s p o o r & f i s h e r enforcement of intellectual property rights in south africa: the...

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ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS IN SOUTH

AFRICA: THE COUNTERFEIT GOODS ACT

Mohamed KhaderSpoor & Fisher

November 2005

www.spoor.com

Intellectual Property Bundle of Rights

• Trade Marks

• Copyright

• Design

• Patents

Trade Marks Act 194 of

1993

Trade Marks

What is a “trade mark”?

Commercial symbol or “sign”

Used on both products and services

Trade Marks Act No. 194 of 1993

Trade Marks

Word or words

Slogans

Logos

Shapes

Colours

Finger licking good / Simple Better Faster

Trade Marks

Trade Marks

Trade Marks

Why are trade marks classed as “intellectual property”?

Products of human creativity

Products of successful innovation

Incorporeal assets which can be sold, licensed or given as security

Assets of substantial value

Trade Marks

Why have trade marks?

To indicate origin/connection with owner

To guarantee quality

Sign of manufacturer’s acceptance of responsibility

Vehicles of advertising

TO DISTINGUISH

Trade Marks

Distinguishing function - distinctiveness

Distinctiveness is the essence of a trade mark- Registered trade mark- Common law trade mark

Distinctiveness- Inherent- Acquired

Trade Marks

What is not capable of being distinctive?

Obviously non-distinctive elements such as single alphabetical letters or numerals and common surnames.

Designations of kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode of time of production.

Terms which have become customary in the trade.

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Containers

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Shapes

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Patterns

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Colours

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Musical Jingles

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Trade Dress

Trade Marks

What can be a trade mark?

Non-traditional trade marks- Interior decorating themes/exteriors of

buildings

Trade Marks

How do you get a trade mark?

Registration under the Trade Marks Act ®

Common law rights established through use ™

Copyright Act 98 of 1978

Copyright

Copyright

“No copyright in ideas”

“IP is a ‘bundle of rights’ of which Copyright merely forms part”

An unregistered right which allows the copyrightholder to prevent unauthorised reproduction(copying) of the work

Copyright

Copyright

Determine if it is a work at all.

- If it is not a work, the Act will not even come intoplay (The man who broke the bank at Monte Carlo)

Copyright

Copyright

Determine if the formal (general) conditions forsubsistence of copyright have been met, namely:

- is the work original?

and

- does it exist in a material form?

Copyright

Copyright

Determine who the author is with reference tothe type of work

Trade Marks

PROTECTION OF RIGHTS

Trade Marks

Infringement (Section 34)

Unauthorised use of trade mark in the course of trade.

- Identical mark- Similar mark- Same class- Similar class

Well known in the Republic.

Trade Marks

REMEDIES (Section 34(3))

Interdict

Removal of infringing mark

Or delivery up

Damages

Or Reasonable royalty

Copyright

COPYRIGHT

Infringement

Does what only owner entitled to do- Reproduce (copy)- Adaptation- Broadcast

Import other than for personal/private use- Sell, let or offer for sale/hire- Distribute – owner prejudiced

Copyright

REMEDIES

Interdict

Delivery up

Damages or reasonable royalty

Counterfeit Goods Act 37

of 1997

Counterfeit Goods

COUNTERFEIT GOODS

Protect owners of trade marks and copyright

Definitions (Section 1)

“Intellectual Property”

- Trade Marks- Copyright- Merchandise Marks Act

“Counterfeiting” / “Counterfeit”

- Marks applied to a product without the authority of the proprietor.

Counterfeit Goods

Dealing in counterfeit goods is an offence (Section 2)

Course of trade

Imported through

A M Moolla Group Limited & others vs. The

Gap, Inc & others 2005(2) SA412 SCA

Counterfeit Goods

Lay a complaint with inspector (Section 3)

Interested person

Inspector (Section 4)

Enter premises and seize Collect evidence Search

Institute Criminal/Civil proceedings (Section 9)

Counterfeit Goods

COMPLAINT

Cadac (Pty) Limited vs. Weber Stephen Products Company & others. Case No. 306772004 Witwatersrand Local Division Full disclosure

Commissioner of South African Revenue Services & others vs. Shoprite/Checkers (Pty) Ltd. Case No. 92512003 Cape of Good Hope Provincial Division

Reasons for infringement

Memory Institute SA t/a Memory Institute vs. Hansen & others. 2004(2)SA630SCA Subsistence of copyright

Constitution

SOUTH AFRICAN CONSTITUTION

Right to Privacy (Section 14)

Home/property searched Possessions searched

Right to Property (Section 25)

Audi Alterem Partem

Constitution

Intellectual property rights not specifically dealt with in the constitution

Laugh It Off Promotions CC vs. South African Breweries International BV t/a Sabmark International & others (Case No. CLT4204 in the Constitutional Court)

Two rights have equal status Balance one against the other Determine on facts whether, constitutional

rights infringed

Conclusion

CONCLUSION

Trade Marks Act and Copyright Act incapable of effectively protecting intellectual property rights holder.

Counterfeit Goods Act – preventing counterfeit goods entering the market – creates a criminal offence.

THANK YOU