a mark which


facilitates the applicant to make material changes regarding any aspect of
the application of the trademark.

Payment for a prescribed application fee has to be made.

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.

If an SME needs to object :

An opposition to the registration of the mark has to be lodged with the


Controller of the IP office in the prescribed manner within the prescribed
time.

The opposition shall be by way of notice and state the grounds of


opposition.

How can the applicant respond?

The applicant may send a counter statement of the lodged opposition to


state the grounds for which his application should be accepted.

It is to be noted that failure to file a counter statement will amount to a


presumption that the application has been abandoned.

The final decision rests on the Controller on whether to register the


Trademark or not.

* After publication and until registration, applicant will have the same privileges and
rights as he would have where the mark has been registered.

If someone is not satisfied with the decision of the Controller, he may


appeal to the Industrial Property Tribunal within 28 days of the decision.
If that person is not satisfied with the determination of the Tribunal, he
may appeal to the Supreme Court within 28 days of the determination.

22

PIDTA Regulations

38

Recourse to the IP Tribunal

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.

To seek interpretation of any of the IP enactments

In situations of any anti competitive behaviour and commercial


exploitation.

The tribunal can amend , confirm or cancel a decision of the Controller.

If a trademark is not used, what happens?

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

Application for registration of trademark should be published in the


government gazette by the IP office.

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.

This period is renewable for consecutive periods of 10 years, at a fee and


there may be other conditions to the renewal.

For collective marks23, same formalities as for registration of a mark exist


except that the application must be accompanied by a copy of the terms of
the agreement governing the use of a collective mark.

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

Test to be applied on considering the issue of possibility of confusion arising out of


two potentially conflicting trademarks.
Possibility of confusion should arise not only by looking solely at the name of the
product but also at the general get-up.

Possibility of deceptive resemblance may arise between:


a. 2 marks
b. a mark and a get-up of goods
c. two get-up of goods from different traders
Furthermore, actions for trademark infringement and actions for passing off will call
for different rules to be applied in determining the case.

Difference between an action in infringement of trademark and passing off


1. in an action for passing off, the plaintiff should prove that he has some goodwill
or reputation attached to the goods and services in the mind of the purchasing
public.[Reckitt and Colman Products Ltd v. Borden Inc 1990 RPC 341]
2. Passing-off depends on circumstances of use that are irrelevant to infringement
while infringement considers the use which the plaintiff might actually make of
his trademark. Thus, merely proving that the commercial origin of the goods is
one other than that of the plaintiff does not substantiate a claim for infringement.
For an action in infringement to be successful, it has to be established whether
there has indeed been the use and commercialization of the trademark by the
alleged infringer.
3. Infringement conveys only one method of passing-off24 which is passing-off the
trademark itself.
4. The protection afforded to trademark infringement is absolute so long as the
trademark is registered. When the defendant has used a trademark similar to, or
confusingly similar to the trademark of the plaintiff, he cannot escape liability by
24

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.

Case law: Arystoc v. Rysta 1945 AC 68 (Confusion in the pronunciation of the


word)
Due to the way in which words are spelt out in the English language during normal
conversation, there was an overriding tendency to put greater emphasis on the middle
25

Weetabix Ltd v. Chue Wing & Co Ltd 2004 SCJ 223

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.

Cordova v. Vick Chemical Co [1951] 68 RPC 103


The case dealt with trademark infringement relating to ointment jars in which the words
Vapour Rub were common to the trademarks. The marks were written in different ways
and fonts, but it was held that a trademark although being a visual device cannot have
their essential feature ascertained by an ocular test alone. Words can form part of a trade
mark within the general get-up, or the words themselves and alone could be registered.
Thus, the sound made on pronunciation of the words has to be considered in determining
a possibility of confusion.
Furthermore, the Court considered that the eye is not an accurate recorder of visual
details and that marks are rather remembered by general impressions or by some
significant detail rather than by any photographic recollection of the whole27.

26
27

In the words of Luxmoore LJ in Aristoc v. Rysta, Ibid


In the words of Lord Radcliffe in Cordova v. Vick Chemical, Ibid

43

Maxims Ltd. & Anor v. Dye (1978) 2 All ER 55


(the place of business is not in the country where there is alleged passing off)
The existence and extent of a plaintiffs reputation and goodwill in his business
was in every case a question of fact. A plaintiff could, therefore, establish that
he had goodwill in England in respect of a foreign business which the courts
would protect without it having to be shown that he carried on business in
England.

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

Arystoc v. Rysta 1945 AC 68


Cordova v. Vick Chemical Co [1951] 68 RPC 103
30
Phillips TM [1969] RPC 78 relating to PHILIPS logo and PHILLIPS signature; Johnson and
Johnsons Application (INADINE compared to ANADIN) [1991] RPC 1).
29

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

In the words of Luxmoore LJ in Aristoc v. Rysta, Ibid


R. Demuth Ltd.s Application (1948) 65 RPC 342
33
(Tripcastroid TM (London Lubricant) (1925) 42 RPC 264; TRIPCASTROID was not considered
too close to CASTROL.
32

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)

All surveys conducted, their methodology and results


must be disclosed.

(2)

The totality of all answers must be disclosed.

(3)

The questions asked must not be leading.

(4)

The questions asked must not lead the interviewee into a


field of speculation upon which he would not otherwise
have embarked.

(5)

Exact answers and not abbreviations must be provided.

(6)

Coding must be accurately carried out, and the coding


methods disclosed.

(7)

The instructions given to the interviewers must be


disclosed.

34

Poussin Marie Claire v. Pch Mignon Ltd 2008 SCJ 13


As laid down in Kerlys Law of Trade Marks and Trade Names, thirteenth edition at paragraph 16-109
viz
35

46

CASES ON TRADEMARK INFRINGEMENT


P.CHAN SOO SEN V KWONG CHIP (1989) SCJ 337
Chan Soo Sens Salonpas was not registered. Kwong Chip started with Masterplas. The
Court says that Salonpas has been marketed for a number of years but never registered.
The Court said that there was no reason for it to do so also since it had an exclusive trade
agreement, which afterwards could not be proved. The Court was of the view that the
words sound different and on the evidence, the similarities were not grave enough to
cause confusion.

PATHE V POKUN (1992) SCJ 466


The applicant, manufacturer and distributor of footwear under the mark DODO, failed
to renew the said trademark in 1977 but continued using the mark in respect of its
business without any interruption. The respondent in 1992 has been using the same
trademark DODO in respect of footwear with the same type of products , same design
and colour as the applicant. A difference must be made between an action founded on the
infringement of a trademark which must be necessarily a registered trademark and an
action for passing off goods of another person. Section 3 expressly speaks of registered
trademark. Applicants action in so far as it prays for the protection of a trademark is
erroneous and cannot be entertained. Applicant has, however, a valid cause of action
when it claims that respondents acts and doings amount to unfair practice and
concurrence dloyale in view of the continued use of the mark DODO in respect of
footwear for the past 24 years. What is being complained of the respondents action
amounts to a false trade description defined by section 2(b) (iii) of Trademark Act and
which is prohibited by section 14 , it also amounts to a faute under Article 1382 of our
Code Civil Mauricien.

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

PROAG C.D & ORS V P.P INTERNATIONAL CO LTD (1996) SCJ 80


The applicants are the heirs of the late Proag who had registered the TM Globe Brand.
He failed to renew the registration after 1 year but they continued business. The
applicants are alleging that the respondent had been putting on the market the same type
of products, packed in the same type of wrapping, with the same design and using the
same TM Globe.

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.

DURACELL INTERNATIONAL INC V EVER READY LTD (1989) RPC 731


Lord Templeman was critical of the Smith Kline & French case, saying that it might lead
to an undesirable monopoly of colours (capsules were inherently adapted) but the case
did not create an undesirable monopoly in goods and containers. However, the argument
for allowing colour combinations to be registered seems uncontroversial and an attack on
the validity of the registration of the copper and black colour used for Duracell batteries
failed, the Patents Court treating this point as well settled. Thus, if the colour is used in a
distinctive manner, it will be registered.

48

RE COCA COLA CO (1986) 2 AER 274


An application as made to register the famous Coca Cola bottle as a trademark.
Originally, the shape of the bottle had been protected as a design under the Patents and
Designs Act 1907 but the registration had expired in 1940. The House of Lords was not
sympathetic . Lord Templeman said that the concept of allowing a container to be
registered as a trademark raised the spectre of a total and perpetual monopoly in such
containers. He thought that a rival manufacturer should be free to sell any container or
article of a similar shape provided it was labelled or packaged differently in such a way
as to avoid confusion as to the origin of the goods in the container. An undesirable
monopoly in container would develop by registering the thing itself as a trademark
although the shape of the container is a good identifier of the goods.
N.B The law in UK was amended in 1994 and it thus allowed registration of the CocaCola bottle.

RAMTOOLAH V CONTROLLER OF CUSTOMS (1990) SCJ 77


Spear sons PLC applied for registration of the word scrabble with a device, in respect
of certain goods, including toys and games (other than ordinary playing cards). The
appellant protested against this but the trademark was still granted.

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.

SEVEN UP CO AND ANOR V THE CONTROLLER OF CUSTOMS AND ANOR


(1991) SCJ 30
The Appellant had, as their trademark, registered seven up with a distinctive logo and
when the second respondents sought to register their mark fresh up with a logo, they
objected. Both marks relate to certain beverages. There was no question of imitation
since 2 logos look totally different, the more so as the logo relating to seven up contains a
numerical figure. There was no monopoly of the use of the word up due to a phonetic
resemblance between the two words. The Controller did not address the issue of phonetic
resemblance and anyway , it would have reached the conclusion that there is no
resemblance. The Appeal was dismissed.

CHONG& SONS V A. N K.K CHEUNG & ORS (1998) MR 60


Appeal against the refusal of an interlocutory injunction against respondents from
importing, selling, offering for sale, dealing with or making available the firecrackers of
the make deer or passing off their products as so.

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.

50

In England, there is no provision for the Registrar of TM to make an alteration in the


register by making an addition to the goods which are covered by a TM, apparently
because such a step is likely to affect the interest of the parties involved. Thus, the
appellant has no legal right in so far as fireworks and firecrackers are concerned.
Consequently, there is no question of any injunctive relief being granted. It was thus held
that :1) While a registered trademark may be amended, there is no power to make
alterations in the register by striking out goods in respect of which a mark is
registered.
2) Marks are common to the trade and not distinctive where goods bearing those
marks have been imported by several traders.

JOHN WALKER AND SONS LTD V CONTROLLER OF CUSTOMS (1973) MR


232
The applicants sought registration of a trademark for toothpaste allegedly bearing the
striding figure of Johnny Walker. Despite objection from the opponents, the trademark
was granted by the Controller of Customs. In Hacks application, it was held that the
effect on the public of the use of any particular get up or mode of presentation of the
product is not the question which the court has to determine. The true test is whether the
use of the mark by itself in any manner which can be regarded as a fair use of it, will be
calculated to deceive or cause confusion.

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

51

morality in section 10 must not be limited to sexual morality but extended to


commercial morality. Thus, the appeal was allowed.

GALLINA WEAR LTD V CONTROLLER OF CUSTOMS (1988) MR 139


The appellant applied to the Controller of Customs for the registration of a trademark,
GALLINA and device in respect of garments. It consisted of a drawing representing a
cockerel superimposed on a triangle, resembling le coq sportif. The argument that the
appellant is going to use this device in respect of garments, articles of clothing and not in
respect of sporting goods does not hold water. The test in such a case is not whether a
device which is almost an exact copy of an existing one is to be used for different goods.
The test is rather whether confusion is likely to arise and commercial immortality will
result there from. The courts cannot allow one enterprise to copy or imitate a device
which another enterprise has imagined and has been using for its business purpose. Were
it otherwise, the imaginative creativity of those who devoted their time and energy to
come up with a device for their business will be stultified. Thus, the registration was
refused for likelihood of confusion and deceit. The Appeal was dismissed.

OXENHAM & CO LTD V CONTROLLER OF CUSTOMS (1971) MR 271


The appellants applied for registration of maurini in relation to wine. The respondents
refusal could not under the law be grounded on the mere fact between the two trademarks
but on a resemblance as would be calculated to deceive. The onus of satisfying the court
that the trademark, which he proposes to register, does not come within their scope, that
is, to say that there is no reasonable probability that the use of this mark would be source
of deception is on the applicant. The onus is heavier when the mark is new.

Propositions, which would apply, are: -

Class of persons who are the probable purchasers as their degree of literacy and
education are important.

Mark to be compared as a whole but, if the proposed mark contains some


distinctive feature appearing on the previous mark, this may be ground of
rejection.

52

If there are series of marks having a common feature or common syllable, where
there are different proprietors.

Impression left on ear and on eye

Marks considered to be fairly used in practice.

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.

A.E.C.I LTD V DE GUARDIA DE PONTE ( 1983) MR 155


Rock Grip was a trademark for paints and varnishes. Rock lac was in the same
domain. The appellant complained of the similarity of the words, and the presentation by
the Respondent in his shop window as this is likely to lead the public into believing that
the paint sold by the respondent is paint manufactured by the applicant, thus likely to
cause deception and confusion. The test of the ordinary mans memory was applied and
the appeal was allowed as the balance of convenience was on the plaintiffs side. Thus,
the respondent was refrained from using the word Rock.

FEDERAL MARINE LIMITED V VIJAYEN VEERAPEN (1996) SCJ 161


The applicant company is praying for an interlocutory order in the nature of an injunction
restraining and prohibiting the respondent from using his trademark resembling that of
Glen rick. The respondents products are Delmonaco pilchards in tomato sauce in
containers of practically the same size wrapped in practically identical label. The purport
of this present application is in no way contrary to Section 6 of the Fair Trading Act
which provides for free marketing competition. In fact, the applicant is not seeking to
have the monopoly in the marketing of pilchards but rather to restrain the defendant from
selling similar products packed in containers with labels closely resembling those used by

53

the applicant company and thus to put a stop to concurrences dloyales. Therefore, the
appeal cannot succeed.

54

GUIDELINES TO APPLICATION OF INDUSTRIAL DESIGNS

What is an Industrial Design?

An industrial design is any composition of lines or colours or any three


dimensional form, or any material, whether or not associated with lines or
colours.

It should give a special appearance to a product of industry or handicraft. ( where


the need for SMEs to register their handicrafts such as wooden decorations, fake
jewellery, knitted baskets etc). Moreover, the rising concern in production of
handicrafts and also the future creation of a school of design would trigger the
need for more Industrial design registration.

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.

Registration of Industrial Design


* This is important to acquire exclusivity for use, sale or licensing.

* Before applying for registration, it is recommended to check the registers at the IP


office to see whether the particular design has already been registered so as to save both
time and cost.

55

Requirements for an Industrial Design to be registered

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 should not be contrary to public order and morality.

It is to be noted that protection for industrial design of a particular product and for
trademark can be cumulated.

The LOCARNO Classification


The trademark offices of the contracting States of the Locarno Agreement are required to
include in the official documents reflecting the deposit or registration of industrial
designs the numbers of the classes and subclasses of the Classification into which the
goods incorporating the designs belong.

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

Section 12(4) PIDTA 2002

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

Guidelines how to fill the application form

The form should be submitted in three copies.

Full information about the applicant should be given regarding the full name,
telephone number, email , fax number, nationality and residence.

In case the applicant is a body corporate, the country or state of incorporation


should be stated.

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.

The application form should be accompanied by four graphic representations and


four tracings and drawings.

A specimen of the industrial design should also be given.

Upon acceptance, a certificate of registration is issued by the Controller of the


Industrial Property Office.

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

Retrieved from the WIPO website

57

58

The situation at the IVTB (Industrial and Vocational Training Board)


The IVTB offers a number of courses and training facilities to students in the following
fields: -

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.

Guidelines to establish an IP practice at the IVTB


1. On registration and admission of the students, a formal agreement of how to deal
with the IP issues involved should be held. This may take the form of an
agreement form whereby the student agrees to assign its IP economic rights to the
IVTB as the latter allows the use of its consumables in the production of the
designs and commodities.

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

59

work of another and unconsciously reproducing it with minor and unsubstantial


changes.

3. The notion of co-ownership should be introduced where there has been a


combination of inputs both by the IVTB and the student.

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.

They should be made aware of the licensing

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

60

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.

The situation at the IVTB School of Design, Ebene


The students at this establishment have the following courses: -

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.

2) There is a need for a sponsorship agreement whenever the students do a work


placement or they are being sponsored for a fashion show. This is covered in
ITEM 2.

61

The situation at the Sir Kher Jagatsingh Training Center


1) This training center offers its training services in furniture making and design.

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.

62

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.

The situation at School of Information Technology, Electronics and Communication


This branch of the IVTB specialises in the training of information technology, electronics
and communication. In these study fields, the students mostly do projects. For instance,
in the electronics field, they do mostly industrial electronics, consumer electronics and
courses in instrument and control engineering.

Software Development project


This project has both a written and practical aspect.

Real Industry Projects


These concern projects that are done by students for real companies, concerning a
particular problem that they are encountering in their system.
Some of the actual ones are: 1) Central Water Authority Designing of a new process control system for
monitoring the actual status of the reservoirs at the CWA, La Marie Water
Treatment Plant.
2) Richfield Tang Knits Ltd Designing of a Solar Water Heating system for
Dormitories at RT Knits using PLCs.
3) Central Electricity Board Upgrading the Soot blower PLC at Fort George power
station.
4) Fernery Spinning Mills Designing an automatic process control of Dyeing
Machines to minimise runtime and efficient use of chemicals.
5) Companies Mauriciennes de Textile (CMT), La Tour Koenig Automating the
lighting & air conditioning systems to develop an energy saving system of a fourstorey building at CMT.
6) Richfield Tang Knits Ltd Designing of a Pre Heat Solar Water Heating system
for Boilers in Ironing Dept at RT Knits using Plus & SCADA systems.

63

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.

Works done by Trainers


There is no written or formalised verbal agreement about works done by the trainers
during their hours of work, however, it is implied that whatever they produce will be the
property of the IVTB.
But, there should be a properly drafted agreement about what they produce and to what
extent it is the property of the IVTB. For example, they might be someone employed at
the IVTB, but who produces a work outside working hours, then it is his rights over it.
But other factors, such as the use of materials, equipment and consumables should also be
taken into account.
This situation can also be addressed and clarified in the contract of employment by
adding an express agreement clause regarding this issue.

N.B regarding the work placement that is within their syllabus, refer to Item 4.

64

GUIDELINES ON REGISTRATION OF PATENTS

What is a Patent?
The law defines a patent by the title granted to protect an invention.

Invention is an idea of an inventor which provides the solution to a specific problem in


the field of technology.

What are the inventions that are not patentable?


-

Discoveries, Scientific theories and mathematical methods

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

Literary, dramatic, musical or artistic works or any other aesthetic creation

Requirements for Patentable Inventions


The two requirements are: -

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)

It should be capable of industrial application (it has to be used or made in any


kind of industry)

Note that to be patentable, the invention should not be contrary to public order or
morality.

Right to Patent
-

This right to patent belongs to the inventor.

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.

This can be transferred by succession.

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If the invention is made in the execution of a contract of employment, the right to


the patent belongs to the employer. However, this may not be the case if there are
any contrary express provisions.

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.

Guidelines on how to fill the application form


1) The application for a patent should contain: -

A petition why the patent should be granted.

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.

The title of the invention.

A description of the invention

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

Reference number of the previous application

The country in which the application was filed

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.

3) The section for divisional application

4) The application form also contains disclosure sections about the following matters: -

Disclosure was due to acts of applicant or his predecessor in title

Disclosure was due to abuse or rights of applicant or his predecessor in title

Note that the date of the disclosure should also be included.

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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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Some relevant case law


Lane Fox v Kensington Electric Co :- This case talks about the distinction between a
discovery and an invention. The facts were that Volta discovered what the effect of
electric current from a battery would do to the legs of a frog. It was, however, held that
what he made was a great discovery, but did not invent anything.

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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INTELLECTUAL PROPERTY AUDIT


This is a stepping-stone for small and medium enterprises to indulge in IP management,
as it would help them assess their assets and give them an accounting value. IP audits are
being conducted in many developing countries so as to give innovations the right value,
as well as encourage SMEs to achieve more development in this field.

This is usually defined as a systematic review of the IP owned, used or acquired by a


business. Its purpose is to uncover under utilized assets, to identify any threats to a
companys bottom line, and to enable business planners to devise informed strategies that
will maintain and improve the companys market position38.

In preparing this guidance, we have based ourselves on existing tangible property


valuation method.
An interview with the Acting Controller of the Industrial Property Office in Mauritius
revealed that this could be adapted, as it would act as a prise de conscience for SMEs to
know the real value of their business activities.

The need for an IP audit


-

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

IP is an asset to which a monetary value can be put, that is it can be sold or


transferred as it is the case for tangible assets and has gained substantial relevance
when compared to tangible assets like real estate, inventories and manufactured
goods.

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

Retrieved from www.evancarmichael.com


Retrieved from www.ipo.gov.uk

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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.

By conducting an IP audit, specific actions concerning the monitoring and use of


IP assets can be recommended which, in turn can aid in the preparation of a
strategic guide as well as in the forecast preparation.

The identification process of intangible assets can lead to revenue generation in


terms of patents, brands, licences and royalty payments. However, this will vary
according to the different types of intangible assets. For patents, the income that is
generated from rewards of patent investment are termed as direct income whilst
the proceeds from trademark are extra profits ( Note : Trademarks are not
identified as auditable elements of an IP audit).

This can also be done for

intangible assets exchange and for transformation of intangible to tangible assets.


-

An IP audit helps a business, especially an SME to identify and make optimum


use of hidden assets to acquire competitive advantage.

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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Areas where the IP audit is used


-

1) Licensing arrangements In this situation two questions are likely to be arise


both from the licensee and licensor perspective.

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?
-

2) Mergers and Acquisitions

3) Fund raising

4) Taxation

5) Financial Reporting

6) Litigation

An example of the success of an IP Audit


Dow Chemical is a frequently cited example of a company which derived great benefits
from measuring and managing its IP portfolio. In the early 1990s the company owned
approximately 29,000 patents, many of which had little value to the company. Dow
performed a major audit and business use classification of the portfolio. Through this
exercise, it gained an understanding of the value of patents in the context of each
business. Non-core patents were made available for licensing or were abandoned. This
new strategy resulted in the abandonment of many low value patents, which in turn led to
savings of $40 million in maintenance fees alone40

Before conducting an IP audit


-

Before conducting an IP audit, it is important to determine the objectives. These


will generally be tailored to the needs of each enterprise and also geared towards
the particular aim for which the IP audit is being conducted. These could be for an
external accreditation or to satisfy a formal requirement. Then, a background
research has to be done to find out the status of IP in the enterprise. This will
eventually help in the building of an audit plan.

40

Building and enforcing intellectual property value 2008 by Ron Carson

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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.

The steps to IP audit

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

trademarks, copyrights, designs, patents, in house work manuals,

databases, recipes, franchise agreement, publications and product/process know how.


This is where the need for registration occurs. Identification of intangible assets causes a
problem due to difficulty in agreeing an accepted definition. For example, in China, 12
intangible assets are commonly recognized but only half of them have been listed in the
accounting system (patent right, non patent technique, trademark right, copyright, land
access right and commodity credit)41 .

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 first mostly widely use method is the Royalty Method.

The royalty method values intellectual property by usually considering the


turnover attributable to it. This means that if a company has a trademark, it can
determine its value if it had to rent it or buy it from another. Thus, the IP asset
acquires the money value it would have if it had had to be bought or licensed.

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

ACCA Research report 3 Page 8

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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.

There is no single method to conduct an IP evaluation. The valuation can be done


according to international standards including the European Group of Valuers
Association published in November 2000.
It should be noted that, whenever feasible, more than one method of evaluation should be
used to obtain a more fair and reliable IP asset evaluation.

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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identification, measurement, documentation and reporting. For this purpose, it is


important the SME establishes a good system of record keeping.

The costs involved in acquiring the intangibles should be computable. International


practice prescribes that intangibles should be calculated at their initial costs. This will
include
-

Purchasing price

Expenses incurred in the immediate application of the intangibles

Legal costs

However, there is a discretion usually exercised by IP auditors in their decision to


account for expenses such as the physical material consumed, the labor services applied
in the creation of the intangibles, the registration fee for its application.
Further points to note:

The commodity credit and trademark, customer list and sales network
generated within enterprises should not be identified as auditable elements
of intangible assets operation.

Methods and accounting strategies applicable include methods of


comparative analysis, ratio analysis, system analysis and regression
analysis.

Accounting Perspective

The FRS 10 deals with the treatment of intangible assets in financial


reporting. This is an accounting practice that SME can conduct in order to
materialise their intangible assets in their end of year balance sheets and
income statement.

FRS 10 is divided in two parts :1) Goodwill

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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.

General balance for the last 5 or 10 years.

These are general financial information that SMEs would be able to provide fairly and
readily.

It is to be noted that SMEs may have problem including intangible assets


in their balance sheets as they do not utilise the conventional definition of
assets and also they cannot be measured with accurate certainty.

An accounting calculation that has been devised is as follows :-

Value = Quantity x (price cost) @ capitalisation factor

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.

Test for determining whether there has been a misrepresentation


"The test laid down in such cases has been whether the resemblance is so great as to
deceive the ordinary customer acting with the caution usually exercised in such
transactions, so that he may mistake one for the other."
Furthermore the Canada's Supreme Court opined, in Mattel USA v 3894207 Canada
Inc 2006 1 SCR 772, that:
In an action for passing off, it would have been necessary for the appellant to show that
the respondent restaurateur intentionally or negligently misled consumers into believing
its restaurant services originated with the appellant and that the appellant thereby suffered
damage."

The issue of intention is however rebutted in the case of Reckitt below:

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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)

the likelihood of damage by reason of erroneous belief caused by


respondents misrepresentation.

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
43

1990 RPC 341

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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)

Any false or unjustifiable allegation which, in the course of industrial or

commercial activities, discredits or is likely to discredit, another's enterprise or its


activities, in particular, the products or services offered by such enterprise, shall
constitute an unfair practice.
This Section is particularly pertinent nowadays in the wake of unfair advertisements.
Thus the elements of passing-off will include :
a. Misrepresentation ;
b. likely to induce buyers to believe that the goods are those of another trader;
c. intended to injure the goodwill of the trader;
d. misrepresentation causes actual or potential damage to the trader;
e. action is brought by aggrieved trader

CASE LAW FOR PASSING OFF

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LACROPOLE V LA GERBE DOR


The applicant company is seeking an interlocutory injunction pending a main action to
prevent respondent from operating a pastry factory, which the respondents propose to do
next door, on the ground of concurrence dloyale which cannot be adequately
compensated by damages.
Some authors in relation to French law draw the distinction between concurrence
illicite (where the incriminated acts causing loss to another are in breach of specific law
e.g trading after hours permitted by law or using false weights or measures , acting in
breach of a lawful monopoly) and concurrence dloyale (where the incriminated acts
result in winning over the customers of another by means which may be either illegal, as
in the case of concurrence illicite, or else plainly tortuous. The distinction is drawn on the
ground that illegal competition does not presuppose bad faith whereas unfair competition
essentially does, in order to generate liability under Art 1382 or 1383 of the Civil Code.

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.

That is why the industrial, vocational or professional community has tended so to


organise and run their activities as to be largely in the same part of town or village, not
only in their own interests but also for the sake of better availability to the community in
general.

WARNICK (ERREN) BV V J TOWNSND& SONS (HULL) LTD

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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.

RECKITT & COLMAN PRODUCTS V BORDEN INC


An injunction was granted to prevent the defendant from supplying lemon juice in lemon
shaped containers so nearly resembling the plaintiffs JIF lemon shaped container as
to be likely to deceive or cause confusion without making it clear to the ultimate
purchaser that it is not of the goods of the plaintiff

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.

OASIS STORES TRADEMARK APPLICATION


The owner of everready wanted to prevent someone from selling condoms under
Everready. There was a clientele commune between condoms and cells. The marks were
allowed to be registered.

GRANADA GROUP LTD V FORD MOTOR COMPANY LTD


The outcome was that Granada television group, famous for making the television serial,
Coronation Street, could not prevent the Ford Motor Company naming one of its cars
The Ford Granada. There was no danger of confusion because of the different fields of
activity (TV and motor cars) and consequently, there was little possibility of the
plaintiffs goodwill being harmed.

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.

MAXIMS LTD V DYE


The plaintiff, an English company owned a world famous restaurant in Paris known as
Maxims. The defendant opened a restaurant in Norway and also named it Maxims. It
was held that the plaintiff had goodwill in England derived from the business in France,
which might be regarded as being prospective. The plaintiff might want to commence

89

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.

LEGO SYSTEMS ASSOCIATION V LEGO M JEMELSTRICH


The very well known Lego company, that makes coloured plastic construction bricks for
children was granted an injunction preventing the use of the name Lego by the
defendant who was planning to use it for its plastic irrigation and garden equipment. The
defendant had used the name Lego for its equipment in various other countries such as
Israel but the plaintiffs children bricks had become so well known, as had the name Lego
in association with these bricks, that the House of Lords was of the opinion that
confusion was extremely likely. In this case, the common field of activity was effectively
coloured plastic. If the plaintiffs business had not been so successful and on such a grand
scale in the UK, the plaintiffs field of activity might have been restricted to coloured
childrens plastic construction bricks, a much narrower field. The quality of the
defendants products was not an issue; once the danger of confusion is present, it is
assumed that there is a possibility that the plaintiffs reputation will be harmed. Such
harm can go beyond the quality of the products concerned, and in the Lego case, harm
could be the result of the public thinking that the company was no longer concentrating
on childrens construction kits and might not continue to make the kits and additional
parts for them so that it might not be feasible for a child to build up a large collection of
Lego bricks and materials over a long period of time.

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CONCORDE TOURIST GUIDE V CONCORD INTERNATIONAL


The plaintiffs carry out the business of providing cars for hire, travel agents, tour operator
and sales agent for certain hotels. The defendants have recommended a development
permit to open a hotel by the name of Concord International, near to hotels where the
plaintiff offers his services. Though the hotel has not been built yet, confusion exists as
communications meant for the defendants are addressed or delivered to them.

WHITE SAND BEACH HOTEL V IRELAND FRASER (1987) MR 102


The appellants built White Sand Beach Hotel very close to where the respondents
operated facilities. The respondents had for many years operated tourist facilities under
names which all incorporated the term White Sand. The respondents were granted an
interlocutory order restraining the appellants from using the term, and the appellants
appealed inter alia on the ground that the two businesses were different.
There is no doubt that the business of travel and tours agency is different from cameras
and toothpaste from whisky, but the point is, since the customers mostly are likely to be
the same, the respondents by deliberately using the words White sand, trying to benefit
from the words which have been widely advertised over the years. It was thus held that
confusion and prejudice were likely to flow from the use of the name.

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.

LE DEFI LTD V NOUVELLE IMPRIMERIE MAURICIENNE LTD AND


NICOLAS GODER (1989) SCJ 1
The applicant is seeking an order to restrain the respondents from publishing selling, or
otherwise dealing in a newspaper by reference in the name DIFE.
The use of the word Le defi as a common word in an editorial, as opposed to the title of
its own newspaper Le defi leads the applicant to say that the publishers of DIFE have
done so deliberately in order to make the general public believe that their newspaper and
Le defi are one and the same publication. Various other matters are relied upon to
indicate a continuing goodwill. In the name of its paper, Le defi. These include the fact
that the paper of the respondents bears great similarity in name, presentation, format,
layout, size, colour and general get up, as Le defi.

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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.

AMC LIMITED V J ALLY&ORS (1998) SCJ 46


Both the applicant and respondent deal in kitchenwares. The respondent abbreviated the
complicated German words on the boxes of its products to AMC. The applicant has
disclaimed the right to the exclusive use to the letters, A M C when used apart and
separately from the logo. The respondent are in a common field of activity as the
applicant and there is no reason why they should apply AMC to their wares which are of
a different brand and the desire to obtain a free ride on the goodwill associated with
AMC. Continued use may lead to confusion. Injunction granted.

SOAP AND ALLIED INDUSTRIES LTD V QUALITY SOAP LIMITED (1986)


SCJ 229
Application for an interlocutory writ of injunction prohibiting the respondent company
from putting on the market, laundry soap and cartons of soap, which both bear deceptive
designs, pending the determination of a main action in court.
The two words look and sound different even when making allowances for imperfect
recollection and careless pronunciation. Also the applicant company cannot have the
exclusive use of the outline of the map of Mauritius. However, the whole get up
appearing immediately underneath is objectionable, and is likely to cause confusion. The

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outline of the map of Mauritius on an orange coloured background as displayed is an


almost exact copy of the applicants design. The words Laundry Soap are arranged in
exactly the same way, with the letters printed in the same colour and size, and the
rectangular diagram on the right is of the same size.

HABIT CO LTD V F. B EBRAHIM (1991) SCJ 382


The applicants registered trademark is Habit Devon Boys. The respondent stated that
it was merely, like various other traders, selling but not manufacturing, articles of
clothing manufactured by a named trader, Messrs A.S.F and bearing a different logo
Duarte from a material bearing designs similar to those on the clothes sold by the
applicant, which were openly sold by various wholesalers. While the patterns on the other
clothes are similar to those specially designed for the applicant, those articles of clothing
were being marketed by the respondent and several others and they bore a different and
distinctive logo. The judge was not confused between an action in passing off and
registered trademark infringement. The applicant has not thought fit to put any further
affidavit to traverse the respondents various averments to the effect that it was not he
who had recently copied the design which was allegedly of long standing on the
applicants clothes and that the design was openly manufactured and sold, as it were, on
every street corner. Moreover, if in the applicants view, it was not so much the logo as
the printed designs that were of the essence he wondered why it never took any steps to
protect them formally.

EMCAR LTD V EMTEL (1998) SCJ 461


Applicant was in the past dealing in the commercialisation of telephones and its interest
in this, he claims is not extinct. Emtel has launched a new type of cellular telephone
working with the use of a magnetic cord and marketed under the name of Emcard.
Interlocutory relief cannot be granted as :1) Appellants main objects, as per CA 1984, are trading in cars and other motor
vehicles. Its association with mobiles was alone off activity. No concurrence
parasitaire since respondent is pioneer in cellular phones in Mauritius.
2) Visual impact of respondents product cannot create confusion

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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.

KOSI MEUBLES V COSI FENETRES LTD (2006) SCJ 306


The respondent avers that its business consists of manufacturing PVC and UPVC
openings, which are different from the products manufactured by the applicant co,
especially with regards to openings in aluminium. KOSI and COSI are disguised
ways of saying cosy meaning giving a feeling of comfort, warmth and relaxation, as
per the Oxford Dictionary. It is a word in respect of which no one can claim to have a
monopoly.
The test applied: 1) Potentially conflicting marks must be considered Overall and not by dissection
and comparison of their separate syllables or elements.
In comparing two labels, each with several features, one must not draw various
distinctions or differences between individual features but must consider whether the
labels, when compared overall, might still be confusingly similar.

CONFIDENTIAL INFORMATION & TRADE SECRETS


So far, intellectual property has been viewed as been intangible property, which
unmistakably includes copyright, trademarks, patents and industrial designs. In a more
subtle approach and less evidently, a number of jurisdictions around the world also

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encourage the assimilation of breach of confidence into the mainstream of intellectual


property law. At first sight, this approach may seem to be unnecessary as the flow of
confidential information, on the premises of a business for instance, will already be
covered in a contract by a confidentiality clause; and subsequently breach of confidence
will result in a breach of contract giving rise to a civil action in damages by the aggrieved
party. Yet, the general tendency adopted by legislatures and Courts is to reinforce the
protection afforded to confidential information. Relief has now evolved from civil
remedies to criminal sanctions. Indeed, the Protection Against Unfair Practices Act 2002
seeks to prevent unfair competition in respect of secret information44 and moreover
provides for criminal sanctions which can take the form of a fine not exceeding R250,000
and imprisonment for a term not exceeding 5 years. The protection of secret information
by a general duty of confidentiality is all the more warranted as strong companies and
multinationals, like those involved in beverages and foodstuff, often rely on a morsel of a
trade secret for the continuation of their business. Had this trade secret been eroded into
common public knowledge, opportunistic competitors would have taken unfair advantage
of the information and might set up other mirror businesses which gnaw into the market
of the original business. Loss of trade for the employer, and impending loss of work for
the employee are the likely consequences of breach of confidence. Hence, rich case law
has evolved to protect the diffusion of confidential information.

CASE LAW ON BREACH OF CONFIDENCE

PRINCE ALBERT V STRANGE

44

Section 9 of the Unfair Practices Act

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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.

SALTMAN ENGINNERING V CAMPBELL ENGINEERING CO LTD


This case represented the first major case on the law of breach of confidence that laid
the foundation for its modern form. The plaintiff owned the copyright in drawing of
tools for use in the manufacture of leather punches. The defendant was given the
drawings and instructed to make 5000 of the tools at $ 35 each. After completing the
order, the defendant retained the drawings and made use of them for his own purposes.
In finding for the plaintiff, holding that there was an IMPLIED CONDITION that the
defendant should treat the drawings as confidential, not make other use of them and
should deliver the drawings with the tools made pursuant to the agreement, Lord
Greene MR described the nature of confidential information thus.
The information, to be confidential, must apart from contract, have the necessary
quality of confidence about it, namely, it must not be something which is public
property and public knowledge. On the other hand, it is perfectly possible to have a
confidential document, be it, a formula, a plan, a sketch, or something of that kind,
which is the result of work done by the maker upon materials which may be available
for the use of anybody; but what makes it confidential is the fact that the maker of the
document has used his brain and thus produced a result which can only be produced
by somebody which goes through the same process

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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.

CORPORATE AND CHANCERY GROUP LTD V TEGALLY


Application by a former employer, a management company, to prevent
a) a former employee from breaching the terms of his contract and taking up
employment with a competitor
b) the competitor from aiding and abetting the former employee in that
breach

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.

COCO V A.N CLARK (ENGINEERS) LTD


The plaintiff, one Marco Paolo Coco designed a moped engine and had entered into
informal negociations with the defendant with a view to the latter manufacturing the
engine. In the end, the negociations broke down and no contract was executed between
the plaintiff and the defendant. The plaintiff suggested that the defendant had
deliberately caused the breakdown of the negociations with a view to making the
engine to a design which closely resembled the plaintiffs design, the plaintiff sought
an interlocutory injunction to prevent the defendant using confidential information
given by the plaintiff for the purposes of a proposed joint venture. Megarry J stated
that the doctrine of confidence required three elements:1) the information must have the necessary quality of confidence
about it
2) the information must have been imparted in circumstances
importing an obligation of confidence
3) there must be an unauthorised use of the information to the
detriment of the party communicating it.

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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subsequently a dispute. Megarry J ordered the defendant should give an undertaking to


pay royalty of 5 shillings per engine made into a special joint bank account on trusts.

THOMAS MARSHALL V GUINLE


The defendant was appointed managing director of the plaintiff company for a period
of 10 years. His service agreement provided that he was not to engage in any other
business without the companys consent while he was employed as managing director,
that during and after his employment, he was not to disclose confidential information
in relation to the affairs, customers or trade secrets of the group and that after ceasing
to be managing director, he was not to use or disclose. Without the companys
knowledge, the defendant began to trade on his own account and on behalf of his two
companies in competition with the company and in doing so, he bought from the
companys suppliers and sold to the companys customers. The company supplied for
interim injunctions to restrain four elements may be discerned which may be of some
assistance in identifying confidential information or trade secrets only in an industrial
or trade setting: 1) the information must be information the release of which the owner believes
would be injurious to him or advantage to his rivals
2) the owner must believe that the information is confidential or secret, that is, it
must not already be in public domain.
3) The owners belief under the two previous heads must be reasonable
4) The info must be judged in the light of the usage and practices of the particular
industry or trade concerned.

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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confidence could not be subject to an enforceable duty of confidence. The background to


the case was the killing of Mrs Telling by her husband. Details of a sexual relationship
between Mrs Stephen, the plaintiff and Mrs Telling were disclosed in confidence to a
friend, Mrs Avery, the defendant who had published the information in a newspaper.
Nevertheless, the court would not protect information of a grossly immoral nature.

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.

DUNFORD & ELLIOT V JOHNSON FIRTH BROWN


The Company presented a confidential report to some shareholders to convince them to
subscribe to a rights issue. In turn , they showed it to another company, who presented a
turnover bid. Though the three elements of Coco v Clark are present, the stipulation for
confidence was unreasonable at the time of making it, or if it was reasonable at the
beginning, but afterwards, in the course of subsequent happenings, it becomes
unreasonable that it should be enforced; then the courts will decline to enforce it, just as
in the case of a covenant in restraint of trade.

FACCENDA CHICKEN LTD V FOWLER


Alleged wrongful use of the defendant ex employee of his employers sales information.
This comprised customers names and addresses, the most convenient routes to
customers, the most suitable times for delivery, prices charged and details of customers
usual orders. The defendant was engaged by the plaintiff as sales manager and left the
plaintiff company to set up business on his own account, taking 8 of the plaintiffs
employees with him. He started selling fresh chickens from refrigerated vans in the same
area in which the plaintiff operated. The employers action for breach of confidence
failed because the information was not of the type, which an employee was bound, by an
implied term in his contract of employment, not to use or disclose subsequent to the
termination of employment.

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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.

PRINTERS AND FINISHERS LTD V HOLLOWAY


There could be nothing improper in the employee putting his memory of particular
features of his previous employers plant at the disposal of his new employer. Even if
there was an express term, the previous employer would have to show that the

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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.

WSPC (MAURITIUS) V SUNGKER


It is an ex employer who is seeking an injunction to prevent an ex employee from using
or disclosing confidential information gathered during the course of his employment.
This sort of information may be rather special, a trade secret such as details of a
technique to improve the strength or durability of a type of plastic, or it may be ordinary
and mundane, such as details of the employer.
Thus, the application was set aside.

EAU SOLEIL COMPAGNIE LIMITEE V CERNOL SERVICES LTD


The case of Oxford v Moss was quoted A competitor was not allowed to use a short cut
by stealing info belonging to someone else. He should have to go through a similar
process and discover the information for himself by his own labours. The case of
Terrapin Ltd v Builders Supply Co Ltd The recipient of confidential information should
not be allowed to make use of such information as a springboard to compete with the
person who provided the information for activities detrimental to the plaintiff

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RIGHTS OF BROADCASTING ORGANISATIONS


A broadcasting organisation, such as the MBC, has its broadcasting rights protected
under the Copyright Act 1997. Broadcasting refers to transmission of images, sounds or
other information by wireless telegraphy or by satellite which is capable of being
lawfully received by the Public and is transmitted for presentation to the public.
A broadcasting organisation has the exclusive right to authorise or prohibit the
rebroadcasting of its broadcasts; the fixation of its broadcasts, or the reproduction of the
fixation of its broadcasts where either the fixation used to make the reproduction was
made without its authorisation or the purpose of the reproduction was not commanded by
the granted authorisation.

Duration of protection of broadcasting rights


The duration of the protection shall be for 20 years after the end of the year in which the
broadcasting took place.

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.

The limits of an authorisation


S24(3) of the CA 97 provides that an authorisation granted by the performer to broadcast
the performance or distribute it by cable does not include the authorisation to in turn
licence another person to broadcast or distribute the performance as otherwise the
performer would have lost his rights as soon as he gives the first authorisation to
broadcast. An authorisation to broadcast does not also give the recipient the right to fix
the performance or reproduce the fixation. On similar terms, an authorisation to fix a
performance or to reproduce a fixation shall not imply an authorisation to broadcast or
distribute the performance by cable from the fixation or any reproduction of that fixation.
Nevertheless, the CA 97 provides that the performer may agree to better terms and
conditions in writing than those provided by law with the user of the fixation of the
performance. The performer has thus some discretion to dispose of his work. Even
though there is a minimum threshold of protection which is provided by law, the
performer may choose to agree on better terms of the use of his performance or fixation,
for instance he may agree that in specific circumstances, the user of a performance can
fix the work without his authorisation or communicate the work to the public.

Representation of the performer


Performers are often persons who travel worldwide to host shows where they perform
live on stage and they cannot be physically present elsewhere to enter into contracts
where the use of their performance is being made through broadcasting or otherwise. This
is why it is essential for the performer to have a means for him to be represented in the
various agreements which concern the use of his work worldwide. Some performers have

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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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GENERAL INTRODUCTION ON SMES IN MAURITIUS


The Small Enterprises and Handicraft Development Act 2005 defines a small enterprise
as being one which

(i)

is engaged in any activity, other than an activity relating to the information and

communication technology or financial services, for gain or profit; (ii)


than 10 persons; and (iii)

employs

less

has an annual turnover not exceeding 10 million rupees.

The same act defines a handicraft enterprise as being an enterprise which


(i)

is engaged in the production of craftworks;

(ii)

employs less than 10 persons; and

(iii)

has an annual turnover not exceeding 10 million rupees.

THE NEED FOR SMALL AND HANDICRAFT ENTERPRISES TO PROTECT


THEIR IP ASSETS
-

Intellectual property right is a legal right that is available to all person,


whether physical or moral, and there is no reason why small and
handicraft enterprises should be exempted from it.

This will help them to value their assets and make the optimum use of it.

By knowing the monetary value of their IP assets, small enterprises can be


in a better position to acquire more competitive advantage.

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.

Small enterprises may infringe copyright, trademarks, patents or industrial


designs as they are not aware of the limits to copying and also that certain
acts in this regards amount to both civil and criminal liability.

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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.

IP protection and knowledge generation will lead to future effective


customer relationship and long-term reputation and image of the company.

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.

Traditional business methods where the value of the business is


determined by the value of the fixed assets are no more predominant.
Rather, intangible fixed assets have gained ground, especially in
technology-based industries.

Licensing is now a core activity that is primarily income generating in


many industries.

THE CASE OF PICKWICK


PICKWICK is an Italian clothes company, which can be used as an example to show how
the strategic use of the trademark has lead to the extreme success of the company.
The trademark owner used the trademark, which was, the face of a teenager with spiky
hair and thus, gained considerable appreciation, which was a value added element in
itself. This has resulted in the increase in price of the clothes.
This shows that trademark, in itself, can lead to business advancement.
In Mauritius, several local designer wear such as, PEACE ANGEL, IV PLAY,
EQUATEUR, LIQUIID, ONEYE, QUICKSILVER, HABIT, SPLIT have proved that
clothing bearing a certain trademark can lead to ample success and revenue generation.

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LICENSING FOR SMEs


One of the main aims of an IP audit and inculcating an IP culture in any enterprise,
especially an SME, is LICENSING.

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:

Technology License Agreement

Trademark Licensing and Franchising Agreement

Copyright License Agreement45

Usually, this may form part of one single contract or part of a contract of merger or
business acquisition.

HOW CAN LICENSING BENEFIT AN SME?


-

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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111

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.

Issues in a licensing agreements:-

IDENTIFICATION OF THE PARTIES:- The licensor and the licensee should


be identified as well as the other particulars such as the address, company name,
occupation and other relevant details.

SUBJECT MATTER :- This should be defined as either

1) Intellectual Property Rights


2) Technology rights

- 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.

46

Vide the chapter on copyright

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- TECHNOLOGY ASSISTANCE:- Depending on the type of technology being


transferred, the licensor may provide the assistance in the form of data, expertise and
documentation.
-

LICENSE FEES:- These may be in two forms:

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.

2) Royalty payments:- These are regular payments, usually calculated in terms of


percentage of sales or technology use of the product. These are the most popular
methods of payment as they reflect the value of technology.

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.

REPORTING: Royalty payment is to be accompanied by a report. Some license


agreements include reporting clauses which put an obligation on the licensee to keep
production and financial reports in due order so that it can be verified by the licensor.

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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TERMINATION OF A LICENSE AGREEMENT


There are four instances whereby the license agreement may come to an end:1) if the license agreement expires
2) if an event that has been proclaimed to trigger termination occurs
3) if one of the parties terminate the agreement. This is usually termed out in the
contract as a clause such as in case one of the parties goes bankrupt.
4) A licence is revoked.

LICENSING IN RELATION TO PATENTING


Licensing v Assignment
In relation to patenting, the most common commercialisation pathway is assignment and
licensing. Assignment usually take place where licensing is inappropriate and the
decision to choose between those two lies on the objectives and needs of the company.
The difference between licensing and assignment is that an assignment is irrevocable and
usually permanent. It involves the sale and transfer of ownership of the patent from the
assignor to the assignee. The decision whether to assign or licence a patent is a crucial
one and should be decided according to circumstances in each particular situation.

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.

Lump Sum Price


This is payable at the time of the conclusion of the contract, instead of royalties. This is
regarded as the purchase price of the patent. The person making such a payment will

114

therefore be likely to seek a permanent and irrevocable assignment, instead of a revocable


license contract with conditions. However, a licensor might want to impose certain
conditions such as a down payment followed by royalties at specific milestones (common
in development of new medicines). It is to be noted that the lump sum covers the whole
of the unexpired period of the patent.
Sometimes an assignment is not appropriate where the lump sum payment relates to a
lesser period, and instead there should be a license for the period that covers the
remaining period under patent protection.

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

Reprographic reproduction of copies of work in photocopying centres


With regards to photocopies made in libraries, the Copyright Act provides that
reprographic reproduction (photocopying) is possible without the authorisation of the
copyright owner subject to the following conditions:
1. Reproduction can only be made in a single copy.
2. Reproduction has to be made only for personal purposes (reading).
3. Reproduction of an entire book is not permitted.

Reprographic reproductions of photocopies (Photocopies of photocopies) of works


cannot thus be made.

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].

c. Photocopies of student exercise books can be made on proof of authorisation of


the owner of the exercise book, the spectrum of pages and the number of copies
which the owner has permitted to make. This authorisation can be given by a
simple agreement made by the parties(the owner of the copybook and the person
taking the copybook to photocopy) in the following manner:

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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.

Signature of Copyright Owner

The signature of the copyright owner can be verified on the Student ID of the
latter on a suspicion of forgery.

d. Whether a photocopy of a photocopy is being made. This is in all instances not


permitted, even for part of a book, article, or student exercise book.

117

GUIDELINES FOR SPONSORSHIP AGREEMENTS


Sponsorship agreements are now a common feature of universities, vocational institutions
and public research organisations as activities carried out by students or researchers often
involve expenses that cannot be met by the latter. While they are authors of valuable
works which are the fruits of their creativity, originality and inventiveness, they enter into
an agreement with an organisation or a corporate body to inject the necessary funds into
their project.
The agreement is either an oral one or it may preferably be written. Having a written
agreement will facilitate the proof of the latter in case of a dispute between the parties
relating to the terms and conditions of the agreement.
A sponsorship agreement should be fair to both parties in the balance of benefits. An
agreement covering all the costs involved in a project or part of it cannot be at the risk of
vesting all the intellectual or industrial property of the author/owner onto the party who
sponsors. Although the project might form part of the school curriculum of a student
pursuant to which he will earn an academic/ vocational certificate, it cannot be conceded
that the intellectual property of the student can be subjected to commercial exploitation
afterwards without him deriving any benefit from it. The cover of an academic venture
cannot justify sheer intellectual property theft.

A. Identification of the work


The sponsorship agreement will have to mention explicitly the work which is sponsored:
a fashion collection for clothes, a set of jewellery designs, the setting up of an engine to
run on bagasse, a research paper on how the flux of tourists in Mauritius varies with the
weather etc.

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B. Identification of the intellectual property


The subject-matter of a sponsorship agreement might involve many entities. For instance,
a work which is a logo might be afforded copyright protection and may as well be
registered as a trademark A book which describes a process may likewise be afforded
copyright protection whilst the process may be covered by a patent. Industrial designs
may similarly co-exist with copyright and a trademark.

C. The relevant acts involved


Then, the agreement has to mention the counterpart which is of benefit to the sponsoring
body. The counterpart would constitute the possibility of the exploitation of the work for
commercial purposes. Exploitation would constitute any act made by the infringer
himself if he is a physical person, body corporate, their acting prpos or employee which
includes:
1. sale or offer for sale
2. rental of the work
3. importation
4. distribution
5. manufacturing
6. licensing
7. leasing
8. exposition
9. marketing
10. telemarketing
11. public performance
12. broadcasting
13. translation
14. adaptation or transformation of the work
15. use of the work
16. stocking of the work for any of the above purposes

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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.

D. Agreement made on the share of benefits


The fruits derived from the exploitation of the work must be apportioned between the
sponsoring body and the author of the work. An agreed percentage on the revenue
received from the accomplishment of one of the relevant acts will be a suitable method
for the parties to reach an agreement.
The share of benefits should not be unfairly low for the student or researcher. There
should be an equitable share of benefits made on considering the following factors:

a. The object of the contribution


For instance, a body corporate which sponsors only the travel expenses cannot take a
share of benefit which is absurdly high. On the other hand, if the sponsorship involves the
buying of equipment which is used to produce the work, then it will be legitimate for the
sponsor to have a non-trivial share of the benefits.

b. The extent of the contribution


Full sponsorship of a particular item will result in a higher share of benefits than partial
sponsorship. Moreover, it is not a trite state of affairs to suppose that a sponsorship of
30% on an item should directly reap a share of 30% on the exploitation.

c. The period of exploitation


The shorter the period of exploitation, the higher can be the share of benefit as afterwards
the student or researcher will regain the full rights onto his work.

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d. The nature of the contribution


Depending on the circumstances surrounding the activity sponsored, the share of benefit
will vary if the sponsorship is made in kind or in moneys worth. A pharmaceutical
company which is specialized and has experience in research might prove to be more
helpful to the researcher if it provides the equipment directly, rather than paying for the
costs involved when the researcher buys the equipment independently.

e. The number of acts involved


The greater the acts involved in the exploitation, the higher should be the share of benefit
which should be attributed to the student or researcher. Acts which especially involve an
unknown scale of exploitation like leasing or licensing should reflect a higher share of
benefit.

The IP Protection Clause (IPPC)


The above-mentioned modalities should be enshrined in an IP protection clause within
the sponsorship agreement. For instance a sponsorship agreement concluded between Mr.
Carl Donair and Rocksters Co Ltd may embody an IPPC like:

The format will thus be as follows:


The IPPC clause may also encompass other issues such as renewal of the period of
exploitation or registration of a trademark in the name of the company or the creator of
the work. Furthermore, the agreement should be conform with the common law of
Company name, type of company, field where company operates and main objective of
company according to its constitution, address of the permanent office of the
company..tune of the sponsorship in figures and lettersname of recipient, position
of recipient, address of recipient. Parameters of original work, purpose of work,
nature of the contribution, extent of contribution
Counterpart, exploitation of work, duration of exploitation, relevant acts involved, share
of benefits, payment of the share of benefit.
contracts that is the agreement should be an enlightened one; there should be no vitiating
factors; the parties should have the capacity to enter into contracts; the object of the
sponsorship agreement should be legal.
121

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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An academic assignment will take any one of the following forms:

I. Assignment with text only


Copyright

II. Assignment with text and graphics


Copyright

III. Assignment with text and/or graphics yielding a product/process


Copyright and patent

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.

WORK PLACEMENT AGREEMENT


Work placements are an integral part of the curriculum in training schools, universities
and vocational institutions. The objective of work placements is to expose the student to
the industrial work or give him an insight of the practicalities associated with the subjects
he learns in theory. Work placements bridges academic education and real-time practice
in a place where concrete implementation of theoretical processes occur. Furthermore,
work placements occur in most academic fields now. Even in fields which are known to
be strictly academic like literature, work placements are taking a new dimension by
enabling literature students to work in schools as assistant to teachers.

123

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

THE SITUATION AT THE UNIVERSITY OF TECHNOLOGY OF MAURITIUS


The University of \Technology of Mauritius comprises of 3 schools :1) School of Business Informatics and Software Engineering
2) School of Public Policy and Management
3) School of Sustainable Development Science

124

1. There is a COMPULSORY module called Legal issues in IT where topics like


copyright and cyber law are tackled. This is significant to teach the students of
what are their rights and limitations as far as IPR is concerned and also prepare
them to be aware of their IP rights when they will be in the working world.

2. The courses function by way of assignments, projects and end of year


dissertations. This can be dealt in the same way as Item 2

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.

4. It is also part of the course structures of some programs to develop computer


programs such as a system development project and this should be rigidly
monitored.

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.

125

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.

7. There is also a Regulation section on IPR at the UTM which is as follows:-

126

Regulations on Intellectual Property Rights47


1.

It shall be a condition of registration of a student that the student agrees to transfer or

assign to the University the intellectual property rights to which these Regulations apply.

2.

These Regulations apply to

(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.

Where the whole of a students programme of study or research is funded by himself

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:-

47

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127

(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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WORK CONDUCTED UNDER EMPLOYMENT

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:

1. Presence of a copyright clause in the contract of employment


If a copyright clause is present in the contract of employment, the clause may provide
that the economic rights relating to the work will be attributed as follows:

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.

2. Absence of the clause in the contract of employment


When the contract of employment is silent on the attribution of the economic rights
relating to a work, the copyright will be taken to be vested in the employer himself. The

129

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.

Works which are commissioned by the employer


Works which are commissioned by a person, be him a full-time employer or an assigner
performing in part time, will also be covered by copyright protection and the latter will
pertain to the economic rights relating to the work of the author. A commissioned work
should be remunerated for it to embrace the meaning covered by the Copyright Act 1997.
Furthermore, the legislator has provided a specific framework guiding the acceptance of
contracts for commissioned works, as provided by S8 of the Copyright Act.

Acceptance of a commissioned work


The acceptance of a commissioned work by the commissioner has to be made within a
delay of 3 months following the date when the work was delivered to him according to
S8 of the CA 97. Where no declaration of acceptance is made by the commissioner on
expiry of the delay, the work is presumed to be accepted by him.

Corrections or amendments made to a commissioned work


If within the delay of 3 months, the commissioner finds that some corrections or
amendments ought to be made to the commissioned work, he may within this delay or
such other time period as the parties may agree upon request for such corrections or
amendments to be made.

Fulfillment of stipulated purpose


If after correction, the commissioned work fulfils the stipulated purpose, the work will be
accepted by the commissioner who will remunerate the author according to the terms of
the contract. Nevertheless, if the commissioner is still dissatisfied with the corrected or

130

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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ALTERNATIVE DISPUTE RESOLUTION FOR INTELLECTUAL PROPERTY


ISSUES
This is an alternative method for court litigation. These methods would be recommended
for SMEs as they have the following advantages :1) It would offer much flexibility as there is no focus on one size rules. The
Arbitrator is more likely to look at the specific circumstances and sensitive
issues. Most of the IP issues normally involve business goodwill and reputation
and a global and rigid appreciation of the situation is least appropriate.
2) These out of court dispute settlement methods are very effective as they focus
on building relationships, rather than adopting a strictly adversarial approach, thus
leading to more conflicts.
3) There is much confidentiality that is maintained during those sessions, unlike
courts where most hearings are open to the public. IP issues affect much the
integrity and the market of the business and by adhering to confidentiality, much
of these could be preserved.
4) These types of dispute resolution are cheaper than court litigation and this should
be beneficial to SMEs.
5) It is less time consuming than the traditional court approach. IP issues have to
dealt with much speed as they are likely to affect many aspects of a business and
may even cause immense prejudice, if not dealt with at the right time.
6) In many cases, IP issues involve conflicts about artists and inventors which are
more concerned with fame and recognition rather than monetary compensation.
7) IP issues often involve technological implications that can only be solved through
specialised expertise.
8) These methods of dispute resolution are parties oriented and facts are determined,
compromised or disregarded by parties.
9) With the use of ADR, there is a single procedure rather than multiplicity of
procedures which is associated with court litigation.

132

The different methods by which disputes can be resolved are :-

Arbitration

Conciliation

Negotiation

Mediation

In Mauritius, this can be proposed as an alternative to IP disputes and infringement,


especially for SMEs as they often lack resources to go ahead with traditional litigation.

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.

133

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

3) The third stage is to focus on the emergence of a negotiated resolution of the


dispute.

The outcome for mediation is usually an agreement for settlement. Once this is signed, it
is binding and enforceable as any contract.

136

BIO PIRACY AND IPR


There is a controversial debate surrounding the patenting of biological material, which
involves the gathering and patenting DNA samples from indigenous populations around
the world.

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.

INTELLECTUAL PROPERTY OVER DATA COLLECTED


There is a major issue that without the incentives of patents, there would be less
investment in DNA research and scientists might not disclose their new DNA products to
the public. Issuance of patents to such products not only results in the dissemination of
technological information to the scientific community for use as a basis for further
research, but also stimulates investment in the research, development and
commercialization of new biologics. It is only with the patenting of DNA technology that
some companies, particularly, small ones, can raise sufficient venture capital to bring
beneficial products to the marketplace or fund further research.

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.

BIO ETHNICS AND PATENT LAW


This is closely linked to the notion of informed consent. This is derived from the doctrine
of prior informed consent that is derived from medical ethics, where it concerns the
patients right to agree to, or refuse, certain medical treatment after being informed by the
practitioner about the risks and benefits. The concept extends increasingly to other fields,
notably to medical research using human tissue. Whilst this debate takes a human rights
approach, another question which arises is that genetic materials taken from the human
body and used as inputs for research, subsequently lead to biotechnological inventions,

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.

THE IMPACTS OF IPR ON BIODIVERSITY


This has also been the subject of intense debates among countries and commentators.
Although reliable data and information has been produced regarding the social and
economic impacts and importance of IPR in developing countries.

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.

2 LANDMARK CASES CONCERNING BIO ETHICS AND PATENT LAW


JOHN MOORE S SPLEEN
Mr John Moore suffered from hairy cell leukemia. In 1976, Dr David Golde of the
University of California Medical Center, recommended that his spleen be removed in
order to slow the progress of the disease. Mr Moore signed a written consent authorizing
a splenectomy, and surgeons removed his spleen. Dr Golde and his research assistants
extracted tissue from the discarded spleen, having recognized its value for research to
develop possible ant- cancer treatments. In the next three years they established a cell line
from the extracted T lymphocytes. Mr Moore was not informed about the research work
or the potential of the cell line. In 1984, Dr Golde was granted US patent 4438032 on the
cell line, which generated substantial revenue through commercial arrangements with
biotech firms.
John Moore sued, claiming an ownership interest in the patent, as well as redress from Dr
Golde for breach of his professional obligations. On appeal, the Supreme Court of
California rejected Mr Moores claim to ownership interest in the patent- he was not one
of the inventors. Nor, it concluded, could a patient exercise property rights over discarded
body tissues. But the Court did rule that a physician has a fiduciary duty to inform a
patient of any economic or personal interest in using or studying his tissues; and that if
the fiduciary duty to inform a patient of any economic or personal interest in using or

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 HAGAHAI CASE


The Hagahai are an indigenous group in Papua New Guinea. They lived an isolated
existence until 1984, when they sought help because of a disease that was afflicting the
community. Researchers found that the members of the tribe carried a gene that
predisposes humans to leukemia, yet they did not themselves manifest symptoms of the
illness. Further analysis of blood samples identified humans to leukemia , yet they did not
themselves manifest symptoms of the illness. Further analysis of blood samples identified
a T lymphotrophic virus , with potential for development into a vaccine for certain types
of leukemia. In 1991, the National Institutes of Health in the U.S sought patent protection
for a cell line developed from the DNA of a Hagahai donor . The invention related to a
cell line infected with a Papua New Guinea Human T lymphotropic Virus.

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

WHY IS AN IP HEALTH CHECK IMPORTANT FOR AN SME?


This is necessary for the following reasons: -

for a better awareness on IPR issues

highlight the advantages to set up

suggest possible course of actions.

WHAT IS AN IP PRE DIAGNOSIS?


The IP pre diagnosis is an evaluation of all the factors of IP at stake for any given
company as a whole, by placing it within its context and by taking all the parameters into
account.
The pre diagnosis would relate to the following IP :-

Industrial property

Intellectual property

Other forms of IP such as trade secrets, confidential information, innovation


programmes.

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.

Thus the possible outcome of an IP pre diagnosis is :-

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.

The available skills to build an IP culture.

The costs involved to implement IP.

142

WHAT ARE THE STAGES INVOLVED IN AN IP PRE DIAGNOSIS?


-

Preparation

Getting acquainted with the company

Analysis, summary, drafting

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.

THE COMPANY VISIT

This meeting is significant in order to get a grasp of the different aspects of the
company such as :
-

Products, services, processes

Technology, Research and Development, innovations

Suppliers, subcontractors, distributors

Organization, HR, training

Financial situation.

3) ANALYSIS AND REPORT DRAFTING

The report comprises of four sections :-

The current state of industrial property in the company , focusing on the

evaluation of deficiencies.
-

Possible developments and competitive interest

Presentation of courses of action

143

Identification of the resources and tools required to implement them.

SECTION 1 : PRESENTATION OF THE COMPANY


The aim of the information collected about the company is to find out about its products
and competitive environment so as to evaluate the strengths and weaknesses of the
company. In this regard, information about the companys resources, sales of its main
competitors, size of sector leaders. By so doing, the potential of the company is known
and how IP can increase this.

SECTION 2 : IP FINDING AND EVALUATION OF IP NEEDS


The IP finding includes all the companys IP practices such as registration of trademarks,
industrial designs and trade secrets.

What is also important is to analyse the IP practice of the competitors.

SECTION 3 : RECOMMENDATIONS AND COMPETITIVE ADVANTAGES OF


IP
The recommendations should be more economic in nature.

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

TRADEMARK INFRINGEMENT ON THE NET


Trademark infringement through domain names is recurrent nowadays, especially as
many companies advertise and market their services on the internet. The world wide web
is an interconnected network which is used by every business, organization or partnership
to communicate and interchange information. As the internet is the appropriate platform
to reach customers, there are domain name owners who fraudulently register domain
names to drive web traffic to their site while customers are mistaken about the identity of
the owner of the web site. For instance, if nike company limited, who has a legitimate
interest in registering the domain name www.nike.com, sees the latter getting usurped
by another domain name registrant who is also specialized in marketing sportswear, a
definite prejudice might be caused to the company if:

(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.

Trademark infringement through domain names is thus a new method of infringement


which is a cause of major concern in view of the nascent realities prevailing on the
commercial online market. Nevertheless, there are many difficulties encountered in
resolving domain name dispute resolutions between parties residing in different States
due to lack of jurisdiction and confusion of the law applicable.
Issues relating to cybersquatting, cyberpiracy or typosquatting will be raised under
Trademark Infringement for domain names.

What is a domain name?


According to S2 of the ICTA 2002 (Information and Communication Technologies Act),
a domain name is a unique alphanumeric designation used to access a computer on the
internet and all domain names located in the .mu name hierarchy.

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.

The ccTLD manager(ICTA) authorizes the Council of Country Code Administrators


(CoCCA) to provide accreditation services to 3rd thirty domain registrars who desire to
process registration applications on behalf of prospective registrants who want to register
a domain name. The third party domain registrars also process applications for renewing
or changing the domain names.
There are 2 types of 3rd party domain registrars to which CoCCA provides accreditation
services to and with whom registration of .mu domains can be made(.mu accredited
registrars):
1. International registrars for instance Verisign, Network Solutions Ltd, Safenames ltd,
EasySpace Ltd
2. Mauritian Registrars and Resellers for instance Telecom Plus Ltd, National Computer
Board, BBCWyse Technology Ltd, WEB Ltd.
The prospective registrant has a choice between the international and Mauritian
Registrars.

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.

III. Complaints Resolution

Immediate Action Required


CoCCA Complaint Resolution Service is used to address AUP violations or cybercrime.
The registration of a domain may be revoked or suspended by the ccTLD manager(the
ICTA) for non-compliance with the Accepted Use Policy (AUP) or for a cybercrime.
The AUP addresses 3 broad areas of concern:
1. infringement of intellectual property rights
2. phishing, spam or other cybercrime
3. publication of prohibited internet content
Procedure: Complete AUP complaints form and send to CoCCA complaints officer and
ccTLD manager (ICTA) for review. It is the Internet Management Committee of the
ICTA which usually administers domain names, under S13(1)(c) and makes
recommendations to the Board concerning the administration of same under S13(1)(d) of
the ICTA 2002. A preliminary review will take place in 24-48 hours to determine if
immediate action is necessary to protect the public interest.
Since ICT Appeal Tribunal has not yet been established (provisions have not been
proclaimed), decisions of the ICTA would most likely to challengeable by judicial review
as it is a public body.

Immediate Action is not required


Send complaint to CoCCA Ombudsman for Mediation. If mediation fails, complainant
can request ombudsman to send the matter to an expert who will arbitrate the resolution
of the complaint. The Ombudsman can also re-lodge the complaint for a review.

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.

The ICANN Uniform Domain Name Dispute Resolution Policy


The UDRP of the ICANN does not apply to country code domain name disputes. For a
non-country and commercial domain name, the dispute would have been directed to an
ICANN approved administrative dispute resolution service provider like the WIPO, the
National Arbitration Forum, or the Asian Domain Name Dispute Resolution Centre based
in Beijing, Seoul or Hong Kong.
Previously, other dispute resolution service providers were: the International Institute for
Conflict Prevention and Resolution (ICPR), and eResolution.

The UDRP is incorporated by reference in the Registration Agreement of all registrants


for .com, .net and .org generic Top-Level Domains.
According to paragraph 4 of the UDRP, the applicable disputes occur when:
1. the registrants has a domain name which is identical or confusingly similar to a trade
mark or service mark in which the complainants has rights.
2. the registrant has no right or legitimate interest in respect of the domain name.
3. the registrants domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove these 3 conditions
cumulatively.

148

LIST OF USEFUL IP WEBSITES

WEBSITE LINK

ORGANISATION

1. www.wto.org

World

Trade

Organisation

(WTO)

information on TRIPS
2. www.wipo.int

World Intellectual Property Organisation

3. www.biodiv.org

Convention on Biological Diversity

4. www.upov.int

International Union for the Protection of


New Varieties of Plants (UPOV)

5. www.patent.gov.uk

UK Patent Office

6. www.european-patent-office.org

European Patent Office

7. www.uspto.org

US Patent and Trade Mark Office

8. www.icann.org

The Internet Corporation for Assigned


Names and Numbers (ICANN)

9. www.ipria.org

Intellectual Property Research Institute of


Australia (IPRIA)

10. www.publaw.com

Law Office of Lloyd L Rich, attorney at


law,

specialising

in

publishing

and

intellectual property law


11.www.mcci.org

Mauritius Chamber of Commerce and


Industry

12. www.ivtb.mu

Industrial Vocational Training Board

13. www.utm.ac.mu

University Technology of Mauritius

14. www. supremecourt.intnet.mu

Supreme Court of Mauritius

15. www.uom.mu

University of Mauritius

16.www.masa.mu

Mauritius Society of Authors

149

Institutions

Persons

1. Industrial Property
Office

Post held

o Mr

Main Issues covered

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

8. IVTB school of Mr Manoj Burmah

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

10. IVTB Sir Kher

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.

2. Animus : Intention, Disposition. There may be different types of Animus, for


example animus deserendi meaning intention of deserting.

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

4. Appellant : The person making an appeal.

5. Appellate jurisdiction : Power of a court to hear an appeal.

6. Arbitration : The act of settling a dispute by using alternative methods apart


from traditional court litigation. This is usually conducted in model of private
umpiring. This is provided by the Mauritian law as under the Code de Procedure
Civile.

7. Arrest : The act of restrain and detain a person by lawful authority.

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8. Artificial person : A body, a corporation recognised by law, as having rights and


duties. This is dealt also under the French civil law as being la personalit
morale.

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.

12. Bona Fide : In good faith, honestly.

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.

14. Breach of confidence : Equitable doctrine whereby the donee of confidential


information relating to a business and which requires protection, is under a duty
not to use that information to the donors detriment. Breach of confidence is an
unfair practice according to Mauritian laws.

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15. Broadcast : Transmission by wireless telegraphy of images and sounds.

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.

18. Copyright : An economic right subsisting in a work.

19. Counterfeit : A thing is a counterfeit of a currency note or of a protected coin if it


is not the actual thing but rather one which resembles it as to create confusion and
create a belief that the thing is an original.

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.

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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.

23. Derivative work : A translation, adaptation, arrangement or other alteration of a


pre existing artistic, literary or scientific work.

24. Equitable Remuneration : This kind of remuneration is prescribed in the


relevant Act. If the Act does not say anything about it, it would be as is prescribed
in the agreement between the parties.

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.

26. Ex parte : On behalf of ; An example would be the granting of an ex parte


injunction after hearing only one party and in a case of great urgency.

27. Exclusive Licence : License granted to the exclusion of all other persons,
including the copyright owner. (Vide Licence)

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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.

31. Licence : Written authorisation granted by a copyright owner to another person to


exploit the copyright for a limited period.

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.

33. in nomine : In the name of

34. in pais : In the country

35. in personam : Against a person- Used to indicate e.g proceeding against a person
(action in personam)

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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.

38. Invention : It is an idea of an inventor which provides the solution to a specific


problem in the field of technology.

39. Joinder of causes of action : The joining in one action of several causes of action
against the same defendant.

40. Patent : It is the title granted to protect an invention.

41. Perform : Interpretation or rendering of a dramatic role, piece of music or visual


representation.

42. Priority: A patent application containing a declaration claiming priority would


mean that the applicant has already made a previous application in a state party to
the Paris Convention or any member of the WTO

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.

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44. Reprographic reproduction : Fascimile copies of the original or a copy of a


work by means other than printing, such as photocopying.

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.

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