25 May 2017Jurisdiction reportsDanie Pienaar and Eben van Wyk

Business brief 2017: 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 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 for obtaining a patent, and what are the costs of defending it?

The cost of drafting patent specifications typically ranges from $1,300 to $2,300. Where foreign patent protection is concerned, the cost may be anything between $1,800 and $12,000. Depending on the nature of patent litigation, costs could range between $90,000 and $230,000.

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?

South Africa is currently a non-examining country, with no substantive assessment being done by our patent office. 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 does it grant?

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 of the mark to restrain 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 in respect of which the protected mark has been registered.

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

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

Separate trademark applications must be filed for each class of interest. The costs associated with registering a trademark 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 $694 per class. The costs associated with trademark opposition or infringement proceedings, which are defended and require a formal hearing, are generally $10,000 to $50,000.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

Examples of threats include infringement and/or passing off where a third party makes unauthorised use of an offending mark which is likely to cause deception and confusion in the trade, the registration of a company name which is identical or confusingly similar to the trademark owner’s trademark, the registration of an abusive domain name registration, etc.

The best strategy is case dependent. Generally, all contentious matters have as their first step the sending of a cease-and-desist letter. It is also sometimes recommended to conduct a trade investigation prior to instituting proceedings so as to determine the use of the infringing matter and the date of first use.

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