SPOOR FISHER ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

SPOOR & FISHER ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS IN SOUTH AFRICA: THE COUNTERFEIT GOODS ACT Mohamed Khader Spoor & 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 § “No copyright in ideas” § “IP is a ‘bundle of rights’ of which Copyright merely forms part” § An unregistered right which allows the copyright holder to prevent unauthorised reproduction (copying) of the work

Copyright § Determine if it is a work at all. - If it is not a work, the Act will not even come into play (The man who broke the bank at Monte Carlo)

Copyright § Determine if the formal (general) conditions for subsistence of copyright have been met, namely: - is the work original? and - does it exist in a material form?

Copyright § Determine who the author is with reference to the type of work

Trade Marks PROTECTION OF RIGHTS Trade Marks § Infringement (Section 34) Ø Unauthorised use of trade mark in the course of trade. - Identical mark - Similar mark - Same class - Similar class Ø 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 Ø - Does what only owner entitled to do Reproduce (copy) Adaptation Broadcast Ø 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) Ø “Intellectual Property” - Trade Marks Copyright Merchandise Marks Act Ø “Counterfeiting” / “Counterfeit” - Marks applied to a product without the authority of the proprietor.

Counterfeit Goods Dealing in counterfeit goods is an offence (Section 2) Ø Course of trade Ø Imported through A M Moolla Group Limited & others vs. The Gap, Inc & others 2005(2) SA 412 SCA

Counterfeit Goods Lay a complaint with inspector (Section 3) Ø Interested person Inspector (Section 4) Ø Enter premises and seize Ø Collect evidence Ø 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 Ø Full disclosure § Commissioner of South African Revenue Services & others vs. Shoprite/Checkers (Pty) Ltd. Case No. 92512003 Cape of Good Hope Provincial Division Ø Reasons for infringement § Memory Institute SA t/a Memory Institute vs. Hansen & others. 2004(2)SA 630 SCA Ø Subsistence of copyright

Constitution SOUTH AFRICAN CONSTITUTION § Right to Privacy (Section 14) Ø Home/property searched Ø Possessions searched § Right to Property (Section 25) Ø 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. CLT 4204 in the Constitutional Court) Ø Two rights have equal status Ø Balance one against the other Ø Determine on facts whether, constitutional rights infringed

Conclusion CONCLUSION Ø Trade Marks Act and Copyright Act incapable of effectively protecting intellectual property rights holder. Ø Counterfeit Goods Act – preventing counterfeit goods entering the market – creates a criminal offence.

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