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INDUSTRIAL & INTELLECTUAL PROPERTY LAW:
ITS BASIS IN INTERNATIONAL LAW AND THE IMPLICATION FOR THE DEVELOPMENT OF COMMERCIAL JURISPRUDENCE IN SIERRA LEONE
**

 

BY CENTUS MACAULEY ESQ [1]

 

INTRODUCTION:

 

Industrial and Intellectual property law may be defined as the marking out by means of legal definition, types of conduct which may not be pursued and/or undertaken by persons other than the right owner without his/her consent [2] . Intellectual Property also connotes the protection and in other cases the enforcement of rights, which result from intellectual activity in the industrial, scientific, literary and artistic fields [3] .

 

The object of this paper is to give a brief overview of industrial and intellectual property law from a local and international perspective; an introduction as it where to intellectual property within the context of the new challenges it faces. Against this background, this paper will also seek to give an insight into our peculiar situation. Ten years of a very destructive civil war has almost succeeded in undoing every facet of our nationhood. During this period of retrogression the world has of course moved on. There is a lot catching up to be done on our part in the area of intellectual property. It is imperative therefore that we take the necessary steps and soonest.

 

HISTORICAL DEVELOPMENT:

 

An inscription in the copula of the WIPO Building, Geneva, attempts in a few words to define intellectual work and in the same breath invokes reasons why “intellectual work” is to be regarded as “property”. It’s reads thus “Human genius is the source of all works of art and invention.  These works are the guarantee of a life worthy of men.  It is the duty of the state to ensure with diligence the protection of the arts and inventions”.

 

While the debate continues as to what also aught to be classified as intellectual and industrial property, the fact remains that this area of the law was born out of a desire to ensure and safeguard for the benefit of inventors, creators etc. the economic advantages that might arise from the trade and commerce of these innovative designs creations, etc.

 

It would however appear according to Cornish’s Sources of the law and the pressures for it’s development in his book “Intellectual Property Law” [4] that the three foremost components of intellectual property developed some how independently of each other.  As regards patents, “it made it’s appearance in the eighteenth century.  Then patentees started to enroll statements of their inventions with the courts.  The practice may have been a device to help prove against infringers what the protected invention was’’.  With copyrights, “from the early years of the first copying industry and printing, a pattern of exploitation evolved.  Entrepreneurs, i.e. today’s publishers acquired the works from the author and organized it’s printing and sale.  They were the chief proponents of exclusive right of use against copiers”.  In the area of trademarks, “as industrialization gathered steam and capitalism expanded, the selling of products and services by the means of a mark, brand or name became the hallmark of commerce and trade.  This in turn led to the creation of a legal protection against the imitation of these marks and brand names”.

 

Moral arguments apart, the dynamics of modern trade, commerce and competition has occasioned substantial financial and economic benefits to those who have been able to carve out a niche for themselves in the vanguard of invention, creation and innovation.  Combined with a surgical execution of an appropriate marketing scheme in the right environment, the returns for entrepreneurs have been enormous.

 

In Sierra Leone, regrettably, laws handed down to us verb et lib by Britain our erstwhile colonial masters are still with us. Little wonder that we trail behind in this area of a very dynamic jurisprudence that has assumed great international standing. For example, our Trademark Act Cap.244 and Patent Act Cap.247 are virtual replicas of legislations that have long since been discarded by it’s authors at Westminster in favor of legislations more apt and in tune with modern day problems and the technicalities associated with industrial and intellectual property law.

 

THE INTERNATIONAL REGIME ON PROPERTY RIGHTS AND CONTEMPORARY INTERNATIONAL LAW

 

Today, the international regime for the protection and/or enforcement of property rights is spearheaded by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland [5] .  It is a specialized agency of the United Nations (UN) mandated to promote worldwide the protection of intellectual property.  It was established by the WIPO convention signed at Stocklhom in 1967 and entered into force in 1970.  The convention provides inter alia that intellectual property shall include rights relating to:

 

1.                  literary, artistic and scientific works

2.                  performance of performing artist, phonograms and broadcasts

3.                  inventions in all fields of human endeavor

4.                  scientific discoveries

5.                  industrial designs

6.                  trademarks, service marks and commercial names and designations

7.                  protection against unfair competition; and

8.                  all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

 

Over the years, individual nation states have promulgated laws to meet the demands of their locality and exigencies of the times. These laws have provided protection to property right owners against unauthorized exploitation within the confines of state frontiers.  In other words, the rights granted by such laws are limited territorially.  However, the advent of advanced technological modes of communication, transportation and the growth of the global village phenomenon has occasioned a new world order so to speak. The level of cooperation, consultation, integration, etc. both on a bilateral and multilateral level have meant that these frontiers have all but in name within the realm of intellectual property matters it would appear ceased to exist. 

 

It is further submitted that the unity of intent to offer protection in the individual states has only lent credence to the fact that intellectual property does transcends national frontiers.  This state of affairs vindicates the proponents of WIPO and further re-emphasizes with the negotiation of each new treaty and the creation of the concomitant union within WIPO its basis in international law.

 

Generally, treaties represent (depending on the viewpoint of the author or jurist) the primary or secondary source of international law. It is however clear that the role of treaties in the development of international law is very much on the increase [6] . At the moment, there are some twenty-one(21) multilateral treaties currently being administered by WIPO.  These treaties have been broadly classified into three main groups viz:

 

1.                  Intellectual property protection treaties defining internationally agreed basic standards of intellectual property protection in each country. 

2.                  Global protection treaties.  These ensure that one international registration and/or filling will have effect in any of the relevant contracting party.  The services provided by WIPO by virtue of these treaties include;

 

(a)    Simplification of the process of application/registration worldwide

(b)   Substantial reduction in the cost of application or the filling of such application in one country rather than in each country in which protection is sought.

3.                  Finally, the classification treaty group. It creates a classification that organizes information concerning inventions, trademarks and industrial designs into indexed manageable structures for easy retrieval

 

WIPO has it is submitted succeeded in creating an international arena that has tremendously enhanced the development of intellectual property. It’s contribution to intellectual property law, international economic law and international law has been enormous. With new discoveries, inventions, innovations, creations, etc. every day venturing at times onto hitherto uncharted territory, more multilateral treaties of this nature are sure to be promulgated. The considerable ease with which information is now being replicated, manipulated and utilized with the aid of new technology has radically amplified the new challenges facing intellectual property. The need to upgrade existing treaties on intellectual property matters and bring into effect new treaties covering virgin areas (such as traditional medicine and practices, gene manipulation and therapy, etc.) is now stronger than ever before. The inherent characteristics of intellectual property law and it’s peculiar dynamic nature has also caused it’s presence to be felt in the area of Human Rights as evidenced by the recently decided case of Pharmaceutical Industry Vs. South Africa on accessible HIV/AIDS drugs. The correlation between the municipal law of the state and her obligations under international law on the one hand, and tensions between the two on the other hand clearly came out during the course of legal arguments.

 

 

The ongoing process of globalization (as evidenced by reduced transportation cost, enhanced methods of communication that has greatly curtailed the communication gap, the integration of domestic economies/market, the removal of impediments to trade and investments by the creation of free trade zones and granting of most favored trading nation status etc.) has meant that much of international life has had to be governed by treaties and international arrangements of that sort.  According to Daniel Bethlehem overview on International Economic Relations, “traditionally, economic relations were regulated by principles drawn from customary international law, common traditions of municipal law and the lex mercantoria, or law of the merchant or market place…..While sources of international law founded in the practice of states and other economic operators remain important today, the legal regime of international economic relations has changed beyond all recognition in the period since the end of the second world war. Perhaps more so than virtually any other area of international law, this area of relations between states, and between traders in different states, has become regulated by international treaties [7] ”. As such, the extent of the role played by these intellectual property treaties in the formation of international law and it’s contribution to international economic law cannot thus be overemphasized.

 

This section of the paper will be incomplete without mention of the Agreement on Trade-Related Aspects on Intellectual Property Rights. (The TRIPS Agreement), annex 1c to the Marrekesh Agreement establishing the WTO. This agreement came into effect on 1ST January 1995 and has been the most comprehensive multilateral agreement to date on intellectual property. It deals with each of the main categories of intellectual property rights and other allied rights; establishing standards of protection as well rules on enforcement. It further provides for the application of the World Trade Organization (WTO),(i.e. the successor of the former General Agreement on Tariffs and Trade, GATT, a multilateral trading system that had existed since 1948 culminating in the Marrakesh Agreement establishing the WTO that came into force on 1ST  January 1995) dispute settlement mechanism to resolve dispute between member states.

 

The areas of intellectual property that it covers are: copyrights and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting organizations); trademarks including service marks; patents including the protection of new varieties of plants; the layout-designs of integrated circuits; and undisclosed information including trade secrets and tests data. TRIPS it would appear have been the most ambitious attempt to date at creating a forum for the further harmonization of the system of protection in the various individual nation states [8] .

 

 

SIERRA LEONE AND HER OBLIGATIONS UNDER INTELLECTUAL PROPERTY INSTRUMENTS

 

The obligations of Sierra Leone vis-à-vis intellectual property today may be described as two-fold; within the domestic/national parameters and secondly, on the international plane.

 

It is submitted in support of the first limb that one of the defining characteristics of statehood and a fundamental tenet of state responsibility is having a government that should not only promulgate but should also be in a position to enforce it’s laws. Sad to say though, a substantial proportion of the laws in force in Sierra Leone in the area of intellectual property are virtual replicas of laws that were either handed down to us at independence in 1961 and/or assimilated into the juris corpus about that time.

 

Trademark is provided for in Cap 244 of the Laws of Sierra Leone 1960, Patents in Cap 247 of the Laws of Sierra Leone 1960 and copyrights by Act No. 20 of 1965 which however ludicrous it might appear is our most recent law on any intellectual property subject matter. As if to compound to the issue, there exist at the moment an interesting but very absurd arrangement in the case of copyrights. Act No.20 of 1965 charges the Ministry of Information, Broadcasting and Culture with the responsibility of handling copyrights, specifically it’s department of culture. To start with, this department has been oscillating between the Information and Tourism Ministries depending on the exercise of the powers (discretionary and otherwise) vested in the Chief Executive as per Act No.6 of 1991, i.e. The Constitution. Officials at the Ministry (perhaps through no fault of theirs) lack the necessary qualifications and basic training to handle any aspect of intellectual property let alone copyrights. One cannot help but imagine the level of injustice that has been done to would be copyrights owners as a result of this inefficacy. A recent visit to the ministry’s culture department has revealed that the copyright office is no more functional. This in effect leaves the entire country without any mechanism to handle copyrights.

 

Be that as it may, it should be noted that our intellectual property instruments especially when viewed in the light of an already defunct law reform commission which shows no signs of reawakening from it deep slumber are viable pieces of legislations which if enforced will ensure at least minimum levels of protection to the rights owner.

 

Mention must be made at this juncture of the role played by the Registrar-General and her office situate at Roxy Building, Freetown in the development of intellectual property in Sierra Leone. One will not be incorrect in saying that with very little support, they have pioneered and championed the cause of intellectual property in Sierra Leone. Unlike the case of copyrights, matters relating to patents and trademarks have within the very limited resources at their disposal been adequately handled by the central registry manned by them for that purpose amongst others.

 

However the actions of the Registrar-General and the registry including one of the most important i.e. the granting of “property rights” are done in futility if the right owner cannot (effectively) enforce those rights.

 

The fundamental component of any successful intellectual property system is summed up as follows; “All intellectual property systems need to be underpinned by a strong judicial system for dealing with both civil and criminal offenses, staffed by an adequate number of judges with suitable background and experience. Intellectual property disputes are in the main matters to be decided under civil law and the judicial system should make every effort to deal with them not only fairly but also expeditiously. Without a proper system for both enforcing rights and also enabling the grant of rights to others to be resisted, an intellectual property system will have no value”. Further, right-owners “must be able to take action against infringers in order to prevent further infringement and recover the losses incurred from any infringement. They must be able to call on the state authorities to deal with counterfeits [9] ”.

 

The ubiquitous display on a daily basis of pirated goods and counterfeit materials regrettably easily leaves one with the impression that this is the accepted norm of trading in Sierra Leone.      

 

Pirates and infringers of property rights as a result now find themselves with a readily available safe haven where the laws are either non-existent and or non-enforceable. As peace dawns on Sierra Leone, we risk incurring the wrath of the international regime geared towards the protection of property rights. This is a most unwelcome accolade especially at a time when real peace appears at the horizon with a firm implementation of the peace accord coupled with massive international donor support.

           

As a nation, we owe it to ourselves to uphold and enforce our municipal laws on intellectual property. These are the port of first call for any outsider when assessing any intellectual property system; needless to say that the manner and extent of enforcement of these intellectual property laws will be receiving special attention.

 

 

On the second limb, it has always been the domain of sovereign independent states to dictate how their treaty making powers are to be exercised rather than international law [10] . In this regard, S(40)(d) of the constitution stipulates that “…..the president shall without prejudice to any such law as may for the time being be adopted by Parliament, be responsible in addition to the functions conferred upon him in the Constitution  for the execution of treaties agreements or conventions in the name of Sierra Leone….” Further and more important, the President shall inter alia by virtue of S(40)(3) of the Constitution ensure respect for treaties and international agreements. Being an executive styled presidency, such executive powers though vested in the President “…may be exercised by him directly…or public officers subordinate to him”. See S(53)(1) of the Constitution. This shall be subject to ratification by Parliament by either an enactment of Parliament or by a resolution supported by the votes of not less than one-half of the Members of Parliament.

 

 

Though our antiquated legislations on intellectual property are yet to be revisited, we make bold to say that with the aid of the abovementioned provisions Sierra Leone has through the office of the Registrar General been able to maintain a presence at most of the numerous international forums called to either discuss intellectual property matters and/or negotiate treaties on Sierra Leone’s behalf.

 

We are a member of a few including

  • The Convention establishing the World Intellectual Property Organization (WIPO)
  • The Paris Convention for the Protection of Intellectual Property
  • The Patent Co-operation Treaty (PCT)
  • The African States members of the Patent Co-operation Treaty
  • African Regional Industrial Property Organization (ARIPO)
  • The Harare Protocol on Patents and Industrial designs within the framework of  (ES) ARIPO and;
  • The Madrid Agreement concerning the International Registration of Marks

 

 These treaties, agreements, conventions, protocols, etc.    are of cause binding on us in accordance with the principle of  pacta sunt servanda [11] , the foundation stone of international law.

 

It is interesting to note that by virtue of Sierra Leone’s membership of these international arrangements, the country has as a whole been able to benefit financially (i.e. the generation of much needed forex ). Some of her indigenes have been enterprising enough to enlist some of the immediate aforementioned instruments in the battle for the protection of their goods and thus the market, their creations, designs, inventions etc. at an international level.         

 

IT’S IMPLICATION FOR THE DEVELOPMENT OF COMMERCIAL JURISPRUENCE IN SIERRA LEONE

 

Ten years of civil war has not left the judiciary and the administration of justice unscathed. For a system that was already struggling under the yoke of neglect, corruption, inefficiency, etc.  the war was ill-timed. However, reeling in the trail of havoc and destruction left behind by the war is a luxury we cannot afford.

 

It is a fact that intellectual property cases even before the war were very few and far in-between. Local jurisprudence is virtually non-existent. As Sierra Leone re-opens it’s doors to international trade and commerce coupled with the present expansionist trends of world trade, this state of affairs is certain to change.

 

The few that have spurned any noise such as the Jumbo Cube, Maxam Toothpaste and lately the Kamtoko Boss Cigarette case which is sub judice in the Court of Appeal in Sierra Leone  have undoubtedly generated a lot of interest within the intellectual property community. It goes without saying that the Kamtoko Case is perhaps the only intellectual property matter to have generated so much current even at the court of first instance. One must also make heavy weather of the fact that this case has provided the country as a whole with a window of opportunity to make it’s position known on intellectual property matters and secondly what path it intends to follow in the ongoing battle to protect intellectual property rights. The uniqueness of this opportunity is epitomized by the fact that answers to the several questions to be tested will be handed down by the court of Appeal or the Supreme Court, both appellate courts whose decisions will be binding or of persuasive authority on other courts depending on the prevailing set of circumstances. In brief, the substratum of the appeal deals with local registration, the effect of registration including the parameters of the rights granted by such registration, international registration and it efficacy in a municipal set up, the doctrine of privity of contracts and the question of who has locus to register a trade mark or defend the same. Naturally, the decision of the court is being anxiously awaited both within and outside Sierra Leone.

 

Though the ideal situation would have been for such matters to be handled by a commercial court with it’s Bench graced with local or international expert(s) on intellectual property for reasons of speed amongst others, the reality is that this remains a dream. I am of the firm conviction that the Bench notwithstanding ten years of civil strife still have it within them to deliver reasoned and sound judgments based on settled principles of law and the rules and practices governing intellectual property when faced with such matters. Certainly, if given the wherewithal there jobs would be made a lot easier. 

 

For a country that has depended and still depends on commerce and international trade, negative publicity stemming from judgments  and/or rulings on commercial disputes including intellectual property matters  that appear questionable is something we can least afford. Further, our local jurisprudence on this subject matter must be developed and no better way to do this other than the judiciary taking the lead followed by academics and other interested bodies.

 

A strong judiciary is obviously a source of attraction to any potential investor and an incentive for economic growth and national development. The destiny of commercial jurisprudence and the country’s restoration is in our own hands.

 

CONCLUSION

 

The possibility of being branded a pariah state for reasons of our failure to comply and/or keep up with international accepted norms and rules of practice on intellectual property matters is a reality that lurks around.

 

The centralization of anything touching and concerning intellectual property by one registry, the enactment of one parent legislation, the introduction of intellectual property law in the curriculum of tertiary institutions, a strong judiciary, to name just a few will go a long way in putting us in a better stead to meet the demands and challenges of the millennium vis-à-vis intellectual property matters.

 

It is the hope that something will and should be done sooner rather than later lest by our own misdeeds we have cause pay a heavy price for something we now take for granted.  

 

      

 

BIBLIOGRAPHY

 

 

 

1.                  Agreement on Trade Related Aspects of Intellectual Property (TRIPPS Agreement). Geneva Provisions and Basic Principles WIPO/IP/BSL/99/1

2.                  The General Agreement on Tariffs and Trade (GATT)

3.                  Cap 224 of the Laws of Sierra Leone 1960, Trade Marks Act

4.                  Cap 244 of the Laws of Sierra Leone 1960, Trade Mark Rules

5.                  Cap 245 of the Laws of Sierra Leone 1960, The Merchandise Act

6.                  Act No.20 of 1965, Copyright Act

7.                  Cap 247 of the Laws of Sierra Leone 1960, The Patents Act 

8.                  Buttersworth Handbook on Intellectual Property

9.                  Intellectual Property Law by W.R. Cornish 2nd Edition

10.              The Patents and Industrial Designs Bill

11.              The recent developments in the international protection of Industrial Property. The Agreement on Trade Related Aspects of Intellectual Property Rights(The TRIPPS Agreement) The Trade Mark Law Treaty and the Patents Law Treaty.WIPO/IP/NBO/96/10A

12.              Definition and General Aspects of Industrial Property PCT/SEM/393/1

13.              Intellectual Property reading material (World Intellectual Property Organisation) WIPO Publication No.476 (e) 2nd Edition

14.              Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (World Intellectual Property Organisation)  WIPO Publication 455E

 



*The author takes full responsibility for opinions expressed in this paper

[1] Barrister-at-Law and Solicitor of the High Court of Sierra Leone

[2] W. R. Cornish on Intellectual Property 2nd Edition,

[3] World Intellectual Property Organization (WIPO) Publication No.476E

[4] Supra (n 1)

[5] See http://www.wipo.int [accessed 15th January 2002]

[6] See J. G. Starke on Introduction to International Law. 8th Edition

[7] Daniel Bethlehem  BA(Wits) LLB (Bristol) LLM (Cantab); Barrister; Deputy Director of the Lauterpacht Research Centre for International Law published in International Law, A South African Perspective by John Dugard, 2nd Edition

[8] See http://www.wto.org  [accessed 20th January 2002]

[9] See WIPO Publication No.476E and A. Sugden on The Role of the Judiciary and Law Enforcement Agencies for Effective Protection of Industrial Property Rights. WIPO/IP/JKT/99/8

[10] See John Dugard on International Law, A South African Perspective, 2nd Edition

[11] Supra  (n 8).  Means  “in good faith”. Article 26 of the Vienna Convention on the Law of treaties affirms it. On account of this principle, it could be argued that Sierra Leone whether or not it has ratified and/or domesticated international instruments signed by her will be held to have negotiated in good faith with all the attendant benefits and obligations flowing there from.

 

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