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Business brief 2016: South Africa

20-05-2016

Danie Pienaar and Eben van Wyk

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 the assessment of patentability and drafting of the patent specification. 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 of obtaining a patent, and what are the costs of defending it?

The cost of drafting patent specifications typically ranges from R16,000 ($1,117) to R25,000, depending on the complexity of the invention.

Where foreign patent protection is concerned, the cost may be anything between R22,000 and R140,000, depending on the country, length of the specification, foreign associates charges, etc.

Depending on the nature of patent litigation, costs could range between R1 million and R2.5 million.

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

Information can be obtained from the paper patent records or the Companies and Intellectual Property Commission.

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 currently 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.

There is a nine-month moratorium after the grant of a patent, during which proceedings typically may not be brought against an alleged infringer.

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?

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.

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 do they grant?

In order to secure statutory trademark rights, the mark must be registered. Common law rights can also be acquired through use of the mark which establishes a reputation. Registered trademark rights entitle the proprietor to restrain the use of another mark that is either identical or confusingly similar to the registered mark in relation to goods and services that are the same as, or similar to, the goods and services covered by the protected mark.

Where a registered mark is also well-known in South Africa the proprietor can, even in the absence of confusion, restrain use of a confusingly similar mark if the use thereof would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the registered mark.

 

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

Separate trademark applications must be filed for each class of interest. The costs depend on the number of classes in which applications for registration are filed. If no difficulties are experienced in the registration process, the total costs are approximately R8,000 per class. The costs associated with trademark opposition or infringement proceedings, which are defended and require a formal hearing, are generally R100,000 to R600,000.

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. Generally, all contentious matters have as their first step the sending of a cease-and-desist letter. It is also recommended to conduct a trade investigation prior to instituting proceedings so as to determine as far as possible the use of the infringing mark and, importantly, the date of first use.

What are the most common mistakes trademark owners make?

Many applicants believe their trademarks are registered by simply filing applications for registration, only to realise later that they have not yet acquired registered rights. It takes approximately 24 to 36 months from the date of application for a trademark application to proceed to registration. Trademark owners should 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 by, for example, using the mark in a descriptive manner.

"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."

Have there been any changes to the trademark 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 owners in your jurisdiction?

Copyright owners bear the onus of proving subsistence of copyright in protectable works. Copyright may be assigned only by way of a written agreement signed by the assignor.

How should people ensure they are protected against copyright infringement?

The copyright owner should be proactive in frequently conducting investigations to identify possible infringements. It is advisable to 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?

A formal cease-and-desist letter should be sent to the alleged infringer. In the absence of a favourable response, appropriate relief should be sought from the High Court of South Africa by way of an injunction. The costs associated with infringement proceedings, which require formal litigation, are generally R150,000 to R650,000.

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

A draft Copyright Amendment Bill has been published for comment. The bill has been widely criticised by academics and practitioners alike and is unlikely to come into force within the next year. It seeks to introduce extensive changes to copyright legislation.

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 on the increase in recent years and the demand for such goods has been further fuelled by the economic climate.

What industries are particularly at threat?

Clothing, footwear, eyewear and cigarettes, although counterfeiting is not a problem that is limited to a particular class or type of goods. Anything from motor parts, medicines and cosmetics to perfumes can be, 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. Education programmes aimed at the public, focusing on the potential hazards of counterfeit goods and the costs of counterfeiting to society as a whole, are also run in conjunction with other brand custodians.

Danie Pienaar is a partner at Spoor & Fisher. He specialises in drafting patent specifications, and filing and prosecuting local and foreign patent applications and industrial designs. He can be contacted at: d.pienaar@spoor.com

Eben van Wyk is a partner at Spoor & Fisher and specialises in IP litigation, advertising law and domestic and international trademark registration and searches. He can be contacted at: e.vanwyk@spoor.com 

Danie Pienaar, Eben van Wyk, Spoor & Fisher, copyright, patent, trademark, IPC,

WIPR

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