IP Overview of South Africa

By Adams & Adams,[Patent]

In South Africa, there are 5 main sources of law where owners of the intellectual property can gain protection on intellectual property rights. They are (1) Trade Marks Act No. 194 of 1993; (2) Patents Act No. 57 of 1978; (3) Designs Act No. 195 of 1993; (4) Copyright Act 98 of 1978; and (5) Counterfeit Goods Act No. 37 of 1997. 


Trade Mark

The Trade Marks Act No.194 of 1993 provides for the registration of trade marks, certification trade marks and collective trade marks.


South Africa follows a single class system and accordingly a separate application must be filed in each class in which protection is required. 


Applications can be filed covering the class heading in accordance with the Nice International Classification. In terms of the 10th Edition of the Nice International Classification, goods and services are classified into 34 classes and 11 classes respectively for the purposes of registration.


South Africa is a member country of the Paris Convention. It is, therefore, possible to a file a trade mark application in South Africa, claiming priority, within 6 months of the first application for that mark filed in a convention country. 


Despite the fact that South Africa plans to join the Madrid Protocol, it is yet to formally accede to the Madrid Protocol and to promulgate enabling legislation giving effect to international registrations. Until such time, filing international registrations with WIPO through the office of the country of origin, designating South Africa is not yet possible.


All applications undergo examination by the Trade Marks Office to determine inherent registrability as well as possible conflict with prior registrations or applications. Once a trade mark application has been accepted, it is advertised in the Patent Journal. Any interested parties have 3 months to oppose the application. If no opposition is received, the application will proceed to grant and a certificate of registration will be issued. At present the registration procedure takes approximately 30 months from the date of filing.


A trade mark is registered for a period of 10 years, calculated from the date of the original application, and the registration may be renewed in perpetuity for periods of 10 years on application in the prescribed manner and on payment of the renewal fees.There are 3 types of trade mark infringement namely:

1. the unauthorised use in the course of trade in relation to the same goods or services, of an identical mark or a mark so nearly resembling it as to be likely to deceive or cause confusion;

2. the unauthorised use in the course of trade of an identical or similar mark, in relation to goods or services which are so similar that there exists the likelihood of deception or confusion;

3. the unauthorised use in the course of trade in relation to any goods or services of an identical or similar mark, if the registered trade mark is well-known in the Republic and the use of the other mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trade mark.


Protection is also available to the proprietor of a well-known trade mark, whether or not such person carries on business or has any goodwill in the Republic, against the unauthorised use of a mark which constitutes a reproduction, imitation or translation of the well-known trade mark, where:

1. the goods or services are identical or similar to the goods or services in respect of which the trade mark is well-known; and

2. the use is likely to cause deception or confusion. A well-known foreign trade mark is one which is well-known in the Republic as being the mark of a person entitled to protection under the Paris Convention.


The remedies for infringement are as follows:

1. an interdict;

2. an order for the removal of the offending trade mark or, alternatively, delivery-up of the infringing goods;

3. damages;

4. in lieu of damages, at the option of the proprietor, a reasonable royalty which would have been payable by a licensee for the use of the trade mark concerned.


Patent

The Patents Act No. 57 of 1978 provides for the grant of a patent for any new invention which involves an inventive step and can be used or applied in trade or industry or agriculture.


An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regarded to matter which, immediately before the priority date of the invention, forms part of the state of the art. The relevant state of the art for assessing inventiveness is somewhat narrower in scope: the subject matter of an earlier pending patent application and prior secret use of an invention do not form part of the state of the art when obviousness is assessed.


Certain inventions are excluded from patentability: a discovery; a scientific theory; a mathematical method; a literary, dramatic, musical or artistic work or any other aesthetic creation; a scheme, rule or method for performing a mental act, playing a game or doing business; a program for a computer; or the presentation of information, is not regarded as an invention for the purposes of the Patents Act. An invention incorporating one or more of these items as mere features of the invention, may still be patentable.


A patent will not be granted for an invention, the publication or exploitation of which can generally be expected to encourage offensive or immoral behaviour; or which may be used in a manner contrary to law; nor for anything contrary to well established natural laws (eg. perpetual motion devices).


A patent will also not be granted for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process. It is, however, possible to obtain protection for plant varieties by the grant of plant breeders’ rights in terms of the Plant Breeders’ Rights Act No.15 of 1976.


South Africa is a member of the International Convention and the Patent Co-operation Treaty (PCT) and it is therefore possible to file a patent application in South Africa as a convention application or as the national phase of a PCT A South African patent application is not subjected to substantive examination. The Registrar merely examines the application for compliance with the formal requirements of the Act, and if he is satisfied, the application will proceed to acceptance and grant. 


The term of a patent is 20 years dating from the date of filing the complete application subject to the patent being maintained in force by the payment of prescribed annual renewal fees.


A patent, when granted, confers upon the patentee in South Africa, for the duration of the patent, the right to exclude other persons from making, using, exercising, disposing or offering to dispose of, or importing the application. invention, so that he shall have and enjoy the whole profit and advantage accruing by reason of the invention.


Design

The Designs Act No.195 of 1993 provides for the registration of designs specifically directed at the visual features of an article. 


The Designs Act distinguishes between two types of designs, namely :

1. aesthetic designs, which are designs applied to articles for the pattern, shape, configuration or ornamentation of the article, the article having features which appeal to and are judged solely by the eye, irrespective of the  aesthetic quality thereof; and

2. functional designs, which are designs also applied to articles for the pattern, shape or configuration of the article, but in this case the article has features which are necessitated by the function which the article is to perform.


Included by definition in the category of functional designs are integrated circuit topographies and mask works.


For the purpose of registration, articles are divided into 32 different classes. When a design application is filed, the selection of the appropriate class or classes is extremely important. The monopoly right afforded by a registered design is restricted to articles which fall within the class in which the design has been registered. If the design is applied to an article which is not included in the class or classes in respect of which the design has been registered, then such article will not fall within the scope of the registered design and will hence not constitute an infringement of the registered design.


As South Africa is a member of the Paris Convention for the Protection of Industrial Property, priority may be claimed within 6 months of filing of the first application in a convention country.


An application for the registration of a design can still be validly filed within 6 months of the “release date” of the design. The release date in relation to a design, means the date on which the design was first made available to the public (whether in South Africa or elsewhere) with the consent of the proprietor of the design or any predecessor in title.


Once granted, an aesthetic design has a duration of 15 years, and a functional design 10 years, provided prescribed annual renewal fees are paid.


The effect of a design registration is to grant to the registered proprietor the right to exclude other persons from making, importing, using or disposing of articles included in the class in which the design is registered, and embodying the design or a design not substantially different therefrom.


In the case of proceedings for infringement where infringement is established, the plaintiff will be entitled to:

1. an interdict;

2. surrender of any infringing product or any article or product of which the infringing product forms an inseparable part;

3. damages; and

4. in lieu of damages, at the option of the plaintiff, an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the registered design concerned.


Copyright

The Copyright Act 98 of 1978 governs the extent and enforcement of copyright protection for works, including literary, dramatic, musical and artistic works, cinematograph films, sound recordings, broadcasts, programme-carrying signals, published editions and computer programs, if they are original. 


In South Africa, Copyright comes into existence automatically and no registration is required. In respect of cinematograph films, registration is possible but it is not necessary for copyright to exist.


The Act provides that the works listed will be eligible for copyright if they are “original”.  There is no definition of “original” in the Act but South African Courts will, in determining the originality of a work, take into account, the fact that the work is “a substantial improvement on what preceded it” and that “a lot of skill, labour, effort and time were expended” in creating the work. It is a generally accepted principle of copyright law that the concept of originality is not equivalent to novelty or uniqueness but should be understood to mean that the work emanated from the author and was created through the application of the author’s skill and creativity, labour and efforts.


Apart from the requirement of originality, it is required that the work must have been written down, recorded, represented as digital data or signals, or otherwise reduced to material form. Prior to such reduction to material form, whilst a work is still a mere idea in the mind of its author, no copyright comes into existence.


The duration of copyright for literary, musical or artistic works other than photographs, is the life of the author plus 50 years from the end of the year in which the author dies; for cinematograph films, photographs and computer programs, the term is 50 years from the end of the year in which the work is made available to the public or is made (where no publication takes place); and in the case of sound recordings and published editions, the term is 50 years from the end of the year in which the recording or edition is first published.


Copyright confers on the copyright owner an exclusive right to do or to authorise the doing of certain acts. The subsistence of copyright in a work does not confer absolute protection for the work in the sense of prohibiting the making of or use of a similar work in all circumstances. It confers, generally, a right to prohibit copying of the work by another.


Copyright in a work is infringed by any person who, without the authorisation of the owner, does any of the acts reserved for the owner. 


The Act also provides for copyright to be infringed indirectly by any person who, without the authority of the copyright owner, imports, sells, lets, by way of trade offers or exposes for sale or hire, or distributes for purposes of trade, an article in the Republic if he/she knew that the making of the article constituted an infringement of copyright or would have constituted an infringement if made in South Africa; or by any person who permits a place of entertainment to be used for a public performance of a literary or musical work, where the performance constitutes an infringement of copyright, unless the person was not aware and had no reasonable grounds to suspect that the performance was an infringement.


In the case of proceedings for infringement where infringement is established, the plaintiff will be entitled to:

1. damages;

2. an interdict;

3. delivery up of infringing copies or plates used for making infringing copies;

4. in lieu of damages, at the option of the plaintiff, an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee.


Anti-counterfeiting

The Counterfeit Goods Act No. 37 of 1997 enables the owner of an intellectual property right, or any other person with an interest in goods bearing or embodying such rights (the protected goods), to act speedily and effectively against persons involved in counterfeiting activities, both on a criminal and/or civil basis.


According to the Act, intellectual property rights include :

1. rights in a trade mark conferred by the Trade Marks Act No. 94 of 1993, including rights in respect of a well-known trade mark as contemplated in Section 35 of that Act;

2. copyright in any work in terms of the Copyright Act No. 98 of 1978; and

3. the right of a person to use a specific mark included in a notice issued under section 15 of the Merchandise Marks Act which other people are prohibited from using.


The Act also states that the following “interested persons” may lay a complaint against persons involved in counterfeiting activities in terms of the Act :

1. the owners or licensees of trade marks or copyright works in respect of protected goods;

2. importers, exporters or distributors of protected goods; and

3. the duly authorised agent, representative or attorney of the abovementioned persons.


The Act further defines that “Counterfeit goods” are goods :

1. which are manufactured, in the Republic or elsewhere, without the authority of the owner of an intellectual property right subsisting in protected goods in the Republic, where protected goods are imitated to such an extent that the manufactured goods substantially identical copies of the protected goods;

2. to which a trade mark or the subject of copyright which subsists in respect of protected goods in the Republic, or a colourable imitation thereof, is applied with the intention of causing confusion between the manufactured goods and the protected goods; and

3. to which a prohibited mark (in terms of the Merchandise Marks Act), has been applied without authority.


Acts amounting to the prohibited “dealing” in counterfeit goods include :

1. possessing or controlling counterfeit goods in thecourse of business;

2. manufacturing, producing or making counterfeit goods other than for private or domestic use;

3. selling, hiring out, bartering or exchanging counterfeit goods or offering or exposing them for sale;

4. exhibiting counterfeit goods in public for the purposes of trade;

5. distributing counterfeit goods for the purposes of trade or any other purpose with the result that the intellectual property right owner suffers prejudice;

6. importing or exporting counterfeit goods, except for the private and domestic use of the importer;

7. disposing of counterfeit goods in any other manner in the course of trade.


It is an offence for any person to perform or engage in any of the above prohibited acts, if such person knows or has reason to suspect that the goods are counterfeit goods and does not take reasonable steps to avoid the prohibited act.


In the case of a first conviction, the penalties for being convicted of dealing in counterfeit goods include a fine not exceeding R5,000.00 per article or item, or imprisonment for a period not exceeding 3 years, or both.


In the case of a second conviction, a fine not exceeding R10,000.00 may be imposed per article or item, or imprisonment for a period not exceeding 5 years, or both.


In imposing a penalty, the court may take into account any risk to human or animal life, health or safety or any danger to property arising from the use of the counterfeit goods in question. The court may also declare the counterfeit goods to be forfeited to the state or order the goods and any tools used in their manufacture, to be destroyed.


As an incentive to combat trade in counterfeit goods, a person who submits any counterfeit goods purchased by him or her to an inspector together with proof of the price paid therefore, may be awarded a sum of money three times the amount paid for the counterfeit goods if the seller is convicted of an offence under the Act.


(Source: International IP Law Firms)


 

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