notes on educational disciplines
PART TWO
PROCEDURAL PECULIARITIES FOR THE VINDICATION OF AGGRIEVED RIGHTS AND THE RAISON D’ÊTRE FOR COMBATING TRADEMARK COUNTERFEITING
Two chapters constitute this part of the work. The first (chapter four) examines the bodies that are competent to hear trademark counterfeiting. It also gives an overview of the punishment regime reserved for counterfeiters. The chapter is completed by an examination of those realities in this domain, which make the fight against this fraudulent trading a matter of urgency. Here, the impact of counterfeiting is assessed as well as those factors that tend to favour the growth of the crime. The second and last chapter of the work (chapter five) looks at the stakes and challenges in combating the crime by evaluating the present situation and making proposals. This chapter serves as a conclusion to the raison d’être of combating the offence .It is expected that, if the proposals are implemented then trademarks which are essential assets in business could be sufficiently protected.
CHAPTR FOUR
COMPETENT BODIES, SANCTIONS AND THE RAISON D’ETRE OF COMBATING COUNTERFEITING
It must be acknowledged at the onset of this chapter that, counterfeiting is an economic crime, comparable to pure theft. Industries worldwide lose big amounts to counterfeiters. These losses do not only affect the producers of genuine items, but they also involve social cost. The ultimate victims of unfair competition are the consumers. They receive poor quality goods at an excessive price and are sometimes exposed to health and safety hazards. Being misled by fakes, consumers blame the manufacturer of the genuine products, creating a loss of goodwill. It is now accepted that counterfeiting is related to other criminal activities which threaten humanity such as; the trade in narcotics, money laundering and terrorism.
It has been proven that counterfeiting has very adverse effects. In examining the way it is fought-off, we shall equally observe the efforts of the right holder or manufacturer, the courts and the institutional framework of combating the crime.
It is true that legal enforcement is the main ingredient in safeguards against counterfeiting. However, right holders or manufacturers have the prime responsibility in adopting measures that prevent counterfeiting. They must first of all have good anti-counterfeiting policies, backed up by sophisticated anti-counterfeiting technologies.
Anti-counterfeiting policies imply due diligence which is a notion that enters into the realm of risk management in a company. They are obliged to exercise due diligence especially where counterfeits can cause injuries and health hazards such as pharmaceuticals, spirits and spare parts. In fact, due diligence are proactive measures, implemented to reduce the negative effects of counterfeiting. Such measures include training, internal control and adherence to accepted codes of practice. These measures reduce the risk of counterfeiting and enable the company to react much faster should it occur. They enable the manufacturer to maintain consumer confidence where there is increased competition in the market of genuine goods. Over and above all, due diligence provides a shield for liability as well as protection against loss of reputation and adverse public opinion.
Due diligence must be backed up by anti-counterfeiting technologies. This especially as the financial burden of proving a fake is incumbent on the mark holder and more often than not, only the manufacturer of the genuine product knows whether an item is fake or genuine. The available technologies can be categorised in to; Optical technologies: - holograms, retro-reflective material thin films, etc; Electronic technologies – magnetic stripes (used to protect bank and credit cards), smart cards etc; Chemical technologies – include plastic tags, photo chromic (or light reactive) and thermo chromic (or heat-reactive) inks (widely used in the fragrance and pharmaceutical industries to authenticate products).
These measures can be referred to as in-house measures and are easily visible in the labelling or packaging of the products.
4.1 Competent Bodies
Here, we examine the court, cross-boarder measures, national anti-counterfeiting committees and international bodies involved in the fight against this fraudulent activity. These bodies can be referred to as the institutional framework for combating counterfeiting. Then role of these institutions is indispensable as infringers employ various modus operandi and are very innovative. This coupled with the internationalisation of fraud renders it impossible any company or mark holder to successfully address the problem in isolation. In other words, concerted action is par excellence, recommended.
4.1.1 The Court
Trademark rights are a creature of commerce and trade. Trademarks are relational as they are rights created by the confluence of a mark, the goods or services to which the mark refers, and the identification of the source of the product by the mark In such a system, it is in the interest of the public to be protected against confusion, the principal mechanism for doing so is the enforcement of the private rights of the trademark holder against alleged infringement. Accordingly, the owner of a registered trademark has a powerful legal arsenal with which to fight off criminals who decide to counterfeit his product. He can do so either by way of a civil or a criminal action. The court hears disputes relating to the renewal of marks, nullity as well as counterfeiting .Matters of Trademark opposition are treated by the Directorate General at first instance and by the High Commission of Appeal on appeal.
A civil action may be brought by the owner of the mark or the beneficiary of an exclusive right when the owner fails to act after having been called upon to do so This is contrary to a criminal action, which may only be brought by the office of the public prosecutor on a complaint from the aggrieved party These actions must be lodged in a suitable court, which in Cameroon for instance is the High Court.
4.1.2 Cross-Boarder Measures
The TRIPS Council has encouraged the interest and activities of the World Customs Organisation (WCO) with regards to the enforcement of IPRs. The W.C.O. in 1995 adopted a model legislation which countries could use for preparing national legislation on fighting counterfeiting and piracy. The model contains provisions regarding relations between custom authorities, right holders, importers and exporters and the procedures for disposal of counterfeit trademarks or pirated goods. It provides a means by which right holders can ask customs to suspend the clearance of goods suspected of being counterfeit. It also states when customs can take ex-officio action in cases of suspected goods.
Apart from the above, customs authorities can along side bailiffs and other ministerial officials, be called upon to make a detailed inventory, with or without seizure of the goods or services that the mark owner claims have been marked. This is off-course in pursuance of an order from the president of the civil court within whose jurisdiction the action is to be taken. Nevertheless, despite this legal provision, it must be observed here that, the practical effect of the role of customs leaves much to be desired. Their budget for anti-counterfeiting is rarely well defined. There is a very passive collaboration between them and mark holders given the fact that they do not know the difference between fakes and genuine items. Fighting against trademark counterfeiting is hardly a priority, as they seem to pay more attention to other crimes like drug smuggling. All these make their fight against the phenomenon less effective giving it room to strive.
4.1.3 National Anti-Counterfeiting Committees
A more recent rend has been the formation of national anti-counterfeiting committees. An example is the Ad hoc Committee on the coordination of operations of the fight against fraud, contraband and counterfeiting (hereinafter referred to as the “committees”). The committee is in charge of amongst other things to:
- Initiate administrative inquiries,
- Fight against the importation, detention or sale of fraudulent contraband or counterfeited products,
- Elaborate and supervise the execution of preventive and repressive programmes,
- Propose measures that are likely to destroy illicit circuits of manufacturers, penetration and distribution of such products in order to guarantee fiscal and custom royalties,
- Supervise the application of sanctions and to
- Centralise all information on illicit commercial practices.
Thus, the committees play an administrative role.
4.1.4 International Bodies
The activities of these bodies are basically, liaison with enforcement authorities in the country and publicising the harm caused to intellectual property by theft of rights. They also lobby for adequate enforcement of intellectual property rights. Some of them even provide training to customs officials on the detection of counterfeits. Even though, enfocement of the law is a highly municipal issue, these bodies do not spare any effort to improve international co-operation in the matter. Here we must praise the efforts of the International Chamber of Commerce – ICC Counterfeiting Intelligence Bureau (CIB), the Interpol’s Specialised Team that monitors international developments in this field and facilitates international action and that of the World Customs Organisation (WCO-which since July is headed by a Cameroonian). The latest international initiative is the Global Anti – Counterfeiting Group (GACG) (which is a forum for discussion aimed at raising awareness of the health and safety hazards of fakes) formed under the auspices of the CIB. A sister organisation, which predates it, is REACT, (Réseau Européen Anti – Contrefaçon) formed by Dutch and Belgians anti – counterfeiting groups and is supported by the European Commission. Its core function is to set up a central database to support investigations by national coalitions as well as law enforcement agencies
4.2 SANCTIONS
4.2.1 Punishment
The owner of a registered trademark whose action is successful can be entitled to damages. This goes to compensate the injury suffered by the right holder as a result of the infringement. Generally speaking, damages are payments received from the counterfeiter for the past illegal activities. Besides damages, the infringer can be ordered to pay procedural expenses and recovery of profits. The infringing goods may also be destroyed or disposed of The Bangui Agreement states in Article 43 (3) that, the court may order the destruction of goods bearing marks recognized as being contrary to the provision of Article 37.
Article 37 states that, any person who unlawfully exports a registered mark shall be punished by a fine of one million (1,000 000) to six million (6,000 000) CFA francs and with imprisonment of a term of three (3) months to two (2) years. Article 40 completes this proviso by stating that, in the event of recidivism (that is within the preceding five years, the offender is being guilty of one of the offences specified in the trademark law), the penalties shall be doubled.
In the UK, the owner of a registered trademark may prevent the further use of his mark by the infringer or counterfeiter. This is by way of injunction usually referred to as a perpetual injunction. This injunction is often rendered effective by an order of delivery up, directing the infringer to deliver all counterfeits and materials and implements which have been used in the creation of the infringing goods. The Bangui Agreement has not expressly talked about such an order but we can imply it in the reading of Article 43 (1), which deals with the fate of counterfeited marks and goods. The Article disposes that;
“The court may order the confiscation of goods bearing a mark recognised as being contrary to the provisions of Article 37, even in the case of acquittal and also that of the implements or tools that served specifically for the commission of the offence”.
The confiscation order can be accompanied by forfeiture orders. The offenders may be deprived of the right to participate in elections to professional groups such as chambers of commerce and industries and chambers of agriculture, for a period not exceeding 10 years (Article 42, Bangui Agreement).
4.2.2 Preliminary Measures
However, before arriving at the above remedies, the mark owner can also benefit from certain preliminary remedies. These are what the TRIPS Agreement refers to as provisional measures. They constitute an important weapon in the fight against counterfeiting as the mark owner is given means whereby he may establish the source of supply and the extent of sales. Such pieces of evidence are very vital in establishing the amount of damages at the end of the case. Since counterfeiting is clandestine, such measures are well fitted as they are granted inaudita altera parte. They are readily granted where appropriate and where delay is likely to cause irreparable harm to the right holder or where there is demonstrable risk of evidence being destroyed. When applicants provide reasonably available evidence that they are the right holder and that their right is being infringed or that such infringement is imminent, their application shall be granted. These measures can be accompanied by injunctions ordering a party to desist from an infringement or to prevent the entry in to the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property right.
4.3 RAISON D’ETRE FOR COMBATTING TRADEMARK COUNTERFEITING
Here, three issues have been examined, namely, the impact of Trademark counterfeiting, factors that account for the increased trademark counterfeiting and lastly we examine the overlap of IPR infringements.
4.3.1 The Impact of Counterfeiting
Counterfeiting has far- reaching effects on the right holder, the state as well as the society at large.
4.3.1.1 To the right holder
Counterfeiting is ultimately an infringement of the legal rights of an owner of intellectual property. Industries suffer a direct loss in sales when they compete with counterfeiters. They also suffer a loss of goodwill and reputation as consumers blame the manufacturers of the genuine product. Even when cheaper copies are bought in good faith, they represent a serious threat to the company that wants its brand associated with quality and exclusivity. Company losses are exacerbated in those markets where counterfeits dominate. This is because some of the products are of high quality today and can directly compete with the genuine items. It can be argued that counterfeiting increases cost of production. This is because companies will not only adopt costly protective technologies but also spend huge sums in protecting and enforcing intellectual property rights.
4.3.1.2 To the state
Countries where counterfeiting takes place lose foreign investment. Activities such as; forming joint ventures, mergers, acquisitions, distribution arrangement, franchise and other marketing agreements are seriously discouraged despite their high revenue, generating propensity.
It has been established that, counterfeiting leads to job losses and loss of foreign exchange. Even though it could be argued that, the counterfeiting industry creates jobs, these jobs are often poorly paid, involve sub-standard working conditions and sometimes use child labour. Likewise, a country whose products including genuine ones, gains a reputation of being outstanding fakes or of poor quality, cause export losses. Loss of foreign exchange is vital to an economy as it has a direct nexus with, all economic goals of governments (goals include price stabilisation, balance of payment surplus, low rate of inflation, high standards, etc).
Counterfeiting has a chilling effect on research and development (R &D), which in turn is vital to the quality of products and life. Thus, investment is discouraged since honest producers are dissuaded from investing resources in new products and market developments. If a business organisation can rely on a viable intellectual property system for protection, it will then invest in R & D, since it can always recover its investment by way of profits in the market place, while preventing infringes from having a “free ride” (selling infringing products without having to shoulder the cost of R & D). There is no gain saying of the fact that, when counterfeiting prevails in a domestic economy, national governments are prevented form collecting taxes on what otherwise would have been legitimate business activity. This point dwindles the argument that, counterfeiting generates resources in an economy. There is no register for fraudulent trading causing fiscal losses and thereby directly having an adverse effect on economic growth and development.
4.3.1.3 Social Cost
The ultimate victims of unfair completion are the consumers. Apart from not having what they want they end up paying an excessive price for an inferior product. This is because counterfeiting goods comprise cheap imitations of the authentic article sold under the trademark of the authentic article.
They suffer financial loss and in the case of pharmaceuticals, their health may suffer as well. It is no longer rare to find counterfeit pharmaceuticals in hospitals or counterfeiting parts in aircraft and other vehicles, causing death or injuries.
It can even be asserted here that counterfeiting causes poverty. This is because big companies are dissuaded from investing and can suffer great financial losses. This leads to unemployment and we can imagine the multiplier effect in an African family structure setting.
Over and above all, counterfeiting predicates other crimes. Criminals derive huge profits from this trade and at times, invest the proceeds of crimes (money laundry). These proceeds are also used to finance other crimes like terrorism
4.3.2 Rapid Increase in Trademark Counterfeiting
A number of factors can be attributed to the rapid increase in counterfeiting experienced during the last few years.
4.3.2.1 Advances in Technology
Rapid strides in technological development have generally, posed profound challenges in the field of intellectual property. These new information and communication technologies have not only benefited manufacturers of genuine products but also counterfeiters. These technologies have caused advances in the means of commercialisation or have widened the market place. This is evident in the proportion of trade that takes place over the internet, (e-commerce). This widening of the market place has come with increase in fraudulent commercial activities too. However, merely applying for an “internet domain name” which consists of or contains another’s mark does not by itself amount to trademark infringement. Also, references on the Internet per se are not acts which amount to trademark infringement, but are capable of infringing the trademark regime. In this light therefore, the courts have held the activities of cyber-squatters- “cyber squatting” as act of trademark counterfeiting. Concretely speaking, these criminals offer to assign or even actually assign existing trademarks to third parties under the guise of domain names. This creates the likelihood of infringing activities occurring.
In addition, technological advances have further enabled counterfeiting of what were normally considered as “high-tech” products, too complicated to fake possible. Counterfeiters can now demand a high price for their low cost products, since these products have a high value added element. Finally, new technology also has a direct impact on growth in advertising. Advertising enables products to be sold to a global audience
4.3.2.2 Increased International Trade
Globalisation and trade liberalisation has caused dramatic increase in international trade and consequently trade in counterfeiting products. Also, worldwide growth in regional economic integrating with its general trend, in favour of dismantling boarder controls to ease the flow of international trade has provided safe heavens for trading in counterfeits. (Examples of these regional economic integrations include the European Union and its European Economic Area, the North American Free trade agreement and sub-regional integrations like the Central African Economic and Monetary Union – CEMAC, West African Economic Union – ECOWAS).
Another factor that favours trade in counterfeits by organised criminals with extensive international networks is international production. (Where the trail from raw materials to products on the shelf runs through a large number of countries – globalisation of the industry). In the face of this situation, counterfeiting strives and seems to be in a prospectively, steady rise.
4.3.2.3 Emerging Markets
International networks increasingly assure the distribution of fakes. The range of products targeted has widened due to an available and emerging market for fakes. Theses markets crop-up both as large producers and consumers of fakes. This emergence is obvious, as a number of economies (previously controlled) have transformed into free markets. (Such economies include those of Eastern Europe and the former Soviet Union). Likewise conditionality of the international financial institutions (World Bank and International Monetary Fund) has also caused liberalisation of economies of most African countries. These economic realities generally serve as breeding grounds for fraudulent trading. Although counterfeiting is a worldwide phenomenon, East Asia and especially China is often accused of being the main source of fakes. Nigeria is often pinpointed, as the main source of fakes distributed in the OAPI zone.
These factors account for the increase in value of counterfeiting in worldwide trade. A recent (1998) Green Paper from the commission of the European Union estimates that, counterfeiting and piracy account for between 5% and 7% of World trade. The most shocking matter about this fraudulent activity is that it is in a steady rise.
4.3.3 Trademark Counterfeiting and Other IP Infringements
Counterfeiting, piracy and boot legging are not exact terms but all involve deliberate and generally fraudulent, infringement of intellectual property rights-notably trademarks, copyright and performing rights. Counterfeiting is generally used to include unauthorized sale, under a trademark, of goods not made or authorized by proprietor of the trade mark. Piracy is generally used to include infringement of copyright (including cop in computer software). Bootlegging is generally used to describe the sale of sound recordings made without authority, either at live concerts or from broadcasts. Though these infringing acts seem to fall under distinct categories of IP law, they however overlap and can always exhibit certain aspects, which can be settled through the application of Trademark law.
An example of an area of overlap is music piracy. The recent trend here has been to register stage names, personalized logos and at times nicknames as trademarks or service marks. Prominent examples abound in the pop music area with such stage names as the Beatles and the Rolling Stones with their respective “Apple” and “Tongue and Lip” logos.
Another area of overlap is traceable in the field of performing and broadcasting rights. Here, we are referring to bootlegging. This comprises an unlawful recording of a performance at a live concert. The recording is made at an auditorium or taken from a radio or television broadcast. It is often done in the form of compact disc and mostly on the performances of well-known performers. The names of the performers are then put on the accompanying paperwork.
As seen above, leading performers register their professional names as trademarks in respect of recording. Thus, sales of the disc labeled in this way constitute infringement of the performers registered trade mark. This was the object of a recent House of Lords case, Regina vs Johnstone. It was reiterated in the case that, “bootleg sound recordings sold under a manufacturer’s name is unobjectionable but the unauthorized use on the compact disc and its packaging of the name of the performers (for instance, the Rolling stones) mindful of the fact that the names may be a registered trade mark, is trademark infringement”.
It must be recalled here that, trade mark law is basically concerned with the trade origin of goods or services. This precludes the assumption here that, trade mark law is in such situations, utilized as a legal means of enforcing performers or musicians rights with respect to their performance or music. This type of protection is all together different and can be found in distinct international conventions and national legislations. For example, see the Rome Convention (1961) (that is, The International Convention for the protection of Performers, Producers of Phonograms and Broadcasting Organizations) and the TRIPS Agreement. Law No 2000/11 of 19 December on copyright and neighboring Rights in Cameroon for instance. What then is trademark counterfeiting?
CHAPTER FIVE
EVALUATIONS AND PROPOSALS
It has been established that trademark counterfeiting is a serious economic crime that adversely affects industries, especially those that market their products internationally. It is also obvious that, it would be unrealistic to expect any measures that will completely eliminate counterfeiting. However, our aim in this chapter is to propose measures we believe if enforced, would make it unattractive for the fraudsters to target a company’s product.
5.1 A cheaper but more assured manner of combating counterfeiting is Goodwill raising. This is an obligation, incumbent on the companies themselves. Through heavy advertising and other uses of their marks, they can spur up deeper consumer confidence, manifested in the dire zeal to purchase genuine items and not fakes. This point will have added value if there is enough dissemination of knowledge about the role of intellectual property. For some reasons, this domain of the law is not well known to the public. This is due to marginal consideration of the subject (which for now within the zone is only dispensed to law students in universities and there exist only few specialized trainings), the public also has difficulties in understanding intellectual property rights as information about them is rather complex for simple minds. For instance, any worthwhile comprehension of the law on trademarks must be premised on pre-acquired information on the classification of goods and services for the purpose of registration of marks as well as other intricacies.
Till recently in Africa in general, only the OAPI, the WIPO and ARIPO (African Regional Industrial Property Organisation) really took measurable strides in dissemination information about intellectual property. Knowledge on intellectual property must be better propagated so that it will go a long way to back up good will raised by companies. We must go beyond the usual trend of seminars (since they cannot even measure the impact of their trainings) to inculcate it into extensive school programs. We recommend that the OAPI draws nearer to the universities within the zone. This is because every student, mindless of his or her chosen orientation is a potential resource for technical progress, which is sooner or later expressed in an industrial or cultural creation. With the public informed coupled with good will, companies will be spared the pain of having to employ heavy resources to enforce their intellectual property rights. They would, even in a long run, have commercial benefits as their cost of production will be reduce.
5.2) Any successful endeavour against counterfeiting must cut across National Financial policies (Fiscal and Budgetary policies). This is because it has been noticed that certain fakes are being put in the market by the original manufacturers as a means to evade tax. Companies having a registered Trademark and producing a fix quantity of products at the end of their production registers only part of the goods produced. Meanwhile, the number of goods produced is more than the goods registered. Therefore goods in circulation turn to be more than the goods bookmark that are in the market.
5.3) Closely related to the first point is the obligation on companies to share information with law enforcement forces as well as anti-counterfeiting committees or organisations within a structural framework. Counterfeiting can easily be combated off through concerted action and not just by self-help. It must be acknowledged here that, the very fact of criminalising counterfeiting (all signatories of the TRIPS) spare the right holder the burden of having to defend his rights alone. However, in practice, enforcement of Intellectual Property is still regarded as a matter of self-help in most countries. With information sharing and concerted action, we shall notice that instead of going ahead to only institute a civil litigation, the mark owner will simply notify the police or customs authorities. In essence, we are saying that there should be increased public-private partnership against counterfeiting.
5.4) To better combat counterfeiting, companies are called upon to organise training programs as well as set up databases for enforcement agencies. Particularly with the customs authorities, companies are advised to deposit samples of their products so that it can always help them to dictate, identify and report counterfeiting. This proposal is supported by the fact that more often than not, only the manufacturers of the genuine products know whether an item is fake or not. Also, this point is elucidated in the fact that, counterfeiting targets diversity of products but for the moment, the majority of goods seized by customs or other frontier forces are clothing and hardly even encompass a limited number of most well known brands. This is only indicative of the fact that these forces do not know the difference between fakes and genuine items. If this proposal is taken in to account, then fake perfumes, watches spare parts, etc, will be flushed from our markets. Right holders would recover moneys invested in promoting new products, as free riders would reduce.
5.5) It is believed that a decent exposition of the economic aspects of counterfeiting will spur commitment in fighting it off. If counterfeiting statistics were established, companies would clearly see what they are loosing out to counterfeiters and will then be alert. They will also give an economic reality, precedence over and above legal form. Traditionally, the people involved in this field have been lawyers, marketing personnel or security officers who are practitioners and are not always concerned with aggregated statistics on counterfeiting. It is only when this economic reality will be well established that the numerous legal texts existing on the matter will have the desired effect.
5.6) International cooperation in combating fraudulent trading should be encouraged and strengthened. It was noticed in our work that, trademark protection is basically national. This is translated through the various national committees as well as anti – counterfeiting organisations. However, we also saw that there is an ongoing trend to globalise industries – that is, there are situations where the different stages of production take place in different countries. Also, the very fact that counterfeiting has an inherent international character necessitates concerted international action. We saw that efforts of the CIB, WCO and Interpol are geared towards this. These efforts have been dwindled due to lack of information to update their database. Countries are encouraged to feed these organisations with information as such will be of great help in the global fight against counterfeiting. This is especially so as for instance, we know the successes of the Interpol in fighting other crimes like drugs smuggling and money laundry.
5.7) We notice that those who drafted the Bangui Agreement made provisions for proceedings against those directly involved in the production, distribution and sale of counterfeits. It is our humble opinion that, the crime be redefined to engulf the activities of those that are indirectly involved in the commission of the offence. This is especially as it is a clandestine activity, which covers extensive networks, which can at times touch the activities of printers and packagers. We want to borrow from the English Legislator (Trademarks Act 1994) who creates a comparable offence relating to material intended to be used for labelling or packaging goods, or as a business paper in relation to goods or for advertising goods. In fact, section 92 (3) of that Act states that;
“A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor-
a) Makes an article specifically designed or adapted for making copies of a sign identical to, or likely to be mistaken for a registered trademark, or
b) Has such an article in his possession, custody or control in the course of a business,
Knowing or having reason to believe that it has been, or is to be used to produce goods or material for labelling or packaging goods as a business paper in relation to goods, or for advertising goods”.
In fact, Section 92 (2) and (3) covers activities which have been loosely described by Lord Nicholls of Birkenhead (Regina V. Johnstone) as the “printer’s plate”. This section could be copied and included in the Bangui Agreement especially as we know that legal transplant is not forcefully a bad venture (especially in our case).
5.8) The moral equilibrium of the society is retained when those who fail to respect the rights of others are severely sanctioned. Concretely therefore, trademark counterfeiters have to be heavily sanctioned. This will provide deterrence as well as serve an education purpose. In Britain for example [Trademarks Act, Section 92 (6)(b)], imprisonment terms can go up to 10 years. This is not the case with the Bangui Agreement, where it can hardly exceed four (4) years. Such a regime is less dissuasive and incommensurate with the large profit margins and social cost, caused by trademark counterfeiters. Thus, it would be better for drafters of the Bangui Agreement to revisit the punishment regime in general (both fines and imprisonment).
5.9) It has also been observed that, technological advancement, breed certain activities that threaten the intellectual property system. These strides have not had corresponding safeguards. There is a complete absence of texts incriminating technologically linked offences in the zone. If incrimination cannot be inserted in to the special laws governing trademark protection, it should be inserted in to the general criminal law regime of nations. For the main time, while waiting for the conversion of these economic and social realities in to legislative prescriptions, drafters of the Bangui Agreement or legislators or judges within the zone should copy the English example (British Telecommunication V. one in a million – a case concerning cyber squatting). When such issues arise, the courts should grant “quia timet” relief. This relief orders the transfer of the domain names to the various targeted enterprises.
If States implement these measures accurately, then counterfeiting will be minimised and their chances of enjoying the economic and social benefits of a strong and viable Intellectual Property System will be maximised. A strong National Intellectual Property System promotes the development of national industries by protecting investors and permitting them, recover cost of innovation. In this way, the quality of life is ameliorated and creativity, encapsulated in new business ideas and products is encouraged. A strong system attracts foreign investment, which improves a country’s tax base and creates employment. These economic benefits only seek to establish the role of trademarks and how fatal trademark counterfeiting can be to the global intellectual Property system. It also seeks to establish the fact that, the IP system is a meticulously interwoven matrix within which all IP infringements ought to be given the same attention. This is especially as; each can be instrumental to its collapse. If trademark counterfeiting is combated, a more orderly and equitable market place would be created. Consumers or end users will be very certain that, the products or services they purchase are supplied by the reputable manufacturers, who are equally responsible for their quality
All rights reserved by Ngang Andrew
Magistrate, Yaounde
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