Business brief 2017: South Africa

25-05-2017

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 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.

"If there is suspicion that a third party is infringing your patent, a patent attorney should be consulted without delay."

What are the most common mistakes trademark owners make?

Many applicants mistakenly believe their trademarks are registered by simply filing applications for 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. Trademark owners must also ensure that their registered marks are renewed every ten years. 

Have there been any changes to the trademark law(s) in the last 12 months?

There have been no specific changes to trademark legislation in the last 12 months. However, some interesting judgments have been handed down. The Supreme Court of Appeal ruling in Cochrane Steel Products v M-Systems Group provided clarity on the use of a competitor’s trademark as a Google AdWord. There is no likelihood of deception or confusion where an advertiser uses a competitor’s trademark as a Google AdWord and the advertisement itself must be considered to determine if there is a likelihood of confusion.

Are there any nuances in the trademark law(s) that foreign companies should be aware of?

Separate trademark applications must be filed for each class of interest. South African trademark law further makes provision for the endorsement of an ‘admission’ against a trademark registration where a trademark consists of a misspelling of a word which would otherwise have been required to be disclaimed. The correct spelling of the word must be admitted.

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. Demand for such goods has been further fuelled by the economic climate. South Africa often also serves as a port of entry for counterfeit goods.

What industries are particularly at threat?

Counterfeiting is not a problem that is limited to a particular class or type of goods.

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 are helpful. 

How can public-private partnerships to tackle counterfeiting be improved?

This can be improved by frequently conducting training sessions with customs officials regarding how to identify suspicious activity, counterfeit goods and the process to follow once such goods have been identified. 

Copyright

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

Copyright litigation is technical and expensive. Copyright owners bear the onus of proving subsistence of copyright in protectable works. It is very common for infringement to take place without the owner’s knowledge.

How should people ensure they are protected against copyright infringement?

Copyright is an automatic right but 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?

A formal cease-and-desist letter should be filed. In the absence of a favourable response, appropriate relief should be sought from the High Court of South Africa by way of an interdict, delivery up and/or damages (in lieu of a reasonable royalty).

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

A Copyright Amendment Bill has been put to parliament. It seeks to introduce extensive changes to copyright legislation. 

Other

Are there any other IP developments we should know about?

The .africa top-level domain (TLD) name will be launched in 2017. Proposed amendments to domain name regulations for country-code TLDs in South Africa were published.

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

South Africa, copyright, copyright trademark, Danie Pienaar and Eben van Wyk

WIPR