Business brief 2015: South Africa

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

A patent attorney should be consulted to assist with assessing patentability and drafting the patent specification. The 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 of obtaining a patent, and what are the costs of defending it?

Depending on the nature of patent litigation, costs could range between ZAR800,000 ($66,500) and ZAR2 million.

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): www.patentsearch.cipc.co.za/patents/patent.

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

South Africa has a non-examining patent office, meaning no substantive assessment is done there. The onus is on the patentee to ensure the patent is valid and enforceable. Amendment is possible before and after grant.

There is a nine-month moratorium after a patent is granted, during which proceedings typically cannot be brought against an alleged infringer. There is no extension of the patent term in South Africa. Common mistakes include disclosing an invention before 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?

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

Second is revocation: proceedings can be brought against a patent by a third party in order to revoke it.

Trademarks
How do you register or secure trademark rights, and what protection do they grant?

Trademark rights can be divided into two categories: statutory rights and rights afforded by common law. In order to secure statutory rights, the mark must be registered. Common law rights are acquired through use.

Trademark rights enable the proprietor to prevent any unauthorised party from using a trademark that is either identical or confusingly similar to the protected mark in relation to its registered goods and services. Owners of registered marks that can show their marks are well-known in South Africa are entitled to wider protection.

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

Registration costs vary depending on the requirements that the registrar of trademarks may be willing to accept for an application or a possible opposition to it by a third party. If no difficulties are experienced in the registration process, the total costs are likely to be in the region of ZAR 10,800 to ZAR 13,800.

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 within the High Court of South Africa, domain name objections before the relevant domain name dispute resolution authority, company name objections before the Companies Tribunal and trademark oppositions before the registrar of trademarks.

"Copyright owners bear the onus of proving existence of copyright in protectable works. Often, infringement takes place without the owner’s knowledge."

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 that trademark owners make?

Many applicants believe their trademarks are registered by simply filing applications with the 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 trademark law(s) 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 owners in your jurisdiction?

Copyright owners bear the onus of proving existence of copyright in protectable works. Often, infringement takes place without the owner’s knowledge. Having knowledge of infringement is naturally important. 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 using copyright to prohibit, for example, unauthorised reproductions. As a start, one can apply the universally recognised © 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 law(s) in the last 12 months?

As with trademarks, 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 owners. The prevalence of counterfeit goods in the South African market has been increasing 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 be, and are being, illegally manufactured and sold.

Danie Pienaar is a senior associate at  Spoor & Fisher. He specialises in patent and design law, particularly in the fields of electronic and computer related inventions. He can be contacted at: d.pienaar@spoor.com

Herman Blignaut is a partner at Spoor & Fisher. He specialises in trademark enforcement (brand protection), copyright and unlawful competition matters. He is a fellow of the South African Institute of IP Law. He can be contacted at: h.blignaut@spoor.com