1. S P O O R & F I S H E R ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS IN SOUTH AFRICA: THE COUNTERFEIT GOODS ACT Mohamed Khader Spoor & Fisher November 2005 www.spoor.com

2. Intellectual Property Bundle of Rights Trade Marks Copyright Design Patents

3. Trade Marks Act 194 of 1993

4. Trade Marks What is a “trade mark”?  Commercial symbol or “sign”  Used on both products and services  Trade Marks Act No. 194 of 1993

5. Trade Marks Word or words Slogans Logos Shapes Colours Finger licking good / Simple Better Faster

6. Trade Marks

8. 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

9. 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

10. Trade Marks Distinguishing function - distinctiveness  Distinctiveness is the essence of a trade mark -Registered trade mark -Common law trade mark  Distinctiveness -Inherent -Acquired

11. 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.

12. Trade Marks What can be a trade mark?  Non-traditional trade marks -Containers

13. Trade Marks What can be a trade mark?  Non-traditional trade marks -Shapes

14. Trade Marks What can be a trade mark?  Non-traditional trade marks -Patterns

15. Trade Marks What can be a trade mark?  Non-traditional trade marks -Colours

16. Trade Marks What can be a trade mark?  Non-traditional trade marks -Musical Jingles

17. Trade Marks What can be a trade mark?  Non-traditional trade marks -Trade Dress

18. Trade Marks What can be a trade mark?  Non-traditional trade marks -Interior decorating themes/exteriors of buildings

19. Trade Marks How do you get a trade mark?  Registration under the Trade Marks Act ®  Common law rights established through use ™

20. Copyright Act 98 of 1978

21. 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

22. 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)

23. 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?

24. Copyright  Determine who the author is with reference to the type of work

25. 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.

26. Trade Marks REMEDIES (Section 34(3))  Interdict  Removal of infringing mark Or delivery up  Damages Or Reasonable royalty

27. 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

28. Copyright REMEDIES  Interdict  Delivery up  Damages or reasonable royalty

29. Counterfeit Goods Act 37 of 1997

30. 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.

31. 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

32. 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)

33. 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

34. Constitution SOUTH AFRICAN CONSTITUTION  Right to Privacy (Section 14)  Home/property searched  Possessions searched  Right to Property (Section 25)  Audi Alterem Partem

35. 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

36. 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.

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