South Africa

1. TRADE MARK

1.1. Sources of law

The principal sources of trade mark law are the Trade Marks Act of 1993 and the common law which is rooted in Roman Dutch and English Law. There are other statutes that have an effect on trade mark law in South Africa. These statutes are the Counterfeit Goods Act of 1997, The Companies Act of 2008 and the Merchandise Marks Act of 1941. The Constitution of the Republic of South Africa Act of 1996 will also have a bearing on trade mark law given that legislation must be read in conformity with the fundamental rights enshrined in the Constitution, which include free speech and personal property rights. This tension between free speech and property rights famously played out in the Laugh it Off case. South Africa is a signatory to GATT and became a member of the World Trade Organisation with effect from 31 January 1995. The agreement on Trade Related Aspects of Intellectual Property Rights was ratified by Parliament in April 1995, but the Treaty has not yet been made part of South Africa's domestic law, although our law is largely aligned to it. As far as case law is concerned, the Registrar of Trade Marks, who considers oppositions, cancellations, and other matters directly relating to the Register, has the power of a single judge of the High Court and presides over proceedings regulated by the Act.  Infringement matters are heard before the High Court and higher appeal courts, although oppositions, cancellations and other matters relating to the Register can also be heard before the courts in certain circumstances.

  Decisions of the High Court will take precedence over decisions of the Registrar of Trade Marks and the Supreme Court of Appeal's decisions will take precedence over decisions of the High Court. The Constitutional Court is the highest court in the land, but only hears matters involving constitutional issues or arguable points of law of general public importance.  The Constitution would take precedence over all the other Acts that regulate trade marks in South Africa. 

1.2. Substantive Law

Section 35 of the Trade Marks Act provides for the protection of well-known trade marks under the Paris Convention. The common law protects trade marks that are not registered but have established a reputation in South Africa.

  South African law does distinguish between famous trade marks, well-known trade marks and trade marks with a reputation although famous trade marks is not a term widely used. In order to rely on the common law of passing off it is required to prove that the reputation in a trade mark extends to a substantial number of people. This reputation is similar to what is required to prove that a trade mark is well-known in order to rely on the statutory provisions of the Trade Marks Act. This Act does not require a trade mark to be famous but only well-known.

  Trade marks belonging to the "luxury industry" do not enjoy a broader range of protection apart from that provided by law. The "aura of luxury" surrounding such trade marks does not play a role when it comes to enforcing trade marks in the luxury industry except insofar as the "aura" supports the existence of a reputation in a trade mark.  The nature of the goods, being luxury and therefore of interest to a more discerning consumer, may also affect the likelihood of confusion assessment. South African law recognizes that where the goods are of interest to a more discerning customer, confusion is less likely, but this will of course depend on the nature of the infringing goods. 

 

1.3. Enforcement

Broader protection is granted to well-known marks in the form of provisions outlawing trade mark dilution and tarnishment. In order to prove that a mark is well-known, evidence is usually adduced on affidavit, but in some circumstances, oral testimony may be required.

  In order to prove that a mark is well-known and therefore entitled to protection in terms of the dilution/tarnishment provisions, one is required to show that the mark is known to a not negligible number of persons interested in the goods or services concerned.

  A trade mark can be enforced against a domain name on the basis of passing off, trade mark infringement or in terms of alternative dispute resolution regulations.

  A trade mark can be enforced against a trade name and registration of a trade/ company name can be objected to in terms of the Companies Act 71 of 2008.

  A trade mark can be enforced against other distinctive signs if the use of the distinctive signs amounts to use as a trade mark or otherwise dilutes/tarnishes the mark.

  A trade mark can in theory be enforced against a metatag, although this is untested in South African courts.

  A trade mark can be enforced against its unauthorized use in social media when such use is unauthorized, in the course of trade and where such use amounts to use as a trade mark or otherwise dilutes/tarnishes the mark.

  A trade mark can be enforced against unauthorized use of the trade mark in comparative advertising, although this is generally limited to circumstances involving dilution or tarnishment. In order to object to such unauthorized use, it must be proven that the mark is well-known, the use is unauthorized, in the course of trade and that it is likely to take unfair advantage of or be detrimental to the distinctive character or repute of the mark.

  It may also be possible to enforce a trade mark in terms of the South African Code of Advertising Practice of the Advertising Standards Authority (ASA).  The ASA code contains detailed provisions regarding the requirements for comparative advertisement, including that it must not be misleading or confusing, the facts relied upon must be capable of substantiation, claims must be verifiable and objectively determinable and no disparagement must take place.

  A trade mark can be enforced against unauthorized use in parody where such use is likely to take unfair advantage of or be detrimental to the distinctive character or the repute of the registered trade mark. Such a registered trade mark must be well-known in the Republic.

  A trade mark owner can take action claiming trade mark infringement and unfair [unlawful] competition for the same set of facts. However, the action for infringement will flow from the statutory rights in the trade mark itself whereas in unfair competition the use of the confusingly similar trade mark is merely a factor which has a bearing on the relief sought, given that the entire getups will be considered in terms of the law of passing off. In the circumstances, the same set of facts may be relevant but the further evidence that would be required to substantiate the claim for unfair competition may require additional evidence to be led that may not flow from the statutory rights of the trade mark itself. Although it is not necessary to bring separate proceedings, the proceedings to be instituted would depend on the relief sought. 

2. COPYRIGHT

2.1. Sources of law

The principal source of law for the protection of copyright is the Copyright Act No. 98 of 1978 (the Copyright Act) and the common law delict of unlawful competition. Other statutes having a bearing on the enforcement of copyright include the Counterfeit Goods Act, the Constitution of The Republic of South Africa Act of 1996 and the Registration of Copyright in Cinematograph Films Act No. 62 of 1977. South Africa's copyright law also brought about the granting of protection to foreign works on a reciprocal basis primarily by the Berne Convention on Copyright and laterally by the agreement on trade related aspects on intellectual property rights (TRIPS).

  The Constitution would take precedence over the Copyright Act and its related laws. As far as case law is concerned, the Supreme Court of Appeal decisions will take precedence over High Court decisions, and decisions of the Constitutional Court would take ultimate precedence. 

2.2. Substantive law

South African copyright law applies a closed list of copyrightable works, which include the following:

  • literary; 
  • musical and artistic works; 
  • sound recordings; 
  • cinematograph films; 
  • sound and television broadcasts; 
  • programme-carrying signals;
  • published editions; and 
  • computer programs. 

  In terms of the Copyright Act, industrial designs can be protected. There is no copyright in ideas and a copyright work only comes into existence once reduced to a material form.  The industrial design must be original but no novelty is required for purposes of the Copyright Act. The work must, however, not be copied and must be a result of the author's own skill and labour.  The author is the first creator of the work. An industrial design is not infringed where someone without the consent of the copyright owner makes available three-dimensional reproductions or adaptations of the design where the reproductions primarily have a utilitarian purpose and are made by an industrial process. The copyright owner can, however, restrain the making of the three dimensional articles from a drawing itself which will constitute an artistic work.

  The Copyright Act in South Africa grants exclusive rights to a copyright owner to exploit a "work" which qualifies for protection in terms of the provisions of the Copyright Act. Such rights are primarily centered on reproduction rights, but also include adaptation, publishing, performing and communicating to the public rights. The right to protect an author's moral rights arises from the Copyright Act and is separate and distinct from the copyright subsisting in a work. An assignment of copyright does not transfer the author's moral rights and the moral rights attach to the author throughout his lifetime and cannot be assigned.

  In terms of the Copyright Act where works are created in the course and scope of employment, the employer will be the owner of the work.

  A legal entity can acquire the rights in works created by consultants, shareholders, directors or suppliers by transferring the rights of copyright in a written Deed of Assignment.

  A copyright assignment must be in writing, signed by or on behalf of the assignor and the copyright to be assigned must be sufficiently described in the document and objectively identifiable to any person reading the document in order for the assignment to be effective.

  When drafting a copyright assignment agreement with employees, consultants, shareholders, directors and suppliers, it is necessary and prudent to clearly describe the work to be assigned in terms of the agreement as well as addressing future rights of copyright.

  An author cannot transfer his moral rights. These rights are exercisable by an author and can be waived if the author undertakes not to enforce them.

  The term of protection granted by copyright is typically the life of the author and a further fifty years from the year in which the author dies, or fifty years from publication if a work, or an adaptation of such work, has not been made available to the public during the lifetime of the author. Copyright protection in literary, musical and artistic works endures for a period of 50 years after the death of the author. If the works have not been published, performed, offered for sale or broadcasted before the death of the author, the term of copyright continues for a period of 50 years from the end of the year in which any of the afore-mentioned acts are done.

  In the case of cinematograph films, photographs and computer programs, the copyright expires 50 years after the work is made available to the public with the consent of the owner of the copyright or after the work is first published, whichever is longer.

  Sound recordings and published editions enjoy copyright for a period of 50 years from the date on which they are first published and broadcasts and program carrying signals enjoy copyright for 50 years after they are made. 

2.3. Enforcement

Apart from the registration of copyright in cinematograph films, it is not possible in South Africa to obtain a copyright registration in a public register. Apart from the registration of cinematograph films, a copyright registration is accordingly not required to enforce copyright. An infringement of copyright in a work will take place when a third party does or causes someone else to do any of the acts which are designated as restricted acts in respect of the works provided for in the Act. A copyright notice is not required to enforce the rights of copyright but it is advisable for copyrighted works to be accompanied by a copyright notice given that, if the defendant was not aware and had no reasonable grounds for suspecting the subsistence of copyright, then damages may not be claimed. There are no consequences for failure to display a copyright notice.

  In order to establish that industrial designs are capable of protection, evidence has to be adduced by way of an affidavit or oral testimony substantiating that the work is original and exists in a material form. If required expert evidence may be used to substantiate a claim of ownership of copyright.

  Copyright is infringed by a third party misusing or misappropriating a substantial part of a work without the consent of the copyright owner.  This includes making reproductions or adaptations of a work from a two dimensional form into a three dimensional form or vice versa. The concept of a substantial part of a work relates to the quality of what is copied and not the quantity of what is copied. It is necessary to show that actual copying has taken place to establish infringement, although inferences can be drawn.

  Copyright can be enforced against a trade mark if the trade mark infringes the rights of copyright subsisting in a work.

  Copyright can be enforced against a registered design/design patent if unlawful copying has taken place.

  The requirements for obtaining a registered patent in South Africa are stringent and a patent is only granted for subject matter which is a new invention and involves an inventive step and which is capable of being used in trade and industry or agriculture. The Patents Act excludes certain subject matter from patent protection and these exclusions include works that typically qualify as copyright works in terms of the Copyright Act. A registered patent can therefore not be obtained for a work that will qualify for copyright protection and copyright will, in the circumstances nor be infringed by a registered patent.

  Copyright in a work will be infringed by the use of a domain name if the domain name is a copy of a copyrighted work and is used without the authorization of the copyright owner, although this is unlikely given that copyright in short words or phrases is generally not recognized.

  It is unlikely that copyright could be enforced against a trade name or a pseudonym given that copyright in short words or phrases is generally not recognized.

  As regards any other IP rights, whenever there is unauthorized reproduction of a substantial part of a copyright work, the copyright can be enforced, subject to the statutory exceptions.

  Copyright subsisting in a work can be enforced against its unauthorized use in social media and there are no particular conditions for the enforcement of copyright in social media. The normal principles applied to establish whether an infringement of copyright has taken place will be taken into consideration where the unauthorized use takes place in social media.

  Copyright can be enforced against the unauthorized use of a work in comparative advertising. There are no specific conditions for the enforcement of copyright in comparative advertising.

  If the use of copyright constitutes infringement in parody, the copyright can be enforced.  The courts have shown a tendency to interpret legislation against infringement in cases of parody based on freedom of speech and other constitutional principles in trade mark cases (see the Laugh it Off case), so this may be extended to copyright infringement in future.

  There are certain exemptions from copyright infringement where it is considered in the public interest that a copyright owner should not have a monopoly in particular acts in relation to his work. The exemptions are fair dealing where a literary musical or artistic work or a broadcast or published edition is used for purposes of research or private study, for the purposes of criticism or review or for purposes of reporting current events. The use of copyright in a literary, musical or artistic work, cinematograph film, sound recording, broadcast, published edition or computer program will not be infringed by using the work for purposes of judicial proceedings. Where a quotation is used and the quotation is compatible with fair practice, the copyright in a literary, or musical work or cinematograph film, sound recording, broadcast or computer program will not be infringed.

  The copyright in a literary, musical or artistic work, cinematograph film, sound recording, broadcast, published additional program is not infringed if the work is used by way of illustration in a publication broadcast or sound or visual recording for teaching provided the use is compatible with fair practice and the source of material as well as the name of the author of the work is mentioned.

  In terms of the Copyright Act reverse engineering of products are permissible once authorised reproductions have been made available to the public with the copyright owner's consent, provided they are made with an industrial process and have a utilitarian purpose. A copyright owner can restrain the making of three dimensional articles from the design drawings or prototype itself, or two dimensional reproductions of the work. What is excluded from infringement is the making of three dimensional reproductions, or adaptations from an authorised three dimensional reproduction.

  Claims can prescribe after three years and an infringement action can be brought as long as the duration of the copyright has not expired. 

  An act of copyright infringement could constitute unfair competition as well as design infringement and the same facts could be relied on in the same proceedings but although the same set of facts may be used, it will be necessary to establish the requirements for each cause of action separately. 

 

3. DESIGN

3.1. Sources of law

The principal source of law in respect of Design Law is the Designs Act, 195 of 1993, and the Design Regulations promulgated in terms of section 54 thereof. The Designs Act takes precedence over the Regulations in the case of any inconsistency.

  The purpose of judicial decisions is to interpret and apply legislation. In limited circumstances, the validity of specific legislation may be challenged. In such a case a judicial pronouncement of invalidity will trump the legislation.

  South Africa is a member of the TRIPS Agreement and the Paris Convention. Priority claims may be made from any other member states of the Paris Convention. 

3.2. Substantive law

South African law does not make provision for the protection of unregistered designs.

The Designs Act provides for the registration of two types of designs:

  • an aesthetic design, which is defined to mean a design applied to an article, whether for the pattern or the shape or the configuration or the ornamentation thereof, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof; and 
  • a functional design, which is defined to mean a design applied to an article, whether for the pattern or the shape or the configuration thereof, and by whatever means it is applied, having features which are necessitated by the function which the article is to perform, and includes an integrated circuit topography, a mask work and a series of mask works. 

  In order to be registerable, an aesthetic design must be new and original; a functional design must be new and not commonplace in the art.

  The South African Designs Office does not conduct substantive examinations and accordingly, provided that all formalities are complied with, a design right will be registered irrespective of compliance with the above requirements. However, such a design right may be subject to revocation upon application by a third party.

  For a legal entity to acquire the rights in designs created by employees it is usual to include provision in an employment agreement transferring the rights in and to any intellectual property created during the course and scope of employment to the employer. It is arguable that in the absence of such agreement, ownership in such intellectual property will nevertheless transfer to the employer.

  In terms of section 1, proprietor is defined to mean:

  • where the author of the design executes the work for another person, the other person for whom the work is so executed; or 
  • where a person, or his employee acting in the course of his employment, makes a design for another person in terms of an agreement, such other person.

  As such, the rights in and to a design created by a consultant executing work on behalf of a third party will automatically vest with the third party. It would, in any event, be advisable to enter into an written agreement confirming the position to mitigate the risk of future disputes. The same would apply to work created by shareholders, directors and suppliers.

  A design assignment agreement must be reduced to writing in order to be valid.

  Care should be taken to ensure that any assignment agreement is not in contravention of section 29(2) of the Designs Act which provides that any condition in a contract of employment which:

  • requires an employee to assign to his employer a design made by him otherwise than within the course of his employment; or 
  • restricts the right of an employee in a design made by him more than one year after the termination of the contract of employment, shall be null and void. 

  South African design law does not recognise moral rights. As to the moral rights in the copyright, see 2.2 above.

  The duration of the registration of an aesthetic design is 15 years and a functional design is 10 years. 

3.3. Enforcement

Design infringement is assessed by determining the following:

  • Has the alleged infringer performed an act which could constitute infringement? 
  • Is the alleged infringer's article included in the class in which the design is registered? 
  • Construe the representations and definitive statement filed in support of the application for a design, and consider, through the spectacles of the likely customer of the article, whether the alleged infringement has a substantially similar appearance as the registered design? In doing so, it may be necessary to consider what the essential features of the design are, and if these do not appear in the alleged infringing article, it cannot infringe. 

  A design right can be enforced against any 'article' which is defined as any article of manufacture and includes a part of such article if manufactured separately. The existence of some other right in and to the article, for example a patent, shall not prevent the enforcement of the design right.

  There is no precedent in which unauthorized use in social media, comparative advertising or parody has been considered. There does not appear to be any reason why it would not be possible, provided that the alleged infringement fell within the definition of an article.

  There is no exhaustive list of the defences available to an alleged infringer. An infringer may, either as a defence or as the basis of a counter claim for revocation of the design, rely upon any ground upon which the registration may be revoked. Additionally, an alleged infringer may rely on a denial of the proprietor's title to the registered design, leave and license, acquiescence, election, waiver and estopel, and the Gillette-Defence as further defences.

  Neither ignorance of the existence of a registered design nor a lack of intention to infringe is considered a valid defence.

  There is no direct inclusion of a so-called repair clause in South African design law, however the concept of a repair clause has been accepted in South African patent law (although there is some debate as to how this should be interpreted) and accordingly it will likely be adopted as part of the design law.

  There is no direct defence on the grounds of an otherwise valid registered/ unregistered design being deemed unenforceable, owing to misconduct by the design owner, or for some other reason, however the Designs Act does provide for the grant of compulsory licenses which may provide such a defence.

  There is no time limit against bringing infringement proceedings; however the right to recover damages will prescribe three years after the date of the infringing act.

  There is nothing which precludes a rights holder from bringing a single suit on the basis of a number of causes of action, for example infringement of a design right and infringement of copyright. 

4. RIGHT OF PUBLICITY

5. PRODUCT PLACEMENT

Product placement is generally permitted in South Africa. However, product placement in respect of certain categories of goods such as tobacco products is outlawed.

  In the event the other party fails to perform as agreed with the brand owner the ordinary rules for breach of contract would apply.  Specific performance of the obligation can be obtained where the breach is material, in addition to damages and legal costs. 

6. . PROTECTION OF CORPORATE IMAGE AND REPUTATION

The common law personality right to privacy does not protect legal entities, but the newly enacted Protection of Personal Information Act (not yet in force) does protect the personal information of juristic (legal) entities.

  The information must satisfy the definition of "personal information" in the Protection of Personal Information Act.

  Generally freedom of contract is respected, within limits set by statute, including but not limited to the Competition Act.

  More specifically, a contract could possibly include a prohibition:

  • to sell the products to re-sellers whose image is below a certain defined standard; or 
  • to buy non original - but otherwise legitimate - spare parts and components as a restrictive vertical practice in terms of the Competition Act if it is likely to substantially prevent or lessen competition in a market.  It may also amount to an abuse of dominance in terms of the Competition Act and could be prohibited as a result, depending on the positions of the parties. 

Minimum resale prices are unlawful in terms of the Competition Act, but minimum price recommendations that are not binding are permitted.

Liquidated damages and fines clauses are generally permitted, but in terms of the Conventional Penalties Act, if the penalty is out of proportion to the prejudice suffered by the creditor, the court may reduce the penalty to an amount considered equitable. 

4.1. Sources of law

South African law does not expressly recognize the concept of a right to publicity.  The basis for protection of image rights is primarily the common law of delict (tort), specifically, the actio iniuriarum which is an action brought for the infringement of personality rights. The basis for this protection is the concept of dignitas which is a collective term embracing the rights to privacy, dignity and identity.  This action is often successfully relied upon where a person's image, likeness or other aspects of their identity have been reproduced or abused without consent.

  The principal sources of law for the action iniuriarum are the common law of delict as developed in the courts as well as the Bill of Rights included in the Constitution, including the constitutional rights to dignity and privacy. 

4.2. Substantive law

The right to publicity, which is primarily protected through a cause of action arising from the infringement of personality rights in terms of the law of delict (tort), cannot be owned per se and is not the subject of a specific proprietary interest.  Personality rights are inseparably bound up with an individual's personality and do not exist independently of the human personality and are incapable of being transferred.

  Personality rights are inseparably bound up with an individual's personality and do not exist independently of the human personality and are incapable of being transferred even on death.  However, if an action for infringement has been lodged and the pleadings have closed prior to death, then the heirs can persist with the claim.

  The right to pursue an infringer can however be ceded to another, but only after the action has been lodged and the pleadings have closed.

  An individual can license his/her right of publicity although it will not be a licence per se but will amount to a waiver or an agreement not to sue.  The individual can agree not to exploit his rights of publicity by, for example, using his likeness for certain purposes, which would in effect amount to an exclusive licence.

  When drafting an assignment/license of the right of publicity be explicit about exactly what the other side is being permitted to do and under what circumstances.

  Whether a licensor can withdraw the consent to its use would depend on the terms of the agreement between the parties, being a contractual waiver in nature.

  If a licensor were to die while the license agreement is still in force the agreement will terminate given that personality rights are inseparably linked to the individual and terminate on death. The agreement does not bind the successors.

  Assignments of personality rights are not possible.

  Unless subject to a trade mark registration, heirs will have no independent right over the deceased individual's name, image, likeness or other unequivocal aspects of his/her identity. 

4.3. Enforcement

Only the individual or a cedant of that person's claim has standing to sue for a violation of the right of publicity.

  Commercial and non-commercial uses can amount to an infringement of personality rights. It is not necessary to prove that that individual's name, image, likeness, or other unequivocal aspects of one's identity have a commercial value to obtain an injunction or other remedies for the unauthorized use.

  Defences that may be available to the alleged infringer include:

  • consent; 
  • necessity - where the defendant is put into such a position by circumstances outside his control that the can only protect his legitimate interests or those of another through infringing the personality rights of the claimant; 
  • self-defence (rare in terms of personality rights); 
  • public interest - authorisation by statute or by virtue official capacity.