BUSINESS BRIEF: SOUTH AFRICA
What are the most common mistakes trademark owners make?
Te registration of a trademark is a long and technical exercise. Many applicants believe their trademarks are registered by simply filing applications with CIPC, 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.
Has there been any change to the trademarks law in the last 12 months?
Draſt legislation 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. 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. It is advisable to conduct awareness
www.worldipreview.com introducing the concept of
‘traditional knowledge’ into the Trade Marks Act has been approved by Parliament, but is not yet in force.
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?
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, eg, an interdict, delivery up and/or damages (in lieu of a reasonable royalty). Copyright litigation is generally technical and expensive.
Have there been any changes to the copyright laws in the last 12 months?
Draſt legislation introducing the concept of ‘traditional knowledge’ into the Copyright Act has been approved by Parliament, but is not yet in force.
Counterfeiting
How big a problem is counterfeiting in your jurisdiction? Counterfeit goods have become a major cause for concern and threat to the South African economy as well as IP holders.
What industries are particularly at threat? When one hears the term ‘counterfeit goods’, certain goods automatically come to mind, namely clothing, footwear, eyewear and optical discs. However, counterfeiting is not a problem that is limited to a particular class or type of goods. Anything from motor parts, medicines, cosmetics, clothing, footwear and perfumes to food items can be, and is being, illegally manufactured and sold. We have assisted our clients against the trade in a variety of other counterfeit goods including counterfeit baked beans, washing powder,
Tyron Grant (above leſt) specialises in patent law, and has a genetics and biochemistry background. Grant is a member of the South African Institute of IP Law.
Herman Blignaut (above right) specialises in trademark enforcement (brand protection), copyright and unlawful competition matters. Blignaut is a fellow of the South African Institute of IP Law.
World Intellectual Property Review Annual 2013 129
dishwashing liquid, diabetic test strips, maize meal, glycerine and razor blades.
What are the best strategies for dealing with the problem?
Our clients rely on the services of our anti- counterfeiting department to assist them in acting against perpetrators engaged in acts of dealing in counterfeit goods. In practice, we develop strategies for our clients relating to goods being imported into South Africa. We appreciate that it is unrealistic to expect Customs to seize all counterfeit goods that enter South Africa. Our anti-counterfeiting team regularly conducts search and seizure operations in the marketplace. As a strategy, we focus on warehousing and storage facilities as primary targets.
Tyron Grant is a partner at Spoor & Fisher. He can be contacted at:
t.grant@
spoor.com
Herman Blignaut is a partner at Spoor & Fisher. He can be contacted at:
h.blignaut@spoor.com
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