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 multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
The following categories are not regarded as an invention for the purposes of the Patents Act No.57 of 1978 (section 25(2)):
A scientific theory.
A mathematical method.
A literary, dramatic, musical or artistic work or any other aesthetic creation.
A scheme, rule or method for performing a mental act, playing a game or doing business.
A computer program.
The presentation of information.
These provisions prevent anything from being treated as an invention for the purposes of the Patents Act only to the extent to which a patent, or an application for a patent, relates to that category alone (section 25(3)). This means that an invention incorporating one or more of these categories as mere features of the invention may still be patentable.
A patent will not be granted for an invention where its publication or exploitation is likely to encourage offensive or immoral behaviour (section 25(4)(a), Patents Act).
A patent will not be granted for any variety of animal or plant, or any essentially biological process for the production of animals or plants (where that is not a microbiological process or the product of such a process) (section 25(4)(b), Patents Act). However, it is possible to obtain protection for plant varieties by the grant of plant breeders' rights under the Plant Breeders' Rights Act No. 15 of 1976.
An invention consisting of a method of treatment of the human or animal body by surgery or therapy, or of diagnosis practised on the human or animal body, is not patentable (section 25(11), Patents Act). However, a substance or composition for use in such a method of treatment or diagnosis is patentable even if the substance or composition itself is known, provided its use in the method of treatment is "new" (sections 25(9) and 25(12), Patents Act).
A patent will not be granted for anything contrary to well established natural laws (for example, perpetual motion devices: section 36(1), Patents Act).
Registration is administered by the South African Patent Office, which was established under section 5 of the South African Patents Act No. 57 of 1978. The office forms an integral part of the newly formed Companies and Intellectual Property Commission (CIPC) (www.cipc.co.za).
Unlike trade mark law, patent law does not provide a mechanism to oppose patent applications. However, an application to revoke a patent can be made at any time after sealing. Under section 44(1), sealing is deemed effective on the date of publication of the acceptance of the complete specification in the Patent Journal. The Patent Journal is published on the last Wednesday of each month.
Section 61(1) of the Patents Act provides that an application to revoke a patent can only be made on the following grounds:
That the patentee is not a person entitled under section 27 of the Patents Act to apply for the patent.
That the grant of the patent is a fraud against the applicant's rights, or the rights of any person through whom the applicant is claiming.
That the invention concerned is not patentable under section 25 of the Patents Act.
That the invention as illustrated or exemplified in the complete specification concerned cannot be performed or does not lead to the results and advantages set out in the complete specification.
That the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of that invention.
That the claims of the complete specification concerned are not:
fairly based on the matter disclosed in the specification.
That the prescribed declaration lodged in respect of the application for the patent or the statement lodged under section 30(3A) of the Patents Act contains a material false statement or representation, which the patentee knew, or ought reasonably to have known, to be false at the time when the statement or representation was made.
That the application for the patent should have been refused under section 36 of the Patents Act.
That the complete specification claims as an invention a microbiological process, or a product of that process, and that the provisions of section 32(6) of the Patents Act have not been complied with.
Opposition proceedings are provided for where an application to amend a patent is made after sealing, since the Registrar of Patents, after satisfying himself that all formal requirements have been met, directs the patentee to advertise the amendment in the Patent Journal for opposition within a two-month period. Any person can oppose the application to amend a patent. Opposition proceedings take place in the Court of the Commissioner of Patents, which has the status of the High Court of South Africa. If the application for amendment is not opposed, the Registrar allows the amendment.
An infringement action can be instituted against any person who, without the patentee's permission, performs any of the acts set out in section 45(1) of the Patents Act, including the following:
Making the invention.
Using the invention.
Exercising the invention.
Disposing of, or offering to dispose of, the invention.
Importing the invention.
These acts constitute an infringement of the patent because the patentee should have and enjoy the whole profit and advantage accruing from the invention.
The Court of the Commissioner of Patents is the court of first instance in all patent matters. It effectively has nationwide jurisdiction, and has its seat in Pretoria. The Commissioner of Patents is a High Court judge who is appointed by the Judge President from the North Gauteng High Court judges to act as Commissioner in a specific instance.
When sued for infringement the defendant can plead:
That the patent is invalid.
The defendant can plead one or both of the above defences.
Additionally, he may counterclaim for the revocation of the patent on the grounds of its total or partial invalidity. If the court finds partial invalidity, it can postpone the revocation to allow an application to amend the patent. If an amendment is allowed, the court can grant relief in respect of any claims in the amended patent in respect of which infringement was established.
A successful claimant is usually entitled to the following relief:
An interdict (that is, a permanent injunction) ordering the defendant to refrain from further infringement. If the defendant ignores the interdict he can be committed for contempt of court.
An order for delivery up or destruction of infringing products or articles, or products of which the infringing articles form an inseparable part.
Damages for infringement. An enquiry into damages is normally ordered. The measure of damages is effectively the same as for any other delict (tort), that is, it compensates the claimant for patrimonial loss, actual or prospective, sustained as a result of the infringement. In lieu of damages, an amount calculated on the basis of the amount of a reasonable royalty payable by a licensee under the patent can be recovered by the patentee.
An award of costs.
The following legal requirements must be met:
The trade mark must qualify as a mark under the Trade Marks Act No. 194 of 1993 (Trade Marks Act).
The trade mark must be capable of distinguishing the goods or services in question.
The trade mark must not fall within the various categories of unregistrable marks under the Trade Marks Act.
The trade mark must not be confusingly similar to earlier relevant trade marks on the register.
The applicant must have a bona fide claim to proprietorship.
It is not necessary to register trade marks as they are afforded some protection through the common law against unlawful competition and passing off. However, registration is recommended, since in order to qualify for that protection, a trade mark owner must first show that a reputation in the trade mark has been acquired through intensive and/or extensive use of it. This places a fairly high evidentiary burden on the trade mark owner, which can be avoided if the trade mark is registered.
Registration is administered by the South African Trade Marks Office, which was established under the Trade Marks Act No. 194 of 1993. The office forms an integral part of the newly formed Companies and Intellectual Property Commission (CIPC) (www.cipc.co.za). The application procedure involves the filing of an application form in the prescribed manner (as contained in the Trade Marks Act No. 194 of 1993). The application is then examined by an official of the Trade Marks Office and, if accepted, the application is advertised for opposition purposes in the Trade Marks Journal. Where there is no opposition filed within the prescribed period, the registration certificate will be issued.
Third parties can oppose the registration of trade marks on their acceptance and subsequent advertisement in the Patent Journal. The opposition period is three months, which can be extended by a further three months on request to the Registrar. Further extensions must be agreed to between the parties.
An opposition can be made on the following grounds:
The trade mark is confusingly similar to another trade mark (whether that trade mark is registered or not).
Lack of distinctiveness.
Registration would be contrary to a statutory prohibition.
Lack of a bona fide intention to use the trade mark.
Trade mark protection commences once the mark is registered and protection is effective from the filing date of the application for registration. Once registered, the trade mark is valid for ten years from the filing date. If a trade mark has not been used for five years, it becomes vulnerable to cancellation by application from the register on the basis of non-use.
A trade mark infringement action can be brought where a third party trade mark is being used for the same or similar goods or services, and that third party trade mark is identical or so similar to either:
A prior registered trade mark.
A well known trade mark that has not been registered.
The use of the third party trade mark must be likely to lead to confusion or deception.
Registered, and well known trade marks are also protected against tarnishing and dilution, except where this raises a likelihood of confusion.
The following are defences to trade mark infringement actions:
Bona fide use of one's own name or place of business.
Use of a bona fide description of the characteristics of one's goods or services, including their:
Bona fide use to indicate the intended purpose of services or goods, including spare parts and accessories.
Use in respect of goods to which the trade mark has been applied, or use with the proprietor's consent.
Bona fide use of any utilitarian features in a container, shape, configuration, colour or pattern which is registered as a trade mark.
Use in any manner in relation to which, having regard to any conditions or limitations on the register, the registration does not extend.
The allegedly infringing mark is itself registered.
The following are remedies for trade mark infringement:
Removal of the infringing mark from all material and, where the infringing mark is inseparable from the material, delivery up of all that material.
In lieu of damages, a reasonable royalty which would have been payable by a licensee for the use of the trade mark concerned.
Copyright cannot be registered, but its protection arises automatically. As soon as a work comes into existence and meets the following requirements, it is protected as a copyright work:
Work must be original.
Work must exist in a material form.
Author must be a qualified person, being a citizen of, or domiciled or ordinarily resident in, South Africa or a country that is a signatory to the WIPO Berne Convention for the Protection of Literary and Artistic Works 1971 (Berne Convention).
Work must be published for the first time in South Africa or a Berne Convention country.
Work must fall into one of the following nine categories of protectable works:
What constitutes infringement varies depending on the type of work, but generally the following unauthorised acts would constitute copyright infringement:
Reproducing the work in any manner or form.
Publishing an unpublished work.
Performing the work in public.
Broadcasting the work.
Causing the work to be transmitted in a diffusion service, unless that service transmits a lawful broadcast, including the work, and is operated by the original broadcaster.
Making an adaptation of the work.
Doing, in relation to an adaptation of the work, any of the acts specified above.
A third party cannot rent, offer or expose for hire by way of trade, a copy of a film or computer program.
Additionally, a third party cannot import, distribute or sell infringing articles where the third party knew, or should reasonably have known, that the articles infringed another's copyright.
There are many types of defence to copyright infringement actions, and the defences available depend on the type of work that is copyrighted. For example, copyright is not infringed by any fair dealing with a literary or musical work:
For the purposes of research or private study by, or the personal or private use of, the person using the work.
For the purposes of criticism or review.
For the purposes of reporting current events in a newspaper, magazine, by broadcasting or in a film.
Under the Designs Act No. 195 of 1993 (Designs Act), a design can be either aesthetic or functional.
An aesthetic design is defined as any design applied to any article, whether a pattern, shape, configuration or ornamentation (or for two or more of those purposes), by whatever means it is applied, which has features that appeal to and are solely judged by the eye (irrespective of their aesthetic quality).
A functional design is defined as any design applied to any article, whether a pattern, shape, configuration or ornamentation (or for two or more of those purposes), by whatever means it is applied, which has features that are necessitated by the function of the article to which the design is applied.
To be registrable, an aesthetic design must be both:
To be registrable, a functional design must be both:
Not commonplace in the art in question.
A design is deemed to be new if it does not form part of the state of the art immediately before the effective date. In the case of the effective date being the release date, the design will not be deemed to be new if an application for the registration of the design has not been lodged in South Africa within six months of that release date, or in the case of an integrated circuit topography, or a mask work or a series of mask works, within two years (section 14(2), Designs Act).
Registration is administered by the South African Designs Office, which was established under section 4 of the Designs Act. The office forms an integral part of the newly formed Companies and Intellectual Property Commission (CIPC). Guidance on design application procedure is provided on its website (www.cipc.co.za/Design_RegProcedure.aspx).
Unlike trade mark law, design law does not provide a mechanism to oppose design applications. However, any person can at any time apply to the court in the prescribed manner to revoke the registration of a design on the following grounds:
That the application for the registration of the design was not made by a person entitled to that registration under section 14 of the Designs Act.
That the registration of the design is in fraud of the applicant's rights, or in fraud of the rights of any person through whom he claims.
That the design in question is not registrable under section 14 of the Designs Act.
That the application for the registration of the design contains a material false statement or representation which the registered proprietor knew was false at the time when the statement or representation was made.
That the application for the registration of the design should have been refused under section 16 of the Designs Act.
The term of a registered design commences either:
On the date of registration (the filing date).
On the release date (the date on which the design was first made available to the public (whether in South Africa or elsewhere) with the consent of the proprietor or any predecessor in title).
Whichever of these two is the earliest date will apply. The term of an aesthetic design is 15 years, while the term of a functional design is ten years.
An infringement action can be instituted against any person who, without the permission of the registered proprietor, performs any of the acts set out in section 20(1) of the Designs Act, including one or more of the following:
Making, importing, using or disposing of any article included in the class in which the design is registered.
Embodying the registered design or a design not substantially different from the registered design.
In the case of proceedings for infringement where infringement is established, the claimant will be entitled to:
Surrender of any infringing product, or any article or product of which the infringing product forms an inseparable part.
In lieu of damages, at the claimant's request, 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 registered design concerned (section 35(3), Designs Act).
There is currently no single statute in South Africa which regulates the use or protection of confidential information. Neither is there a formal registration procedure in place for the protection of confidential information. Protection is gained through keeping confidential information a secret.
Guidance in this regard can be found in the international agreements to which South Africa is a party, which deal with the subject of the protection of confidential information.
South Africa is a member to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (TRIPS), along with most of the world's developed nations. This international agreement is administered by the World Trade Organization (WTO) and it sets down certain minimum standards for many forms of intellectual property (IP) protection which should be applied to nationals of WTO member countries.
The following legal conditions outlined in TRIPS are required in order for information to be protected as confidential information:
The information must be secret (it must not be known generally or be readily accessible to parties that normally deal with that kind of information).
The information must have commercial value.
The owner of the information must have taken reasonable steps to keep it secret.
From the above, it follows that the disclosed information must be confidential in nature. The nature of the information could be information relating to trade secrets (for example, customer lists), technological secrets (for example, know-how relating to a manufacturing or production process), personal information or other forms of confidential information.
Information which forms part of the public domain is generally not protectable. If the confidential information becomes part of the public domain due to the breach of confidence in itself, then the party responsible for the breach may be held liable for loss and damage suffered by the claimant as a result of that a disclosure.
Furthermore, the party who receives the confidential information must be aware of the obligation of confidentiality or, at least, should be aware that the information was given to him in confidence. The "reasonable man" test will apply here and the question will be whether a reasonable man, in the position of the defendant or alleged infringer, should have known or suspected, in the particular circumstances, that an obligation of confidentiality exists.
A typical relationship where the duty of confidentiality arises is in the relationship between an employee and employer. Whilst in employment, an employee has a "duty of fidelity" towards his employer and this will include the duty to protect trade secrets. This duty can even survive the termination of the employment contract.
Grounds for such an action may exist in breach of contract, for example:
Where an employee who makes unauthorised use of confidential information which breaches the terms and conditions of an employment contract.
Where there is unauthorised use by a receiving party of information disclosed under a non-disclosure agreement and identified as confidential information under that agreement).
The unauthorised use of confidential information in the form of a trade secret may be actionable under unlawful competition law if the information is utilised by a competitor in a trade. Civil claims may arise if the confidential information relates to a third party's personal information.
Privacy and identity are recognised as protectable personality interests under the South African common law (under the law of personality). Accordingly, the unauthorised use or communication of personal data can be found to be contra bonos mores (against the prevailing public morality or code) and these actions can be actionable on a delictual basis (based upon the actioiniuriarum).
The following are defences to the unauthorised use of confidential information:
The information does not have any commercial value or affect any personal interest in need of protection.
The disclosed information was not confidential information.
The disclosing party did not know, nor could he have reasonably been expected to know in the circumstances, that an obligation of confidentiality existed at the time of the disclosure.
The information already formed part of the public domain at the time the disclosure was made and the information became part of the public domain through no action of the defendant.
Where the unauthorised disclosure or access to confidential information is anticipated, the court can grant an interdict to prevent that unlawful conduct.
An interdict can also be granted to prevent further, continued, unauthorised disclosures or access to the confidential information.
An action for damages can arise in the instance where commercial or personal loss or damage can be shown by the claimant which results from the unlawful conduct.
An order can be granted which forces the infringer to return any material containing the confidential information to the claimant so that further infringement can no longer take place.
As there is no statutory provision prescribing penalties or criminal sanctions for the unlawful disclosure of, or access to, confidential information in South Africa, the courts are able to exercise their discretion on which legal remedy is appropriate on a case-by-case basis.
The regulatory authority
Companies and Intellectual Property Commission (CIPC)
Main areas of responsibility. This entity administers and carries out the various functions conferred or imposed by the various IP Acts. The CIPC also offers guidance on the application procedure.
Adams & Adams
Areas of practice. Patents (drafting and prosecution); industrial designs.
Adams & Adams
Areas of practice. Trade mark and copyright litigation; unlawful competition and passing off litigation; domain name disputes; IP litigation in Africa; advertising law.
Adams & Adams
Areas of practice. Patent litigation (pharmaceutical and other); Head of Competition Law Group; regulatory (pharmaceutical).