s p o o r & f i s h e r enforcement of intellectual property rights in south africa: the...
TRANSCRIPT
S P
O O
R
&
F I
S H
E R
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