Patents, trade marks, copyright and designs in South Africa: overview

A guide to intellectual property law in South Africa. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Andre van der Merwe, D M Kisch Incorporated (KISCH IP)
Contents

Patents

1. What are the legal requirements to obtain a patent?

To be patentable, an invention must:

  • Be new.

  • Involve an inventive step.

  • Be capable of being used or applied in trade or industry or agriculture.

 
2. What categories are excluded from patent protection?

The following categories are excluded from patent protection:

  • Discoveries.

  • Scientific theories.

  • Mathematical methods.

  • Literary, dramatic, musical or artistic works or any other aesthetic creations.

  • Schemes, rules or methods for performing a mental act, playing a game or doing business.

  • Computer programs.

  • The presentation of information.

Other exclusions include:

  • Inventions that would be generally expected to encourage offensive or immoral behaviour.

  • Any variety of animal or plant or any essentially biological process for the production of animals or plants, that is not a micro-biological process or the product of such a process.

  • Methods of diagnosis or treatment by surgery or therapy of the human or animal body.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Patent Office, which is part of the Commission for Intellectual Property and Companies (CIPC), administers the Patents Act and registers patents. These organisations fall within the overall framework of the Department of Trade and Industry.

CIPC's website provides guidance on the application procedure for patents (www.cipc.gov.za).

The Patent Office (Registrar of Patents) can refuse to register a patent on the grounds that:

  • The invention is frivolous, in that it claims an invention that is obviously contrary to well-established natural laws.

  • The use of the invention would be generally expected to encourage offensive or immoral behaviour, or that it may be used in any manner contrary to law.

 
4. On what grounds and when can third parties oppose a patent application or challenge an issued patent?

The Patents Act provides for revocation proceedings to be brought against a granted patent but it does not provide for opposition proceedings in respect of a patent application.

The grounds for revocation are that the:

  • Patentee is not a person entitled under section 27 of the Act to apply for the patent.

  • Grant of the patent defrauds the rights of the applicant or of any person under or through whom he claims.

  • Invention concerned is not patentable under section 25 of the Act.

  • Invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to results and advantages set out in the complete specification.

  • Complete specification concerned does not:

    • fully describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed; or

    • disclose, in the specification as accepted, the best method of performing the invention known to the applicant for the patent at the time when the specification was lodged at the Patent Office.

  • Claims in the complete specification are not clear or fairly based on the matter disclosed in the specification.

  • Prescribed declaration lodged in respect of the application for the patent contains a false statement or representation which is material and which the applicant knew to be false at the time when the declaration was made.

  • Application for the patent should have been refused under section 36 by the Registrar of Patents.

  • provisions of section 32(6) have not been complied with, where the complete specification claims as an invention a microbiological process or a product thereof.

 
5. When does patent protection start and how long does it last?

Patent protection starts when a patent is granted, which is deemed to be the date of publication in the official Patent Journal. Patent protection lasts for 20 years from the date of application for that patent, subject to payment of the prescribed annual renewal fees (starting from the third year after filing of the patent application).

The Patents Act does not make provision for patent term extension.

 
6. On what grounds can a patent infringement action be brought?

A patent infringement action can be brought when a third party, without authority or licence from the patentee, makes, uses, exercises, disposes or offers to dispose of, or imports a patented invention.

 
7. Which courts deal with patent infringement actions?

The Court of the Commissioner of Patents deals with patent infringement actions. This Court is a division of the High Court and a Commissioner is appointed ad hoc by the Judge President of the Gauteng North High Court on a case-to-case basis.

 
8. What are the defences to patent infringement actions?

The defences to a patent infringement action are that the:

  • Patent has lapsed or its term has expired.

  • Patent is invalid and can be revoked on any of the grounds under section 61 of the Patents Act.

  • Actions of the third party have taken place with the authority or licence of the patentee.

  • Third part is not infringing the patent (see Question 6).

  • Relevant products or processes of the third party fall outside the scope of the claims of the patent and therefore do not infringe the patent.

 
9. What are the remedies in patent infringement actions?

The remedies in patent infringement actions include:

  • Injunctions.

  • Delivery up of any infringing product or any article or product of which the infringing product forms an inseparable part.

  • Damages.

In lieu of damages, the plaintiff may choose to be awarded an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect of the relevant patent.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

Fast-track or a small-claims procedures are not available in South Africa.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

A trade mark must be capable of distinguishing the applicant's goods or services from those of other traders.

 
12. Is it necessary or advisable to register trade marks?

Rights in a trade mark can be acquired through use, and are protectable under the common law on proof that the user's business has acquired a reputation in the mark.

It is advisable to register trade marks for several reasons, the key ones being:

  • Ease of enforcement (the registration certificate in effect avoids the need to, and cost and difficulty of, proving a reputation).

  • Damages can be claimed on a reasonable royalty basis.

  • Certainty in regard to the nature and extent of the asset claimed by the proprietor.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The Register of Trade Marks registers trade marks (www.cipc.co.za).

The website sets out the search facilities that are available and the different methods of filing, including e-filing.

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

Absolute grounds for refusal include that the mark is:

  • Not capable of distinguishing the goods/services.

  • Mis-descriptive.

  • Otherwise objectionable.

Relative grounds for refusal include that:

  • The mark is conflicts with the prior rights of a third party.

  • The registration is being made in bad faith.

 
15. On what grounds and when can third parties oppose a trade mark application or cancel a registration?

Third parties can oppose a trade mark application or cancel a registration for reason of:

  • Any of the absolute or relative grounds (see Question 14).

  • Lack of a bona fide intention to use the mark.

  • Non-use for a continuous period of five years and three months before the application for cancellation.

 
16. When does trade mark protection start and how long does it last?

Trade mark protection starts on issue of the certificate of registration and lasts for ten years calculated from the date of filing of the application (the effective date). Thereafter, payment of the then current renewal fee is required on each anniversary.

 
17. On what grounds can a trade mark infringement action be brought?

A trade mark infringement action be brought on the grounds of:

  • Unauthorised use in the course of trade of a confusing or deceptively similar mark by a third party.

  • Deception and confusion being likely to arise, in the case of goods or services similar to those for which the mark is registered.

  • The usage complained of being likely to take unfair advantage of the distinctive character and reputation of the registered mark, where it is a well-known mark.

 
18. Which courts deal with trade mark infringement actions?

The High Court of South Africa, in the division in which the infringement occurs, or the division in which the alleged infringer is domiciled, deal with trade mark infringement actions.

 
19. What are the defences to trade mark infringement actions?

The defences to trade mark infringement actions include:

  • Bona fide use of own name.

  • Bona fide description of goods or services (including spare parts and accessories), or indication of their intended purpose.

  • Dealing in the goods or services is with, or deemed to be with, the consent of the proprietor of the mark.

  • Bona fide use of any utilitarian features embodied in any container, shape, configuration, colour or pattern that is registered as a mark.

  • The use of any identical or confusing or deceptively similar trade mark which is registered, or of a mark which is capable of being registered on the grounds of honest current use or other vested usage right.

 
20. What are the remedies in trade mark infringement actions?

The remedies in trade mark infringement actions include:

  • Injunctions.

  • Delivery-up of offending goods.

  • Damages arising from infringing use or payment of a reasonable royalty in respect of the past infringing use.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

There is no fast-track and/or a small-claims procedure, save that a preliminary injunction is obtainable before the grant of a final order in appropriate circumstances.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Protection is afforded to qualified persons in respect of specified categories of "work" as defined in the Copyright Act, who can show that they created (authored) the work in question, by the application of original skill and labour.

Qualified persons are South African residents, citizens and domiciliaries. Residents, citizens and domiciliaries of Berne Convention countries, are accorded the same rights as their South African counterparts.

Authorship under the Act, is either actual or deemed, depending on the category of work in issue.

 
23. Can copyright be registered? If so, is registration required?

Save in the case of Cinematograph Films, copyright cannot be registered. Registration of Cinematographs Films is purely to facilitate ease of enforcement and is not required for the subsistence (or the enforcement) of copyright.

 
24. When does copyright protection start and how long does it last?

Copyright Protection commences on creation (and in certain instances on publication or broadcast) of a work.

Different duration periods apply to different categories of work.

 
25. On what grounds can a copyright infringement action be brought?

A copyright infringement action be brought on the grounds of an unauthorised use of a work in a way reserved to the copyright owner of the work.

 
26. Which courts deal with copyright infringement actions?

The High Court of South Africa or the Magistrates Court with jurisdiction in the area where the infringing act is committed, or where infringing party is domiciled, deal with copyright infringement actions.

Copyright infringement also constitutes a criminal offence, punishable by fines and/or imprisonment.

 
27. What are the defences to copyright infringement actions?

Defences to copyright infringement actions include:

  • Absence of copying.

  • Failure of the plaintiff to prove any of the requirements necessary to prove subsistence of copyright or its succession to title.

  • An express or implied licence to use the work.

  • Reverse engineering in the case of works of a utilitarian nature.

  • Where the defendant obtains a compulsory licence pursuant to an application to the Copyright Tribunal and complies with its terms.

 
28. What are the remedies in copyright infringement actions?

Remedies include:

  • Injunctions.

  • Delivery-up of offending articles.

  • Damages, including special damages on the grounds of flagrancy, or alternatively payment of a reasonable royalty in respect of the infringing articles.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

There is no fast-track and/or a small-claims procedure, but seizure of infringing copies is available in specified circumstances under the Counterfeit Goods Act, pending the issue and prosecution of infringement proceedings.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

To be registered, an aesthetic design must be new and original.

A functional design must be new and not commonplace in the art in question.

 
31. Which authority registers designs?

The Designs Office, which is part of the Commission for Intellectual Property and Companies (CIPC), administers the Designs Act and registers designs. These organisations fall within the overall framework of the Department of Trade and Industry.

CIPC's website provides guidance on the application procedure for designs (www.cipc.co.za).

 
32. On what grounds and when can third parties oppose a registered design application?

A design application can be opposed if the application or the design does not comply with the provisions of the Designs Act, for example, if the design is not new. Opposition proceedings can be brought within three months after the acceptance of the design application has been published in the official Patent Journal.

 
33. When does registered design protection start and how long does it last?

Design protection starts when the design application has been granted and takes effect from the date of application for registration.

The term of registered design protection lasts for 15 years for an aesthetic design, subject to payment of the prescribed annual renewal fees. The term of design protection lasts for ten years in the case of a functional design, subject to payment of the prescribed annual renewal fees.

 
34. On what grounds can a registered design infringement action be brought?

A design infringement action can be brought where a third party, without authority or licence from the registered proprietor, makes, imports, uses or disposes of any article included in the class in which the design is registered and embodying the design, or a design not substantially different from the registered design.

 
35. Which courts deal with registered design infringement actions?

The High Court of South Africa deals with design infringement actions.

 
36. What are the defences to registered design infringement actions?

The defences to a design infringement action are that the:

  • Registered design has lapsed or its term has expired.

  • Registered design is invalid and can be revoked on any ground in terms of the Designs Act.

  • Actions of the third party have taken place with the authority or licence of the patentee.

  • Third party is not infringing the registered design rights (see Question 34).

  • Relevant article of the third party is not included in the relevant class, or that the relevant article does not embody the registered design or a design substantially similar the registered design, and therefore does not infringe the registered design.

 
37. What are the remedies in registered design infringement actions?

The remedies in registered design infringement actions are:

  • Injunctions.

  • Surrender of any infringing product or any article or product of which the infringing product forms an inseparable part.

  • Damages, or in lieu of damages, at the option of the plaintiff, an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee or sub-licensee in respect the relevant registered design.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

Fast-track or a small-claims procedures are not available in South Africa.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered designs are dealt with under the Copyright Act, to the extent that the underlying design enjoys copyright protection.

 
40. When does unregistered design protection start and how long does it last?

Not applicable.

 
41. On what grounds can an unregistered design infringement action be brought?

Not applicable.

 
42. What are the defences to unregistered design infringement actions?

Not applicable.

 
43. What are the remedies in unregistered design infringement actions?

Not applicable.

 

Trade secrets and confidential information

44. What are the legal conditions for rights in confidential information to arise?

These rights are protected under the common law. Subsistence is a question of fact, and depends on whether the information in question is held and treated as confidential by the claimant, and if disclosed, is only done so on the basis of non-disclosure obligations being imposed on the disclosee.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

An action for unauthorised use of confidential information can be brought if access to the information is unlawfully obtained, of if it is used by an authorised disclosee contrary to the terms under which the disclosure was made.

However, if the breach results in destruction of the confidential character of the material, the remedy may be confined to damages, unless it can be shown that an injunction is necessary to preclude the offending party continuing to enjoy an unfair business and competitive benefit by use of that information.

 
46. Which courts deal with actions for unauthorised use of confidential information?

The High Court or the Magistrates Court with jurisdiction where the breach occurred, or where the offending party is domiciled, deals with actions for unauthorised use of confidential information.

 
47. What are the defences to actions for unauthorised use of confidential information?

The defence would be to show an actual lack of confidentially or trade secret nature in the material, so that it had passed into the public domain before the defendant obtained it.

In certain circumstances, confidential information can be breached by using it unlawfully to procure otherwise hard to come by evidence that trade secret material is no longer fully of a trade secret character.

 
48. What are the remedies in actions for unauthorised use of confidential information?
 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

There is no fast-track or a small-claims procedure, but an interim injunction is available to preserve the status quo pending a final outcome to breach/infringement proceedings.

 

The regulatory authority

The Commission for Intellectual Property and Companies (CIPC)

W www.cipc.gov.za

Main areas of responsibility. Administration and registration of IPRs and anti-counterfeit administration

Guidance on application procedure. The website details of search and e-filing facilities available through the site, or on subscription through the site.



Contributor profiles

Andre van der Merwe, Director

D M Kisch Incorporated (KISCH IP)

E andrev@kisch-ip.com
W www.kisch-ip.com

Professional qualifications. B Sc B Proc LL B; South African attorney; Registered Patent Attorney; Fellow of the South African Institute for Intellectual Property Law

Areas of practice. Patent searches, filing and litigation; copyright advisory work; design searches, filing and litigation; trade mark searches, filing and litigation.

Recent transactions

  • Trade mark litigation in South Africa and in Namibia.
  • Design litigation in South Africa.

Languages. English Afrikaans and Dutch

Professional associations/memberships. The Law Society of the Northern Provinces; the Law Society of South Africa; the South African Institute of Intellectual Property Law; The Licensing Executives Society International (South African Chapter)

Publications. Various articles written and papers and lectures delivered


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