South Africa: Intellectual Property

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This country-specific Q&A provides an overview to intellectual property law in South Africa.

It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.

This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/

  1. What different types of intellectual property rights exist in this jurisdiction to protect?

    (a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how);

    Inventions are protected in terms of the Patents Act and the common law principles pertaining to trade secrets. In order for information to qualify for protection as a trade secret, the information must be secret, in the sense that it is not generally known to or readily accessible to third parties, it must have commercial value, and have been subject to reasonable steps to maintain its secrecy.

    (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);

    Trade Marks, cause of action on the basis of passing off and unlawful competition, certification trade marks, collective trade marks.

    (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how).

    • The South African intellectual property framework includes protection for design rights, which rights are extended to integrated circuit topographies. South African law also provides for protection of certain forms of Indigenous Knowledge relating to biological resources in relation to patents, and a framework is currently being developed to extend this protection to other forms of intellectual property rights and other forms of Indigenous Knowledge.

    • Traditional Knowledge/Indigenous knowledge – The South African government has attempted to provide protection for traditional or indigenous knowledge through the introduction of The Intellectual Property Amendment Laws Act 28 of 2013. However, the Act has not yet come into force as the regulations have not been finalised.

      The Protection, Promotion, development and Management of Indigenous Knowledge Systems Bill, 2016 – The South African Department of Science and Technology has advised that the aim of this Bill is to protect, promote, develop and manage indigenous knowledge. It has been tabled before the South African parliament but has not been passed into law as yet.

    • Plant Breeders’ Rights (PBR)
    • Copyright
  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

    Patents

    The duration of a patent is 20 years from the South African filing date, or 20 years from the international filing date in the case of a PCT application which has subsequently entered the South African national phase.

    There is no provision in terms of South African law to extend the duration of a patent.

    Designs

    In terms of the Designs Act, a design has to be categorised as an aesthetic design or a functional design. Generally, a design which belongs in Part A has features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof. No feature of an article in so far as it is necessitated solely by the function which the article is intended to perform will afford the registered proprietor of an aesthetic design any rights in terms of the Designs Act in respect of such feature. Conversely, a functional design is devoid of any aesthetic features which may influence a user in selecting the design. Naturally, it is possible for a design to have features which are both aesthetic and functional.

    An aesthetic design has to be registered in Part A of the Register and a functional design in Part F of the Register. Features that are both aesthetic and functional in nature can be registered in both Class A and F, each in separate applications. In addition, the Designs Act allows for the filing of a design application within six months from the date on which the design was first made available to the public (design being ‘publicised’) in South Africa, or elsewhere. This date of first public disclosure is referred to as the ‘release date’ of the design. A Part A registration has a maximum term of fifteen years, whereas a Part F registration has a maximum term of 10 years, from the release date, or the earliest priority date in the case of a Convention application, or the date of filing the application in South Africa.

    An integrated circuit topography is protected in terms of the Designs Act and is considered a functional design. As such, the duration of intellectual property rights for an integrated circuit topography is ten years from the release date, or the earliest priority date in the case of a Convention application, or the date of filing the application in South Africa.

    There is no provision in terms of South African law to extend the duration of a design.

    Plant Breeders’ Rights

    25 years for vines and trees, and 20 years for all other varieties, calculated from the date of issuance of the PBR registration certificate. No extension is possible.

    Trade Marks

    Registered trade marks may exist in perpetuity, provided that they are renewed every ten years and not cancelled due to non-use or other grounds of cancellation.

    The common law right in an unregistered trade mark exists as long as it is being used to the extent that a reputation has been established and is being maintained. Residual reputation may exist after use of the trade mark has ceased, but the duration of this residual reputation varies on a case-by-case basis.

    Copyright

    The term of copyright for literary, musical and artistic works is 50 years from the end of the year in which author dies, provided that before the death of the author the work has not been published; performed; offered for sale or broadcast. If it has, then the term of copyright shall be 50 years from the end of the year in which such act is done.

    The term of copyright for cinematographic films, photographs and computer programs is 50 years from the end of the year in which the work is made available to the public with the consent of the owner of the copyright, or is first published, whichever term is longer, or failing such an event, within 50 years of the making of the work.

    The term of copyright for sound recordings is 50 years from the end of the year in which the recording is first published. The term of copyright for a broadcast is 50 years from the end of the year in which the broadcast first takes place. The term of copyright for published editions is 50 years from the end of the year in which the edition is first published.

  3. Which of the intellectual property rights described in questions 1-3 are registered?

    Patents and Designs
    Patent and Design Rights are registered rights.

    Plant Breeders’ Rights
    Plant Breeders’ Rights are registered rights.

    Trade Marks
    The South African Trade Marks Act 194 of 1993 (“the Trade Marks Act”) provides for the registration of trade marks, certification trade marks and collective trade marks.

    Copyright
    Copyright subsists automatically in respect of all works, provided certain conditions are met. Even though registration is not required, it is possible to register copyright in cinematographic films.

  4. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

    Patents

    An application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from the inventor the right to apply (i.e. an assignee), or by both such inventor and such other person. A patent application may also be filed in the name of an assignee (e.g. a natural person or a company), who has obtained a written assignment of the invention from the inventor. In the absence of an agreement to the contrary, joint inventors or joint applicants may apply for a patent in equal undivided shares. A person who is not an inventor but who is a co-applicant with the inventor must nonetheless obtain assignment of rights from the inventor to enable that person to apply as a co-applicant with the inventor.

    After filing of the patent application it is formally examined by the Patent Office. If all the formal requirements of the Patents Act and Regulations have been complied with, the Registrar 'accepts' the complete specification. The Registrar issues a written notice which gives the date of acceptance of the specification and which contains a statement that on publication of the acceptance in the Patent Journal, the patent concerned shall be deemed to have been sealed and granted as from the date of publication. The acceptance is then advertised in the Patent Journal. The application documents (which have been kept secret by the Patent Office up to this stage) then become open to public inspection. Except under exceptional circumstances, the patent may only be enforced against others 9 months after grant.

    Designs

    The Regulations of the Designs Act provide that, only the proprietor of a design may apply for the registration of the design, the proprietor being:-

    1. the author of the design;
    2. where the author of the design executes the work for another person, the other person for whom the work is so executed;
    3. where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or
    4. where the ownership in the design has passed to any other person, such other person.
      After filing, the design application is formally examined by the Designs Office. If all the formal requirements of the Designs Act and Regulations have been complied with, the Registrar issues a notice of registration which gives the date of registration of the design and which contains a statement that the design is deemed to have been registered as from the effective date of the design application. The registration is then advertised in the official journal. The application documents (which have been kept secret by the Designs Office up to this stage), then become open to public inspection.

    Plant Breeders’ Rights

    The breeder. An application may only be made by a person who –

    • is a citizen of, or is domiciled in, the Republic of South Africa or a convention country (i.e. a UPOV member country) or an agreement country (the USA is the only agreement country); or
    • in the case of a juristic person, has a registered office in the Republic of South Africa or a convention country or an agreement country.

    An application is filed with the Department of Agriculture, Forestry and Fisheries, accompanied by an application form, a technical questionnaire, a power of attorney (if filing is through an agent), an assignment if applicable and proof of payment of the official fees. For ornamental varieties, two colour photographs must be submitted. Plant material must be submitted for evaluation of the variety. Evaluation can be over one or several growing seasons, whereafter a plant breeders’ right is granted if the variety complies with the requirements of the Act.

    Trade Marks

    Any person who has a bona fide intention to use a trade mark in relation to goods or services for the purpose of distinguishing those goods or services from the same goods or services connected in the course of trade with any other person is entitled to apply for the registration of such a mark.

    Once an application is placed on file, it will undergo examination by the Trade Marks Office to determine inherent registrability as well as possible conflict with prior registrations or applications. It takes the Registrar approximately nine to twelve months to respond to a new application. After examination, the Trade Marks Office will either accept, preliminarily refuse or indicate the conditions subject to which the application may be accepted. Once accepted, the application is advertised in the Patent Journal. In the absence of objections by third parties within three months of the advertisement date, the application will proceed to grant and a certificate of registration will be issued.

    An application for a certification trade mark will follow the same procedure set out above, but must be accompanied by an affidavit confirming that the applicant does not trade in the goods or services covered by the application. The rules governing the use of the trade mark should also be submitted. The rules should specify the conditions for use of the mark and the circumstances in which the proprietor may certify the goods or services.

    An application for a collective trade mark must be accompanied by the rules governing the use of such mark. The rules shall specify the persons authorised to use the mark, the conditions of membership of the association and the conditions of use of the mark.

  5. How long does the registration procedure usually take?

    Patents
    About 12-18 months from the South African filing date.

    Designs
    Generally, within 12 months from the South African filing date.

    Plant Breeders’ Rights
    From one to four years.

    Trade Marks
    In the event that the application is not provisionally refused or there are no objections by third parties, the registration procedure may be concluded within 24 to 36 months.

  6. Do third parties have the right to take part in or comment on the registration process?

    Patents and Designs
    There are no pre-grant opposition proceedings provided for in terms of South African patent or design law.

    Plant Breeders’ Rights
    No

    Trade Marks
    Interested third parties may oppose the application once it is advertised for opposition purposes in the Patent Journal.

  7. What (if any) steps can the applicant take if registration is refused?

    Patents

    Currently, the examination by the Patent Office is for formal correctness only. The Registrar will notify the applicant of any failures to comply with the formalities and provide the applicant with three months in which to remedy such defect, or within such period as the Registrar may allow. If the applicant fails to comply with such direction in the time frame required the application will be treated as abandoned.

    Designs

    The examination by the Designs Office is for formal correctness only. The Registrar will notify the applicant of any objections and provide the applicant with six months, or within such period as the Registrar may allow, in which to remedy such defect, or apply for a hearing, or make written representations. Failure by the applicant to do any of the above will result in the application being deemed to have been withdrawn. If, in any hearing before the Registrar, a party does not agree with a decision of the Registrar, he may, within one month of the hearing, for the purposes of appeal, request written reasons for the decision. The party then has three months from the date on which those written reasons are sent, to appeal the decision of the Registrar, or within such period as the Registrar may allow.

    Plant Breeders’ Rights

    The applicant can appeal to the Minister of Agriculture, Forestry and Fisheries, who will refer the appeal to a board appointed by the Minister.

    Trade Marks

    If there is a preliminary refusal or conditional acceptance, an opportunity is afforded for the applicant to make submissions to the Registrar to overcome whatever objections have been raised or to deal with the application otherwise as circumstances may dictate.

  8. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

    Patents

    Failure to pay the renewal fees timeously results in the lapsing of the patent. It is, however, possible to pay renewal fees within an extended period of six months upon payment of the prescribed extension fines. If it is desired to reinstate a patent which has lapsed through non-renewal it is necessary to make application to the Registrar for restoration of the patent. Before restoration of a lapsed patent is ordered, the Registrar must be satisfied that the omission to pay the renewal fee was unintentional, and that no undue delay has occurred in making the application for restoration of the patent.

    Designs

    Failure to pay the renewal fees timeously results in the lapsing of the registration of the design. A six months extension of time is obtainable for paying renewal fees, subject to the payment of a fine. Where registration of a design has lapsed owing to non-payment of any prescribed renewal fee, the registered proprietor may in the prescribed manner and on payment of the prescribed fee, apply to the Registrar for the restoration of such registration. If the Registrar is satisfied that the omission to pay the prescribed renewal fee was unintentional and that no undue delay has occurred in the making of the application, the design may be restored to the register.

    Plant Breeders’ Rights

    The registration lapses after a late renewal grace period of six months. There is no provision for restoration of a lapsed Plant Breeder’s Right.

    Trade Marks

    Failure to pay the renewal fee before the expiry of the registration shall attract an additional fee and failure to pay within six months following the expiration date shall attract a further additional fee. If the renewal fee remains unpaid in the six months following the expiry of the registration the Registrar may advertise the fact of non-payment in the Patent Journal. If payment is not made within 30 days of the advertisement the Registrar may remove the registration from the register. However, the Registrar may upon payment of the renewal fee, together with the additional fee, restore the mark to the register if satisfied that it is just to do so and upon conditions she may think fit to impose.

  9. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Patents

    Unless an assignment is recorded in the register, it is not valid except as between the parties to it. Upon application being made, accompanied by proof of title of an assignment, the assignment will be recorded in the register. The application for recording must be made within six months of the event entitling the applicant to request a recording, but the Registrar may extend this time limit on application bearing the prescribed fee. In general, applications of this kind are granted as a rule.

    Designs

    Unless an assignment is recorded in the register, it is not valid except as between the parties to it. The Registrar will record the assignment in the register against the applicable design registration or application, on application, accompanied by the proof of title of such assignment and on payment of the prescribed fee. The application for recording must be made within six months of the event entitling the applicant to request a recording, but the Registrar may extend this time limit on application bearing the prescribed fee. In general, applications of this kind are granted as a rule.

    Plant Breeders’ Rights

    The holder must, within a period of 30 days from the date of transfer and on payment of the prescribed fee, advise the Registrar of Plant Breeders’ Rights of the name and address of the assignee, and furnish proof that a notice of such transfer has been served on each licensee.

    Trade Marks

    Section 40 of the Trade Marks Act states that the assignee shall make application to record the assignment. In the event that the application is made more than 12 months after the effective date of the assignment, the assignee shall be liable to pay penalty fees.

    Copyright

    No requirement to register.

  10. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3?

    Patents and Designs
    There are no formal requirements for a valid licence agreement insofar as a patent is concerned. There must merely be agreement between the patentee, or an otherwise authorised party, and the licensee, conferring authority on the licensee to carry out one or more of the acts otherwise reserved exclusively for the patentee. The same principles apply to registered designs. Parties have contractual freedom in South Africa.

    Plant Breeders’ Rights
    None, the parties have contractual freedom in South Africa.

    Trade Marks and Copyright
    The relevant Acts do not specify any requirements for a licence. Accordingly, an unwritten licence would be permissible.

  11. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

    Patents and Designs
    There is no general requirement that licences for patents must be registered in order to ensure their validity. However, in order for a licensee to be able to join patent enforcement litigation proceedings, for example, to claim damages, the licence must be registered on the official patent office register. The same principles apply to registered designs.

    Plant Breeders’ Rights
    The Registrar must be notified within 30 days of the issuance of a licence, and must be provided with a copy thereof. Failure to comply appears to have no consequences.

    Trade Marks and Copyright
    There is no obligation to register a licence in terms of the relevant Acts, but it is possible to record a trade mark licensee as a registered user.

  12. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

    Patents and Design Registrations
    No. Only the patentee/design proprietor may institute proceedings for enforcement. A licensee who has been so recorded on the Register can intervene in infringement proceedings and claim damages.

    Plant Breeders’ Rights
    No, only a PBR holder can seemingly enforce a PBR. A licensee, whether exclusive or non-exclusive, can however institute a claim for actual damages.

    Trade Marks
    No. However, an exclusive or non-exclusive licensee can be recorded as a registered user, who shall be entitled to call upon the proprietor/licensor to institute infringement proceedings, and, if the proprietor refuses or neglects to do so within two months after being so called upon, the registered user may institute proceedings in his own name as if he were the proprietor.

    Copyright
    Yes. An exclusive licensee and an exclusive sub-licensee shall have the same rights of action and be entitled to the same remedies as if the licence were an assignment, and those rights and remedies shall be concurrent with the rights and remedies of the owner of the copyright.

  13. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

    Patents and Design Registrations
    No.

    Plant Breeders’ Rights
    No.

    Trade Marks
    There are no criminal sanctions for trade mark infringement, but if the infringement constitutes counterfeiting in terms of the Counterfeit Goods Act 37 of 1997, then there are criminal sanctions for the act of dealing in counterfeit goods.

    A criminal complaint is filed with the Commercial Crime Unit of the South African Police Services. In the case of a first conviction, the person could be liable to a fine in respect of each article involved in the particular act of dealing in counterfeit goods, that may not exceed ZAR5000 per article, or imprisonment for a period not exceeding three years.

    Copyright
    A person who infringes copyright shall be guilty of a criminal offence. A person who is convicted of an offence shall be liable, in the case of a first conviction to a fine not exceeding ZAR5000 or to imprisonment for a period not exceeding three years.

  14. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

    Patents
    Patents are enforced by way of a patent infringement action that is instituted in a specialised Court, namely the Court of the Commissioner of Patents. In practice, the Commissioner is a judge of a particular division of the High Court of South Africa, being appointed per matter. There are no tribunals other than the Court of the Commissioner of Patents available as a Court of first instance. Applications for urgent interim injunctions may be instituted for urgent matters. Alternative dispute resolution or arbitration can also be used.

    Designs
    Actions for infringement of Registered Designs are brought before a High Court having jurisdiction. Applications for urgent interim injunctions may be instituted for urgent matters. Alternative dispute resolution or arbitration can also be used.

    Plant Breeders’ Rights
    Enforcement is through the civil courts. Alternative dispute resolution or arbitration can also be used.

    Trade Marks
    The following options are available for trade mark enforcement:

    • Trade mark infringement proceedings, which are civil proceedings filed in the High Court.
    • Opposition proceedings, which are civil proceedings that are filed with the Tribunal of the Registrar of Trade Marks.
    • Trade mark cancellation proceedings, which are civil proceedings that are filed with the Tribunal of the Registrar of Trade Marks or the High Court.
    • Civil proceedings relating to counterfeit goods are filed in the High Court. Criminal proceedings are filed with the South African Police Services.
    • Domain name dispute resolution in respect of the .co.za domain name extension is filed with the South African Institute of Intellectual Property, which has been appointed as an accredited domain name dispute resolution provider.
    • Advertising complaints are filed with the Advertising Standards Authority, which is an industry body.

    Copyright
    Copyright infringement proceedings may be filed in the High Court as civil proceedings or a criminal complaint may be filed with the South African Police Services. Disputes between copyright licensing bodies may be dealt with by the Copyright Tribunal.

  15. What is the length and cost of such procedures?

    Patents and Designs
    An action for patent infringement typically takes between one and two years from institution to completion of the trial in first instance, depending on whether or not an amendment is applied for during proceedings. Costs will vary depending on the nature and complexity of the matter and whether a junior barrister, a senior barrister, or both, are instructed.

    Plant Breeders’ Rights
    An action for PBR infringement typically takes between one and two years from institution to completion of the trial. The costs will depend on the nature and complexity of the matter and whether a junior barrister a senior barrister, or both, are instructed.

    Trade Marks and Copyright
    The length of civil infringement proceedings can vary as it largely depends on the manner in which it is contested. An uncontested matter could be finalised within six months, but a highly contested matter could take years to be finalised.

    The length of criminal proceedings also varies as it not only depends on whether it is contested, but it is also dependent on the duration of the investigation by the South African Police Services. The cost of both civil and criminal proceedings would be based on the hourly rate of the attorney and barristers involved in the litigation.

  16. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

    Patents

    An infringement action is commenced by the issuance of a combined summons (including a statement of particulars). The defendant must thereafter deliver a notice of intention to defend. After delivery of the notice of intention to defend, the defendant must deliver a plea setting out its defence, for example, non-infringement and invalidity of the patent plus any counterclaim, such as revocation of the patent. The plaintiff must deliver a replication or plea to the counterclaim and thereafter, the defendant must file its replication in reconvention. Specific time periods are prescribed for the aforementioned steps. Once pleadings are closed, each party calls on the other to discover documents that are relevant to any matters in the action. A pre-trial conference is held with both parties as soon as possible after the discovery stage but no later than six weeks before the trial date. If there is an intention to lead expert evidence the parties must, before the trial commences, file a notice of such intention and provide a summary of each expert’s reasoned opinion.

    The parties commence a trial with opening arguments. Thereafter, the witnesses are called for the purposes of oral evidence. This is commenced by examination-in-chief followed by cross examination. The party calling the witness also has an opportunity to re-examine the witness. Expert witness statements providing a summary of the evidence are exchanged between the parties in advance of the trial. At the conclusion of the evidence, both parties submit closing arguments. Usually, in patent matters, the Court is adjourned until a future date for closing arguments and the parties submit written heads of argument in advance of the allocated date.

    A trial usually lasts two to four weeks for complex matters, but for less complex matters, this period could be as short as three to five days. Judgment is usually available fairly soon after conclusion of the trial, for example three to five weeks, but delays can be experienced, depending on the complexity of the matter.

    The plaintiffs may be awarded an interdict, delivery up of any infringing product or any article or product of which the infringing product forms an inseparable part; and damages. In lieu of damages the plaintiff may, at his or her option, be awarded 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 patent concerned.

    There is no automatic right of appeal. A party wishing to appeal a judgment needs to apply to the Court of the Commissioner of Patents for leave to appeal (within 15 days from the date of judgment). If the court is satisfied that there is a reasonable prospect that another court may arrive at a different finding, leave to appeal (usually to the Supreme Court of Appeal) will be granted.

    Designs

    The same procedure applies in actions for design infringement except that the court hearing the actions is the High Court and not the Court of the Commissioner of Patents. The plaintiffs may be awarded an interdict, surrender of any infringing product or any article or product of which the infringing product forms an inseparable part, damages or a reasonable royalty in lieu of damages.

    Plant Breeders’ Rights

    Depending on the amount of damages claimed the Magistrate’s Court or the High Court will have jurisdiction to hear the matter. The area of the Magistrate or High court having jurisdiction will be where the defendant is, inter alia, resident or domiciled, where the cause of action arose or where allegedly infringing material was seized/attached.
    An infringement action is commenced by the issuance of a combined summons (including a statement of particulars). The defendant must thereafter deliver a notice of intention to defend. After delivery of the notice of intention to defend, the defendant must deliver a plea setting out its defence, for example, non-infringement and invalidity of the PBR plus any counterclaim, such as revocation of the PBR. The plaintiff must deliver a replication or plea to the counterclaim and thereafter, the defendant must file its replication in reconvention. Specific time periods are prescribed for the aforementioned steps. Once pleadings are closed, each party calls on the other to discover documents that are relevant to any matters in the action. A pre-trial conference is held with both parties as soon as possible after the discovery stage but no later than six weeks before the trial date. If there is an intention to lead expert evidence the parties must, before the trial commences, file a notice of such intention and provide a summary of each expert’s reasoned opinion.

    The parties commence a trial with opening arguments. Thereafter, the witnesses are called for the purposes of oral evidence. This is commenced by examination-in-chief followed by cross examination. The party calling the witness also has an opportunity to re-examine the witness. Expert witness statements providing a summary of the evidence are exchanged between the parties in advance of the trial. At the conclusion of the evidence, both parties submit closing arguments. Usually, the Court is adjourned until a future date for closing arguments and the parties submit written heads of argument in advance of the allocated date.

    A trial usually lasts two to four weeks for complex matters, but for less complex matters, this period could be as short as three to five days. Judgment is usually available fairly soon after conclusion of the trial, for example three to five weeks, but delays can be experienced, depending on the complexity of the matter.

    The plaintiff may without proof of damages which might arise from infringement, be awarded compensation in respect of infringement in an amount not exceeding R10 000. Alternatively, on proof of damages, the plaintiff may be awarded damages. The court may also make an order in respect of the custody, surrender or disposal of any book, document, plant, propagating material, product, substance or other article.

    There is no automatic right of appeal. A party wishing to appeal a judgment needs to apply to the Magistrate or High Court judge for leave to appeal (within 15 days from the date of judgment). If the court is satisfied that there is a reasonable prospect that another court may arrive at a different finding, leave to appeal will be granted.

    Trade Marks and Copyright

    The High Court has jurisdiction to hear matters of trade mark infringement, copyright infringement proceedings and trade mark cancellation matters. The Applicant will institute such proceedings by way of a notice of motion together with founding evidence.

    The founding papers are served on the Respondent, who will have five court days to file a notice of his intention to oppose the application. If the notice is filed, the Respondent will have a further 15 court days to file his answering papers. Thereafter, the Applicant will have 10 court days to file a reply. Therefore, proceedings are generally conducted by way of documentary evidence, unless there is a dispute of fact, in which case, oral evidence from witnesses are required.

    Once pleadings in an application have closed, the matter may be set down for hearing. South Africa follows a dual-bar system, so a barrister is usually briefed to prepare heads of argument and appear in the High Court to argue the application.

    The length of civil infringement proceedings can vary as it largely depends on the manner in which it is contested. Once the matter has been argued by the barristers, the High Court Judge will generally reserve judgment, which may be handed down at the earliest within a couple of months.

    A judgment from a single High Court Judge may be appealed to the Full Bench of the High Court or to the Supreme Court of Appeal.

  17. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

    Patents and Designs

    The judge is an ordinary High Court judge appointed to sit as the Commissioner of Patents. He/she is not necessarily a technical judge nor does he/she necessarily have technical experience. Each party appoints their own expert witness(es) and bears the onus of proving that their expert is suitably qualified. The same principles apply to registered designs. As mentioned above, discovery is available. The possibility exists for the filing of one or more interlocutory applications relating to further and better discovery, compelling discovery, or inspection. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

    Plant Breeders’ Rights

    The judge is not necessarily a technical judge nor does he/she necessarily have technical experience. Each party appoints their own expert witness(es) and bears the onus of proving that their expert is suitably qualified. There are no court appointed experts. As mentioned above, discovery is available. The possibility exists for the filing of one or more interlocutory applications relating to further and better discovery, compelling discovery, or inspection. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

    Trade Marks and Copyright

    There is no specialised court or technical judge that is appointed. If the civil proceedings are filed by way of application procedure, information is adduced by affidavits and supporting documentation. It is possible to file affidavits from experts.

    If there is a dispute of fact and civil proceedings are filed by way of action procedure, witnesses testify and provide information under oath to the Court. It is possible to furnish oral evidence from an expert witness.

    Discovery of evidence is possible. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

  18. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

    Patents and Designs
    During a trial, cross-examination is available to scrutinise expert witnesses which is almost always employed in practice.

    Plant Breeders’ Rights
    During a trial, cross-examination is available to scrutinise expert witnesses which is almost always employed in practice.

    Trade Marks and Copyright
    In most cases, proceedings are filed by way of application and only documentary evidence is filed. However, in the event that it is necessary to file action proceedings, such as in a case where there is a dispute of fact, oral evidence by witnesses takes place and the witnesses may be cross-examined.

  19. What customs procedures are available to stop the import and/or export of infringing goods?

    Patents and Designs
    None.

    Plant Breeders’ Rights
    The Registrar of PBR’s and an officer of the Department of Agriculture are empowered to carry out inspections and seize any plant, propagating material, substance or other article in respect of which this Act applies. This would extend to areas of export or import within South Africa.

    Trade Marks and Copyright
    Customs procedures are applicable only in respect of counterfeit goods which are dealt with in terms of the Counterfeit Goods Act 37 of 1997. It is possible to record copyright, registered trade marks or well-known trade marks with Customs, who will thereafter detain suspected counterfeit goods imported into South Africa.

  20. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

    Patents and Designs
    Alternative dispute resolution or arbitration may be used but is not mandatory.

    Plant Breeders’ Rights
    Alternative dispute resolution or arbitration may be used but is not mandatory.

    Trade Marks and Copyright
    Alternative dispute resolution or arbitration may be used but is not mandatory.

  21. What options are available to settle intellectual property disputes in your jurisdiction?

    Patents and Designs
    An action or application may be settled at any time before or during the trial/hearing by agreement between the parties.

    Plant Breeders’ Rights
    A dispute may be settled at any time before or during trial by agreement between the parties.

    Trade Marks and Copyright
    A dispute may be settled at any time before or during trial by agreement between the parties.

  22. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?

    Patents

    The patentee must prove that the alleged infringer carried out at least one of the exclusive acts reserved for the patentee, i.e. making, using, exercising, offering to dispose of, disposing of or importing, with respect to an article, method, process etc. which embodies all of the features of at least one of the claims of the patent.

    Documents, exhibits, oral evidence and the like may be relied on as evidence.

    Designs

    The design proprietor must prove that the alleged infringer carried out at least one of the exclusive acts reserved for the registered design proprietor i.e. making, importing, using or disposing in respect of any article included in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design. Documents, exhibits, oral evidence and the like may be relied on as evidence.

    Plant Breeders’ Rights

    A plant breeder's right shall be infringed by any person who –

    (a) not being the holder of the plant breeder's right, performs, or causes to be performed, any of certain prohibited acts without a licence;

    (b) has obtained a licence but fails to comply with any term or condition thereof;

    (c) uses the approved denomination of a protected variety in relation to plants or propagating material of any other variety for any purpose whatsoever; and

    (d) sells plants or propagating material of a protected variety under any other denomination than the approved denomination of that variety.

    The prohibited acts are the following:

    (a) production or reproduction (multiplication);
    (b) conditioning for the purpose of propagation;
    (c) sale or any other form of marketing;
    (d) exporting;
    (e) importing;
    (f) stocking for any of the purposes referred to in paragraphs (a) to (e),
    of –

    (i) propagating material of the relevant variety; or

    (ii) harvested material, including plants, which was obtai
    ned through the unauthorised use of propagating material of the relevant variety.

    Any evidence normally permitted or required in a court of law can be used.

    Trade Marks

    The rights acquired by registration of a trade mark shall be infringed by—

    (a) the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;

    (b) the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion;

    (c) the unauthorised use in the course of trade in relation to any goods or services of a mark which is identical or similar to a trade mark registered, if such trade mark is well known in the Republic and the use of the said mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of confusion or deception.

    The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain the use in the Republic of a trade mark which constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services which are identical or similar to the goods or services in respect of which the trade mark is well known and where the use is likely to cause deception or confusion.

    A certified extract from the register of trade marks certified by the Registrar of Trade Marks and sealed with the seal of his office shall be admitted as evidence to prove a trade mark registration. In order to prove that a trade mark is well-known, evidence needs to be adduced to support that the trade mark is known by a substantial number of persons in the relevant sector of the public.

    Copyright

    Copyright shall be infringed by any person, not being the owner of the copyright, who, without the licence of such owner, does or causes any other person to do, in the Republic, any act which the owner has the exclusive rights to do or to authorise. This is regarded as direct copyright infringement.

    Indirect copyright infringement occurs when any person who, without the licence of the owner of the copyright and at a time when copyright subsists in a work—

    (a) imports an article into the Republic for a purpose other than for his private and domestic use;

    (b) sells, lets, or by way of trade offers or exposes for sale or hire in the Republic any article;

    (c) distributes in the Republic any article for the purposes of trade, or for any other purpose, to such an extent that the owner of the copyright in question is prejudicially affected; or

    (d) acquires an article relating to a computer program in the Republic,

    if to his knowledge the making of that article constituted an infringement of that copyright or would have constituted such an infringement if the article had been made in the Republic.

    Evidence of ownership of copyright is required to be adduced. This could be a difficult evidentiary burden to overcome, especially if it is not possible to obtain an affidavit from the author of the work, confirming that the work is original.

  23. What defences to infringement are available?

    Patents

    Any ground upon which a patent may be revoked may be raised as a defence in infringement proceedings. They are as follows:

    (i) That the patentee is not entitled under section 27 of the Patents Act to apply for the patent;

    (ii) the grant of the patent is in fraud of the rights of the applicant or of any person under or through whom he or she claims;

    (iii) that the invention concerned is not patentable under section 25;

    (iv) the invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to results and advantages set out in the complete specification;

    (v) the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of such invention;

    (vi) the claims of the complete specification concerned are not clear, or fairly based on the matter disclosed in the specification;

    (vii) the prescribed declaration lodged in respect of the application for the patent contains a false statement or representation that is material and that the patentee knew to be false at the time the declaration was made;

    (viii) the application for the patent should have been refused under the terms of section

    36 (i.e. if the application is frivolous on the ground that it claims anything obviously contrary to well established natural laws, or if the invention will encourage offensive or immoral behaviour);

    (ix) the complete specification claims as an invention a microbiological process or a product thereof and that the provisions of section 32(6) have not been complied with (i.e. samples of any micro-organism must be made available before acceptance).

    Designs
    Any ground upon which a design registration may be revoked may be raised as a defence in infringement proceedings. They are as follows:

    (i) that the application for the registration of the design was not made by a person entitled thereto under section 14 (i.e.(a) the author of the design; or (b) where the author of the design executes the work for another person, the other person for whom the work is so executed; or (c) where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person; or (d) where the ownership in the design has passed to any other person, such other person);

    (ii) that the registration of the design is in fraud of the rights of the applicant or of any person under or through whom he claims;

    (iii) that the design in question is not registrable under section 14 (i.e. that in the case of an aesthetic design was not new and original and in the case of a functional design was not new and was commonplace);

    (iv) that the application for the registration of the design contains a false statement or representation which is material and which the registered proprietor knew was false at the time when the statement or representation was made;

    (v) that the application for the registration of the design should have been refused in terms of section 16 (i.e. the application was not made in the prescribed manner).

    Plant Breeders’ Rights

    The Act does not specify particular defences. Any defence on the basis that an act of infringement as set out in question 25 was not performed should however be available. Furthermore, a person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder's right in respect of the variety if he or she –

    (a) resells that propagating material;

    (b) subject to the provisions of the Act, sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;

    (c) uses or multiplies that propagating material in the development of a different variety;

    (d) uses that propagating material for purposes of bona fide research;

    (e) uses that propagating material for private or non-commercial purposes; or

    (f) is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.

    Trade Marks

    A registered trade mark is not infringed by—

    (a) any bona fide use by a person of his own name, the name of his place of business, the name of any of his predecessors in business, or the name of any such predecessor’s place of business;

    (b) the use by any person of any bona fide description or indication of the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of his goods or services, or the mode or time of production of the goods or the rendering of the services;

    (c) the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services;

    (d) the importation into or the distribution, sale or offering for sale in the Republic of goods to which the trade mark has been applied by or with the consent of the proprietor thereof;

    (e) the bona fide use by any person of any utilitarian features embodied in a container, shape, configuration, colour or pattern which is registered as a trade mark;

    (f) the use of a trade mark in any manner in respect of or in relation to goods to be sold or otherwise traded in, or services to be performed, in any place, or in relation to goods to be exported to any market, or in any other manner in relation to which, having regard to any conditions or limitations entered in the register, the registration does not extend;

    (g) the use of any identical or confusingly or deceptively similar trade mark which is registered:

    Provided that paragraph (a) shall not apply to the name of any juristic person whose name was registered after the date of registration of the trade mark: Provided further that the use contemplated in paragraph (a), (b) or (c) is consistent with fair practice.

    Copyright

    Sections 12 to 19 of the Copyright Act of 1978 deal with defences to copyright infringement. These sections state as follows:

    Section 12 - General exceptions from protection of literary and musical works:

    (1) Copyright shall not be infringed by any fair dealing with a literary or musical work—

    (a) for the purposes of research or private study by, or the personal or private use of, the person using the work;

    (b) for the purposes of criticism or review of that work or of another work; or

    (c) for the purpose of reporting current events—

    (i) in a newspaper, magazine or similar periodical; or

    (ii) by means of broadcasting or in a cinematograph film:

    Provided that, in the case of paragraphs (b) and (c) (i), the source shall be mentioned, as well as the name of the author if it appears on the work.

    (2) The copyright in a literary or musical work shall not be infringed by using the work for the purposes of judicial proceedings or by reproducing it for the purposes of a report of judicial proceedings.

    (3) The copyright in a literary or musical work which is lawfully available to the public shall not be infringed by any quotation therefrom, including any quotation from articles in newspapers or periodicals that are in the form of summaries of any such work: Provided that the quotation shall be compatible with fair practice, that the extent thereof shall not exceed the extent justified by the purpose and that the source shall be mentioned, as well as the name of the author if it appears on the work.

    (4) The copyright in a literary or musical work shall not be infringed by using such work, to the extent justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record for teaching: Provided that such use shall be compatible with fair practice and that the source shall be mentioned, as well as the name of the author if it appears on the work.

    (5) (a) The copyright in a literary or musical work shall not be infringed by the reproduction of such work by a broadcaster by means of its own facilities where such reproduction or any copy thereof is intended exclusively for lawful broadcasts of the broadcaster and is destroyed before the expiration of a period of six months immediately following the making of the reproduction, or such longer period as may be agreed to by the owner of the relevant part of the copyright in the work.

    (b) Any reproduction of a work made under paragraph (a) may, if it is of an exceptional documentary nature, be preserved in the archives of the broadcaster, but shall, subject to the provisions of this Act, not be used for broadcasting or for any other purpose without the consent of the owner of the relevant part of the copyright in the work.

    (6) (a) The copyright in a lecture, address or other work of a similar nature which is delivered in public shall not be infringed by reproducing it in the press or by broadcasting it, if such reproduction or broadcast is for an informatory purpose.

    (b) The author of a lecture, address or other work referred to in paragraph (a) shall have the exclusive right of making a collection thereof.

    (7) The copyright in an article published in a newspaper or periodical, or in a broadcast, on any current economic, political or religious topic shall not be infringed by reproducing it in the press or broadcasting it, if such reproduction or broadcast has not been expressly reserved and the source is clearly mentioned.

    (8) (a) No copyright shall subsist in official texts of a legislative, administrative or legal nature, or in official translations of such texts, or in speeches of a political nature or in speeches delivered in the course of legal proceedings, or in news of the day that are mere items of press information.

    (b) The author of the speeches referred to in paragraph (a) shall have the exclusive right of making a collection thereof.

    (9) The provisions of subsections (1) to (7) inclusive shall apply also with reference to the making or use of an adaptation of a work.

    (10) The provisions of subsections (6) and (7) shall apply also with reference to a work or an adaptation thereof which is transmitted in a diffusion service.

    (11) The provisions of subsections (1) to (4) inclusive and (6), (7) and (10) shall be construed as embracing the right to use the work in question either in its original language or in a different language, and the right of translation of the author shall, in the latter event, be deemed not to have been infringed.

    (12) The copyright in a literary or musical work shall not be infringed by the use thereof in a bona fide demonstration of radio or television receivers or any type of recording equipment or playback equipment to a client by a dealer in such equipment.

    (13) An authorization to use a literary work as a basis for the making of a cinematograph film or as a contribution of a literary work to such making, shall, in the absence of an agreement to the contrary, include the right to broadcast such film.

    Section 13 - General exceptions in respect of reproduction of works:

    In addition to reproductions permitted in terms of this Act reproduction of a work shall also be permitted as prescribed by regulation, but in such a manner that the reproduction is not in conflict with a normal exploitation of the work and is not unreasonably prejudicial to the legitimate interests of the owner of the copyright.

    Section 14 - Special exception in respect of records of musical works:

    (1) The copyright in a musical work shall not be infringed by a person (in this section referred to as the “manufacturer”) who makes a record of the work or of an adaptation thereof in the Republic, whether from an imported disc, tape, matrix or otherwise, if—

    (a) records embodying the work or a similar adaptation of the work were previously made in or imported into the Republic for the purposes of retail sale and were so made or imported by, or with the licence of, the owner of the copyright in the work;

    (b) before making the record the manufacturer gave the prescribed notice to the owner of the copyright of his intention to make it;

    (c) the manufacturer intends to sell the record by retail or to supply it for the purpose of resale by retail by another person or to use it for making other records to be so sold or so supplied; and

    (d) in the case of a record which is sold by retail or supplied for the purpose of resale by retail, the manufacturer pays to the owner of the copyright, in the prescribed manner and at the prescribed time, the prescribed royalties.

    (2) Where a record comprises, with or without other material, a performance of a musical work or of an adaptation of a musical work in which words are sung or are spoken that are incidental to, or in association with, the music and no copyright subsists in that work or, if copyright does subsist therein, the conditions specified in subsection (1) are fulfilled in relation to such copyright and—

    (a) the words consist or form part of a literary work in which copyright subsists; and

    (b) the records referred to in subsection (1) (a) were made or imported by or with the licence of the owner of the copyright in that literary work; and

    (c) the conditions specified in subsection (1) (b) and (d) are fulfilled in relation to the owner of that copyright, the making of the record shall not constitute an infringement of the copyright in the literary work.

    (3) For the purposes of this section an adaptation of a work shall be deemed to be similar to an adaptation thereof embodied in a previous record if the two adaptations do not substantially differ in their treatment of the work, either in respect of style or, apart from any difference in number, in respect of the performers required to perform them.

    (4) A manufacturer may for the purposes of paragraph (a) of subsection (1) make the prescribed enquiries in order to ascertain whether the previous records referred to in that paragraph were previously made in or imported into the Republic, and if the owner of the copyright fails to reply to such enquiries within the prescribed period, the said previous records shall be taken to have been made or imported, as the case may be, with the licence of the owner of the copyright.

    (5) The preceding provisions of this section shall apply also with reference to records of a part of a work or an adaptation thereof: Provided that the provisions of subsection (1) shall not apply with reference to—

    (a) a record of the whole of a work or an adaptation thereof unless the previous records referred to in paragraph (a) of that subsection were records of the whole of the work or of a similar adaptation; or

    (b) a record of a part of a work or an adaptation thereof unless the records previously made in or imported into the Republic as contemplated in paragraph (a) of that subsection were of, or included, that part of the work or of a similar adaptation.

    Section 15- General exceptions from protection of artistic works:

    (1) The copyright in an artistic work shall not be infringed by its inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such inclusion is merely by way of background, or incidental, to the principal matters represented in the film, broadcast or transmission.

    (2) The copyright in a work of architecture or in the relevant drawings shall not be infringed by the reconstruction of that work on the same site in the same style as the original.

    (3) The copyright in an artistic work shall not be infringed by its reproduction or inclusion in a cinematograph film or a television broadcast or transmission in a diffusion service, if such work is permanently situated in a street, square or a similar public place.

    (3A) The copyright in an artistic work of which three-dimensional reproductions were made available, whether inside or outside the Republic, to the public by or with the consent of the copyright owner (hereinafter referred to as authorized reproductions), shall not be infringed if any person without the consent of the owner makes or makes available to the public three-dimensional reproductions or adaptations of the authorized reproductions, provided that the authorized reproductions primarily have a utilitarian purpose and are made by an industrial process.

    (4) The provisions of section 12 (1), (2), (4), (5), (9), (10), (12) and (13) shall mutatis mutandis, in so far as they can be applied, apply with reference to artistic works.

  24. Who can challenge each of the intellectual property rights described in questions 1-3?

    Patents and Designs
    Any person may apply for revocation of a patent or design registration.

    Plant Breeders’ Rights
    Any person may object to the grant of a PBR.

    Trade Marks
    Any “interested person” may challenge a trade mark registration and this has been held by the courts to mean any person with a genuine and legitimate competitive interest in the trade to which the trade mark relates.

  25. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

    Patents and Designs

    Revocation of a patent may be applied for any time after its grant and revocation of a design registration, any time after publication of registration.

    Plant Breeders’ Rights

    Any person may object to the grant of a PBR.

    Trade Marks

    A trade mark opposition may be filed within three months after a trade mark application is advertised for opposition purposes. Extensions of the opposition term are possible.

    A registered trade mark may be cancelled at any stage during the subsistence of a trade mark registration in the event of non-insertion in or omission from the register of any entry, or of an entry wrongly made in or wrongly remaining on the register, or of any error or defect in any entry in the register, any interested person may apply to the court or, at the option of the applicant to the registrar, for the desired relief, and thereupon the court or the registrar, as the case may be, may make such order for making, removing or varying the entry as it or he may deem fit.

    A registered trade mark may, on application to the court, or, at the option of the applicant to the registrar by any interested person, be removed from the register in respect of any of the goods or services in respect of which it is registered, on the ground either—

    1. that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or any person permitted to use the trade mark, and that there has in fact been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof or any person so permitted for the time being up to the date three months before the date of the application; or
    2. that up to the date three months before the date of the application, a continuous period of five years or longer has elapsed from the date of issue of the certificate of registration during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof or any person permitted to use the trade mark during the period concerned; or
    3. subject to such notice as the court or the registrar, as the case may be, shall direct, and subject to the provisions of the regulations, that, in the case of a trade mark registered in the name of a body corporate, or in the name of a natural person, such body corporate was dissolved, or such natural person died, not less than two years prior to the date of the application and that no application for registration of an assignment of such trade mark has been made.
  26. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

    Patents and Designs
    Like patent infringement actions, patent revocation proceedings are instituted in the Court of the Commissioner of Patents. The defences listed above that may be raised in patent infringement proceedings may be relied on in revocation proceedings. The same principles apply to registered designs except that revocation applications are instituted in the High Court.

    Plant Breeders’ Rights
    An objection must be in writing, is made to the Registrar of Plant Breeders’ Rights and requires payment of a prescribed fee. The Registrar may appoint one or more persons who have experience in the administration of justice or skill in the matter under consideration, to assist and advice the Registrar at the hearing. Summons may be issued and witnesses may be called. Legal representation is allowed. The Act does not specify the grounds for objection, but presumably the grounds would include that the variety did not comply with any of the requirements for the grant of a PBR as set out in section 20 of the Act.

    Trade Marks
    Opposition proceedings are filed with the Tribunal of the Registrar of Trade Marks. Cancellation proceeding may be filed before the Tribunal of the Registrar of Trade Marks or the High Court. The grounds of opposition and cancellation proceedings are set out below.

    The following marks shall not be registered as trade marks or, if registered, shall be liable to be removed from the register:

    1. mark which does not constitute a trade mark;
    2. a mark which—

      (a) is not capable of distinguishing; or

      (b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services; or

      (c) consists exclusively of a sign or an indication which has become customary in the current language or in the bona fide and established practices of the trade;

    3. a mark in relation to which the applicant for registration has no bona fide claim to proprietorship;
    4. a mark in relation to which the applicant for registration has no bona fide intention of using it as a trade mark, either himself or through any person permitted or to be permitted by him to use the mark;
    5. a mark which consists exclusively of the shape, configuration, colour or pattern of goods where such shape, configuration, colour or pattern is necessary to obtain a specific technical result, or results from the nature of the goods themselves;
    6. a mark which, on the date of application for registration thereof, or, where appropriate, of the priority claimed in respect of the application for registration thereof, constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark and which is used for goods or services identical or similar to the goods or services in respect of which the trade mark is well-known and where such use is likely to cause deception or confusion;
    7. a mark the application for registration of which was made mala fide;
    8. (a) mark which consists of or contains the national flag of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of the competent authority of the Republic or convention country, as the case may be, unless it appears to the registrar that use of the flag in the manner proposed is permitted without such authorization;

      (b) a mark which consists of or contains the armorial bearings or any other state emblem of the Republic or a convention country, or an imitation from a heraldic point of view, without the authorization of the competent authority of the Republic or convention country, as the case may be;

      (c) a mark which consists of or contains an official sign or hallmark adopted by the Republic or a convention country, or an imitation from a heraldic point of view, and which indicates control and warranty, in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorization of the competent authority of the Republic or convention country, as the case may be;

      (d) a mark which consists of or contains the flag, the armorial bearings or any other emblem, or an imitation from a heraldic point of view, or the name, or the abbreviation of the name, of any international organization of which one or more convention countries are members, without the authorization of the organization concerned, unless it appears to the registrar that use of the flag, armorial bearings, other emblem or imitation or the name or abbreviation in the manner proposed, is not such as to suggest to the public that a connection exists between the organization and the mark, or is not likely to mislead the public as to the existence of a connection between the organization and the proprietor of the mark.

    9. a mark which contains any word, letter or device indicating State patronage;
    10. a mark which contains any mark specified in the regulations as being for the purposes of this section a prohibited mark;
    11. a mark which consists of a container for goods or the shape, configuration, colour or pattern of goods, where the registration of such mark is or has become likely to limit the development of any art or industry;
    12. a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons;
    13. a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion;
    14. a mark which is identical to a registered trade mark belonging to a different proprietor or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which such trade mark is registered, would be likely to deceive or cause confusion, unless the proprietor of such trade mark consents to the registration of such mark;
    15. a mark which is identical to a mark which is the subject of an earlier application by a different person, or so similar thereto that the use thereof in relation to goods or services in respect of which it is sought to be registered and which are the same as or similar to the goods or services in respect of which the mark in respect of which the earlier application is made, would be likely to deceive or cause confusion, unless the person making the earlier application consents to the registration of such mark;
    16. a mark which is the subject of an earlier application as contemplated in paragraph
    17. if the registration of that mark is contrary to existing rights of the person making the later application for registration as contemplated in that paragraph;
    18. a mark which is identical or similar to a trade mark which is already registered and which is well-known in the Republic, if the use of the mark sought to be registered would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark, notwithstanding the absence of deception or confusion, unless the proprietor of such trade mark consents to the registration of such mark.
  27. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licences of right?

    Patents
    A patentee may apply to the Registrar of Patents for a patent to be endorsed ‘licences of right’. If granted, any person who wants a licence will be entitled to one as of right. Compulsory licences for patents are also available on application to the Commissioner.

    Designs
    Compulsory licenses for design registrations are available on application to a High Court.

    Plant Breeders’ Rights
    Compulsory licences can be granted by the Registrar under certain circumstances. Declaratory relief provided by a court should also be available.

    A person who procured any propagating material of a variety in a legitimate manner shall also not infringe the plant breeder's right in respect of the variety if he or she –

    1. resells that propagating material;
    2. subject to the provisions of the Act, sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;
    3. uses or multiplies that propagating material in the development of a different variety;
    4. uses that propagating material for purposes of bona fide research;
    5. uses that propagating material for private or non-commercial purposes; or
    6. is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.

    Trade Marks
    A trade mark registration may be partially cancelled and the specification of goods/services may be restricted. A trade mark registration may be limited by recording a disclaimer against certain elements of the trade mark.

  28. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?

    Patents and Designs
    Urgent and non-urgent interim injunctions, final injunctions. See Q18 above for other remedies.

    Patents
    A patentee may apply to the Registrar of Patents for a patent to be endorsed ‘licences of right’. If granted, any person who wants a licence will be entitled to one as of right. Compulsory licences for patents are also available on application to the Commissioner.

    Designs
    Compulsory licenses for design registrations are available on application to a High Court.

    Plant Breeders’ Rights
    Without proof of damages, the holder of a plant breeders’ right can recover by action monetary compensation up to a certain amount. A holder can also institute a claim for actual damages. A competent court can make an order in respect of custody, surrender or disposal of any book, document, plant propagating material, product, substance or other article, in addition to any other remedy which it deems fit.

    Trade Marks
    Where a trade mark registered in terms of this Act has been infringed, any High Court having jurisdiction may grant the proprietor the following relief, namely—

    1. an interdict;
    2. an order for removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, an order that all such material be delivered up to the proprietor;
    3. damages, including those arising from acts performed after advertisement of the acceptance of an application for registration which, if performed after registration, would amount to infringement of the rights acquired by registration; and
    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, including any use which took place after advertisement of the acceptance of an application for registration and which, if taking place after registration, would amount to infringement of the rights acquired by registration.

    For the purposes of determining the amount of any damages or reasonable royalty to be awarded, the court may direct an enquiry to be held and may prescribe such procedures for conducting such enquiry as it may deem fit.

    Copyright
    The remedies for infringement of copyright include an interdict, damages, delivery of infringing copies or plates used or intended to be used for infringing copies. In lieu of damages the plaintiff may, at his or her option, be awarded an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee in respect of the work or type of work concerned.

  29. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

    Patents and Designs
    See Q17 above. Generally around 20% to 40% of a successful party’s costs may be recovered from the unsuccessful party. There is no requirement for a party to provide security for costs in the absence of a request from the other party. However, in certain circumstances a party may apply to court and be awarded security for costs.

    Plant Breeders’ Rights
    Generally around 20% to 40% of a successful party’s costs may be recovered from the unsuccessful party. There is no requirement for a party to provide security for costs in the absence of a request from the other party. However, in certain circumstances a party may apply to court and be awarded security for costs.

    Trade Marks and Copyright
    The costs would depend on whether the matter is contested or not and is based on the hourly rate of the attorney and advocates involved in the litigation. A successful party is entitled to recover a portion of the actual costs incurred in litigation. Security for costs may be requested in the case of a foreign litigant.