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.
The following categories are excluded from patent protection:
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.
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.
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.
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.
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.
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.
The remedies in patent infringement actions include:
Delivery up of any infringing product or any article or product of which the infringing product forms an inseparable part.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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).
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.
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.
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.
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.
The remedies in registered design infringement actions are:
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.
Trade secrets and confidential information
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.
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.
See Question 45.
The regulatory authority
The Commission for Intellectual Property and Companies (CIPC)
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.
Andre van der Merwe, Director
D M Kisch Incorporated (KISCH IP)
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.
- 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