1 June 2014Jurisdiction reportsDanie Pienaar and Herman Blignaut

Business brief 2014: South Africa

Patents

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

The patent specification will then be lodged, in accordance with a strict timeline, in countries where protection is required. In terms of coverage, patent applicants typically consider business requirements and costs.

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

Spoor & Fisher offers very competitive rates for the drafting of patent specifications, ranging from R13,000 ($1,400) to R25,000 ($2,800). Preparation cost is dependent on the type of invention and more complex inventions will necessitate higher fees.

Where foreign patent protection is concerned, the cost may be anything between R18,000 ($2,000) and R120,000 ($13,300), depending on the country, length of the specification, foreign associates charges, etc. Prosecution costs should be expected in each country after filing the application.

Depending on the nature of patent litigation, costs could range between R800,000 ($90,000) and R2 million ($225,000).

Where can you find information on existing patents in your jurisdiction?

Information can be obtained from the paper patent records or the website of the Companies and Intellectual Property Commission (CIPC):
http://patentsearch.cipc.co.za/patents/patent.aspx. For cross-checking results, we propose that Spoor & Fisher oversees CIPC searches.

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

South Africa is a non-examining patent office, with no substantive assessment being done by our patent office. The onus is on the patentee to ensure that the patent is valid and enforceable. Amendment is possible before and after grant of the patent.

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. Common mistakes include the disclosure of an invention prior to filing a patent application.

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

Infringement: if there is suspicion that a third party is infringing your patent, a patent attorney should be consulted without delay. A non-threatening letter (Section 70 letter) can be sent to the alleged infringer.

Revocation: proceedings can be brought against a patent by a third party in order to revoke the patent.

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, the mark must be registered. Common law rights are acquired through use.

“Copyright owners bear the onus of proving subsistence of copyright in protectable works. It frequently happens that infringement takes place without the owner’s knowledge.”

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?

The cost of registering a trademark varies depending on the requirements subject to which the Registrar of Trade Marks may be willing to accept an application 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 $900 to $1150.

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, and what is the best strategy for dealing with infringement?

The best strategy will differ from case to case, eg, infringement proceedings to be dealt with in the High Court, domain name objections before the relevant domain dispute resolution authority, company name objections before the Companies Tribunal 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 or other appropriately worded letter of demand.

What are the most common mistakes trademark owners make?

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 ten 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.

Have there been any changes to the trade mark laws in the last 12 months?

Draft legislation introducing the concept of ‘traditional knowledge’ into the Trade Marks Act has been approved by parliament, but is not yet in force.

Copyright

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

Copyright owners bear the onus of proving subsistence of copyright in protectable works. It frequently happens that 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 thereof. 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 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. Copyright litigation is generally technical and expensive.

Have there been any changes to the copyright laws in the last 12 months?

Draft 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. The prevalence of counterfeit goods in the South African market has been on the increase in recent years and the demand for such goods has been further fuelled by the recent recession.

What industries are particularly at threat?

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 and is being illegally manufactured and sold.

What are the best strategies for dealing with the problem?

It is unrealistic to expect Customs to seize all counterfeit goods that enter South Africa. Spoor & Fisher’s anti-counterfeiting team regularly conducts search and seizure operations in the market place. As a strategy, we focus on warehousing and storage facilities as primary targets.

Danie Pienaar is a senior associate at Spoor & Fisher. He can be contacted at: d.pienaar@spoor.com

Herman Blignaut is a partner at Spoor & Fisher. He can be contacted at: h.blignaut@spoor.com

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk