South Africa: IP Business Brief

Last Updated: 28 June 2011
Article by Christel Wolmarans and Herman Blignaut

Trademarks

How do you register or secure trademark rights, and what protection does it grant?

Trademark rights can be divided into two categories, namely statutory rights and rights afforded by common law. In order to secure statutory trademark rights, a trademark proprietor must register its mark as a trademark with the Companies and Intellectual Property Registration Office (CIPRO). Statutory rights are the strongest rights that can be secured in a trademark and lay the basis for the most effective and least expensive way of enforcing rights in a mark. Common law rights are acquired through the actual use of a trademark, namely the reputation, goodwill and general association that develop over a period of time.

Trademark rights enable the proprietor thereof to prevent any unauthorised party from using a trademark that is either identical or confusingly similar to the protected mark in relation to goods and services that are the same as or similar to the goods and services for which the protected mark has been registered. Owners of registered marks who can show their marks to be well known in the Republic are entitled to an even wider ambit of protection.

What are the costs for registering a trademark, and what are the costs of defending it?

Spoor & Fisher offers competitive rates in assisting clients with trademark registration. The cost of registering a trademark generally varies depending on the requirements subject to which the Registrar of Trade Marks may be willing to accept an application for registration or a possible opposition to the registration by a third party. If no difficulties are experienced in the registration process, the total costs are likely to be in the region of R5,500 to R6,500 ($800 to $950).

All costs relating to the enforcement of a trademark will vary on a case-by-case basis. There are a number of variables such as the specific choice of attorneys and counsel, their hourly tariffs and input of time required to deal with a matter.

What are the key threats to trademark owners (counterfeiting, passing-off, online infringement, etc.), and what is the best strategy for dealing with infringement?

A variety of scenarios can arise that may require a trademark owner to enforce its rights. These include:

  • Infringement / passing-off type matters whereby an unauthorised party uses an offending mark that is likely to create confusion or deception in the trade (this includes anti-counterfeiting)
  • The use and/or registration of an offending domain name by an unauthorised party
  • The registration of a company or close corporation name where an identical or confusingly similar trademark is already registered in the name of another party, and
  • Trademark oppositions.

The best strategy will differ from case to case, for example, infringement proceedings are dealt with in the High Court, domain name objections before the relevant domain dispute resolution authority, company and close corporation name objections before the Registrar of Companies and Close Corporations, and trademark oppositions before the Registrar of Trade Marks. Generally, all contentious matters have as their first step the sending of a cease and desist letter or other appropriately worded letter of demand.

What are the most common mistakes trademark owners make?

There are a number of common mistakes. The registration of a trademark is a long and technical exercise. Many applicants believe that their trademarks are registered by simply filing applications with CIPRO, only to realise later that they have not yet acquired registered rights. It is important to maintain control over a trademark portfolio, to ensure that registered marks are renewed every 10 years and that the details recorded on the register of trademarks are updated whenever changes take place.

Trademark owners should also ensure that the specific manner in which they are using their trademarks is correct and that they are not through their own doing causing their mark to lose its distinctiveness. Also, where trademark owners become aware of a third party using their protected mark in a generic manner, such use must be objected to.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Copyright owners are required to bear the heavy onus of proving the subsistence of copyright in protectable works, if and when necessary. By the very nature of copyright and the manners in which it can be infringed, it frequently happens that copyright infringement takes place without the owner's knowledge. Having knowledge of infringement is naturally important in that steps to remedy it can generally only be taken if the copyright owner is aware. It is notoriously easy to infringe copyright and South Africa is no exception.

How should people ensure they are protected against copyright infringement?

No formalities exist for the acquisition of copyright. Protection will subsist automatically in the event that the owner fulfils certain basic requirements. It is important for the copyright owner to be proactive in frequently conducting investigations to identify possible infringements. It is advisable to conduct awareness campaigns on copyright in the work that prohibit, for example, the unauthorised reproduction of that work. As a start, one can apply the universal copyright symbol (©) to a work.

What is the best way to deal with infringement, and what are the costs associated with it?

In most cases, a formal cease and desist letter must be sent to the alleged infringer in which the copyright owner asserts its rights and provides the infringer with an opportunity to cease its offending conduct voluntarily. In the absence of a favourable response or an outright rejection of the copyright owner's demands, the only alternative is to seek appropriate relief from the High Court, e.g. an interdict, delivery up and/or damages (in lieu of a reasonable royalty). Copyright litigation is generally technical and expensive.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Counterfeiting is a big problem in South Africa and an offence that occurs daily. However, South Africa has in place effective legislation and enforcement authorities to deal with counterfeiting. In this regard, the Counterfeit Goods Act provides the possibility to obtain and execute search and seizure warrants for counterfeit goods in terms of which illicit goods can be removed from the market very quickly. There are generally three government departments involved in the combat against counterfeit goods: customs, the South African Police Service and the Department of Trade and Industry.

What industries are particularly at threat?

Counterfeiting affects industry in general. Clothing, footwear and headgear are goods most commonly infringed. Illicit sound recordings and films as well as fragrances also frequently find their way into the market.

What are the best strategies for dealing with the problem?

Fundamental to the enforcement of rights in terms of the Counterfeit Goods Act is knowing where to go and who to speak with. Spoor & Fisher has well-established relationships with customs, the police and the Department of Trade and Industry, all of which help monitor the market, detain goods and assist with search and seizure warrants.

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

You should consult with a patent attorney who will prepare a patent specification, provided your invention is deemed inherently patentable. The patent specification will then be lodged, in accordance with a strict timeline, in those countries where patent protection is required, bearing in mind that patent rights are national rights. Coverage is typically dependent on the business requirements of the patentee and cost restrictions.

What are the costs for obtaining a patent, and what are the costs of defending it?

The cost to prepare and file a provisional patent application in South Africa typically ranges between R12,000 ($1,750) and R25,000 ($3660), while the cost of a PCT or a foreign application ranges between R15,000 ($2,200) and R75,000 ($11,000), depending on the country, length of the specification, foreign associates charges, etc.

Depending on the nature of patent litigation, costs could range between R700,000 ($100,000) and R1.5 million ($220,000).

Where can you find information on existing patents in your jurisdiction (i.e. online database, patent office request, etc.)?

Information can be found on the CIPRO website: http://patentsearch.cipro.gov.za/home/default. aspx. Alternatively or in addition, a manual search may need to be conducted through the paper records of the patent office. Status information in relation to patents can be obtained on request from a local patent attorney.

Is there anything unusual about the patent law that companies should be aware of—what are the most common mistakes businesses make?

There is a nine-month moratorium after the grant of a patent, during which proceedings typically may not be brought against an alleged infringer. There is no extension of the patent term in South Africa. The most common mistake is the disclosure of an invention prior to filing a patent application, thereby destroying the invention's novelty and patentability.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Infringement is a key threat. If you suspect someone is infringing your patent, speak to a patent attorney, who will send a non-threatening letter (known as a section 70 letter) to the alleged infringer in order to make them aware of the patent rights.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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