Introduction To Intellectual Property Law Masterset

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Dean & Dyer
Introduction to
Intellectual Property Law
C O M M E R C I A L L A W
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97801
Dean & Dyer
Introduction to
Intellectual Property Law
C O M M E R C I A L L A W
OWEN DEAN (Editor)

ALISON DYER (Editor)
TERTIA BEHARIE
DINA BIAGIO
HERMAN BLIGNAUT
LODEWYK CILLIERS
DAVID COCHRANE
MIKHALIEN DU BOIS
JOHN FOSTER
TYRON GRANT
COBUS JOOSTE
SADULLA KARJIKER
MOHAMED KHADER
MEGAN REIMERS
TSHEPO SHABANGU
MARCO VAN DER MERWE
EBEN VAN WYK
9780199045792_Intellectual_property_law_titp.indd 2 2014/10/22 10:43 AM

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First published 2014
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Dean & Dyer: Introduction to Intellectual Property Law
ISBN 978 019 904579 2
First impression 2014
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Acknowledgements
Publisher: Penny Lane
Development editors: Jessica Huntley, Nadia Hassen
Project manager: Marguerite Lithgow
Copy editor: Sandra Mills
Proof readers: Annette de Villiers, Jeannie van den Heever
Indexer: Michel Cozien
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The authors and publisher gratefully acknowledge permission to reproduce copyright material
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Links to third party websites are provided by Oxford in good faith and for information only.
Oxford disclaims any responsibility for the materials contained in any third party website
referenced in this work.

This book is dedicated to
Geoffrey Webster,
patent attorney and former Managing and Senior Partner
of Spoor & Fisher, specialist intellectual property attorneys.
Geoff Webster is the pioneer and doyen of authors of South African textbooks on
intellectual property law and set the benchmark for books of this genre with his book
entitled South African Law of Trade Marks, first published by Butterworths in 1964, and
which remains the seminal work on this branch of the law. He has been a mentor to the
editors of this book, and directly or indirectly has had a significant influence on its authors.
He also played a leading role in establishing and conducting courses for the education
of aspirant patent attorneys and trade marks attorneys. His contribution to learning
in the field of intellectual property law has been immense and unequalled.
It is hoped that this book will come somewhere close to meeting

the very high standards set by Geoff Webster.

Contents in brief
CHAPTER 1 COPYRIGHT 1
CHAPTER 2 TRADE MARKS 77
CHAPTER 3 UNLAWFUL COMPETITION 184
CHAPTER 4 COUNTERFEIT GOODS 211
CHAPTER 5 PATENTS 237
CHAPTER 6 PLANT BREEDERS’ RIGHTS 283
CHAPTER 7 DESIGNS 295
CHAPTER 8 TRADITIONAL KNOWLEDGE, TRADITIONAL CULTURAL EXPRESSIONS

AND FOLKLORE 331
CHAPTER 9 COMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING

INTELLECTUAL PROPERTY 360
CHAPTER 10 INTELLECTUAL PROPERTY LAW IN THE DIGITAL ENVIRONMENT (EIP LAW) 390
CHAPTER 11 INTELLECTUAL PROPERTY RIGHTS AND THE CONSTITUTION 466

Contents
PREFACE xxv
ACKNOWLEDGEMENTS xxix
FOREWORD xxxi
ABOUT THE AUTHORS xxxv
1.1 Introduction 3
1.1.1 Description of copyright 3
1.1.2 Legislative framework and international arrangements 4
1.2 Protectable subject matter 7
1.2.1 What constitutes a ‘work’? 7
1.2.2 The classes of ‘works’ in which copyright can subsist 8
1.2.2.1 Literary works 8
1.2.2.2 Musical works 9
1.2.2.3 Artistic works 10
1.2.2.4 Cinematograph films 11
1.2.2.5 Sound recordings 12
1.2.2.6 Broadcasts 13
1.2.2.7 Programme-carrying signals 13
1.2.2.8 Published editions 13
1.2.2.9 Computer programs 14
1.2.3 Importance of classification 15
1.3 Requirements for subsistence of copyright 15
1.3.1 No formalities prescribed 15
1.3.2 Originality 16
1.3.3 Material form 18
1.3.4 Author a ‘qualified person’/Work first published in Berne Convention country 19
1.4 Authorship 19
1.4.1 Determination of ‘author’ with reference to the type of work 19
1.5 Duration and effect 21
1.5.1 Determination of ‘duration’ with reference to the type of work 21
1.5.1.1 Literary, musical and artistic works (other than photographs) 21
1.5.1.2 Cinematograph films, photographs and computer programs 22
1.5.2 Determination of ‘effect’ or ‘content’ of copyright with reference to the type of work 23
1.5.2.1 Literary and musical works 23

1.6 Ownership 25
1.6.1 General rule pertaining to ownership of copyright 25
1.6.2 Exceptions 25
1.6.2.1 Works intended for publication 25
1.6.2.2 Specific works created for payment 26
1.6.2.3 Employer/employee 26
1.6.2.4 Vesting of the ownership of copyright 27
1.6.2.5 The state and international organisations 27
1.7 Assignments and licences 29
1.7.1 Formalities for the valid assignment of copyright 29
1.7.2 Exclusive, non-exclusive and sole licences 30
1.7.2.1 Exclusive licence 31
1.7.2.2 Non-exclusive licence 31
1.7.2.3 Sole licences 32
1.7.2.4 ‘Needletime’ licences 32
1.8 Infringement 32
1.8.1 Direct infringement 33
1.8.2 Indirect infringement 38
1.8.2.1 Dealing in infringing articles for purposes of trade 38
1.8.2.2 Public performances 39
1.8.2.3 Parallel importation/grey goods 39
1.8.3 Criminal infringement 43
1.8.4 Distinguishing copyright infringement from plagiarism 44
1.9 Statutory defences to infringement of copyright 45
1.9.1 Specific defences relying on exemptions 45
1.9.1.1 Fair dealing 45
1.9.1.2 Various other general exceptions 47
1.9.1.3 Records of musical works 48
1.9.1.4 Specific exceptions for artistic works 49
1.9.1.5 Reverse engineering exception for artistic works 49
1.9.1.6 Specific exception for programme-carrying signals 51
1.9.1.7 Specific exception for computer programs 51
1.9.2 Other defences provided for by regulation 52
1.9.3 Copyright Tribunal 52
1.10 Author’s moral rights 53
1.10.1 Right of paternity 54
1.10.2 Right of integrity 54
1.11 Onus of proof in proceedings 54
1.11.1 General 54
1.11.2 Essential averments 55
1.11.3 Presumptions 55
1.11.4 Affidavit evidence 57
1.12 Remedies for copyright infringement 57
1.13 Checklist in considering viability of a copyright infringement claim 59
1.14 Registration of copyright in cinematograph films 60
1.14.1 Nature and purpose of the Registration Act 60
1.14.2 Procedure for obtaining registration 61
1.14.2.1 The applicant 61
1.14.2.2 Procedure 61

1.14.2.3 Grant, duration and effect 63
1.14.3 Objection to registration 63
1.15 Performers’ protection 64
1.15.1 Nature and purpose of the Performers’ Protection Act and conditions for protection 64
1.15.2 Content and infringement of performers’ right 65
1.15.3 Specific defences 66
1.15.4 Licensing and the unassignability of performers’ rights 67
1.16 Traditional knowledge 67
1.16.1 Protection of traditional knowledge under copyright law 68
1.16.1.1 Traditional works 68
1.16.1.2 Requirements for subsistence of copyright in traditional works 69
1.16.1.3 Authorship and ownership 71
1.16.1.4 Duration and effect 72
1.16.1.4.1 Term of protection 72
1.16.1.4.2 Restricted acts in relation to traditional works 72
1.16.1.5 Exemptions from infringement of copyright in traditional works 73
1.16.1.6 Assignment and licences 74
1.16.2 Amendment of the Performers’ Protection Act, 1967, by the Amendment Act 75

2.1 General introduction 79
2.2 Trade mark registration and formalities 79
2.2.1 Introduction 79
2.2.2 The use and value of registered trade marks in modern society 80
2.2.3 The classification of goods and services 82
2.2.4 Registrability and conflict searches 85
2.2.5 The registration procedure 86
2.2.5.1 Introduction 86
2.2.5.2 The register and Registrar of Trade Marks 86
2.2.5.3 The registration process 87
2.2.5.4 Filing the application 88
2.2.5.5 Examination by the Registrar 89
2.2.5.6 Refusal or provisional refusal of trade mark applications 91
2.2.5.7 Acceptance, advertisement and registration 91
2.2.6 Amendment of trade marks and specifications of goods/services 92
2.2.7 Renewal of trade marks 92
2.3 Nature and essence of a trade mark 93
2.3.1 What is a ‘mark’? 93
2.3.2 What is a trade mark? 97
2.3.3 Special trade marks (certification and collective marks) 99
2.3.3.1 Certification trade marks 99
2.3.3.2 Collective trade marks 99
2.3.3.3 General 100
2.3.4 Trade marks under the Intellectual Property Laws Amendment Act 28
of 2013 (Indigenous Knowledge) 100
2.4 Registrability of trade marks 103
2.4.2 Capable of distinguishing (section 9) 103
2.4.3 Disqualifications from registration (section 10) 106

2.4.3.1 Lack of intrinsic registrability 106
2.4.3.2 Prohibited marks 112
2.4.3.3 Proprietorship and good faith 114
2.4.3.4 Third party rights 115
2.5 The transfer of trade marks and licensing 116
2.5.1 ‘Transfer’ of rights in a trade mark 117
2.5.2 Assignment 117
2.5.3 Transmission 118
2.5.4 Recordal of assignment or transmission 119
2.5.5 Licensing of registered trade marks 120
2.6 Trade mark oppositions 121
2.6.2 Grounds of opposition 122
2.6.3 Opposition procedure 128
2.7 Rectification of trade marks 130
2.7.2 Purpose of rectification proceedings 130
2.7.3 Interested party 131
2.7.4 Grounds of rectification 132
2.7.4.1 Section 24(1): entries wrongly made or remaining on the register 132
2.7.4.2 Section 27: non-use 134
2.7.5 Procedure 138
2.8 Honest concurrent use 138
2.9 Trade mark infringement 139
2.9.2 Grounds of infringement 140
2.9.2.1 Section 34(1)(a): identical goods/services 140
2.9.2.2 Section 34(1)(b): similar goods/services 148
2.9.2.3 Section 34(1)(c): dilution 151
2.9.2.4 Section 35: ‘famous’ marks 156
2.9.3 Defences to infringement 159
2.9.3.1 Section 34(2)(a): bona fide use of own name 159
2.9.3.2 Section 34(2)(b): bona fide descriptive use 160
2.9.3.3 Section 34(2)(c): bona fide use to indicate intended purpose 162
2.9.3.4 Section 34(2)(d): use on genuine goods 163
2.9.3.5 Section 34(2)(e): bona fide use of utilitarian features 163
2.9.3.6 Section 34(2)(f): use for which a registration does not extend 163
2.9.3.7 Section 34(2)(g): concurrent registration 164
2.9.3.8 Acquiescence and estoppel 164
2.9.4 Procedure for lodging a claim for trade mark infringement 164
2.9.5 Remedies 164
2.10 Passing off 166
2.10.2 Elements of passing off 166
2.10.2.1 Reputation 167

2.10.2.2 Misrepresentation 170
2.10.2.3 Likelihood of confusion 175
2.10.3 Procedure for instituting a passing off claim 177
2.10.4 Remedies 177
2.10.5 Defences 177
2.11 Determining the likelihood of confusion: comparison of marks 178
2.12 Conclusion 183

3.1 Introduction 184
3.2 Development of unlawful competition 186
3.2.1 The Aquilian action 186
3.2.2 The rise of unlawful competition 187
3.3 The right to attract custom 190
3.4 Competition principle 191
3.5 Types of unlawful competition 191
3.5.1 Common law grounds 193
3.5.1.1 Passing off 193
3.5.1.2 Leaning on 193
3.5.1.3 Misappropriation and misuse of trade secrets of another 194
3.5.1.4 Misrepresentation as to geographic origin of goods 195
3.5.1.5 Misrepresentation as to nature/composition of goods 196
3.5.1.6 Misrepresentation as to class or quality of goods 196
3.5.1.7 Misrepresentation that another trader’s goods are own goods 196
3.5.1.8 Dishonest adoption of sign or get-up of competitor 196
3.5.1.9 Adoption of trade description of competitor 197
3.5.1.10 Disparaging comments regarding a competitor’s business 198
3.5.1.11 Interference with contractual relationships 199
3.5.1.12 Boycotting of a business 199
3.5.1.13 Physical or psychological pressure exerted on a rival’s customers
or employees 200
3.5.1.14 Trading in contravention of a right of another 200
3.5.2 Statutory prohibitions 200
3.5.2.1 Parallel importation 201
3.5.2.2 False trade descriptions 203
3.5.2.3 Prohibited emblems and marks 204
3.5.2.4 Ambush marketing and protected events 205
3.6 Defences 208
3.6.1 Self-defence 208
3.6.2 Emergency or necessity 208
3.6.3 Public interest 208
3.7 Relationship with the Trade Marks Act and other IP statutes 209
3.8 Remedies 209
3.9 Conclusion 210

4.1 Introduction to the Counterfeit Goods Act 212
4.1.1 Definitions 213
4.1.1.1 Counterfeit goods 213

4.1.1.2 Intellectual property rights 214
4.1.1.3 Dealing in counterfeit goods 215
4.1.2 Offence of dealing in counterfeit goods 215
4.2 Search and seizure operation 215
4.2.1 Who may lodge a complaint? 215
4.2.2 What are the substantive requirements for a complaint? 216
4.2.3 Lodging the complaint with inspectors 219
4.2.3.1 Definition of inspectors 219
4.2.4 The inspector’s consideration of the complaint 219
4.2.5 Application for a search and seizure warrant 220
4.2.6 Execution of a warrant 222
4.2.7 Initiating a search and seizure without a warrant 223
4.2.8 Powers of inspector to search, seize and collect evidence 225
4.2.9 Duties of the inspector 225
4.2.9.1 Preparation of inventory of seized goods 225
4.2.9.2 Transportation of seized goods to a counterfeit goods depot 226
4.2.9.3 Notice of seizure 226
4.2.10 Storage of seized goods and access 227
4.3 Post seizure 227
4.3.1 Lodging of criminal complaint 227
4.3.2 Obligations of state and complainant 227
4.3.3 Application for release by a dispossessed party 228
4.3.4 Orders that a court may issue 229
4.4 Border control 230
4.4.1 Who may lodge the application? 230
4.4.2 Substantive requirements for the application 230
4.4.3 Response by the Commissioner 231
4.4.4 Detention of goods by the customs authorities 231
4.4.5 Post-detention procedure and seizure 233
4.5 General 233
4.5.1 Evidence and presumptions 233
4.5.2 Liability for loss or damage 235
4.5.3 Penalties 235

5.1.1 History 239
5.1.2 The nature of the right 239
5.1.2.1 Monopoly 239
5.1.2.2 Territorial nature 239
5.1.3 The legislative framework and international arrangements 240
5.2 Basic requirements for obtaining a patent 241
5.2.2 What is an invention? 241
5.2.2.1 Discoveries 241
5.2.2.2 Scientific theories 241
5.2.2.3 Mathematical methods 241
5.2.2.4 Literary, dramatic, musical and/or artistic works 242

5.2.2.5 Schemes, rules, methods of performing mental acts, playing games
or doing business 242
5.2.2.7 Presentation of information 243
5.2.2.8 Offensive or immoral behaviour 243
5.2.2.9 Varieties of plants or animals or biological methods for their production 243
5.2.2.10 Medical methods of treatment 244
5.2.2.11 Inventions contrary to natural laws 244
5.2.2.12 Nuclear energy and material and inventions which are contrary to law 244
5.2.3 Novelty 245
5.2.3.1 The ‘state of the art’ and ‘made available to the public’ 245
5.2.3.2 Exceptions to the ‘general rule’ of novelty 246
5.2.3.3 The test for novelty 247
5.2.4 Inventiveness 248
5.2.4.1 Obvious to a person skilled in the art 248
5.2.4.2 The test for obviousness 249
5.2.4.3 Mosaicing 251
5.2.4.4 New uses of known contrivances 251
5.2.5 Capable of being used or applied in trade or industry or agriculture 251
5.2.6 Lack of utility 251
5.3 Procedure for obtaining a patent 252
5.3.1 The applicant and the inventor 252
5.3.2 Patent applications 253
5.3.2.1 Provisional patent applications 254
5.3.2.2 Complete patent applications 255
5.3.2.3 PCT patent applications 257
5.3.2.4 National phase applications 258
5.3.3 Procedure after filing 258
5.3.4 Grant, duration and effect 259
5.4 Amendment and correction 260
5.4.1 Corrections – section 50 260
5.4.2 Amendments – section 51 261
5.4.2.1 Amendment of provisional patent applications 262
5.4.2.2 Amendment of a patent application prior to grant 262
5.4.2.3 Amendment of a patent after grant 263
5.4.2.4 Amendment of a patent in the course of legal proceedings 263
5.4.3 Procedure on amendment 263
5.4.4 Grounds of objection to amendment 264
5.5 Revocation 265
5.5.1 The absolute nature of the grounds 265
5.5.2 The applicant for revocation 266
5.5.3 When an application for revocation may be brought 266
5.5.4 The grounds 266
5.5.4.1 The patentee is not entitled to apply 267
5.5.4.2 The patent was granted in fraud of rights of the applicant 267
5.5.4.3 The invention is not patentable under section 25 267
5.5.4.4 Inutility 268
5.5.4.5 Insufficiency 268
5.5.4.6 Ambiguity and fair basis 269

5.5.4.7 False statement or representation 270
5.5.4.8 Frivolous, immoral or illegal inventions and nuclear inventions 271
5.5.4.9 Microbiological requirements not met 271
5.5.5 Procedure 272
5.5.6 Partial validity 272
5.6 Infringement 273
5.6.1 Locus standi 273
5.6.2 Determination of infringement 273
5.6.3 Acts of infringement 273
5.6.3.1 Making 273
5.6.3.2 Using 273
5.6.3.3 Exercising 274
5.6.3.4 Disposing of 274
5.6.3.5 Offering to dispose of 274
5.6.3.6 Importing 274
5.6.4 Presumptions in relation to new substances 275
5.6.5 Marketing approval 275
5.6.6 Construction of the claims 275
5.6.6.1 Literal infringement 275
5.6.6.2 Purposive construction 276
5.6.7 The role of expert evidence 277
5.6.8 Defences 277
5.6.8.1 Invalidity of the patent 278
5.6.8.2 Leave and licence 278
5.6.8.3 Exhaustion of rights 279
5.6.8.4 Acquiescence, election, waiver and estoppel 279
5.6.8.5 Ignorance not a defence 279
5.6.8.6 Invalidity of a single claim 279
5.6.9 Contributory infringement 279
5.6.10 Remedies 280
5.6.11 Procedure 281
5.7 General 281
5.7.1 Restoration 281
5.7.2 Patents of addition 282
5.7.3 Assignment and licensing 282

6.1.1 The essence of plant breeders’ rights 284
6.1.2 International arrangements 284
6.2 The nature of plant breeders’ rights 284
6.2.1 Plant varieties 284
6.2.2 Requirements for registrability 285
6.2.2.1 Breeder/applicant 285
6.2.2.2 Bred, discovered and developed 285
6.2.2.3 New 286
6.2.2.4 Distinct 287
6.2.2.5 Uniform 287
6.2.2.6 Stable 287

6.3 Registration 288
6.3.1 Registration procedure 288
6.3.2 Claiming priority 289
6.3.3 Denomination 289
6.3.4 Publication 289
6.3.5 Opposition to the grant of a plant breeder’s right 289
6.3.6 Provisional protection 290
6.3.7 Evaluation 290
6.3.8 Grant/refusal 290
6.3.9 Duration 290
6.4.1 Effect of a plant breeder’s right 291
6.4.2 Exceptions to infringement 291
6.4.2.1 General exceptions 291
6.4.2.2 Research/breeders’ exception 291
6.4.2.3 Farmers’ privilege 292
6.4.3 Remedies in respect of infringement 292
6.5 General 293
6.5.1 Revocation 293
6.5.2 Transfer of plant breeder’s right 293
6.5.3 Licensing 293
6.5.4 Compulsory licences 293
6.5.5 Marking 294
6.5.6 Plant variety listing 294

7.1 The nature of a registered design 296
7.1.1 Designs and patents 297
7.1.2 Designs and trade marks 298
7.1.3 Designs and copyright 299
7.2 The legislative framework and international arrangements 300
7.3 Basic requirements for obtaining a registered design 300
7.3.1 What is a registered design? 300
7.3.2 Protectable features 301
7.3.2.1 Definitions 301
7.3.2.2 Article 301
7.3.2.2.1 Definition of an article 301
7.3.2.2.2 Sets of articles 303
7.3.2.2.3 Class 304
7.3.2.3 Shape, configuration, pattern and ornamentation 304
7.3.2.4 Judged solely by the eye 306
7.3.2.5 Necessitated by the function 307
7.3.3.1 Basic requirements 307
7.3.3.2 Novelty 307
7.3.3.2.1 Novelty criteria 307
7.3.3.2.2 Exclusions 308
7.3.3.2.3 Test for novelty 309

7.3.3.3 Originality 310
7.3.3.4 Not commonplace 311
7.3.4 Additional requirements 311
7.3.4.1 Unity of design 311
7.3.4.2 Multiplied by an industrial process 311
7.3.4.3 Articles in the nature of spare parts 312
7.3.4.4 Functional features 313
7.3.4.5 Methods or principles of construction 314
7.4 Procedure for obtaining a registered design 314
7.4.1 The applicant 314
7.4.2 Procedure 315
7.5 Revocation 318
7.5.1 The absolute nature of the grounds for revocation 318
7.5.4 The grounds for revocation 318
7.5.4.1 Applicant not entitled 319
7.5.4.2 Application in fraud of rights 319
7.5.4.3 Design not registrable under section 14 319
7.5.4.4 False statement 320
7.5.4.5 Application should have been refused under section 16 320
7.5.5 Procedure 320
7.6.2.1 Acts of infringement 321
7.6.2.2 Act in correct class 322
7.6.2.3 Assessment of infringement 322
7.6.3 Defences 323
7.6.4 Remedies 324
7.6.5 Procedure 324
7.7 General 324
7.7.1 Correction and amendment 324
7.8 Traditional designs 326
7.8.1 Basic requirements for obtaining a traditional design 326
7.8.1.1 Forms of traditional designs 326
7.8.1.2 Requirements for registrability 327
7.8.2 Procedure for obtaining registration of a traditional design 328
7.8.2.2 The procedure 328
7.8.3 Revocation of a traditional design 329
7.8.4 Infringement of a traditional design 329
7.8.5 General 330
7.8.5.1 Benefit sharing 330

CHAPTER 8 TRADITIONAL KNOWLEDGE, TRADITIONAL CULTURAL EXPRESSIONS AND FOLKLORE 331
8.1 Introduction: background 332
8.1.1 Definition of traditional knowledge 333
8.1.2 Structure of this chapter 333
Part A: 8.2 Biodiversity and traditional knowledge with respect to patents 333
8.2.1.1 Biodiversity 334
8.2.1.2 Indigenous biological resource 334
8.2.1.3 Indigenous species 334
8.2.1.4 Genetic resource 334
8.2.1.5 Traditional knowledge and use 334
8.2.1.6 Bioprospecting 334
8.2.1.7 Biopiracy 335
8.2.2 The Convention on Biological Diversity 335
8.2.3 The Nagoya Protocol 336
8.2.4 The National Environmental Management: Biodiversity Act 10 of 2004 (NEMBA) 336
8.2.4.1 Background 336
8.2.4.2 Permits 337
8.2.4.3 Benefit-sharing agreements 338
8.2.4.4 Material transfer agreements 338
8.2.4.5 Discovery phase notification form 338
8.2.5 The Patents Amendment Act 20 of 2005 338
8.2.6 Case studies 339
8.2.6.1 Hoodia 339
8.2.6.2 Rooibos/honeybush 340
8.2.6.3 Pelargonium sidoides and Pelargonium reniforme 341
Part B: 8.3 Traditional knowledge and traditional cultural expressions with respect to
trade marks, copyright, performers’ protection and designs 342
8.3.1 Definition of traditional cultural expressions or expressions of folklore 342
8.3.2 The interface between TK, TCEs/Folklore and conventional intellectual property (IP) 343
8.3.3 Challenges surrounding the protection of TK/TCEs 344
8.3.4 The international response 346
8.3.5 South Africa’s solution 347
8.3.6 Intellectual Property Laws Amendment Act 28 of 2013 (IPLAA) 347
8.3.6.1 Nature and objectives of the IPLAA 347
8.3.7 Common definitions and concepts introduced into host Acts 348
8.3.7.1 Indigenous community 348
8.3.7.2 Indigenous cultural expressions or knowledge 348
8.3.7.3 Community protocols 349
8.3.7.4 Unsatisfactory approach 350
8.3.8 Administrative structures 350
8.3.8.1 National Council for IK 350
8.3.8.2 National Trust for IK 351
8.3.8.3 National Trust Fund for IK 351
8.3.8.4 National Database for IK 351
8.3.9 Protection of traditional properties in host Acts 353
8.3.9.1 Trade marks 353
8.3.9.2 Copyright 354
8.3.9.3 Performers’ protection 354

8.3.9.4 Designs 355
8.3.10 Saving of vested rights 355
8.3.11 Role of collecting societies 355
8.3.12 Dispute resolution 357
8.3.13 Modes of protection for TK/TCEs 357
8.4 Conclusion 358
CHAPTER 9 C OMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING INTELLECTUAL

PROPERTY 360
9.1 Assignment 361
9.1.1 Patents and designs 361
9.1.1.1 Recordal of assignment 361
9.1.2 Trade marks 362
9.1.3 Copyright 364
9.1.3.1 Formalities for the valid assignment of copyright 364
9.1.4 Assignment of intellectual property rights in respect of traditional properties 365
9.2 Licensing 366
9.2.2 Fundamental terms of a licence 366
9.2.2.1 The subject of the licence 366
9.2.2.2 Protected acts 367
9.2.2.2.1 Patents 367
9.2.2.2.2 Designs 367
9.2.2.2.3 Trade marks 367
9.2.2.2.4 Copyright 367
9.2.2.3 Field of use 368
9.2.2.4 Nature of the licence 368
9.2.2.5 The duration of the licence 369
9.2.2.6 The territory of the licence 369
9.2.2.7 Licence fees 369
9.2.2.8 Sublicensing 370
9.2.2.9 Other important licence terms 371
9.2.3 Formalities and recordal of licences 371
9.2.3.1 Patents and designs 371
9.2.4 Expressly prohibited provisions in patent licence agreements 375
9.2.5 Licences of right 375
9.2.6.1 Dependent patent 376
9.2.6.2 Abuse of patent and design rights 376
9.2.6.3 Compulsory licensing of copyright 378
9.2.6.4 Licensing of traditional properties 379
9.2.7 The doctrine of exhaustion of rights as applied to patents and designs 381
9.2.8 The doctrine of exhaustion of rights as applied to trade marks 383
9.3 Hypothecation and attachment 383

9.3.3 Copyright 385
9.4 Exchange control requirements 385
9.4.1 Regulation 10(1)(c) 385
9.4.2 Regulation 10(4) 387
9.4.3 Licences granted to foreigners under South African-owned intellectual property 388
9.5 intellectual property from publicly financed research and development 388
10.2 Copyright in computer programs 393
10.2.1 Protection as literary work 393
10.2.2 Protection as sui generis work 395
10.2.2.1 Definition 396
10.2.2.2 Requirements for subsistence 397
10.2.2.2.1 Originality 397
10.2.2.2.2 Material form 399
10.2.2.3 Preparatory materials 400
10.2.2.4 Authorship 402
10.2.2.5 Scope of protection 403
10.2.2.5.1 Exclusive rights 403
10.2.2.5.1.1 Reproduction 403
10.2.2.5.1.2 Adaptation 407
10.2.2.5.1.3 Communication to the public 408
10.2.2.5.2 Exemptions from infringement 409
10.2.2.5.2.1 Fair dealing 409
10.2.2.5.2.2 Back-up copies 412
10.2.2.5.2.3 Reverse engineering 413
10.2.2.5.2.4 Decompilation 414
10.3 Selected themes relating to intellectual property in regard to the utilisation
of computers 416
10.3.1 The Internet 416
10.3.2 Copyright in the digital environment 417
10.3.2.1 Protection of websites 418
10.3.2.1.1 Linking 418
10.3.2.1.2 Framing 424
10.3.2.1.3 Spidering 424
10.3.2.1.4 Database protection 426
10.3.2.1.5 Other forms of possible protection for websites 427
10.3.2.1.5.1 Passing off or unlawful competition 427
10.3.2.1.5.2 Contract 427
10.3.2.2 Caching 428
10.3.2.3 File sharing 430
10.3.2.3.1 Peer-to-peer file sharing 431
10.3.2.3.2 Joint wrongdoing or contributory infringement 432
10.3.2.3.3 BitTorrents and more 434
10.3.2.3.4 A new approach 435
10.3.2.3.4.1 Pursuing individual infringers 435
10.3.2.3.4.2 Blocking access to websites 436
10.3.3 Copyright in digital works 437

10.3.3.2 Distribution 437
10.3.3.3 Disposition 438
10.3.4 Digital rights management 441
10.3.4.2 Types of DRM 441
10.3.4.3 DRM legislation 442
10.3.4.4 DRM limitation 444
10.4 Trade marks in the digital environment 445
10.4.1 Trade mark law 446
10.4.2 Domain names 446
10.4.2.1 Domain name system 447
10.4 2 2 Domain name system v trade marks 447
10.4.2.3 Split mark disputes 448
10.4.2.4 Cybersquatting 448
10.4.2.4.1 Trade mark infringement 449
10.4.2.4.2 Passing off 451
10.4.2.4.3 Unlawful competition 452
10.4.2.5 ADR 452
10.4.2.6 Other forms of abuse related to domain name registrations 454
10.4.3 Metatags 456
10.4.4 Keyword advertising 458
10.4.5 Secondary markets 462
10.4.6 Social networks 464
10.5 Conclusion 465

11.2 Intellectual property rights under section 25 (the constitutional property clause) 467
11.2.1 The First Certification case and background to section 25 and intellectual
property rights 467
11.2.2 The Laugh It Off case 468
11.2.3 Deprivation and expropriation of intellectual property rights 472
11.3 Intellectual property rights and constitutional rights in foreign law 475
11.3.2 Irish law 476
11.3.3 German law 476
11.3.4 Australian law 479
11.3.5 United States of America 483
11.4 International human rights law and intellectual property: a human rights framework for
intellectual property 485
11.5 Conclusions 491
Bibliography 493
Table of cases 503
Table of legislation 517
List of abbreviations 531
Index 533

Preface
1 The nature of IP rights
We are living in a knowledge society. The products of human ingenuity and creative
endeavour surround us and permeate our very existence. Think of the Internet and the
wealth of writings and other forms of expression of information that can be obtained by
tapping into it; the computers and computer programs that enable us to access the Internet;
the motor cars that we drive; the branded breakfast cereals that we eat and drinks that we
imbibe; the medicines that we take; and the countless other products that we use and rely
upon when going about our daily round. In one way or another they all embody or feature
the products of the intellect. These intellectual products are extremely high-value items of
property in the modern world and ought therefore to be nurtured and protected. The
question arises whether they can be and are properly protected. Does the law extend the
umbrella of its protection to these items of immaterial property? The answers to these
questions will be imparted in this book and it will be shown that there is indeed a specialised
branch of the law which is dedicated to achieving the stated objective.
Intellectual property (IP) law is that branch of the law concerned with protecting the
products and fruits of the human intellect and endeavour. Its most important forms or
species are the law of patents, protecting inventions; the law of designs, protecting the
outward appearance and functional attributes of industrial products; the law of trade marks,
protecting words and other symbols designating the trade origin of products; and the law of
copyright, protecting original literary, artistic and other works. These forms of IP may be
referred to as primary IP. There are in addition secondary forms of IP, such as plant breeders’
rights, performers’ rights and traditional knowledge. Furthermore, there are non-statutory
species of IP, such as common law trademarks and trade secrets that are protected by the
law of delict, for example, by way of causes of action for passing off or unlawful competition.
The World Intellectual Property Organization (WIPO) is an agency of the United Nations
and is the organisation which regulates and administers IP on a worldwide basis. It describes
IP rights as follows:
Intellectual property rights are like any other property right. They allow creators, or
owners, of patents, trademarks or copyrighted works to benefit from their own work
and investment in a creation. These works are outlined in Article 27 of the Universal
Declaration of Human Rights, which provides for the right to benefit from the
protection of moral and material interests resulting from authorship of scientific,
literary or artistic productions.1
WIPO substantiates the need for IP rights in the following manner:
There are several compelling reasons. First, the progress and well-being of humanity
rests on its capacity to create and invent new works in the areas of technology and
culture. Second, the legal protection of new creations encourages the commitment
of additional resources for further innovation. Third, the promotion and protection
of intellectual property spurs economic growth, creates new jobs and industries, and
enhances the quality and enjoyment of life.2
1 WIPO ‘What is intellectual property’, www.wipo.int/about/ip/en.

2 Op. cit.

xxviii PREFACE
2 Development of South African IP law

South Africa’s regime of IP law is underpinned by various international conventions or treaties
of which the country is a member. These treaties form the foundation of IP law throughout
the world. The main treaties are the Convention of Paris for the Protection of Industrial
Property (the Paris Convention), dating from 1883 and dealing with patents, designs and
trademarks; the Berne Convention for the Protection of Literary and Artistic Works (the Berne
Convention), dating from 1886 and dealing with copyright; and the Agreement on the Trade-
Related Aspects of Intellectual Property Rights (the TRIPS Agreement), dealing with all forms
of IP and dating from 1994. These treaties have been revised over the years in order to keep
them concurrent with modern technological and other developments. In general they provide
for minimum standards or norms with which member countries’ IP laws must conform, and
they provide for a system of reciprocal international protection for member countries’ works.
South African IP law has been formulated and traditionally interpreted and applied against
the backdrop of these treaties and foreign case law and other authority, particularly British,
applying similar laws. South Africa’s IP laws are by and large in conformity with the prescripts
of the international IP treaties.
IP law has existed on a national basis in South Africa since 1916. In that year the parliament
of the then Union of South Africa enacted the Patents, Designs, Trade Marks and Copyright
Act 9 of 1916 (the 1916 Act ). As its title suggests, the 1916 Act was a composite Act dealing
with all the primary species of IP. Prior to this Act, the various provinces and colonies which
were incorporated into the Union each had their own statutes dealing with certain of the
species of IP on a piecemeal basis. These so-called ‘provincial statutes’ were all repealed by
the 1916 Act. The 1916 Act was the foundation of modern IP law in South Africa.
The 1916 Act was subsequently repealed by separate Acts dealing with individual species
of IP. Primary IP law in South Africa is currently regulated by the Patents Act 57 of 1978, the
Designs Act 195 of 1993, the Trade Marks Act 194 of 1993, and the Copyright Act 98 of 1978.
3 IP and the Constitution

The Constitution of the Republic of South Africa, 1996, as amended, is South Africa’s current
constitution. None of its predecessor South African constitutions contained provisions that
referred to, or directly impacted on, IP. The present Constitution, on the other hand, takes
precedence over all IP legislation and the interpretation and application of such legislation
is subject to its provisions. The Constitution therefore plays an important role in the
application and interpretation of contemporary South African IP law and has added a new
dimension to such law. No work dealing with South African IP law is complete without a
discussion of the impact of the Constitution on this branch of the law.
Section 25 of the South African Constitution deals with property. For present purposes
the relevant part of the section reads as follows:
(1) No one may be deprived of property except in terms of law of general application,
and no law may permit arbitrary deprivation of property.
(2)…..
(3)….
(4) For the purposes of this section-
(a)…
(b) property is not limited to land

PREFACE xxix
It is generally accepted that IP falls within the ambit of ‘property’ as contemplated in section
25(1).3 IP thus enjoys recognition, albeit indirectly, in the Constitution.
Section 2 of the South African Constitution states that ‘This Constitution is the supreme
law of the Republic; law or conduct inconsistent with it is invalid, and the obligations
imposed by it must be fulfilled’.
In terms of this provision all South African laws, including IP statutes and the common
law pertaining to IP, must be interpreted against the background of the Constitution and,
where appropriate, IP laws must be interpreted in a manner which is in harmony with the
provisions of the Constitution, and more particularly the Bill of Rights.4 It is important to
understand the interrelationship between IP law and the Constitution.
4 Evolution of South African IP law

From its humble beginnings as a branch of the law in 1916, IP evolved during the twentieth
century to become a major and important part of the law and a significant factor in the
country’s economic and business environment. With the passage of time it has increasingly
been realised and acknowledged that IP constitutes commercial property and that items of
IP can have enormous monetary value. It has further been appreciated that IP permeates
the fabric of the economy and the business environment. There is barely an area of economic
activity in which IP is not present and does not play a significant role. This trend has
continued into the twenty-first century and has accelerated. The advent of the digital age
and the Internet has added momentum to the increasing importance and usage of IP. There
has been an upsurge in interest in IP in all fields of endeavour in South Africa, not least in
academia and business circles.
Fifty years ago very few, if any, law faculties at South African universities offered any form
of tuition in any aspect of IP. Legal graduates at the time knew virtually nothing about IP
law. With the exception of a handful of specialised IP law firms, the legal profession as a
whole also possessed very little, if any, expertise in IP law. During the past 50 years all of this
has changed. The number of specialised firms and practitioners in IP law has increased
exponentially and many law firms in general practice have now acquired a measure of IP
capability. This development has been in tune with the expanding awareness and influence
of IP in the commercial and industrial milieu. In keeping with this trend, virtually every
South African university of any significance currently offers IP at least as an elective subject
as part of its LLB curriculum. Furthermore, the leading South African universities offer
master’s degrees which consist of, or may include, IP subjects. Doctoral studies in the field
are also actively encouraged at these universities.
5 Contribution to IP literature
Until recently the literature available for instruction and as authority on questions of IP law
has consisted of practitioner’s textbooks suitable for lawyers engaged in the specialised
practice of IP law. The leading works in the field, namely Webster and Page, South African
Law of Trade Marks, Burrell, Burrell’s South African Patent and Design Law and Dean
Handbook of South African Copyright Law are indispensable aids to the practice of IP law
3 See OH Dean ‘Deprivation of trademarks through state interference in their usage’ (2013) 1 South African Intellectual
Property Law Journal para 10.1.
4 Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International 2005 (2)
SA 46 (SCA).

xxx PREFACE
but, on account of their detailed and technical nature, are not necessarily suitable, or
designed, for use by those seeking introductory and basic knowledge of IP, in particular
students and general legal practitioners who have a need to come to grips with this area of
the law. It is felt that the market for IP literature requires a comprehensive work dealing with
the full spectrum of IP law aimed at, and suitable for use by, the uninitiated reader who
desires to be schooled in the basics of IP law. The present work has been written and
compiled with this objective. It seeks to make a contribution to basic learning in the field of
IP law and to deal with IP law in a way which is responsive to the current needs of the
commercial and academic communities. The factors and circumstances outlined in this
preface are an introduction, and form part of the backdrop, to the conception and
preparation of this work.
The editors of the work, Owen Dean and Alison Dyer, are both attorneys of many years’
standing who have specialised in the practice of IP law and at the same time have been active
in the academic field by lecturing on their areas of expertise at various educational
institutions and publishing numerous articles in legal journals. The authors of the individual
chapters are in the main experienced IP practitioners concentrating on the areas of IP law
on which they have written, or are academic lecturers who have conducted academic
research and are specialised in the areas of the law which they have addressed. All the
contributors have a connection with Spoor and Fisher, specialist IP attorneys, or Stellenbosch
University.
In addition to providing basic, yet extensive, coverage of the primary and secondary areas
of IP law, the book contains chapters dealing with counterfeit goods, the commercialisation
of IP, IP in the digital environment and IP and the Constitution. The net has been cast wide
so as to encompass all aspects or areas of IP which are of practical relevance and with which
readers who wish to equip themselves with actual and basic knowledge of the field of IP
require an acquaintance.
In short, the intention is that this book should provide the basic tools for students, legal
practitioners and business people seeking to inform themselves and obtain a working
knowledge of the full spectrum of IP law as it manifests itself in the current socio-economic
environment in South Africa. It serves the purpose of being, inter alia, an entry-level treatise
on IP law. Readers who require a more in-depth knowledge of the subject matter can
progress to the specialist practitioners’ handbooks referred to above secure in the knowledge
that they have gained the foundation that will enable them to derive full value from using
these more advanced works.

Acknowledgements
The roles played by the following persons in the production of this book warrant being
specially acknowledged:
Spoor & Fisher (Intellectual Property Attorneys) – Embracing and supporting the project
wholeheartedly.
Ms Penny Lane (Oxford University Press) – Conceptualising and initiating the project
and providing encouragement, guidance and support.
Judge Mabel Jansen (North Gauteng High Court, Pretoria) and Professor Charles Gielen
(University of Groningen, Netherlands) – Providing valuable constructive criticism and input
on the draft text.
Ms Annette van Tonder (Anton Mostert Chair of Intellectual Property Law, University
of Stellenbosch) – Providing invaluable administrative and logistical support, and, in
particular, shepherding the authors.
Ms Sandra Mills (copy editor) – Providing empathetic and skilled editorial services.
The staff of Oxford University Press – Assisting with, and effecting the production of,
the book in a co-operative and helpful manner, characterised by patience.
The families of the Editors and Authors – Sacrificing the time and due attention of the
Editors and Authors while undertaking their contributions to the book.

Foreword
A wise man will always allow a fool to rob him of ideas without yelling “Thief !”.
If he is wise he has not been impoverished. Nor has the fool been enriched.
The thief flatters us by stealing. We flatter him by complaining.
Ben Hecht: A Child of the Century
The Demiurge, as the prime mover in Plato’s philosophy, contended that nature, in its
wisdom, did not allow leaves to fall from the branches of trees in their pristine, green format.
They were destined to blaze a path of glory in bright autumnal colours before their wintery
demise. When a great intellect dies, one is left with a feeling of loss at the vast treasure trove
of knowledge that has been obliterated. Only the gifted, those who leave a heritage of artistic,
musical, literary, architectural and other species of intellectual property, behind them, tread
deep footprints evidencing their short sojourn on earth. Their Tours Eiffel stand proud for
centuries. It is for this reason that the law of intellectual property is of such importance, and
confers a monopoly of varying degrees within which its creators may utilise their creations
exclusively, before they enter the common domain.
Benjamin Franklin said that some people die at the age of 25, but are not buried until
aged 75. All children are born geniuses. Some blossom in the desert, and meet the Little
Prince. Others shoot to fame: their intellectual endeavours are immortal.
Decades ago, I had the privilege of appearing in a copyright matter as a very junior
advocate before a judge in the Western Cape High Court, Cape Town, briefed by a Mr Owen
Dean from the firm of attorneys Spoor & Fisher. The main authority I handed up was an
article which had appeared in a law journal written by Mr Owen Dean. The judge, who will
remain nameless, dryly commented that he believed my argument would not be greatly
strengthened by the fact that my attorney’s viewpoint had appeared in an article published
in a law journal. I should add, though, that subliminally it clearly carried weight, as the judge
was easily persuaded to rule in our client’s favour.
Four years later, I once again appeared before the self-same judge in a copyright matter
briefed by Mr Dean, now Dr Dean, as my instructing attorney. This time I came with fortified
artillery. I handed a textbook to him, written by Dr Dean. The judge dryly commented that
he took note of the fact that we had, in the interim, ‘upgraded’. The judge not only ruled in
our favour but also quoted from the textbook in his judgment.
We had a similar experience with Anton Piller orders. Dr Dean was the pioneer in
implementing this species of relief in South Africa (now simply called search and seizure
orders) and proudly sported a blue eye as testimony of this fact. We appeared before a judge
in Grahamstown, seeking an Anton Piller order, and again, coincidentally, appeared before
the very judge in the Eastern Cape High Court in Port Elizabeth. He wished to know whether
we effectively constituted a hit team, touring South Africa seeking Anton Piller orders.
Dr Dean’s textbook grew from modest beginnings to become the leading textbook on
copyright law and graces the library of every legal practitioner worth his or her salt in the
field of intellectual property law. It graces the shelves of all competing law firms, which in
itself speaks volumes. The textbook, Dean’s Handbook of South African Copyright Law, grew
not only in length but in stature, and has been quoted copiously in copyright judgments.
Alison Dyer, the co-editor of this textbook, is a trailblazer in her own right. In an era when
only a miniscule number of woman managed to become partners at firms of attorneys, Dyer

xxxiv FOREWORD
become a full-time partner in Spoor & Fisher’s patent department – a remarkable feat in
those years. It was then difficult, if not virtually impossible, for a woman to gain acceptance
in the male dominated judicial field. Both co-editors are past Presidents of the South African
Institute of Intellectual Property Law, but Dyer has the distinction of being the first female
president. She was also a member of the Standing Advisory Committee on Intellectual
Property Law, and a lecturer at the University of the Witwatersrand, and, in 2013, at the
University of Stellenbosch for the LLM courses in patent and design law. In addition, she
has authored various articles in the fields of patents, designs and traditional law. When I
joined the bar in 1984, for example, there was only one other female advocate. To shatter the
glass ceiling and to specialise in the chemical, pharmaceutical and biochemical fields, as
Alison Dyer did, was unheard of and well-nigh impossible to accomplish. Yet Dyer did
exactly that. She became a role model for all women and has, until very recently, been one
of only two women ever to form part of a firm of attorneys’ patent division. When Alison
Dyer’s name is mentioned, it is done in hushed tones and with great respect.
Thus, to have such an accomplished duo set out to be the co-editors of a textbook which
is sorely needed in South Africa, namely a textbook dealing with all facets of intellectual
property law, is not only an incredible privilege, but it is also due to pure serendipity that
both these gifted individuals happened to join the same firm of attorneys and join forces. I
hasten to add that what I have stated about Dean and Dyer in no way detracts from the
invaluable input of all the other authors without whose diligent research, efforts and insight,
overseen by the co-editors, Dean and Dyer’s dream would never have come to fruition. Most
of the authors are employed by Spoor & Fisher. It is evident that the training and work ethos
of the firm are exemplary. This fact also bears testimony to the firm’s excellent headhunting.
The quality of their work is exemplary.
Furthermore, both Dean and Dyer were closely involved in most of the leading cases
which shaped the evolvement of intellectual property law in South Africa, and thus do not
write from the confines of an ivory tower but from the perspective of fighting in the trenches.
Their formidable experience and prowess, coupled with their academic knowledge of
intellectual property law, greatly enhance the value of this digest on intellectual property
law. The UK and other jurisdictions have publications covering the entire spectrum of
intellectual property law, by authors such as Bainbridge, Bently & Sherman, and Cornish.
Such textbooks as do exist in South Africa which seek to deal with intellectual property law
in general, skim the surface, and lack the depth and insight which the co-editors have
brought to this remarkable textbook.
In today’s fast developing world dominated by technology, protecting intellectual
property should be our most important goal. All creators build on that which preceded them,
as Alexander Graham Bell readily conceded.
There is always a raging debate between members of committees responsible for
acquiring textbooks for a library for communal use. Certain members wish to buy the most
complex textbooks; others, the simplest. It is seldom that a textbook strikes the right balance.
This is precisely what Dean and Dyer’s Introduction to Intellectual Property Law does.
Nobody can absorb an intricate textbook on subject matter about which they have little
knowledge; those with knowledge do not wish to read a simplistic book. To find a textbook
which sets out this intricate field of law, in easily digestible bytes, which are simultaneously
of an advanced nature, is no mean feat.
Ideas beget ideas and multiply. Every facet of our daily lives is infused with intellectual
property from the shoes we wear, the shape of our cufflinks, the coffee we drink, the
computers we use and the paper on which we print our legal opinions. Even though Bill

FOREWORD xxxv
Gates dismissively stated that intellectual property has the shelf life of a banana, history and
the iPad have proved him wrong. With a little thought, clever packaging and a catchy trade
mark, even dry bananas become a delicious and lucrative product.
We have the further privilege of belonging to a diverse and culturally rich country, with
11 official languages. Protecting our cultural heritage has become a priority, as demonstrated
by the drafting of the sui generis Protection of Traditional Knowledge Bill of 2013 by Dr Dean.
(His endeavours gave rise to a plethora of diverse viewpoints, and although the protection
of traditional knowledge is now sought to be accommodated in the Intellectual Property
Laws Amendment Act 28 of 2013, his efforts were not in vain because he set the ball rolling.)
Which other country boasts a ‘Miriam Makeba’, and sonorous names such as ‘Sibongile’,
‘Jabulani’ and ‘Dikgang’? Add to the equation an avant-garde Constitution, and South Africa
is well placed to become a trailblazer in intellectual property rights worldwide.
IKEA, tongue in cheek, has just produced a brilliant television advertisement proclaiming
the advantages of their catalogue in booklet format. They call it a ‘book’ book. It requires no
uploading, there is no lag time, it can be flipped through easily, is fully charged with an
eternal battery life, requires no cables, has navigational tactile technology, and a quick
overview can be obtained by holding it in one’s palm and just using one’s thumb to flip
through it. Dean and Dyer’s textbook is as innovative.
Ryan Lilly stated: ‘If you’re struggling “to think outside the box” remember the box is
self-imposed. Who says it has to be a box? Why not a bowl of petunias?’
Hence it is with pride that I hereby present you with a bowl of gilded petunias. Enjoy it
– and then create ...
Mabel Jansen
Judge of the Gauteng High Court

About the authors
EDITORS
Owen Dean
BA (Law), LLB, LLD (Stellenbosch).
Owen Dean is Professor of Intellectual Property Law, and the incumbent of the Anton
Mostert Chair of Intellectual Property, Faculty of Law at the University of Stellenbosch.
Previously a senior partner of Spoor & Fisher, he presently acts as a consultant for the firm,
and provides advice and legal services to various local and international listed companies.
He is admitted to practice as an attorney and notary in South Africa, and also as an attorney
in Botswana and Namibia. Owen’s specialist expertise includes trade mark litigation,
copyright law (with a special emphasis on litigation and opinion work), unlawful
competition, entertainment law, media law, and anti-counterfeiting. Owen has played an
active and prominent role as a lawmaker in South Africa, serving for 20 years on the South
African Government’s Advisory Committee on Intellectual Property Law, and as Chairman
of the Copyright Sub-Committee of that Committee. He is a past President of the South
African Institute of Intellectual Property Law, and is listed as a Senior Statesman of
Intellectual Property by Chambers and Partners in 2012 and 2013 in the Global-Wide and
Pan-Regional Sections of the Chambers Global Ranking. Owen publishes research prolifically
within the areas of his expertise, and is the author of the esteemed Handbook of South
African Copyright Law.
Alison Dyer
BSc (Hons) Chem, LLB (KwaZulu-Natal).
Alison Dyer has practiced as a patent attorney at Spoor & Fisher, specialising in patent and
design matters in the chemical, pharmaceutical and biochemical fields, since 1979. She is
currently a consultant for the firm. She is a past President of the South African Institute of
Intellectual Property Law, and previously served as a member of the Standing Advisory
Committee on Intellectual Property Law to the Department of Trade and Industry. She has
lectured courses in patent and design law for the LLM programmes at the University of the
Witwatersrand and the University of Stellenbosch. Alison publishes research in the areas of
patents, designs and traditional knowledge.
AUTHORS
Tertia Beharie
BSc (Pure & Applied Chemistry) (KwaZulu-Natal), BSc (Hons) (Chemistry) (KwaZulu-Natal),
LLB (South Africa).
Tertia Beharie is a patent attorney and partner at Spoor & Fisher. Her practice focuses on
domestic and international patent matters, including the preparation and prosecution of
patent applications, and includes an interest in biodiversity and traditional knowledge
issues. Tertia specialises in the pharmaceutical, chemical, petrochemical, agrochemical,
explosives, metallurgical and biochemical fields. Tertia is a Fellow of the South African
Institute of Intellectual Property Law.

xxxviii ABOUT THE AUTHORS
Dina Biagio
BSc (Physics), BSc Eng (Electrical) Cape Town, LLB (South Africa).
Dina Biagio is a partner at Spoor & Fisher where she advises primarily on the development
and commercialisation of intellectual property, specifically that involving software,
inventions, or products having a technical flair. She is a patent attorney, and a Fellow of the
South African Institute of Intellectual Property Law. Dina’s expertise lies within technology
transfer, collaborative development arrangements, investment structuring, intellectual
property audits and due diligence, intellectual property management, and intellectual
property ownership structuring and licensing. She has a special interest in the exhaustion
of intellectual property rights, open source software development and the valuation of
intellectual property. Dina is an experienced licensing practitioner who serves on the board
of the Licensing Executives Society (South Africa), and who lectures in the field.
Herman Blignaut
LLB (Pretoria).
Herman Blignaut is an Attorney of the High Court of South Africa and a Notary Public. He
practises as a partner at Spoor & Fisher, focusing on copyright and trade mark law. Herman
is a Fellow of the South African Institute of Intellectual Property Law, where he serves as a
lecturer and examiner of the subject South African Copyright Law and Practice. Herman
publishes research widely within his areas of expertise, and regularly presents guest lectures
on various topics which include advertising and regulatory matters.
Lodewyk Cilliers
BEng (Mechanical) (North-West), Pr.Eng LLB (South Africa).
Lodewyk Cilliers is a partner at Spoor & Fisher, where he specialises in the filing and
prosecution of patent and registered design applications, locally and abroad, focusing in
particular on mechanical, civil and general engineering inventions. Lodewyk is a Fellow of
the South African Institute of Intellectual Property Law, a member of the South African
Institute of Mechanical Engineers, and a registered professional engineer at the Engineering
Council of South Africa. He is a lecturer and examiner of the subject South African Design
Law and Practice at the Patent Board and the South African Institute of Intellectual
Property Law.
David Cochrane
BSc Chem (Witwatersrand), LLB (Witwatersrand).
David Cochrane is a partner at Spoor & Fisher, where his practice specialises in plant
breeders’ rights. He is an Attorney of the High Court of South Africa, and a patent attorney.
David is a member of the Council of the South African Institute of Intellectual Property Law,
and is the Rapporteur for the Plant Breeders’ Rights Committee of this organisation.

ABOUT THE AUTHORS xxxix
Mikhalien du Bois
LLB, LLD (Stellenbosch).
Mikhalien du Bois is a Senior Lecturer in the Department of Mercantile Law, at the University
of South Africa. She lectures and researches within the fields of intellectual property law and
constitutional property law. Prior to her appointment at the University of South Africa,
Mikhalien was a Post-doctoral Research Fellow of the South African Research Chair in
Property Law, Faculty of Law at the University of Stellenbosch. She serves as an Assistant
Editor for the Annual Survey of South African Law.
John Foster
BComm (Law), LLB (Stellenbosch).
John Foster is an Attorney of the High Court of South Africa, and an associate at Spoor &
Fisher. His practice specialises in trade mark registration, portfolio management and
enforcement, passing-off and unlawful competition claims, domain name registration and
disputes, copyright litigation, advertising pre-clearance and complaints, and commercial
intellectual property transactions. He is a member of the Cape Law Society and the South
African Institute of Intellectual Property Law.
Tyron Grant
BSc (Human Genetics) (Pretoria), BSc (Hons) (Genetics) (Pretoria), MSc (Genetics)
(Pretoria), LLB (South Africa).
Tyron Grant is a partner at Spoor & Fisher, where, as a patent attorney, he specialises in the
drafting and prosecution of patent applications, particularly in the field of Biotechnology
and Life Sciences, locally and abroad. Tyron assists with litigation matters related to
biotechnological inventions, and provides advice in respect of the Genetically Modified
Organisms Act, the Plant Breeders’ Rights Act, and the National Environmental Management:
Biodiversity Act. He is a Fellow of the South African Institute for Intellectual Property Law.
Cobus Jooste
BA (Law) LLB (Stellenbosch).
Cobus Jooste is a Lecturer in the Department of Mercantile Law, Faculty of Law at the
University of Stellenbosch, where he lectures on intellectual property in the digital
environment (EIP law), Internet law and information and communications technology (ICT)
law. His experience and specialist expertise is on the nexus of intellectual property law and
information and communications technology law with an emphasis on the application of
copyright law to digital technology. His LLD research focuses on the decompilation
prohibition and the protection of non-literal elements of computer programs. Cobus
publishes research on various issues of intellectual property law and practice with particular
focus on the digital environment and the Internet. He is a member of the Intellectual
Property Unit and a Fellow of the Anton Mostert Chair of Intellectual Property Law at the
University of Stellenbosch. He serves as a consultant, in the field of technology law practice,
to the firm Werksmans Inc.

xl ABOUT THE AUTHORS
Sadulla Karjiker
BSc LLB (Cape Town), LLM (London), LLD (Stellenbosch).
Sadulla Karjiker is a Senior Lecturer in the Department of Mercantile Law, Faculty of Law at
the University of Stellenbosch, where he lectures on aspects of intellectual property law and
company law, and is a member of the Intellectual Property Unit of the Anton Mostert Chair
of Intellectual Property. He is admitted as an Attorney of the High Court of South Africa, and
as a Solicitor in England, and has practised in corporate and commercial law in both
jurisdictions. Sadulla has worked in the field of legal publishing in the United Kingdom, on
technology related projects.
Mohamed Khader
BProc LLB (KwaZulu-Natal).
Mohamed Khader heads the anti-counterfeiting department at Spoor & Fisher. His specialist
expertise includes anti-counterfeiting, copyright law and trade mark law, with an emphasis
on litigation. Mohamed has played a prominent role in the development of anti-
counterfeiting practices and procedures in South Africa, and presents numerous seminars
relating to anti-counterfeiting to the Department of Customs and Excise, the South African
Police Service and the National Prosecuting Authority.
Megan Reimers
BLC LLB (Pretoria).
Megan Reimers is a partner at Spoor & Fisher, and her areas of expertise are specialised
within trade mark law and copyright enforcement matters. She has many years of experience
as a trade mark practitioner. Her practice includes advice and assistance on matters relating
to the Advertising Standards Authority, domain name disputes, and misuse of trade marks
on the Internet. In addition, Megan has developed a special interest in regulatory matters,
particularly relating to food and beverages, and she provides advice on these issues. Megan
serves on the ADR Domain Name Dispute Committee of the Institute of Intellectual Property
Law, and is an editor for the World Trade Mark Review.
Tshepo Shabangu
BProc LLB, LLM (Bonn).
Tshepo Shabangu is a partner at Spoor & Fisher, and has many years of experience in the
practice of domestic and international trade mark law. Her fields of expertise include the
drafting of intellectual property-related agreements and corporate governance. She is a
former President of the South African Institute of Intellectual Property Law (she was the first
black person to hold this position), and is a member of the German Chamber of Commerce,
the Corporate Lawyers’ Association, the Black Lawyers’ Association, and the Licensing
Executives Society. Tshepo is an affiliated member of the United States National Bar
Association, and participated in the Fortune 500 mentorship programme in the United States
of America, a programme for female leaders in emerging markets. She is the current
representative of the Law Society of South Africa at the International Bar Association (IBA)
and related conferences. She also serves as a non-executive director and trustee of
various organisations.

ABOUT THE AUTHORS xli
Marco van der Merwe

BLC LLB (Pretoria).
Marco van der Merwe is a partner at Spoor & Fisher, specialising in trade mark prosecution,
domain name registration procedures, copyright, and related intellectual property law. Prior
to joining Spoor & Fisher, he was a computer scientist at the University of South Africa. In
addition to his legal practice, he manages the department responsible for the registration of
trade marks in southern Africa. Marco is the current Vice President and Treasurer of the
South African Institute of Intellectual Property Law. He was awarded Microsoft Corporation’s
prestigious ‘Best Practices Award’ for software infringement investigation and audit in 1999.
He publishes research within his specialised areas of expertise and interest, and authored
the ‘Computer Contracts’ chapter for the Butterworths Forms and Precedents.
Eben van Wyk

BProc (North-West).
Eben van Wyk is a partner at Spoor & Fisher, an Attorney of the High Court of South Africa,
and a Solicitor of England and Wales. He specialises in intellectual property litigation, in
particular matters related to unlawful competition, trade mark and advertising law,
intellectual property aspects relating to commercial matters, and due diligence
investigations. He is a member of the South African Institute of Intellectual Property Law;
the Cape Law Society; the International Trade Mark Association (INTA); the INTA
Subcommittee on Development of Rights; and the Licensing Executive Society (LES) of
South Africa. Since 2008, Eben has frequently been ranked as a leading intellectual property
law specialist by various international publications such as Best Lawyers International;
Chambers Global; and Legal 500 EMEA. Most recently, he was listed by WTR 1000 as one
of the World’s Leading Trade Mark Professionals in 2014; ranked by Who’s Who Legal:
Trademarks 2014 as one of South Africa’s trade mark experts, and listed as a leading IP lawyer
by Managing Intellectual Property. Eben regularly publishes research within his specialist
areas of expertise, and is presently completing his studies toward a Master of Laws (LLM)
(IP Law) at the University of Stellenbosch.

Chapter 1 Copyright
HERMAN BLIGNAUT
1.1 Introduction 3
1.1.1 Description of copyright 3
1.1.2 Legislative framework and international arrangements 4
1.2 Protectable subject matter 7
1.2.1 What constitutes a ‘work’? 7
1.2.2 The classes of ‘works’ in which copyright can subsist 8
1.2.2.1 Literary works 8
1.2.2.2 Musical works 9
1.2.3 Importance of classification 15
1.3 Requirements for subsistence of copyright 15
1.3.1 No formalities prescribed 15
1.3.2 Originality 16
1.3.3 Material form 18
1.3.4 Author a ‘qualified person’/Work first published in Berne Convention country 19
1.4 Authorship 19
1.4.1 Determination of ‘author’ with reference to the type of work 19
1.5 Duration and effect 21
1.5.1 Determination of ‘duration’ with reference to the type of work 21
1.5.1.1 Literary, musical and artistic works (other than photographs) 21
1.5.1.2 Cinematograph films, photographs and computer programs 22
1.5.2 Determination of ‘effect’ or ‘content’ of copyright with reference to the type of work 23
1.5.2.1 Literary and musical works 23
1.6 Ownership 25
1.6.1 General rule pertaining to ownership of copyright 25

2 DEAN & DYER: INTRODUCTION TO INTELLECTUAL PROPERTY LAW
1.6.2 Exceptions 25
1.6.2.1 Works intended for publication 25
1.6.2.2 Specific works created for payment 26
1.6.2.3 Employer/employee 26
1.6.2.4 Vesting of the ownership of copyright 27
1.6.2.5 The state and international organisations 27
1.7 Assignments and licences 29
1.7.1 Formalities for the valid assignment of copyright 29
1.7.2 Exclusive, non-exclusive and sole licences 30
1.7.2.1 Exclusive licence 31
1.7.2.2 Non-exclusive licence 31
1.7.2.3 Sole licences 32
1.7.2.4 ‘Needletime’ licences 32
1.8 Infringement 32
1.8.1 Direct infringement 33
1.8.2 Indirect infringement 38
1.8.2.1 Dealing in infringing articles for purposes of trade 38
1.8.2.2 Public performances 39
1.8.2.3 Parallel importation/grey goods 39
1.8.3 Criminal infringement 43
1.8.4 Distinguishing copyright infringement from plagiarism 44
1.9 Statutory defences to infringement of copyright 45
1.9.1 Specific defences relying on exemptions 45
1.9.1.1 Fair dealing 45
1.9.1.2 Various other general exceptions 47
1.9.1.3 Records of musical works 48
1.9.1.4 Specific exceptions for artistic works 49
1.9.1.5 Reverse engineering exception for artistic works 49
1.9.1.6 Specific exception for programme-carrying signals 51
1.9.1.7 Specific exception for computer programs 51
1.9.2 Other defences provided for by regulation 52
1.9.3 Copyright Tribunal 52
1.10 Author’s moral rights 53
1.10.1 Right of paternity 54
1.10.2 Right of integrity 54
1.11 Onus of proof in proceedings 54
1.11.1 General 54
1.11.2 Essential averments 55
1.11.3 Presumptions 55
1.11.4 Affidavit evidence 57
1.12 Remedies for copyright infringement 57
1.13 Checklist in considering viability of a copyright infringement claim 59
1.14 Registration of copyright in cinematograph films 60
1.14.1 Nature and purpose of the Registration Act 60
1.14.2 Procedure for obtaining registration 61
1.14.2.2 Procedure 61


1.14.3 Objection to registration 63
1.15 Performers’ protection 64
1.15.1 Nature and purpose of the Performers’ Protection Act and conditions for protection 64
1.15.2 Content and infringement of performers’ right 65
1.15.3 Specific defences 66
1.15.4 Licensing and the unassignability of performers’ rights 67
1.16 Traditional knowledge 67
1.16.1 Protection of traditional knowledge under copyright law 68
1.16.1.1 Traditional works 68
1.16.1.2 Requirements for subsistence of copyright in traditional works 69
1.16.1.3 Authorship and ownership 71
1.16.1.4 Duration and effect 72
1.16.1.4.1 Term of protection 72
1.16.1.4.2 Restricted acts in relation to traditional works 72
1.16.1.5 Exemptions from infringement of copyright in traditional works 73
1.16.1.6 Assignment and licences 74
1.16.2 Amendment of the Performers’ Protection Act, 1967, by the Amendment Act 75
1.1 Introduction
1.1.1 Description of copyright
The term ‘intellectual property’ is an umbrella term which encompasses all the various
types of products of the human intellect. Intellectual property is protected by various
forms of rights of which copyright is one. Copyright is the only form of intellectual property
right provided for by statute which is unregistrable (in contrast with rights in respect of
trade marks, patents, designs and plant breeders’ rights), or which does not have some
form of registration as a requirement for its subsistence. Copyright subsists automatically
in specified categories of works which are outlined and defined, provided certain
conditions are met.
Copyright is therefore a species of the genus intellectual property. It grants the
owner of the right exclusive statutory rights, limited in duration, in the rendering or
performance of certain dealings or acts in relation to specified works (these rights also
embrace the right to authorise others to perform such acts), and conversely the right
to prevent others from performing those acts in relation to the protected works. These
‘restricted acts’ in effect entail the ways in which a protected work will normally be
commercially exploited.
The rationale behind copyright is to afford the owner the opportunity, during the
duration of the right, to exploit and profit from the protected work, thereby providing
motivation for further innovation or creativity (i.e. the creation of new works or the
improvement of existing ones). The very essence of copyright is the nature of the subject
matter in which it subsists, that is the works eligible for copyright. These works are deemed
deserving of protection under the law and more especially protection against unauthorised
copying and various other dealings by third parties.

1.1.2 Legislative framework and international arrangements
Copyright is a creature of statute and is at present provided for, and regulated by,
the Copyright Act 98 of 1978, as amended (the Copyright Act or the Act), and the Regulations1
under the Act. The Copyright Act came into force on 1 January 1979 and
deals with all matters pertaining to copyright, whether protection is extended to works
in a conventional format (e.g. in a tangible form or hard copy) or to those in digital or
electronic formats.
The Copyright Act has been amended by the Intellectual Property Laws Amendment Act
28 of 2013.2 This Amendment Act has been passed by Parliament but has at the time of
writing not yet been brought into operation. The amendments to the Copyright Act have
thus not as yet taken effect. The amendments which will be made to the Copyright Act in
due course introduce protection for traditional works, which are a species of the overall class
of immaterial property which has become known as traditional knowledge.3 Seeking to
protect traditional works under the Copyright Act is problematical because the nature and
circumstances of the works in question are not compatible with the basic principles of
copyright law. What the Amendment Act does is effectively to create a new category of work
eligible for copyright which is then governed by special provisions inserted in the Act. These
special provisions have little bearing on the main body of copyright law and in a sense create
a sui generis segment of the law. In view of the transitory state in which the Copyright Act is
currently placed, and given the uncomfortable fit of traditional works (as a stand-alone
category of work) in the Copyright Act, the protection conferred on such works under
copyright law is dealt with individually in a separate part of this chapter, in paragraph 1.16.
The corollary is that the discussion of copyright law in the main part of this chapter deals
essentially with the unamended Copyright Act.
The Copyright Act applies not only in all respects to works that were created and/or
came into existence after its commencement, but also to the enforcement of copyright in
works made prior to 1979. This Act was preceded by two earlier Copyright Acts, the earliest
of which dates back to 1916.4 The questions of the subsistence, duration and ownership
of copyright in a work made prior to 1979 are determined by the Act that was in force at
the time when that work was made,5 although the continued protection of that work is
provided for in the 1978 Act. In view of the limited duration of copyright, there are probably
few works that currently enjoy protection regulated by the 1916 Act. Protected works which
had their birth under the 1965 Act are more common, and naturally works made during
the currency of the 1978 Act are in abundance and are increasing all the time.
PAUSE FOR Hear the lion roar

REFLECTION Mention the title ‘The Lion Sleeps Tonight’ and it spontaneously brings to mind a
popular song made world famous by its use not only through the sale of records and
its airing on the radio, but also, in particular, in movies and stage shows and
1 Copyright Regulations, 1978, GN R2530, GG 6252, 22 December 1978.

2 Referred to as the Amendment Act in this chapter.
3 See ch 8.
4 These are the Patents, Designs, Trade Marks and Copyright Act 9 of 1916 and the Copyright Act 63 of 1965.
5 See s 43(a) of the Act. The subsistence, duration and ownership of the copyright in works created prior to 1 January 1979
must be dealt with in terms of the provisions of the Copyright Act of 1965 and works created prior to 11 September 1965
must be dealt with in terms of the provisions of the Patents, Designs, Trade Marks and Copyright Act of 1916. See also
Topka (t/a Topring Manufacturing and Engineering) v Ehrenberg Engineering (Pty) Ltd 71 JOC (A) at 73 E–G.

at a range of other events. Over the years a number of versions of this song have been
performed by various artists. This song, as a musical work, was the subject matter of
litigation in South Africa in which the heirs of its writer, Solomon Linda, were given the
opportunity of claiming just recompense for its use and exploitation long after his death.
Solomon Linda was a song writer and a performing artist. In or around 1938 he composed
and performed a song called ‘Mbube’. Copyright owned by him subsisted in it by virtue of the
1916 Act (which effectively enacted the British Copyright Act of 1911). A short while later he
assigned or transferred his rights in the song to a record company for a nominal sum of
money. He died on 8 November 1962 with virtually no assets.
In 2000 an article entitled ‘In the Jungle’ was published in Rolling Stone Magazine. The
article dealt with the enormous commercial success of songs derived from Linda’s Mbube,
and more particularly ‘The Lion Sleeps Tonight’, and mentioned that Linda had died a pauper
and that his descendants were living in poverty in Soweto. It created considerable
controversy around the song.
At the time Mbube was composed, the 1911 British Copyright Act, through
the South African 1916 Copyright Act, was in force in South Africa. This Act contained
a provision in terms of which ownership of the copyright in ‘Mbube’ would revert
back to and vest in Linda’s estate 25 years after his death, namely in 1987. As
a result copyright in the work could be exploited by the author’s heirs for the last
25 years of its 50-year subsistence. Subsequent Copyright Acts did not contain a similar
provision.
Since ‘The Lion Sleeps Tonight’ was derived or adapted from ‘Mbube’, the permission
of the copyright owner in ‘Mbube’ was necessary for lawful use to be made of it. After
1987 this meant that the permission of the Linda heirs was necessary for the song to be
used in South Africa. Such permission was neither sought nor obtained by Disney
Enterprises Inc., which used the song ‘The Lion Sleeps Tonight’ in the movie and stage
production The Lion King. The movie was distributed in South Africa and caused
unauthorised public performances to be made of the song. The Executor of Linda’s estate
instituted copyright infringement proceedings against Disney Enterprises in South Africa.
In the ensuing court proceedings the court found in favour of Linda’s estate as a prima
facie case of copyright infringement had been shown.
This case demonstrated that provisions of the 1916 Copyright Act dealing with the
ownership and subsistence of copyright in a work made during its currency continued to
operate under the 1978 Act notwithstanding the fact that the 1916 Act had long since been
repealed and replaced by subsequent legislation which did not contain the relevant
provision.6
Under the law of copyright the question of the subsistence and enforcement of
copyright in South Africa in a work made by a South African citizen or resident is clear.
However, what happens when a South African copyright owner becomes aware of the
unauthorised use of his work in another country, or conversely, a foreign author finds
6 Disney Enterprises Inc v Griesel NO 895 JOC (T) or 2006 BIP 299 (T); 895 JOC (T); OH Dean ‘Stalking the sleeping lion’
(2006) July De Rebus 16.

that unauthorised use is being made of his work in South Africa? Copyright is a territorial
asset and South African law does not apply in other countries, nor does any foreign
copyright statute apply in South Africa. Enter the international law principle known as
‘national treatment’.
This term essentially means that the rights of foreigners and local subjects are treated
equally under local law, which is the applicable law. In the copyright context, national
treatment promises foreign copyright owners that their works will enjoy the same
treatment as the protecting country gives to the works of its own nationals. Effectively,
foreign works are treated as though they are local works. A foreign copyright owner cannot
invoke the provisions of his home country’s copyright law in the local environment. It boils
down to the granting of reciprocal rights between countries whereby each country affords
the subjects of other countries the same rights as those which it grants its own, in exchange
for such other countries’ in turn granting its nationals and residents the same protection
as is enjoyed by their subjects. The principle of national treatment is regulated in the
international copyright environment by the Berne Convention for the Protection of Literary
and Artistic Works (the Berne Convention).7
While the principle of national treatment and the protection afforded to foreign works
are not dealt with in general terms in section 37 of the Act, they are addressed in more
specific terms in the Regulations that have been promulgated under the Act.8 In terms of
these Regulations the provisions of the Copyright Act also apply to the works of foreign
nationals of the member countries of the Berne Convention. In effect they render foreign
nationals from other Berne Convention countries so-called ‘qualified persons’, which, as will
be seen below, is a qualifying condition for an author for the subsistence of copyright in his
work, and first publication of a work in a Berne Convention country is the equivalent of first
publication of that work in South Africa, which is an alternative condition for the subsistence
of copyright in a work in South Africa.
Since South Africa is a signatory to the Berne Convention,9 the works of its nationals
are entitled to the same protection as domestic works in other Berne Convention countries.
Most countries, and specifically South Africa’s principal trading partners, are members
of the Berne Convention. The Agreement on Trade-Related Aspects of Intellectual
7 The Berne Convention is an international agreement governing copyright, which was first adopted in Berne, Switzerland
in 1886. The version of the Berne Agreement currently in force is the one as amended on 28 September 1979. The
Convention rests on three basic principles and contains a series of provisions determining the minimum protection to
be granted, as well as special provisions available to developing countries which want to make use of them. The three
basic principles are the following:
1. The principle of ‘national treatment’;
2. Protection must not be conditional upon compliance with any formalitiy (i.e. the principle of ‘automatic’
protection); and
3. Protection is independent of the existence of protection in the country of origin of the work (principle of the
‘independence’ of protection).
If, however, a contracting state provides for a longer term than the minimum prescribed by the Convention and the
work ceases to be protected in a country of origin, protection may be denied once protection in the country of origin
ceases.
The minimum standards of protection relate to the works and rights to be protected, and the duration of the protection.
See WIPO ‘Summary of the Berne Convention for the protection of literary and artistic works’, available at www.wipo.
int/treaties/en/ip/berne/summary_berne.html.
8 Regulations pertaining to the application of the Copyright Act of 1978 to countries to which it does not extend, GN 136,
GG 11718, 3 March 1989. These Regulations give effect to the provisions of s 37 of the Copyright Act, which empowers
the Minister of Trade and Industry to extend the protection of the Act to works of foreign origin.
9 South Africa became a member of the Berne Convention through its Declaration of Continued Application dated 3
October 1928. See WIPO ‘WIPO-administered Treaties. Contracting Parties’, available at www.wipo.int/treaties/en/
ShowResults.jsp?treaty–id=15.

Property Rights (TRIPS Agreement),10 of which South Africa11 and most countries in the
world are members, has provisions to the same effect, in particular provisions which also
apply the principle of national treatment to copyright works. South Africa adheres to the
TRIPS Agreement automatically by virtue of its membership of the World Trade
Organization.
The upshot of the foregoing is that works of South African origin enjoy copyright
throughout the world and works of foreign origin enjoy copyright in South Africa. This occurs
automatically. The content of the copyright is determined by the law of the country in which
it is sought to enforce the copyright.
1.2 Protectable subject matter
1.2.1 What constitutes a ‘work’?

As appears in greater detail below, certain specified types of work are eligible for copyright.
If the subject matter at issue does not constitute one of the types of work provided for in the
Act, no copyright can subsist in that work. In general a work can only be classified as falling
under one type of work and there is no overlap between the various types of work. Separate
aspects of particular subject matter may fall under more than one type of work. For instance,
a song consisting of words and music can be a literary work in respect of the lyrics and a
musical work in respect of the melody.
10 The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral
agreement on intellectual property. The areas of intellectual property that it covers are:
1. copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting
organisations);
2. trade marks, including service marks;
3. geographical indications, including Appellations of Origin;
4. industrial designs;
5. patents, including the protection of new plant varieties;
6. the layout-designs of integrated circuits; and
7. undisclosed information, including trade secrets and test data.
The three main features of the Agreement are:
1. Standards: In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the
Agreement sets out the minimum standards of protection to be provided by each member country. Each of the
main elements of protection is defined, namely the subject matter to be protected, the rights to be conferred and
permissible exceptions to those rights; and the minimum duration of protection. The Agreement sets these
standards by requiring, first, that the substantive obligations of the main conventions of WIPO, the Paris Convention
and the Berne Convention in their most recent versions must be complied with by member countries. With the
exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these
Conventions are incorporated by reference and have therefore become obligations under the TRIPS Agreement
between TRIPS member countries. The relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS
Agreement, which relate, respectively, to the Paris Convention and the Berne Convention. Secondly, the TRIPS
Agreement adds a substantial number of additional obligations on matters where the pre-existing Conventions are
silent or were seen as being inadequate.
2. Enforcement: The second main set of provisions deals with domestic procedures and remedies for the enforcement
of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement
procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional
measures, special requirements related to border measures and criminal procedures, which specify, in a certain
amount of detail, the procedures and remedies that must be available so that rights holders can effectively enforce
their rights;
3. Dispute settlement: The Agreement makes disputes between WTO members regarding the implementation of
TRIPS obligations subject to the WTO’s dispute settlement procedures. See WIPO ‘Overview: The TRIPS Agreement’,
available at www.wto.org/english/tratop_e/trips_e/intel2_e.htm.
11 South Africa became a signatory to the TRIPS Agreement on 14 April 1994 and, as indicated above, the TRIPS Agreement
came into effect on 1 January 1995.

Before looking at the specific types of works, it is necessary to consider whether the
subject matter at hand is in fact a ‘work’. In order to be a ‘work’, subject matter must be of
sufficient substance to reasonably justify being attributed a form of exclusivity. It must also
be of such a nature that endowing the subject matter with a limited monopoly will not
unduly restrict others. In this context, the question has arisen in the past whether a single
word or a title could constitute a work in which copyright subsists. It was held, for example,
that the title of a song called ‘The Man Who Broke the Bank At Monte Carlo’ was too
insubstantial to warrant copyright protection.12 The same is likely to apply to the titles of
movies, books and so forth. Generally a name is simply not of sufficient substance to warrant
copyright protection.13 Protection of a name may be achieved in certain circumstances by
its registration as a trade mark under the Trade Marks Act 194 of 1993 (see chapter 2).
In considering whether specific subject matter is of sufficient substance to constitute a work,
our courts have held that so-called ‘field diaries’, which essentially set out the days of the week
in both Afrikaans and English with horizontal lines provided for making written entries, are too
commonplace to render them either an artistic or a literary work.14 The question of whether
certain subject matter constitutes a work is an objective test in which a court in each instance
must exercise a value judgement on whether the material in which copyright is claimed is of a
sufficient substance, or conversely, is not too trivial, to merit protection. Once it has been
decided that in principle subject matter may constitute a ‘work’, it must be determined whether
it is possibly of so commonplace a nature that it does not attract copyright.15
1.2.2 The classes of ‘works’ in which copyright can subsist

There are nine specific types or classes of works in which copyright can subsist. That is not
to say that each and every work falling within the ambit of the definitions of the various
classes will necessarily qualify for copyright as there are certain requirements which must
be complied with before copyright can subsist. Section 2(1) of the Copyright Act lists the
various types of works eligible for copyright and states that copyright can subsist in them
provided they are original and they comply with certain other requirements: The issue of
originality and the other requirements which apply for the subsistence of copyright are dealt
with below. In terms of section 2(2) of the Act such works must also exist in a material form.
This issue will be dealt with below as well. A description of each of the types or classes of
works eligible for copyright under the Act follows.
1.2.2.1 Literary works

The term ‘literary work’ includes, irrespective of literary quality and in whatever mode or
form expressed:
(a) novels, stories and poetical works;
(b) dramatic works, stage directions, cinematograph film scenarios and broadcasting
scripts;
(c) textbooks, treatises, histories, biographies, essays and articles;
(d) encyclopaedias and dictionaries;
(e) letters, reports and memoranda;
(f) lectures, speeches and sermons; and
12 Francis Day & Hunter Ltd v 20th Century Fox Corporation Ltd and Others [1940] AC 112 (PC).
13 See Kinnor (Pty) Ltd v Finkel 352 JOC (W) where the court held that there was no copyright in the meaningless word
‘LePacer’ (used in relation to wrist watches and clocks) because it could not be classified as a literary work.
14 Waylite Diary CC v First National Bank Ltd 1995 (1) SA 645 (A).
15 Accesso CC v Allforms (Pty) Ltd and Another 677 JOC (T); [1998] 4 All SA 655 (T).

(g) tables and compilations, including tables and compilations of data stored or
embodied in a computer or a medium used in conjunction with a computer, but
shall not include a computer program.16
There are a number of observations to be made in regard to the definition of ‘literary works’.
Firstly, it should be noted that literary works can qualify as such ‘irrespective of literary
quality’ or merit. Mere mundane combinations of words conveying the outcome of
intellectual activity may thus qualify for this class. Secondly, the definition includes ‘dramatic
works’ as defined in the Copyright Act.17 These include directions reduced to writing to be
enacted on stage and so forth.
Thirdly, the definition of ‘literary works’ includes tables and compilations, including
databases. The definition is sufficiently broad to make provision for both ‘hard copy’
databases and electronic databases used in computers, in conjunction with computer
programs. In this regard, it is important to distinguish between an electronic database
(which is protectable as a literary work) and a computer program (which, as appears below,
is a sui generis type of work). Although a database may be intricately linked to the operation
of a computer program and the results brought about by its operation, it constitutes a
separate work.
PAUSE FOR What constitutes a literary work?

REFLECTION Literary works generally consist of a combination of letters and/or numerals and/or symbols
which embody the results of intellectual effort or skill emanating from the creator of the
work. Examples of works which, while perhaps not regarded as ‘literary works’ in ordinary
parlance, have been held by the courts to constitute literary works include a compilation of
business forms (forms described respectively as the ‘employees earnings record’, the ‘time
and wage register’ and ‘pay advice slips’);18 a parts numbering code (a system which
facilitates the storing of parts in a warehouse and the identification of the vehicle on which
the particular parts fit);19 catalogues, price lists and identifying code systems relating to
gaskets (used in assembling and repairing motor vehicles);20 databases, database
structures and questions compilations.21 Other examples include the contents of
newspapers, letters, examination papers, the rules of a game and a formula using symbols
and numbers.22
1.2.2.2 Musical works

The term ‘musical work’ means a work consisting of music, exclusive of any words or action
intended to be sung, spoken or performed with the music.23
The work described here is the actual music or melody (as found in songs, generally
performed by means of musical instruments) that is capable of being fixed in some medium,
16 S 1(1) definition of ‘literary works’.

17 ‘ “Dramatic work” includes a choreographic work or entertainment in dumb show, if reduced to the material form in
which the work or entertainment is to be presented, but does not include a cinematograph film as distinct from a
scenario or script for a cinematograph film.’
18 Kalamazoo Division (Pty) Ltd v Gay and Others 1978 (2) SA 184 (C).
19 Bosal Afrika (Pty) Ltd v Grapnel (Pty) Ltd and Another 1985 (4) SA 882 (C).
20 Payen Components SA Ltd v Bovic Gasket CC and Others 1995 (4) SA 441 (A).
21 Haupt t/a Soft Copy v Brewers Law Marketing Intelligence (Pty) Ltd and Others 2006 (4) SA 458 (SCA); 908 JOC (A).
22 WA Copinger and EP Skone James Copyright 16 ed vol 1 (2011) at 70 para 3.15.
23 S 1(1) definition of ‘musical works’.

such as in music notation or in a recording. The work must therefore be capable of

representing aurally perceptible music. Musical works are often accompanied by lyrics in
songs. The lyrics, while being part of the song, are not a musical work or part of one, but they
may be a separate literary work.
PAUSE FOR Musical works in material form

REFLECTION
Extract from Beethoven’s Ninth Symphony. This is an example of a representation in a

material form of aurally perceptible music.
1.2.2.3 Artistic works
The term ‘artistic work’ means, irrespective of the artistic quality thereof:
(a) paintings, sculptures, drawings, engravings and photographs;

(b) works of architecture, being either buildings or models of buildings; or
(c) works of craftsmanship not falling within either paragraph (a) or (b).24
The definition of artistic works is extremely wide and is not limited to what may traditionally
be considered art. In addition to drawings, paintings and the like, it should be noted that
photographs are also included in the definition. In a sense photographs are a subspecies of
artistic work and, as will be seen, separate considerations from those applicable to artistic
works in general often apply to them.
The reference to buildings, models of buildings and works of craftsmanship demonstrates
that three-dimensional works are also classifiable as artistic works. Many three-dimensional
manufactured items encountered on a daily basis could be construed as works of
craftsmanship, for instance items of furniture, machinery and kitchen appliances. Some of
the terms included in the definition of ‘artistic work’ are themselves the subjects of specific
definitions in the Copyright Act.25
As is the case with literary works, the definition encompasses subject matter irrespective
of the artistic quality thereof. The result is that an artistic work need not be a masterpiece or
necessarily have any aesthetic appeal in order to be protected as such. Subject matter of a
mundane graphic or pictorial nature may qualify as an ‘artistic work’.
24 S 1(1) of the Act.

25 See specific definitions provided in s 1(1) of the Act, for example, ‘building’, ‘drawing’, ‘engraving’, ‘photograph’ and
‘sculpture’.

PAUSE FOR What constitutes an artistic work?

REFLECTION Artistic works have been held by the courts to include architectural drawings;26 engineering
drawings;27 furniture in the form of a lounge suite;28 a fabric pattern reproduced on fabric
for sale;29 a map of the Kruger National Park including roads and points of interest;30 and
pottery.31
Business logos may constitute artistic works eligible for copyright. Such logos are often
also used and registered as trade marks under the Trade Marks Act. This can result in a
measure of overlap between copyright and trade mark protection in the same subject
matter. This can give rise to an anomaly where, for instance, person X briefs person Y (e.g.
a graphic designer) to design a logo for him to use for his commercial undertaking. X
would generally be the proprietor of any trade mark that is registered, while Y would
probably be the owner of the copyright in the artistic work.32
1.2.2.4 Cinematograph films

The term ‘cinematograph film’ means any fixation or storage by any means whatsoever on
film or any other material of data, signals or a sequence of images capable, when used in
conjunction with any other mechanical, electronic or other device, of being seen as a moving
picture and of reproduction, and includes the sounds embodied in a sound-track associated
with the film, but does not include a computer program.33
The term ‘cinematograph film’ may be somewhat misleading in that this type of
work is not limited to movies screened at the cinema or other literal meanings of the term.
The definition also encompasses recorded television programmes, computer games,
filmed advertisements, documentary films and even informal video sequences recorded
with a video camera or a smartphone. The medium on which the images are stored or fixed
is not limited to celluloid film and includes tapes, discs, chips and digital storage means
in general.
The definition makes provision for the soundtrack of the film to be protected as
part of the film, but excludes computer programs, which may cause the images to
be seen or shown as a moving picture, as distinct from the stored images that such programs
process.
As is the case with certain other types of work, a cinematograph film may include or
embody, or carry, other separate types of work which are themselves the subject of copyright
protection. For instance, a film may include dialogue in the form of a prepared script
(constituting a literary work), songs or a musical soundtrack (constituting musical works
and/or literary works), and various items such as buildings, paintings, pictures, drawings,
sculptures and the like (which may constitute artistic works). It is therefore quite common
for cinematograph films, while they are copyright works in their own right, to be
compendiums of several other additional works.
26 Marais v Bezuidenhout 1999 (3) SA 988 (W).

27 Klep Valves (Pty) Ltd v Saunders Valve Co Ltd 1987 (2) SA 1 (A).
28 Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd 1991 (2) SA 455 (W).
29 Da Gama Textile Co Ltd v Vision Creations CC 1995 (1) SA 398 (D).
30 Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (SCA).
31 JL & JE Walter Enterprises (Pvt) Ltd v Kearns 1990 (1) SA 612 (ZH).
32 Catgraphics CC v Africon Engineering International (Pty) Ltd 2003 JDR 0514 (T).
33 S 1(1) definition of ‘cinematograph films’.

PAUSE FOR Are video games cinematograph films?

REFLECTION Video games have been held by the court to fall within the definition of ‘cinematograph
films’.34 Nintendo is a well-known Japanese company that creates, manufactures and
distributes video games. Local importers, wholesale distributors and retailers of video games
had imported into South Africa unauthorised copies of forty video games in which Nintendo
claimed copyright. Nintendo obtained interdicts against the local parties restraining them
from dealing in the unauthorised copies of the games, which were held to enjoy copyright
as cinematograph films. In an appeal against the granting of the interdicts the principal
issue was whether video games were capable of enjoying copyright protection as
cinematograph films.
The appeal court held that definitions in the Copyright Act are to be interpreted flexibly
so as to cover new technologies as they appear, rather than narrowly so as to compel the
legislature to update the Act continuously. The manner of determining the question of what
the relevant definition encompassed was not to look for the similarities and differences
between video games and conventional films, but rather to consider the actual definition of
the class of work and to determine whether video games fall within its ambit.
The most obvious difference between a conventional cinematograph film and a video
game lies in the fact that in the former the sequence of images is fixed, whereas in the latter
the sequence of images is to some extent variable and under the control of the player. The
court stated that the definition of a cinematograph film essentially comprises three elements,
namely, there must be a sequence of images, which is fixed on film or another material, and
which can be visible as a moving picture. It held that video games indeed encompass all
three of these characteristics and therefore fall within the definition of a ‘cinematograph
film’.
1.2.2.5 Sound recordings

The term ‘sound recording’ means any fixation or storage of sounds, or data or signals
representing sounds, capable of being reproduced, but does not include a sound-track
associated with a cinematograph film.35
A sound recording is the actual recording made on a tape or other recording medium of
sounds, data or signals representing sounds. It is therefore not limited to music and songs
on recordable tapes or compact discs, but it extends beyond those to, for example, the
spoken word recorded on a dictation machine.
Sound recordings must be differentiated from musical works (a separate and distinct
category of work) which they may embody or carry. A musical work may feature as part of,
or on, a sound recording, but the musical work is an entirely separate work. A sound
recording is thus, like cinematograph films, one of the types of work that can be the carrier
of other works.
PAUSE FOR Sound tracks versus sound recordings

REFLECTION As previously mentioned, a sound track associated with a cinematograph film is protected
as part of the film, rather than as a separate sound recording. By sound track in this
context is meant the actual embodiment of the sounds together with the visual
34 Nintendo Co Ltd v Golden China TV Game Centre and Others 1995 (1) SA 229 (T); Golden China TV Game Centre v
Nintendo Co Ltd 1997 (1) SA 405 (A); [1996] 4 All SA 667 (SCA).
35 S 1(1) definition of ‘sound recording’.

images on the material of the film. On the other hand, tapes, discs or the like on which music
has been recorded for later embodiment in a film would be sound recordings, as would be
albums released separately from the film embodying such musical recordings.
Sound recordings include sounds stored on devices such as records, tapes, CDs, DVDs,
computer hard drives, flash drives or any other storage device capable of fixing, giving access
to, and rendering the sound audibly. In fact, the carrier, that is the precise nature of the
physical medium on which the sound recording is stored and the method by which the
sounds are produced or reproduced, is by and large irrelevant.36
1.2.2.6 Broadcasts
The term ‘broadcast’, when used as a noun, means a telecommunication service of

transmissions consisting of sounds, images, signs or signals which:
(a) takes place by means of electromagnetic waves of frequencies of lower than 3 000
GHz transmitted in space without an artificial conductor; and
(b) is intended for reception by the public or sections of the public, and includes the
emitting of programme-carrying signals to a satellite, and, when used as a verb,
must be construed accordingly.37
A broadcast consists of the signals carrying visual and/or audial content (i.e. both television
and radio broadcasts) issued by a broadcaster’s transmitter. Like cinematograph films and
sound recordings, a broadcast is often the carrier of other separate copyright works such as
musical works, cinematograph films or sound recordings.
1.2.2.7 Programme-carrying signals

The term ‘programme-carrying signal’ means a signal embodying a program which is
emitted and passes through a satellite.38
A programme-carrying signal consists essentially of the down-leg of a transmission (e.g.
a broadcast) which has been relayed by a satellite. It is frequently also the carrier of other
separate copyright works.
1.2.2.8 Published editions

The term ‘published edition’ means the first print by whatever process of a particular
typographical arrangement of a literary or musical work.39
At first glance, it is clear that a published edition is limited to a publication of a work
embodying literary or musical content. The published edition is therefore a work separate
from the literary or musical content and is limited to the specific typographical arrangement
in which the pre-existing content is organised. This type of work is typically the edited
and formatted version in which publishers have reorganised raw literary or musical
content in preparing it for publication. It is therefore the printed layout of the work that is
protected as opposed to the intellectual content, which is a separate literary or musical work
embodied therein.
36 Copinger and Skone James Copyright 16 ed vol 1 at 119 para 3.77.

37 S 1(1) definition of ‘broadcast’.
38 S 1(1) definition of ‘programme-carrying signal’.
39 S 1(1) definition of ‘published edition’.

The result is that even literary or musical works in which copyright no longer subsists
(i.e. material in the public domain) may (to a limited degree) be the subject of copyright
protection, more particularly in the specific layout which a publisher has given to it. Thus,
although the novels of Dickens and Bosman (literary works) may be out of copyright, a new
typographical arrangement of any of their works by a publisher may be the subject of a fresh
and independent copyright, namely in the newly printed text which constitutes a ‘published
edition’. Notwithstanding this, the literary text of the book will remain in the public domain
and can be freely reproduced by resetting the text independently or by reproducing it in a
manner which does not actually reproduce the newly set text.
1.2.2.9 Computer programs

The term ‘computer program’ means a set of instructions, fixed or stored in any manner, which,
when used directly or indirectly in a computer, directs its operation to bring about a result.40
Computer programs are generally expressed in so-called ‘languages’. Various computer
or programming languages exist. They are in effect artificial languages designed to
communicate instructions to a machine, more particularly to a computer. Well-known
examples of these include C#, Java and PHP. Programming languages can be used to create
programs that control the behaviour of a machine or to express algorithms precisely. Most
programming languages are purely textual and use sequences of text that include words,
numbers and punctuation, much like written natural languages. However, there are some
programming languages which are more graphical in nature, using visual relationships
between symbols to specify a program. The programming language is used to create a text
listing of commands to be compiled or assembled into an executable computer program
known as a source code. The source code is the ‘set of instructions’ contemplated in the
definition or computer program and as such is the subject matter in which copyright subsists.
It is generally considered that only the final stage of the development process of a computer
program constitutes a ‘computer program’, that is when the work reaches the stage where it
can actually drive a computer. Works made during the development process giving rise to the
source code, such as literary or artistic works, may be protectable as such, separate and distinct
from the computer program in its final form.41 It will be recalled that computer programs are
explicitly excluded from the definition of ‘literary work’ and this serves to highlight the
metamorphosis or transition of literary works in the developmental stage into computer
programs when the stage is reached when the work is actually capable of driving a computer.
PAUSE FOR Nature of computer programs

REFLECTION Because of the intricacies involved and the specialist nature of computer programs, it is
often necessary to adduce expert evidence as to the nature of the work and to draw
comparisons with other programs. Complicated processes, terminology and concepts must
be explained in layman’s terms in order to enable a court to understand and digest the
technical nature of the issues at hand. The judgment of the Supreme Court of Appeal in
Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others42 illustrates this
point as well as a number of important principles.
The court confirmed that various works consisting of codes containing sets of
instructions which directed the operations of computers to bring about results were
40 S 1(1) definition of ‘computer program’. See also paras 10.2 and 10.3 in this book.
41 OH Dean Handbook of South African Copyright Law (1987) (service 14, 2012) at 1–18 para 2.12.2.
42 2006 (4) SA 458 (SCA).

computer programs as defined in the Act. It rejected the argument that the database
structures used in conjunction with the computer programs were also computer programs.
The database structures did not consist of sets of instructions, but rather of a table with a
certain number of columns which varied in width. These were correctly categorised and dealt
with as literary works.
The court also distinguished between ‘computer-generated’ and ‘computer assisted’ works,
stating that a work only qualifies as having been ‘computer-generated’ if it is created by a
computer in circumstances where there is no human author of the work. If there is a human
author, the work is ‘computer assisted’ and not ‘computer-generated’.
1.2.3 Importance of classification
It is of paramount importance to correctly categorise particular subject matter as falling

within one of the types or classes of works eligible for copyright. Treating an electronic
database (a literary work), for example, as a computer program will lead to the incorrect
determination of various copyright-related issues from the very outset of an enquiry. A work
must be correctly categorised as different principles may apply to different types of works.
If a work does not fall within the ambit of any of the nine types of works provided for in the
Act, copyright will not subsist in it.
Correct classification of a work is essential in order to determine the extent of protection
and issues surrounding authorship and ownership of copyright. As will appear more fully
below, the duration and nature of copyright protection are largely dictated by the type of
work at issue. This principle has been espoused by the court, which has held unequivocally
that it is of the utmost importance for a copyright claimant to identify the work or works at
the outset which are said to have been infringed by a defendant.43
1.3 Requirements for subsistence of copyright
1.3.1 No formalities prescribed

There are no formalities prescribed for the subsistence of copyright. This is in keeping
with the provisions of the Berne Convention. In contrast with the other forms of statutory
intellectual property rights (e.g. trade marks, patents and designs), copyright is the only
form of intellectual property provided for by statute which does not require some form
of registration to come into being. It is not merely that registration of a work is not
required, but rather that copyright law does not make provision for any process of
registration of copyright (save in the exceptional case of the registration of copyright in
cinematograph films which will be discussed below at paragraph 1.14; registration here
facilitates proof of certain facts and does not create a copyright work). There
are, however, some countries that make provision for some form of registration of
copyright, which is not, however, generally a formality for subsistence of copyright,
but is rather a facility for providing proof of certain matters pertaining to a copyright
infringement claim.44
43 King v South African Weather Service 2009 (3) SA 13 (SCA) at 16 G; [2009 2 All SA 31 (SCA)].
44 See, for example, registration and the enforcement of copyright in Canada and the United States of America; and the
possibility of registration of copyright in other territories such as Kenya, Ghana and India. These registration systems
are all concerned with enforcement of copyright as distinct from its subsistence.

Copyright comes into existence automatically upon compliance with certain requirements
or conditions stipulated in the Act. These requirements are briefly that in order to enjoy
copyright a work must be original and it must exist in a material form; furthermore, it must
either be authored by a so-called ‘qualified person’, or be first published in South Africa or
in a Berne Convention country. These requirements are dealt with in more detail below.
1.3.2 Originality
The primary requirement for the subsistence of copyright in a work is that it must be
‘original’.45 While the Act specifies the requirement of originality, it does not provide any
definition of this concept or other guidelines that could serve to clarify its meaning. In
considering what constitutes originality and how this term is to be interpreted, it is necessary
to look at what the authorities have said. What is clear is that for a work to be ‘original’ it need
not be inventive or new.46 However, the converse should generally be true and works which
are inventive or new would normally be deemed to be original. The bar or threshold for
originality has in fact been set rather low. In order to be ‘original’, a work must not have been
taken or copied from a prior work of another person, but rather it must have been made,
created or brought about by the author’s own independent skill and effort. It must have come
about as a result of the ‘sweat of the brow’ of the author. The question as to whether or not
a work is ‘original’ is a factual enquiry and, where appropriate, evidence to support this
proposition must be adduced. It is then for a court to reach the conclusion that a work is
original from the facts placed before it.47
It has been held that ‘original’ means no more than that the work should be the product
of one’s own endeavours and that it should not have been copied from another source.48
Originality has reference to works which are the result of the author’s own effort, that is
they are his own independent productions. If they comprise, or are derived from, pre-existing
material, but nevertheless include new material, they can be partially original. The author’s
labours and endeavours must firstly produce a ‘work’. It must be shown that those labours
and endeavours actually produced something of some substance, viewed objectively. Once
the existence of a ‘work’ has been determined, the author’s independent contribution (his
own effort) on a subjective basis must be assessed. If there has been sufficient own effort,
copyright will subsist in the work. In the case of a work that is partially original, the author’s
copyright will reside in those parts of the work which he is able to show are his own creation,
brought about through his own endeavours.49 In so far as existing material is relied on in the
creation of a new work, the use of such material must be authorised or else the author of the
new work may himself infringe the copyright in the existing work.50 A work which embodies
existing works (or parts thereof), but which itself contains original matter, is referred to as a
‘derivative work’.51
45 In terms of s 2 of the Act, a ‘work’ (as defined in the Act) is only eligible for copyright if it is ‘original’.
46 Barker & Nelson (Pty) Ltd v Procast Holdings (Pty) Ltd and Another 195 JOC (C) at 197G–198B; Saunders Valve Co Ltd
v Klep Valves (Pty) Ltd 1985 (1) SA 646 (T).
47 Sure Travel Ltd v Excel Travel (Pty) Ltd and Others 2004 BIP 275 (W) at 35.
48 Klep Valves supra fn 27; Waylite Diary supra fn 14 at 649.
49 Adonis Knitwear Holding Ltd v OK Bazaars (1929) Ltd and Others 335 JOC (W); Appleton and Another v Harnischfeger
Corporation and Another 1995 (2) SA 247 (A); Bress Designs (Pty) Ltd v G Y Lounge Suite Manufacturers (Pty) Ltd and
Another 1991 (2) SA 455 (W).
50 S 2(3) of the Act provides that ‘a work shall not be ineligible for copyright by reason only that the making of the work,
or the doing of any act in relation to the work, involved an infringement of copyright in some other work’.
51 Derivative works are in practice quite common and are particularly relevant when it comes to computer programs,
which very often incorporate code (or sections of code) from existing programs or applications.

In the case of Waylite Diaries CC v First National Bank Ltd52 the court commented as
follows on the originality requirement:
The application of (the authors) knowledge, skill and labour must produce a result
which is not merely common place. It must have a quality of individuality not
necessarily requiring intellectual novelty or innovation but which is at least sufficient
to distinguish the work from the merely common place. It must be apparent from
the work itself that the author has made such a contribution. The standard required
is not high, and it is not capable of precise definition. It is a matter for judgement
according to the facts of a particular case.
On appeal, the Appellate Division in Waylite Diaries53 adopted the following approach:
While it is true that the actual time and effort extended by the author is a material
factor to consider in determining originality, it remains a value judgement whether
that time and effort produces something original.
These dicta must be read in conjunction with the requirement that there must be a ‘work’
in the first place (see paragraph 1.2.1 above). Assuming that subject matter qualifies as a
‘work’, its creation must be tested against the requirement of originality in order to determine
whether it is eligible for copyright.
In Klep Valves (Pty) Ltd v Saunders Valve Company Ltd54 the Appeal Court confirmed
that ‘originality’ refers to ‘original skill or labour in execution’, and further that the work in
respect of which copyright is claimed should emanate from the author himself and not be
copied. The court drew a clear distinction between works that are truly original creations
and works that are not truly original because there were similar, pre-existing works of which
the author was aware. In the latter instance, it would not be enough for an author simply to
content himself with the bald statement that the work in respect of which copyright
protection is claimed is of his own making and is therefore original; he must go further and
distinguish the work from the pre-existing works and demonstrate his own contribution.55
The copyright claimant must show that he or she has made an independent or own
52 1993 (2) SA 128 (W) at 133 G–I.

53 Waylite Diary supra fn 14 at 649i–650e.
54 1987 (2) SA 1 (A) at 22.
55 In this context the question as to originality was posed at 23F–G as follows:
Moreover, it is common cause that the drawings now in issue represented developments of earlier valves. ‘How
do we know’, the Appellant asked, ‘that the draughtsmen devoted sufficient of their skill and labour to the
present drawings to render them original works in accordance with the test set out above?’ or, to pose the
question differently, ‘How do we know that the present drawings are not merely copies of earlier ones, perhaps
with insignificant changes?’ To enable these questions to be answered, it was submitted on behalf of the
Appellant, that the matter should have been referred to oral evidence…’; in rejecting the argument that the
matter should have been referred to oral evidence, the court held as follows at 25E–H – ‘…the respondent has,
I consider, shown that the drawings were original. What it amounts to is that, although a draughtsman
normally works in cooperation with a design engineer, he exercises a great deal of independent skill and
labour when converting the ideas of the design engineer into detailed specifications for practical manufacture.
Similar skill and labour are required to modify an existing design … copyright subsists in the drawings made
by the draughtsmen provided the drawings themselves were original in the sense discussed above. Nor can it
matter that earlier drawings were followed provided that the draughtsmen contributed sufficient skill or labour
to the present drawings. In the instant case, we not only have the assurance by the respondent’s witnesses that
there are substantial differences between the drawings in issue and earlier versions, but the Appellant was
given an opportunity to verify this … and failed to dispute the respondent’s evidence.

contribution, which involved the sweat of the brow, in making the end product in which
copyright is claimed.
It appears clear from Klep Valves and Waylite Diaries that in the case of a derivative work
‘original skill and labour’ expended should result in a work with a quality of individuality
sufficient to distinguish the new work from the pre-existing work (or that which is merely
commonplace). Thus, the draughtsmen in Klep Valves ‘modified an existing design’ to
achieve ‘substantial differences’ between the drawings there in issue and the earlier versions
of those drawings. The copyright in ‘his’ work resided in that which was new about the
relevant drawings when compared to the pre-existing drawings.
PAUSE FOR Dicta of courts in defining ‘originality’

REFLECTION In Topka (t/a Topring Manufacturing and Engineering) v Ehrenberg Engineering (Pty) Ltd 56
the court stated as follows:
The question of what is meant by ‘original’ in the law of copyright has given rise
to difficulty. The purpose of copyright is to protect the works and not the idea.
What is protected is the original skill and labour in execution and not the
originality of thought. All that is required is that the work should emanate from
the author himself and not be copied.
In Accesso CC v Allforms (Pty) Ltd 57 the court in considering originality stated that:
… it is worth repeating that a work may be original even if the author has drawn
on knowledge common to himself and others or has used already existing material
(without slavishly copying such material) provided he has spent skill, labour and
judgement on it. The standard of originality required by the Act is a low one. A
work need not be ‘novel’ where the author has produced his result without
reference to an existing work, even if someone else has produced a similar work,
then he does not copy but creates. Where he does make use of existing subject
matter the question to be decided is whether he has expended sufficient
independent skill and labour to justify copyright protection.
1.3.3 Material form

The second requirement for the subsistence of copyright in a work is that the work must be
reduced to a material form. In this regard, section 2(2) of the Act states that ‘a work, except
a broadcast or programme-carrying signal, shall not be eligible for copyright unless the work
has been written down, recorded, represented in digital data or signals or otherwise reduced
to material form’.58
Copyright does not subsist in thoughts, ideas or facts.59 Copyright also does not protect
or vest in concepts, but rather in the physical or material manifestation or embodiment of
56 71 JOC (A) at 74 C–D.

57 677 JOC (T) at 693 B–D.
58 It appears from this provision that there are two exceptions to the requirements for a work to be reduced to a material
form, namely broadcasts and programme-carrying signals. This is so by virtue of the nature of these works which are
not capable of being represented in a material form. However, s 2(2A) of the Act requires that for copyright to subsist
in a broadcast and a programme-carrying signal they should actually have been broadcast and transmitted by a satellite
respectively before copyright will vest.
59 Kalamazoo Division (Pty) Ltd v Gay and Others 1978 (2) SA 184 (C); Payen Components SA Ltd v Bovic Gaskets CC and
Others 1994 (2) SA 464 (W); Rapid Phase Entertainment CC v South African Broadcasting Corporation 597 JOC (W).

such elements60 once they are created or come into being.61 The concept of a work having
to be in a material form is often expressed in the maxim that ‘there is no copyright in ideas’.
1.3.4 Author a ‘qualified person’/Work first published in Berne

Convention country
The third requirement for the subsistence of copyright, in the alternative to the requirement
of ‘publication’ referred to below, is that the author of a work, or in the case of a work of joint
authorship, any one of the authors, was a ‘qualified person’ at the time the work or a substantial
part thereof was made. A ‘qualified person’ in the case of an individual, is a person who is a
South African citizen or is domiciled or resident in South Africa and in the case of a juristic
person, a body incorporated under the laws of South Africa.62 Reference was made above to
the international nature of copyright law and the principle referred to as national treatment.
In this regard, the definition of ‘qualified person’ has been extended by regulation to include
the nationals and/or residents, as the case may be, as well as juristic persons, of countries to
which the operation of the Act has been extended (i.e. Berne Convention countries).
Section 1(5) of the Act describes the circumstances under which works are deemed or
considered to have been published. In terms of this provision, a work is deemed to have been
published if copies of such work have been issued to the public with the consent of the owner
of the copyright in the work in sufficient quantities to reasonably meet the needs of the public,
having regard to the nature of the work. With regard to cinematograph films and sound
recordings specifically, publication will occur upon the sale, letting, hire, or offer for sale or
hire, of copies. The following occurrences in relation to a work do not constitute a publication:
1. the performance of a musical or dramatic work, cinematograph film or sound recording;
2. the public delivery of a literary work;
3. a transmission in a diffusion service;
4. the broadcasting of a work;
5. the exhibition of a work of art; and
6. the construction of a work of architecture.
The ‘publication’ of a work is an important factor in copyright law. The requirement of first
publication of a work in South Africa or a country to which the operation of the Act has been
extended applies in the alternative to the work having been authored by a qualified person
and provides a means of qualifying a work for copyright where it has not been authored by
a qualified person.
1.4 Authorship
1.4.1 Determination of ‘author’ with reference to the type of work

The author is central to the creation of a work and intricately linked to its birth. It is important
to distinguish between the author of a work and the owner of the copyright therein.
Ownership of copyright is discussed separately below. It suffices at this stage to bear in mind
60 Kambrook Distributing v Haz Products and Others 243 JOC (W); Pastel Software (Pty) Ltd v Pink Software (Pty) Ltd and
Another 399 JOC (T).
61 An idea or concept may be protected by treating it as confidential and contractually regulating the disclosure thereof
through instruments such as non-disclosure and/or confidentiality agreements.

that, although the general rule pertaining to ownership of copyright is that the author of a
work is normally also the first owner of the copyright therein, exceptions to this rule apply.
As a result of these exceptions, upon the birth of a work, the ownership of the copyright can
automatically vest in someone other than the author. In terms of the definition of authorship
in the Act, the word ‘author’ has a technical meaning and the author of a work is not
necessarily the person who first makes or creates it. It depends on the nature of the work.63
In relation to each category of work eligible for copyright, the Copyright Act stipulates
the person considered to be the author of the work. In this regard, section 1(1) of the Act
defines the term ‘author’ and provides that:
1. The author in relation to a literary, musical or artistic work is the person who first makes
or creates the work.
2. The author in relation to a photograph is the person who is responsible for the
composition of the photograph.
3. The author in relation to a sound recording is the person by whom the arrangements for
the making of the sound recording were made.
4. The author in relation to a cinematograph film is the person by whom the arrangements
for the making of the film were made.
5. The author in relation to a broadcast is the first broadcaster thereof.
6. The author in relation to a programme-carrying signal is the first person emitting the
signal to a satellite.
7. The author in relation to a published edition is the publisher of the edition.
8. The author in relation to a literary, dramatic, musical or artistic work or computer
program which is computer-generated is the person by whom the arrangements
necessary for the creation of the work were undertaken.
9. The author in relation to a computer program is the person who exercised control over
the making of the computer program.64
In each instance the identity of the author or authors of a work will depend on, and have to
be considered with due regard to, the relevant facts pertaining to the creation of that work.
Determining the authorship of a work is thus a factual question which may be influenced
by minimal factors and which could become complicated, depending on the factual matrix
pertaining to the creation of the work.
The Act recognizes the possibility of joint authorship of a work.65 A work is considered
to have been created through joint authorship when it is produced by the collaboration of
two or more authors in which the contribution of each author is not separable from the
contribution of the other author or authors. This again is a question of fact which requires
each matter to be judged on its own merits.
PAUSE FOR Is a typist an author?

REFLECTION The question arises whether the involvement of a so-called amanuensis in the process of
making a work has any effect on the authorship of the work. An amanuensis can be
described as a literary or artistic assistant, in particular one who takes dictation or copies
manuscripts. This role has generally been played by individuals such as scribes,
63 King supra fn 43 at 16H–17A.

64 For a discussion of what constitutes ‘control’ over the making of a computer program, see the judgment of Haupt t/a
Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others 2006 (4) SA 458 (SCA).
65 S 1(1) definition of ‘work of joint authorship’.

clerks, secretaries or copyists. Can such individuals who are involved to some extent in the
creation of a work claim authorship (or joint authorship) of that work?
Generally, the role of an amanuensis is of a purely mechanical nature. He or she plays
the role of a tool or instrument used by the creator of the work and this does not entitle him
or her to a claim of authorship. While the author of a literary, musical or artistic work is the
person who creates the work, and is indeed responsible for the physical embodiment thereof,
this must be distinguished from the role that an amanuensis plays, for example, in typing
dictation delivered by the author, whether with the aid of a dictaphone or through the spoken
word to the typist directly. The amanuensis makes no intellectual or substantive contribution
to the end product. Authorship is attributed to the person who is responsible for the
substance of the work that is being typed or otherwise recorded. The amanuensis who simply
mindlessly carries out instructions performs a mechanical function, which could indeed be
done by a computer using appropriate software.
The question is one of degree and if the involvement of an apparent amanuensis is more
than of a purely mechanical nature, the circumstances could give rise to authorship or more
particularly co-authorship. The facts surrounding the creation of a work and the roles played
by various persons must be closely examined and analysed in reaching conclusions
regarding authorship. By the same token, the correction of small grammatical errors and
‘editing’ out of insignificant parts of a work should not entitle a person serving as an editor
to qualify as a co-author of the work.
1.5 Duration and effect
1.5.1 Determination of ‘duration’ with reference to the type of work

The subsistence of copyright in a work is of limited duration. This entails that copyright does
not exist indefinitely, but rather ceases to exist at the expiry of the term of copyright as
provided for in the Act. The effect of the expiry of the term of copyright is that the work then
falls into the public domain and the restrictions which previously applied to its use can no
longer be enforced. At that stage a work may be copied or otherwise used in its entirety by
a person without the requirement that prior approval from the erstwhile copyright owner
should be obtained. It is, however, necessary to ensure that in such cases the authorship of
the work is still acknowledged and that it is not passed off as someone else’s work.
The term of protection granted by the Act to a particular work is determined with
reference to the type of work at issue. The term of copyright conferred in relation to the
various types of copyright works is as follows:
1.5.1.1 Literary, musical and artistic works (other than photographs)

The term of protection is the lifetime of the author and 50 years from the end of the year in
which the author dies. However, in the event that prior to the death of the author none of the
following acts have been done in respect of such a work or an adaptation thereof, namely:
1. the publication thereof;
2. its performance in public;
3. the offer for sale to the public of records thereof; or
4. the broadcasting thereof,

the term of copyright continues to subsist for a period of 50 years from the end of the year
in which the first of the said acts is done.66 In consequence, if none of these acts takes place,
the copyright endures in perpetuity.
1.5.1.2 Cinematograph films, photographs and computer programs

The term of protection is 50 years from the end of the year in which the work:
1. is made available to the public with the consent of the owner of the copyright; or
2. is first published,
whichever term is the longer.
If, however, no such event occurs within 50 years of the making of the work, copyright will
subsist for 50 years from the end of the year in which the work is made.67

The term of protection is 50 years from the end of the year in which the recording is first
published. In this case, the term ‘publish’ must carry the meaning ascribed thereto in section
1(5) of the Act as set out in paragraph 1.3.4 above.68
1.5.1.4 Broadcasts
The term of protection is 50 years from the end of the year in which the broadcast first takes
place.69

The term of protection is 50 years from the end of the year in which the signals are emitted
to a satellite.70

The term of protection is 50 years from the end of the year in which the edition is first
published.71
In the case of an anonymous or pseudonymous work, the copyright therein subsists for
50 years from the end of the year in which the work is made available to the public with the
consent of the owner of the copyright, or from the end of the year in which it is reasonable
to presume that the author died, whichever term is the shorter.72 In the event of the identity
of the author becoming known before the expiration of the abovementioned period, the
term of the copyright is calculated in accordance with the standard provisions relating to
the type of work as stated above.73
In the case of a work of joint authorship, the term of copyright is calculated in accordance
with the standard provisions for the type of work in question but the reference to the death
of the author is taken to refer to the author who dies last, whether or not he is a qualified
person.74 The result is that where authors A and B were joint authors of, say, a literary work,
66 S 3(2)(a) of the Act.

67 S 3(2)(b) of the Act.
68 S 3(2)(c) of the Act.
69 S 3(2)(d) of the Act.
70 S 3(2)(e) of the Act.
71 S 3(2)(f) of the Act.

and author A dies first, the term of 50 years will only commence from the end of the year in
which author B dies.
Where copyright subsists and vests in the state by virtue of the provisions of section 5 of
the Act, the duration of the term of the copyright in a literary, artistic (save for a photograph),
or musical work is 50 years after the end of the year in which the work is first published. In
the case of a photograph, cinematograph film, sound recording, broadcast, programme-
carrying signal, or computer program, the term of the copyright is the same as that ordinarily
enjoyed by these types of work.
1.5.2 Determination of ‘effect’ or ‘content’ of copyright with reference

to the type of work
The effect of copyright in a work is that it affords the owner thereof certain exclusive rights
in respect of that work. The sum of these exclusive rights constitutes the content of the
copyright in the work. These rights translate into the owner of the copyright having a
monopoly in the rendering or performance of certain specified acts. Again, these acts are
specified and determined with reference to the type of copyright work and are set out
below under each type of copyright work. They are known as the ‘restricted acts’.
1.5.2.1 Literary and musical works

Copyright in a literary or musical work vests the exclusive right to do or to authorise
the doing of, any of the following acts in the Republic:
(a) Reproducing the work in any manner or form;
(b) publishing the work if it was hitherto unpublished;
(c) performing the work in public;
(d) broadcasting the work;
(e) causing the work to be transmitted in a diffusion service, unless such service
transmits a lawful broadcast, including the work, and is operated by the original
broadcaster;
(f) making an adaptation of the work;
(g) doing, in relation to an adaptation of the work, any of the acts specified in
relation to the work in paragraphs (a) to (e) inclusive.75
1.5.2.2 Artistic works

Copyright in an artistic work vests the exclusive right to do or to authorise the doing
of any of the following acts in the Republic:
(a) Reproducing the work in any manner or form;
(b) publishing the work if it was hitherto unpublished;
(c) including the work in a cinematograph film or a television broadcast;
(d) causing a television or other programme, which includes the work, to be
transmitted in a diffusion service, unless such service transmits a lawful
television broadcast, including the work, and is operated by the original
broadcaster;
(e) making an adaptation of the work;
(f) doing, in relation to an adaptation of the work, any of the acts specified in
relation to the work in paragraphs (a) to (d) inclusive.76
75 S 6 of the Act.
76 S 7 of the Act.

1.5.2.3 Cinematograph films

Copyright in a cinematograph film vests the exclusive right to do or to authorise the
doing of any of the following acts in the Republic:
(a) Reproducing the film in any manner or form, including making a still photograph
therefrom;
(b) causing the film, in so far as it consists of images, to be seen in public, or, in so
far as it consists of sounds, to be heard in public;
(c) broadcasting the film;
(d) causing the film to be transmitted in a diffusion service, unless such service
transmits a lawful television broadcast, including the film, and is operated by
the original broadcaster;
(e) making an adaptation of the film;
(f) doing, in relation to an adaptation of the film, any of the acts specified in relation
to the film in paragraphs (a) to (d) inclusive;
(g) letting, or offering or exposing for hire by way of trade, directly or indirectly, a
copy of the film.77

Copyright in a sound recording vests the exclusive right to do or to authorise the
(a) Making, directly or indirectly, a record embodying the sound recording;
(b) letting, or offering or exposing for hire by way of trade, directly or indirectly, a
reproduction of the sound recording;
(c) broadcasting the sound recording;
(d) causing the sound recording to be transmitted in a diffusion service, unless that
service transmits a lawful broadcast, including the sound recording, and is
operated by the original broadcaster;
(e) communicating the sound recording to the public.78
1.5.2.5 Broadcasts
Copyright in a broadcast vests the exclusive right to do or to authorise the doing of
any of the following acts in the Republic:
(a) Reproducing, directly or indirectly, the broadcast in any manner or form,
including, in the case of a television broadcast, making a still photograph
therefrom;
(b) rebroadcasting the broadcast;
(c) causing the broadcast to be transmitted in a diffusion service, unless such service
is operated by the original broadcaster.79

Copyright in programme-carrying signals vests the exclusive right to undertake, or
to authorise, the direct or indirect distribution of such signals by any distributor to
the general public, or any section thereof in the Republic, or from the Republic.80
77 S 8 of the Act.
78 S 9 of the Act.
79 S 10 of the Act.
80 S 11 of the Act.


Copyright in a published edition vests the exclusive right to make or to authorise the
making of a reproduction of the edition in any manner.81
1.5.2.8 Computer programs

Copyright in a computer program vests the exclusive right to do or authorise the
(a) Reproducing the computer program in any manner or form;
(b) publishing the computer program if it was hitherto unpublished;
(c) performing the computer program in public;
(d) broadcasting the computer program;
(e) causing the computer program to be transmitted in a diffusion service, unless such
service transmits a lawful broadcast, including the computer program, and is
operated by the original broadcaster;
(f) making an adaptation of the computer program;
(g) doing, in relation to an adaptation of the computer program, any of the acts
specified in relation to the computer program in paragraphs (a) to (e) inclusive;
(h) letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy
of the computer program.82
1.6 Ownership
1.6.1 General rule pertaining to ownership of copyright

The general rule pertaining to the ownership of copyright is that the author of a work is the
first owner of any copyright therein.83 As is often the case, this rule is subject to a number of
exceptions. When one of these exceptions applies, however, nothing pertaining to the
authorship of the work changes. It is simply a question of the ownership of copyright vesting
in a person other than the author. As discussed below, the operation of the exceptions can
be modified or overruled by agreement between the author and the designated first owner
of the copyright. Where an exception applies, the ownership of the copyright in the work
vests in the designated person from the outset. The operation of an exception does not effect
a transfer of the ownership of the copyright from the author to the designated person – the
ownership of the copyright bypasses the author and it never initially vests in him or her.
1.6.2 Exceptions
The exceptions are set out in section 21 of the Act, which provides as follows:
1.6.2.1 Works intended for publication

Where a literary or artistic work is made by an author in the course of his employment by the
proprietor of a newspaper, magazine or similar periodical under a contract of service or
apprenticeship, and is so made for the purpose of publication in a newspaper, magazine or
similar periodical, the proprietor is the owner of the copyright in the work in so far as the
copyright relates to publication of the work in any newspaper, magazine or similar periodical,
81 S 11A of the Act.

82 S 11B of the Act.

or to reproduction of the works for the purpose of its being so published, but in all other respects
the author is the owner of any copyright subsisting in the work by virtue of section 3 or 4.
The technical nature of copyright is again evident in this provision. The exception only
applies to two types of works eligible for copyright, that is literary and artistic works. The
exception therefore does not apply generally to the other types of work in which copyright
can subsist. The provision further refers to a work created by an author in the course of his
employment under a contract of service or apprenticeship. The exception does not apply to
freelance writers or to any individual who is an independent contractor. The application of
the exception is limited to employers who are media entities.
A distinction is drawn between the author of the work and the owner of the copyright
subsisting therein. The maker or creator of the work (namely the employee) remains the author
of the work, but the proprietor of the newspaper, magazine or similar periodical (in its capacity
as employer) will be the owner of the copyright in the work for the specified purposes.
Finally, the exception also only applies to the extent to which the literary or artistic work
is created specifically for publication in a newspaper, magazine or similar periodical. For
this manner of use of the work the employer will be the owner of the copyright therein. The
employee will be both author and owner of that part of the copyright that does not entail
publication of the work in a newspaper or the like, for instance publication in a collection
of short stories, or inclusion in a cinematograph film.84
1.6.2.2 Specific works created for payment

Where a person commissions the taking of a photograph, the painting or drawing of a
portrait, the making of a gravure, the making of a cinematograph film or the making of a
sound recording and pays or agrees to pay for it in money or money’s worth, and the work
is made in pursuance of that commission, such person is, subject to the provisions of
paragraph 1.6.2.1, the owner of any copyright subsisting therein.
Again, the exception only applies to a limited selection of works. It is not a blanket
exception in the sense that it applies generally to all works in which copyright subsists. More
particularly, the exception only applies to photographs, portraits, gravures (a method of
printing with etched plates or cylinders), cinematograph films and sound recordings. Apart
from films and sound recordings, the works to which the exception applies are various types
of artistic works. The exception therefore does not apply to artistic works in general, such as
paintings or drawings, other than portraits and so on. The absence of any mention of the
other types of works in which copyright can subsist is noteworthy. In consequence, when a
person is paid to create a work of a type not specified in the provision, the author of the work
remains the first copyright owner. If it is envisaged that the commissioner of a non-specified
type of work should be the first copyright owner, an appropriate agreement to that effect
should be concluded.85
1.6.2.3 Employer/employee
Where in a case not falling within either paragraph 1.6.2.1 or paragraph 1.6.2.2, a work is
made in the course of the author’s employment by another person under a contract of
service or apprenticeship, that other person (the employer) is the owner of any copyright
subsisting in the work by virtue of sections 3 or 4.86

85 S 21(1)(c) of the Act.
86 S 21(1)(d) of the Act.

This exception extends beyond literary or artistic works intended for publication and in
effect applies a blanket exception to all works in which copyright can subsist when an employer-
employee relationship is involved. Again, a distinction must be drawn between the
employer-employee relationship (to which this exception applies) and the independent
contractor situation (which falls beyond the scope of this exception). For the exception to apply,
a contract of service or apprenticeship must be established. As a matter of law such contract
may be oral, in writing, or even inferred from the conduct of the parties. The next step in the
enquiry is to consider whether the work was in fact created in the course of the employee’s
employment. If it was created outside the course or scope of employment, the exception does
not apply. In King v South African Weather Service87 the court had occasion to consider the
meaning of the phrase ‘in the course of employment’. It was held to be a standard concept in
employment law (formerly known as the law of master and servant). A practical and common-
sense approach directed at the facts of the matter must be adopted in interpreting the term
and applying it. Whether or not a work is created in the course of the employee’s employment
is largely a factual issue that depends not only on the terms of the employment contract, but
also on the particular circumstances in which the work was created.88 The issue as to whether
an employee created the work at home or after office hours is only one factor to be taken into
account in answering the question whether the work was made in the course of his/her
employment. Indeed, a work may be created in the course of employment without having been
created in terms of a formal contract of service. The scope of an employee’s employment may
be determined. It may change explicitly or by implication from time to time.
1.6.2.4 Vesting of the ownership of copyright

The vesting of the ownership of copyright in terms of the abovementioned exceptions is subject
to the provisions of section 20 (i.e. the author’s ‘moral rights’).89 Furthermore, as previously
mentioned, the operation of the provisions described in paragraphs 1.6.2.1, 1.6.2.2 and 1.6.2.3
in any particular case is subject to any agreement excluding the operation of any such exception.
Parties are free to contract with each other and in this respect the Act makes provision for
parties to contractually negate or overrule the operation of the exceptions. Accordingly, they
are free to contract in such a manner that the exceptions will not apply, but that effect will be
given to their collective preference as to the initial vesting of the ownership of copyright. When
the operation of an exception is excluded the normal position regarding the initial vesting of
copyright prevails and the author is the initial owner. As negating or overruling the exceptions
does not amount to a transfer of copyright, but rather to cancelling out a provision
determining the initial vesting of copyright in a particular person, there are no formalities
applicable to the agreement and the normal rules of the law of contract prevail (unlike in the
case of an assignment or transfer of copyright, where the Act requires a written agreement).90
1.6.2.5 The state and international organisations

The Copyright Act binds the state. Section 5(2) of the Act states that copyright shall be
conferred by the section on every work which is eligible for copyright and which is made by
or under the direction or control of the state or of such international organisations as may
be prescribed.91
87 2009 (3) SA 13 (SCA) at 18 E–F.

88 King supra fn 43 at 20 A–B.
89 S 21(1)(e) of the Act.
90 Stiff v Reid-Daly and Another 2004 BIP 240 (W); Freefall Trading 211 (Pty) Ltd t/a Property Trader v Proplink Publishing
(Pty) Ltd and Others Case No. 10491/05 in the Cape Provincial Division (unreported).

In terms of section 21(2) of the Act, ownership of any copyright conferred by section 5
therefore initially vests in the state or the international organisation concerned, and not in
the author of the work.
PAUSE FOR Work made under the direction and control of the state
REFLECTION In the matter of Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another92 the
Supreme Court of Appeal had occasion to interpret the phrase ‘under the direction or control
of the State’. Smith-Kline Beecham marketed an antibiotic preparation under the name
Augmentin. The Medicines and Related Substances Control Act 101 of 1965 prohibits the
sale of medicines that are subject to registration unless registered with the Medicines
Control Council (the MCC). The MCC requires that the application for registration of a
medicine must be accompanied, inter alia, by a package insert in the appropriate format.
The MCC considers and evaluates the package insert in the course of the registration process
and more often than not proposes amendments, which may or may not be significant.
Applicants for registration are generally obliged to accept the proposed amendments in
order to obtain registration.
In 1980 Smith-Kline Beecham submitted an application for the registration of its
Augmentin antibiotic with the MCC. As required, the application included a proposed
package insert, which was approved after several amendments were made to it at the
insistence of the MCC.
When Smith-Kline Beecham’s patent covering the product lapsed, generic versions of
the product became freely marketable on condition, of course, that they too were registered
with the MCC. Biotech obtained registration for such a generic drug. The package insert it
used was admittedly copied from Smith-Kline Beecham’s package insert. A claim of
copyright infringement based on the copying of the insert was denied by Biotech on the
grounds that Smith-Kline Beecham had failed to prove that the package insert it created
was an ‘original’ work and in any event that any copyright therein vested in the state by virtue
of section 5(2) of the Copyright Act.
Having held that Smith-Kline Beecham’s package insert was in fact an original literary
work, the court considered the ‘crisp issue’ whether the insert was ‘made by or under the
direction or control of the State, it being accepted that the MCC is an organ of State’.93 In
considering the meaning of ‘under the direction of the State’, the court was of the view that
‘the State did not direct the making of the insert because it did not initiate its making and
it did not prescribe the manner and means to be employed therein’.94 This left the question
of ‘control’. In this regard, the court held that ‘the issue is not whether the MCC had the
power to approve or disapprove the insert, but whether the insert was made under its
control’. This was a factual rather than a legal issue.
An insert is of the utmost commercial importance to a pharmaceutical company.
Not only is it required for purposes of registration of a medicine but it is also the
‘passport’ of the medicine because it is the document that prescribing medical
practitioners will have regard to in deciding whether or not to prescribe any particular
medicine.95 The package insert in which copyright was claimed was prepared by an
employee of Smith-Kline Beecham in the course of his employment, rendering Smith-
Kline Beecham the owner of the copyright therein. Thereafter, the draft was submitted
92 2002 (4) SA 249 (SCA).

93 Biotech Laboratories supra at 259A.
94 Biotech Laboratories supra at 261H–262A.
95 Biotech Laboratories supra at 262C–E.

to the MCC for its approval. ‘During the approval process Smith-Kline Beecham amended
the document, sometimes upon the suggestion or request of the MCC, but the MCC did not
change the substance of the insert nor did it co-author the end result. Copyright once
conferred in any particular work cannot again be conferred on the same work and copyright
once vested in a party remains so vested unless transmitted under Section 22’.96
Accordingly, the package insert was held not to have been created by or under the
direction or control of the state.
1.7 Assignment and licences
The text that follows is supplementary to the discussion of this subject matter in paragraphs
9.1.3, 9.2.3 and 9.2.6.3.
1.7.1 Formalities for the valid assignment of copyright

The Act classifies copyright as movable property which is transmissible in three possible
ways, namely by way of assignment, testamentary disposition or operation of law.97 An
assignment or testamentary disposition of copyright may be limited so as to apply to some,
but not all, of the acts which the owner of the copyright has the exclusive right to control (i.e.
the restricted acts or part thereof ), or to a part only of the term of the copyright, or to a
specified country or other geographical area.98
Copyright has been appropriately described as a ‘bundle of rights’.99 As such, copyright
is divisible in that an owner may assign copyright for a specific country or countries
to another, while remaining the owner in all the other countries in which his copyright
subsists; he may assign copyright for a specific period of time, after which ownership is
to revert to him; and he may assign a part of the rights, that is the right to perform
certain, but not all, of the restricted acts, to another. An assignment can combine several
of these aspects.
The effect of an assignment is that ownership of the rights so assigned passes to, and
thereafter vests in, the assignee and entitles him (the assignee) to sue for infringement of
such copyright. Once an assignment has been effected the assignor divests himself of the
relevant rights, which become the property of the assignee.
PAUSE FOR Author infringing copyright in his own work

REFLECTION The effect of an assignment of copyright on the assignor was spelt out clearly in the matter
of Galago Publishers (Pty) Ltd and Another v Erasmus.100 In this case the court iterated that
where an author has surrendered his copyright by assignment to another, he is placed in
the same position as a third party, vis-à-vis the work in question. Any use by him of that work
without the authority of the new copyright owner (assignee) must be adjudged on that basis
and may constitute an infringement of copyright.101
96 Biotech Laboratories supra 262E–F.

98 S 22(2) of the Act; Frank & Hirsch (Pty) Ltd v A Roopanand Brothers (Pty) Ltd 1993 (4) SA 279 (A).
99 Dean Handbook of South African Copyright Law 1–141 para 12.1.
100 1989 (1) SA 276 (A).
101 1989 (1) SA 276 (AD) at 293B.

PAUSE FOR Galago Publishers published a book entitled Selous Scouts – Top Secret War.
REFLECTION The book contains an account of selected operations by the Selous Scouts in the
bush war in Rhodesia during the 1970s. Galago’s managing director, Peter Stiff, was
a co-author of the book. It comprised around 400 pages of text. Stiff assigned
his copyright in the literary work comprised in the book to Erasmus, thus making
him a copyright owner. The book was published by Galago under licence from the copyright
owner.
Stiff wished to produce a sequel to Top Secret War, but Erasmus was not agreeable to
the subsequent book. Galago and Stiff nonetheless proceeded to produce and publish a
‘coffee-table’ edition of the events described in the earlier book entitled Selous Scouts – A
Pictorial Account. The second book was in a larger ‘coffee-table’ format and consisted of
some 170 pages liberally illustrated with photographs and other illustrations, with
accompanying text. Erasmus contended that the Pictorial Account copied 12 out of 17
chapters from Top Secret War, of which it was effectively an abridged edition.
The case turned on the questions of whether there was an objective similarity between
the two works and, if so, whether there was a causal connection between them. It was argued
that Stiff had simply recounted the same events afresh. The court found that there was the
requisite degree of similarity between the two books and that this was attributable to actual
copying. The second book therefore in principle constituted an infringement of the copyright
in the first book.
Since Stiff had divested himself of his rights through the assignment of copyright to
Erasmus, he was placed in the same position, vis-à-vis Top Secret War, as a third party. His
co-authorship of the first work was of no assistance in defending the claim of copyright
infringement in respect of the Pictorial Account. In effect, the court held that in writing the
second book Stiff had infringed the copyright in his own earlier work. This is the outcome
and effect of an assignment of copyright. Galago had infringed copyright by publishing the
second book.
The Act prescribes certain formal requirements for a valid assignment of copyright.102 These
formalities are discussed in paragraph 9.1.3.1.
An assignment may be granted or made in respect of the copyright in a future work,
or the copyright in an existing work in which copyright does not subsist but will come
into being in future, and the future copyright in any such work is transmissible as
movable property.103
1.7.2 Exclusive, non-exclusive and sole licences

A licence does not constitute any transfer in the ownership of copyright. It is a permission,
authorisation or approval granted by the owner of copyright to another (or others) to perform
an act falling within the monopoly afforded to the owner. Viewed differently, were it not for
the permission granted by the owner, the licensee’s conduct would have constituted an
infringement of copyright. The licence enables the licensee to lawfully perform certain
actions in relation to a protected work to the exclusion of others who do not have such
102 S 22(3) of the Act.

103 S 22(5) of the Act.

permission. An example of a licence is a publishing agreement in terms of which the author/

copyright owner of a work grants a publisher permission to reproduce and publish his work.
Unless precluded by the terms of the licence from doing so, a licensee is generally entitled
to authorise a third party (a sublicensee) to exercise the rights that he has acquired from the
licensor. A sublicensee can similarly grant further sublicences.
As in the case of an assignment, a licence may be in respect of the whole or a part of the
bundle of rights that the copyright comprises. In the case of both an assignment and a licence
the person transferring or granting the rights to another cannot pass on greater or more
extensive rights than those which he holds or has acquired.
The Act distinguishes between exclusive and non-exclusive licences and in order to
illustrate the differences between them, a brief explanation of each is given below.
1.7.2.1 Exclusive licence

An exclusive licence is a licence whereby the licensee, to the exclusion of the owner of the
copyright and all others, may perform all or certain of the restricted acts in relation to a
protected work, as agreed between the licensing parties. In this situation, even the owner of
the copyright is not allowed to perform the acts which have been licensed. As in the case of
an assignment, the Act also prescribes certain formal requirements for the existence of a
valid exclusive licence.104 These formalities are discussed in paragraph 9.2.3.3.
Difficulty can sometimes be experienced in distinguishing between an exclusive licence
and an assignment in respect of copyright as their practical effects are similar. The important
distinction is that, in the case of an assignment, ownership of the right is transferred, whereas
in the case of an exclusive licence, the grantor of the right retains ownership of it and merely
allows the grantee the exclusive right to exercise it; the licensor also assumes the contractual
obligation not to exercise the right him/herself.
One of the important characteristics, and indeed the advantage, of an exclusive licence
is that it gives the licensee the right to sue for copyright infringement (which is otherwise
the sole right of the copyright owner). An exclusive licence and an exclusive sublicence give
rise to the same rights of action and provide the same remedies as would have been the case
if the licence were an assignment. Those rights and remedies exist concurrently with the
rights and remedies of the owner of the copyright.105 However, before an exclusive licensee
or an exclusive sublicensee is entitled to institute proceedings based on copyright
infringement, he must first give notice in writing to the owner of the copyright concerned of
his intention to do so. This is intended to provide the owner of the copyright with an
opportunity to intervene in such proceedings and to recover any damages that he may have
suffered as a result of the infringement concerned or exact payment of a reasonable royalty
to which he may be entitled.106
1.7.2.2 Non-exclusive licence

There are no formal requirements for the existence of a non-exclusive licence. Such a licence
may be granted orally, in writing, tacitly or may even be inferred from the parties’ conduct.107
In principle the licensor may grant a multiplicity of non-exclusive or ordinary licences. The
Act states that a non-exclusive licence may be revoked at any time provided that such a licence
‘granted by contract shall not be revoked, either by the person who granted the licence or his
104 S 22(3) of the Act.

105 S 25(1) of the Act.
106 S 25(2) of the Act.
107 S 22(4) of the Act.

successor in title, except as the contract may provide, or by a further contract’.108 In considering
whether the term ‘contract’ must be limited to a written contract, the court in Catgraphics CC
v Africon Engineering International (Pty) Ltd109 held that there was no reasonable basis for so
limiting the wording, and that it should therefore also apply to tacit or implied contracts.
1.7.2.3 Sole licences

A sole licence is a licence which affords the licensee to the exclusion of all other persons,
besides the licensor, the right to perform the acts as agreed upon in relation to the subject
work. The standard principles applicable to non-exclusive licences also apply to sole
licences. Unlike in the case of an exclusive licence, where the licensor’s right to carry out the
relevant act is precluded by the agreement, in the case of a sole licence the licensor is free
to exercise the right in question notwithstanding the licence.
1.7.2.4 ‘Needletime’ licences

Section 9(d) and (e) of the Act gives a sound recording copyright owner the right to authorise
or control the use of a sound recording in broadcasts and in public performances of music
and other material carried by the record. These forms of activity are commonly referred to
as the public performance right of the sound recording, or ‘needletime.’ Section 9A of the
Act contains special provisions dealing with the licensing of needletime.
Someone who exercises the needletime right is required to pay a royalty to the sound
recording copyright owner (and to any performers whose performances are featured on the
record in terms of section 5(1)(b) of the Performers’ Protection Act 11 of 1967), unless the
copyright owner or performer agrees to the contrary. The amount of the compulsory royalty
must be agreed between the copyright owner and performer, on the one hand, and the user
of the record, on the other hand. If no agreement can be reached among these parties, the
issue of the amount of the royalty payable can be referred by any of the parties to the Copyright
Tribunal or to arbitration in terms of the Arbitration Act 42 of 1965, for determination. The
royalty that is payable must be paid to the copyright owner, who is required to share it with
the relevant performer(s). If the copyright owner and the performer(s) cannot agree on how
the royalty should be shared, that issue can also be referred to the Copyright Tribunal or to
arbitration for determination. The payment of a royalty to the copyright owner in terms of
section 9A creates a needletime licence in favour of the payer and is effectively deemed also
to grant a licence in that person’s favour under the corresponding right of the performer(s).
The necessity for a user to obtain a needletime licence does not detract from, or interfere
with, the user’s obligation to obtain a licence for the public performance of the subject matter
carried by the record, such as a musical work.
In practice, sound recording copyright owners’ and performers’ neeldletime rights are
administered by collecting societies and prospective users can therefore obtain licences
from such organisations.
1.8 Infringement
Infringement of copyright can take various forms, namely direct or primary infringement,
indirect or secondary infringement, and criminal infringement. These various forms of
infringement are discussed below.
108 S 22(4) of the Act.

109 2003 JDR 0514 (T).

1.8.1 Direct infringement
Direct or primary infringement of a person’s copyright entails that another person, without
the owner of the copyright’s permission, does or performs in relation to a protected work
one or more of the acts comprised in the copyright owner’s monopoly, namely the restricted
acts applicable to the type of work in question. The mere ‘use’ of a copyright work does not
amount to copyright infringement.110 For example, simply reading a novel cannot constitute
an infringement of the copyright in it.111
Direct infringement of copyright is dealt with in section 23(1) of the Act. It provides that
copyright is infringed by any person, not being the owner of the copyright, who, without the
licence of such owner, does or causes any other person to do any act which the owner of the
copyright has the exclusive right to do or to authorise. This brings the various restricted acts
into focus. These acts are detailed in respect of each category of work eligible for copyright
in paragraph 1.5.2 above.112 The correct interpretation of these restricted acts is of the utmost
importance as they lie at the heart of the issue of copyright infringement. The restricted acts
define the boundaries and provide the content of the copyright owner’s monopoly. If a
restricted act is performed with the permission of the copyright owner, such conduct will
not constitute copyright infringement.
In practice the principal restricted acts are the reproduction (in any manner or form)
and the adaptation of a work. The terms ‘reproduction’ and ‘adaptation’ are both specifically
defined in the Act.113 Other noteworthy restricted acts include publishing a work, performing
it in public, broadcasting it and, in relation to some categories of works, dealing with a copy
of it for purposes of trade (e.g. letting, hiring out or selling).
Despite the fact that the Copyright Act antedates many recent technological advances
(such as email, the Internet, scanners and other digital equipment with advanced tools
which greatly facilitate copying, like the ‘cut’, ‘copy’ and ‘paste’ functions in a computer
platform), the concept of reproduction is sufficiently wide to cater for current
circumstances. The restricted act entails that it is prohibited to reproduce a work ‘in any
King supra note 43 at 17D.

110
King supra note 43 at 17D.
111
112
See ss 6, 7, 8, 9, 10, 11, 11A and 11B of the Act.
113
S 1(1) of the Act defines the respective terms as follows:
reproduction’ in relation to—
(a) a literary or musical work or a broadcast, includes a reproduction in the form of a record or a
cinematograph film;
(b) an artistic work, includes a version produced by converting the work into a three-dimensional form or, if
it is in three dimensions, by converting it into a two-dimensional form;
(c) any work, includes a reproduction made from a reproduction of that work.
‘adaptation’ in relation to—
(a) a literary work, includes—
(i) in the case of a non-dramatic work, a version of the work in which is converted into a dramatic work;
(ii) in the case of a dramatic work, a version of the work in which it is converted into a non-dramatic work;
(iii) a translation of the work; or
(iv) a version of the work in which the story or action is conveyed wholly or mainly by means of pictures
in a form suitable for reproduction in a book or in a newspaper, magazine or similar periodical;
(b) a musical work, includes any arrangement or transcription of the work, if such arrangement or
transcription has an original creative character;
(c) an artistic work, includes transformation of the work in such a manner that the original or substantial
features thereof remain recognisable;
(d) a computer program, includes—
(i) a version of the program in a programming language, code or notation different from that of the
program; or
(ii) a fixation of the program in or on a medium different from the medium of fixation of the program.

manner or form’. This description makes provision for anything from the arduous task
of copying a protected work by hand to photocopying, scanning or converting a scanned
document from PDF format to Word format. It is perhaps a common misperception
that works on the Internet fall within the public domain and are free for copying and
other uses by all. This is not the case. While the Internet may provide another platform for
a work to be published or disseminated, works which appear on it in principle enjoy the
standard protection offered by copyright law and they are therefore subject to the normal
copyright restrictions on their usage. The Internet has, however, provided an efficient,
simple and readily available means of infringing the copyright in a vast array of works and
it greatly complicates the task of enforcing copyright owners’ rights effectively because of
the ease with which works can be copied. See paragraph 10.2.2.5 for a further discussion
of this issue.
Copyright is infringed not only by the performance of a restricted act in relation to a
protected work as a whole, but also in relation to ‘any substantial part’ thereof.114 Just as the
Act does not define the ‘originality’ requirement for the subsistence of copyright, it does not
define what constitutes a ‘substantial part’ of a work either. Accordingly, regard must be had
to the interpretation which our courts have adopted. In order to determine what constitutes
a substantial part of a work, the courts have held that the test is one as to the quality and not
the quantity of the material that has been taken from a work.115 Therefore, in copyright terms
a small but essential part of a work can constitute a substantial part thereof.116 It is a question
of degree, taking into consideration the specific facts of each matter.
PAUSE FOR How much is a substantial part?

REFLECTION In the Haupt case117 the court held that copying 63 lines of a source code that
was several thousand lines long constituted a reproduction of a substantial
part of the protected work. In reaching its conclusion, the court had regard to
the fact that the 63 lines were copied because the infringer found it too difficult to write
them himself and they were clearly considered to be a valuable ingredient
of the program.
In testing whether what has been taken from a copyright work constitutes a substantial
part a comparison must be made between the part of the copyright work that has
been taken and the corresponding part of the alleged infringing work. A value judgment
must be made regarding the substantiality of the part of the copyright work. The
contribution that the alleged infringing material makes in the contentious work is
unimportant. If what has been taken is a part with substance, the degree of similarity
between the respective parts must be assessed in isolation. The overall similarity between
the two works is not the appropriate criterion. The comparison between the respective
works must also take account of the dissimilarities between the respective parts,
particularly when the works are being compared as a whole, as in the case of two paintings.
114 S 1(2A) of the Act.

115 See Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others 908 JOC (A) at 922 E–F (also at 2006 (4)
SA 458 (SCA)) where the court held that although a limited amount of copying took place, what was copied was
qualitatively significant. The copied portions therefore constituted substantial amounts of copying.
116 Juta & Company Ltd and Others v De Koker and Others 415 JOC (T); Ehrenberg Engineering (Pty) Ltd v Topka t/a Topring
Manufacturing and Engineering 40 JOC (T) at 55.
117 2006 (4) SA 458 (SCA).

It is necessary to determine wherein the originality of the copyright work lies. It is

essentially the original aspects of the copyright work that are protected and infringement
takes place when these aspects are incorporated into the later work. A derivative work may
include portions to which the owner cannot lay claim because they are not his own
contribution, and if such portions are incorporated in the work of another, there can be
no claim of copyright infringement.
PAUSE FOR Maps of the Kruger National Park

REFLECTION In the matter of Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd118 the court
considered whether there was an infringement of copyright between two competing maps
of the Kruger National Park (each of which not only depicted features such as the park
perimeter, roads, gates, rivers and camps, but included supplemental matter). The competing
maps incorporated references to various common places, such as a distance and travelling
time table and a key to symbols depicting features like waterholes, look-out points and
camps. Neither of the parties’ maps were truly original works. The court held that the Kruger
Park was already well explored and well mapped. In this regard, the court commented as
follows on the copyright claimants’ refraining from any attempt to describe what they had
originated:
Of course, she was not in the position of ‘stout Cortez with eagle eyes’ as he
‘star’d at the Pacific … Silent, upon a peak in Darien’.
Both parties’ maps were created with reference to pre-existing matter. It was essential for
the copyright claimant to have shown what features of the subject map were original.
In the case of truly original artistic works a mere comparison between the competing
works usually provides a ready answer (i.e. as to whether an objective similarity exists
between the protected and alleged infringing works), whereas the answer may not be so
readily reached if the copyright and the alleged infringing works may have a common
source.119 The court referred to a passage from the matter of Spectravest Inc v Aperknit
Limited120 where it was held that:
Accordingly, where the reproduction of a substantial part of the Plaintiff’s work is

alleged, a sensible approach is first to identify the part of the Plaintiff’s work
which is alleged to have been reproduced and to decide whether it constitutes a
substantial part of the Plaintiff’s work. The test is qualitative and not, or not
merely, quantitative. If it does not, that is an end of the case. If it does, the next
question is whether that part has been reproduced by the Defendant.
Reproduction does not mean exact replication. A man may use another’s work as
an inspiration to make a new work of his own, treating the same theme in his own
manner; but he is not entitled to steal its essential features and substance and
retain them with minor and inconsequential alterations. The question is whether
there is such a degree of similarity between the salient features of the two works
that the one can be said to be a reproduction of the other. In considering whether
118 1998 (2) SA 965 (SCA).

119 Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (SCA) at 972F. See also Laubscher v Vos and
Others 3 JOC (W) at 6.
120 [1988] FSR 161.

a substantial part of the Plaintiff’s work has been reproduced by the Defendant,
attention must primarily be directed to the part which is said to have been
reproduced, and not to those parts which have not.
In reaching its conclusion the court, having compared the respective parties’ maps, stated
that ‘apart from overall impact, a study of details dependent on choice confirmed the
impression that the one map is not a reproduction of the other’.121
The court in the matter of Galago Publishers (Pty) Ltd and Another v Erasmus122 held that
establishing infringement by ‘reproduction’ within the meaning of the Act involves the
application of the following two-step test which must be satisfied, namely that:
1. there is sufficient objective similarity between the alleged infringing work and
the original work, or a substantial part thereof, for the former to be properly
described not necessarily as identical with, but as a reproduction or copy of, the
latter; and
2. the original work was the source from which the alleged infringing work
was derived, namely that there is a causal connection between the original
work and the infringing work.123 The casual connection could be either direct
or indirect.
A copyright owner must establish both these points in order to succeed in an infringement
claim based on reproduction of the protected work.124 In essence it is necessary for a
claimant to show that his work has been copied. Mere similarity between the two works does
not suffice. If a work that is alleged to infringe another was created independently and has
similarities to the earlier work which are purely coincidental, then the latter does not infringe
because there was no copying as contemplated by the Act. Conversely, however, if there has
been copying but it does not result in the two works’ being sufficiently objectively similar to
one another there is also no infringement of copyright.
PAUSE FOR ‘Copy traps’ seen as only the tip of the iceberg
REFLECTION In the matter of Fax Directories (Pty) Ltd v SA Fax Listings CC125 the court had to
consider whether the copyright in a literary work (i.e. a directory of telefax users
entitled ‘The Pink Pages’) was infringed by the publication of a competing directory
called the ‘SA Telex Register and SA Fax Listings’. The publisher of ‘The Pink Pages’
inserted a number of fictitious entries in its directories. Twenty-eight out of 29 of these
fictitious entries also appeared in the respondent’s subsequent publication. It was
otherwise impossible for the applicant to prove authoritatively the extent of the
respondent’s copying of its directory, which the court held to be a literary work in
121 Jacana Education at 973 I.

122 1989 (1) SA 276 (A) at 280 A–D.
123 See also Laubscher v Vos and Others 3 JOC (W) at B–C.
124 Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd 2003 (1) SA 31 (SCA) at 36 A/B–C; Klep Valves (Pty) Ltd v
Saunders Valve Co Ltd 1987 (2) SA 1 (A).
125 1990 (2) SA 164 (D).

which copyright subsisted. The court held that the inference was inescapable that the 28
or so instances of copying were copied directly or indirectly from the applicant’s works
and that it was inconceivable that the respondent could only have selected those 28 or
29 cases to copy. The probability was overwhelming that there must have been many more
entries that were simply copied. The court concluded that the only inference that could
be drawn was that the amount the respondent copied was substantial even if the precise
extent thereof was not known. The interdict was accordingly granted.
The insertion of so-called ‘copy traps’ as occurred in the Fax Directories case is generally
considered to be one of the ways in which owners of copyright can potentially ease the
burden of proving an infringement of their works, and more particularly of proving a
causal connection between two similar works. ‘Copy traps’ are fictitious or irrational
features (having no validity) placed in a copyright work which, when appearing in a
contentious work, may lead to the overwhelming inference being drawn that copying has
taken place.
Copying can be direct (the copying takes place from the copyright work itself )
or indirect (what is copied is not the actual copyright work but something which is
itself a reproduction of the copyright work – for instance copying a photograph of a
painting). Intervening reproductions in the copying process may be in different
dimensions. A three-dimensional version of a two-dimensional work, and vice-versa,
constitutes a reproduction and if there is a causal connection between them they
are copies for purposes of the law.
PAUSE FOR Adaptation of a parts numbering code

REFLECTION In Bosal Afrika (Pty) Ltd v Grapnel (Pty) Ltd and Another126 the court held that copyright
subsisted in the plaintiff’s parts numbering system which it used in relation to its motor
vehicle exhaust systems. The parts numbering system, comprising a compilation of individual
codes, facilitated the storing of the motor vehicle parts in a warehouse and in each instance
identified the vehicle for which the particular part was intended. Each part number code
consisted of six digits.
The defendant adopted the same system with a six-digit number in respect of each part.
It devised its code in the case of each part by subtracting the plaintiff’s corresponding
number from the figure 999 999. In this way the overall pattern of the defendant’s numbering
system was substantially the same as that of the plaintiff and the defendant’s products
could be correlated with those of the plaintiff.
It was common cause that the defendant’s numbering code was not a direct copy of the
plaintiff’s. The question was whether it constituted an ‘adaptation’ of the plaintiff’s system.
The court held that by adopting a numbering code which was linked to and derived from
that of the plaintiff, the defendant was in effect using the plaintiff’s numbering
126 1985 (4) SA 882 (C).

codes and system and it and its customers could in future utilise them improperly.127 The
defendant had therefore made an adaptation of the plaintiff’s work (without authority) and
had thus infringed the plaintiff’s copyright.
A claimant advancing a case of direct copyright infringement does not need to show that the
infringer knew that his infringing activities were unlawful. So-called ‘guilty-knowledge’ on
the part of the infringer is not a requirement for primary copyright infringement. Someone
who, acting in good faith, reproduces a substantial part of a copyright work without the
authority of the copyright owner nevertheless infringes copyright. The situation in this regard
is, however, different in the case of secondary infringement, which will be discussed below.
In dealing with direct copyright infringement, section 23(1) makes not only the de facto
perpetrator of an act of infringement culpable, namely the person actually performing the
restricted act without authority, but also impugns a person who has ‘caused’ or instigated
the restricted act. For example, in the case of a so-called ‘copy shop’ (a business undertaking
the reproduction of textbooks and the like on demand – a not uncommon phenomenon on
or around university campuses) possible liability for making unauthorised reproductions
of works may extend beyond the ‘copy shop’ itself to include a lecturer who instructs the
‘copy shop’ to make the copies, and perhaps even to the university which is vicariously liable
for the conduct of its employees. In this example the lecturer and perhaps the university
have ‘caused’ the copy shop to make unauthorised reproductions of the work and to infringe
copyright in that work, and on that account they have also infringed the copyright.
1.8.2 Indirect infringement

Indirect or secondary infringement occurs where a person deals in infringing articles, for
example where he may not himself have reproduced the protected work, but secured it from
another source, whether locally or abroad, and deals with it for purposes of trade in South
Africa. A second type of indirect infringement occurs where a person permits a place of public
entertainment to be used for a performance in public of a work that infringes the copyright in
a protected work. These respective forms of infringement are discussed in greater detail below.
For indirect infringement, it is a requirement that the infringer must know that his
conduct relates to articles that are the results of copyright infringement, that is so-called
‘infringing copies’. Guilty knowledge is therefore a requirement in indirect infringement
proceedings, which entails that a court must be satisfied that prior to the institution of the
infringement proceedings the alleged infringer knew that his conduct constituted
copyright infringement. This requirement is normally satisfied by a copyright owner’s
addressing an appropriate cease and desist letter to the infringer, requiring him to
undertake that he will not perpetuate the infringing conduct, before pursuing formal
copyright infringement proceedings in the High Court. If the undertaking is not given and/
or the infringing conduct persists it can be contended that the infringer thereafter had the
requisite guilty knowledge. Various forms of indirect infringement are discussed below.
1.8.2.1 Dealing in infringing articles for purposes of trade
Copyright is infringed by any person who, without the licence of the owner of the
copyright and at a time when copyright subsists in a work—
127 Bosal Afrika supra fn 126 at 893 A.

(a) imports an article into South Africa for a purpose other than for his private and
domestic use;
(b) sells, lets, or by way of trade offers or exposes for sale or hire in South Africa any
article;
(c) distributes in South Africa any article for the purposes of trade, or for any other
purpose to such an extent that the owner of the copyright in question is prejudicially
affected; or
(d) acquires an article relating to a computer program in South Africa;
if to his knowledge the making of that article constituted an infringement of that
copyright (referred to as ‘infringing copies’) or would have constituted such an
infringement if the article had been made in South Africa.128
This type of infringement makes it possible for a person who deals in articles which infringe
the copyright in a protected work, that is infringing copies, for his own financial gain to
infringe copyright. Where the infringing copies are imported into South Africa and intended
for a person’s private and domestic use, such importation will not constitute secondary
infringement. The purpose of the importation must be for some other objective relating to
trading in the articles in question.
The enquiry in regard to imported goods goes beyond whether the article so dealt with
constitutes an article whose actual making infringed copyright, to whether it would have
constituted an infringement if it had hypothetically been made in South Africa by the person
who actually made it. This question turns on the scope of the rights held by the actual
manufacturer of the contentious article, in particular the geographical scope of those rights.
If the actual manufacturer’s rights did not extend to South Africa, but were confined to some
other geographical area, then that person would have acted without appropriate authority in
South Africa and the goods are therefore technically infringing copies of the copyright work.
1.8.2.2 Public performances

The copyright in a literary or musical work is infringed by any person who permits a place
of public entertainment to be used for a performance in public of the work, where the
performance constitutes an infringement of the copyright in the work and the person
arranging for the public performance knows that to be the case.
This provision puts an onus on operators of theatres, cinemas and the like to ensure that
they control the performances and works performed with their facilities and at their premises.
It is, however, a requirement that in order for a person to be held liable under this form
of infringement he must have been aware or have had reasonable grounds for suspecting
that the performance would be an infringement of copyright.129
1.8.2.3 Parallel importation/grey goods

In its simplest terms, a parallel import is a genuine product made in another country with
due authorisation and imported into a different country without the permission of the
copyright or other intellectual property owner.130 These imports are normally outside
authorised importation channels. It happens that specific goods are sourced abroad at
cheaper prices and imported into South Africa at a sufficiently low cost to enable the parallel
128 S 23(2) of the Act (explanatory wording added).

129 S 23(3) of the Act.
130 See OH Dean ‘Copyright v grey goods in South Africa, Australia and Singapore’ (1994) 111 SALJ 746.

importer to sell the grey goods at a price lower than the price of the authorised goods. This
occurs particularly where a foreign manufacturer has appointed an exclusive distributor in
the country of importation. Copyright is the one branch of intellectual property law which
can be, and has been, used by distributors in the importing country to restrain competitive
dealings in grey goods.131
‘Grey goods’ is the term generally used in relation to products so imported through
unofficial and unauthorised channels. The concept is perhaps best illustrated by way of an
example, the most appropriate being Frank & Hirsch (Pty) Ltd v Roopanand Brothers (Pty)
Ltd,132 which involved the importation into South Africa of blank grey TDK audio and video
cassette tapes. These goods and their packaging, which was held to embody both literary
and artistic works in which copyright subsisted, were manufactured in Japan and had their
origin in TDK Electronics Co Ltd of Japan. Frank & Hirsch was the exclusive importer and
distributor of blank TDK tapes in terms of a Distributorship Agreement entered into between
it and the Japanese manufacturer.
Roopanand Brothers began importing TDK tapes into South Africa and selling them here.
It imported the genuine TDK product. It obtained its supplies of TDK tapes from Dialdas &
Co of Singapore, which in turn acquired them from Hock Cheong & Co, also of Singapore,
the latter being the authorised dealer appointed by TDK Electronics (i.e. the Japanese
manufacturer) in Singapore. TDK Electronics supplied the goods to Hock Cheong & Co
without any restrictions on resale and Hock Cheong & Co’s supply of the goods to Dialdas
& Co and the latter’s supply of the goods to Roopanand Brothers were similarly free of
restriction. Roopanand Brothers therefore sourced their TDK tapes from a supplier in
Singapore and imported these goods into South Africa legitimately if copyright issues were
not taken into consideration. However, the goods were imported without the authorisation
of either TDK Electronics in Japan or its authorised local distributor, Frank & Hirsch.
Parallel importation and dealing in grey goods in South Africa may in certain circumstances
constitute indirect copyright infringement. For this to occur, the grey goods must be or become
infringing copies of copyright works embodied in the grey goods, and more particularly in the
case under discussion, in the packaging material of the goods. This is the case where the actual
maker of the goods (in the present instance TDK Electronics) does not hold the reproduction
rights in the copyright works in question for South Africa. If the actual maker of the goods is
the world-wide copyright owner, it is necessary that such maker should divest itself of the
reproduction rights in the works (or the copyright as a whole) for South Africa. This can be
done by assigning the relevant part of the copyright to a third party. Once such an assignment
has taken place, the reproduction of the copyright works in making the packaging material by
the erstwhile copyright owner would hypothetically have constituted an infringement of the
South African copyright in such works if such manufacture and reproduction had notionally
been carried out in South Africa by the actual manufacturer. This brings the grey goods within
the ambit of the hypothesis in the concluding portion of section 23(2) of the Act as discussed
above (see paragraph 1.8.2.1) and makes the grey goods (or often, more particularly, the
packaging material) infringing copies of the works for the purposes of the section.
The aforementioned course of action was adopted in the Frank & Hirsch case and TDK
Electronics assigned the copyright in the literary and artistic works embodied in the
packaging material of TDK tapes to Frank & Hirsch, thus enabling the latter, as South African
copyright owner, to sue Roopanand Brothers for secondary copyright infringement by virtue
131 See in this regard OH Dean ‘Parallel importation – Infringement of copyright’ (1983) 100 SALJ 258.
132 1993 (4) SA 279 (AD) at 282 F–H.

of the fact that they were importing and distributing for purposes of trade, infringing copies
of the copyright works.
There are normally several preparatory steps that must be taken before a claim of copyright
infringement arises against a parallel importer. In addition to the assignment of copyright from
the foreign manufacturer/copyright owner in favour of the exclusive South African distributor,
it is necessary to demonstrate to the satisfaction of the court that the grey goods dealer knows
that it is dealing in infringing copies of copyright works.133 In practice the standard procedure
is for the South African copyright owner/exclusive distributor to purchase a specimen product
from the grey goods dealer in order to obtain proof that the article in question was made by
the foreign manufacturer at a time when it was not the owner of the South African reproduction
rights in the copyright work embodied in the product and that a potentially infringing act has
taken place in regard to that article. On the strength of the commission of that infringing act,
the copyright owner generally addresses a letter of demand to the grey goods dealer setting
out in full on what basis it is claimed that copyright subsists in the works in question in South
Africa and explaining how it comes about that the grey goods are ‘infringing copies’ of the
works in question and that, as a result, importing and distributing such goods is an
infringement of copyright. If the grey goods dealer furnishes an undertaking to discontinue
trading in the grey goods, that is the end of the matter. If, however, despite having been warned
and after having been afforded a suitable opportunity to take legal advice and to verify the
exclusive distributor’s claim, the grey goods dealer continues to trade in the infringing goods
it is assumed that such dealer knows that its conduct infringing copyright and that it is
perpetrating copyright infringement. The important point is that copyright infringement does
not take place unless and until the grey goods dealer has acquired so-called ‘guilty knowledge’
of the infringing nature of his conduct and, notwithstanding the fact that he is possessed of
that knowledge, continues to trade in the grey goods.
COUNTER Divestment of rights

POINT It is not always necessary for assignment of the South African copyright from the foreign
manufacturer to be made to a local subsidiary or associated company. This role could be
fulfilled by any locally based company or even a distributor (as was the case in the TDK
matter). It could even be fulfilled by a foreign based company as long as it does not hold
reproduction rights in South Africa in respect of the copyright work and has locus standi to
sue in South Africa. Be that as it may, the assignment is generally made in favour of a local
company which has a business interest in the goods in question. Owners of copyright do
not normally part with their copyright lightly and they may generally be more comfortable
with assigning their South African copyright to a company that they control rather than to
one with which they have an arm’s length trading relationship.
It is of the utmost importance that there should be a proper identification of the works in
respect of which the copyright is assigned. This will depend to some extent on the nature of
the products in question. Generally one utilises artistic works or literary works embodied in
the get-up or packaging of the products, but the design drawings for the products themselves
can also be used.134 The works chosen as the subjects of the assignment of copyright must
obviously be works which are featured in or in connection with the grey goods being sold in
South Africa.
133 Columbia Pictures Industries Incorporated v Video Rent Parkmore 1982 (1) SA 49 (W); see also OH Dean and C Puckrin
‘South African case law on the infringement of copyright by parallel importation: Case comment’ (1983) 7 EIPR 190;
Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T).
134 McCarthy Ltd v Hi-Fi Corporation (Pty) Ltd 1075 JOC (T).

In the TDK case, it was upheld that copyright subsisted in the subject works on which
the case was based (literary and artistic works embodied in the get-up of the products in
question) and that the ownership of the copyright in the get-up of the products in issue
originally vested in the Japanese manufacturer, TDK Electronics. It was shown that this
copyright, in so far as it extended to South Africa, was validly assigned to Frank & Hirsch.
The court held that in order to complete its cause of action in terms of section 23(2) of the
Act, Frank & Hirsch also had to establish that:
1. Roopanand Brothers either imported the tapes in issue into South Africa for a
purpose other than for their private or domestic use, or sold, let or offered by way of
trade or exposed the tapes in issue for sale or hire in South Africa, or distributed the
tapes in issue in South Africa for the purpose of trade or for any other purpose to
such an extent that the owner of the copyright in question was prejudicially affected;
2. to Roopanand Brothers’ knowledge the making of the get-up of the tapes in issue
either:
i) constituted an infringement of Frank & Hirsch’s copyright, or
ii) would have constituted such an infringement if the relevant articles had been
made in South Africa; and
iii) that Roopanand Brothers had no licence from Frank & Hirsch to deal in the
goods (or more correctly, the packaging materials – as these were in fact the
actual infringing copies of the works).135
With reference to the case of Twentieth Century Fox Film Corporation and Another v Anthony
Black Films (Pty) Ltd, 136 the court made the following observations on the words ‘…would
have constituted such an infringement if the article had been made in the Republic’, as
contained in section 23(2):
1. that they applied, and could only apply, to an imported article, that is one not made
in South Africa;
2. that the hypothesis that the court is required to make in terms of these words is that
the imported article was made in South Africa by the person who had actually made
it abroad; and
3. that such person could not lawfully have made it in South Africa (i.e. he held no
reproduction licence that extended to South Africa).
The court held that all three of these questions could be answered in the affirmative and that
the imported goods were technically ‘infringing copies’ of the copyright work; as such the
importation into and dealing in grey TDK goods in South Africa by Roopanand Brothers
constituted secondary or indirect copyright infringement, it having been shown that
Roopanand had been given prior good notice of the infringing nature of the imported goods
and the unlawful nature of their conduct in dealing with them.
The rationale behind obtaining relief for copyright infringement in respect of grey goods
of this nature is not so much the direct prevention of dealings in grey goods, but rather the
prevention of the importation of reproductions of the works in which copyright subsists and
which are inextricably linked to the infringing goods, thus indirectly effectively preventing
trading in the grey goods. The implication is that, in the TDK case, the tapes could still have
135 Frank & Hirsch (Pty) Ltd supra at 285 F–I.

136 1982 (3) SA 582 (W).

been imported into South Africa free of their get-up or the trade dress embodied in the
packaging materials. In this situation, however, the necessity of providing a fresh get-up or
devising new (non-infringing) trade dress would make it uneconomic for the grey goods
importer to trade in grey goods and would therefore be an obstacle and disincentive to such
trade. Furthermore, without the get-up of TDK tapes, which enjoyed a substantial repute,
the tapes would have limited market appeal.
On the issue of grey goods and unlawful competition, see paragraph 3.5.2.1.
1.8.3 Criminal infringement

The Act also renders certain types of infringements criminal offences in respect of which an
infringer can be held criminally liable. These are set out under section 27 of the Act, which
provides that:
1. Any person who at a time when copyright subsists in a work, without the authority of the
owner of the copyright:
a) makes for sale or hire;137
b) sells or lets for hire or by way of trade offers or exposes for sale or hire;138
c) by way of trade exhibits in public;139
d) imports into South Africa otherwise than for his private or domestic use;140
e) distributes for purposes of trade;141 or
f ) distributes for any other purposes to such an extent that the owner of the copyright
is prejudicially affected;
articles which he knows to be infringing copies of the work, is guilty of an offence.142
The foregoing offences listed under numbers (a) to (f) are substantially the same as the acts
of secondary civil copyright infringement and also require guilty knowledge on the part of
the infringer that he is dealing with infringing copies.
2. Any person who at a time when copyright subsists in a work makes or has in his
possession a plate knowing that it is to be used for making infringing copies of the work,
is guilty of an offence.143
3. Any person who causes a literary or musical work to be performed in public knowing
that copyright subsists in the work and that the performance constitutes an infringement
of the copyright, is guilty of an offence.144
4. Any person who causes a broadcast to be rebroadcast or transmitted in a diffusion service
knowing that copyright subsists in the broadcast and that such rebroadcast or transmission
constitutes an infringement of the copyright, is guilty of an offence.145
5. Any person who causes programme-carrying signals to be distributed by a distributor
for whom they were not intended knowing that copyright subsists in the signals and that
such distribution constitutes an infringement of the copyright, is guilty of an offence.146
137 S 27(1)(a) of the Act.

138 S 27(1)(b) of the Act.
139 S 27(1)(c) of the Act.
140 S 27(1)(d) of the Act.
141 S 27(1)(e) of the Act.
142 S 27(1)(f) of the Act.
143 S 27(2) of the Act.
144 S 27(3) of the Act.
145 S 27(4) of the Act.
146 S 27(5) of the Act.

The Act makes provision for the following penalties to be imposed upon a person convicted
of any of these offences:
1. in the case of a first conviction, a fine not exceeding R5 000 or imprisonment for a period
not exceeding three years, or to both a fine and imprisonment, for each article to which
the offence relates;
2. in the case of a further conviction, a fine not exceeding R10 000, or imprisonment for a
period not exceeding five years, or both such fine and such imprisonment, for each
article to which the offence relates.147
The process to be followed in this regard is similar to that applicable in any other criminal
case. The starting point would be for a copyright owner to lodge a criminal complaint with
the South African Police Service. A criminal case is opened which must be investigated in
the normal manner by members of the police’s commercial crime unit. A decision will then
have to be made by the prosecuting authorities whether a case is to be pursued or not, and
if so, the prosecuting authorities will rely largely on the co-operation of the copyright owner
to prove issues such as the subsistence and ownership of copyright, the infringing nature of
the relevant goods and the lack of appropriate authority on the part of the accused. In
criminal proceedings it follows that the State will act as the protagonist, while the alleged
infringer is cited as the defendant or the accused.
1.8.4 Distinguishing copyright infringement from plagiarism

The concept of ‘plagiarism’ must not be confused with copyright infringement. Plagiarism
can be described as the practice of taking someone else’s work or ideas and passing them
off as one’s own.148 Plagiarism is not a legal principle and it can extend beyond copyright
infringement in that it also encompasses the misappropriation of another’s ideas or words
(spoken or written) without attributing those words or ideas to their true source and thus
giving due credit or acknowledgment thereto. Copyright infringement on the other hand
can only occur in relation to works which are in a material form. Unlike copyright
infringement, plagiarism can take place in respect of works which are out of copyright and
are in the public domain.
Plagiarism is generally considered to be academic theft or a breach of journalistic
ethics. It is viewed in academia and industry as a serious ethical offence and may
arguably in its most flagrant form constitute fraud.149 Sanctions which are generally
imposed against individuals who have been found to have plagiarised material include
the forfeiture of academic qualifications and termination of employment. Plagiarism can
take many forms, from deliberate cheating to accidentally copying from a source without
acknowledgement.
Plagiarism is not the same as copyright infringement. While both terms may apply to a
particular act, they are different concepts. Copyright infringement breaches the exclusive
rights of a copyright owner when a protected work is, for example, reproduced without
permission. On the other hand, the moral concept of plagiarism entails the unearned
increment of the plagiarist’s reputation that is achieved through false claims of authorship.
147 S 27(6) of the Act.

148 Oxford Online Dictionaries, available at http://oxforddictionaries.com/definition/english/plagiarism?q=plagiarism.
149 CR Snyman Criminal Law 5 ed (2008) at 531 describes fraud as the unlawful and intentional making of a
misrepresentation which causes actual prejudice or which is potentially prejudicial to another.

However, there may be an overlap between copyright infringement and plagiarism.

Where a protected work (or a substantial part thereof ) has been reproduced without the
copyright owner’s permission in circumstances giving rise to copyright infringement, such
copying of material without acknowledgement of the source of the material or the author
thereof may also constitute plagiarism.
1.9 Statutory defences to infringement of copyright
1.9.1 Specific defences relying on exemptions

There are various defences which an alleged infringer may rely on when faced with
infringement proceedings. He may, for example, claim that the copyright owner has not
sufficiently discharged the burden of proof by showing that his work is original; that he is
the owner of the copyright therein; that copyright still subsists in the work and so forth. He
may also show that he has used a less than substantial part of the copyright work or that he
has acted with the authority (direct or indirect) of the copyright owner in performing the
relevant act of alleged infringement. The Act, however, also provides for specific defences in
addition to an infringer’s disputing that a copyright owner has established his case. These
statutory defences are work-specific and do not necessarily apply as blanket defences for all
types of works. These work-specific defences are set out below.
Before these specific defences, or more correctly exemptions from copyright infringement,
come into contention, an act of copyright infringement must in principle have been
perpetrated. In other words, a restricted act must be performed without the authority of the
copyright owner in respect of a copyright work or a substantial part thereof. For instance, if
less than a substantial part of a work is used, there can be no copyright infringement and the
question of the availability of a specific defence does not arise. These defences are thus
exceptions to, or exemptions from, the normal principles of copyright infringement and they
presuppose that an act of copyright infringement has been perpetrated in the first instance;
their effect is to excuse the commission of an acknowledged act of copyright infringement.
1.9.1.1 Fair dealing

Fair dealing is a defence to copyright infringement which applies in varying degrees to the
following works:
1. literary works;
2. musical works;
3. artistic works;
4. cinematograph films;
5. sound recordings;
6. broadcasts;
7. published editions; and
8. computer programs.
In general (but subject to certain exceptions which are discussed below) there are in effect
three circumstances under which a person may rely on the principle of fair dealing. They
are that the use of the work complained of is:
1. for the purposes of research or private study by, or the personal or private use of, the
person using the work;
2. for the purposes of criticism or review of that work or of another work; or

3. for the purpose of reporting current events:

a) in a newspaper, magazine or similar periodical; or
b) by means of broadcasting or in a cinematograph film.
Where reliance is placed on fair dealing for the purposes of criticism or review of a work or
reporting current events in a newspaper, magazine or similar periodical, it is a requirement
that the source of the material must be mentioned as well as the name of the author if it
appears on the work.
Reliance can be placed to the full extent in all three of the above circumstances
where the fair dealing is in relation to literary, musical and artistic works, broadcasts and
published editions.150
However, the defence of fair dealing applies to a lesser extent in regard to cinematograph
films, sound recordings and computer programs.151 In regard to works of this kind, fair
dealing does not allow the use of a film, sound recording or computer program for purposes
of research or private study or for personal or private use.
See paragraph 10.2.2.5.2 for a further discussion of fair dealing in the context of computer
programs.
PAUSE FOR ‘Fair’ is a relative term

REFLECTION There are many misconceptions about the concept of ‘fair dealing’. These range from the
rather ignorant view that any person is entitled to copy a certain percentage or volume of a
protected work without repercussions, to the belief at the other end of the spectrum that
fair dealing in relation to a work cannot be in relation to the whole of a work (but only a part
thereof). Both the aforementioned beliefs are unfounded.
Firstly, the Act does not provide that a person will not infringe the copyright in a protected
work as long as his or her unauthorised dealings therein do not exceed a specified
percentage or volume of the work. A person should therefore not believe that his or her
copying of, for example, less than 10% of a book protected by copyright is permissible. Such
percentages or volumes may apply in licensing arrangements between parties, but have no
place in ‘fair dealing’ considerations.
Secondly, the exception may in appropriate circumstances allow the making of a copy
of an entire work on condition that such action constitutes a ‘fair dealing’ with the work.152
As a general proposition, however, it would be difficult to justify the making of multiple copies
of a work under the banner of ‘fair dealing’.
What constitutes ‘fair dealing’ will vary from case to case and must be decided on the
specific set of facts of each matter. It is ultimately only on the facts that a conclusion can
be reached on whether certain actions constitute fair dealing. An important consideration
nonetheless remains whether, and how, the economic interests of the copyright owner are
affected by the alleged ‘fair dealing’ and whether he ought reasonably to have obtained
remuneration for the use made of the protected work.
Dean153 states that certain factors have crystallised abroad (specifically in the United
States and Australia) and that these must be considered for the purposes of
150 Ss 12(1), 15(4), 18 and 19A of the Act.

151 Ss 16(1), 17 and 19B(1) of the Act.
152 Dean Handbook of South African Copyright Law 1–93 para 9.2.2.

determining whether the use made of a work in any particular case is a fair use, suggesting
that these factors must equally apply in South Africa. These factors are:
1. whether the work can be obtained within a reasonable time at a normal commercial
price;
2. the purpose and character of the use;
3. the nature of the copyrighted work;
4. the amount and substantiality of the portion used; and
5. the effect upon the plaintiff’s potential market.
1.9.1.2 Various other general exceptions

The copyright in a literary or musical work is not infringed by using the work for the purposes
of judicial proceedings or by reproducing it for the purposes of a report of judicial
proceedings.154 This exemption similarly applies to artistic works, cinematograph films,
sound recordings, broadcasts, published editions and computer programs.155
The copyright in a literary or musical work which is lawfully available to the public is not
infringed by any quotation therefrom, including any quotation from articles in newspapers
or periodicals that are in the form of summaries of any such work: provided that the
quotation is compatible with fair practice, that the extent thereof does not exceed the extent
justified by the purpose and that the source must be mentioned, as well as the name of the
author if it appears on the work.156 Works to which this exemption extends include
cinematograph films, sound recordings, broadcasts and computer programs.157
The copyright in a literary or musical work is not infringed by using such work, to the
extent justified by the purpose, by way of illustration in any publication, broadcast or sound
or visual record for teaching: provided that such use is compatible with fair practice and that
the source is mentioned, as well as the name of the author if it appears on the work.158 This
exemption also extends to artistic works, cinematograph films, sound recordings, broadcasts,
published editions and computer programs.159
The copyright in a literary or musical work is not infringed by the reproduction of such
work by a broadcaster by means of its own facilities where such reproduction or any copy
thereof is intended exclusively for lawful broadcasts of the broadcaster and is destroyed
before the expiration of a period of six months immediately following the making of the
reproduction, or such longer period as may be agreed to by the owner of the relevant part
of the copyright in the work.160 This exemption similarly applies to artistic works, sound
recordings, broadcasts, published editions and computer programs.161 Any reproduction of
a work made under these circumstances may, if it is of an exceptional documentary nature,
be preserved in the archives of the broadcaster, but cannot, subject to the provisions of this
Act, be used for broadcasting or for any other purpose without the consent of the owner of
the relevant part of the copyright in the work.162
154 S 12(2) of the Act.

155 Ss 15(4), 16(1), 17, 18, 19A and 19B(1) of the Act.
156 S 12(3) of the Act.
157 Ss 16(1), 17, 18 and 19B(1) of the Act.
158 S 12(4) of the Act.
160 S 12(5)(a) of the Act.
161 Ss 15(4), 17, 18, 19A and 19B(1) of the Act.
162 S 12(5)(b) of the Act.

The copyright in a lecture, address or other work of a similar nature which is delivered in
public is not infringed by reproducing it in the press or by broadcasting it, if such reproduction
or broadcast is for an informatory purpose.163 The author of such a lecture, address or other
work is, however, entitled to the exclusive right of making a collection thereof.164
The copyright in an article published in a newspaper or periodical, or in a broadcast, on
any current economic, political or religious topic is not infringed by reproducing it in the
press or broadcasting it, if such reproduction or broadcast has not been expressly reserved
by the copyright owner, and the source from which it was taken is clearly mentioned.165
No copyright subsists in official texts of a legislative, administrative or legal nature, or in
official translations of such texts, or in speeches of a political nature or in speeches delivered
in the course of legal proceedings, or in news of the day that are mere items of press
information.166 This defence also extends to published editions.167 This exemption differs
from the other exemptions outlined above in that it does not excuse acknowledged copyright
infringement in principle, but rather declares the subject matter of the exception to be free
from copyright and therefore available for use by all in the circumstances contemplated.
The copyright in a literary or musical work is not infringed by the use thereof in a bona
fide demonstration of radio or television receivers or any type of recording equipment or
playback equipment to a client by a dealer in such equipment.168 Works in respect of which
this exemption also applies include artistic works, films, sound recordings, broadcasts,
published editions and computer programs.169
An authorisation to use a literary work as a basis for the making of a cinematograph film or as
a contribution of a literary work to such making, in the absence of an agreement to the contrary,
includes the right to broadcast such film.170 This defence also extends to artistic works, cine-
matograph films, sound recordings, broadcasts, published editions and computer programs.171
1.9.1.3 Records of musical works

The copyright in a musical work is not infringed by a person (‘the manufacturer’) who makes
a record of the work, or of an adaptation thereof, in South Africa, whether from an imported
disc, tape, matrix or otherwise, if:172
1. records embodying the work or a similar adaptation of the work were previously made in or
imported into South Africa for the purposes of retail sale and were so made or imported by,
or with the licence of, the owner of the copyright in the work;173
2. before making the record the manufacturer gave the prescribed notice to the owner of
the copyright of his intention to make it;174
3. the manufacturer intends to sell the record by retail or to supply it for the purpose of
resale by retail by another person or to use it for making other records to be so sold or so
supplied;175 and
163 S 12(6)(a) of the Act.

164 S 12(6)(b) of the Act.
165 S 12(7) of the Act.
166 S 12(8)(a) of the Act.
167 S 19A of the Act.
168 S 12(12) of the Act.
170 S 12(13) of the Act.
172 S 14(1) of the Act.
173 S 14(1)(a) of the Act.
174 S 14(1)(b) of the Act.
175 S 14(1)(c) of the Act.

4. in the case of a record which is sold by retail or supplied for the purpose of resale by retail,
the manufacturer pays to the owner of the copyright, in the prescribed manner and at
the prescribed time, the prescribed royalties.176
Where a record comprises, with or without other material, a performance of a musical work
or of an adaptation of a musical work in which words are sung or are spoken that are
incidental to, or in association with, the music, and no copyright subsists in that musical
work or, if copyright does subsist therein, the stated conditions are fulfilled in relation to
such copyright and:177
1. the words consist or form part of a literary work in which copyright subsists;178 and
2. the relevant records were made or imported by or with the licence of the owner of the
copyright in that literary work;179 and
3. the stated conditions are fulfilled in relation to the owner of that copyright, the making
of the record does not constitute an infringement of the copyright in the literary work in
question.180
1.9.1.4 Specific exceptions for artistic works

The copyright in an artistic work is not infringed by its inclusion in a cinematograph film or
a television broadcast or transmission in a diffusion service, if such inclusion is merely by
way of background, or incidental, to the principal matters represented in the film, broadcast
or transmission.181
The copyright in a work of architecture, or in the relevant drawings from which it is
derived, is not infringed by the reconstruction of that work on the same site in the same style
as the original.182
The copyright in an artistic work is not infringed by its reproduction or inclusion in a
cinematograph film or a television broadcast or transmission in a diffusion service, if such
work is permanently situated in a street, square or a similar public place.183
The copyright in an artistic work is also not infringed by indirectly copying authorised
three-dimensional reproductions of it in certain circumstances. This so-called ‘reverse
engineering’ exemption is discussed separately below.
1.9.1.5 Reverse engineering exception for artistic works

Under section 15(3A) of the Copyright Act, it is permissible to ‘reverse engineer’ another
person’s three-dimensional product derived from an artistic work, subject to certain
conditions. It must be noted that this specific concession applies only to artistic works.
Reverse engineering can in its simplest terms be described as the reproduction of another
manufacturer’s product following detailed examination of the design of the product and its
components, where applicable. This situation arises where person A obtains an actual sample
of person B’s product (e.g. a vehicle spare part, item of furniture or shoe), takes it apart, studies
it in detail and then creates his or her own drawings or other reproductions of B’s product for
the purposes of creating his or her own version of it. Where B’s product is derived from, and
176 S 14(1)(d) of the Act.

177 S 14(2) of the Act.
178 S 14(2)(a) of the Act.
179 S 14(2)(b) of the Act.
180 S 14(2)(c) of the Act.
181 S 15(1) of the Act.
182 S 15(2) of the Act.
183 S 15(3) of the Act.

is a reproduction of, an artistic work. A is therefore indirectly making a reproduction of B’s

artistic work. An exemption is provided in the Act which allows reverse engineering to take
place even though in principle an act of copyright infringement is committed.
The fact that it may be permissible to reverse-engineer products in South Africa does not
mean that this is true of other countries. The laws of such other countries must be investigated
before reverse engineering of a product is undertaken because the laws of the relevant country
may not make provision for this form of exception to copyright infringement.184
The reverse engineering defence relates only to the reproduction of a three-dimensional
version of an artistic work (as opposed to, for example, drawings, which are
two-dimensional); in other words to the reproduction of a three-dimensional article which
is a derivative of an artistic work, whether that artistic work exists in a two-dimensional or
three-dimensional form. The section specifically states that the copyright in an artistic work
of which three-dimensional reproductions have been made available to the public, whether
inside or outside South Africa, by, or with the consent of, the copyright owner (hereinafter
referred to as ‘authorised reproductions’), is not infringed if any person, without the consent
of the copyright owner, makes or makes available to the public, three-dimensional
reproductions or adaptations of the authorised reproductions, provided the authorised
reproductions primarily have a utilitarian purpose and are made by an industrial process.185
There are specific elements to this provision which are decisive as to whether or not the
defence will be available to an alleged infringer. First, the alleged infringer must have copied
an actual authorised three-dimensional derivative version of an artistic work (and not a
two-dimensional drawing which served as a basis for creating the derivative article).186 If an
alleged infringer makes its own version of the relevant product from the drawings of the
protected work, such conduct will fall outside the ambit of the exception. Second, the article
so copied (i.e. the authorised reproduction) must have a primarily utilitarian purpose (as
opposed to, for example, a primarily aesthetic purpose). Thus, if the derivative article (the
authorised reproduction) does not have as its primary purpose to be useful or practical, but
rather to be primarily ornamental or appealing to aesthetic tastes, the defence will not
apply.187 Third, the copyright owner’s derivative three-dimensional product (the authorised
reproduction which serves as the basis for the contentious copying process) must have been
made by an industrial process. This gives rise to the question of what constitutes an industrial
process. It has been described as a systematic series of mechanical or chemical operations
that produce or manufacture something.188
PAUSE FOR Application in trade

REFLECTION An interesting example of the application of section 15(3A) occurred in the matter of
Moresport (Pty) Ltd v The Commissioner for the South African Revenue Service and Others.189
The dispute in this instance concerned the well-known CROCS beach model shoes produced
by the US company, Crocs Inc, and the importation for purposes of trade of ‘look-alike’
184 For example, Zambia.

186 Dexion Europe v Universal Storage Systems (Pty) Ltd 2003 (1) SA 31 (SCA).
187 Bress Designs (Pty) Ltd v G Y Lounge Suite Manufacturers (Pty) Ltd and Another 1991 (2) SA 455 (W) where the court
held that a lounge sofa with aesthetic appeal primarily had a utilitarian purpose.
188 Princeton University Library ‘Wordnet’, available at http://wordnetweb.princeton.edu/perl/webwn?s=industrial%20
process.
189 In the unreported judgment for case no. 36853/2006 in the Gauteng Division, Pretoria, of the High Court of South Africa
handed down on 27 March 2008.

competing footwear by a local enterprise, Moresport. Moresport’s version of the CROCS footwear
was for all intents and purposes visually identical to the CROCS shoes, but did not feature the
CROCS trade mark in any manner. It was common cause between the parties that Moresport’s
version of the CROCS footwear had been based on the CROCS product available in the market
and its manufacture entailed reverse-engineered reproductions of the CROCS designs which were
embodied in drawings. Crocs Inc lodged a complaint, relying on copyright infringement, with the
South African Revenue Service (SARS) and this gave rise to the detention of Moresport’s imported
goods on the basis that they were counterfeit goods.
It transpired that in making application for a search and seizure warrant, Crocs Inc failed
to make full disclosure of the existence of a possible section 15(3A) (reverse engineering)
exemption which may have been available to Moresport. Moresport applied to the court for an
order setting aside the detention of the goods by SARS on the grounds that no copyright
infringement had taken place. The court found that the CROCS product primarily had a
utilitarian purpose (i.e. it was first and foremost useful and only aesthetic as a secondary
consideration), and was made by an industrial process. Moresport’s versions were not derived
directly from CROCS design drawings (in their two-dimensional form), but rather had been
reverse-engineered from actual CROCS shoes which had been manufactured and distributed
with Crocs Inc’s approval. Accordingly, the CROCS look-alikes were held to fall within the ambit
of the reverse engineering defence and as such their manufacture and subsequent importation
and distribution did not infringe the copyright of Crocs Inc. The court therefore set aside the
initial search and seizure warrant obtained by Crocs Inc and ordered the goods to be released
to Moresport.
1.9.1.6 Specific exception for programme-carrying signals

Programme-carrying signals have their own version of a ‘fair-dealing’ defence. Copyright in
a programme-carrying signal is not infringed by the distribution of short excerpts of the
programme so carried where:
a) they consist of reports of current events; or
b) they are compatible with fair practice,
and the extent of the excerpts is justified by their informatory purpose.190 However, this defence
does not apply to material carried by programme-carrying signals representing a sporting event.191
1.9.1.7 Specific exception for computer programs

In addition to the exceptions already referred to in respect of computer programs above,
specific provision is also made for so-called back-up copies of computer programs. In this
regard, copyright in a computer program is not infringed by a person who is in lawful
possession of that computer program, or an authorised copy thereof, if:
a) he makes copies thereof to the extent reasonably necessary for back-up purposes;
b) a copy so made is intended exclusively for personal or private purposes;
c) such copy is destroyed when the possession of the computer program in question, or
authorised copy thereof, ceases to be lawful.192
See paragraph 10.2.2.5.2 for a further discussion of this question.
190 S 19(1) of the Act.

191 S 19(2) of the Act.
192 S 19B(2) of the Act.

1.9.2 Other defences provided for by regulation

In addition to reproductions permitted (or lawfully excused) in terms of the Act, reproduction
of a work may also be permitted as prescribed by Regulations which may from time to time
be promulgated. It is a condition, however, for making such reproductions that they must
not be in conflict with a normal exploitation of the work and they must not be unreasonably
prejudicial to the legitimate interests of the owner of the copyright.193 In essence, the Act
makes provision for the introduction of possible additional exemptions from, or defences
to, copyright infringement by way of regulation.
Chapter 1 (entitled Reproduction Regulations) of the Copyright Regulations, 1978,
provides for additional exemptions to those contained in the Copyright Act. These
exemptions are specific to the act of reproduction and are not limited to any particular type
of work. Accordingly, they should apply to the reproduction of any type of work as long as
such reproduction falls within their ambit. These exemptions also make provision for the
distribution of works so reproduced. The types of reproduction which are exempted by the
Regulations (subject to the specific conditions imposed in each instance) relate to:
1. reproduction by libraries or archive depots;194
2. multiple copies for class-room use;195
3. copies for teachers;196 and
4. reproductions of building plans by local authorities.197
1.9.3 Copyright Tribunal

The Act also makes provision for the granting of compulsory licences by a Copyright
Tribunal. Chapter 3 of the Copyright Act is dedicated to the establishment and jurisdiction
of, and the referral of licence schemes and applications to, the Tribunal. The function of the
Tribunal is to determine disputes arising between licensing bodies, or other persons from
whom licences are required and persons requiring licences or organisations claiming to be
representative of such persons, either:
(a) on the reference of a licence scheme to the tribunal; or

(b) on the application of a person requiring a licence either in accordance with a
licence scheme or in a case not covered by a licence scheme.198
The Copyright Tribunal is empowered to grant licences where a copyright holder has refused
on unreasonable grounds to accede to a request for a licence. In doing so, the Tribunal can
impose conditions such as that the licensee pays a reasonable royalty, the amount of which
will be specified. It is possible for someone defending a claim of copyright infringement to
seek, in the alternative, a licence from the Copyright Tribunal covering the alleged infringing
act. If such a licence is granted, the infringement claim will fall away. The ‘licence’ which the
Tribunal is entitled to grant extends to any type of work in which copyright can subsist.199 It
can also extend to any restricted act in respect of the works to which it relates.
In its simplest form, one of the main functions of the Copyright Tribunal is to determine
what constitutes a reasonable price subject to which a person is entitled to make restricted
193 S 13 of the Act.

194 Reg 3 of the Copyright Regulations, 1978.
197 Reg 9A of the Copyright Regulations, 1978.
198 S 30 of the Act.

use of copyright works, for instance by broadcasting, or causing the public dissemination of
or playing, a musical work or a sound recording in public.
Chapter 3 of the Act is also linked to, and must be read together with, the provisions of
section 9A of the Act, which deals with royalties for the use of sound recordings for the
purpose of making public performances of music (so-called ‘needletime’).
The operation of the Copyright Tribunal can be illustrated by reference to an appropriate
example:
PAUSE FOR What amount of royalties?

REFLECTION In the matter of Foschini Retail Group (Pty) Ltd and 9 (Nine) Others v South African Music
Performance Rights Association200 the Copyright Tribunal was called upon to consider the merits
of a tariff of licence fees set by the South African Music Performance Rights Association
(SAMPRA), a collecting society representing sound recording copyright owners, for the use of
records for the purpose of performing music in public and broadcasting it.
A group of retailers, including Foschini, Pepkor, Truworths and others, sought licences to
play recorded background music in their stores. Playing music in this manner is a common
practice as it is believed that it enhances the shopping experience and creates a pleasant
ambience. Negotiations between these retailers and SAMPRA failed to produce an
agreement as to the rate of royalties to be paid. Instead, SAMPRA sought to impose its
unilaterally devised tariff of licence fees, which was considered by the retailers to set
unreasonably high fees. Negotiations of this nature are required to take place in terms of
section 9A of the Copyright Act.
In accordance with section 9A of the Act, in this situation prospective licensees are
entitled to seek the intervention of the Copyright Tribunal. The retailers therefore applied to
the Tribunal for it to determine the licence fees that should be payable for their particular
use of sound recording to play music in public. They claimed that the tariff set by SAMPRA
was not economically justifiable and was therefore unreasonable.
After considering the evidence submitted by the parties, the Copyright Tribunal held that
the tariff, having been set unilaterally by SAMPRA, was unreasonable and thus invalid. The
Tribunal set aside SAMPRA’s tariff and replaced it with its own tariff which it declared to be
in force.
This case illustrates the Copyright Tribunal’s wide-ranging powers in regard to the granting
of copyright licences and in determining the conditions and terms of such licences.
The judge or acting judge who is from time to time designated as the commissioner of patents
in terms of section 8 of the Patents Act 57 of 1978, functions as the Copyright Tribunal for
purposes of the Copyright Act.201 The Copyright Tribunal is therefore effectively constituted
by a judge of the North Gauteng High Court, Pretoria.
1.10 Author’s moral rights

Apart from ‘copyright’, which can be considered to be an economic or property right, the Act
also provides for another type of right in respect of a work, vesting in the author and referred
to as a ‘moral right’. There are two types of moral rights, which are commonly known as the
‘right of paternity’ and the ‘right of integrity’. These moral rights apply in the case of literary,
musical or artistic works, cinematograph films and computer programs.
200 (003/2009) [2013] ZAGPPHC 304 (25 October 2013); 2013 JDR 2439 (GNP).
201 S 29(1) of the Act.

1.10.1 Right of paternity
In essence, the right of paternity allows the author to claim authorship of his work.202 This
creates an entitlement whereby the author can ensure that he is acknowledged as the author
of a work, either where no author is credited or where another is incorrectly so credited.
1.10.2 Right of integrity

The author’s right of integrity entitles him to object to any distortion, mutilation or other
modification of the work where such action is, or would be, prejudicial to his honour or
reputation.203 The general principle is thus subject to the qualification that such alterations
are only objectionable if they are prejudicial to the honour or reputation of the author. There
is, however, a proviso to this section which creates an exception to this rule. The exception
states that an author who authorises the use of his work in a cinematograph film or a
television broadcast, or an author of a computer program or a work associated with a
computer program, may not prevent or object to modifications that are absolutely necessary
on technical grounds or for the purpose of commercial exploitation of the work. Leeway is
therefore created in certain situations to permit the modification of a work.
Notwithstanding the transfer of the copyright in a literary, musical or artistic work, in a
cinematograph film or in a computer program, the author retains these rights and is able to
enforce them.204 The moral rights therefore always attach to the author and are inalienable,
irrespective of whether he may have assigned his copyright to another. Because of the personal
and inalienable nature of the moral rights, they will cease to exist upon the author’s death.
Infractions of the moral rights are treated as though they are infringements of copyright.205
1.11 Onus of proof in proceedings
1.11.1 General
The burden of proof on a copyright owner in infringement proceedings is a heavy one. This
is particularly so if a comparison is made between copyright and the other forms of statutory
intellectual property rights (e.g. patents, trade marks, and designs), which are registrable
and which are created by registration. One of the main differentiating and complicating
factors in pursuing copyright infringement proceedings, as compared to infringement
proceedings in respect of the other forms of statutory intellectual property rights, is that in
copyright matters the claimant must by means of evidence adduced in the proceedings
establish the subsistence of copyright and his title thereto (in addition to proving actual
infringement), while in the case of other intellectual property infringement proceedings, a
certificate of registration in itself constitutes prima facie proof of such issues.
It has been held that it is important that a court should be properly apprised of all the
relevant facts from which a conclusion as to the subsistence of rights can be drawn. It is not for
the litigant himself to draw conclusions and then to present these conclusions as facts, without
laying before a court the factual basis from which the conclusions can be drawn.206 For instance,
it is not sufficient for a litigant to simply make the claim that his work is original and that
202 S 20(1) of the Act.

203 S 20(1) of the Act.
204 S 20(1) of the Act.
205 S 20(2) of the Act.
206 Vagar (t/a Rajshree Release) v Transavalon (Pty) Ltd t/a Avalon Cinema 1977 (3) SA 766 (W).

copyright subsists therein. These are essential averments that must be made in a copyright
infringement case, but sufficient factual evidence must be presented to a court to enable it to
be satisfied that the claims are substantiated and that the relevant conclusions can be drawn.
In pursuing a claim of copyright infringement, it is of the utmost importance that both
the protected work and the alleged infringing work are properly placed before the court from
the outset. The respective works must be sufficiently identified and a detailed explanation
must be given as to how the alleged infringing work infringes the protected work.
1.11.2 Essential averments

Copyright has been said to be a technical subject.207 The technical nature of copyright is
apparent from the fact that a claimant in court proceedings must show that:
1. the work in respect of which protection is sought is a ‘work’ and is eligible for copyright;
2. the work is original and not copied from a pre-existing work;
3. it has been reduced to material form;
4. it was created by a qualified person, alternatively was first published in South Africa or
a qualifying country;
5. the applicant is the owner or exclusive licensee of the copyright in the work;
6. a restricted act has been performed by the infringer without the authority of the copyright
owner;
7. there is a qualitative substantial similarity between the copyright work and the alleged
infringing copy, and there is causality, that is, the latter work has been derived from the
former work; and
8. as a result, there has been an infringement of the copyright in the work.
Only when the claimant has established all of the foregoing and the defendant has failed
to advance a valid defence can the court make a finding that copyright infringement has
taken place.
1.11.3 Presumptions
The Copyright Act contains a number of provisions which may have a direct bearing on the
evidential burden which rests on a copyright claimant in infringement proceedings. Section
26 of the Act outlines a number of presumptions on which a claimant can rely. The effect of
these presumptions is to shift the burden of proof onto the alleged infringer to show that
what is so presumed is not in fact correct. The alleged infringer must establish facts that show
that the relevant presumption should not apply; in other words the defendant must rebut
the presumption. These presumptions apply to court proceedings in respect of copyright
and are work specific. They are briefly outlined below.
Where in the case of a literary, musical or artistic work, or a computer program, a name
purporting to be that of the author appeared on copies of the work or program as published
or, in the case of an artistic work, appeared on the work when it was made, certain
consequences follow. Provided it was his true name, or a name by which he was commonly
known, it will be presumed, unless the contrary is proved, that the person in question is the
author of the work or program.208 In the case of such a work or program alleged to be a work
207 Vagar (t/a Rajshree Release) v Transavalon (Pty) Ltd t/a Avalon Cinema 1977 (3) SA 766 (W); Video Rent (Pty) Ltd and
Another v Flamingo Film Hire 1981 (3) SA 42 (C) at 42 G–H; Payen Components SA Ltd v Bovic Gaskets CC and Others
1995 (4) SA 441 (A) at 450 G; Fichtel & Sachs Aktiengesellschaft v Road Runner Services Ltd and Another 174 JOC (T) at
180 E–F.
208 S 26(1) of the Act.

or program of joint authorship, the aforementioned provision applies in relation to each

person alleged to be one of the authors of the work or program.209
In the case of a literary, musical or artistic work or a computer program which is
anonymous or pseudonymous, if it is established:
a) that the work or program was first published in the Republic and was so published within
the preceding 50 years ending with the beginning of the calendar year in which the
proceedings were brought; and
b) that a name purporting to be that of the publisher appeared on copies of the work or
program as first published,
then, unless the contrary is shown, copyright is presumed to subsist in the work or program
and the person whose name so appeared is presumed to have been the owner of that
copyright at the time of publication: provided that this principle does not apply if the actual
name of the author of a pseudonymous work is commonly known.210
If it is proved or admitted that the author of a literary, musical or artistic work or a
computer program is dead, the work or program is presumed to be an original work or
program unless the contrary is proved.211 A presumption of originality also applies where a
work or program has been published and:
a) the publication was anonymous or under a name alleged to be a pseudonym; and
b) it is not shown that the work or program has ever been published under the true name
of the author or under a name by which he was commonly known or that it is possible
for a person without previous knowledge of the facts to ascertain the identity of the
author by reasonable enquiry.212
In infringement proceedings in respect of a cinematograph film, if it is proved that a name

purporting to be the name of the author of that film appears on it in the manner prescribed by
regulation, that person is presumed to be the author of that film, unless the contrary is proved.213
In infringement proceedings in respect of a sound recording, if it is proved that records
embodying that recording, or a part thereof, have been issued to the public and that, at the
time of issue, various claims appeared on a label or any other printed matter affixed to those
records, or in or on their container, various issues are the subject of a presumption. They are:
a) that a person named on the label or printed matter is the author of the sound recording;
or
b) that the recording was first published in a year and at a place specified on the label or
printed matter.
The presumption in this case is that the label or printed matter in question is sufficient
evidence of the facts so stated, except in so far as the contrary is proved.214
A claim contemplated in paragraph a) may be made by means of the symbol ‘C’ in
conjunction with the name of the person concerned, and a claim contemplated in paragraph
b) may be made by means of the symbol ‘P’ in conjunction with the year and place in
question.215
209 S 26(2) of the Act.

210 S 26(3) of the Act.
211 S 26(4) of the Act.
212 S 26(5) of the Act.
213 S 26(6) of the Act.
214 S 26(7) of the Act.

Where the copyright in a cinematograph film registered in terms of the Registration of

Copyright in Cinematograph Films Act 62 of 1977 (the Registration Act) is claimed to have
been infringed, it is presumed:
a) that every party to the proceedings had knowledge of the particulars entered in the
register of copyright mentioned in section 15 of the Registration Act from the date of the
lodging of the application in question to record those particulars;
b) that the person who is alleged to have done an act which infringes the relevant copyright
did that act without the required authority, unless the contrary is proved.216
Where infringement of the copyright in a cinematograph film, a sound recording or a

computer program is claimed, it is presumed, until the contrary is proved, that any person
who was trading in the sale, letting or distribution of copies of any of these works, and who
was found in possession of a copy of any of such works, sold or let for hire or by way of trade
offered or exposed for sale or hire such copy.217
1.11.4 Affidavit evidence

In the event that it is proved that the person alleged to have done an act which allegedly
infringed the copyright in a work did such act without the authority of the exclusive licensee,
it is presumed, unless the contrary is proved, that the relevant act was also done without the
authority of the owner of the copyright concerned.218
In a copyright infringement claim evidence to prove:
a) the subsistence of the copyright in the subject work; or
b) the title of any person in respect of such copyright, whether by way of ownership or licence,
may be adduced by way of affidavit, and the mere production of such affidavit in those
proceedings will be prima facie proof of the relevant facts.219 The court before which such
an affidavit is produced may, in its discretion, order the person who made the affidavit
to be subpoenaed to give oral evidence in the proceedings in question, or may cause
written interrogatories to be submitted to such person for reply. Any reply purporting to
be a reply from such person will likewise be admissible in evidence in those
proceedings.220
1.12 Remedies for copyright infringement

An infringement of copyright is actionable at the suit of the owner of the copyright or an
exclusive licensee or sublicensee.221 In practice, in order to pursue a claim of copyright
infringement, such claim must be brought by the owner of the copyright (which, as indicated
above, may be someone other than the author of the work) or the holder of an exclusive
licence (after having given appropriate notice thereof to the owner).
The Copyright Act provides various remedies that are available to a successful copyright
claimant. The relief which may be sought in infringement proceedings includes damages,
an interdict, and delivery-up of infringing copies or plates used or intended to be used for
making infringing copies.222 As an alternative to a claim for damages, a plaintiff may choose
216 S 26(9) of the Act.

217 S 26(10) of the Act.
218 S 26(11) of the Act.
219 S 26(12)(a) of the Act.
220 S 26(12)(b) of the Act.
221 Ss 24(1) and 25(1) of the Act.
222 S 24(1) of the Act.

instead to seek compensation in an amount calculated on the basis of a reasonable royalty

which would have been payable by a licensee in respect of the work concerned.
Our courts have held that in order to grant a final interdict, a court must be able to find
on the evidence presented that:
1. the plaintiff/applicant has established the subsistence of a clear right of copyright in
respect of the work(s) relied upon;
2. the defendant/respondent has infringed that right; and
3. there is an absence of similar protection by any other remedy.223
The claimant must make out his entire case in his evidence in chief. In proceedings by way
of application it is not permissible to make out new grounds for relief in a replying affidavit.
See paragraph 2.7.5 for an outline of the procedure for application proceedings.
Because of the technical nature of copyright proceedings and the multiplicity of facts
which must be adduced in support of the various aspects of a copyright infringement case,
it may be advisable to pursue the majority of cases by way of action.
The delivery-up relief available to a claimant may enable him to remove all infringing
copies from the possession or control of the infringer so that they can be destroyed.
The damages claim provided for under the Act is for ordinary common-law patrimonial
damages, namely the financial loss (which must be properly quantified in monetary terms)
that the plaintiff has suffered as a result of the infringer’s unlawful conduct. A claim for
payment of a reasonable royalty may, and can only, be pursued in the alternative to a
damages claim. Generally, a claim for payment of a reasonable royalty will be the option of
choice in view of the inherent difficulty in proving the amount of monetary loss actually
suffered by a plaintiff as a result of the infringing conduct of an infringer. Pursuing such a
claim would generally require that expert evidence be adduced to a court as to what a
reasonable royalty might be, bearing in mind the diverse circumstances that apply in the
various spheres of trade. In essence, the claimant is required to establish a reasonable royalty
rate and show the quantity of infringing copies dealt in by the infringer.
Finally, the Copyright Act makes provision for a form of special or punitive damages.
Where, in an infringement action, infringement of copyright is proved or is admitted, the
court, having regard, in addition to all other material considerations, to:
a) the flagrancy of the infringement; and
b) any benefit shown to have accrued to the defendant by reason of the infringement, is
satisfied that effective relief would not otherwise be available to the plaintiff, it can, in
assessing damages for the infringement, award such additional damages as it may deem
fit.224 A discretion is therefore granted to a court to award such further damages as it
considers appropriate.
An important issue in regard to a claim for damages is that a court will not grant damages
in cases where the infringer did not have the requisite guilty knowledge, in this instance, where
he was not aware, and did not have reasonable grounds for suspecting, that copyright subsisted
in the relevant work.225 This ‘guilty knowledge’ requirement differs from that required for an
indirect or secondary infringement of copyright, namely that the infringer should know that
he is dealing with infringing copies. The requirement of guilty knowledge for a valid damages
claim does not, however, apply to a claim for payment of a reasonable royalty.
223 Setlogelo v Setlogelo 1914 AD 221 at 227; TeleAtlas Africa (Pty) Ltd and Another v AfriGis (Pty) Ltd in an unreported
judgment under Case No. 14421/11 dated 13 May 2011, in the North Gauteng High Court, Pretoria.
224 S 24(3), read together with s 25, of the Act.
225 S 24(2) of the Act.

1.13 Checklist in considering viability of a copyright

infringement claim
The steps to be followed and the questions to be posed in determining whether a cause of
action exists for a particular applicant/plaintiff based on copyright infringement in relation
to a particular work are set out below:
Step 1: Determine whether it is a work at all. If it is not a ‘work’, the Act will not come into
play.
Step 2: Identify the nature or type of the work to determine whether the Copyright Act is
applicable. If the work is not catered for or defined in the Copyright Act there can be no
claim for copyright infringement.
Should the incorrect type of work be selected, for example a cinematograph film as
opposed to a computer program, the authorship, ownership etc. may be different, which
may affect the merits of the case and the nature of the evidence to be adduced.
Step 3: Determine whether the formal (general) conditions for subsistence of copyright
have been met, namely:
• Is the work original?
• This is where there is scope for debate. The issue is not originality in the sense of novelty
but rather whether independent skill and effort have been applied in creating the work.
• Does it exist in a material form?
• This is a fairly simple test – something in electronic form is also ‘in material form’.
Step 4: Determine who the author is with reference to the type of work.
• The author differs, depending on the category of work.
Step 5: Determine whether the specific requirements for subsistence of copyright have
been met, namely:
• Was the author a qualified person? or
• Was the work first published in South Africa? Alternatively, did first publication take
place in a Berne Convention country?
Step 6: Determine who the initial owner of the copyright is with reference to the type of work.
• Ownership varies, depending on the type of work; the owner could be the person who
actually creates the work, but in the case of cinematograph films, for example, it would
be the person who made the arrangements for the making of the film (the producer).
• Exceptions regarding employees’ works and the like must be considered.
Step 7: Determine who the current owner of the copyright is.
• Possible assignments and a subsequent chain of title to copyright must be investigated.
Step 8: Determine whether copyright still subsists (i.e. whether it falls within the term of
copyright protection).
Step 9: Determine whether an infringing act has taken place in relation to the work:
• In the case of direct or primary infringement, establish whether a restricted act (for
instance, reproduction/adaptation/translation of the work or of a substantial part)
has been committed.
• In the case of an indirect or secondary infringement, determine whether there have
been unauthorised prohibited dealings in South Africa in relation to infringing copies
of a protected work, or whether a place of public entertainment has been used to
perform a work.
Step 10: Determine whether the alleged infringing act has been performed without the
permission of the copyright holder.
• Was the doer acting in terms of a licence, whether explicit, implied or tacit?

Step 11: In the case of an indirect or secondary infringement, show that the alleged
infringer had so-called ‘guilty knowledge’.
• The alleged infringer must have known, or have been in possession of facts which
would reasonably suggest, that the contentious act related to infringing copies of the
work and would amount to infringement of copyright.
Step 12: Determine whether such restricted act giving rise to direct or primary
infringement is exempt from copyright infringement.
• For instance, the facts of the reverse engineering exception might be applicable.
Once it has been established that copyright subsists; that the applicant/plaintiff is the owner
(or exclusive licensee) thereof; that the term of protection has not yet expired; that an
infringing act (which has not been authorised by the copyright holder and which is not
exempt from infringement) in relation to the work has taken place; and that, where apposite,
guilty knowledge on the part of the alleged infringer has been shown to be present; a cause
of action will exist.
1.14 Registration of copyright in cinematograph films
1.14.1 Nature and purpose of the Registration Act

A system for the registration of copyright in cinematograph films has been put in place by
the Registration of Copyright in Cinematograph Films Act 62 of 1977 (the Registration Act).
This Act complements the Copyright Act in dealing with cinematograph films as a type or
category of work eligible for copyright. The Registration Act creates a register which is
compiled and maintained by the Registrar of Copyright.
The register records facts which are relevant and necessary to establish the subsistence
of copyright in South Africa in a cinematograph film and to determine the ownership of that
copyright. Registration under the Registration Act is not necessary for the subsistence of
copyright or for acquiring copyright protection in respect of a cinematograph film. Copyright
subsists in a cinematograph film provided it meets the requirements for such protection laid
down in the Copyright Act, in which case protection is automatic.
The objective of registration of the copyright in a film is to make it easier for a claimant
to prove the subsistence of copyright and his title in respect of it in litigation relating to such
a work. Upon registration, the Registrar of Copyright issues a certificate which is prima facie
proof of the facts contained in the register.
Proceedings pertaining to the infringement of the copyright in a film registered under
the Registration Act are pursued in terms of the Copyright Act, but the fact that the film has
been registered alleviates the burden of proof on the copyright owner to establish
subsistence of, and title to, copyright. These critical issues are established in the proceedings
by the mere production of a certificate in respect of the registration issued by the Registrar
of Copyright. Where a film is not registered under the Registration Act, the claimant must
proceed on the basis that it must prove subsistence of, and title to, copyright in that film by
adducing evidence of the relevant facts in the normal way. In effect, registration of the
copyright in a film enables a copyright owner to take a short cut in proving his case in
infringement proceedings.

1.14.2 Procedure for obtaining registration

1.14.2.1 The applicant
Any person claiming to be the owner of the copyright in a cinematograph film by virtue of
the provisions of the Copyright Act may apply for the registration of the copyright in the
film.226 Applications are, therefore, filed in the names of copyright owners of cinematograph
films.
1.14.2.2 Procedure
The procedure for the registration of copyright in films is set out mainly in the Regulations
to the Registration of Copyright in Cinematograph Films Act. 227 In this regard, the
requirement is that application must be made to the Registrar in the prescribed manner and
that the application must be accompanied by the fee prescribed.
In terms of the Regulations, an application for registration of copyright in a
cinematograph film must comprise the following documents:
1. The application form (Form RF 1) in duplicate, one copy of which is to be signed by the
Registrar and returned to the applicant as proof of lodging.228
2. A fact sheet (Form RF 2) in duplicate, in which the relevant facts pertaining to the film
are inserted.229
3. Statement of case giving particulars relating to the subsistence of, and title to, the
copyright in the film, as required by regulation 9(2), verified by a sworn declaration made
on Form RF 9 by the author or by some person authorised to act on his behalf and
approved by the Registrar.230
4. In the event that the applicant is not the author of the cinematograph film, appropriate
documentary proof of his locus standi to register the film (i.e. proof of chain of title to the
copyright) or authority to file the application (in the case of an agent), to the satisfaction
of the Registrar.231
5. Any other relevant supporting duly authenticated documents or copies thereof.232
6. An abstract on Form RF 3, in duplicate.233
The statement of case in terms of regulation 9(1) must contain the following particulars:
1. The name or names of the cinematograph film.234
2. The name, citizenship and country or countries of domicile and residence of the author
of the cinematograph film.235
3. The circumstances by virtue of which it is claimed that the person referred to in
paragraph (2) above is the author of the cinematograph film. If it is claimed that the
author is a body corporate, full details must be furnished of the persons who acted on
behalf of the body corporate in undertaking the arrangements for the making of
226 S 6(1) of the Registration Act.

227 As published in Government Notice No. R2140 in the Government Gazette No. 7266 of 24 October 1980.
228 Reg 9(1)(a).
229 Reg 9(1)(b).
230 Reg 9(1)(c).
231 Reg 9(1)(d).
232 Reg 9(1)(e).
233 Reg 9(1)(f).
234 Reg 9(2)(a).
235 Reg 9(2)(b).

the cinematograph film and in particular the relationship of such persons to the body
corporate.236
4. Dates on and place or places at which the cinematograph film was made.237
5. Whether the cinematograph film has lawfully been made available to the public and if
so the date on which it was first so lawfully made available to the public.238
6. Whether the cinematograph film has been published and if so the place and date of first
publication.239
7. A brief description of the story or subject matter of the cinematograph film.240
8. The names of the director and producer of the cinematograph film.241
9. The names of the principal players (if any) or of the narrator, if appropriate, in the
cinematograph film.242
10. Any marks, including trade marks, used in relation to or on the cinematograph film, or
any features of the cinematograph film, which serve to distinguish the cinematograph
film from other cinematograph films.243
The application must be dated and signed by the applicant(s) or duly authorised agent.244
If the application is made by a firm or partnership it may be signed in the name of or for
and on behalf of the firm or partnership by any one or more members thereof, but the full
names of all the partners must be furnished in the declaration.245
If the application is made by a body corporate, it may be signed by a director or by the
secretary or other principal officer of such body corporate duly authorised by the Board of
Directors thereof.246
The Registrar may also, in his discretion, call for a deposit in the registry of a specimen or
copy of the cinematograph film and he may refer to such deposit in the register if he deems fit.247
The procedure on receipt of the application is set out in regulation 13. After an application
for the registration of copyright in a film has been lodged with the Registrar of Copyright, he
must return to the applicant the duplicate copy of form RF 1 as proof of lodging. Such
duplicate copy will contain the official number and date of the application.248 The application
must then be examined by the Registrar, who may refuse the application or may accept it
absolutely or subject to such amendments, modifications, conditions or limitations as he
deems fit, and advise the applicant or his agent accordingly.249
In the event that the Registrar has any objections to the application, he must advise the
applicant accordingly who is given a period of three months from receiving such notice, to
submit arguments in writing or apply for a hearing, failing which the application will be
deemed to have been withdrawn.250 Similarly, if the Registrar accepts an application for the
236 Reg 9(2)(c).

237 Reg 9(2)(d).
238 Reg 9(2)(e).
239 Reg 9(2)(f).
240 Reg 9(2)(g).
241 Reg 9(2)(h).
242 Reg 9(2)(i).
243 Reg 9(2)(j).
244 Reg 9(3).
245 Reg 9(4).
246 Reg 9(5).
247 Reg 9(6).
248 Reg 13(1).
249 Reg 13(2).
250 Reg 13(3).

registration of copyright in a film conditionally, the applicant must either comply with such
conditions, alternatively submit arguments in writing, or apply for a hearing within three
months.251 If the Registrar is satisfied that the application complies with the requirements
of the Registration Act and the Regulations thereunder, he may accept it and give the
applicant written notice thereof. The applicant must then arrange for the written notice to
be published in the Patent Journal as notice of its acceptance to the public at large, after
which the application is open to possible objections for a period of one month.252
1.14.2.3 Grant, duration and effect

If the application is not challenged by way of an objection by any person, within one month
from the date of the advertisement, or within such further time as the Registrar may allow,
the application will proceed to grant and the certificate of registration will be issued. The
effective date of the registration is deemed to be the date on which the application for
registration was lodged.253
The registration of the copyright in a cinematograph film can only be for such period of
time as may be provided for the subsistence of copyright by virtue of the provisions of the
Copyright Act.254 Naturally, the Registration Act cannot extend the protection in the film
beyond the duration provided for by the Copyright Act.
The effect of registration is, as stated above, not for protection to vest in the film, but
rather to alleviate the burden on a copyright owner to prove his case in infringement
proceedings. In this regard, an infringement of the copyright in the film will be pursued in
terms of the normal infringement provisions of the Copyright Act.255 The Registration
Act provides that a certificate of registration will be prima facie evidence of the contents
thereof, such as authorship and ownership. In addition, the fact that a person is registered
as the owner or licensee of the copyright in a film is prima facie evidence of the validity of
the original registration of that copyright and of all subsequent assignments and
transmissions thereof.256
1.14.3 Objection to registration

Provision is made for opposition to the registration of copyright in films. In this regard, an
objector must lodge a notice of opposition within the allotted time frame (or such extension
thereof as the Registrar may grant) setting out the grounds for opposing the application.257
The applicant for registration, if proposing to defend the opposition, must file a counter-
statement setting out the grounds on which he relies in support of his application and failure
to do so will result in the application being deemed to have been abandoned.258 The Registrar
may then with the consent of the parties consider the matter informnally and decide to either
reject the application, to register the copyright in the film or to direct that the normal
opposition procedure (whereby the parties are required to file evidence in the form of
affidavits) be pursued.259 The formal opposition procedure is akin to that for opposing a trade
mark application under the Trade Marks Act. In this regard see paragraph 2.6.
251 Reg 13(4).

252 Reg 14.
254 S 19 of the Registration Act.
258 S 10(1) and (2) of the Registration Act.

The Act also makes provision for the cancellation of registrations already granted
thereunder by virtue of a general power granted in terms of the Act to rectify entries in the
register.260
1.15 Performers’ protection

1.15.1 Nature and purpose of the Performers’ Protection Act and
conditions for protection
The Performers’ Protection Act 11 of 1967 (the Performers’ Act) protects the performances
or renditions of literary and other works, including traditional works. The protection granted
specifically to performances of traditional works is dealt with in paragraph 1.16.2 below. This
paragraph discusses the changes to the Performers’ Act that are being brought about by the
Intellectual Property Laws Amendment Act 28 of 2013 (the Amendment Act). The
Amendment Act, however, also amends the Performers’ Act in ways that bear little or no
relation to the issue of performances of traditional works. It achieves this mainly by changing
long-standing definitions used in the unamended Act. These changes and their effect are
also dealt with in paragraph 1.16.2. The discussion of performers’ protection in the present
paragraph is based on the unamended definitions.
The protection granted to performances under the Performers’ Act is not copyright, but
is in the nature of copyright. It does not in any way restrict or affect the rights provided for
by any other law relating to copyright in literary and other works.261 The protection granted
to performers of literary and other works in respect of their performances subsists in the
specific rendition by a performer of the work. It is of no consequence whether copyright
subsists in the subject work as the two forms of protection are independent of and separate
from each other. Copyright and performers’ rights are independent but complementary
rights. A performer can therefore acquire protection in his rendition of a work, despite the
fact that the copyright in the underlying work may long since have expired, or if still
subsisting, may be owned by another person.
The Performers’ Act protects performances of ‘literary and artistic works’. It has its
own definition of the term ‘literary and artistic works’. ‘Literary and artistic works’
include musical, dramatic and dramatico-musical works and expressions of folklore.262 In
order to enjoy protection under the Performers’ Act, the performance must be of a
‘work’, which implies that a performance of an unscripted activity is not covered by the
Performers’ Act.
In turn, the term ‘performer’ means an actor, singer, musician, dancer or other person
who acts, sings, delivers, declaims, plays in or otherwise performs literary or artistic works.263
A performance automatically enjoys protection under the Performers’ Act, provided
certain conditions are met. No form of registration of a performance is possible or necessary
for protection to subsist. The conditions that must be met for a performance to enjoy
protection are that it must:
a) take place;
b) be broadcast live; or
260 Ss 16 and 17 of the Registration Act.

261 S 2 of the Performers’ Act.
262 S 1(1) of the Performers’ Act.

c) be first recorded
in South Africa or in a country which is a member of the World Trade Organization.264
1.15.2 Content and infringement of performers’ right

The prohibition against the use of a performance commences upon the day when the
performance first took place, or if incorporated in a phonogram, when it was first fixed on
such phonogram, and continues for a period of fifty years calculated from the end of the
calendar year in which the performance took place or was incorporated in a phonogram, as
the case may be.265
A performer’s right in the rendition of a work is infringed when a person, without the
consent of the performer, does any of the following:
1. broadcasts or communicates to the public an unfixed performance of such performer,
unless the performance used in the broadcast or the public communication is itself
already a broadcast performance; or
2. makes a fixation of the unfixed performance of such performer (e.g. records it); or
3. makes a reproduction of a fixation of a performance of such performer:
a) if the original fixation, other than a fixation excluded by section 8 from the necessity for
obtaining the consent of the performer, was itself made without his or her consent; or
b) if the reproduction is made for purposes other than those in respect of which such
performer gave his consent to the making of the original fixation or of a reproduction
thereof; or
c) if the original fixation was made in accordance with the provisions of section 8 and
the reproduction is made for purposes not covered by those provisions.
4. by means of a fixation of a performance published for commercial purposes, without
payment of a royalty to the performer concerned:
a) broadcasts the performance;
b) causes the performance to be transmitted in a diffusion service (as defined under the
Copyright Act) unless such service transmits a lawful broadcast, including the
performance, and is operated by the original broadcaster; or
c) causes any communication of the performance to the public.266
The term ‘fixation’ is not defined in the Performers’ Act but it is submitted that it is
synonymous with ‘record’ or ‘recording’, or ‘reduction to a material form’, terms which are
well known in copyright law. Section 8, as referred to above, provides for certain exceptions
264 Ss 3 and 4 of the Performers’ Act.

Performers’ rights are regulated internationally by the International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organisations (the Rome Convention), adopted at Rome on 26 October 1961.
South Africa is not a member of the Rome Convention, but the Performers’ Act was drafted to conform with the minimum
standards and requirements for protection of performers provided for in that convention. South Africa is, however, a member
of the TRIPS Agreement. In terms of Article 1.3 of the TRIPS Agreement, members are required to protect, inter alia,
performances emanating from other member countries to the extent provided for in Article 14 of the Agreement. This
measure of protection for performances is equivalents to the protection provided for in the Rome Convention. The ‘members
of the Agreement’ include persons eligible for protection in terms of the Rome Convention. These provisions effectively
bind South Africa to provide protection to performers who enjoy the benefits of the Rome Convention.
South Africa can thus be construed as being effectively an ‘honorary member’ of the Rome Convention, with which
its laws relating to performers’ protection basically comply. In the final analysis the performances of nationals of TRIPS
members (TRIPS members are simultaneously members of the World Trade Organization) are protected in South Africa
as though they are performances of South African nationals. The extent of the protection is effectively that provided for
in the Rome Convention.

or exemptions from infringement of the performer’s right. These exemptions are dealt with
in paragraph 1.15.3 below.
A performer may sue any person who infringes his rights in the rendition of a performance
for an interdict and/or damages.267 In addition, the Performers’ Act also provides for a person
who knowingly infringes a performer’s right to be held criminally liable.268 The Performers’
Act extends the criminal liability to anyone who knowingly sells or lets for hire or distributes
for the purposes of trade, or by way of trade exposes or offers for sale or hire, any fixation of
a performance or a reproduction of such a fixation made in contravention of the performers’
rights, or who makes or has in his possession a plate or similar contrivance for the purpose
of making fixations of a performance or reproductions of such fixations.269
Upon an infringer’s being convicted of an offence under the Performers’ Act, a court may
impose a fine or imprisonment and in appropriate circumstances, upon application of the
performer whose rights have been infringed (and without proof of any damages), order the
infringer to pay the performer as damages such amount as may in the circumstances appear
reasonable.270
1.15.3 Specific defences

Certain statutory defences are provided under the Performers’ Act. These are stated to be
exceptions from the prohibition against the use of a performance without the consent of the
performer concerned. It will be noted that these defences resemble certain of those provided
for under the Copyright Act (e.g. fair dealing and the specific purpose for which it might be
used). These specific defences are a performance, a fixation of a performance or a reproduction
of such a fixation may be used without consent where:
a) it is for the purposes of private study or personal and private use;271 or
b) it is for the purposes of criticism or review or for the purpose of reporting on current
events, provided that not more than short excerpts from the performance are used and,
whenever possible, the performer’s name or the names of the leading performers are
acknowledged;272 or
c) it is for the purposes of teaching or scientific research;273 or
d) it is for the purpose of legal proceedings;274 or
e) it is for the demonstration of recording, amplifying or similar apparatus, provided that
the demonstration is made by a licensed dealer on his premises to a specific client.275
A broadcaster may make by means of its own facilities a fixation of a performance and
reproductions of such fixation without the required consent provided, unless otherwise
stipulated, the fixation or any reproduction thereof:
a) is intended exclusively for broadcasts to which the performer has consented;
267 S 10(b) of the Performers’ Act.

268 S 9(1)(a) of the Performers’ Act.
269 S 9(1) (b) and (c) of the Performers’ Act.
270 S 9(1) (c)(i)–(iii) of the Performers’ Act.
272 S 8(2)(b) of the Performers’ Act.
273 S 8(2)(c) of the Performers’ Act.
274 S 8(2)(d) of the Performers’ Act.
275 S 8(2)(e) of the Performers’ Act.

b) if they are not of an exceptional documentary character, are destroyed before the end of
the period of six months commencing on the day on which the fixation was first made
or such longer period as may be agreed to by the performer.276
The fixation and the reproductions thereof made in terms of this provision may, on the
grounds of their exceptional documentary character, be preserved in the archives of the
broadcaster but must, subject to the provisions of the Performers’ Act, not be further used
without the consent of the performer.277
1.15.4 Licensing and the unassignability of performers’ rights

In terms of the Performers’ Act performers are entitled to license the use of a protected
performance. In this regard, a performer may enter into any contract with any user or
prospective user of his performance in respect of the use of his performance, but such contract
will only be enforceable in South Africa.278 This provision naturally allows a performer to permit
the exploitation of his performance by another, subject to such terms as may be agreed upon
between the contracting parties (including royalties or some other remuneration arrangement).
The provision refers to the parties’ entering into ‘any contract’, which could include verbal and
written contracts, as well as tacit agreements which may be inferred from the parties’ conduct.
PAUSE FOR Shaka Zulu

REFLECTION In the matter of South African Broadcasting Corporation v Pollecutt279 the court drew a clear
distinction between the rights relating to copyright in literary and artistic works (including
musical, dramatic and dramatico-musical works) on the one hand and the rights of a
performer who gave a rendition (i.e. performer’s rights) of such works. The matter revolved
around the music created for the television production of Shaka Zulu. Pollecutt was
commissioned by the SABC to create the music and the parties entered into a number of
agreements setting out the arrangement between them, including Pollecutt’s remuneration
in the form of royalties. With reference to section 13 of the Performers’ Act, the court
recognised the supremacy of the freedom to contract.280
The Performers’ Act contains no provision for a performer to assign his rights acquired under
the Performers’ Act to another. Since the performers’ right is a creature of statute and its
characteristics are defined and created in the Act, the absence of any provisions enabling an
assignment of the right renders it a necessary deduction that performers’ rights are unassignable.
1.16 Traditional knowledge

The Intellectual Property Laws Amendment Act, 2013 281 (the Amendment Act) was
promulgated on 10 December 2013.282 It amends various IP statutes including the Copyright
Act and the Performers’ Protection Act. For the first time South African law now provides
specifically for the protection of traditional knowledge in the form of cultural expressions.
The publication of Regulations under the Amendment Act is awaited and the Amendment

277 S 8(3)(b) of the Performers’ Act.
279 1996 (1) SA 546 (A).
280 556 E.
281 Act 28 of 2013.
282 GN 996, GG 37148, 10 December 2013.

Act will only come into operation on a date fixed by the President by proclamation in the
Government Gazette, doubtless when the Regulations are ready for promulgation.283 The
Amendment Act is a contentious and poorly drafted piece of legislation and in many respects
it abrogates some of the basic principles of the host Acts which it amends. This is likely to
give rise to difficult problems in regard to those host Acts in the future.
1.16.1 Protection of traditional knowledge under copyright law

The Amendment Act amends the Copyright Act by expanding the types of subject matter in
which copyright can subsist to include traditional works. It inserts into the Copyright Act a
Chapter 2A entitled ‘Copyright in Traditional Works’. This Chapter introduces the new
sections 28A–N and 39A into the Copyright Act and amends section 39 of the Copyright Act.
Since the Copyright Act has not yet actually been amended by the Amendment Act, reference
will be made below either to the relevant provisions of the Amendment Act, or alternatively
to the Copyright Act as it will be amended in due course once the Amendment Act comes
into force, depending on which is the most convenient and conducive to understanding the
very confusing and convoluted situation regarding the Amendment Act.
The Amendment Act creates various structures and bodies that are involved in the
operation and administration of the system for protecting traditional works under the law
of copyright. These issues fall under chapter 8 in this book, which deals with traditional
knowledge in general. Furthermore, the Amendment Act also contains provisions that
deal more pertinently with the commercialisation of traditional works. These matters are
dealt with in chapter 9, which discusses the commercialisation of intellectual property.
1.16.1.1 Traditional works284

The Amendment Act introduces protection for so-called ‘traditional works’ into the
Copyright Act. Traditional works are first and foremost ‘works’. The Amendment Act extends
the meaning of the term ‘work’ as contained in section 2 of the Copyright Act, in so far as it
applies to traditional works, to mean a traditional work and indigenous cultural expressions
or knowledge.285 In defining a ‘traditional work,’ the Amendment Act states that the term
includes a derivative indigenous work and an indigenous work.286 It is therefore an umbrella
term, or genus, for two distinct types of works which can qualify as traditional works; i.e.
indigenous works and derivative indigenous works. They are species of the genus. References
below to traditional work thus cover both species.
The term ‘indigenous work’ means a literary, artistic or musical work with an indigenous
or traditional origin, including indigenous cultural expressions or knowledge, which was
created by persons who are, or were, members, currently or historically, of an indigenous
community, and which literary, artistic or musical work is regarded as part of the heritage
of such indigenous community.287
The term ‘derivative indigenous work’ means any work forming the subject of this Act (i.e. the
Copyright Act), applied to any form of indigenous work recognised by an indigenous community
as having an indigenous or traditional origin, and a substantial part of which was derived from
indigenous cultural expressions or knowledge, irrespective of whether such derivative indigenous
work was derived before or after the commencement of the Amendment Act.288
283 S 15 of the Amendment Act.

284 S 3(j) of the Amendment Act.
285 S 3(k) of the Amendment Act.
287 S 3(f) of the Amendment Act.
288 S 3(e) of the Amendment Act.

The phrase ‘indigenous cultural expressions or knowledge’ is the subject of a separate

definition in the Amendment Act and it means any form, tangible or intangible, or a
combination thereof, in which traditional culture and knowledge are embodied, passed on
between generations, and tangible or intangible forms of creativity of indigenous
communities, including, but not limited to:
(a) phonetic or verbal expressions, such as stories, epics, legends, poetry, riddles and
other narratives, words, signs, names or symbols;
(b) musical or sound expressions, such as songs, rhythms, or instrumental music, the
sounds which are the expression of rituals;
(c) expressions by action, such as dances, plays, ceremonies, rituals, expressions of
spirituality or religion, sports, traditional games, puppet performances, and other
performances, whether fixed or unfixed; or
(d) tangible expressions, such as material expressions of art, handicrafts, architecture,
or tangible spiritual forms, or expressions of sacred places.289
Further discussion of this is to be found in paragraph 8.3.7.2.

Another term incorporated into the definition of a traditional work, namely ‘indigenous
community,’ is the subject of a separate definition. It means:
any recognisable community of people originated in or historically settled in a

geographic area or areas located within the borders of the Republic, as such borders
existed at the date of commencement of the Amendment Act, characterised by
social, cultural and economic conditions which distinguish them from other sections
of the national community, and who identify themselves and are recognised by other
groups as a distinct collective.290
This definition is discussed further in paragraph 8.3.7.1.
1.16.1.2 Requirements for subsistence of copyright in traditional works

Section 4 of the Amendment Act introduces a new section 28A into the Copyright Act. The
new section 28A states that the normal provisions of the Copyright Act will apply to traditional
works, subject to the provisions of the new Chapter 2A (dealing with traditional works), ‘except
in so far as is otherwise provided in that Chapter, and in so far as they can be applied’
(emphasis added). The interpretation of this provision is obscure, to say the least, and will be
discussed below because it can have a major impact on copyright in traditional works.
Section 2 of the Copyright Act lists, among others, the works eligible for copyright (including
by extension traditional works – see the amended section 28B(1)) and requires all such works
to be ‘original’ in order to be eligible for copyright. Taken at face value, the requirement of
‘originality’ is therefore equally applicable to traditional works as to the other types of works
eligible for copyright. However, certain types of traditional works cannot by their nature be
proved to be original, which gives rise to the question whether the amended Copyright Act will
be capable of achieving its purpose of protecting traditional works by means of copyright. The
government’s (i.e. officials of the Department of Trade and Industry and Parliament’s legal
advisers) avowed interpretation of that portion of the new section 28A which is highlighted
and emphasised in the previous paragraph is that it means that those provisions of the


Copyright Act relating to ‘originality’ cannot be applied to such non-original works, and
therefore are not so applied, since they are only applicable ‘in so far as they can be applied’.
If the government’s interpretation is correct, the requirement of ‘originality’ applies to those
traditional works that are indeed ‘original’, but does not apply to those traditional works which
are not ‘original’ because it is incapable of being applied to them. This is tantamount to saying
that ‘originality’ is not a requirement for the subsistence of copyright in a traditional work.
PAUSE FOR Is originality essential?

REFLECTION With respect, the government’s view on the issue of whether ‘originality’ is a requirement for the
subsistence of copyright in a traditional work is contortionist reasoning taken to the extreme!
The issue will have to be decided by the court in due course. ‘Originality’ is at the very core of
copyright law and it is difficult to contemplate that copyright can subsist in a work when it is not
original. Since in essence what is protected by copyright in a work is the own contribution of the
author – that part of the work in which originality lies – it will be a virtually impossible task to
test whether an alleged infringing work has reproduced a substantial part of the copyright work
in accordance with the normal and well-established principles that are applicable to this
situation. See paragraph 1.8.1 above.
Under copyright law, apart from being required to be original, for copyright to subsist in a work
it must exist in a material form (save for the exceptional cases of broadcasts and programme-
carrying signals by virtue of their special nature). The requirement of ‘material form’ also
generally applies to traditional works, but provision is made in the Amendment Act for an
exception where a work, although not reduced to a material form, is capable of substantiation
from the collective memory of the relevant indigenous community.291 The definition of the
phrase ‘indigenous cultural expressions or knowledge’ (subsumed in the definition of
‘indigenous work’) is consistent with the notion that a traditional work need not necessarily be
in a material form, as it extends to that which is tangible or intangible (or a combination thereof).
PAUSE FOR Deviation from traditional copyright principles

REFLECTION It is an established principle that one of the requirements for the subsistence of copyright is
that the work must be in a material form. The definitions of the terms ‘derivative indigenous
work’ and ‘indigenous work’ extend to cultural expressions or knowledge, which may not
necessarily exist in a material form. The possibility that traditional works may not need to be
in a material form creates problems and causes uncertainty as to the precise content or
substance of the works, particularly bearing in mind that traditional works are specifically
stated to be literary, musical or artistic works (arguably in each instance traditional works are
merely a species of these types of works).
While the Amendment Act requires that a traditional work must be in a material
form, it provides for the alternative that, although the work may not exist in a material
form, it is sufficient if the work and its nature are capable of substantiation from the
collective memory of the relevant indigenous community, whatever that may mean.292
Apart from any other considerations, the fact that a traditional work only exists in the
collective memory of a community would make a comparison with an allegedly
infringing work a difficult task. Of course, once the work has been fixed (for instance in
291 S 28B(2) of the amended Copyright Act.

292 S 28B(2) reads as follows: ‘Notwithstanding section 2(2) a traditional work shall not eligible for copyright unless it has
been written down, recorded, represented in digital data or signals, or otherwise reduced to a material form or is capable
of substantiation from the collective memory of the relevant indigenous community.’

a film or some tangible form) in order to comply with the High Court Rules of procedure, as
it would have to be, in infringement proceedings, it will exist in a material form.
Leaving aside the questions of originality and existence of a work in a material form,
copyright is conferred on a traditional work provided:
(a) the traditional work is a derivative indigenous work and was created on or after the
date of commencement of the Amendment Act, and the indigenous community
from which the work, or a substantial part thereof, originated is or was an
indigenous community when the work was created; or
(b) the traditional work is an indigenous work.293
PAUSE FOR ‘National treatment’ to apply to traditional works as well?

REFLECTION Will the Copyright Act as amended by the Amendment Act apply to traditional works of foreign
origin? The Amendment Act aims to ensure that the provisions thereof align with international
agreements of which South Africa is a member, or may become a member in the future, and
provides that the protection of traditional works may be extended to foreign communities and
their works through appropriate proclamation by the Minster in the Government Gazette. A
proclamation of this nature will have the effect, in relation to each country specified therein, of
making the provisions of the Amendment Act applicable to –
a) a community recognised in the specific country as an indigenous community; and
b) a traditional work recognised in the specified country as a traditional work.
On the other hand, it is arguable that in terms of the relevant definitions, a traditional work is in
reality a species of literary, musical of artistic work and that the normal provisions of the
Copyright Act dealing with such classes of works apply automatically to this new species, thus
affording immediate protection to ‘traditional works’ of foreign origin.
1.16.1.3 Authorship and ownership
Section 3 of the Amendment Act introduces specific provisions into the definition of ‘author’
in section 1 of the Copyright Act as to who constitutes an author in relation to a traditional work.
The author of an indigenous work is the indigenous community from which the work
originated and acquired its indigenous character. For the purposes of traditional works, an
indigenous community is deemed to be a juristic person.294 The author of a derivative
indigenous work is the ‘person who first made or created the work, or a substantial part of
which was derived from an indigenous work’ (sic!).
In general ownership of any copyright conferred on traditional works initially vests in
the author of the work. However, the exceptions to this general rule provided for in section
21 of the Copyright Act, and in the case of works made under the direction and control of
the state, apply equally to traditional works.295 In addition, the Amendment Act has its own
exceptions to the general rule that ownership vests with the author. In this regard, it provides
for three situations in which ownership of copyright in a traditional work vests with the
293 S 28B(3)(a) and (b) of the amended Copyright Act.

294 S 28D(1) of the amended Copyright Act.
295 S 28D(2) of the amended Copyright Act.

National Trust to be established in terms of section 28(1) of the amended Copyright Act.296
The situations in which copyright so vests are where:
(a) the author cannot be determined;
(b) the author was an indigenous community which is no longer in existence; or
(c) the authorship of a traditional work ‘cannot be shared between more than one
indigenous community claiming authorship, for whatever reason’.297
1.16.1.4 Duration and effect
1.16.1.4.1 Term of protection

In order to determine the term of copyright protection in traditional works, it is particularly
pertinent to distinguish between the two types of traditional works, namely derivative
indigenous works and indigenous works. This is so because different terms of protection
apply in each instance.
In relation to derivative indigenous works, copyright will subsist for a period of 50 years
from the end of the year in which:
(i) the work was first communicated to the public with the consent of the author or
authors; or
(ii) the date of the death of the author or all authors concerned, whichever term
expires last.298
In the case of indigenous works, copyright will subsist in perpetuity.299 Copyright in an

indigenous work that vests with the state as a result of the provisions of the amended
Copyright Act is ‘perpetual in nature’.300
1.16.1.4.2 Restricted acts in relation to traditional works

Copyright in a traditional work vests the exclusive right to do, or to authorise the doing of,
any of the following acts in relation to that work (i.e. the restricted acts):
(a) Reproducing it in any manner or form;301
(b) reproducing a cinematograph film in which it is included, in any manner or form,
including making a still photograph thereof;302
(c) publishing it if it was hitherto unpublished;303
(d) in the case of a traditional work of a literary or musical nature, performing it in public
and broadcasting it or causing a communication of it to the public by wire or wireless
means, including making it available to the public in such a way that members of
the public may access it from a place and at a time individually chosen by them;304
(e) in the case of a traditional work of a musical or artistic nature, or a traditional work
of a literary nature in the form of a dramatic work, including it in a cinematograph
film, television broadcast or a sound recording;305
296 S 28D(3) of the amended Copyright Act. See paragraph 8.3.8.2.

297 Ss 28D(3)(a),(b) and (c) of the amended Copyright Act.
298 S 28F(1)(a) of the amended Copyright Act.
299 S 28F(1)(b) of the amended Copyright Act.
300 S 28F(2) of the amended Copyright Act.
301 S 28E(1)(a) of the amended Copyright Act.
302 S 28E(1)(b) of the amended Copyright Act.
303 S 28E(1)(c) of the amended Copyright Act.
304 S 28E(1)(d) of the amended Copyright Act.
305 S 28E(1)(e) of the amended Copyright Act.

(f) broadcasting it, or a cinematograph film or sound recording in which it is included;306

(g) causing the cinematograph film in which it is included, in so far as it consists of
images, to be seen in public, or, in so far as it consists of sounds, to be heard in
public, or causing a communication to the public of the said cinematograph film,
by wire or wireless means, including the making available to the public of the said
cinematograph film in such a way that members of the public may access the said
cinematograph film from a place and at a time individually chosen by them;307
(h) communicating a sound recording in which it is included to the public;308
(i) letting, or offering or exposing for hire by way of trade, directly or indirectly, a
copy of the cinematograph film or a reproduction of the sound recording in
which it is included;309
(j) causing the traditional work, or a television or other programme which incorporates
it, to be transmitted in a diffusion service, unless such service transmits a lawful
television broadcast including it and is operated by the original broadcaster;310
(k) making, directly or indirectly, a record embodying a sound recording in which it is
included;311
(l) making an adaptation of the traditional work;312 and
(m) doing in relation to an adaptation of it any of the acts specified in paragraphs (a) to
(l) above.313
Notwithstanding the foregoing specific provisions of the Amendment Act (incorporated into
the Copyright Act in relation to traditional works), section 28H of the amended Copyright
Act provides that all the restricted acts applicable to literary and musical works, artistic
works, cinematograph films and sound recordings will also apply to traditional works, ‘with
the necessary changes required by the context’. The effect of this provision is difficult to
comprehend as these provisions amount largely to a duplication of what is contained in
section 28F of the amended Copyright Act dealing with the restricted acts applicable to
traditional works.
1.16.1.5 Exemptions from infringement of copyright in traditional works

All the exemptions from, or defences to, copyright infringement as provided for in sections
12–19B in the Copyright Act also apply to traditional works, in so far as they can be applied
to such works, but with the necessary changes required by the context.314 In addition to such
general exemptions, certain further specific exemptions are provided for traditional works.
They are detailed below:
1. The copyright in a traditional work is not infringed by a person who (a) has acquired
rights in respect of that work by doing any of the acts referred to in section 28E of the
amended Copyright Act (i.e. the restricted acts in relation to traditional works) prior to
the commencement of the Amendment Act and (b) continues to perform such act.
Subject to meeting certain conditions, such person will continue to hold his or her vested
306 S 28E(1)(f) of the amended Copyright Act.

307 S 28E(1)(g) of the amended Copyright Act.
308 S 28E(1)(h) of the amended Copyright Act.
309 S 28E(1)(i) of the amended Copyright Act.
310 S 28E(1)(j) of the amended Copyright Act.
311 S 28E(1)(k) of the amended Copyright Act.
312 S 28E(1)(l) of the amended Copyright Act.
313 S 28E(1)(m) of the amended Copyright Act.
314 S 28G(1) of the amended Copyright Act.

user rights falling within the copyright in the traditional work, and may continue to
exercise such rights in the manner in which he or she used to do in the past.315
The holder of the vested rights must comply with section 28B(4)(b)316 and (c)317 of the
amended Copyright Act within 12 months after the commencement of the Amendment
Act. Compliance with these conditions entails the user’s paying royalties to the copyright
owner for the ongoing use of the work. The rights of the copyright owning indigenous
community to receive royalties or benefits for the ongoing use’s of the traditional work
come into existence upon the commencement of the Amendment Act.318
2. A traditional work may be used without obtaining prior consent of the copyright owner,
if such use is for the purpose of:
a) private study or private use;
b) professional criticism or review;
c) reporting on current events;
d) education;
e) scientific research;
f ) legal proceedings; or
g) the making of recordings and other reproductions of indigenous cultural expressions
or knowledge for purposes of their inclusion in an archive, inventory, dissemination
for non-commercial cultural heritage safeguarding purposes, and incidental uses:
Provided that only excerpts or portions of the works are used and that such excerpts are
as reasonably required and the copyright owner’s name is acknowledged.319
1.16.1.6 Assignment and licences

Whereas in general under copyright law copyright is freely transmissible, the copyright in
an indigenous work (but not in a derivative traditional work) is not transmissible by
assignment, testamentary disposition or operation of law. There are, however, certain
exceptions to this restriction. They are that copyright in such a work can be assigned to a
collecting society to administer such copyright, and that it may be transferred to a duly
appointed representative of the indigenous community that owns it.
If the copyright in an indigenous work vests in a representative of an indigenous
community, whether such representative is a natural or juristic person, the indigenous
community may (a) upon the death or liquidation of the said representative, or (b) prior to
the death or liquidation of the said representative, by agreement, in certain circumstances
transfer such copyright to a natural or juristic person, as the indigenous community may
decide.320 This is a strange provision as it enables a community to transfer the copyright in
circumstances where a representative, and not the community itself, is the copyright owner.
Where the copyright in an indigenous work vests in a representative of an indigenous
community, upon the death of the last living member of such indigenous community the
copyright will automatically be transferred to the National Trust.321 It would appear that the
copyright in a work which is owned by an indigenous community, and which has not been
transferred to a representative of that community, will effectively cease to exist (or at least will
not be owned by anyone) upon the demise of the community since by virtue of the provisions
315 S 28G(2)(a) and (b) of the amended Copyright Act.

316 That is, making disclosure of the indigenous cultural expressions or knowledge to the Commission.
317 That is, concluding a benefit-sharing agreement between the applicant and the relevant authority or indigenous community.
319 S 28G(7)(a)–(g) of the amended Copyright Act.
320 S 28J(2)(a) and (b) of the amended Copyright Act.
321 S 28J(3) of the amended Copyright Act.

of the new section 28J of the amended Copyright Act it is not transmissible by assignment,
testamentary disposition or operation of law when that stage is reached. The doing of any
restricted act under the copyright may be licensed to another.322 Any person wishing to acquire
rights pertaining to doing any of the restricted acts in respect of an indigenous work (and
apparently not a derivative indigenous work) after the commencement of the Amendment Act
must comply with section 28B(4) of the amended Copyright Act (See footnotes 303 and 304).323
The contemplated royalties or benefits payable to the copyright owning community (the
section refers in this context to the ‘author’ as being the recipient of the payments but it is
submitted that this should be read as the ‘copyright owner’) referred to above, by the user of
the work, are due if any commercial benefit is derived from performing the acts in question.
The amount of the royalty or benefit payable is determined in accordance with the provisions
of section 28H(3) of the amended Copyright Act.324 This section provides for the rate to be
agreed upon between the parties, failing which the matter is to be referred to a duly accredited
institution (as contemplated in section 28K(1) of the amended Copyright Act), the Copyright
Tribunal, or to arbitration in terms of the Arbitration Act 42 of 1965. However, if the
commercial benefit derived from the use of a traditional work has a value below a certain
prescribed amount, no liability for the payment of royalties or benefits accrues.325
A further discussion of the assignment of traditional works is to be found at paragraph 9.1.4.
1.16.2 Amendment of the Performers’ Protection Act, 1967,

by the Amendment Act
The Amendment Act has also amended the Performers’ Act to make provision for the
protection of performances of traditional works.326 The scope of the Performers’ Act has thus
been extended to protect the performance of traditional works, although the existing Act,
prior to amendment, already protects performances of expressions of folklore.
The Amendment Act amends the definition section (section 1) of the Performers’ Act and
introduces certain new definitions into it. The term ‘traditional work’ has the same meaning as
in the amended Copyright Act, and includes expressions of folklore.327 The term ‘performance’
is given the meaning ‘includes any mode of visual or acoustic presentation of a literary work,
musical work, artistic work, dramatic work or work of joint authorship including acting, singing,
delivering, declaiming, playing or otherwise performing such work, and includes any such
presentation by the operation of a loudspeaker, but excluding such performance by the use of
a phonogram, a radio, television, diffusion receiver, by the exhibition of a cinematograph film,
by the use of a record, broadcasting, rebroadcasting or transmission in a diffusion service, and
‘perform’ has a corresponding meaning’.328 The terms ‘literary work’, ‘musical work’, ‘artistic work’,
‘dramatic work’ and ‘work of joint authorship’ all have the same meanings as those assigned to
them in the Copyright Act ‘in so far as such works are capable of being performed and include
musical, dramatic, dramatico-musical works and traditional works’. The term ‘cinematograph
film’ is defined as meaning ‘any fixation of images, or of images and sounds, or of a performance
with or without other images or sounds’. This definition differs from the definition of the
corresponding term in the Copyright Act.329
322 S 28J(1)(a) and (b) of the amended Copyright Act.

326 S 8A(1) of the amended Performers Act.
328 S 1(g) of the Amendment Act.
329 S 1(a), (c), (e) and (j) of the Amendment Act.

The definition of ‘performer’ has been somewhat extended and now means ‘an actor, singer,
musician, dancer or other person who acts, sings, delivers, declaims, plays in or otherwise
performs, literary works, musical works or artistic works, dramatic works or works of joint
authorship’.
The definition of ‘fixation’ has perhaps been limited by the addition of the wording ‘in any
manner or medium so as to be capable of being reproduced or performed.’ 330
The effect on the Performers’ Act of the apparent introduction into it of protection of
performances of traditional works is very limited since the Act already covers performances
of expressions of folklore, which in practical terms is really what the traditional knowledge
contemplated in the Amendment Act amounts to. As in the case of the Copyright Act, various
administrative provisions have been introduced into the Performers’ Act and these are dealt
with in chapter 8, which deals with the general subject of traditional knowledge. However,
the changes in the definitions in the Performers’ Act as discussed above have resulted in
changes to the law dealing with the protection of performances in general and these changes
may have a marked effect on this branch of the law. For instance, performances of artistic
works (whatever that may mean) have now been brought within the scope of the Performers’
Act, which was not previously the case. The concept of a ‘performance’ for the purposes of
the Performers’ Act has also been broadened. Changes of this nature have placed the
Performers’ Act outside the scope of the Rome Convention and the TRIPS Agreement (see
fn 264) and the international norms for the protection of performances.
COUNTER Understanding performers’ rights

POINT Does the legislature, which passed the Amendment Act, really understand the true nature
of performers’ protection rights and their relationship to traditional knowledge? The
amendments being made to the Performers’ Act seem to suggest that they do not.
What the Performers’ Act protects is the live rendition by a performer of a work, usually a
literary or musical work, for instance a song. The right created is in a sense a form of copyright
in a performer’s actual live performance of a song or other work, for instance Elton John’s live
performance during a stage show. In ordinary parlance one might speak of the right to
commercialise a live show or a stage performance. The subject matter that is being protected
must be differentiated from the song that is being performed, that is the copyright musical or
literary work. This being so, what place does an artistic work have in a live performance? How
does one perform (on the stage) a design drawing or a photograph, to mention some examples?
Furthermore, how does the operation of a loudspeaker (an innovation in the definition of
‘performance’) enter the equation? It is simply a tool used in the performance and is not a form
of performance in its own right. Why is it necessary to deal with the performance of a work of
joint authorship? Joint authorship is an issue which is relevant to the ownership of the copyright
in a song or other work and is totally unrelated to the performer’s actual live rendition of the
relevant work.
Through woolly and imprecise thinking, amendments are being made to the Performers’
Act, in the interests of ensuring protection of the contributions of performers in making live
performances of traditional works, which actually have nothing to do with traditional
knowledge and which are undermining the basic principles and concepts of performers’
protection rights. These amendments are going to impact adversely on the operation and
interpretation of the Performers’ Act in areas that are completely unrelated to traditional
knowledge. Through this Amendment Act the legislature has done a disservice to the law
dealing with performers’ protection.
330 Section 1(d) and (h) of the Amendment Act.

Chapter 2 Trade marks
MEGAN REIMERS AND MARCO VAN DER MERWE
2.1 General introduction 79

2.2 Trade mark registration and formalities 79
2.2.2 The use and value of registered trade marks in modern society 80
2.2.3 The classification of goods and services 82
2.2.4 Registrability and conflict searches 85
2.2.5 The registration procedure 86
2.2.5.2 The register and Registrar of Trade Marks 86
2.2.5.3 The registration process 87
2.2.5.4 Filing the application 88
2.2.5.5 Examination by the Registrar 89
2.2.5.6 Refusal or provisional refusal of trade mark applications 91
2.2.5.7 Acceptance, advertisement and registration 91
2.2.6 Amendment of trade marks and specifications of goods/services 92
2.2.7 Renewal of trade marks 92
2.3 Nature and essence of a trade mark 93
2.3.1 What is a ‘mark’? 93
2.3.2 What is a trade mark? 97
2.3.3 Special trade marks (certification and collective marks) 99
2.3.3.1 Certification trade marks 99
2.3.3.2 Collective trade marks 99
2.3.3.3 General 100
2.3.4 Trade marks under the Intellectual Property Laws Amendment Act 28
of 2013 (Indigenous Knowledge) 100
2.4 Registrability of trade marks 103
2.4.2 Capable of distinguishing (section 9) 103
2.4.3 Disqualifications from registration (section 10) 106
2.5 The transfer of trade marks and licensing 116
2.5.1 ‘Transfer’ of rights in a trade mark 117
2.5.2 Assignment 117
2.5.3 Transmission 118
2.5.4 Recordal of assignment or transmission 119
2.5.5 Licensing of registered trade marks 120
2.6 Trade mark oppositions 121
2.6.2 Grounds of opposition 122


2.6.3 Opposition procedure 128
2.7 Rectification of trade marks 130
2.7.2 Purpose of rectification proceedings 130
2.7.3 Interested party 131
2.7.4 Grounds of rectification 132
2.7.4.1 Section 24(1): entries wrongly made or remaining on the register 132
2.7.4.2 Section 27: non-use 134
2.7.5 Procedure 138
2.8 Honest concurrent use 138
2.9 Trade mark infringement 139
2.9.2 Grounds of infringement 140
2.9.2.1 Section 34(1)(a): identical goods/services 140
2.9.2.2 Section 34(1)(b): similar goods/services 148
2.9.2.3 Section 34(1)(c): dilution 151
2.9.2.4 Section 35: ‘famous’ marks 156
2.9.3 Defences to infringement 159
2.9.3.1 Section 34(2)(a): bona fide use of own name 159
2.9.3.2 Section 34(2)(b): bona fide descriptive use 160
2.9.3.3 Section 34(2)(c): bona fide use to indicate intended purpose 162
2.9.3.4 Section 34(2)(d): use on genuine goods 163
2.9.3.5 Section 34(2)(e): bona fide use of utilitarian features 163
2.9.3.6 Section 34(2)(f): use for which a registration does not extend 163
2.9.3.7 Section 34(2)(g): concurrent registration 164
2.9.3.8 Acquiescence and estoppel 164
2.9.4 Procedure for lodging a claim for trade mark infringement 164
2.9.5 Remedies 164
2.10 Passing off 166
2.10.2 Elements of passing off 166
2.10.2.1 Reputation 167
2.10.2.2 Misrepresentation 170
2.10.2.3 Likelihood of confusion 175
2.10.3 Procedure for instituting a passing off claim 177
2.10.4 Remedies 177
2.10.5 Defences 177
2.11 Determining the likelihood of confusion: comparison of marks 178
2.12 Conclusion 183

2.1 General introduction

In general or plain terms a trade mark is the badge or symbol that a producer of goods or a
supplier of services uses in relation to his goods or services in order to inform the public that
he is the source or provider of those goods or services, or conversely, that the goods or
services in question are provided by him. A trade mark is the means by which a trader
conveys the message that ‘this is my product/service’. Typical examples of trade marks are
APPLE for computers and MTN for cell phone facilities.
The law relating to trade marks in South Africa is governed by the Trade Marks Act 194
of 1993 (the Trade Marks Act or the Act)1 and by the common law, and more particularly the
law of passing off. The Trade Marks Act establishes and regulates a system of registration of
trade marks, while the law of passing off deals with rights in respect of unregistered trade
marks which fall outside the registration system and beyond statutory law. In many respects,
the law of passing off operates in parallel with the Trade Marks Act.
This chapter has been divided into two main parts, namely what can loosely be termed
trade mark prosecution or formalities, which is the protection of trade marks through
registration; and trade mark enforcement or litigation, which includes those parts of the law
which enable the enforcement of trade mark rights, whether registered or unregistered.
Trade mark enforcement includes the law of passing off.
Trade mark prosecution is based on the registration of trade mark rights and includes the
question of whether a mark qualifies as a protectable trade mark; the registration process; and
the maintenance of rights. Trade mark enforcement includes trade mark oppositions,
rectification/cancellation, infringement and ‘passing off’. Trade mark prosecution is dealt with
in paragraphs 2.2 to 2.5, and trade mark enforcement is dealt with in paragraphs 2.6 to 2.11.
2.2 Trade mark registration and formalities
2.2.1 Introduction
Trade mark rights can be enforced against third parties whether they are registered or not. If
they are registered, then the provisions of the Trade Marks Act relating to trade mark
infringement can be applied to enforce them, as discussed in paragraph 2.9. If they are not
registered, then the provisions of the law of passing off can be applied to protect them (see
paragraph 2.10). The statutory protection provided for in terms of the Act is considerably
easier to apply than the law of passing off and so it is always preferable to register a trade mark.
The ensuing paragraphs discuss the procedure which is followed in applying for and
obtaining a registered trade mark.
In practice, the registration process comprises two main elements, namely voluntary
actions usually taken before applying for registration (such as conducting prior trade mark
searches, use investigations and/or domain name searches), and the compulsory activities
as prescribed in the Act and the Regulations2 for registration (such as lodging the application,
the examination of marks, advertisement of applications in the Patent Journal, etc.)
It is important to note that trade marks are territorial – registration only grants rights in
the country in which the trade mark is registered. If a trade mark owner wishes to use and
1 The Trade Marks Act 194 of 1993 must be distinguished from the Trade Marks Act 62 of 1963, which is still applicable
in certain instances. The latter Act is referred to in the chapter as the ‘Trade Marks Act of 1963’ or ‘the 1963 Act’.
2 Proc 46 GG 16370, 21 April 1995.

protect his trade mark in more than one country, then he should apply for registration of his
trade mark in each of those countries.
2.2.2 The use and value of registered trade marks in modern society
Why should one register one’s brands, trading styles, containers for goods, Internet website
addresses and/or company names as trade marks?
PAUSE FOR The difference between a brand and a trade mark – Is there any?
REFLECTION The New Shorter Oxford Dictionary defines a ‘brand’ as, inter alia, ‘A make or kind of goods
bearing a trade mark’. Thus, in the first instance the word brand is somewhat synonymous
with the word trade mark. However, there is a slight difference in nuance which can be seen
from terms commonly used in commerce such as ‘brand leader’ – that is, the best known
or perhaps best-selling product or service of its type. The term ‘brand-image’ denotes the
assumed impression of the product or service in the mind of the consumer. In commerce,
the word brand encompasses more than just a trade mark applied to goods or used for
services; it refers to the essential image of the entire undertaking, its goods and what it
stands for. Mercedes Benz manufactures numerous vehicles bearing different trade marks
(for instance the S CLASS, C CLASS, GELANDERWAGEN, etc.), yet the essential brand is
MERCEDES BENZ and it is the source of the value and reputation that attach to the use of
that brand on all its vehicles and in relation to all its services. A trade mark, on the other
hand, is a sign capable of distinguishing the goods and services of one trader from those
of another – in other words a sign distinguishing a particular product or service from another.
The brand denotes the inherent quality of all the goods sold and services offered under the
predominant trade mark and to an extent represents the ‘soul’ of the entire enterprise.
There are many benefits to obtaining registered trade mark rights, the most important being:
• As a registered trade mark owner, one obtains an exclusive right (in other words a legal
monopoly) to use a trade mark upon or in relation to specified goods and/or services. This
right need not be proved through evidence of use of the trade mark – the mere production
of the certificate of registration is evidence of the existence and ownership of the trade mark.
• Holding a trade mark registration is a form of ‘insurance’ against the possible abuse of
the goodwill which can attach to one’s brand.
• Registration gives notice of the rights claimed by the trade mark owner throughout a
country and allows the trade mark owner or a licensee to use the words ‘Registered Trade
®
Mark’ or the symbol in conjunction with the trade mark. For that reason registration
acts as a deterrent to potential infringers.
• Accounting standards and best practice require registered trade marks to be reflected at
value on the balance sheet of individuals and companies alike. This relatively recent
practice gives recognition to the value of a trade mark, which was previously largely
ignored or only recognised as part of the general concept of goodwill.
• Legal assets are created which may be sold (assigned), and used under licence. The
commercial value of trade marks often outweighs the ‘insurance’ function of a trade mark.
• As statutory protection is afforded, a trade mark owner is in a better position to attract
licensees.3 Owners of trade marks are free to allow others to exercise their rights against
3 See ch 9.

payment of a licence fee. A licence is usually in the form of an agreement in terms of

which a holder of a right allows a third party to exercise that right, in return for some
form of remuneration. The remuneration may take the form of a royalty but may also be
in the form of a lump sum payment. Registered trade marks can therefore generate
income and establish a revenue stream for years to come.
• Like immovable property, trade marks may also be used to secure a debt. Registered
trade marks are becoming an increasingly popular asset to use in the support of financing
arrangements with banks.
PAUSE FOR The value of brands

REFLECTION Trade marks are valued from time to time and the value apportioned varies greatly,
depending on factors such as sales revenue, profitability, market share and brand popularity.
In view of the ever-changing value and positioning of trade marks (brands), numerous
Internet websites have been established to provide current brand values. For instance,
according to BRANDZ Top 100 Most Valuable Global Brands 2013, the world’s most valuable
trade marks (in 2013) were:4
TRADE MARK/BRAND VALUE (in $ million)
Apple $185,071
GOOGLE $113,669
IBM $112,536
MCDONALD’S $90,256
COCA-COLA $78,415
MICROSOFT $69,814
MARLBORO $69,383
VISA $56,060
AMAZON $45,727
WALMART $36,220
SAP $34,365
MASTERCARD $27,821
VODAFONE $39,712
TOYOTA $24,497
BMW $24,015
DISNEY $23,913
According to an article published on MoneyWeb5 in May 2012, in South Africa the following
trade marks are considered to be the most valuable: MTN, VODACOM, STANDARD BANK,
ABSA, SASOL, NEDBANK, FIRST NATIONAL BANK, SHOPRITE, INVESTEC and NETCARE.
4 WPP ‘Brand2 top 100 most valuable brands’, available at www.milwardbrown.com.

5 ‘Most valuable South African brands revealed’ Moneyweb 24 May 2012, available at www.moneyweb.co.za.

2.2.3 The classification of goods and services
Trade marks are used in connection with specific goods or services: NIKE is used for
clothing; STANDARD BANK is used for financial services; COCA-COLA is used for a
beverage. Similarly, when trade marks are registered, they are registered for the specific
goods/services for which they will be used. A trade mark is registered in connection with
the specified goods or services only. Once registered, it is protected only for those goods and
services (or similar goods and services) – not for goods and services in general.
From the earliest of times, it seems to have been part of the human condition to classify
almost anything and everything. This is exemplified by the periodic table of elements, the
classifications systems applied to mental illness, and the Dewey Decimal Classification
system used to catalogue publications in libraries.
It is therefore not surprising that for the purposes of trade mark law all goods and services
have been classified internationally. They have been put into 45 classes – the first 34 classes
relate to goods (e.g. clothing, food, cosmetics and pharmaceuticals) and the remaining 11
classes relate to services (e.g. banking services, construction, transport and education). This
classification has made it easier to file applications for the registration of trade marks in
particular classes and to cover the specific goods or services for which the mark will be
registered and used. It has also greatly facilitated the task of conducting searches in order
to ascertain which marks are registered for which goods or services.
The classification of goods and services is dealt with in section 11 of the Trade Marks Act
and regulation 4 of the Trade Marks Regulations. Section 11(1) reads:
11. Registration to be in respect of particular goods or services.

(1) A trade mark shall be registered in respect of goods or services falling in a
particular class or particular classes in accordance with the prescribed
classification: Provided that the rights arising from the registration of a trade
mark shall be determined in accordance with the prescribed classification
applicable at the date of registration thereof.
For purposes of the classification of goods and services for trade mark registration, South
Africa follows the International Classification, and more particularly the 10th edition of
the Nice Classification (the most recently published edition).6 For a complete listing of
goods and services and the classes to which they have been allocated, explanatory notes
and a listing of the countries that apply the classification, it is prudent to review the most
recent publications of the World Intellectual Property Organization (WIPO) or its website at
www.wipo.org (WIPO administers the Nice Classification).
The classification is set out in Schedule 3 to the South African Trade Mark Regulations.
The List of Classes of Goods and Services in the Schedule comprises the so-called ‘class
headings’ of the 45 classes. These class headings are in reality summaries or indications of
the goods or services falling within the relevant classes. The actual determination of the
class into which particular goods or services fall lies within the province of the Registrar
but he is influenced by the International Classification in making the determination.
6 WIPO International Classification of Goods and Services for the Purposes of the Registration of Marks 10 ed entered
into force on 1 January 2012. The Classification is produced in terms of the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks, 15 June 1957. South Africa has not
acceded to this agreement but it nevertheless applies the Classification derived from it.

Indeed, save perhaps in exceptional cases, the Registrar follows the International
Classification assiduously.
One of the main reasons for classifying goods and services is to facilitate the conducting
of trade mark registrability and infringement searches. In investigating whether a particular
mark is available for registration and use, a trade mark search can be limited to the relevant
classes of goods and services for which the trade mark will be used. For instance, in
determining whether a mark is available for use and registration in relation to shoes and
clothing, it would be important to review class 25 (which covers clothing, footwear and
headgear), class 9 (as it includes ‘safety shoes’) and related classes such as class 24 (which
covers textile goods) and class 26 (which covers lace, ribbons and braid, etc.).
It is crucial that the application is classified correctly and filed in the correct class. If this
classification is incorrect, the trade mark may be invalid and could be removed from the
register. The scope of the goods/services covered by an application is limited by the parameters
of the class in which the trade mark is filed and registered. Goods/services which are included
in the specification of goods/services of the registered trade mark, but which do not fall into
the class in which the mark is registered, are not covered by the registration, despite the fact
that they may be listed in the specification. This flows from in the way section 11 is worded,
namely that ‘a trade mark shall be registered in respect of goods or services falling in a
particular class or particular classes in accordance with the prescribed classification’.
Section 11(2) states that if goods/services were correctly classified when lodging an
application, but the classification subsequently changes (as it does from time to time), the
proprietor may at any time record such change. One would ordinarily give the word ‘may’
its normal significance – in other words, the trade mark owner may, if so disposed, change
the classification of his mark. This is one possible interpretation and it has been followed by
the Registrar.
The current wording of section 11(2), as quoted above, was amended in terms of section
60 of Act 38 of 1997.7 The relevant portion of subsection 2 previously read as follows:
… the proprietor of the trade mark shall, when applying for the renewal of the
registration thereof in terms of Section 37, at the same time apply any prescribed
manner for revision, in accordance with the revised or new classification, of the class
or classes in which the trade mark is registered.
Accordingly, previously section 11(2) placed an onus on the trade mark owner to revise the
classification at the time of renewal. It appears to have been the intention of the legislature
that the subsection be amended so as to allow for the reclassification at any time and not
just at renewal, but that the reclassification should nevertheless be mandatory. It is in the
interests of all concerned that there should be clarity and accuracy in regard to the class in
which a trade mark is registered and it is therefore imperative that a changed classification
should be recorded at the latest when a trade mark is renewed.
The importance of reclassification in these circumstances can be illustrated by the
following example. Legal services used to be classified as belonging to the miscellaneous
services class (class 42), whereas they now fall into class 45. When conducting a search for
legal services, both class 42 and class 45 should be searched to ensure that all relevant trade
marks are revealed. If only class 45 is searched and a trade mark has not been reclassified,
it may be overlooked during a search.
7 The Intellectual Property Laws Amendment Act.

COUNTER Changing the word ‘shall’ to ‘may’ – The true intention, or sloppy drafting?
POINT Was it really the intention of the legislature to make reclassification a voluntary exercise
by replacing the word ‘shall’ with the phrase ‘may at any time’? In view of the importance
of classification in establishing rights and especially in determining whether a particular
mark is available for registration and use, this seems more likely to be a case of sloppy
drafting. It may well have been the intention to require reclassification at any time – at
the first opportunity (and not only at the time of renewal), and to make it compulsory
rather than voluntary, but this is not what the amended subsection requires.
The Act makes provision for the amendment of the existing classification. It is incumbent
upon the Registrar to publish any amendments to the classification of goods and
services in the Patent Journal. The Registrar publishes such amendments in the Patent
Journal from time to time, the latest having appeared on 30 May 2012.8 Unfortunately,
the Act does not make provision for the automatic amendment of the classification
whenever the Nice Classification changes, as it does from time to time (the current edition
of the Nice Classification came into effect on 1 January 2012 and the corresponding
amendments to the South African classification were only introduced and published five
months later). This creates uncertainty and puts South Africa out of kilter with the
international situation.
It should be mentioned that the South African class heading for class 35 (the
class which covers, inter alia, retail and wholesale services) differs from the Nice
Classification in that the services are described in it as the ‘offering for sale and the
sale of goods in the retail and wholesale trade’. This avoids the difficulty
experienced in the past where it was held by the court that ‘retail and wholesale trade’
was not a ‘service’ and that trade marks registered in respect of such services were
not enforceable.9
In practice, fairly wide specifications of goods and services are generally used in
filing trade mark applications in South Africa. The register abounds with examples of
entire class headings being inappropriately used as specifications of goods/services.
For example, in practice it is most unlikely that a trade mark proprietor will use a
particular mark for all of ‘cellular phones, safety clothing and fire extinguishers’ (all
classified under class 9). Having such a broad specification of goods (or services) may
make the trade mark vulnerable to removal or partial removal from the register on the
grounds of, inter alia, non-use or insufficient intention to use.10 This said, while it will not
always serve the interests of applicants to apply for a broad specification of goods and/or
services, it is also not advisable to use too narrow a description either, as it will serve to
unduly limit the scope of the exclusive rights arising from the registration and would
possibly not cover goods in relation to which the trade mark owner would like to use the
marks in future.
8 Patent Journal (2012) 45(5), May.

9 Action Bolt (Pty) Ltd v Tool Wholesale Holdings (Pty) Ltd 1988 (4) SA 752 (T).
10 See para 2.7.4.2.

PAUSE FOR What’s best, a ‘narrowly defined’ or ‘broad’ specification of goods/services?

REFLECTION A specification of goods which reads ‘injectable insulin preparations’ in class 5 may not
provide extensive cover for the applicant whereas a specification worded ‘pharmaceutical
preparations including injectable insulin’ or ‘pharmaceutical preparations’ per se, would
do so. In this example, should a new method of delivery of the particular insulin product
be developed, for instance a ‘patch’ to be applied to the body, the narrow specification
would not cover the new product whereas the broader specification would do so. It is
accordingly preferable to use a genus (such as ‘pharmaceuticals’) and not a species (such
as ‘injectable insulin’).
As the courts apply a narrow interpretation to the rights granted (because they
constitute a monopoly), the utmost care should be taken when drafting a specification of
goods/services.
2.2.4 Registrability and conflict searches

No obligation is placed on a trade mark owner in terms of the Trade Marks Act to conduct a
search of the register of trade marks (the full database of all trade marks applied for and/or
registered in South Africa) to determine whether a trade mark is available for use and
registration before he decides to use it or to apply to register it.
However, it is advisable to do so, as he or she could otherwise find that his trade mark is
confusingly similar to someone else’s earlier trade mark and he may be forced to discontinue
use of his mark, after potentially incurring considerable expenses in marketing and
advertisement of products or services bearing the mark. In addition, damages could be
incurred for infringing the rights of others.
Factors to be taken into account when conducting registrability and infringement
searches are:
• determining the correct classification of main and related classes of goods and/or
services to search;
• translations of marks, especially into official languages;
• review of marks that are phonetically, visually and audibly ‘confusingly similar’;
• replacing letters that are phonetically similar such as ‘c’ and ‘k’, ‘e’ and ‘i’ to disclose
marks that are visually or phonetically similar;
• marks with the same prefixes and/or suffixes in the relevant classes should be
compared;
• determining the correct classification of visual elements of device or logo marks
according to the Vienna Classification system;11 the system classifies pictorial elements
under ‘categories, divisions and sections’ and ascribes numbers to the various categories
so as to facilitate searching.
11 The International Classification of the Figurative Elements of Marks (Vienna Classification) published by the World
Intellectual Property Organization.

PAUSE FOR A unique system of putting a numerical value to a picture

REFLECTION How could a string of numbers possibly
identify this mark?
The Vienna Classification shows us how
this is done:
CATEGORIES: There are 29 categories
depicting all pictorial matter such as celestial
bodies (sun, moon, etc.), human beings,
animals, ironmongery, etc. and each category
is allocated a unique number. The categories
for the above mark are:
• category no. 2 (human beings),
• category no. 22 (musical instruments),
• and category no. 27 (forms of writing, numerals).
DIVISION: Each category will then be classified according to further ‘divisions’, defining each
potential category further. In this example, the division is 2.1, the numerical element
denoting men. For example, division 2.2 represents women, 2.9 represents human skulls,
etc.
SECTION: Each division is then broken down further into one or more potential ‘sections’.
The possible sections applicable to the above device are:
• 2.1.8 ‘acrobats, athletes, nude men, men practising sports’; and
• 2.1.9 ‘musicians, men with musical instruments, conductors of the orchestra’.
THE NUMERICAL CLASSIFICATION OF THE BT DEVICE is 2.1.8 and 2.1.9: all device/logo/
shape and related pictorial marks are classified in terms of the Vienna Classification on the
South African register. Thus, a search for pictorial marks in this example should be conducted
for Vienna Classification codes 2.1.8 and 2.1.9. The search would then disclose, inter alia,
the BT and human figure device. In this way, all potential ‘pictorial marks’ would be disclosed.
Additional Vienna codes may be used to identify marks incorporating musical instruments
and special script (fonts) in the same manner.
2.2.5 The registration procedure
2.2.5.1 Introduction
The Act and Regulations set out the procedures and the different steps to be followed by the
person applying to register a trade mark (the applicant) and by the Registrar of Trade Marks.
In the following section, important principles pertaining to the process will be dealt with.
2.2.5.2 The register and Registrar of Trade Marks

Section 185 of the Companies Act12 creates the Companies and Intellectual Property
Commission (CIPC). In terms of section 185, the ‘Registrar’ means the Commissioner
12 Act 71 of 2008.

appointed in terms of the Companies Act. The Commissioner in turn exercises the powers
conferred upon the Registrar in terms of the Trade Marks Act. The Trade Marks Office is
situated in Pretoria and has an official seal that is judicially noted. It is the seat of the
Registrar of Trade Marks. The Registrar of Trade Marks manages and controls the register of
trade marks – the database of all trade marks applied for and/or registered in South Africa.
As part of his duty to manage the trade marks register, the Registrar manages a team of
examiners who examine every trade mark application and determine whether, and subject
to which conditions, the application may proceed to registration.
2.2.5.3 The registration process

This registration process is set out schematically below as a brief introduction to the detailed
discussion of its various stages, which follows below.
PROCEDURE DESCRIPTION
Filing (lodging) The application is filed manually or electronically on a Form TM1.
Examination The Registrar examines the application approximately 9–12 months later and
issues an ‘official action’, a communication in which it is notified that the
application has been accepted subject to certain conditions, or refused on the
ground that it is non-distinctive or conflicts with the prior rights of a third party.
Official action received Three-month extensions can be obtained to allow the applicant to respond to
official actions (if any). If the Registrar agrees to unconditional acceptance of the
mark, the next step will be advertisement in the Patent Journal (see below). After
official actions have been dealt with by making written or oral submissions at
‘informal’ hearings, an automatic three month extension is applicable. Conditions
of acceptance may be waived or varied. If the application is provisionally refused
and it is not possible to overcome the Registrar’s objections or to meet his
requirements for acceptance, the application is refused or lapses and the process
is aborted. A refusal to accept an application or the imposition of conditions for
acceptance by the Registrar is subject to appeal to the High Court.
Official action After the terms of official actions have been complied with, formal acceptance
compliance usually follows within 2–3 months.
Acceptance issued by After acceptance of the application, It is incumbent on the applicant to arrange
the Registrar for advertisement of acceptance, whereafter the application will be published in
the Patent Journal within 1–2 months. This is dependent on the next forthcoming
publication date of the monthly Patent Journal.
Advertisement in the A period of three months for the noting of objections to an application is afforded
Patent Journal in terms of the Act. In the absence of any opposition, 6–9 months will elapse
before the Registrar issues the certificate of registration. This will be held in
abeyance if the mark is opposed by a third party.
Possible opposition In the event that an application is opposed by a third party the process will be
held in abeyance after the advertisement stage and the matter will proceed as
described in paragraph 2.6 below. If the opposition is unsuccessful, the process
will be resumed, but if the opposition is upheld, the application is refused and
the process is aborted.
Issue certificate of Thereafter, renewal every 10 years calculated from the date of application.
registration

2.2.5.4 Filing the application

Lodging a new application for the registration of a trade mark is a fairly straightforward
process. The Act requires that the application be made in the prescribed manner.13 The
Trade Marks Regulations deal with the practical issues and prescribe the form to be used
for the application (a form TM1 must be used as specified in the Regulations). The form
TM1 must contain the name and address of the applicant, its address for service of
documents, the class of goods/services in which the application is being filed, the
specification/description of goods/services, endorsements (if any), convention priority
claimed, a representation of the mark and the signature of the applicant or its authorised
agent. The Act and Regulations make provision for the submission of electronic
applications via the so-called ‘CIPRO portal’.14
Endorsements (when lodging an application)

In some instances it is essential, or at the very least prudent, to endorse the application so
as to further describe the essential features of the subject mark. As is discussed in paragraph
2.3 below, many different kinds of ‘signs’ or ‘marks’ can qualify as registrable trade marks,
including, for instance, shapes, patterns, containers, logos and words. In the case of unusual
trade marks the application often contains an endorsement to ensure that the trade mark is
adequately described.
For example, when filing an application for a ‘shape’ mark, i.e. a three-dimensional trade
mark, the application should be endorsed as follows: ‘The mark consists of the three-
dimensional shape and/or configuration of the goods as depicted in the representation
accompanying the application.’
If the applicant wants to obtain rights in a ‘container’ the application should be endorsed
as follows: ‘The mark consists of a container for goods having the appearance substantially
as depicted in the representation affixed to the application.’
If the mark comprises more than one element (for instance a container coupled with
ornamentation) one could endorse it as follows: ‘The appearance of the container comprises
its shape and the ornamentation applied to its surface and both these features separately
and in combination are essential features of the mark.’
In addition, when filing an application for a three-dimensional mark or container mark,
it is essential to provide a front, side and top view/perspective of the container or three-
dimensional mark.15
Convention application (priority claims)

A trade mark application may be based on an earlier application lodged in a ‘convention
country’. This facility derives from the Paris Convention for the Protection of Industrial
Property, 1883 (the Paris Convention), of which South Africa and virtually all countries in
the world are members. It provides for a system in terms of which member countries will
allocate a filing date for a trade mark application on the basis of the date on which the earliest
corresponding application was filed in a country which is a member of the Convention. In
terms of section 63 of the Act, it is possible to claim priority from an earlier trade mark
application filed in a different jurisdiction (i.e. a convention country) provided the South
African application is made within six months of the date of the first application. The Paris
13 S 16(1).
14 Reg 1 under the definitions section.
15 See paras 2.3.1 and 2.4.3.1 for a discussion of the registration of containers.

Convention, which is the foundation of the protection of the bulk of intellectual property
throughout the world, is also relevant to other areas of trade mark law and will be referred
to below in other contexts.
When so-called convention priority is claimed, the foreign filing date becomes the effective
filing date in South Africa and ultimately the date of registration of the trade mark. Confirmation
of the details of the foreign application must be lodged in support of such a ‘priority claim’,
either simultaneously with the filing of the South African application or within three months
of the date of lodging in South Africa, failing which the priority claim may expire and the actual
date of filing will become the ‘date of application’. The local application must correspond in all
respects with the foreign application and the South African application must cite the country,
application number and application date of the original foreign application.
2.2.5.5 Examination by the Registrar

Broadly speaking, a trade mark should be allowed to go through to registration if the
following conditions are met:
• The trade mark is distinctive and can function as a trade mark (i.e. is registrable as a trade
mark).
• No third party’s rights in a similar trade mark would be contravened as a result of the
registration of the trade mark.
Consequently, South Africa has an examination system for this, which means that every
application must be examined for compliance with the above two criteria before it can be
accepted for registration. See paragraph 2.4 for further discussion on these criteria for
registrability. After the trade mark application has been lodged, the Registrar and his team
of examiners will examine it and they may accept it unconditionally; accept it subject to
amendment, modification or conditions; provisionally refuse it, or refuse it outright.16
In practice, if the application is not accepted unconditionally, an ‘official action’ will be
issued. The application will not proceed to acceptance until the issues raised in the official
action have been addressed and the requirements imposed by the Registrar (as ultimately
formulated) have been met. Conditions for acceptance imposed by the Registrar may qualify
and limit the rights granted by registration and are generally aimed at protecting the interests
of the public or specific third parties with competing rights on the register. The applicant for
registration must respond to the official action within three months, or such further period
as the Registrar may allow.
Typical conditions imposed by the Registrar
Authority to act: If an application was lodged by an ‘authorised agent’,17 a power of attorney,

authorising the agent, must either accompany the application or be lodged before the mark
will be accepted.
Association of marks: The Registrar may require trade marks in different classes to be
associated with each other in terms of section 30 of the Act. This will occur when two or more
trade marks are so similar that they will cause confusion if they are owned by, and denote,
different parties. The purpose of an association is to ensure that all associated marks always
have common ownership. Associated marks are ‘linked’ together and cannot be assigned
16 S 16(2).
17 See s 2(1) of the Act for a definition of ‘agent’ and s 8(2), which relates to persons who may act in trade mark matters.

or transferred separately to different parties – they must be transferred together unless the
association is dissolved. An association can be to the advantage of a trade mark owner when
proof of use of a trade mark is needed – proof of use of an associated mark can (in certain
circumstances) be relied upon instead of use of the actual trade mark in dispute.18
Disclaimer of rights: When a trade mark contains elements of a non-distinctive character,19
which are common to the trade, or are reasonably required for use in the trade, the Registrar
may, as a condition of acceptance, limit the rights of the applicant by calling on it to disclaim
exclusive rights to such elements. For instance, a word mark for THE INSTITUTE OF
PROFESSIONAL TENNIS would in all likelihood only be accepted subject to disclaimers of
the individual words ‘institute’, ‘professional’ and ‘tennis’. The applicant would then obtain
rights in the overall mark, and not in the individual disclaimed features, but would not be
able to prevent the use of a similar descriptive mark such as THE INSTITUTE OF TENNIS
COACHING.
Examples of the most common disclaimers are given below:
• Disclaimer of features ordinarily represented: Rights are disclaimed in a word or an
element that is common in the class or trade in question, so that the common element
cannot be monopolised by any one entity. The disclaimer would read as follows:
‘Registration of this trade mark shall give no right to the exclusive use of the word … (or
letter/s or device) separately and apart from the mark.’
Or, where the trade mark comprises more than one descriptive word: ‘Registration
of this trade mark shall give no right to the exclusive use of the word … or the word …
separately and apart from the mark.’
• Disclaimer of features represented in a special form: This relates to non-distinctive
words written in a special format, or non-distinctive logos (‘devices’). The disclaimer
would read: ‘Registration of this trade mark shall give no right to the exclusive use of the
word … (or letter/s or device) (but shall grant rights in the representation thereof as
depicted in the trade mark accompanying the application) separately and apart from the
mark.’ or ‘Registration of this trade mark shall give no right to the exclusive use of the
letter ... except in the precise relation and association in which it is represented hereon.’
• Admissions: The practice of calling for ‘admission’ endorsements to be entered against
applications is unique to South African practice. It is resorted to by the Registrar in
respect of words or abbreviated forms/misspelt versions of words which are considered
to be reasonably required for use in the trade.
For instance, in the case of a trade mark incorporating the word X-TRA, an admission
would typically read: ‘Applicants admit that registration of this trade mark shall not debar
others from the bona fide descriptive use in the ordinary course of trade of the word EXTRA.’
The effect of the endorsement is that the trade mark owner cannot monopolise the
use of the descriptive word (the word EXTRA) but does obtain rights in the misspelt/
abbreviated form in which the word appears in the trade mark (the term X-TRA).
A practice has also developed for the entry of so-called ‘surname admissions’ which
would typically read: ‘The applicants admit that the registration of this trade mark will
not debar persons having the surname ‘SMITH’ from the bona fide use, in the course of
trade, of ‘SMITH’ as a surname.’ or ‘Registration of this trade mark shall not debar persons
having the surname ‘GRAHAMS’ from the bona fide use of their name in the ordinary
course of trade.’
18 S 30(5). See para 2.7.4.2 for further discussion on this point.

19 See para 2.4.2 for a discussion on distinctiveness of trade marks.

• Other common endorsements: Examples of other common endorsements which may

be required by the Registrar deal with: colour; geographical words; descriptive wording
appearing in a mark; marks in other languages; the meaning and/or derivation of a mark;
varietal plant names; limitation of the manner of use of the mark; blank spaces appearing
in a mark; consents to registration given by third parties and use of cross devices.
2.2.5.6 Refusal or provisional refusal of trade mark applications

The above paragraphs discussed the acceptance of a trade mark application subject to
certain conditions. The Registrar may also refuse the registration of a trade mark application.
The Registrar could do so on ‘absolute’ or ‘relative’ grounds. In practice, absolute grounds
refer to the inherent or intrinsic characteristics of the mark (for instance, it is descriptive and
does not qualify as a ‘mark’ or it incorporates prohibited matter).20 Relative grounds refer to
conflict with rights held by third parties, that is, if the mark clashes with another prior mark
which is similar or the same as the mark in question (in the same or related classes).21
There are various means of dealing with a refusal of an application. The most common
approach is to take the matter to an informal hearing before the Registrar of Trade Marks at
which oral arguments aimed at overcoming the obstacle to acceptance can be presented.
Written representations to the same end may also be made.
Where a conflicting mark is cited, the potential dispute with the third party can be
resolved and its consent to the use and registration of the subject mark can be lodged with
the Registrar. If a third party consents to the registration of the mark, the Registrar has no
discretion to refuse the registration.22
In many instances it is possible to negotiate the acceptance of an application with the
Registrar on a mutually satisfactory basis. When this happens, the application proceeds to
acceptance. Where the Registrar will not accept the application and finally refuses its
registration, the applicant can request written reasons for the refusal from the Registrar.23
Such written reasons can serve as the basis for bringing an appeal against the Registrar’s
refusal before the High Court.
2.2.5.7 Acceptance, advertisement and registration

Once an application has been placed in line for acceptance (i.e. all conditions for acceptance
have been met), a formal notice of acceptance will be issued by the Registrar and the
application will proceed to advertisement in the Patent Journal. The mark is advertised so
that any interested parties may have an opportunity to object/oppose the registration of the
mark. Objections or opposition to the registration of applications is dealt with in para 2.6.
If an application has been advertised as having been accepted and no objection has been
raised against it, a certificate of registration will be issued by the Registrar.
PAUSE FOR When may you use ® to indicate that your mark has been registered?
REFLECTION ®
It is not required by law to use either™ or to denote a trade mark but it is advisable to
do so as, at the very least, it conveys the information that the mark has either been
registered or that it is being used as a trade mark.
20 See para 4.2.3.2 for a discussion of the inherent characteristics of trade marks.
21 See para 2.6 for a discussion of third party oppositions to the registration of trade marks.
22 S 10(14) of the Act.

The ™ symbol is normally used to indicate that the owner is claiming trade mark rights
in the mark. The ™ symbol can be an indication that the trade mark is pending registration
or it can even be used where no application has been filed at all. It is a commonly used and
widely accepted symbol.
The® symbol denotes that the trade mark is registered. Use of the ® symbol in
conjunction with an unregistered trade mark is an offence under the Trade Marks Act.24
2.2.6 Amendment of trade marks and specifications of goods/services

In terms of section 25 of the Trade Marks Act, a registered mark may be amended if the
amendment does not ‘substantially affect the identity’ of the original mark as applied for. In
practice this principle is generally also applied to the amendment of marks which are the
subjects of pending applications.
This particular requirement has been interpreted in different ways by the court but, in
essence, if the salient features of the mark remain intact, the amendment should be allowed.
It is within the discretion of the Registrar to determine whether the amendment should be
allowed or not.
The meaning of what constitutes ‘substantially affecting the identity’ was considered
in Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson. 25 In this case, which
was debated in the context of whether a mark in use was the registered mark, the court
applied the ‘arresting features’ test – it was held that when the two marks (i.e. the mark as
registered and the mark as used) are considered side by side it should be clear that the
mark as used has retained the ‘arresting features’ of the registered mark. By parity of
reasoning, similar considerations should apply to the degree to which registered trade
marks can be amended.
In terms of the Nestlé case,26 the Registrar has an unfettered discretion in allowing a mark
that is the subject of a pending application to be amended as section 25 of the Act does not
apply to pending applications. While that may be so, it is submitted that the Registrar should
nevertheless apply those principles to the amendment of pending marks as a mark is
assessed as of the date of application (registration) and substantial changes to the initial
form of the mark or the specification of goods would be inappropriate.
In terms of section 23 of the Act, the Registrar is empowered of his own volition to correct
errors made in the register. He can also do so at the request of the trade mark owner. Such
powers include amendment of the specification of goods/services of a registered trade mark.
An amendment of the specification of goods/services of a registered trade mark should only
be allowed if it does not broaden the scope of the specification of goods or services of the
registered trade mark or prejudice the rights of third parties.
2.2.7 Renewal of trade marks

A registered trade mark is in force for a period of 10 years calculated from the date of
application. Trade mark registrations are renewable for further periods of ten years. The Act
and Regulations make provision for the late renewal and restoration of registered trade marks.27
24 S 62(1).
25 1968(4) SA 386 (T).
26 Société des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch) (01 October 2012); Société des Produits Nestlé
S.A. v International Foodstuffs Co 2013 JDR 2699 (GNP).
27 S 37 read with regs 26 and 27.

2.3 Nature and essence of a trade mark

A trade mark is, in essence, a mark which distinguishes one trader’s product or service from
a similar product or service of another trader. This section explains what criteria a sign must
meet in order to qualify as a ‘mark’ in terms of the Act and, in turn, what criteria a ‘mark’
must meet in order to be registered as a ‘trade mark’.
2.3.1 What is a ‘mark’?

Trade mark law is a ‘creature of statute’ and so the starting point is the definition of a ‘mark’
in section 2 of the Trade Marks Act. ‘Mark’ is defined as: ‘any sign capable of being
represented graphically, including a device, name, signature, word, letter, numeral, shape,
configuration, pattern, ornamentation, colour or container for goods or any combination of
the aforementioned’.
The essential elements of a ‘mark’ in terms of the definition

• It may be any ‘sign’ which is ‘capable of graphic representation’.
• A ‘sign’ may include any of the following (in other words the list is not exhaustive): a
device, name, signature, word, letter, numeral, shape, configuration, pattern,
ornamentation, colour or container for goods or any combination of the above.
Meaning of the word ‘sign’ and the phrase ‘represented graphically’

As neither the word ‘sign’ nor the word ‘graphically’ has been defined in the Act, the normal
dictionary meanings should be ascribed to them.
The New Shorter Oxford English Dictionary defines ‘sign’ as: ‘2 a mark, symbol, or device
used to represent something or to distinguish the thing on which it is put’.28 It is clear from
the above definition that a ‘sign’ must serve a distinguishing function.
The word ‘graphic’ of which ‘graphically’ is the adverbial form, is defined as: ‘2 Producing
by words the effect of a clear pictorial representation; vividly descriptive, conveying all...
details, clear, unequivocal. 3 Relating to or producing pictorial representations; of or
pertaining to drawing, painting, engraving, etching etc’. 29
The word ‘graphically’ presupposes clarity (as regards what the mark is) and it suggests
that the mark may be described in words (for instance by an endorsement in the register of
trade marks), should a pictorial representation not convey the entire ‘picture’.30
PAUSE FOR Graphical representation of three-dimensional marks

REFLECTION As the trade marks register was formerly a physical register (a book) (although it is
currently an electronic database), a mark must, of necessity, be capable of being
represented graphically and in two as opposed to three dimensions. In addition, all trade
mark applications that have been accepted by the Registrar are published in the Patent
Journal for potential opposition by third parties. Consequently, it is important to be able
to identify trade marks clearly in two-dimensional formats, duly endorsed, should the
exact nature of the trade mark not be apparent in two dimensions. A telling
28 The New Shorter Oxford English Dictionary vol 2 (1993) p. 2858; Merriam-Webster’s Collegiate Dictionary vol 1, 11 ed
p. 57.
29 The New Shorter Oxford English Dictionary vol 1 (1993) p. 1132.
30 See para 2.2.5.4 above.

example of where the two-dimensional representation of a three-dimensional mark was found

to largely nullify the trade mark registration occurred in the Cointreau case31 In this particular
case the court found that a three-dimensional mark (a container mark for a liqueur) must be
represented in such a way that all the dimensions are clearly visible. The particular
representation of the mark merely comprised a photograph of it if taken at an angle. It was
held that the court could not determine the extent of the monopoly granted based solely on
the two-dimensional representation. It was also held that it would not be possible to apply for
the amendment of the mark to show at least three dimensions as it would substantially affect
the identity of the original application as lodged.
A number of illustrations of what could constitute a ‘sign’ have been depicted in the table
below. These examples illustrate signs which could qualify as ‘marks’ in terms of the Act
(because they are capable of being represented graphically) and also illustrate the
combination of more than one sign in one mark. For the sake of clarity, suggested naming
conventions are used to distinguish between ‘types of marks’ as generally adopted in practice:
MARK NAMING CONVENTION COMMENT

REVLON A ‘word mark’
When words are not displayed in normal capital

letters in the register and special fonts are used,
Black Cat (special form) it is preferable to quote the wording and to
and cat device indicate that the words have been written in a
special format. The word ‘device’ is used to
indicate pictorial matter (a logo).
BT (special form) and

human figure device
It is preferable to describe the mark in sufficient

J (special form) in circle detail to make it easy to identify the main
and flower device characteristics and to distinguish it from other ‘J
(special form)’ marks.
If a mark exclusively constitutes a container, it is

preferable merely to describe what it represents
Lemon-shaped container
and to use the word container in the naming
convention.
31 Cointreau et Cie SA v Pagan International 1991(4) SA 706 (A).

MARK NAMING CONVENTION COMMENT
The quiver used on all Parker pens constitutes

Quiver ornamentation ornamentation on the pen as the clip could have
(the word arrow may also taken any form. The very distinctive format clearly
be used) on pen distinguishes Parker pens from the pens of
competitors.
This mark consists of two main elements, namely

the ‘word mark’ LE CREUSET coupled with the
distinctive shape features used in respect of this
Le Creuset (special form) specific style of cookware. The elements of the
and pot shape shape that are distinctive could include the
grooves on the lid, the spout, the suspension
hook on the handle and the combination of the
aforementioned elements.
The word ‘logo’ should be used sparingly and it is
preferable to reserve it for use in connection with
Reebok logo (or) the main pictorial brand representation, in this
dissecting arrows device instance, the REEBOK brand. Alternatively, one
could describe it as best possible, for instance by
stating what the logo represents.
This mark shows the use of the adidas ‘three
stripe’ pattern as applied to shoes. The mark does
not constitute the device of a shoe but rather
represents the way the pattern is applied to shoes
Three stripes on shoe
generally. To fully describe the mark, one would
pattern
have to enter an endorsement in the register to
describe it further, namely the mark is not a
picture or device but rather the pattern applied to
shoes generally.
Unlike the three stripe pattern illustrated above,

this particular mark constitutes the shape of the
Ankle boot shape and
entire shoe, coupled with specific ornamentation
ornamentation mark
which should be described/endorsed in the
register.
As stated above, it is best to reserve the use of

Toyota logo (or)
the word ‘logo’ to the main brand – that is, the
intersecting ellipses
device used on all (or most) of the goods and
device
services by the proprietor of the trade mark.

The signs included in the definition are not an exhaustive list

Any sign can qualify as a mark as long as it is capable of being represented graphically.
Applicants have even attempted to register scents, colours and sounds (loosely termed
‘non-traditional’ marks).
Non-traditional marks
Types of non-traditional trade marks include three-dimensional marks, colour marks,
holograms, motion/multimedia marks, position marks, gesture marks, olfactory (smell/
scent) marks, taste marks and texture marks.
In February 2009 the Registrar published guidelines in the Patent Journal for applications
for non-traditional marks. The guidelines were aimed at providing clarity on the
requirements to be met and endorsements to be entered in respect of non-traditional marks
before they can qualify for registration.
In the case of a non-traditional mark, the major problem is that it is often difficult to
provide an adequate graphic representation of it. The most important decision on this issue
is that of Sieckmann v Deutsches Patent-und Markenamt,32 where it was held by the European
Court of Justice (ECJ) that for a scent to be capable of graphic representation, the description
of the scent/mark must be clear, precise, self-contained, easily accessible, intelligible,
durable and objective. While theoretically it is possible for non-traditional marks to satisfy
the Sieckmann criteria, in reality it may be extremely difficult. On the facts of Sieckmann,
for example, a physical deposit, a written description and a chemical formula of the scent
were provided. However, the ECJ found that these representations were not sufficiently clear,
precise, durable, objective and intelligible for the mark to be adequately represented on the
register.
So-called ‘sound marks’ may be easier to register. These marks were identified as one of
ten ‘non-traditional’ marks that may be registered in terms of the Registrar’s guidelines
referred to above. In terms of the guidelines, sound marks must be reflected in a musical
notation on a stave. The musical notation can present practical difficulties as only a person
schooled in music will, by viewing the notation alone, be able to determine whether one
musical notation is ‘confusingly similar’ to another. A written description of the mark is
consequently required in addition to an analogue or digital recording of the mark.
The Registrar has granted trade mark registrations for the jingle ‘you got an uncle in the
furniture business’33 and for the Nokia ringtone.34
PAUSE FOR How would one endorse an application for the tune ‘Blue Danube’ in words?
REFLECTION An application for a trade mark for the first eight notes of the ‘Blue Danube’, composed
by Johann Strauss II, might typically be worded as follows: ‘The mark comprises a
distinctive sound sequence being the first eight notes of the musical work, the Blue
Danube, composed by J Strauss II. The mark is represented in the musical notation
accompanying the application and consists of the sound sequence (note – this is merely
an example and not the actual sound sequence) f1 – e1 – f3 – c2, sounded in the
tempered scale (a1 = 400 Hz). Sound 1 (f1) 689.5 Hz Sound 2 (e1) 659.3 Hz
32 [2003] RPC 685 (ECJ).

33 Trade mark registration no 2005/19695.
34 Trade mark registration no 2004/15073.

Sound 3 (f3) 689.5 Hz Sound 4 (c2) 1,046.5 Hz. The overall length of the sound design is
2 seconds. For an audio sample of the mark, an electronic audio file (sound clip) is available
from applicant’s representatives (Wave-Audio sound file - scanning frequency = 44.1 kHz,
resolution - 16 Bits Stereo) and a further copy has been lodged at the South African Trade
Marks Office in support of the application.’
A particular colour (or a combination of colours) may also qualify as a mark, as the word
colour has been included in the definition of a mark. Although a single colour would not
easily qualify for registration, a combination of unusual colours, narrowly defined, may well
be sufficiently distinctive to be registrable.
Typically, an application for the registration of a ‘colour mark’ must be endorsed with a
‘colour endorsement’. These endorsements should include Pantone colour codes. For
instance, a typical endorsement would read: ‘The combination of the colours lilac (Pantone
no. 123) and olive green (Pantone no. 456) is an essential and distinctive feature of the mark.’
For additional comments pertaining to the registration of colours as trade marks, see
paragraph 2.4.3 below.
2.3.2 What is a trade mark?

Once it has been established that a mark qualifies as a ‘sign capable of being represented
graphically’, it is necessary to establish whether the mark also qualifies as a ‘trade mark’ as
defined in section 2 of the Act. A ‘trade mark’ is defined as:
… other than a certification trade mark or a collective trade mark, [a trade mark is]
a mark used or proposed to be used by a person in relation to goods or services for
the purpose of distinguishing the goods or services in relation to which the mark is
used or proposed to be used from the same kind of goods or services connected in
the course of trade with any other person.
The essential elements of a ‘trade mark’

• Mark used or proposed to be used
• in relation to goods or services
• for the purpose of distinguishing them from the same kind of goods or services which
are connected in the course of trade with another.
Mark used or proposed to be used

Use of the word ‘mark’ in the definition of ‘trade mark’ illustrates that first and foremost a
trade mark must be a ‘mark’ – a sign capable of graphic representation.
The mark must be ‘used or proposed to be used’. In a number of jurisdictions around the
world (especially the United States of America and Canada), use prior to registration is
required before a mark can be registered. However, the phrase ‘used or proposed to be used’
in the Act clearly indicates that as long as the owner of the mark intends to use it, subject to
the further conditions imposed by the definition, it can qualify as a ‘trade mark’ even though
it might not already have been used. If, however, at the time of application there was no real
intention to use a mark as a trade mark, it may be invalid.35
35 See para 2.7.4.2.

The Act does not define ‘use’ as such, but does include provisions pertaining to the
interpretation of the word ‘use’ of a mark in section 2, which reads:
Use of a mark shall be construed as:

(a) the use of a visual representation of the mark;
(b) in the case of a container, the use of such container; and
(c) in the case of a mark which is capable of being audibly reproduced, the use of
an audible reproduction of the mark.
In relation to goods and services

If it is not the intention of the applicant to use the mark upon goods or in relation to services,
but for instance, the mark merely constitutes the creation of an independent work of graphic
art or a work of craftsmanship, then the work created may be protected in terms of copyright
law and not the law of trade marks.
For the purpose of distinguishing goods and services from the same kind of goods
or services which are connected in the course of trade with another person
The definition of ‘trade mark’ in the 1993 Act emphasises the ‘distinguishing function’ of a
trade mark – namely its ability to distinguish goods/services from those of another trader.
Since the introduction of the 1993 Trade Marks Act case law has also emphasised the
function of a trade mark as a ‘badge of origin’. This function of a trade mark is its ability to
guarantee to a consumer the identity of the origin of the goods.
The English case Glaxo Group v Dowelhurst Ltd (No 2)36 has been referred to in several
South African decisions.37 In this case, Laddie J held:
A trade mark is a badge, in the widest sense, used on or in relation to goods so as

to indicate source. That is to say that it is meant to indicate that goods are goods
of the proprietor … this is not the whole of the story. In each case, the mark is a
sign to the customer, both that the goods are the goods of a particular source
(whether he knows or cares what the source is) and that the proprietor of the mark
holds himself out as responsible for those goods and their quality. This
representation of responsibility for quality is inseparable from the mark’s function
as an indication of source … it is possible to look at a trade mark as a sign which is
used by the proprietor to mean ‘these goods are from me and are of a quality which
I am prepared to stand by’.
In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc,38 the court found that
… [the] function of the trade mark is to guarantee the identity of the origin of the marked
product to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the product or services from others which have another origin.
The two functions of a trade mark – the distinguishing function and the origin function – are
inextricably linked. Both are core to the very nature of a trade mark and a mark must be
36 [2000] FSR 529 (ChD).

37 Triomed (Pty) Ltd v Beecham Group plc [2001] 2 All SA 126 (T), 2001 (2) SA 522 (T), [2001] FSR 34 (T); Cowbell AG v
ICS Holdings Ltd 2001 (3) SA 941 (SCA).
38 [1999] RPC 117 (ECJ) at 133.

capable of fulfilling these functions to qualify as a trade mark. In short, a trade mark should
distinguish goods having one business source from those with a different source.39
The ability of a mark to distinguish the goods or services of one person from the same
kind of goods or services of another is essential for a mark to qualify as a trade mark.
Certification and collective trade marks are excluded from the definition in view of the very
nature of such marks (discussed in more detail in para 2.3.3 below).
The essential elements of what constitutes a trade mark are closely linked to the
requirements for registrability of trade marks, as set out in sections 9 and 10 of the Act. For
this reason, they are dealt with in greater detail in paragraph 2.4 below under the heading
‘Registrability of trade marks’.
2.3.3 Special trade marks (certification and collective marks)
2.3.3.1 Certification trade marks

Section 42 of the Act provides for the registration of ‘certification marks’. A certification mark
must be capable of distinguishing the goods or services certified by the trade mark owner
in respect of a certain characteristic of the goods or services (such as kind, quality, quantity,
intended purpose, value, geographical origin) from goods or services not so certified.
A typical example of a certification mark is the PURE WOOL mark that certifies that
products are made from pure wool.
The SABS logo is another example of a certification mark:
A certification mark cannot be registered in the name of a person who actually trades in the
goods for which registration is sought. A clothing manufacturer, for example, would not be
able to register the PURE WOOL mark. The mark must be owned by an independent,
certifying body.
An application for registration of a certification mark must be accompanied by a
statement to the effect that the trade mark applicant does not trade in the goods covered by
the application and by rules governing the use of the mark. The rules should set out:
• the conditions under which the mark may be used;
• the circumstances in which the trade mark owner will certify the goods or services; and
• the characteristics which are to be certified.40
2.3.3.2 Collective trade marks

A trade mark capable of distinguishing the goods of persons who are members of an
association from goods of persons who are not members thereof is protected as a collective
trade mark in terms of section 43 of the Act.
Section 43(2) makes it clear that geographical names or other indications of geographical
origin may be registered as collective trade marks. Provided that there are no earlier barring
applications or registrations it is accordingly possible to register, for instance, WILTSHIRE
as a collective trade mark for cheese manufactured by members of the Wiltshire Cheese
Makers Association. STELLENBOSCH WINE ROUTE is a good example of the collective mark
of the relevant association of wine farmers.
39 AM Moolla Group Limited and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA).
40 Reg 56(3) of the Trade Mark Regulations, 1995.

Unlike certification marks, collective marks are owned by associations which in fact do
trade in the goods/services covered by the mark. The mark WILTSHIRE is owned by the
Wiltshire Cheese Makers Association. Only members of this association who trade in
Wiltshire cheese may use this mark.
2.3.3.3 General
In general, the provisions of the Trade Marks Act apply to collective and certification marks
in the same way as they apply to conventional trade marks. This means that marks of this
kind must also be distinctive in respect of the relevant goods/services. However, because
of their functions, special considerations do apply to these kinds of marks. Marks which
would not normally be registrable as trade marks, such as geographical terms, could be
registered as certification or collective marks. Consequently, owing to the functionality of
these marks, the normal distinctiveness test would be modified and diluted for the type of
trade mark concerned.
2.3.4 Trade marks under the Intellectual Property Laws Amendment

Act 28 of 2013 (Indigenous Knowledge)
The provisions which have been introduced into law under the Intellectual Property
Laws Amendment Act 28 of 2013 (IPLAA) are discussed in some detail in chapter 8. A brief
summary of some of the provisions relating to trade marks is also given below. As
these provisions are new (at the time of writing IPLAA has not yet been brought into
operation and the amendments to the Trade Marks Act for which it makes provision have
not yet taken effect) and have not yet been applied or tested, and as Regulations are still
awaited, a very brief outline is given of the provisions, without any commentary or
discussion. Although this section of the chapter deals only with trade mark registration
and not with enforcement aspects (which are dealt with in later sections) all provisions
relating to traditional terms and expressions have been included in this section as they
are best dealt with together at this stage – until such time as they have received some
attention in the courts.
Sections 7–10 of IPLAA incorporate various new sections into the Trade Marks Act to
make provision for the protection of ‘traditional terms and expressions’ as certification or
collective trade marks or as ‘geographical indications’.
A ‘traditional term or expression’ is defined in section 8 of IPLAA as including ‘… an
indigenous term or expression and a derivative indigenous term or expression’.41 The terms
‘indigenous term or expression’ and ‘derivative indigenous term or expression’ are also
specifically defined in IPLAA:
An ‘indigenous term or expression’ is defined as meaning:
a literary, artistic or musical term or expression with an indigenous or traditional

origin and a traditional character, including indigenous cultural expressions or
41 S 8 of IPLAA; the amended s 2 of the Trade Marks Act. The definitions discussed in the text below have been similarly
inserted in the Trade Marks Act.

knowledge42 which was created by persons who are or were members, currently or
historically, of an indigenous community and which is regarded as part of the
heritage of the community.
A ‘derivative indigenous term or expression’ is defined as:
any term or expression forming the subject of this Act, applied to any form of
indigenous term or expression recognised by an indigenous community as having
an indigenous or traditional origin, and a substantial part of which was derived from
indigenous cultural expressions or knowledge irrespective of whether such
derivative indigenous term or expression was derived before or after the
commencement of the Intellectual Property Laws Amendment Act, 2013.
A ‘geographical indication’ is defined as:
in as far as it relates to indigenous cultural expressions or knowledge, …

an indication which identifies goods or services as originating in the territory
of the Republic or in a region or locality in that territory, and where a
particular quality, reputation or other characteristic of the goods or services is
attributable to the geographical origin of the goods or services, including natural
and human factors.
Section 9 of IPLAA introduces section 43B into the Trade Marks Act, covering the
registrability of traditional trade marks.
Section 43B(2) provides that a traditional term or expression is capable of constituting
either a certification or collective trade mark or a geographical indication (GI).
Section 43B(3) provides that a traditional term or expression might be registrable as a
certification or collective trade mark, but it must be capable of distinguishing the goods or
services of indigenous communities in respect of which it is registered or proposed to be
registered from the goods or services of another community or person. Sections 43B(4) and
(5) provide for the registration of GIs as certification or collective trade marks, provided that
the Registrar clearly indicates in the register that the mark is a GI.
Sections 43B(6)–(8) provide for other requirements which must be met before the
different types of traditional terms and expressions can be registered as trade marks or GIs.
42 ‘Indigenous cultural expressions or knowledge’ is defined in s 2 of the amended Trade Marks Act, as inserted by section
8 of IPLAA, as meaning:
any form, tangible or intangible, or a combination thereof, in which traditional culture and knowledge are
embodied, passed on between generations, and tangible or intangible forms of creativity of indigenous
communities, including but not limited to—
(a) phonetic or verbal expressions, such as stories, epics, legends, poetry, riddles and other narratives, words,
signs, names and symbols;
(b) musical or sound expressions, such as songs, rhythms, and instrumental music, the sounds of which are
the expression of rituals;
(c) expressions by action, such as dances, plays, ceremonies, rituals, expreessions of spirituality or religion,
sports, traditional games, puppet performances, and other performances, whether fixed or unfixed; and
(d) tangible expressions, such as material expressions of art, handicrafts, architecture, or tangible spiritual
forms, or expressions of sacred places.

These requirements would include, specifically in the case of a derivative indigenous term
or expression:43
• Prior informed consent must be obtained from the relevant authority or indigenous
community.
• Disclosure of the indigenous cultural expressions or knowledge must have been made
to the Companies and Intellectual Property Commission.
• A benefit-sharing agreement between the trade mark applicant and the relevant authority
or indigenous community must have been concluded.
In addition, section 43C of the amended Trade Marks Act expressly states that a traditional
term or expression cannot be registered as a trade mark if it is exclusively descriptive or has
become generic.44
Section 43D provides that the National Database, which is the database contemplated
under IPLAA for the purposes of copyright, will constitute a sub-register of the register of
trade marks for traditional terms and expressions and GIs. Section 43D also sets out the
procedure to be followed in applying for the registration of a traditional term or expression
or a GI.45
Section 43E stipulates that a registered indigenous term or expression or geographical
indication which has met one of the requirements of section 43B(8) – for example it has been
passed down from generation to generation – will endure in perpetuity. For other terms and
expressions, the standard provisions of the Trade Marks Act will apply in respect of their
duration.
Section 43F makes provision for trade mark infringement46 and/or the payment of
licence fees. The section stipulates that any use of a traditional term or expression before the
implementation of IPLAA will not amount to trade mark infringement. However, if continued
use after the implementation of IPLAA leads to commercial benefit, then a licence fee is
payable to the proprietor of the traditional term or expression. Detailed provisions on the
calculation and payment of the licence fees are contained in section 43F.
Section 43F(8) expressly excludes certain manners of use of registered traditional terms
or expressions from the ambit of section 43F. If a traditional term or expression is used for
any of the purposes listed below, the prior consent of the proprietor is not required, provided
that the use made is reasonable and the owner’s name is acknowledged:
(a) private study or private use;

(b) professional criticism or review;
(c) reporting on current events;
(d) education;
(e) scientific research;
(f) legal proceedings; or
(g) the making of recordings and other reproductions of indigenous cultural
expressions or knowledge for purposes for their inclusion in an archive,
inventory, dissemination for non-commercial cultural heritage safeguarding
purposes and incidental uses.
43 S 43B(6) of the amended Trade Marks Act.

44 See para 2.4 below for further discussion on these requirements for the registrability of trade marks generally.
45 See paras 8.3.8.4 and 8.3.9.1 for a further discussion of this topic.
46 See para 2.9 for further discussion on the general principles of trade mark infringement.

Additional provisions relating to traditional terms and expressions can be found in sections
43G–K (in the remainder of section 9 of IPLAA) and in section 10 of IPLAA. These provisions
fall outside the scope of this chapter but are discussed in chapter 8.
2.4 Registrability of trade marks
2.4.1 Introduction
Sections 9 and 10 of the Trade Marks Act set out the criteria which trade marks have to meet
in order to qualify for registration. Section 9 requires that trade marks should be distinctive
(whether inherently or through use). Section 10 places prohibitions on the registration of
marks (i.e. it lists ‘negative attributes’ which registered trade marks may not possess). Such
prohibitions can be intrinsic (i.e. they relate to characteristics of the marks themselves) or
they can be extrinsic (i.e. they arise out of conflicts with the rights of others). Section 10, for
example, prohibits the registration of trade marks that are descriptive, or serve a purely
‘functional role’ (are reasonably required for use by other traders), are generic, deceptive,
offensive; contravene the rights of others or are specifically prohibited for other reasons.
In short, a trade mark should only be allowed to be registered (and to remain on the
register) if:
• it is distinctive, as defined in section 9; and
• it does not contravene any of the provisions of section 10.
The following section discusses the requirements for registrability. These criteria, which are
considered by the Registrar in determining whether a trade mark can be registered or not,
are also the criteria which form the basis of an opposition to a trade mark, as set out in
paragraph 2.6 below.
2.4.2 Capable of distinguishing (section 9)

Section 9 of the Act reads as follows:
(1) In order to be registrable, a trade mark shall be capable of distinguishing the

goods or services of a person in respect of which it is registered or proposed to
be registered from the goods or services of another person either generally or,
where the trade mark is registered or proposed to be registered subject to
limitations, in relation to use within those limitations.
(2) A mark shall be considered to be capable of distinguishing within the meaning
of subsection (1) if, at the date of application for registration, it is inherently
capable of so distinguishing or it is capable of distinguishing by reason of prior
use thereof.
The essential elements of registrable trade marks are therefore:

• they must be capable of distinguishing the goods/services of one trader from the goods
and services of another;
• they must be capable of so distinguishing inherently or through prior use; and
• they must be capable of so distinguishing either generally, or through use within limitations.
Section 9 is in a sense a recapitulation of the definition of a ‘trade mark’ – once it can be

shown that a mark is capable of distinguishing the goods or services of one person or entity

from the same kinds of goods or services of another, it meets the minimum requirement for
what constitutes a ‘trade mark’ under the Act.
Capable of distinguishing the goods/services of one trader from the goods and
services of another
The phrase ‘capable of distinguishing’ means that when the mark is used it can differentiate
or distinguish the goods and services of one trader from those of another trader. The word
‘distinctive’ as applied to trade marks accordingly denotes this ability of a trade mark to serve
as a means of distinguishing or differentiating between the same or similar goods and
services of different traders.
The court has laid down guidelines for determining whether a mark is distinctive or not,
that is, whether it can perform a ‘distinguishing function’. The question is largely determined
by the facts of each case as presented in the evidence adduced. In Cadbury (Pty) Ltd vs
Beacon Sweets & Chocolates (Pty) Ltd47 the Supreme Court of Appeal decided that the
question of whether the trade mark LIQUORICE ALLSORTS was ‘capable of distinguishing’
should be decided by considering whether the name LIQUORICE ALLSORTS simply denotes
a product type or whether it was in fact the name (mark) of the manufacturer’s product. The
question the court asked was whether the mark only tells the customer what kind of goods
are being sold under that particular mark or whether the mark distinguishes/differentiates
a product which is being sold under a particular brand from the same kind of product sold
under a different brand.48 In this instance the court found that LIQUORICE ALLSORTS was
merely a description of a type of product and did not serve any distinguishing function.
Capable of distinguishing inherently or through prior use

A trade mark can be distinctive by virtue of its inherent qualities and characteristics, or it
can become distinctive through use.
Some marks, such as invented words having no meaning, are inherently capable of
distinguishing. Trade marks such as XEROX and KODAK are examples of invented words. On
the other hand, some marks are purely descriptive and can never qualify for registration. Along
the spectrum between these two extremes, there are marks that are descriptive to some degree
in that they allude to the nature or character of the goods to which they are applied but can
nevertheless serve a distinguishing function. This point is illustrated in the table below.
INVENTED WORDS WORDS THAT MAY WORDS THAT BECOME DESCRIPTIVE WORDS
(usually very ALLUDE TO THE GOODS DISTINCTIVE THROUGH USE (non-distinctive)
distinctive) (can be sufficiently (acquired distinctiveness
distinctive to qualify for through use s 9(2))
registration)
KODAK PENDAFLEX MINI APPLE
(it alludes to a (a general word to describe (when used upon or
suspendible flexible file something small but when used in relation to fruit/
but most certainly serves extensively on cars and apples)
a distinguishing function) evidence of distinctiveness is
adduced, serves a
distinguishing function)
47 [2000] 2 All SA 1 (A), 2000(2) SA 771 (SCA).

48 See also Beecham Group plc v Triomed (Pty) Ltd [2002] 4 All SA 193 (SCA); 2003 (3) SA 639 (SCA); [2003] FSR 475 and
the discussion on it in para 2.4.3.1 below.

Certain words, surnames and devices may not be ‘capable of distinguishing’ until they
have been used extensively. Section 9(2) specifically makes provision for such marks to be
registered. Examples of such marks include common surnames (e.g. Botha or Buthelezi for
transport services), a word such as MINI (for motor vehicles) or BUDGET (for car rental
services) or TRACKER for vehicle tracking services.
In such a case, it is often necessary to provide evidence of the use of the trade mark,
proving that it has in fact become distinctive through use, before it will be accepted for
registration. Such evidence would typically be submitted on affidavit, by or on behalf of the
trade mark applicant. The evidence would include the following:
• The date the trade mark was first adopted and first used.
• Confirmation that the mark has been used upon or in relation to all the goods and
services as included in the application.
• Evidence of use of the mark prior to the date of application is essential.
• Examples showing how the mark has been used and applied in the trade (for instance
directly upon the goods, on wrappers, on invoices, etc.).
• Confirmation that the mark has been used continuously since the date of first use.
• Annual turnover figures for each of the past five years (it is not the actual term of use that
is the deciding factor but rather the extent of use). If any year shows an appreciable drop
in the extent of use, the reasons should be stated.
• Promotional material in which the trade mark is displayed – for instance price lists,
catalogues, press advertising, internet usage, etc. Specimen material should be annexed and
the names of journals/magazines listed. Ideally, proof of advertisements should be annexed.
• Gross advertising expenditure for each of the past five years in South Africa.
• Evidence of international use and promotion. Although only use and advertisement in
South Africa are strictly relevant, use elsewhere may be of persuasive value.
• Evidence of any international trade mark registrations may also be of persuasive value.
• Special considerations pertaining to methods of use, franchising and licensing of rights
etc. may be relevant to show that the mark has acquired distinctiveness.
In some instances, no amount of prior use will render a mark, or part of a mark, sufficiently
distinctive to qualify for registration. This point was decisively illustrated with reference to
the ESTEE LAUDER BEAUTIFUL trade mark which Estee Lauder applied to register in
respect of ‘perfumes, eau de perfumes and colognes’. In terms of section 18 of the Trade
Marks Act 62 of 1963 (the predecessor of the present Act, which was in force at the time), the
Registrar was empowered to call for a disclaimer of rights in respect of any part of a mark
considered to be non-distinctive. The Registrar called for such a disclaimer in respect of the
word ‘beautiful’, holding that the word ‘beautiful’ was incapable of being the subject of trade
mark rights in relation to perfumery. The Registrar’s decision was taken on appeal to the
court and was upheld in Estee Lauder Cosmetics Ltd v Registrar of Trade Marks.49
The court held that the word ‘beautiful’ cannot form the subject matter of exclusive rights
in relation to perfumery no matter what the extent of the prior use was. In coming to its
decision the court held that it is a well-established principle that a laudatory epithet cannot
be made the subject of a trade mark monopoly since this would involve an undue limitation
on the rights of others to the free choice of language in describing and advertising their goods.
It held that there are obviously certain laudatory words, such as ‘excellent’, ‘very good’ or ‘first
class’ that are in such common and universal use that no amount of use could ever render
49 1993 (3) SA 43 (T).

them distinctive. It went on to say that there are no doubt many other words which, although
laudatory in their effect, may be adapted to distinguish or may, by reason of exclusive use,
acquire that character. However, the court held that the word ‘beautiful’ is not such a word.
Generally or subject to use within limitations

In some instances, before the Registrar will allow a mark to proceed to acceptance and
registration, certain conditions which place limitations on the rights arising from registration
will be imposed.50 The effect of such limitations is usually to narrow the scope of the trade
mark rights so as to render the trade mark distinctive within the parameters imposed by the
limitations. For instance, trade marks that incorporate non-distinctive words or devices may
be made subject to disclaimers of rights to those features, or the Registrar may require that
the manner of use of the mark must be qualified by confining it to particular goods.
By way of example, devices featuring human figures are very common on the register
and in use and it would be inappropriate for rights in the use of human figure devices per se
to be granted to a single trader as this would unduly impact on the rights of others. The
Registrar would then call for a disclaimer (limitation of rights) to be entered which makes it
clear that exclusive rights are not granted in respect of human figure devices in general, but
only in respect of the particular representation of a human figure. Such a disclaimer would
typically read ‘Registration of this trade mark shall give no right to the exclusive use of a
human figure device (but shall grant rights in the representation thereof as depicted in the
trade mark accompanying the application), separately and apart from the mark.’
Thus, by limiting the rights (and consequent use) in a trade mark, the distinguishing
function – the ability to differentiate the products of different traders – can be achieved.
2.4.3 Disqualifications from registration (section 10)

Once a mark has passed the section 9 test of being ‘capable of distinguishing’, it still needs to
be judged against the provisions of section 10 before it can be registered. The preamble to
section 10 qualifies the entire section and reads: ‘The following marks shall not be registered
as trade marks or, if registered, shall, subject to the provisions of sections 3 and 70, be liable to
be removed from the register:’ The section lists several specific grounds in its subsections on
which a trade mark is prohibited from being registered. These grounds are discussed below.
2.4.3.1 Lack of intrinsic registrability

Sections 10(1), 10(2), 10(5), 10(11) and 10(13) of the Trade Marks Act set out the circumstances
under which a mark will be refused registration due to a lack of intrinsic registrability.
Section 10(1)
Section 10(1) provides that a trade mark application can be opposed on the basis that
the subject mark does not ‘constitute a trade mark’.
In broad terms, to constitute a ‘trade mark’,51 the mark must:
• be capable of being represented graphically;
• be used or proposed to be used;52
• be capable of distinguishing the goods or services in relation to which it will be used from
the same kind of goods or services of others.
50 See para 2.2.5.5 above for a discussion on conditions imposed during the examination process.
51 S 1 of the Trade Marks Act, definitions of ‘mark’ and ‘trade mark’; see also para 2.3.
52 This refers to use within the meaning of ss 2(2) and 2(3) of the Trade Marks Act.

A mark will be refused registration if it does not meet any one of these criteria.
The primary purpose of section 10(1) is to ensure that only signs which are in fact capable
of functioning as trade marks can be registered. A mark that, for example, is intended for
ornamentation only and is not intended to serve the purpose of a trade mark cannot be
registered as a trade mark. So, too, a mark that is not capable of distinguishing or of serving
as a badge of origin cannot be registered. 53
Section 10(2)
This subsection reads as follows:
(2) a mark which-

(a) is not capable of distinguishing within the meaning of section 9; or
(b) consists exclusively of a sign or an indication which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical
origin or other characteristics of the goods or services, or the mode or time
of production of the goods or of rendering of the services; or
(c) consists exclusively of a sign or an indication which has become customary in
the current language or in the bona fide and established practices of the trade;
Marks of this nature are precluded from registration.

Section 10(2) links closely with section 10(1). Section 10(2) effectively precludes the
registration of marks which are inherently non-distinctive unless they can be shown to have
become distinctive through use. Section 10(2) should be read with section 9, which requires
that a trade mark must be capable of distinguishing the goods or services in relation to which
it will be used from the same kind of goods or services of others.
More particularly, section 10(2) precludes the registration of marks in the following
circumstances:
Section 10(2)(a): The mark was not inherently distinctive, nor had it become capable
of distinguishing through use at the time the application was filed.
The mark must be able to serve as a badge of origin.54 It must appear to a consumer to be a
trade mark or brand for the product, clearly differentiating the particular product from other
similar products on the market.
Trade marks such as TRACKER and PURITY are examples of trade marks which are, on
the face of it, exclusively inherently descriptive but which have, as a result of extensive use,
become capable of distinguishing – that is, the mark’s ordinary meaning has almost
disappeared and been replaced with a new secondary meaning. These trade marks are
recognised immediately and spontaneously as brands and not as common English words.
This kind of secondary meaning would need to be shown to have existed at the time when
the application for registration was filed.55
Section 10(2)(b): The mark is exclusively descriptive and is reasonably required for use
by third parties because it serves in trade to designate certain characteristics of the goods in
question.
Section 10(2)(b) lists a number of marks which are not registrable, namely those
consisting exclusively of a sign or indication which may serve in trade to designate certain
53 See para 2.3.2 above.


qualities. The trade mark must be exclusively descriptive before it will refused registration
on this ground – it can still be registered if it alludes to certain characteristics of the products,
but is not exclusively descriptive.
It is possible that the mark as a whole is distinctive but that a particular individual feature
is descriptive, in which case the mark may be registrable subject to a disclaimer of the errant
feature.56 In determining whether the mark is exclusively descriptive, the word should be
looked at through the eyes of the average consumer (how would he or she see the word), rather
than, for example, looking at a dictionary definition taken in isolation.57
Marks detailed in the subsection as being descriptive include the following:
• Designation of kind
Clearly a mark that merely describes what kind of product or service is on offer can never
serve a distinguishing role. The word ‘apple’ for instance is simply a ‘designation of kind’
if used in relation to fruit, although not when used as a ‘record label’ or as a brand for
computer equipment – in which event it is distinctive. In the LIQUORICE ALLSORTS
case,58 it was held that the mark LIQUORICE ALLSORTS was merely a description of the
product. Similarly, the court found in Online Lottery Services (Pty) Ltd v National Lotteries
Board59 that as at the date of application for registration of the word ‘lotto’ in respect of
gaming services, it was simply a generic term used to describe a kind of service.
• Designation of quality and quantity
Reference to quality would disqualify words or phrases which are exclusively laudatory
in nature such as ‘super’ or ‘the best’. Reference to ‘quantity’ is aimed at the use of purely
descriptive indications of exactly that, such as ‘king size’ or ‘5 litres’. This does not
preclude the registration of numerals (such as 4711) which are meaningless in the context
or numerals used in combination with other words, devices, etc.
• Intended purpose, value and method or time of production
The use of terms exclusively denoting the intended purpose of particular goods or services,
such as ‘car wash’, or the value of such services, such as ‘cheap’, would clearly not serve any
distinguishing function; such terms are descriptive. Should exclusive rights be granted in
respect thereof, it would inconvenience other traders who would like to use the particular
descriptive terms. The same principle applies to the method or time of production, which
cannot be distinctive and may be reasonably required for use by other traders to describe
their goods or services, or particular characteristics of their goods or services.
• Geographical origin
‘Iceland’ when used as a mark in relation to bananas could well be sufficiently distinctive
to qualify for registration as it is not a region where one would expect bananas to be
grown. The same cannot be said for the use of ‘Iceland’ on snow boots. This provision
has been inserted to protect traders in the same geographical area so that they may use
a geographical name in a descriptive sense.
Section10(2)(b) deals only with ‘normal’ trade marks as opposed to collective and
certification marks and geographical indications that may include reference to
geographical names. For further information pertaining to collective and certification
marks, see paragraph 2.3.3 above, and in regard to geographical indications see
paragraph 2.3.4 above.
56 See para 2.2.5.5 on disclaimers.

57 Hasbro Inc v 123 Nahrmittel GmbH [2011] FSR 539 (ChD); Registrar of Trade Marks v Wassenaar 1957 (4) SA 513 (A);
On-Line Lottery Services (Pty) Ltd and another v National Lotteries Board and Others [2009] 4 All SA 470 (SCA).
58 Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and Another 2000 (2) SA 771 (SCA).
59 [2009] 4 All SA 470 (SCA).

The Appeal Court, in the Century City case60 dealt extensively with the law pertaining
to geographical marks. The following principles were laid down, after placing the
question in historical perspective:
◆ The prohibition is aimed at a mark that consists of a geographical name ‘without more’.
It would, for instance, not include the use of a device that incorporates a geographical
name. The use of the word ‘exclusively’ means that, for instance, ‘Gordon’s London
Gin’ would be registrable whereas ‘London’ would not, when used in relation to gin.
◆ The judge stated that ‘Bloemfontein’ could well qualify for registration in relation to
gin whereas ‘London’ would not in view of its association with gin from at least the
18th century, an association which Bloemfontein does not share.
◆ The mark must be assessed with reference to the goods and services concerned and
to associations the relevant consumers would make in relation to it (i.e. would a
purchaser of ‘Iceland’ bananas expect them to emanate from Iceland?).
• Other characteristics
The use of the above phrase merely indicates that the list of ‘marks’ excluded from
registration (on the grounds that they are not distinctive) is not exhaustive and other
factors may render a mark non-distinctive.
Section 10(2)(c): The mark consists exclusively of a sign that has become customary in the
current language or in the established practices of the trade.
Section 10(2)(c) deals with marks which, while not inherently descriptive, have become
‘descriptive’ through the manner of their use. When a mark becomes ‘customary in the
current language’ or in the ‘established practices of the trade’, it essentially means that the
word/mark has become ‘generic’.
The mark will be refused registration if it is perceived as a generic term by the trade in
question – that is by the target consumers for the goods in question.
Marks used to describe new inventions stand a chance of becoming generic if the mark
becomes, through use, the only (practicable) word to describe the article, for instance
‘Windsurfer’ and ‘Jacuzzi’.
Section 10(5)
As mentioned above, a mark can be almost any sign which is capable of being represented
graphically. This would include colours, configurations, patterns or shapes.
Section 10(5) provides very specifically, however, that a colour, configuration, pattern or
shape can only be registered as a trade mark if it is distinctive – it cannot simply result from
the nature of the goods or be necessary to obtain a technical result.61 No amount of use
would render such a mark registrable.
PAUSE FOR Could the shape of a KITKAT chocolate be registrable as a trade mark?
REFLECTION An example of a shape which would most likely not be precluded by section 10(5) would be
the shape of a KITKAT chocolate. Even if the packaging and the word marks were removed,
the shape of the KITKAT could act as a trade mark on its own and signify to a consumer that
this particular chocolate is a KITKAT chocolate, with unique KITKAT qualities.
60 Century City Property Owners Association v Century City Apartments Property Services CC and Another [2010] 2 All SA
409 (SCA).
61 Beecham Group plc v Triomed (Pty) Ltd [2002] 4 All SA 193 (SCA).

The shape does not in any way result from the nature of the chocolate; nor is it dictated by the
function of the product.62 The same would apply to TOBLERONE chocolates.
Section 10(5) attempts to strike a balance between the rights of proprietors of registered trade
marks and further developments in industry. Granting a monopoly in respect of the use of a
particular shape, configuration, colour or pattern where it is required to achieve a specific
technical result would limit the freedom of choice of competitors to use such functional
features. A practical example of a mark which could be necessary to obtain a technical result
is the colour silver for emergency blankets. Silver-coloured foil ‘blankets’ serve a technical
function in reflecting or retaining heat. If the colour silver were to be registered in connection
with emergency blankets, this would give one trader an unfair monopoly and unduly hamper
competitors in their business. On the other hand, the shape of the WEBER braai cannot be
said to be necessary to obtain a specific technical result, as the same result could be achieved
by employing a different shape.63
Similarly, if a colour serves no ‘technical’ function in respect of particular goods and serves
to differentiate the relevant goods from those manufactured by others, there is no prohibition
against allowing such colour to be monopolised. This is illustrated in the American case In re
Owens-Corning Fibreglass Corp64 in which the applicant applied for the registration of the
colour pink in respect of fibreglass insulation and the court granted the application. It held
that the colour pink served purely as ornamentation and did not inhibit competition. The
colour did not result from the manufacturing process and had to be applied to the goods as
an additional step. Thus, the colour pink served a purely ‘distinguishing’ function and
absolutely no ‘technical’ function. Indeed, it would have been easier and cheaper for the
manufacturer to retain the original (rather non-distinctive dull grey) colour of the product.
PAUSE FOR Will we ever run out of colours?

REFLECTION The ‘colour depletion doctrine’: In any particular field, there is a limited number of colours
available for use. If a colour is allowed to be registered as a trade mark, then the
development of a particular art or industry could be limited. For a colour to be registrable,
it must be non-functional and non-ornamental and must not deprive competitors of a
reasonable right to use the particular colour. It must also have acquired a secondary
meaning – as the facts showed in the Owens-Corning case.
Section 10(11)
Similarly to section 10(5), section 10(11) provides that a mark which consists of a container
for goods or a configuration, colour or pattern of goods cannot be registered as a trade mark
if the registration of the mark is likely to restrict the development of any art or industry.
The purpose of this subsection is to preclude from registration marks which are
reasonably required for use in the trade and the registration of which would inhibit others
from developing new products or designs of products. As a general proposition, the closer
a container, configuration or shape is to being purely functional, the more likely it is to limit
the development of any art or industry. This exception relates to goods only.
62 See para 2.7.4.1 for a discussion on Société des Produits Nestlé S.A. v International Foodstuffs Co 2013 JDR 2699 (GNP);
2013 BIP 320 (GNP) in which precisely this question was raised.
63 Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd 1992 (2) SA 489 (A).
64 774 F 2d 1116 (1985).

Sections 10(5) and 10(11) are aimed at balancing the protection of genuine creative output
and the granting of monopolies over matter which should in fact fall within the public domain.
While the intention behind the protection of intellectual property is to encourage innovation,
it can lead to the restriction of innovation and anti-competitive behaviour if monopolies are
granted over matter which should be free to be utilised by all in the pursuit of business.
PAUSE FOR A registrable shape?

REFLECTION The effect of sections 10(5) and 10(11) was considered fully in Beecham Group plc and
Others v Triomed (Pty) Ltd.65 The case also illustrates the interplay between sections 9
and 10(1).
In this case, Beecham Group
plc obtained registration of a
shape trade mark (the shape of
a tablet) in respect of antibiotics
and Triomed had imported a
tablet with the same shape and
composition.
The advertisement for the
application in the Patent Journal
is set out alongside.
As can be seen, the mark
was endorsed as follows: ‘The
mark consists in the shape and
curvature configuration of a
tablet substantially as shown in
the representation.’
It was held by the court a quo66 that the nature of the mark was not sufficiently clear to
enable the public to know with sufficient certainty what the scope of the monopoly was.
On appeal, the Supreme Court of Appeal held that there was no inherent objection to a
trade mark registration relating to a substantially ‘oval and bi-convex tablet’ – in other words,
the shape of a tablet could, in principle, be distinctive and constitute a trade mark. The
question on appeal, though, was whether the particular tablet shape in dispute could remain
registered as a trade mark.
The court needed to determine whether the trade mark registration in fact ‘constituted
a trade mark’ in terms of section 10(1). The court held that the test is whether Beecham
intended to use the shape to distinguish its tablet from those of competitors – did it intend
the shape of the trade mark to serve a ‘distinguishing function’? Alternatively, one could ask
whether a pharmacist would see the tablet shape as a guarantee that the tablet was
Beecham’s – did it intend the shape of the tablet to serve an ‘origin function’. If so, then the
shape of the tablet would be serving a trade mark function. This led to determining whether
the shape mark was ‘capable of distinguishing’ in terms of section 9. The court found that
because another company was producing a tablet with the same shape at the time it was
launched, it was not inherently distinctive and nor had it been shown to have become
distinctive through use. The court found that no pharmacist would regard the shape alone
as an indication that the product emanated from a particular manufacturer.
65 [2002] 4 All SA 193 (SCA).

66 Triomed (Pty) Ltd vs Beecham Group plc [2001] 2 All SA 126 (T).

Specifically with regard to sections 10(5) and 10(11), the court found that the shape of
the tablet was necessary to obtain a technical result as the evidence had shown that the oval
shape was important for the ease and safety of swallowing tablets and for coating them and
preventing them from crumbling. The shape provided a reasonable technical solution to a
problem and consequently the registration of the mark was contrary to sections 10(5) and
10(11). The appeal was dismissed and the trade mark was cancelled.
Section 10(13)
Section 10(13) provides that a trade mark cannot be registered if it is likely to confuse
consumers because of the way in which it is used.
A trade mark cannot, in other words, be ‘misdescriptive’ and create the impression that the
product on which it is used has certain characteristics which it in fact does not have. For
example, a trade mark such as FRUIT-A-LICIOUS cannot be used for goods that do not
contain fruit. If, consequently, a trade mark contains an allusion to a particular product,
then its use must be restricted to that product. If a mark is deceptive only for some goods
contained in the specification of goods and not for others, then it should be possible to
change the specification to delete the problematic goods.
This provision only applies, of course, where confusion is otherwise likely to result. In the
case of a trade mark like APPLE, no confusion is likely if such a trade mark is used in connection
with computers as no consumer would think that a computer is edible. The test to be applied
is whether the use is likely to mislead reasonably well-informed and circumspect customers.
PAUSE FOR Inherent registrability: a summary

REFLECTION In summary, a mark lacks inherent registrability if:
• It does not constitute a trade mark (s 10(1)).
• It is not distinctive (s 10(2) and s 9).
• It constitutes a shape, configuration, pattern or colour which is necessary to obtain a
specific technical result or results from the nature of the goods themselves (s 10(5)).
• It constitutes a container, configuration, pattern or colour which could, if registered,
limit the development of art or industry (s 10(11)).
• It could, as a result of the way in which it is used, deceive or confuse consumers (s
10(13)).
2.4.3.2 Prohibited marks

There are certain kinds of trade marks which are expressly prohibited from being registered.
State-owned marks are one example. Sections 10(8), 10(9) and 10(10) provide protection
against registration for marks of this kind.
Section 10(8)
Section 10(8) prohibits the registration of a trade mark which consists of or contains the
national flag, armorial bearings, state emblem, official signs or hallmarks of South Africa
or of a convention country67 without due authorisation.
This subsection deals with the prohibition of the registration as trade marks of national flags,
heraldic representations (or imitations thereof ), armorial bearings, state emblems, official
67 See para 2.2.5.4 above.

signs or hallmarks of South Africa, any Paris Convention country or of international

organisations of which one or more Paris Convention countries are members, without
authorisation. The Registrar has a discretion in certain instances to allow an application for
a mark of such a nature to be registered. For instance, he may register a mark comprising a
national flag if he is of the view that the specific manner of use in the trade mark in question
is not likely to mislead the public into believing that a connection exists between the
government in question and the proprietor of the mark.
Save for national flags (or heraldic imitations thereof), the prohibitions are subject to the
relevant country or international organisation’s notifying the South African authorities in
accordance with the provisions of the Paris Convention that it desires to protect that emblem,
official sign or hallmark, name or abbreviation, as the case may be.
Section 10(9)
Section 10(9) prohibits the registration of a mark which contains any word, letter or
device indicating state patronage.
Unlike section 10(2), this subsection not only prohibits marks which consist exclusively of
certain elements but prohibits any mark which contains words/logos indicating state
patronage. Thus, a composite mark consisting of, for instance, a distinctive logo coupled
with wording such as ‘by appointment of the State President’ would be refused.
Section 10(10)
Section 10(10) prohibits the registration of marks which have been specifically
prohibited in the Trade Mark Regulations.
To date, no particular marks have been prohibited in terms of the Trade Mark Regulations.
It is, however, fairly common for marks to be prohibited from use in terms of other legislation,
most notably, the Merchandise Marks Act.68 Such notices can be fairly straightforward or
more extensive in nature and can even regulate the use of certain descriptive wording. From
a purely trade mark perspective, marks such as the 2010 Fifa World Cup series of marks have
been prohibited from being used as trade marks by unauthorised parties.
As mentioned, the use of purely descriptive words may also be prohibited. Perhaps the
most telling examples are notices proposing to prohibit the use of terms such as ROOIBOS
and HONEYBUSH.
PAUSE FOR Example of a notice published under the Merchandise Marks Act as published in
REFLECTION the Government Gazette69
The wording of such a notice, published by the Minister of Trade and Industry, who is
ultimately responsible for registration and enforcement, is set out hereunder:
NOTICE 911 of 2013

DEPARTMENT OF TRADE AND INDUSTRY
MERCHANDISE MARKS ACT, 1941(ACT 17 OF 1941)
FINAL PROHIBITION ON THE USE OF CERTAIN WORDS
I, Dr Rob Davies, Minister of Trade and Industry, in pursuance of the requirements of Section
13 of the Merchandise Marks Act, (Act 17 of 1941), hereby publish the Final
68 Act 17 of 1941.
69 GN 911, GG 36807, 6 September 2013.

Notice in terms of Section 15(1) of the said Act, on the use of the words indicated hereunder
in connection with any trade, business, profession, or occupation or in connection with a
trade mark, mark or trade description applied to goods, other than the use thereof by SARC
members or any other party in accordance with the “Rules on Use for Rooibos”, published
as annexure to this final notice.
Proprietors of prior identical or similar marks already in use will not be affected by this
prohibition.
ROOIBOS
RED BUSH
ROOIBOSTEE
ROOIBOS TEA
ROOITEE
ROOIBOSCH
Dr Rob Davies, MP
Minister of Trade and Industry
Section 10(10) will not form the basis of any refusal of a mark until such time as notices are
published in terms of the Trade Mark Regulations. However, where there is a statutory
prohibition on the use of a mark, an application for its registration may be refused in terms
of other subsections, for instance section 10(12), as being contrary to law.70
2.4.3.3 Proprietorship and good faith

A trade mark must be filed in good faith by its true proprietor and with the intention of using
it as a trade mark. Sections 10(3), 10(4) and 10(7) prohibit the registration of trade marks
which do not meet these requirements.
These provisions would not usually be cited by the Registrar as objections to the
registration of trade marks; they would more commonly form the grounds of opposition by
third parties. These sections are consequently discussed in more detail in paragraph 2.6
below under the heading ‘Trade Mark Oppositions’. However, for the sake of completeness
very brief information regarding these sections is given below.
Section 10(3)
Section 10(3) provides that a trade mark application must be filed by the ‘true
proprietor’ – the person who adopted the mark in good faith with the intention of using
it as a trade mark.
A trade mark ‘proprietor’ in the trade mark context means the person who originated,
adopted or acquired the trade mark.
Section 10(4)
Section 10(4) provides that a trade mark applicant must have a bona fide intention to
use the mark as a trade mark.
The applicant must simply have an intention to use the mark as a trade mark at some point in the
future, whether himself or through a licensee (even if such licensee has not yet been appointed).
70 See para 2.6.2.4 below.

Section 10(7)
Section 10(7) provides that an application to register a trade mark cannot be made in
bad faith.
This subsection has regard to the intention or motivation of the applicant in filing the
application – the motivation should not, for example, be malicious or otherwise in bad faith.
2.4.3.4 Third party rights

Section 10 also prohibits the registration of marks which contravene the existing rights of others.
These prohibitions are covered by sections 10(6), 10(12), 10(14), 10(15), 10(16) and 10(17).
While the Registrar may refuse registration of a trade mark on these grounds, it is more
common for objections of this nature to be the subjects of oppositions by third parties. See
paragraph 2.6.2.4 for a full discussion on third party oppositions based on these sections.
Section 10(6)
Section 10(6) provides protection for well-known trade marks.
A trade mark application will be refused registration in terms of section 10(6) if:
• on the date of application, it constitutes, or the essential part of it constitutes, a
reproduction, imitation or translation;
• of a trade mark which is entitled to protection under the Paris Convention as a well-
known trade mark;
• and it is to be used, or intended to be used, for goods or services identical or similar to
the goods or services in respect of which the trade mark is well known;
• and such use is likely to cause deception or confusion.
Section 10(12)
Section 10(12) provides that if a mark is inherently deceptive or its use would be likely
to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to
give offence to any class of persons, then it cannot be registered.
Section 10(12) is relied upon most often where another’s trade mark has been used for a
period of time and has acquired a repute (whether or not it has been registered) and the use
of a similar mark by the applicant is likely to cause confusion in the marketplace.
Section 10(14)
Section 10(14) prohibits the registration of a trade mark if it is confusingly similar to
another previously registered trade mark.
An application would be refused registration in terms of this section if:
• its use in relation to the goods or services in respect of which it is sought to be registered
would;
• because it is identical or so similar to a registered trade mark which has been registered
for the same or similar goods;
• be likely to deceive or confuse consumers;
unless the owner of the registered mark consents to its registration.
See paragraph 2.6.2.4 for a discussion on third party oppositions based on section 10(14).
It is important to note that the Registrar has no discretion to refuse to accept the application
if consent is given by the owner of the registered mark. This is different from the law under
the 1963 Act and different from the law in several other countries.

If it is not possible to obtain consent from the owner of the registered trade mark, but the
trade mark which is the subject of the application has in fact been used (in good faith) for
some time concurrently with the registered mark, then it may be possible to convert the
application to one based on honest concurrent use in terms of section 14 of the Act. Section
14(1) is discussed in detail in paragraph 2.8.
Section 10(15)
Section 10(15) is similar to section 10(14) except that it prohibits the registration of a
trade mark if it is confusingly similar to another mark which is the subject of a prior
trade mark application, rather than being a previously registered trade mark.
An application will be refused registration in terms of this section if:
• the use of the subject mark in relation to the goods or services in respect of which it is
sought to be registered
• would be likely to deceive or cause confusion of consumers
• because it is identical or so similar to a mark which is the subject of a prior trade mark
application
• which has been applied for in relation to the same or similar goods
unless the owner of the prior application consents to its registration.
All comments made in relation to section 10(14) apply equally to section 10(15).
Section 10(16)
Section 10(16) prohibits the registration of a trade mark where such registration would
be contrary to the existing rights of a third party, even in circumstances where the third
party owns a later trade mark application.
See paragraph 2.6.2.4 for a discussion on third party oppositions based on section 10(16).
Section 10(17)
Section 10(17) prohibits the registration a trade mark which is confusingly similar to a
well-known registered trade mark if such registration will cause economic harm to the
owner of the well-known mark.
Section 10(17) provides that a trade mark cannot be registered if:
• it is identical or similar
• to a trade mark which is already registered
• and which is well known in South Africa
• if its use would be likely to take unfair advantage of, or be detrimental to,
• the distinctive character or repute of the prior registered trade mark
• notwithstanding the absence of deception or confusion.
See paragraph 2.6.2.4 for a detailed discussion on third party oppositions which are based
on section 10(17), including discussion on the tests for ‘well-known in the Republic’ and
‘likely to take unfair advantage’.
2.5 The transfer of trade marks and licensing

The assignment/transfer and licensing of intellectual property is also discussed in chapter 9
at paragraphs 9.1.2 and 9.2.3.2, which deal with the commercialisation of trade marks, inter
alia. The discussion of this topic which follow below is supplementary to the discussion in
chapter 9.

2.5.1 ‘Transfer’ of rights in a trade mark

The ownership of a trade mark can be transferred from one person to another. Section 39 of
the Act makes provision for this to take place by assignment or transmission.
A formal act of transfer of ownership is known as an ‘assignment’ of the trade mark. An
assignment can take place in regard to a registered trade mark or a trade mark which is the
subject of a pending application. In the latter instance the process is referred to as the
substitution of the applicant for registration.
The ‘transmission’ of a trade mark entails the passing over of the ownership of the trade
mark by operation of law, and not by means of a formal act specifically related to or
comprising a trade mark. There are a number of ways in which trade marks can be
transmitted from one person to another. Examples are given below.
An assignment or transmission of a trade mark must be distinguished from a change of the
name of the trade mark proprietor. Where a change of name takes place, the identity of the
trade mark proprietor as a legal person remains unchanged and no transfer of ownership takes
place. All that happens is that the trade mark proprietor acquires a new name or designation.
2.5.2 Assignment
An assignment of a trade mark is similar to the sale of movable assets based on a written
agreement. Instead of referring to the agreement effecting an assignment of a trade mark as
a ‘Deed of Sale’, it is referred to as a ‘Deed of Assignment’ as trade marks are incorporeal
goods and no corporeal goods or physical property is involved in the transaction.
An assignment can take place with or without the goodwill of the business of which the
trade mark forms a part. An assignment of a trade mark may be total or partial. An assignment
in full transfers the ownership of the trade mark in respect of all the goods/ services for which
it is registered, while a partial assignment splits the goods/services covered by the trade mark
into separate portions and transfers only one such portion to the assignee.
The assignment of a trade mark can only take place by means of a written agreement and no
assignment is valid unless such a written agreement has been entered into. This means that the
effective date of the assignment cannot precede the actual date of signature of the Deed of
Assignment by the assignor. However, ownership of a registered trade mark can be transferred
in a written agreement in terms of which, for instance, all intellectual property, or all property,
is transferred from the trade mark owner to another party. For the sake of convenience, or for
purposes of recording an assignment in the register, it may be expedient to execute a further pro
forma Deed of Assignment in respect of the trade mark, and in that case the effective date of the
assignment would be the earlier general agreement and not the date of the Deed of Assignment.
COUNTER If the registrar will not allow the partial assignment of a mark, can the same
POINT objective be achieved through other means?
In terms of the Act the ‘partial assignment’ of a trade mark is permissible. To achieve it, one
needs to lodge a statement of case and an affidavit in support of the application for the partial
assignment. The affidavit should contain essential averments and evidence in support of the
proposition that the use of the same mark by different proprietors in relation to similar goods/
services would not lead to confusion or deception of the public.
Usually this can be achieved by indicating that the different proprietors:
• deal in different goods and services despite the fact that they fall within the same
international classification; or

• are somehow still related to one another or form part of the same group and
therefore no confusion as to the origin of the goods/services is likely.
For instance, the Registrar has allowed the partial assignment of trade marks where the
owners:
• undertook the manufacture of both motor vehicles and aeroplanes;
• undertook the manufacture of both cigarettes and luxury smokers’ articles (such as
lighters, etc.); and
• manufacture sweets and candy in addition to fresh bakery products;
and the separation of the trade marks in respect of these somewhat diverse businesses was
justifiable.
Thus, although it may be difficult to establish that the use of the same mark by two different
proprietors will not lead to the deception of the public, it is within the discretion of the Registrar
to allow or to refuse the application for partial assignment. In the past the Registrar has been
persuaded to allow partial assignments of trade marks and this has led to the ownership of the
trade mark DUNHILL vesting in different parties for tobacco products on the one hand and luxury
smoking items and other goods on the other.
The same goal can be achieved by applying for the amendment of the specification of
goods for the existing trade mark by deleting the goods and/or services that will be used
by the assignee. This should be allowed by the Registrar as it will restrict the proprietor’s
rights. At the same time a new application may be lodged in the name of the assignee of
the goods and/or services of interest to it. A letter of consent from the proprietor of the
original trade mark, authorising the use and registration of the new pending trade mark can
then be lodged. In terms of the Act, the Registrar must accept such consent and allow the
potentially conflicting mark to proceed to registration.
2.5.3 Transmission
The Act specifically refers to, and contemplates, the ‘transmission’ of trade marks. A
transmission can take the following forms, inter alia:
• Acquisition of the assets of a company upon liquidation or a merger of two companies.
Trade marks which are assets of the company in demise pass to the acquirer along with
all the other assets of that company.
• Trade marks, as property, can be inherited. Should a natural person who is the proprietor
of a trade mark die, the trade mark becomes an asset in his or her estate. When the assets
of the deceased pass to his or her heirs, the ownership of the trade mark is transmitted
to the heirs as part of those assets.
• Trade marks can also be transmitted in terms of foreign legislation. For instance, several
former state-owned Eastern European institutions were transformed into civil law
companies (in other words different legal entities). Upon the transformation of such a
state institution into a company, its assets pass to the successor company. A South African
trade mark owned by such a state institution would have been an asset of such institution.
The transfer of the assets from the state institution to the company would have entailed
the transmission of the South African trade mark to the company. A similar effect would
be created by the privatisation of a South African state enterprise or conversely by the

nationalisation of a private enterprise. An example of an incidence of this situation is

where the South African Wool Board, a former state enterprise, was deregulated in terms
of legislation issued under the Marketing Act and transformed into a trust.
2.5.4 Recordal of assignment or transmission

Where the transmission of the ownership of a registered or pending trade mark takes place,
whether by assignment or by some other means, the new proprietor should take appropriate
steps to record the change in the ownership of the mark in the register of trade marks. Failure
to do so causes uncertainty and can prejudice the new proprietor. It can even lead to the
trade mark’s being invalidated, as illustrated below.
PAUSE FOR Could the continued validity of a mark be ‘attacked’ if the new title is not recorded
REFLECTION when ownership changes?
This question illustrates the interrelationship between the more formal aspects of trade mark
law (such as assignments) and potential grounds of ‘attack’ with the object of having marks
removed from the register.
The register, and the details contained therein (for instance the ownership of the particular
mark), serves as notice to the public regarding rights subsisting in the mark. Should an assignment
not be recorded, the previous owner may ostensibly retain the right to use the mark until such
time as the assignment is recorded. The Act specifically states that trade mark infringement cannot
take place through the use of a registered trade mark by the proprietor of such mark (and the
register gives public notice of the identity of the proprietor) and this means that the erstwhile
owner cannot be sued for infringement on account of his use of the mark for as long as he is
recorded in the register as being the proprietor.
In terms of section 27 of the Act, marks may be removed on the grounds of non-use if,
up to a date three months before the date of application for removal, a continuous period
of five years or longer has elapsed from the date of issue of the certificate of registration
during which the trade mark was registered and during which there was no bona fide use
thereof by the registered proprietor. Therefore, should a mark be assigned, without the new
proprietor being formally recorded as such in the register, and a period of five years has
elapsed, the mark can be ‘attacked’ even though it may have been used by the new owner.
Accordingly, registered trade marks could potentially be removed from the register on the
grounds of non-use should the assignment not be recorded, even though they are actually
in full use by the current owner.
In terms of section 10(13) a mark may be removed if, as a result of the manner in which
it has been used, it would be likely to cause deception or confusion. An argument could be
made out that the non-recordal of an assignment causes deception or confusion regarding
the origin function of the mark because there is a discrepancy between the messages of
origin conveyed by, on the one hand, the use of the mark and, on the other hand, the formal
position reflected in the register. This situation could provide grounds for removal of the
registered trade mark from the register.
Section 40 of the Act states that where a person becomes entitled by assignment or
transmission to a registered trade mark, he shall make application to the Registrar to register
his title. This particular section in the Act is mandatory and if it is not complied with it could
present a ground for the removal of the mark.
In terms of general legal principles, only proprietors and in some exceptional
circumstances registered licensees, may take enforcement action based on the

infringement of a registered trade mark. Accordingly, should a trade mark in respect of which
a change of ownership has gone unrecorded be infringed, it would first be necessary to record
the assignment before the new owner could take infringement action.
In terms of section 34(3) of the Act, a reasonable royalty can be claimed as damages by
the proprietor of the mark from the date of first infringement to the date the order is granted by
the court. Accordingly, should a mark be infringed and should it not have been assigned to the
new owner, the new owner will not be entitled to damages for the full term as at the time of
infringement it would not have been recorded as the proprietor.
To summarise, there are several advantages to recording assignments, including the
ability to claim damages. However, of more concern is that a mark may be removed from
the register if the assignment is not recorded. It is accordingly best practice to record
assignments upon taking ownership of the mark.
2.5.5 Licensing of registered trade marks

A trade mark proprietor may allow another party to use its trade mark. Such a permission
to use a trade mark constitutes a license. The granting of a license to use a trade mark is
generally made subject to the payment of a fee. There are various ways of computing such
a fee but the most common form is payment of a percentage of the sales price of goods/
services provided under the mark by the licensee. The commercialising of trade marks, more
particularly by allowing their use under licence, is more fully discussed in chapter 9, which
deals with the commercialisation of intellectual property.
A trade mark proprietor should exercise control over the use of his mark by a licensee and
the latter should use the mark in a manner that makes it evident that he is a licensee and not
the trade mark proprietor. The trade mark should retain its function as the trade mark
proprietor’s badge of origin. If the licensee uses the mark in a manner that causes confusion
as to its relationship to the goods/services, the validity of the trade mark could be endangered.
Under the 1993 Act the permitted use of a trade mark by a licensee is deemed to be use of
the mark by the proprietor. This safeguards the distinctiveness of the mark when it is used under
licence. The deemed use of a trade mark by a permitted user (or registered user) is also valuable
from the perspective of immunising a registered trade mark against attack on the grounds of
non-use. The licensee’s use of the licensed mark qualifies as use of it by the trade mark proprietor.
The predecessor of the Trade Marks Act, 1993, namely the Trade Marks Act, 1963,
required a licensee to be recorded as a so-called ‘registered user’ in order that his use of the
registered trade mark might be deemed to be use of it by the registered proprietor.
Unrecorded ‘permitted use’ constituted use of the mark by the licensee for his own account
and could have jeopardised the validity of the registered trade mark for the reasons discussed
above. It was therefore essential that the licensee should have been recorded as a registered
user of the registered trade mark in question. Under the Trade Marks Act, 1993, while it
remains possible to record a licensee as a registered user, it is no longer essential to do so in
order to avoid a registered trade mark being attacked on the basis of non-use (or for other
reasons). Mere ‘permitted use’ of the mark by the licensee is sufficient and achieves this end.
The Act states that licensees may be recorded as registered users.71 There are, however,
distinct advantages to having licensees recorded as registered users, for the reasons
discussed below.
71 S 38(3).

• A registered user may take infringement action on the basis of the registered trade mark
in his own name, in the event that the proprietor is unwilling or unable to take such
action. The registered user is entitled to seek the same relief as would be available to the
trade mark proprietor.
• The recordal of the licensee as a registered user constitutes prima facie evidence in
proceedings before the Registrar of Trade Marks and the courts that a licensing
relationship exists in terms of which the licensee may make permitted use of the trade
mark.
• The registered user may co-join the trade mark proprietor in infringement proceedings
and claim the damages suffered by him as a result of infringement of the licensed trade
mark, over and above any damages suffered by the trade mark proprietor.
Although there is no specific provision in the Act requiring supervision and control to be
exercised by a licensor over the use of the licensed trade mark by a licensee, it is
conceivable that uncontrolled licensing can result in the dilution of the distinctive
character of a trade mark to the extent that it is no longer capable of distinguishing. In
addition, uncontrolled licensing may lead to deception or confusion in the marketplace.
As a result, the mark could be vulnerable to expungement from the register as an entry
wrongly remaining on the register. As a matter of good practice, a prudent licensor should
always exercise control (either ‘direct’ quality control or ‘indirect’ financial control) over
the manner of use of the trade mark by a licensee to secure the continued validity of the
registered trade mark.72
2.6 Trade mark oppositions
2.6.1 Introduction
A trade mark application ought only to proceed to registration if:
• the trade mark is distinctive and able to function as a trade mark (i.e. is registrable as a
trade mark); and
• no third party rights in a similar trade mark would be impinged by the use and
registration of the trade mark.
Once an application has been accepted by the Registrar and has been advertised for
opposition purposes in the Patent Journal, any third party who wishes to object to (oppose)
the registration of the mark may do so in the manner provided for in the Trade Marks Act.
The registration of a trade mark can be opposed, in broad terms, on the basis that it does not
meet either of the two above-mentioned criteria.
As discussed in paragraph 2.4.3 above, section 10 of the Act sets out, in detail, the criteria
that a trade mark must meet in order to be registered. Non-compliance with any one of these
criteria forms the basis of an opposition. These criteria are discussed in this section as the
possible ‘grounds of opposition’. The grounds of opposition are the same as the grounds of
objection which the Registrar could raise on examination of an application. Consequently,
discussions below relating to grounds of opposition by third parties apply mutatis mutandis
to grounds of objection by the Registrar.
72 See ch 9.

PAUSE FOR Who bears the onus of proof in oppositions?

REFLECTION It is important to bear in mind in oppositions that the onus is on the trade mark applicant to
show that its mark is entitled to registration and does comply with all the requirements set out
in section 10. Once the mark has been registered and a third party is applying to cancel it, the
onus is on the applicant for cancellation to show that the mark is not entitled to registration
(other than in the case of s 27(1)(a) and (b)) – see paragraph 2.7.4.2).
2.6.2 Grounds of opposition73
2.6.2.1 Lack of intrinsic registrability

A third party can oppose the registration of a trade mark application on the basis that the
trade mark is not intrinsically registrable in terms of the provisions of sections 10(1), 10(2),
10(5), 10(11) and 10(13) of the Trade Marks Act. These sections are discussed in full in
paragraph 2.4.3.1 above as they commonly form the basis of an objection to registration by
the Registrar of Trade Marks.
In summary: A mark may be opposed for lack of intrinsic registrability on the following
grounds:
• It does not constitute a mark (s 10(1)).
• It is not distinctive (s 10(2) and s 9).
• It constitutes a shape, configuration, pattern or colour which is necessary to obtain a
specific technical result or results from the nature of the goods themselves (s 10(5)).
• It constitutes a container, configuration, pattern or colour which could, if registered, limit
the development of art or industry (s 10(11)).
• It could, as a result of the way in which it is used, deceive or confuse consumers (s 10(13)).
2.6.2.2 Prohibited marks

As discussed in paragraph 2.4.3.2, there are certain kinds of trade marks which are expressly
prohibited from being registered. State-owned marks are examples of marks of this kind.
Sections 10(8), 10(9) and 10(10) provide protection for these types of marks.
2.6.2.3 Proprietorship and good faith

A trade mark must be filed in good faith by its true proprietor with an intention to use it as
a trade mark. Sections 10(3), 10(4) and 10(7) provide grounds to oppose the registration of
trade marks which do not meet these requirements.
Section 10(3)
Section 10(3) provides that the applicant for registration of a trade mark must have a
bona fide claim to proprietorship.
The applicant must be the ‘true proprietor’ of the trade mark. This means that he must have
originated, acquired or adopted the mark for use.74 The mark must also have been adopted
or acquired in good faith. If a person knows that a trade mark belongs to another party, then
73 The discussion that follows on the provisions of s 10 should be read in conjunction with the discussion of this section
in para 2.4.3 above.
74 Moorgate Tobacco Co Ltd v Philip Morris Inc – unreported decision 21 May 1986; Victoria’s Secret Inc v Edgars Stores
Ltd 1994 (3) SA 739 (A); Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) SA 427 (T).

he cannot apply for its registration in his name. An application may not be filed, for example,
by an employee, agent or licensee/distributor.
Nevertheless, this requirement does not override the territoriality of trade marks. As
mentioned above, trade marks are territorial and a trade mark registration only grants rights
in the country in which it is registered. The fact that a trade mark is registered in another
country does not automatically mean that it cannot be registered by another person in South
Africa. This would only be the case if, for example, the trade mark applicant had not acted
in good faith in adopting the mark (as in the circumstances mentioned above) or if the mark
was very well known.75
Section 10(4)
Section 10(4) provides that a trade mark applicant must have a bona fide intention to
use the mark as a trade mark.
The benchmark for the requisite intention is not high – the applicant must simply have the
present intention to use the mark as a trade mark at some point in the future, whether in
person or through a licensee (even if such licensee has not yet been appointed). As there
must be an intention to use the mark as a trade mark, there must be an intention to trade
commercially in the goods. Use on promotional items is not sufficient and nor is an intention
to use the mark as simple ornamentation.76
Section 10(7)
Section 10(7) provides that an application to register a trade mark cannot be made in
bad faith.
This subsection goes to the motivation or intention of the trade mark applicant in filing the
application. While this subsection could overlap with sections 10(3) or 10(4), it would not
necessarily do so as sections 10(3) and 10(4) do not require the presence of bad faith/
dishonesty/malice, whereas section 10(7) does.
This ground would include conduct which would be contra bonos mores or would
amount to unlawful competition. The purpose of filing an application should not, for
example, solely be to prevent a competitor from continuing to use his mark or to restrict
competitors broadly from marketing similar products.77
The Registrar should, when making a determination on this ground, consider whether
all relevant circumstances and objective facts point to the requisite bad faith intention. The
Registrar should consider what acceptable commercial behaviour would be in the view of
reasonable and experienced persons in the trade.
2.6.2.4 Third party rights

The majority of trade mark oppositions are based on third party rights. This includes
oppositions:
• where the trade mark applied for is similar to a registered trade mark;
• where the trade mark applied for is similar to a mark which is the subject of an earlier
trade mark application;
• where the trade mark applied for is similar to a mark which may not have been registered,
but which has been used by a third party for some time;
75 See para 2.9.2.4.

76 McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another; McDonald’s Corporation v Dax Prop
CC and Another; McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop CC 1997 (1) SA 1(A);
[1996] 4 All SA 1(A) 26; SAFA v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another 2003 (3) SA 313 (SCA); see
also para 2.7.4.2 for a discussion on rectification for non-use.
77 Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] RPC 485 (CA).

• where a trade mark applied for is similar to a well-known international trade mark
(registered or not).
These grounds of opposition are covered by sections 10(6), 10(12), 10(14), 10(15), 10(16) and
10(17).
Section 10(6)
Section 10(6) provides protection for well-known trade marks which have not been
registered in South Africa.
Article 6bis of the Paris Convention requires member states to prohibit the registration
and use of a foreign trade mark or a derivative of it in certain circumstances. These are where
a mark constituting a reproduction, an imitation or a translation of a foreign trade mark is
sought to be used and/or registered locally but is liable to cause confusion by virtue of the
fact that the foreign mark (from which it is derived) is well known locally to be a mark, used
for identical or similar goods, belonging to a subject of a convention country. This provision
of the Paris Convention is at the root of section 10(6), as well as of section 35, which is
discussed below in paragraph 2.9.2.4.
The following essential averments must be made to sustain the ground of opposition
based on section 10(6):
• the trade mark applied for must constitute, or the essential part of it must constitute, a
reproduction, imitation or translation
• of a trade mark which is entitled to protection under the Paris Convention as a well-
known trade mark
• and must be used, or be intended to be used, for goods or services identical or similar to
the goods or services in respect of which the trade mark is well known
• and such use must be likely to cause deception or confusion.
These elements must be shown to have been present at the time when the application was
filed.
Section 10(6) effectively means that a famous foreign trade mark can be protected in
South Africa even if it has never been used in South Africa and has never been registered
in South Africa as a trade mark. It must, however, qualify as a famous trade mark and it
must be famous on the date on which the offending application is filed. This means that
the opponent must show that the trade mark is famous in South Africa and not only
internationally. It would probably be necessary to lead evidence of a spillover reputation
in South Africa which could exist, for example, as a result of exposure on television, the
Internet, in print media or even through exposure of consumers to the trade mark while
travelling.78 Other means could, however, also be used, depending on the circumstances.
In the current technological era this should be an easier burden of proof to overcome than
in the past.
Additional commentary on proving that a trade mark is well known can be found
in paragraphs 2.9.2.3 and 2.9.2.4. See also paragraph 2.11 for a discussion on
determining the likelihood of confusion of consumers. The essential elements for
section 10(6) are similar to those which must be proven for a trade mark infringement
claim under section 35 and reference should also be had to the discussion on section 35
in paragraph 2.9.2.4.
78 Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) SA 427 (T).

PAUSE FOR The test for confusing similarity under section 10(6)
REFLECTION To meet the requirements of section 10(6) it is necessary to show that the mark applied for, or
an essential part of it, is a reproduction, imitation or translation of the well-known trade mark.
The test for confusing similarity is consequently stricter than for sections 10(14), (15) and (17)
(see below). However, as the provisions of section 10(6) are intended only for trade marks which
are truly famous, it is likely that any party trying to leverage off the reputation of the famous trade
mark would adopt a trade mark that is almost identical to it. If not, an opposition under section
10(6) would probably not be appropriate.
Section 10(6) is subject to the provisions of section 36(2), which stipulates that if the trade
mark had been used continuously and in good faith before 31 August 199179 or the date on
which the trade mark became entitled to protection under the Paris Convention, whichever
is the later, then the provisions of section 10(6) cannot be applied against it. In other words,
if the trade mark under application was used before 31 August 1991 or before the famous
mark became famous in South Africa, then it would not contravene section 10(6).
Section 10(12)
Section 10(12) provides that if a mark is inherently deceptive or its use would be likely
to deceive or cause confusion, be contrary to law, be contra bonos mores, or be likely to
give offence to any class of persons, then it cannot be registered.
In broad terms, section 10(12) is intended to protect the public against any form of deception.
Section 10(12) caters, for example, for the following types of confusion or deception:
• Confusion which could in fact be dangerous to the public. If, for example, an application
had been made to register a trade mark for poisons or insecticides and it is confusingly
similar to a trade mark which has gained a reputation for foods, there is a possibility that
consumers could be confused between the two – with dangerous consequences.
• Trade marks could be deceptive as to the geographical origin of the goods. If, for example, a
trade mark appears in French, consumers could assume that the goods are of French origin.
In such a case, the mark could be opposed on the basis that it is inherently confusing or
deceptive unless the applicant agrees to restrict its goods to those coming from France only.
Section 10(12) is, however, relied upon most often where the trade mark of another proprietor has
been used for a period of time and has acquired a repute (whether or not it has been registered)
and the use of a similar mark by the applicant is likely to cause confusion in the marketplace. This
ground of opposition is akin to a claim of passing off. In this regard, see paragraph 2.10.
As the primary purpose of section 10(12) is the protection of the public against confusion
or deception, proof of a likelihood of confusion is the overriding requirement for a successful
opposition based on section 10(12). This likelihood must be clear from the evidence. See
paragraph 2.11 for a full discussion on the factors to be taken into account in determining
the likelihood of confusion.
The court will compare notional use by the trademark applicant with the opponent’s
actual use of its trade mark. In other words, the court will consider the opponent’s actual
use of its mark and determine whether the use by the trademark applicant in respect of all
79 The date of publication of the first draft Bill of the Trade Marks Act 194 of 1993. The logic behind this provision is that
the general public first became aware of the legislature’s intention to protect famous marks upon the publication of the
first draft of the Bill.

or any of the goods covered by its trademark application in a normal and fair manner would
be likely to confuse a not negligible number of ordinary members of the buying public.80
The ‘not negligible’ number of consumers who must be shown to be likely to be confused
must be consumers in the target market of the product under scrutiny.
Where two products have been used side by side for some time and no actual confusion
on the part of consumers can be proved, a negative inference can perhaps, although not
necessarily, be drawn to the effect that confusion is unlikely. Similarly, if actual confusion
can be proved, this could carry significant weight.
A significant provision of section 10(12) is that the opponent does not need to show use
of his mark as a trade mark. An opponent could, for example, rely merely on the use of a
trading style/business name, provided that there is a likelihood of confusion. The same
applies if the opponent has done no more than circulate advertising matter incorporating
his mark. It goes without saying in such a case that the opponent would, however, have to
show that the mark was widely publicised and had consequently become well known and
that confusion was therefore likely.
Since the primary aim of section 10(12) is protection of the public, even if an opponent
has ‘unclean hands’, and has himself deceived or misled the trade mark applicant, it is the
duty of the Registrar to protect the public and not allow a mark to go through to registration
if it will probably result in deception or confusion of consumers. An ‘unclean hands’ defence
would consequently not assist in defending a section 10(12) opposition.
Use contrary to law: Section 10(12) also provides that the mark will not be entitled to
registration if its use would be contrary to law. So, for example, if a trade mark were to
infringe copyright or contravene any legal provisions, it could be refused registration.
Use contra bonos mores: Registration of a mark the use of which is ‘contrary to morality’
could in some circumstances amount to unlawful competition and could also be prevented
in terms of section 10(12).
Use likely to give offence to any class of persons: Section 10(12) also provides that the
mark will not be entitled to registration if its use is likely to give offence. The courts will
probably apply a ‘reasonable person’ test and determine whether the trade mark is offensive
according to the beliefs, views or feelings of the reasonable person in the relevant class which
it is claimed is being caused offence.81
Section 10(14)
Section 10(14) provides protection to the proprietor of a registered trade mark, who can
oppose the registration of a trade mark application on the ground that the subject mark
is confusingly similar to his registered trade mark.
To be successful on this ground, the following must be shown:
• that the opponent is the owner of a registered trade mark
• which is identical to or so similar to the trade mark applied for
• that use of the trade mark applied for in relation to the goods or services in respect of
which it has been applied to be registered
• would be likely to deceive or cause confusion of consumers.
Section 10(14) allows the trade mark owner simply to rely on his trade mark registration and
he does not need to lead evidence of the use and reputation of his trade mark as he would
80 Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1991 (4) SA 850 (A).
81 FCUK trade mark [2007] RPC 1.

need to do if he was relying on section 10(12). This ground of opposition is akin to trade mark
infringement. In this regard see paragraph 2.9.2.
In determining whether the two trade marks are confusingly similar, the Registrar will
have regard to the notional and fair use which the registered proprietor can make of all of
the goods or services covered under the registered trade mark and compare it with the
notional and fair use which the trade mark applicant could make of all the goods or services
covered under its application. This is different from section 10(12), in terms of which the
Registrar has regard to the actual use which the opponent has made of its trade mark.
Aside from this difference, the test in determining likelihood of confusion is the same
under sections 10(12) and 10(14) – the Registrar needs to determine whether a ‘not negligible’
number of ordinary members of the buying public would be deceived or confused as a result
of the use of the identical mark on the respective goods.82 See paragraph 2.11 for a full
discussion on the factors to be taken into account in determining a likelihood of confusion.
In addition to proving a likelihood of confusion of consumers, section 10(14) requires
that the respective goods/services of each party are the same or similar. See paragraph 2.9.2.2
for a discussion on the factors to take into account in determining whether goods/services
are similar.
A possible defence to an opposition based on section 10(14) is the defence of honest
concurrent use which can be raised under section 14. If the trade mark application has been
used in good faith and concurrently with the registered mark for some time, then it may be
possible to raise a section 14 defence. Section 14 is discussed in paragraph 2.8.
Section 10(15)
Section 10(15) is similar to section 10(14) except that the opponent is relying on a trade
mark application which was filed before the application which is being opposed, rather
than on a registered trade mark.
To be successful on this ground, the following must be shown:
• that the opponent is the applicant in respect of a prior trade mark application
• the subject mark of which is identical to or so similar to the subject mark of the trade
mark application being opposed
• that use of the trade mark being opposed in relation to the goods or services in respect
of which it has been applied to be registered
• would be likely to deceive or cause confusion of consumers.
All comments made in relation to section 10(14) apply equally to section 10(15).
Section 10(16)
Section 10(16) provides that an application can be opposed on the basis that it is
contrary to the existing rights of the opponent even in circumstances where the
opponent only has a later trade mark application on which to rely.
Sections 10(3), 10(6), 10(12), 10(15) and 10(17) already provide for the protection of existing
rights in circumstances where the opponent’s trade mark has not been registered and it is
unclear what additional rights the legislature intended to include in section 10(16). It is
possible that this section may allow for a lower threshold of existing rights to be established
than is required under sections 10(6) and 10(12), for example.83
82 See Danco Clothing supra.

83 GC Webster & NS Page South African Law of Trade Marks 4 ed (1997) pp. 6–38.

COUNTER In the case of Turbek Trading CC v A&D Spitz Limited,84 the court set a high
POINT threshold for the rights that need to be shown
In this case, A&D Spitz claimed that the registration of the KG trade mark by Turbek
contravened section 10(16) as it was contrary to its existing rights on the date the
application was filed. The court held that the question was whether the mark KG formed
part of Spitz’s goodwill at the time the KG mark was filed. Spitz needed to prove that, at
the time the KG application was filed, it had already ‘originated, acquired or adopted it
and … used it to the extent that it [had] gained [a] reputation …’ In other words, Spitz had
to discharge the same onus in relation to reputation as it would have had to discharge
under a passing-off claim. On the facts, the court found that Spitz had not discharged this
onus and that section 10(16) had not been contravened. This appears to be a similar
threshold of rights to what would be required under section 10(12).
Section 10(17)
Section 10(17) wards against the dilution of a well-known registered trade mark.
The purpose of the dilution provisions in the Act, including section 10(17) and the
infringement provisions referred to in paragraph 2.9.2.3, is to protect well-known registered
trade marks from being ‘diluted’ through their use by third parties in connection with different
goods or services where, although consumers are not likely to be confused, the value of the
well-known brand is likely to be diluted/eroded as a result. The use, for example, of a trade
mark like ROLLS-ROYCE in connection with toilets could detract from the value of the ROLLS-
ROYCE brand which is associated with high-end exclusive luxury motor vehicles.
Section 10(17) provides that a trade mark can be opposed if:
• it is identical or similar
• to a trade mark which is already registered
• and which is well known in the Republic
• if its use would be likely to take unfair advantage of, or be detrimental to,
• the distinctive character or repute of the registered trade mark
• notwithstanding the absence of deception or confusion.
It is likely that a similar meaning will be ascribed to ‘well-known in the Republic’ to the
meaning required under section 35, for the purposes of infringement. See paragraph 2.9.2.3
for a detailed discussion on the determination of the renown of a trade mark for the purposes
of the dilution provisions in the Act.
The opponent must also show that the use of the trade mark under application ‘would
be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute
of the registered trade mark’. This aspect is also discussed in more detail in paragraph 2.9.2.3.
It should be borne in mind that although confusion or deception do not need to be
proved for the purposes of dilution, if confusion can be proved, this could help to
demonstrate that unfair advantage is being taken of the registered trade mark.
2.6.3 Opposition procedure

The procedure to be followed in filing an opposition is provided for in regulation 19.
84 [2010] 2 All SA 284 (SCA); [2010] FSR 16 (SCA).

The starting point is the advertisement of a trade mark application in the Patent Journal.
A period of three months from the date of the particular edition of the Patent Journal is
allowed for a third party to lodge an opposition to the application. It frequently happens in
practice that a prospective opponent requests the Registrar to grant an extension of this
opposition term. The Registrar is obliged to grant an initial three-month extension of the
opposition term, in terms of regulation 52(1). After that extension, any further extension
must be agreed to by the trade mark applicant.
The opposition is brought on a Notice of Opposition (Form TM3) supported by an
affidavit setting out the grounds of opposition and the evidence in support of the opposition.
After the notice of opposition and supporting affidavit have been filed, the trade mark
applicant has one month to file a notice of intention to defend the application (Form TM4).
Thereafter, the trade mark applicant has two months to file an answering affidavit, after
which the opponent has one month to file a replying affidavit. At that point, pleadings are
closed and the application is set down for hearing before the Registrar of Trade Marks.
Where no answering affidavit is filed by the opponent within the required time, the
opposition can be set down before the Registrar on an unopposed basis even in
circumstances where the trade mark applicant has filed a notice of intention to defend.
The procedure followed before the Registrar of Trade Marks in oppositions is very similar
to notice of motion proceedings before the High Court and the same principles and tests are
applied in evaluating the evidence which is put before the Registrar. Proceedings before the
Registrar are deemed to be in the nature of civil proceedings.
A flow chart of the procedure is set out below.
Notice of Opposition (Form TM3) and

Founding Affidavit – filed by Opponent
1 month
Notice of Intention to Defend

filed by Trade Mark Applicant
If either the Notice of
(Form 4)
Intention to Defend or
the Answering Affidavit
is not filed timeously,
2 months
the matter can be set
down for hearing on
Answering Affidavit filed by the unopposed roll.
Trade Mark Applicant
1 month
Replying Affidavit filed

by the Opponent
Set Down for hearing before

the Registrar of Trade Marks

The Registrar of Trade Marks has the power to award costs in proceedings before him.
A party to any opposed proceedings before the Registrar of Trade Marks may appeal to
the High Court against any decision or order given in those proceedings.85
2.7 Rectification of trade marks
2.7.1 Introduction
A trade mark registration can be cancelled or rectified on application by an interested party
in terms of sections 24, 26 and 27 of the Act. Section 24 provides that a trade mark registration
can be rectified on the ground that it was an entry wrongly made or wrongly remaining on
the register. Section 26 provides that a trade mark registration can be rectified if the owner
or licensee of the trade mark fails to comply with a condition entered in the register in
relation to the trade mark registration. Section 27 contains the non-use provisions that
provide for the cancellation of a trade mark registration where it has not been used.
Application can be made to the Registrar or the court.
These provisions are discussed in more detail in the paragraphs below.
2.7.2 Purpose of rectification proceedings

It is significant that the primary purpose of the rectification sections in the Act is protection
of the public interest. The Registrar or court is consequently given a discretion to refuse to
rectify a trade mark registration even in cases where there are facts which justify the
rectification. This discretion should only be exercised in exceptional circumstances where
it is the opinion of the Registrar or court that the public interest is of greater importance than
the rights of the applicant for rectification.86
PAUSE FOR Under what circumstances could the court find there to be ‘exceptional
REFLECTION circumstances’?
In McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd,87 the Appellate Division
found exceptional circumstances to be present, resulting in its refusing to cancel trade marks
which had not been used in South Africa for decades. The exceptional circumstances were
that the cancellation application, which had been brought under the Trade Marks Act of 1963,
was being heard simultaneously with an infringement application under section 35 of the
Trade Marks Act of 1993 (dealing with the protection of well-known foreign marks). This
effectively meant that even if the trade marks were cancelled, section 35 would still apply to
the well-known MCDONALD’S trade marks and so the applicant for cancellation would not
be able to use the marks in any event. In these circumstances, it would be futile to proceed
with the application for removal.
Delay in bringing rectification proceedings is normally not relevant as public interest is of

primary importance in such proceedings.
85 S 53 of the Act.
86 McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another 1997 (1) SA 1 (A); [1996] 4 All SA 1 (A).
87 Supra.

PAUSE FOR Is delay in bringing proceedings a substantive defence in trade mark law?
REFLECTION In the Turbek case,88 the Appellant applied to cancel the Respondent’s KG trade marks on
the ground that they conflicted with section 10(16) and were entries wrongly made on the
register. One defence raised by the Respondent was that the Appellant had effectively
acquiesced in the registration of the KG marks as it had known of the KG registrations since
2001 and had only applied to cancel them in 2007. The court disagreed with this argument,
finding:
During argument it became clear that counsel was unable to contend more than
that delay may in a suitable case be evidence of an intention to waive, evidence
of a misrepresentation that might found estoppel, or evidence of consent for
purposes of the volenti non fit injuria principle. In other words, counsel was unable
to substantiate his submission that acquiescence is a substantive defence in our
law. Delay, in the context of trade mark law, may provide evidence of a loss of
goodwill or distinctiveness but that was not Turbek’s case on the papers. All this
does not mean that delay may not have procedural consequences; for instance,
it may be a factor to take into account in exercising a court’s discretion to refuse
to issue a declaration of rights or an interim interdict or, maybe, even a final
interdict, leaving the claimant to pursue other remedies such as damages.
(On the facts, though, the court found against the Appellant and the KG marks were not
cancelled – see paragraph 2.6.2.4.)
Section 24(3) provides the Registrar with the locus standi to apply to the court for rectification
if the Registrar believes that any entry relating to the registration or assignment or
transmission of a trade mark was obtained mala fide or by misrepresentation or was wrongly
made or wrongly remains on the register.
2.7.3 Interested party

Sections 24, 26 and 27 provide that ‘any interested person’ can apply for rectification
of the register. The evidence must show that the applicant for rectification is an interested
person.
‘Interested person’ was found in South Africa Football Association v Stanton Woodrush
(Pty) Ltd89 to be a person ‘…who is in some way or other substantially interested in having
the mark removed from the register…’ or who has ‘…a genuine and legitimate competitive
interest in the trade to which the offending mark relates’.
‘Interested person’ is consequently interpreted widely and could include any of the following:
• a person who has a genuine intention to trade even if he has no actual trade;
• a person who has applied for a trade mark and its registration is being blocked by a
registered trade mark;
• a competitor whose potential field of business is narrowed as a result of the registered
trade mark;
• a trader who is hampered in the legitimate exercise of his affairs as a result of the
registration;
88 Turbek Trading CC v A&D Spitz Limited [2010] 2 All SA 284 (SCA), [2010] FSR 16 (SCA) 409; see also para 2.6.2.4.
89 2002 (2) SA 236 (T); See also Ritz Hotel Ltd v Charles of the Ritz and Another 1988 (3) SA 290 (A); Danco Clothing (Pty)
Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1991 (4) SA 850 (A); and Valentino Globe BV v
Phillips & Another 1998 (3) SA 775 (SCA).

• where a trader uses the fact of his registration as a part of his case against another trader
in any legal proceedings, the second trader is an interested person.
2.7.4 Grounds of rectification
2.7.4.1 Section 24(1): entries wrongly made or remaining on the register

Section 24(1) is used primarily to cancel trade mark registrations which should not have
been registered in the first place or should no longer be registered on the basis that they
offend against the provisions of section 10 of the Act.
In terms of section 24(1), any interested person can apply for an order for making,
removing or varying an entry, where:
• any entry has not been inserted in, or has been omitted from, the register;
• any entry has been wrongly made in the register;
• there is an entry wrongly remaining on the register; or
• there is any error or defect in any entry in the register.
The words ‘non-insertion in or omission from’ refer to disclaimers or other conditions of

registration which could limit the rights granted by the trade mark registration and which
have not been inserted in the register. In this regard see paragraph 2.2.5.5. An interested
party can apply to have a disclaimer entered where he believes that it should have been
entered on registration.
An ‘entry wrongly made’ in the register would be a trade mark which was registered
despite offending against any of the provisions of section 10.
In the case of Société des Produits Nestlé S.A. v International Foodstuffs Co,90 the
Respondents applied, as a counterclaim to an infringement application, to cancel the
following trade mark registrations belonging to Nestlé (the Finger Wafer trade marks):
The Respondents argued that the Finger Wafer trade marks should be cancelled as they
offended against the provisions of section 10(5).
The court found that the Finger Wafer trade marks did not fall foul of section 10(5),
holding that:
In order to succeed with their attack in terms of section 10(5), the respondents
therefore have to show that the ‘essential functional features’ of the Finger Wafer
trade marks are attributable only to the technical result or, in the words of s10(5),
are necessary to obtain the specific technical result.
The court agreed with the evidence led by Nestlé that the Finger Wafer shapes used for the
KITKAT product were designed and used for their visual and aesthetic impact and appeal
and for enjoyment when eating. The evidence was that the shapes are not obvious and are
90 2013 JDR 2699 (GNP); 2013 BIP 320 (GNP).

in fact technically difficult and inconvenient to manufacture. There was no need, from a
functional perspective, to include more than one finger in the chocolate or to include an
apron around the bottom of the fingers or indeed to make the chocolate in the shape of finger
bars at all. The court found that these are not minor arbitrary elements and are in fact
important non-functional elements of the registered trade marks. The marks were therefore
found not to be ‘solely shapes of goods which only incorporate a technical solution’.
The proviso to section 10 is important to note. In terms of this proviso, where application
is made to cancel a mark on the basis that it was not distinctive at the time the application
was filed, if the trade mark owner can show that the mark has in fact become capable of
distinguishing as a result of extensive use, it should not be removed from the register.
The main ground on which a trade mark can be attacked on the basis that it is an ‘entry
wrongly remaining’ on the register is that the mark has, since being registered, lost its
distinctiveness. Trade marks which have become generic would fall foul of this provision.
This is often the case where a new product is invented and given a brand name which
ultimately becomes the descriptive name for that product.
PAUSE FOR Examples of generic trade marks

REFLECTION The iPod brand is an example of a trade mark which could have been in danger of becoming
generic if it had not been properly protected as a trade mark – it could easily have become
the descriptive name for any MP3 player. The same applies to the KREEPY KRAWLY – if not
properly protected as a trade mark, it could have become known as the descriptive term for
a pool cleaner. Once the BARACUDA came on the market, the danger decreased as the
KREEPY KRAWLY was no longer the only such product available on the market.
In Pleasure Foods,91 the court concluded that ‘Mega burger’ had become a customary term
in current English to designate a ‘large size hamburger’ and ordered the mark to be removed
from the register.
In the Registrar of Trade Marks v Wassenaar,92 the trade mark owner had named a plant
that he had invented RONPHA. The judge found that the name RONPHA had become the
name of the variety and no longer served a distinguishing function. A descriptive name
should have been given to the plant for the variety as well as a separate brand name to
distinguish the plant as being the plant of the trade mark owner.
COUNTER Clever protection and use of a plant name as a brand can prevent it from losing
POINT its trade mark status
Interestingly, the inventor of the Peppadew product has managed to retain trade mark rights
in the PEPPADEW mark despite having also called his invented variety a ‘Peppadew’. The trade
mark owner has taken several steps, however, to protect the trade mark status of the PEPPADEW
mark and protects it vigorously against misuse by third parties.
A trade mark can also be cancelled on the basis that it is an entry wrongly remaining on the
register in circumstances where it can be said to have been abandoned – for example where
91 Pleasure Foods (Pty) Ltd v TMI Foods CC t/a Megaburger 2000 (4) SA 181 (T).
92 1957 (4) SA 513 (A) at 530.

a business has been discontinued for some time. This section could possibly be used in
circumstances where section 27 (discussed below) cannot be applied.
2.7.4.2 Section 27: non-use

Section 27(1) provides for the cancellation of a trade mark on the ground that it has not been
used for the requisite period.
Section 27(1)(a) provides that a mark can be cancelled if it was registered without any
bona fide intention that it be used and there has in fact been no bona fide use of the trade
mark up until three months before the date of the cancellation application.
Section 27(1)(b) provides that a trade mark can be cancelled if a continuous period of five
years has passed since the date of issue of the certificate of registration (up until three months
before the date of the cancellation application) and there has been no bona fide use in that time.
Section 27(1)(c) provides that a trade mark can be cancelled if it is registered in the name
of a body corporate and the body corporate (i.e. a company or other jurisic person) was
dissolved not less than two years prior to the date of the application for cancellation, or it is
registered in the name of a natural person and that person died not less than two years prior
to the date of the application and, in both cases, no application has been made for an
assignment of the trade mark to a third party.
In terms of section 27(3), the onus of proof in the case of an application under sections
27(1)(a) or 27(1)(b) is shifted from the applicant for rectification to the trade mark proprietor.
The trade mark owner must show that he has in fact made use of his registered trade mark.
Sections 27(1)(a) and (b) do not apply to trade marks which are well known within the
meaning of section 35(1) of the Trade Marks Act.93
In terms of section 27(1)(a), the trade mark owner must, at the time the trade mark
application was filed, have had a definite and present intention to deal in goods commercially
– not a vague general intention possibly to extend his business in the future.
Although the trade mark owner bears the onus of proving that he has actually used his
mark, the applicant for rectification (under s 27(1)(a)), still bears the onus of proving the
lack of requisite intention – this onus is not shifted to the trade mark owner.
In Ducker’s Trade Mark,94 the court stated that:
… A man must have an intention to deal, and meaning by the intention to deal some
definite and present intention to deal, in certain goods or descriptions of goods. I agree
that the goods need not be in being at the moment, and that there is futurity indicated in
the definition; but the mark is to be a mark which is to be definitely used in respect of
which there is a resolve to use it in the immediate future upon or in connection with
goods. I think that the words ‘proposed to be used’ mean a real intention to use, not a
mere problematical intention, not an uncertain or indeterminate possibility, but a resolve
or settled purpose which has been reached at the time when the mark is to be registered.
In the United Kingdom a lack of bona fide intention to use has been found in the following
circumstances:95
• The trade mark applicant intended to use the trade mark as a generic name.
• The trade mark applicant was an individual and had registered the trade mark as ‘a sort
of precaution’ intending it to be used, if at all, by a company.

94 [1928] 45 RPC 397.
95 Webster & Page South African Law of Trade Marks pp. 13–28.

• Registration was obtained to enable the trade mark to be registered abroad.

• The trade mark applicant was precluded by contract from dealing in the goods in
question in the United Kingdom – that is, would not contractually have been able to use
the mark anyway.
• Registration of a foreign merchant’s trade mark by a local firm was secured with the
intention of preventing other local firms from competing for that merchant’s business.
An intention to use a trade mark in connection with goods which have not yet been produced and
which are in fact still to be developed may be sufficient if there is a reasonable likelihood that the
goods will be developed. In Pfizer SA (Pty) Ltd v Robertsons (Pty) Ltd,96 Pfizer registered a trade
mark based on an intention to use it on an insecticide which was yet to be developed. It was found
that there was sufficient bona fide intention as Pfizer had sufficient reason when the trade mark
application was filed to be reasonably assured that the insecticide would be developed.
In terms of section 27(1)(b), a trade mark can be cancelled if it has not been used for
the requisite period.
As mentioned in paragraph 2.7.4.2, section 27(3) shifts the onus of proving that a mark
has been used to the trade mark owner. The trade mark proprietor must at all times be able
to justify his claim and prove that his trade mark is being used.
Use of the trade mark on a substantial scale is not required to prevent cancellation. The
extent of use is only relevant in so far as it may provide an indication of the bona fides of the
trade mark owner. Use can be bona fide even if the primary purpose behind such use is a
desire to defeat threatened proceedings for cancellation, as long as the main purpose is to
further the trade mark owner’s trade and not only to frustrate the trade of others.97
The extent of use required to be established to defend a section 27(1)(a) application was
discussed in some detail in The Gap, Inc v Salt of the Earth Creations (Pty) Ltd (the Gap case).98
The court found that bona fide use must be genuine use in the sense that it must not merely be
token use which serves solely to preserve the rights conferred by the trade mark. The use should
be consistent with the essential function of a trade mark, which is to guarantee the identity of
the origin of goods to the consumer – enabling him to distinguish the goods from those of others
which have a different origin without there being any possibility of confusion arising.
The court referred to previous decisions in which it was made clear that the amount of
use required to defeat a cancellation application is small as long as the use is bona fide. The
dispatch of a single sample of a product was, for example, found to constitute use as long as
there was a real attempt to introduce the goods into the market. Similarly, two isolated
usages of a trade mark in an export price list and in an information booklet were sufficient
to counter a cancellation application. Evidence of efforts to establish trading outlets in South
Africa and of the correspondence and negotiations with local stores as part of those efforts,
together with promotion and advertising of the goods and services, was also found to
constitute use of the mark in question.
The court referred to the following comment by Falconer J in Hermes Trade Mark:99
Thus, if the registered proprietor should commence a series of advertisements featuring

his mark as part of an introductory campaign, prior to putting his goods on the market
under the mark, but before they were actually on the market, in my judgment . . . [that]
96 1967 (3) SA 8 (T).

97 Wistyn Enterprises (Pty) Ltd v Levi Strauss & Co 1986 (4) SA 796 (T).
98 2012 (5) SA 259 (SCA).
99 [1982] RPC 425 (Ch).

would clearly be use of the mark in the course of trade, not upon the goods in physical
relation thereto, but it would be in other relation thereto, the point being that it would
be use in the course of trade in those goods, albeit in advertisements.
In the Gap case, the court held:
Trademarks are territorial. The negotiations between the appellant and Stuttafords
were clearly for the use of the South African trademark GAP in class 3 products in
this country. It is thus somewhat artificial to suggest that if the negotiations were to
have occurred within the borders of this country that would have constituted use,
but where, as occurred here, the negotiations took place outside of our borders that
cannot constitute use. What is of significance, it seems to me, is that the negotiations
involved South Africans representing a South African company taking steps to use
a South African trademark in South Africa. Moreover the negotiations and
correspondence were clearly aimed at sourcing and offering for sale GAP class 3
merchandise in South Africa. In those circumstances the fact that the negotiations
occurred outside the borders of this country is irrelevant.
However, in New Balance Athletic Shoe Inc v Dajee and Others NNO,100 the court found that
insufficient evidence of use had been led and the marks in question were cancelled for
non-use. In this case, the Respondent had applied for cancellation of New Balance’s
registrations P-F FLYERS and P-F in class 25 in respect of footwear on the basis that they had
not been used for the relevant five-year period. In New Balance’s answering affidavit, broad
statements were made that goods bearing these trade marks had been sold ‘during the past
four years’ with sales of approximately R700 000. Photographs depicting the interior of a
store with the shoes on display were attached to the affidavits. Confirmatory affidavits by
three executives of New Balance South Africa were also filed. The court held, however, that
the trade mark proprietor who claims to have used his trade mark should advance ‘… clear
and compelling evidence to that effect and ought not to expect that the evidential burden
would be discharged by allegations that are sparse, ambiguous, or lacking in conviction. In
this case, it is remarkable that no documents were advanced to corroborate the allegations
of sales.’ The court found that the trade marks should be removed from the register as no
clear and unambiguous proof of relevant use during the relevant period had been submitted.
It is important to note that the trade mark owner cannot rely on use he has made of his mark
in the three months immediately preceding the cancellation application. In practice, this
means that once a letter of demand is sent to the trade mark owner, the applicant for cancellation
should not wait longer than three months before applying to cancel the registered trade mark.
It should also be noted that the five year period runs from the date of issue of the
certificate of registration, rather than the date on which the application which gave rise to
the registered trade mark (i.e the date of registration) was filed.
As mentioned in pararaph 2.2.5.5 above, trade marks that are associated can sometimes
assist in defending a non-use cancellation application.101 The Registrar or court has a
100 [2012] ZASCA 3 (2 March 2012); see also AM Moolla Group Ltd v The Gap Inc 2005 (6) SA 568 (SCA) in which the court
held that ‘Affidavits in application proceedings must do more than make bald allegations; they must, in addition, provide
the facts that support the allegations’. On the facts, the court found that the trade mark owner had failed to discharge
its onus of proof of use of its trade mark.
101 S 31(1) of the Act.

discretion to accept evidence of use of an associated mark as evidence of use of the mark
under threat of cancellation. (The association could be direct or indirect.)
The Appellate Division in Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another;
Oude Meester Groep Bpk v SA Breweries Ltd102 found that the following factors should be
considered in exercising its discretion:
• how closely the marks are associated;
• how closely the marks resemble each other;
• the extent and nature of the equivalent use.
The court found that the more remote the association, or the less marked the resemblance
or the less satisfactory the equivalent use, the less likely it is that the court will allow the use
of the associated mark to defend the cancellation of the threatened mark.
Partial expungement: It is possible to apply for a partial expungement (cancellation)
- that is, to cancel only some of the goods included in the specification of goods comprised
in the registration if the mark has not been used in relation to those goods although it has
been used in relation to others.
In Arjo Wiggins Ltd v Idem (Pty) Ltd,103 the Appellant had proved use of its registered
trade mark in relation to carbonless copying paper only. The specification of the Appellant’s
mark included the broader term ‘paper and paper articles’ and the Respondent applied to
limit the specification to carbonless copying paper only, arguing that carbonless copying
paper was not included in the broader term. The court found that proof of use of carbonless
copying paper was sufficient to maintain the broader term ‘paper and paper articles’. The
notional reasonable person would describe carbonless copying paper as ‘paper’ and there
was nothing to show that keeping the registration in respect of the broader category would
not make commercial sense.
In Scientific Chemicals (Pty) Ltd v Liqui-Seal (Pty) Ltd and others,104 the court emphasised
that, when deciding a partial expungement application, the objective nature of the product
should be considered rather than the purpose for which the product was intended. In this
case, the court needed to determine whether the use of the trade mark PLUSH in relation to
a shoe freshener was enough to justify retaining the broader phrase of sanitary, hygienic and
fungicide preparations. The court found that the notional reasonable man would recognise
the product as a fungicide and a hygienic and sanitary preparation, and distinguish these
goods from a shoe freshener, and refused the application for partial expungement.
In ANIMAL trade mark105 the court rejected an application for the partial expungement
of goods where a trade mark had been used for surfing clothing only and an application was
made to restrict the specification to surfing clothing rather than allow the broader
specification of all clothing.
In summary – the test applied by the court in considering partial expungement is
how the notional reasonable man would see the objective nature of the product.
Section 27(1)(c) provides for the cancellation of a trade mark in circumstances where
the trade mark owner has died or where it is a body corporate that has been dissolved.
Effectively, section 27(1)(c) provides for a presumption that the trade mark has been
abandoned. In terms of section 27(2), that presumption can be rebutted if the Respondent
shows that the trade mark is being used or intended to be used by a successor in title such
102 1976 (3) SA 514 (A).

103 2002 (1) SA 591 (SCA).
104 2002 BIP 85 (T).
105 [2004] FSR 383 (ChD).

as an heir or an assignee in relation to which no application for registration of the assignment

has yet been made.
2.7.5 Procedure
An application for rectification can be brought before the court or the Registrar of Trade
Marks. If the application is brought before the court, the Registrar is a necessary party to the
proceedings before the court and must be joined in the proceedings.
If the application is made before the Registrar, the procedure prescribed in regulation 19
must be followed. This is the same procedure as for oppositions – see paragraph 2.6.3.
If the application is made to the court, it must be done by way of Notice of Motion proceedings.
A flow chart for Notice of Motion proceedings is depicted below.
Notice of Motion and Founding Affidavit – filed by Applicant
5 days
Notice of Intention to Oppose If either the Notice of

Intention to Defend or
the Answering Affidavit
15 days is not filed timeously,
the matter can be set
down for hearing on
Answering Affidavit the unopposed roll.
10 days
Replying Affidavit
5 days Set Down for hearing (subject

to the practice rules of the
various provinces
In terms of section 53 of the Act, any party in proceedings before the Registrar can appeal to
the High Court.
2.8 Honest concurrent use

In certain circumstances, the Registrar has the discretion to allow a trade mark to be
registered or to refuse to cancel a trade mark registration despite the fact that it offends
against the provisions of sections10(6), 10(14), 10(15) or 10(17).
The Registrar is granted this discretion in terms of section 14 of the Act. The Registrar can
exercise this discretion in the case of ‘honest concurrent use’ or ‘other special circumstances’.
The Registrar can, in exercising his discretion, impose any conditions or limitations which
he may deem fit.
Where a person has in good faith made use of a trade mark concurrently with a registered
trade mark, that person should not be prevented from registering his mark. The Registrar

needs to weigh up the possibility of confusion of consumers against the commercial claims
which the owner of a common law trade mark might have acquired as a result of a significant
period of concurrent use.106
COUNTER Honest concurrent use as a defence in infringement proceedings

POINT The honest concurrent use defence cannot be used as a defence in infringement proceedings.
A defendant in infringement proceedings who has made concurrent use of his mark should rather
rely on the provisions of section 36 (see paragraph 2.9.2.4) or first obtain registration of his
trade mark in terms of section 14(1) (assuming the court will allow the infringement application
to be suspended pending the outcome of the section 14(1) application) and then rely on the
provisions of section 34(2)(g) (see paragraph 2.9.3.7).
To be successful in raising honest concurrent use as a defence, the following must be shown:
• that the trade mark was adopted honestly;
• that the trade mark has been used concurrently with the registered trade mark for a
significant period of time.
Where the trade mark applicant started using his trade mark before the registered proprietor
started using his mark, it is clear that the adoption of the mark would qualify as ‘honest’.
Where this is not the case, then the trade mark applicant will have to prove that his adoption
of the trade mark was honest. Where the registered trade mark is an invented and unusual
word, it is highly unlikely that another party would adopt an identical mark honestly. If,
however, the registered trade mark is fairly descriptive, then there is a real possibility that
another proprietor could adopt a very similar trade mark.
The following factors were taken into account in Alex Pirie & Sons Ltd’s Application107 in
deciding an application based on honest concurrent use:
• the degree of confusion likely, taking into consideration ‘certain contingencies of
confusion from phonetic similarity between the two words and giving due weight to the
possibility of mistake arising from inaccurate or ill remembered impression on the mind’;
• the fact that the choice of the applicant’s trade mark was honestly made;
• the extent of the honest concurrent use;
• actual confusion: ‘It is the user and not the registration which is liable to cause confusion
and the commercial user has not produced any proof of confusion’; and
• the nature of the trades of the two parties.
2.9 Trade mark infringement

2.9.1 Introduction
Once a trade mark is registered, its owner can, in terms of the provisions of sections 34 and
35 of the Act, take action against third parties who use similar trade marks.
Section 34 provides in subsections 34(1)(a) and (b) that a registered trade mark can be
infringed where another mark is used that is so similar to the registered trade mark that such
use could result in confusion of consumers in circumstances where the goods or services
used by both parties are either the same or are similar to each other.
106 Ex parte Chemisch-Pharmazeutische Aktiengesellschaft 1934 TPD 166.

107 [1933] 50 RPC 147.

Section 34(1)(c) is the dilution provision – it provides that a registered trade mark can be
infringed in circumstances where use by another party of a similar mark would result in a
dilution of the registered trade mark even in circumstances where confusion is not likely.
Section 35 of the Act provides for the infringement of a well-known international trade
mark even if it has not been registered or used in South Africa.
While sections 34(1) and 35 of the Act provide for the grounds on which one can claim in-
fringement, sections 34(2)(a) and section 36 provide possible defences to an infringement claim.
Sections 34, 35 and 36 will be discussed in more detail in the paragraphs that follow.
2.9.2 Grounds of infringement
2.9.2.1 Section 34(1)(a): identical goods/services

Section 34(1)(a) provides that a registered trade mark shall be infringed through: ‘the
unauthorised use in the course of trade in relation to goods or services in respect of
which the trade mark is registered, of an identical mark or of a mark so nearly
resembling it as to be likely to deceive or cause confusion’.
The essential elements that must be proved for an infringement claim to be founded on
this section are:
• unauthorised use
• in the course of trade
• of a trade mark which is identical or confusingly similar
• to a registered trade mark
• in connection with the same goods or services as those covered by the registered trade mark.
Unauthorised use
The owner of the registered trade mark must show that the use by the third party was not
authorised by him. This can become problematic where the infringer claims that there was
an implied authorisation to use the mark or there were circumstances where the infringer
could claim estoppel or acquiescence or other such circumstances.108
The question of authorised or unauthorised use can come up, for example, in relation to
the use of a trade mark on ‘genuine’ goods. Once goods are manufactured with the authority
of the trade mark owner and they make their way into the market, there is an implied
authorisation that those goods may be resold under the trade mark. This is known as the
doctrine of exhaustion of rights. Even if the goods are resold without the express authority
of the trade mark owner, the goods are still genuine goods and the resale of the goods cannot
amount to an infringement of the registered trade mark owner’s rights.109
Often, manufacturers wish to restrict the resale of their products. In many instances, they
have appointed exclusive distributors to distribute their products in particular countries
around the world. If the manufacturer’s products are purchased by other parties who resell
them more cheaply than the authorised distributors, this can cause problems. This is referred
to as ‘parallel importation’ or the importation of grey goods. Because the goods are genuine
goods, ‘parallel importation’ does not amount to trade mark infringement.110
108 See para 2.9.3.8 for a brief discussion on estoppel and acquiescence as a defence against trade mark infringement.
109 Protective Mining & Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape) (Pty) Ltd 1987 (2) SA 961 (A); Frank &
Hirsch (Pty) Ltd v Roopanand Bros (Pty) Ltd 1987 (3) SA 165 (D); Sodastream Limited v Berman Bros (Pty) Ltd 1984 (4)
SA 425 (T).
110 Hampo Systems (Pty) Ltd v Audiolens (Cape) (Pty) Ltd 1985 (4) SA 257 (C); Frank & Hirsch (Pty) Ltd v Roopanand Bros
(Pty) Ltd 1987 (3) SA 165 (D).

This is also made clear in section 34(2)(d), which expressly states that parallel importation
does not amount to trade mark infringement.111
Where, however, goods have been altered in such a way that they can no longer be said
to be ‘genuine’ goods, these principles would not necessarily apply and use of the mark on
altered goods could constitute unauthorised use and trade mark infringement. In Television
Radio Centre (Pty) Ltd v Sony Kabushika Kaisha t/a Sony Corporation,112 Sony took action
against Television Radio Centre for infringing its SONY trade mark by importing into South
Africa SONY video cassette recorders which had been manufactured for use in the United
Kingdom and not in South Africa. Television Radio Centre had modified the cassette
recorders to enable them to be used in South Africa. The court held that the modification of
the video recorder changed their technical nature and meant that the cassette recorders
were no longer genuine goods. The court found that it should take into account, when
determining whether goods are no longer ‘genuine’ goods, the nature of the goods and the
nature, purpose and extent of the alterations. The court found that ‘this issue is essentially
a practical one and each case must be decided on its own facts in the light of ordinary
business practice and the reasonable expectations of purchasers’.
In general, second-hand goods would qualify as genuine goods. As long as there is no
misrepresentation by the seller and they are sold as second-hand goods, then there is no
trade mark infringement. The same would apply to reconditioned goods – reconditioning
of goods would most likely fall within ordinary business practice and would be reasonably
expected by a purchaser.
Each case must be determined on its own facts, however, and would depend, as has been
said above, on the nature of the goods and the nature, purpose and extent of the alteration.
In PAG Ltd v Hawk-Woods Ltd,113 where electric batteries were reconditioned with
replacement cells, the Judge found that ‘my immediate reaction is that the battery which has
been re-celled is a new battery and … a battery which has been re-cased is a new battery. It
would follow that the article returned in the course of trade to the customer is not an article
manufactured by the proprietor’. In these circumstances, the court found that there was
trade mark infringement as the re-celled battery was no longer the genuine product.
In Berman Bros (Pty) Ltd v Sodastream Ltd and Another,114 Sodastream took action against
Berman Bros for refilling its Sodastream gas cylinders with gas that was not manufactured
by Sodastream. Sodastream claimed that the goods were no longer genuine goods and that
the SODASTREAM trade mark was being infringed. The court found that it had to determine
whether the SODASTREAM trade mark was being used in relation to the container/cylinder
(in which case there would not be trade mark infringement) or in relation to its contents (in
which case there would be trade mark infringement). The court found that this was essentially
a question of fact to be decided by asking what the ordinary reasonable consumer would
think.115 On the facts of the case, the court held that there was only infringement of the
SODASTREAM trade mark in relation to the contents of the cylinders in those instances
where the cylinders bore the wording ‘Guaranteed filled by authorised Sodastream
distributor’ stamped on them as this kind of wording would be seen by consumers to refer
to the gas contents and could lead to confusion if the contents were not from Sodastream.
Where the SODASTREAM trade mark only appeared on the valve of the cylinder, consumers
111 See para 2.9.3.4.

112 1987 (2) SA 994 (A).
113 [2002] FSR 46 (ChD).
114 1986 (3) SA 209 (A).
115 See also Metal Box South Africa Ltd v Midpak Blow-Moulders (Pty) Ltd 1988 (2) SA 446 (T).

would associate it with the cylinder itself and not the gas contents and so no confusion would
follow and there would be no trade mark infringement.
The question as to whether goods have been manufactured with the authority of the
registered trade mark owner also arises when a trade mark owner has authorised a
manufacturer to produce goods under his brand and that manufacturer, without
authorisation from the trade mark owner, produces additional goods which are then sold
into the trade. The goods are identical to the authorised goods but were not manufactured
with the trade mark owner’s consent. In MCT Labels SA and Another v Gemelli CC,116 similar
facts arose – the Respondent was a manufacturer for the trade mark owner but then sold
additional goods under the trade mark KAPPA without the trade mark owner’s consent. The
trade mark owner alleged that such goods could not be ‘genuine’ goods. The court agreed
and found that this conduct did constitute trade mark infringement.
Use in the course of trade

In Beecham Group plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd and
Another,117 the court found that the phrase ‘in the course of trade’ could not be understood to
mean use in the course of any trade – it must mean trade in goods or services the same as or
similar to the goods/services of registration. In other words, this phrase is interpreted to imply
that the allegedly infringing trade mark is being used in a trade which is in competition with the
trade of the infringed trade mark.
In addition, the infringing trade mark must be used as a trade mark (in a trade mark
sense) – that is, as an indication of origin or so as to create the impression that there is a
material link in the course of trade between the goods or services in issue and the trade mark
proprietor. Whether a mark is being used in a trade mark sense is a question of fact to be
determined in the light of the specific circumstances of each case. The test is how the mark
would be perceived by the average consumer of the type of goods in question.
This issue came into question in Verimark (Pty) Ltd v BMW AG.118 In this case, BMW’s
well-known BMW logo appeared in an advertisement launched by Verimark for a Verimark
car polish. The logo appeared on a BMW vehicle in a TV advertisement and also appeared
on the packaging material for the polish. The court held that
… there can only be primary trade mark infringement if it is established that

consumers are likely to interpret the mark, as it is used by the third party, as
designating or tending to designate the undertaking from which the third party’s
goods originate … What is accordingly required is an interpretation of the mark
through the eyes of the consumer as used by the alleged infringer. If the use creates
an impression of a material link between the product and the owner of the mark,
there is infringement; otherwise there is not. The use of a mark for purely descriptive
purposes will not create that impression but it is also clear that this is not necessarily
the definitive test … I am satisfied that any customer will regard the presence of the
logo or the picture of the BMW car as identifying the car and being part and parcel
of the car. It is use of the car to illustrate DIAMOND GUARD’S properties rather than
use of the trade mark. No one, in my judgment, would perceive that there exists a
material link between BMW and DIAMOND GUARD or that the logo on the car
performs any guarantee of origin function in relation to DIAMOND GUARD.
116 1991 (1) SA 53 (D).

117 1993 (1) SA 546 (A).
118 2007 (6) SA 263 (SCA); [2007] FSR 33 (SCA).

PAUSE FOR Comparative advertising

REFLECTION The Verimark case changed the law on trade mark infringement quite significantly. Prior to
this judgment, comparative advertising would almost certainly have been considered to be
trade mark infringement. Now, it may or may not constitute infringement, depending on how
the trade mark is used and how such use would be interpreted by the reasonable consumer.
Only if the trade mark is used in such a way that the mark would be interpreted by a
consumer as being linked to the trade mark owner would it constitute trade mark
infringement under section 34(1)(a). Comparative advertising could, however, nevertheless
constitute infringement under section 34(1)(c) – see paragraph 2.9.2.3 for a discussion on
this in relation to section 34(1)(c).
In adidas AG and Another v Pepkor Retail Ltd,119 adidas instituted proceedings against
Pepkor for infringement of its registered three-stripe trade marks120 through Pepkor’s sale of
trainers and soccer boots which prominently featured two and four parallel stripes. Images
of some of these shoes are depicted below.
The first question the court needed to consider was whether Pepkor was using the two and
four stripes as trade marks. In other words, were they being used for the purpose of
distinguishing the goods from the same kind of goods connected in the course of trade to
any other person? The court held that this is
… a factual issue, which must be determined, objectively, by how the marks would be
perceived by the consumer. It seems to me that it will be very difficult to persuade a court
that any mark applied to goods for ‘embellishment’ or ‘decoration’ (which are both
covered by the ordinary meaning of ‘ornamentation’) is not applied for the purpose of
distinguishing the goods … The consumer is used to manufacturers of sporting footwear
applying a variety of stripes to their products to identify them (the adidas stripes are
merely one example) and there is no reason why the consumer would perceive marks
similar to [adidas’] registered trademarks to be merely embellishment or decoration. The
Respondent had not advanced any reason other than the fact that many manufacturers
apply stripes to their products but that begs the question. If they apply these stripes to
identify the product that is trademark use. The fact that the Respondent uses other trade
marks on its footwear would not alter this perception or the legal position.
119 (187/12) [2013] ZASCA 3; see also Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and others 2011 (2) SA
463 (SCA); see also Adidas AG v Marca Mode CV [2008] FSR 38, in which the argument was made that the Respondent’s
use of stripes on its shoes was decorative and therefore descriptive (see para 2.9.3.2).
120 Depictions of the adidas registrations are given later in this paragraph.

The court went on to find that some of the shoes were infringing and others not – see also
paragraph 2.10.2.2 for further discussion on this case and its findings.
The court in Société des Produits Nestlé S.A. v International Foodstuffs Co121 also
considered the question of use as a trade mark. Nestlé was the owner of the following trade
mark registrations (the Finger Wafer marks):
The Respondents were manufacturing and selling the following products:
Nestlé claimed that its Finger Wafer marks were being infringed firstly through the picture
which appeared on the Respondent’s product and secondly through the shape of the
Respondent’s chocolate product.
The court found that customers would not regard the presence of the depictions of the
chocolate fingers on the Respondent’s packaging as use in a trade mark sense – that is, as
creating an impression of a material link between the Respondent’s product and Nestlé’s.
Customers would, in the court’s view, simply see these pictures as a descriptive indication
of what was contained inside the package. The court also did not believe that a customer
who saw the shape of the Respondent’s chocolate product once the package was opened
would believe that the product came from Nestlé. In the circumstances, the court found that
there was no use ‘as a trade mark’ by the Respondent and consequently no infringement in
terms of section 34(1)(a) of the Act with respect to the Finger Wafer marks.
PAUSE FOR Under what circumstances can shape and container trade marks properly serve
REFLECTION an origin function?
If a trade mark owner ‘socialises’ its target consumer to the brand status of the product
shape, then it should be able to serve an origin function. If, for example, Nestlé had
extensively promoted the shape of the KITKAT chocolate, without reference to word marks
like KITKAT and to the distinctive red KITKAT packaging and such promotional material
was put forward in evidence, then the court could more easily have drawn a
121 2013 JDR 2699 (GNP); 2013 BIP 320 (GNP).

conclusion that the shape of the chocolate itself could serve an origin function and could
be used by a third party ‘in a trade mark sense’.
In Die Bergkelder Bpk v Vredendal Koöp Wynmakery and others,122 the court was
required to consider whether a particular container fulfilled a trade mark function. In this
case, Bergkelder claimed that Vredendal was infringing its trade mark registration for its
container, a depiction of which is inserted below.
This registration was for a bocksbeutel-type container, which is a container used in the wine
industry for wine. An image of a typical Bocksbeutel is depicted below.
The court held that ‘… [since] containers are not usually perceived to be source indicators,
a container must, in order to fulfil a trade mark function, at least differ ‘significantly from
the norm or custom of the sector’ ’. The court then found that a Bocksbeutel could not be
a badge of origin in a trade mark sense as there were other Bocksbeutel containers on
the market. An owner of a container trade mark should consequently be sure to lead
evidence of the norms and customs of the sector in question to establish that its container
differs from those norms. Second, it should lead evidence that the container is, in fact,
perceived by consumers to serve a trade mark function. This means that the narrower the
market sector, the better for the trade mark owner, which means, in turn, that the
specification of goods of a container mark should be as limited as possible.
It is not necessary to show use of the infringing mark on products themselves – use on sales
documents, including invoices and delivery notes, can constitute infringement.123
122 2006 (4) SA 275 (SCA).

123 CHEETAH trade mark [1993] FSR 263.

In relation to goods and services in respect of which the trade mark is registered
Section 34(1)(a) requires that the goods in connection with which the offending trade mark
is being used are the same as the goods of registration of the infringed trade mark. If the
registered trade mark has only been used in relation to some of the goods of registration, the
registered mark could be subject to a counterclaim from the Respondent to cancel the goods
which have not been used. If such a claim were to be successful and the applicant had only
relied on section 34(1)(a) to claim infringement, then an infringement claim could fall away
if the infringing use is only in respect of the cancelled goods. It would consequently be
prudent for the applicant to rely on section 34(1)(b) as well, which would extend his claim
to goods similar to those of registration.
Of an identical mark or a mark so nearly resembling it as to be likely to deceive or cause

confusion
The plaintiff must show, on a balance of probabilities, that there is a likelihood of deception
or confusion as a result of the use of the infringing mark.
If the trade marks are identical, the likelihood of confusion of consumers clearly follows
inevitably. If the marks are not identical, then the court should consider whether the two
trade marks are similar enough for confusion of consumers to result.
The question whether two trade marks are confusingly similar underpins most third party
trade mark oppositions, trade mark infringement claims and passing off claims. There is
much overlap in the tests for determining confusing similarity under these different areas
of trade mark law and a consolidated discussion of all factors taken into account in making
these determinations is therefore provided in paragraph 2.11, under the heading
‘Determining the likelihood of confusion: Comparison of marks’.
As a broad summary of the test for comparison in infringement cases, in Plascon-Evans
Paints Ltd v Van Riebeeck Paints (Pty) Ltd,124 the court held:
In an infringement action the onus is on the plaintiff to show the probability or

likelihood of deception or confusion. It is not incumbent upon the plaintiff to show
that every person interested or concerned (usually as customer) in the class of goods
for which his trade mark has been registered would probably be deceived or
confused. It is sufficient if the probabilities establish that a substantial number of
such persons will be deceived or confused. The concept of deception or confusion
is not limited to inducing in the minds of interested persons the erroneous belief or
impression that the goods in relation to which the defendant’s mark is used are the
goods of the proprietor of the registered mark, i.e. the plaintiff, or that there is a
material connection between the defendant’s goods and the proprietor of the
registered mark; it is enough for the plaintiff to show that a substantial number of
persons will probably be confused as to the origin of the goods or the existence or
non-existence of such a connection.
It is important to note that in infringement matters the comparison of marks is limited to

the marks alone – no extraneous matter should be taken into account by the court. The
likelihood of deception must be determined in relation to the respective trade marks
themselves and not in relation to the respective labels/get-up/other features of which the
124 1984 (3) SA 623 (A).

trade marks form part.125 This is very different from the test under passing off. In adidas AG
v Pepkor Retail Ltd,126 adidas instituted proceedings against Pepkor for infringement of its
registered three stripe trade marks, depictions of which are inserted below.
Pepkor was selling trainers and soccer boots which prominently featured two and four
parallel stripes. The court was required to determine whether Pepkor’s two and four stripe
trade marks were confusingly similar to the adidas three stripe registrations.
The court applied the standard principles for making such a comparison (as set out in
paragraph 2.11) and came to the conclusion that Pepkor’s use of four stripes on the shoes
depicted below was an infringement of the adidas registered trade mark rights in terms of
section 34(1)(a).
With respect to the remaining shoes (depicted below) the court found that it was immediately
apparent, on first impression, that the stripe marks used on these shoes were not similar to
adidas’ three stripe registrations and so there was no infringement for these shoes.127
One argument which was raised by Pepkor was that the fact that adidas’ three stripe trade
marks are famous meant that the likelihood of deception or confusion was reduced as
purchasers of the goods would immediately see that Pepkor’s trade marks did not belong to
adidas. The court held:
125 Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA); [2007] FSR 33 (SCA); Puma AG Rudolf Dassler Sport v Global
Warming (Pty) Ltd 2010 (2) SA 600 (SCA); National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563
(SCA).
126 (187/12) [2013] ZASCA 3; see also Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd 2011 (2) SA 463 (SCA).
127 See also para 2.10.2.2 for the findings of the court in relation to adidas’ passing off claim against Pepkor.

In my view the contrary is true. The more distinctive the trademark is, or the greater
its reputation, the greater the likelihood that there will be deception or confusion
where a similar mark is used on competing products. Purchasers who are used to
seeing [adidas’] trademarks will still experience imperfect perception or imperfect
recollection and will be far more likely to conclude that the similar mark is [adidas’]
trade mark or is associated with [adidas’] trademark and consequently that the
competing products come from the same source.
Pepkor also raised the argument that the likelihood of deception or confusion was reduced
because Pepkor’s footwear was sold in a market completely different from the market for
the adidas shoes and at much cheaper prices. The court found, however, that the evidence
did not show that the markets are divided into ‘water tight compartments’ or that purchasers
at Pep Stores do not also shop in stores where adidas shoes are sold. A likelihood of at least
a momentary deception or confusion had been shown and this was sufficient. The court also
held that no significance could be attached to the absence of evidence of deception or
confusion. The court stated that deception or confusion is a matter for the court to decide
and that considering the difficulties associated both with the admissibility of evidence of
deception or confusion and the weight given to such evidence, no significance should be
attached to its absence.
In an infringement claim, the court will compare the notional use by the plaintiff of its
registered trade mark, within limitations, with the actual use that the defendant can make
of his trade mark when using it in a fair and normal manner.
In Lever Bros Port Sunlight Ltd v Sunniwite Products Ltd,128 the court stated ‘… the phrase
“the use by the defendant for trade purposes” means not merely the particular use which the
defendant has in fact made of his mark, or the use which he proposes to make of it, but the
use of the mark itself in any manner which can be regarded as fair use of it …’ In essence, this
means that the fact that the defendant has used the mark on goods of a particular quality or
has sold them in a particular market or at a particular price is largely irrelevant. The courts
will compare the notional use of the registered trade mark by the plaintiff – that is normal and
fair use of its trade mark in connection with any of the goods of registration – with use of the
offending mark by the defendant in a normal and fair manner. Of course, if the defendant is
not using the offending trade mark on any goods falling within the ambit of the plaintiff’s
registration, then this ‘notional use’ doctrine cannot be invoked to extend the infringement
to goods not covered by the registration. Only if the defendant has used his mark on some of
the goods covered by the registration can the court postulate notional use of the mark in a
fair and normal manner on any of the goods covered by the registration.
2.9.2.2 Section 34(1)(b): similar goods/services

Section 34(1)(b) provides that the rights acquired by registration of a trade mark shall be
infringed by: ‘the unauthorised use of a mark which is identical or similar to the trade mark
registered, in the course of trade in relation to goods or services which are so similar to the
goods or services in respect of which the trade mark is registered, that in such use there exists
the likelihood of deception or confusion.’
The only difference between section 34(1)(a) and section 34(1)(b) is that section 34(1)
(b) includes protection for ‘similar’ goods. Section 34(1)(a) covers the goods of registration
only while 34(1)(b) also covers goods which are ‘similar’ to the goods of registration.
Consequently, all the factors discussed in paragraph 2.9.2.1 above would apply equally here,
128 [1949] 66 RPC 84.

but, in addition, the trade mark owner is required to show that the goods/services being
used under the infringing mark are similar enough to the goods of registration to make it
likely that consumers will be confused by that use.
In Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and
Another129 the court found that the use of the same trade mark, FRENCH CONNECTION, in
connection with clothing and cosmetics could lead to confusion. The court took the following
factors into account:
• the nature and composition of the goods;
• their respective use (or functions of the services);
• the trade channels through which the goods can notionally be retailed (or the services
offered).
In the UK case British Sugar plc v James Robertsons & Sons Ltd,130 the court took the following
factors into account:
• the respective uses of the respective goods or services;
• the respective users of the respective goods or services;
• the physical nature of the goods or acts of service;
• the respective trade channels through which the goods or services reached the market
• in the case of self-serve consumer items, where in practice they are respectively found
or likely to be found in supermarkets and in particular whether they are, or are likely to
be, found on the same or different shelves;
• the extent to which the respective goods or services are competitive. This enquiry may
take into account how those in the trade classify goods, for instance where the market
research companies, which of course act for industry, put the goods or services in the
same or different sectors.
The court emphasised that the question of similarity of goods should be considered entirely
independently of other factors such as whether the two trade marks were confusingly similar.
The court stated that this distinction was significant, stating:
… for if one elides the two questions, then a ‘strong’ mark would get protection for
a greater range of goods than a ‘weak’ mark. For instance, “Kodak” for socks or
bicycles might well cause confusion, yet those goods are plainly dissimilar from films
or cameras. I think the question of similarity of goods is wholly independent of the
particular mark the subject of registration or the defendant’s sign.
In the circumstances of the case, the court found that the defendant’s sweet spread was not
similar to the dessert sauces and syrups covered by the trade mark owner’s registration.
Webster and Page131 question the view expressed in the British Sugar case that the
determination of the similarity of goods should be wholly independent of other factors. They state:
It is submitted, with respect, that the decision is not correct on the wording of the
British Act as Section 10(2) requires the Court to determine whether there is a
likelihood of confusion arising from the combined effect of the similarity between
129 1991 (4) SA 850 (A).

130 [1996] RPC 281.
131 Para 12.23 pp. 12–41.

the marks and similarity between the goods or services in question and that the
degree of similarity in each respect may well affect the question of whether their
combined effect is to produce a likelihood of confusion or deception …
With respect to the South African Trade Marks Act, the relevant part of section 34(1)(b) reads:
‘… the unauthorised use of a mark … in relation to goods or services which are so similar to
the goods or services in respect of which the trade mark is registered, that in such use there
exists the likelihood of deception or confusion’ [our emphasis]. This wording seems to
suggest that the similarity between both the goods and the marks must be such that the use
of the offending mark would lead to confusion – the courts should consider the combined
effect of the relevant goods and the relevant marks.
In New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another,132 the court
stated:
There is, it seems to me an interdependence between the two legs of the enquiry: the
less the similarity between the respective goods or services of the parties, the greater
will be the resemblance required between their respective marks before it can be
said that there is a likelihood of deception or confusion in the use of the allegedly
offending mark, … of course, if the respective goods or services of the parties are so
dissimilar to each other that there is no likelihood of deception or confusion, the use
by the Respondent even of a mark which is identical to the Applicant’s registered
mark will not constitute an infringement; also, if the two marks are sufficiently
dissimilar to each other, no amount of similarity between the respective goods or
services of the parties will suffice to bring about an infringement.
In Mettenheimer and Another v Zonquasdrif Vineyards CC and others,133 the SCA agreed that
there is an interdependence between the similarity of the trade marks and the similarity of
the goods. The court then went on to find that the target customer for wine grapes (as opposed
to table grapes) is so different from the target customer for wines that there is no likelihood
of confusion even if almost identical trade marks are used for these respective goods.
In this case, the Appellant owned the trade mark ZONQUASDRIFT in class 33 for wine.
The Respondent used the trade mark ZONQUASDRIFT VINEYARD in relation to wine grapes.
The court found that wine grapes are sold only to winemakers and wine cooperatives and
not to the public and that these buyers would not be confused as to the origin (in a trade
mark sense) of the Respondent’s wine grapes and the Appellant’s wines. (It seems possible
that, on this reasoning, the court would have found that while wine grapes are not similar
to wine, table grapes, ironically, are similar to wines as table grapes are sold in the same
stores to the same customers as wines.)
COUNTER Similar goods?

POINT It could be argued that where goods of one type (wine grapes) are an essential and
perceived major component of goods of another type (wine), giving such goods their
particular character, the goods are similar. This factor could in some circumstances override
the criteria employed in the British Sugar case, which are but guidelines for dealing with
a comparison between types of consumer goods and are not apposite for application in
the comparison of all types of goods. Surely CHRISTIAN DIOR unprocessed
132 2005 (5) SA 388 (C).

133 [2013] ZASCA 152.

leather used in the manufacture of leather garments and CHRISTIAN DIOR leather coats would
be considered to be similar goods even though, as products, they are sold to different
customers and through different trade channels and are different in character?
In Foschini Retail Group (Pty) Ltd v Coetzee,134 the court was called upon to make a
determination on the similarity of goods or services in question in an opposition under
section 10(14). The court reiterated the importance of the classification system and the
importance of only claiming protection in classes in which the Trade Mark applicant actually
intends to operate. This, it was found, was a necessary limitation on the anti-competitive
practice of trade mark registration. The court stated that similarity of goods should not be
found too easily. The court then stated: ‘… [how] tools and apparatus for cooking, kitchen
utensils, containers, glassware, porcelain and earthenware can be regarded as similar to
food, is beyond me’. (This was in a comparison between the goods in classes 29 and 30 (food
classes) and goods in classes 8, 11 and 21. In addition, the court found, when comparing
class 9 (‘… teaching apparatus and instruments …’) and class 41 (‘education, providing of
training …’) that ‘you cannot compare the production and sale of articles to be used in some
activity to the service rendered by using those goods’.
The courts have, accordingly, set a high bar before goods/services in different classes
will be found to be ‘similar’.
2.9.2.3 Section 34(1)(c): dilution

Section 34(1)(c) provides that a registered trade mark shall be infringed by:
the unauthorised use in the course of trade in relation to any goods or services of a mark
which is identical or similar to a trade mark registered, if such trade mark is well known
in the Republic and the use of the said mark would be likely to take unfair advantage
of, or be detrimental to, the distinctive character or the repute of the registered trade
mark, notwithstanding the absence of confusion or deception: Provided that the
provisions of this paragraph shall not apply to a trade mark referred to in section 70(2).
To be successful, the plaintiff needs to show the following:

• unauthorised use of a trade mark
• in the course of trade
• in relation to any goods/services
• of a mark which is identical or similar to a registered trade mark
• which is well known in South Africa
• in such a way that it is likely to take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the registered trade mark.
A trade mark can develop a significant advertising value and selling power as a result of
extensive use and promotion and that selling power can become eroded and devalued if the
mark is used by third parties in connection with other products. The purpose of section 34(1)(c)
(the dilution provision) is to prevent third parties from trading off the goodwill attached to a
well-known brand to promote their own products. Section 34(1)(c) protects not the trade mark
134 2013 JDR 0001 GNP.

itself but its advertising value or selling power, which has usually been acquired as a result of
extensive investment. Trade mark dilution therefore recognises an additional function of a trade
mark, over and above its traditional distinguishing/origin function – its advertising function.
A trade mark can be diluted through ‘blurring’/‘erosion’ or through ‘tarnishment’. Dilution
by erosion effectively reduces the selling power of the mark by eroding its unique identity.
This would typically occur when the same trade mark is used for non-competing goods.
Dilution by blurring would also include the generic use of a trade mark where a trade mark
loses its value altogether as a result of becoming known as the descriptive name of the product.
Dilution by tarnishment takes place where the registered trade mark is tarnished as a
result of unfavourable associations being created between the well-known registered trade
mark and the offending mark. It is ‘an impairment’ of the well-known mark’s capacity to
stimulate the desire to buy.135
Use of the registered trade mark or a mark similar thereto

No confusion or deception needs to be shown for section 34(1)(c) to apply. However, the
trade marks must be identical or ‘similar’. In Bata Ltd v Face Fashions CC and Another,136 the
Supreme Court of Appeal held that the word ‘similar’ should not be given too extensive an
interpretation, as this could have the effect of creating an unacceptable monopoly and
unduly restrict freedom of trade. (In any event, it seems unlikely that any party wishing to
trade off the reputation of a well-known mark would make use of anything less than a very
similar mark.) Webster and Page137 suggest that the term ‘similar’ should be given its ordinary
dictionary meaning, which is to ‘have a marked resemblance or likeness’ and that the
offending mark should immediately bring to mind the well-known trade mark.
Well-known in the Republic

The infringed trade mark must be well known in the Republic. In the McDonald’s case,138 the
court found, in determining the meaning of ‘well-known’ for the purposes of section 35,139
that ‘well-known’ would be similar to the reputation which needs to be determined for the
purposes of passing off,140 which is that the reputation must extend to a substantial number
of members of the public or persons in the trade in question.
In Triomed (Pty) Ltd v Beecham Group plc,141 the court adopted the test which was
applied in the McDonald’s case, stating that the interpretation given for section 35 by the
court in McDonald’s could also be applied for the purposes of section 34(1)(c).
COUNTER The test for ‘well-known’

POINT Webster and Page142 submit that the test for reputation for the purposes of the common law
of passing off may not be strict enough for the test for ‘well-known’ that should be applied
for dilution. Passing off does not require that a trade mark should be ‘famous’ as passing
off is intended to protect a trade mark within a competitive situation where there
135 Triomed (Pty) Ltd v Beecham Group plc [2001] 2 ALL SA 126 (T).
136 2001 (1) SA 844 (SCA).
137 Para 12.26 pp. 12–55.
138 McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd; McDonald’s Corporation v Dax Prop CC; McDonald’s
Corporation v Joburgers Drive-Inn Restaurant 1997 (1) SA 1 (A); [1996] 4 All SA 1 (A).
139 See para 2.9.2.4 below.
140 See para 2.10.1 below.
141 [2001] 2 All SA 126 (T).
142 Pp. 12–57 para 12.27.

is a likelihood of confusion or deception. Dilution on the other hand is applicable in a

non-competitive field and in the absence of a likelihood of confusion or deception. Webster
and Page accordingly submit that the additional factors which are taken into account in the
United States of America, and which are the same as the practice guidelines for determining
reputation under the United Kingdom Trade Mark Act, should also be taken into account.
These are:
• the degree of inherent or acquired distinctiveness of the mark;
• the duration and extent of use of the mark in connection with the goods or services;
• the duration and extent of advertising and publicity of the mark;
• the geographical extent of the trading area in which the mark is used;
• the channels of trade for the goods or services with which the proprietor’s mark is
used;
• the degree of recognition of the proprietor’s mark in its and the defendant’s trading
areas and channels of trade;
• the nature and extent of use of the same or a similar sign by third parties.
In Safari Surf Shop CC v Heavywater and Others,143 the trade mark SPIDER was found to be
well known despite the fact that its use was limited to a specific geographical area (the coast)
only. The court found:
It would be absurd to suggest that where a trade mark is used in relation to goods
which are used or available only in one part of the Republic it cannot be said that
the trade mark is well-known “in the Republic” for the purposes of Section 34(1)(c).
If the trade mark is well-known in that part of the Republic of South Africa in which
the goods in relation to which it is used, are available, then that, in my opinion, is
sufficient. In my opinion, the Applicant has sufficiently established that the use of
its trade mark SPIDER in relation to the surf boards manufactured by it is well-
known throughout surfing circles, in the Republic of South Africa.
Likely to take unfair advantage of, or be detrimental to, the distinctive character or the
repute of the registered trade mark
In Verimark (Pty) Ltd v BMW AG,144 the court found that Verimark had not taken unfair
advantage of the BMW logo and stated that the question of unfair advantage must be
answered with reference to the consumer’s perception of how the registered trade mark has
been used. The court found:
Once again, in my judgment, a consumer will consider the presence of the logo as inci-
dental and part of the car and will accept that the choice of car was fortuitous. In short, I
fail to see how the use of the logo can affect the advertising value of the logo detrimentally.
A mental association does not necessarily lead either to blurring or tarnishing.
In Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a

Sabmark International (Freedom of Expression Institute as Amicus Curjae),145 South African
Breweries (SAB) claimed that Laugh It Off Promotions CC’s use of the slogan BLACK
143 [1996] 4 All SA 316 (D).

144 2007 (6) SA 263 (SCA); [2007] FSR 33 (SCA).
145 2006 (1) SA 144 (CC); [2005] 8 BCLR 743 (CC).

LABOUR WHITE GUILT on its T-shirts amounted to an infringement of its BLACK LABEL
trade mark. A side-by-side depiction of the two trade marks appears below.
The Constitutional Court found that section 34(1)(c) did not apply in these circumstances
and emphasised that section 34(1)(c) does not limit use that takes fair advantage of the mark
or does not threaten substantial harm to the repute of the mark or in fact could lead to harm
but in a fair manner.
The court found that where the trade mark is being used in a manner which would qualify
as ‘free expression’, the use should, to that extent, enjoy protection as fair use and would not
amount to tarnishment of the trade mark. The court found:
The exercise calls for an evaluation of the importance of the purpose, nature, extent
and impact of the limitation of free expression invoked against claims of unfair
advantage or of likelihood of material detriment to a registered mark. In sum, in
order to succeed the owner of the mark bears the onus to demonstrate likelihood of
substantial harm or detriment which, seen within the context of the case, amounts
to unfairness.
The court went on to find that:
… [I]t is plain from the record that no evidence, direct or inferential, was adduced
to establish likelihood of detriment either in the sense of unfavourable associations
that have been created between the registered marks and the illustration on the
T-shirts, or in the context of a likelihood of loss of sales by virtue of the reduced
commercial magnetism of the mark.
Webster and Page submit that the following factors should be taken into account in
determining whether the defendant’s use is detrimental to the distinctive character or repute
of the registered trade mark:146
• whether the mark is inherently distinctive (such as an invented mark) or whether it has
acquired distinctiveness through use;
• the nature and extent of use of the same or a similar mark by third parties;
• the degree of recognition of the proprietor’s mark;
• the channels of trade of the two parties.
146 South African Law of Trade Marks pp. 12-61–12-62 para 12.28.

Another possibly relevant factor in determining whether use of the infringing mark is
detrimental to the distinctive character of the registered trade mark is whether the use of the
infringing mark amounted, in fact, to trade mark use – see the discussion in the next
paragraph on the Nestlé case with respect to ‘use in the course of trade’.
Use in the course of trade in relation to any goods or services

Unlike the determination under sections 34(1)(a) and (b) where the use of the offending
trade mark must be in relation to goods or services which are the same as or similar to those
of the registered trade mark, section 34(1)(c) only requires use of the offending mark in the
course of any trade.
Non-trade mark use can, nevertheless, still be relevant for the purposes of determining
infringement in terms of section 34(1)(c). In the Nestlé case,147 the court, in considering this
question, referred to the Verimark case148 in which the court stated that section 34(1)(c):
… aims at more than safeguarding a product’s ‘badge of origin’ or its ‘source-denoting

function’ … It also protects the reputation, advertising value or selling power of a well-
known mark. But that does not mean that the fact that the mark has been used in a
non-trade mark sense is irrelevant; to the contrary it may be very relevant to determine
whether unfair advantage has been taken of or whether the use was detrimental to the
mark … [T]he provision is not intended to enable the proprietor of a well-known
registered mark to object as a matter of course to the use of a sign which may remind
people of his mark; there is a general reluctance to apply this provision too widely; not
only must the advantage be unfair, but it must be of a sufficiently significant degree to
warrant restraining of what is …. non-confusing use; and … the unfair advantage or
detriment must be properly substantiated or established to the satisfaction of the
Court: the Court must be satisfied by evidence of actual detriment or unfair advantage.
The court went on to hold that it was of the view that the use by the Respondents of the
pictures of chocolate fingers on their packaging would not take unfair advantage of or be
detrimental to the Finger Wafer trade marks. Despite the fact that the products had been sold
side by side for nine years by the time the application was launched, Nestlé did not provide
any evidence to substantiate its allegation that the Respondents’ use would take unfair
advantage of the distinctive character of the Finger Wafer marks. In these circumstances, the
court found that there was no infringement in terms of section 34(1)(c). 149
PAUSE FOR Comparative advertising could contravene section 34(1(c) even if it is not
REFLECTION infringement in terms of section 34(1)(a)
As discussed in paragraph 2.9.2.1 above, the outcome of the Verimark case is that there
may now be circumstances where comparative advertising does not amount to trade mark
infringement in terms of section 34(1)(a). If the offending mark is not used ‘in a trade mark
sense’, then there is no section 34(1)(a) infringement. However, as section 34(1)(c) does
not require trade mark use, the comparative advertising could nevertheless
147 Société des Produits Nestlé S.A. v International Foodstuffs Co 2013 JDR 2699 (GNP); 2013 BIP 320 (GNP).
148 2007 (6) SA 263 (SCA); [2007] FSR 33 (SCA).
149 See also Intel Corporation Inc v CPM United Kingdom Ltd [2009] RPC 15 and L’Oreal S.A. v Bellure NV [2010] RPC 23
(CA) for the latest thinking in Europe on dilution.

amount to dilution in terms of section 34(1)(c), provided the registered mark is very well
known and all the other essential elements of section 34(1)(c) are met. Of course, the fact
of non-trade mark use could also affect the court’s determination of whether unfair
advantage is being taken of the well-known trade mark’s distinctive character, which would
also affect a finding of infringement under section 34(1)(c), as in the Nestlé case.
A trade mark owner would do well to consider the ASA Code of Advertising Practice150 in
deciding whether comparative advertising amounts to trade mark dilution under section
34(1)(c). The ASA Code contains guidelines as to the circumstances under which
comparative advertising would be found to be unfair and against the ASA Code. It seems
likely that if the advertising is not unfair in terms of the ASA Code, it would not be found to
‘take unfair advantage’ under section 34(1)(c).
2.9.2.4 Section 35: ‘famous’ marks

Section 35 of the Act provides:
Protection of well-known marks under Paris Convention.

(1) References in this Act to a trade mark which is entitled to protection under the
Paris Convention as a well known trade mark, are to a mark which is well known
in the Republic as being the mark of—
(a) a person who is a national of a convention country; or
(b) a person who is domiciled in, or has a real and effective industrial or
commercial establishment in, a convention country, whether or not such
person carries on business, or has any goodwill, in the Republic.
(1A) In determining for the purposes of subsection (1) whether a trade mark is well-
known in the Republic, due regard shall be given to the knowledge of the trade
mark in the relevant sector of the public, including knowledge which has been
obtained as a result of the promotion of the trade mark.
(2) A reference in this Act to the proprietor of such a mark shall be construed
accordingly.
(3) The proprietor of a trade mark which is entitled to protection under the Paris
Convention as a well-known trade mark is entitled to restrain the use in the
Republic of a trade mark which constitutes, or the essential part of which
constitutes, a reproduction, imitation or translation of the well-known trade
mark in relation to goods or services which are identical or similar to the goods
or services in respect of which the trade mark is well-known and where the use
is likely to cause deception or confusion.
(4) Where, by virtue of section 10(8), the authorisation of the competent authority
of a convention country or an international organisation is required for
the registration of a mark as a trade mark, such authority or organisation is
entitled to restrain the use in the Republic of such a mark without such
authorisation.
150 The Advertising Standards Authority (ASA) is as voluntary association of retailers, manufacturers and advertising bodies
in South Africa who have agreed to adhere to a code of advertising practice.

Section 35 provides protection to famous foreign trade marks – trade marks that are well
known in South Africa – despite not having been registered or even used in South Africa.
To be successful on this ground, the applicant must show:
• that his mark is well known in South Africa;
• that he is a national of or domiciled or established in a convention country;
• that the offending mark is a reproduction, imitation or translation of his well-known mark;
• that it is being used in relation to goods or services which are identical or similar to his
goods or services; and
• that such use is likely to cause deception or confusion.
Although this section does not specifically provide that the use must be unauthorised and
in the course of trade, these factors would also need to be proved for a claim of infringement
to be sustained.
Well-known in the Republic

In the McDonald’s case,151 the court had to determine both the meaning of the phrase ‘well-
known in the Republic’ and the level of awareness that is required in the public mind. The
court found that the type of protection ‘which is granted … is typical of that which is available
under the common law of passing-off – a prohibition on the use of the mark in relation to
goods or services in respect of which the mark is well-known where the use is likely to cause
deception or confusion’. The court found that a mark is ‘well-known in the Republic’ if it is
well known to the target market of the branded goods/services – that is, it is not necessary
to show that the trade mark is well known to all sectors of the population.
Section 35(1)(A), which was introduced by the Intellectual Property Laws Amendment
Act 38 of 1997, specifically provides that regard must be had to the knowledge of the trade
mark in the relevant sector of the public, including knowledge which has been obtained
as a result of the promotion of the trade mark, when determining whether or not a trade
mark is well known in the Republic. The introduction of this section reinforced the principles
applied in the McDonald’s case.
In determining the level of awareness required within the target market, the court found
that the question is not whether a few people know the mark well but rather whether
sufficient people know it well enough to entitle it to protection. The court found the test to
be the same as that applied under the law of passing off, which is that the mark should be
known to a ‘substantial number’ of members of the target market (see para 2.10.2.3). A
‘substantial number’ will differ from case to case. For example, in a limited and specialised
market, a reputation extending to relatively few people could be enough.
The court divided the target market of the MCDONALD’S trade mark into potential
customers and potential franchisees. The court then commented: ‘Potential customers would
cover a wide field. It would include all persons who like fast food of this type and have the
money to buy it. Since the cost is not high, there will be many such people. Potential franchisees
would be a smaller group, namely persons who can finance and run a McDonald’s franchise,
or consider that they can.’ The court then found that one could expect that almost all potential
franchises should have heard of the MCDONALD’S trade mark. With respect to potential
customers, on the other hand, the expected level of awareness would be lower as many people
who would be interested in buying a hamburger may not have heard of MCDONALD’S.
151 McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd; McDonald’s Corporation v Dax Prop CC; McDonald’s
Corporation v Joburgers Drive-Inn Restaurant 1997 (1) SA 1 (A); [1996] 4 All SA 1 (A).

PAUSE FOR Use of market survey evidence to establish reputation

REFLECTION Plaintiffs often rely on market survey evidence to prove that trade marks have gained a
reputation in South Africa. Market survey evidence was used in the McDonald’s case. The
market survey evidence was found to be admissible in this case but caution must be applied
in leading this kind of evidence and the plaintiff must ensure that the survey is conducted
on sound principles. See paragraph 2.10.1 for a discussion on the admissibility of market
survey evidence.
Where the owner of a foreign trade mark has never used its mark directly in South Africa, it
clearly cannot lead the normal evidence of use and advertising in South Africa. Instead, the
plaintiff would have to rely on its worldwide sales and advertising figures to show that the
international reputation has spilled over into South Africa. In the case of very famous trade
marks such as NIKE, MICROSOFT, APPLE etc, the court could reach a conclusion as to
renown in South Africa as a result of international sales and promotion, even without actual
evidence of a spill-over reputation in South Africa. In other instances, it is necessary to lead
evidence of the actual exposure to the brand in South Africa, including for example internet
exposure, sale of international magazines, sponsorship of sporting events, television
advertisements and exposure to South African tourists travelling abroad.
A national of, or a person domiciled or established in a convention country

The primary purpose of section 35 is to protect foreign proprietors whose trade marks are
well known but have not been used or registered in South Africa. This is to meet South
Africa’s obligations under the Paris Convention. The requirement that the plaintiff must be
established in a convention country is simply to ensure that the scope of protection is not
extended to nationals of non-convention countries that have not granted similar protection
to South African nationals.
In Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd,152 the court stated
expressly that the protection afforded under section 35 applies only to the owners of well-
known foreign trade marks. It cannot be relied upon by the owner of a well-known South
African trade mark. The owner of a well-known unregistered South African trade mark
should be able to rely on the common law or on relevant statutory protection, such as
section 10(12).
A reproduction, imitation or translation of the well-known trade mark

The requirement that the offending trade mark must be ‘a reproduction, imitation or
translation’ of the well-known trade mark implies a higher standard of similarity than the
standard required by sections 34(1)(a) and (b). This wording implies that there must be a
deliberate misappropriation and copying of the well-known trade mark.
See paragraph 2.11 for further discussion on the comparison of trade marks in
determining the likelihood of confusion in infringement cases.
Saving of vested rights provision – section 36(2): It should be noted that section 36(2)
of the Act provides that if a trade mark has been used continuously and in good faith since
before 31 August 1991 (the date on which the first draft of the Trade Marks Bill was published)
or before the date on which the well-known mark became well known in South Africa, then
there can be no infringement under section 35.
152 2005 (1) SA 346 (T).

In AM Moolla Group Ltd v The Gap Inc,153 the court was called upon to determine whether
section 36(2) could be raised as a defence to a section 35 infringement claim instituted by
Gap Inc in respect of AM Moolla’s use of the GAP trade mark. The court found that there was
no evidence that AM Moolla had been making continuous and bona fide use of the GAP
trade marks as at 1991. Although AM Moolla had licensed other parties to use the relevant
marks, the licensees were not recorded as registered users, as was required under the Trade
Marks Act 62 of 1963 (which was in operation in 1991), in order that the use might qualify as
use by the trade mark owner. Accordingly, there was no bona fide and continuous use by
AM Moolla at the relevant time and section 36(2) could not apply.
However, the court nevertheless found that there was no infringement under section 35.
The court pointed out that section 35 can only be applied if the foreign mark was well known
at the time when it was reproduced, imitated or translated by the local enterprise. The court
stated that ‘… A local mark, validly appropriated, cannot lose its value or protection simply
because someone else’s reputation overtakes its business.’ In this case, the GAP trade mark
had been adopted locally as long ago as 1973. The GAP mark of Gap Inc was not, at that stage,
well known and so section 35 could not apply.154
2.9.3 Defences to infringement

The Act provides, in section 34(2), for a number of specific circumstances which could
qualify as a defence to a trade mark infringement claim under section 34. Section 34(2)
defences cannot be applied in relation to a section 35 claim as section 34(2) specifically refers
to registered trade marks.
It is important to note that the defences outlined in section 34(2) are specific statutory
defences which can be used in addition to the general defences to trade mark infringement.
The latter would of course include the argument that the infringement claim does not meet
any one of the essential elements for the particular infringement section, such as that the marks
are not confusingly similar; the goods are not similar; there is no use as a trade mark etc.
Section 34(2) provides for the following defences:
• bona fide use of own name;
• bona fide descriptive use;
• bona fide use to indicate intended purpose;
• use on genuine goods;
• bona fide use of utilitarian features;
• use to which the registration does not extend;
• concurrent registration.
2.9.3.1 Section 34(2)(a): bona fide use of own name

Section 34(2)(a) provides that a registered trade mark will not be infringed by: ‘any bona
fide use by a person of his own name, the name of his place of business, the name of any
of his predecessors in business; or the name of any such predecessor’s place of business’.
The proviso to section 34(2) stipulates that 34(2)(a) will not apply to the name of any
juristic person whose name is registered after the date of registration of the trade mark. In
addition, the use must be consistent with fair practice for a valid defence to be raised.
The name need not be used descriptively for the defence to be raised – it can also
be used as a trade mark, although such use must be in good faith. In A Steiner Products
153 2005 (6) SA 568 (SCA).

154 See para 2.7.4.2 for a brief discussion on this case in the context of non-use cancellation.

Ltd v Willy Steiner Ltd,155 the court held that the defendants could be taken to have
known of the existence of the plaintiff’s mark and that their use of their own name as
a trade mark for their product would probably cause confusion. In these circumstances,
the court held that the use of the corporate name in that way was not a bona fide use
of the name.
The court in Jenni Button156 found that the term ‘bona fide’ in section 32(4)(a) had been
interpreted to mean that honest use by a person of his or her own name without the intention
to deceive anybody and without the intention to make use of the goodwill of another person
could be excused under this provision.
Bona fide use of own ‘name’ implies use of a full name, meaning the first name and
surname of a person or a full company name. This does not mean that designations
identifying the nature of a company, such as ‘limited’ need be used. The use of the first name
of a person alone is not a defence.
2.9.3.2 Section 34(2)(b): bona fide descriptive use

Section 34(2)(b) provides that a registered trade mark is not infringed by: ‘the use by any
person of any bona fide description or indication of the kind, quality, quantity,
intended purpose, value, geographical origin or other characteristics of his goods or
services, or the mode or time of production of the goods or the rendering of the
services’. This section is also subject to the proviso that the use must be consistent with
fair practice.
In Century City Apartments Property Services CC and Another v Century City Property
Owners’ Association,157 the Appellate Division found that section 34(2)(b) represents ‘the
other side of the coin of the requirement that the infringing use has to be trade mark use.’ If
the infringing use amounts to no more than bona fide descriptive use, then it cannot be trade
mark use and cannot be an infringement.
In Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd & Another,158 Groupe LFE made
use of the word ‘Swartland’ on its wines and, when Swartland Winery objected to such use,
Groupe LFE argued that its use was a bona fide description of the geographical origin of its
wines, as Swartland is a geographical area in which wines are produced. The court found
that Groupe LFE’s use was not bona fide descriptive use and stated:
The submission is without any merit. The label around the neck of the bottle is black
and contains in white capitals the name Swartland. In addition, there is a rather
indistinct golden medallion with the inscription ‘Wine of Origin Swartland’ … The
main label is also black with a prominent Swartland, 6 mm high, in white capital
letters. Above the name there appears also in fairly indistinct gold lettering, 2 mm
high, the words ‘Wine of Origin’ in Afrikaans. … What this conveys to the average
purchaser is two things: the trade mark is SWARTLAND and it is a wine of origin
from Swartland.
This case illustrates the importance of the way in which a word is used. Even if the word is
ordinarily descriptive, it can nevertheless amount to trade mark use, depending on how it
appears on the packaging.
155 [1964] RPC 356.

156 Button v Jenni Button (Pty) Ltd 2008 BIP 242 (C).
157 2010 (3) SA 1 (SCA).
158 [2011] ZASCA 4.

In Abdulhay (M) Mayet Group (Pty) Ltd v Renasa Insurance Company Limited,159 the
Respondent had used the word RELIANCE in the phrase ‘A Reliance Group Holdings Company’.
They argued that the use of this word constituted a bona fide description in that it indicated
that they were part of a famous and powerful group of international companies. The court
rejected this claim on the basis that a reference to being part of a group of companies was not
a description of the characteristics of the services being offered. The court stated:
A characteristic of the Respondents is that they provide insurance services. In my

view, it is not characteristic of the Respondent’s insurance services that they are the
subsidiary of Reliance Group Holdings Inc. An entity’s association with another
entity is not a characteristic of the first entity’s services even if it could be said that
it is a characteristic of the first entity itself.
In Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd,160 the court made the following
comment:
… it seems to me that what the legislature intended to safeguard by means of the

provisions of this sub-section is the use by a trader, in relation to his goods, of words,
which are fairly descriptive of his goods, genuinely for the purpose of describing the
character or quality of the goods: the use of the words must not be a mere device to
secure some ulterior object, as for example where the words are used in order to
take advantage of the goodwill attaching to the registered trade mark of another.
In Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd,161 Prima Toys brought action against
Tri-Ang Pedigree for their use of the trade mark BABY FIRST LOVE. Prima Toys was the
owner of the registered trade mark BABY LOVE. Tri-Ang was the proprietor of the trade mark
FIRST LOVE. The court accepted that the word ‘baby’ was descriptive of a doll but went on
to conclude that the word ‘baby’ in BABY FIRST LOVE was not used to describe the character
or quality of the doll but rather as part of the trade mark. In addition, the court questioned
the bona fides of Tri-Ang. Tri-Ang’s defence that its use of the word ‘baby’ was descriptive
was accordingly rejected.
In Standard Bank of SA Ltd v United Bank Ltd,162 the court stated that no one is prevented
from using ordinary English words to describe the quality or character of his goods or
services. However, when such words are used as a trade mark, then the defence of bona fide
descriptive use cannot be raised. The court stated: ‘… it is very difficult to prove bona fide
descriptive use when the use is as a trade mark’.
In the European Court of Justice case of adidas AG v Marca Mode CV,163 Marca Mode
(and others) defended their use of a two stripe device on shoes they were selling, by arguing
that the use of stripes was decorative and that it consequently did not constitute an
infringement of adidas’ three stripe trade mark registrations. The court found that the
159 1999 (4) SA1039 (T). The court’s decision in this matter was subsequently criticised and found to be wrong by the
Supreme Court of Appeal in the Century City case on the basis that the contentious use of the mark RELIANCE was not
trade mark use and therefore did not infringe the registered mark. This basis for non-infringement is slightly different
from the principle articulated in the dictum quoted here and does not necessarily invalidate it.
160 1984 (3) SA 623 (A).
161 1985 (1) SA 448 (A).
162 1991 (4) SA 780 (T).
163 [2008] FSR 38.

defence of descriptiveness could only be applied if the particular sign was being used in a
descriptive way – to describe a particular quality of the goods in question. As Marca Mode
was claiming that its use of the stripes was decorative, it could not be descriptive – it did not
relate to one of the characteristics of the goods. The defence could therefore not stand.
2.9.3.3 Section 34(2)(c): bona fide use to indicate intended purpose

Section 34(2)(c) provides that a registered trade mark shall not be infringed by: ‘the bona
fide use of the trade mark in relation to goods or services where it is reasonable to
indicate the intended purpose of such goods, including spare parts and accessories, and
such services’. Section 34(2)(c) is also subject to the proviso that the use should be consistent
with fair practice before it can constitute a valid defence.
Although the descriptive use intended to be covered by this provision would most
likely also be covered by section 34(2)(b), this provision makes it abundantly clear
that a registered trade mark can be used to describe the intended purpose of goods or
services. This applies particularly, for example, to car repair services or spare part
manufacturers. This provision allows a manufacturer of car parts to state that its spare
parts can be used for, say, BMW/Mercedes/Toyota vehicles without falling foul of the
infringement provisions of the Act. Having said that, the way in which the trade mark is
used is of tremendous significance and if it is not used in a clearly descriptive manner,
then this defence may not apply.
In Commercial Auto Glass (Pty) Ltd v BMW AG,164 Commercial Autoglass supplied and
fitted unauthorised windscreens for BMW vehicles. They advertised windscreens using
phrases such as: ‘BMW E30 3 Series, 83–92 R355’. BMW claimed that this amounted to an
infringement of its trade mark. The court found:
Especially when dealing with spare parts and alleged counterfeits, the issues are not
always black and white. It all boils down to a question of trade mark use because, as
Webster & Page points out, ‘a phrase such as XYZ spare parts’ [where XYZ is the
registered trade mark] would not be protected by this Section while ‘spare parts for
XYZ goods’ would clearly fall within the provisions of Section 34(2)(c).
The court found that the Appellant’s use did constitute trade mark use and that it was not
bona fide nor reasonable use consistent with fair practice.
The court stated the following, referring to a previous dictum by Du Plessis J in an
unreported case:
Use will not be bona fide, however, if the user does not unequivocally make it clear
that his goods are not connected in the course of trade with the proprietor of the
trade mark. It follows that bona fide use in Section 34(2)(c) means honest use of a
trade mark, without the intention to deceive anybody and while unequivocally
making it clear that the goods are not connected in the course of trade with the
proprietor of the trade mark.
The court went on to state: ‘The question that arises is why the Appellant insists on
conducting its business in the manner described. Why can it not, through the use of a few
words, convey the true facts to the public?’
164 [2007] ZASCA 96; 2007 (6) SA 637 (SCA).

In Gillette Co v L A Laboratories Ltd OY,165 the European Court of Justice considered the
criteria that should be applied in determining whether the equivalent provisions of the
European Directorate would be applicable. The court stated:
Use of the trade mark by a third party who is not its owner is necessary in order to
indicate the intended purpose of a product marketed by that third party where such
use in practice constitutes the only means of providing the public with
comprehensible and complete information on that intended purpose in order to
preserve the undistorted system of competition in the market for that product.
In considering the question of ‘honest use’, the court stated:

Use of the trade mark will not be in accordance with honest practices in industrial and
commercial matters if, for example:
• it is done in such a manner as to give the impression that there is a commercial

connection between the third party and trade mark owner;
• it affects the value of the trade mark by taking unfair advantage of its distinctive
character or repute;
• it entails the discrediting or denigration of that mark;
• or where the third party presents its product as an imitation or replica of the
product bearing the trade mark of which it is not the owner.
2.9.3.4 Section 34(2)(d): use on genuine goods

Section 34(2)(d) states that a registered trade mark shall not be infringed by: ‘The
importation into or the distribution, sale or offering for sale in the Republic of goods to
which the trade mark has been applied by or with the consent of the proprietor thereof’.
This provision, as discussed in paragraph 2.9.2.1, provides a defence to a claim relating
to trading in parallel imports provided that the goods are ‘genuine goods’ and that the trade
mark was applied with the consent of the trade mark proprietor.
2.9.3.5 Section 34(2)(e): bona fide use of utilitarian features

Section 34(2)(e) provides that a registered trade mark shall not be infringed by: ‘the bona
fide use by any person of any utilitarian features embodied in a container, shape,
configuration, colour or pattern which is registered as a trade mark’.
The issues discussed under section 10(2)166 relating to the registration of a trade mark
which has utilitarian or functional features will apply equally in the interpretation of section
34(2)(e). One point of difference is that section 34(2)(e) includes a reference to container
trade marks, which section 10(2) does not.
2.9.3.6 Section 34(2)(f): use for which a registration does not extend
Section 34(2)(f) provides that a registered trade mark shall not be infringed by: ‘the use of
a trade mark in any manner in respect of or in relation to goods to be sold or otherwise
traded in, or services to be performed, in any place, or in relation to goods to be
165 [2005] FSR 37.

166 See para 2.4.3.1.

exported to any market, or in any other manner in relation to which, having regard to
any conditions or limitations entered in the register, the registration does not extend.’
Where a trade mark registration has been limited through an endorsement such as a
disclaimer or an undertaking, then any infringement must also be correspondingly limited.
Where for example a trade mark is registered subject to the condition that it will be used for
export only, then use of the same trade mark for goods intended for sale in the Republic only
would not constitute an infringement. Similarly, if a trade mark has been limited to specific
colours, it may not be an infringement to use the trade mark in different colours (provided
the different colours are not confusingly similar to the specified colours).
2.9.3.7 Section 34(2)(g): concurrent registration

Section 34(2)(g) provides that a registered trade mark shall not be infringed by: ‘the use of
any identical or confusingly or deceptively similar trade mark which is registered’.
In other words, the use of a concurrent registered trade mark is an absolute defence to
an infringement claim.
2.9.3.8 Acquiescence and estoppel

Acquiescence and estoppel can also form a defence to an infringement claim. Estoppel as a
defence would arise when the plaintiff has performed a positive act which is calculated to
induce the belief in the defendant that the plaintiff has no objection to the use of the trade
mark (such as permission for the use of the mark). Acquiescence would arise when the plaintiff
has simply stood by without taking any positive action to interfere with the defendant’s use.167
2.9.4 Procedure for lodging a claim for trade mark infringement

Trade mark infringement proceedings are pursued in the court (generally in the High Court)
and usually follow the application procedure (i.e. issuing a Notice of Motion accompanied
by a founding affidavit) as disputes of fact do not usually arise. Issues of dispute generally
revolve around the legal question of whether two trade marks are confusingly similar. If,
however, there are, or are likely to be, disputes of fact, the action procedure should be
followed, and a summons, accompanied by particulars of claim, issued.
The procedure to be followed in the case of application proceedings is the same as the
procedure for filing an application for rectification before the court. See paragraph 2.7.5 for
a discussion of this procedure.
2.9.5 Remedies
Section 34(3) of the Act provides that the court can grant the proprietor of a registered trade
mark the following relief in infringement proceedings:
• an interdict;
• an order for removal of the infringing mark from all material or, where the infringing
mark is inseparable or incapable of being removed from the material, an order that all
such material be delivered up to the proprietor;
• damages, including damages arising from infringing acts performed after advertisement
of the acceptance of an application for registration;
167 Policansky Brothers v Hermann & Canard 1910 TPD 1265; Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green
Point) (Pty) Ltd 1974 (2) SA 125 (C); Turbek Trading CC v A&D Spitz Limited [2010] 2 All SA 284 (SCA), [2010] FSR 16
(SCA). See also para 2.7.2.

• in lieu of damages, at the option of the proprietor, a reasonable royalty which would have
been payable by a licensee for the use of the trade mark concerned after advertisement
of the acceptance of an application for registration.
Section 34(4) provides that the court can direct an enquiry to be held to determine the
damages payable.
Interdict: The principles which apply to the granting of an interdict in relation to any delict
apply equally to the granting of an interdict for trade mark infringement. An interdict can also
be requested in circumstances where the actual infringement has not yet taken place but there
is a reasonable apprehension that there will be infringement. If the trade mark owner delays
taking action for an unreasonable period of time, this could result in the refusal of an interdict.168
If the offending conduct has stopped or the defendant has provided an undertaking that
they have stopped all use, then no interdict will be granted.169
Delivery up: The court may grant an order for removal of the infringing mark from all
material or for the delivery up of all material bearing the infringing mark (particularly in
circumstances where the mark cannot be removed) to the owner of the infringed trade mark.
Damages: Section 34(3) specifically states that damages can be awarded from the date on
which the trade mark application is advertised as having been accepted. If it can be shown
that the infringer in fact had knowledge of the existence of the registered trade mark from
before this date, then damages could be claimed from the date on which it can be shown
that the infringer had this knowledge. Damages claimed under this provision must be
calculated on the basis of an actual financial loss sustained by the plaintiff (including the
loss of profits) as a result of the infringement. As damages of this nature are exceedingly
difficult to prove, in most cases trade mark owners would opt for claiming a reasonable
royalty rather than actual damages. A reasonable royalty can be claimed in lieu of damages.
Reasonable royalty: It was held in Puma AG Rudolf Dassler Sport v Global Warming (Pty)
Ltd170 that ‘[a]ll a claimant has to prove is the number of infringing articles and the reasonable
royalty rate’.
Anton Piller orders: It is also possible to apply for a so-called ‘Anton Piller’ order in certain
circumstances. These orders are applicable only in circumstances where the owner of the
trade mark fears that the infringer would remove or destroy evidence if notice of the
proceedings were given to the infringer. The sole purpose of the order is to attach and
preserve evidence of infringement and the order does not in itself constitute a substantive
infringement claim. Once the Anton Piller order is executed, a second application must be
filed dealing with the trade mark infringement per se.
In the Shoba case,171 the court stated that the applicant must prima face establish the
following in order to be granted an Anton Piller order:
(1) That he, the applicant has a cause of action against this respondent which he
intends to pursue;
(2) That the respondent has in his possession specific (and specified) documents or
things which constitute vital evidence in substantiation of applicant’s cause of action
(but in respect of which applicant cannot claim a real or personal right); and
168 Turbek Trading CC v A&D Spitz Ltd [2010] 2 All SA 284 (SCA).
169 Smith and Nephew Ltd v Mediplast Pharmaceutical Sales CC 1999 (2) SA 646 (D).
170 2010 (2) SA 600 (SCA); [2010] 1 All SA 25 (SCA).
171 Shoba v Officer Commanding, Temporary Police Camp, Wagendrift Dam, Maphanga v Officer Commanding, South
African Police, Murder and Robbery Unit, Pietermaritzburg and Others 1995 (4) SA 1 (A). With regard to Anton Piller
orders, see OH Dean Handbook of South African Copyright Law (1987) para 1.11.9.

(3) That there is a real and well-founded apprehension that once the respondent
becomes aware of the claim to be brought against him this evidence may be
hidden or destroyed or in some manner be spirited away by the time the case
comes to trial or to the stage of discovery.
2.10 Passing off

2.10.1 Introduction
Passing off forms part of the delict of unlawful competition, which is discussed in chapter 3.
It was, however, recognised as a delict before the delict of unlawful competition, as an
umbrella term, was recognised and is consequently treated as a separate and distinct delict,
with specific essential elements. It derives essentially from English law but has been
anchored in South African law as a species of Aquilian liability.
The law of passing off protects a trader’s business reputation, which forms part of the
goodwill of his business. ‘Goodwill’ or ‘the attractive force which brings in custom’, consists
of a number of intangible elements, of which reputation is one. It is this reputation, as well
as any symbols associated with it, which is protected under the law of passing off.
Passing off occurs where a trader misrepresents that its goods or services are in some
way associated with another trader, who has developed goodwill in a particular product or
service line and, as a result of the misrepresentation, there is a reasonable likelihood that
consumers will be confused, leading to damage to the trader’s goodwill.
Passing off is not an easy cause of action to establish, as will be shown in the paragraphs that
follow. It would generally be relied upon in circumstances where a trade mark owner does not
own a registered trade mark and consequently needs to rely on the common law of passing off to
prevent his trade mark or other identifying signs from being exploited by a third party. Where a
trader has a registered trade mark, he would rely on infringement proceedings, which is an easier
cause of action to establish, primarily because trade mark infringement under sections 34(1)(a)
and (b) does not require proof of a reputation in the trade mark in order to found rights – proof of
the registration is sufficient. The two causes of action are, however, frequently used in tandem.
2.10.2 Elements of passing off

Rabie JA defined passing off as follows in Capital Estate & General Agencies (Pty) Ltd and
Others v Holiday Inns Inc and Others:172
The wrong known as passing off consists in a representation by one person that his business
(or merchandise, as the case may be) is that of another, or that it is associated with that of
another, and, in order to determine whether a representation amounts to a passing-off, one
enquires whether there is a reasonable likelihood that members of the public may be
confused into believing that the business of the one is, or is connected with, that of another.
The following elements must consequently be proved for a successful passing off action:173
• reputation in a particular mark or symbol;
172 1977 (2) SA 916 (A) at 929 C.

173 See adidas AG v Pepkor Retail Limited (187/12) [2013] ZA SCA 3, in which the court stated:
In order to succeed in passing-off proceedings based upon an implied representation the aggrieved trader
must establish, first, that the name, mark or get-up used by that trader has become distinctive of the trader’s
goods or merchandise in that the public associates the name, mark or get-up with the goods or merchandise
marketed by that trader and, secondly, that the name, mark or get-up used by the other trader is so used as
to cause the public to be confused or deceived in the manner described.

• a misrepresentation by another trader that his goods or services are in some way
associated with those of the trader who holds the reputation;
• a likelihood that the misrepresentation will lead to consumers being confused into
believing that the business of the one is connected with that of the other;
• resultant damage to the trader’s goodwill.
2.10.2.1 Reputation
What is ‘reputation’?
In Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd,174 the court held:
Reputation is the opinion which the relevant section of the community holds of the
Plaintiff or his product … The Plaintiff’s reputation may be associated with the symbol
under which his product is marketed. The symbol renders the product distinctive of
the Plaintiff or his product. A false representation by the Defendant about the symbol
used by the Plaintiff may encourage or induce potential customers of the Plaintiff,
believing that they were patronising him, into patronising the Defendant.
The first element to be established in a passing off action is consequently the existence of a
reputation which is usually connected in some way with a symbol of some sort – such as a
trade mark or get-up or trade dress – which has been extensively used and has become
distinctive of the trader’s business, goods or service. Passing off protects the reputation
associated with a particular symbol and not the symbol itself.175
In Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd,176 the court held:
… [the] plaintiff must prove in the first instance that the defendant has used or is using
in connection with his own goods a name, mark, sign or get up which has become
distinctive ‘in the sense that by the use of (the plaintiff’s) name or mark etc., in relation
to goods they are regarded, by a substantial number of members of the public or in
the trade, as coming from a particular source’ … In other words the plaintiff must prove
that the feature of his product on which he relies has acquired a meaning or
significance, so that it indicates a single source for goods on which that feature is used.
Extent of reputation required

A claimant must establish that he has a reputation among a substantial number of persons
who are either clients or potential clients of his business.177 The claimant must prove that
the symbol is known to enough people in his target market to ensure that the reputation has
acquired a commercial value. How many people is ‘enough’ would depend very much on
the circumstances of each case and, for example, the number could be quite small in the
case of a specialised market whereas it would need to be a significant number in the case of
a product which is targeted at the mass market.
In adidas AG v Pepkor Retail Limited,178 the court found that the more distinctive the
get-up is or the greater the extent of the reputation, the greater the likelihood will be that the
public will be confused or deceived. The court stated
174 2000 (3) SA 259 (SCA) at 267.

175 John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T).
176 1977 (4) SA 434 (W).
177 Caterham Car Sales & Coach Works Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 175 (A); 1998 (3) SA 938 (SCA).
178 (187/12) [2013] ZASCA 3.

An aggrieved trader can establish such distinctiveness (or reputation) in respect of

the goods or merchandise by adducing evidence as to the manner and the scale of
the use of the name, mark or get-up which justifies the inference that the name, mark
or get-up has become recognised by a substantial section of the relevant public as
distinctive of the aggrieved trader’s goods or merchandise.
It need not be shown that the public is aware of the identity of the trader who owns the
reputation – only that the public is aware that the goods emanate from a single source. It is,
however, possible that a particular symbol has become associated with several unrelated
traders, in which case each of those traders will have a reputation in that symbol, despite
the symbol’s being capable of indicating several different sources.
If a symbol which has not been registered as a trade mark has been used by a licensee
subject to the control of a licensor, both parties should join in any passing off proceedings
as the goodwill attaching to the use by the licensee could vest in either or both the licensee
and the licensor.
The reputation must exist at the time when the infringing conduct takes place
For a reputation to be established, use for a long period is not required. Provided that it is
shown that a reputation was established during the particular period, even if the period was
short, a passing off action can arise. A business can retain a residual repute even after the
business has ceased to operate. The residual repute would, however, need to be proved.
In My Kinda Bones Ltd vs Dr Peppers’ Stove Co Ltd,179 the court found that the reputation
which was gained by pre-launch publicity was enough to found an action for passing off,
even though actual trading had not yet started. Similarly, in Kellogg Co and Another v
Bokomo Co-operative Ltd,180 the court found that the introduction of a new product by means
of verbal presentation and mock-ups of packaging was enough to give rise to a reputation
despite the fact that no actual sales to the public had taken place.
Care should, however, be taken in these circumstances – if a reputation cannot be proven
at the time when the infringing conduct took place, then the more appropriate cause of
action is the broader delict of unlawful competition (assuming of course that the conduct
does in fact amount to unlawful competition). There is consequently no need to extend
passing off to situations where the plaintiff cannot show a reputation in the symbol in
issue.181 In Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd,182 where the respondent
copied the applicant’s label which it was about to launch and put their own wine on the
market under a similar label, the court granted an interdict on the basis of both unlawful
competition and passing off. In regard to unlawful competition, see chapter 3.
Commercial activity
For a reputation to exist, it must form part of the goodwill in a business. For there to be
goodwill, there must be a commercial activity of some sort. This requirement of a commercial
activity has been interpreted broadly by the courts.
In Old Apostolic Church of Africa v Non-White Old Apostolic Church of Africa,183 the court
found that goodwill could subsist in the activities carried out by a church. Webster and
179 [1984] FSR 289.

180 1997 (2) SA 725 (C) at 733.
181 Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T).
182 1977 (2) SA 221 (C).
183 1975 (2) SA 684 (C).

Page,184 however, question the correctness of referring to a church’s activities as being

capable of having goodwill attached to them.
In Kean v McGivan,185 the court held:
The property which is said to be injured in that situation is not the name or description
of the goods but the right to the goodwill of the business which results from the
particular commercial activity. Therefore the courts do not in general interfere to
protect a non-trader. I hasten to add that of course the word ‘trade’ is widely interpreted
and includes persons engaged in a professional, artistic or literary occupation.
The court found that operating a political party is not a commercial activity and cannot give
rise to an action for passing off.
Proving a reputation
In proving a reputation, the claimant will generally lead evidence of extensive sales and
promotion. Market surveys are sometimes also used to support a claim for reputation. The
survey must, however, be conducted in such a way that there is a clear basis on which a
conclusion can be reached that a reputation does exist in the particular symbol.
In Imperial Group plc v Philip Morris Ltd,186 the court set out the following criteria for
surveys:
• The interviewees must be selected so as to represent a relevant cross-section of the public.
• The size must be statistically significant.
• The survey must have been conducted fairly.
• All the surveys carried out must be disclosed, including the number carried out, how
they were conducted, and the totality of the persons involved.
• The totality of the answers given must be disclosed and made available to the defendant.
• The questions must not be leading nor should they lead the person answering into a field
of speculation he or she would never have embarked upon had the question not been put.
• The exact answers and not some abbreviated form must be recorded.
• The instructions to the interviewers as to how to carry out the survey must be disclosed.
• Where the answers are coded for computer input, the coding instructions must be
disclosed.
In McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another,187 the
court approved the use of market survey evidence for the purposes of infringement.
The extent of a reputation is limited to the geographical area within which it is known
This does not necessarily mean that the reputation is limited to the area in which the
business is conducted or the goods sold but rather to the geographical area within which
the reputation or renown of the symbol exists. This principle was established in Caterham
Car Sales & Coach Works Ltd v Birkin Cars (Pty) Ltd,188 (the Caterham case). The Caterham
case reversed previous decisions which effectively restricted passing off cases to the
particular geographical area in which business was conducted. In decisions such as that in
184 Pp. 15–26.

185 [1982] FSR 119.
186 [1984] RPC 293 (Ch).
187 1997 (1) SA 1 (A); [1996] 4 All SA 1 (A).
188 [1998] 3 All SA 175 (A).

the Tie Rack case,189 a hardline approach was adopted which required the plaintiff to show
that he had conducted business within the geographical area in which the offending conduct
had taken place, regardless of whether or not there was a reputation in that area.
However, the decision in Caterham reversed this hardline approach and has enabled a
plaintiff to bring a passing off action based on the geographical area within which he can
prove a reputation, even if he has not conducted business in that area.
Of course, section 35 now specifically affords protection to the owner of an unregistered
foreign trade mark which can be shown to be well known in South Africa, regardless of
whether or not that trader has conducted business in South Africa. Section 35 expressly
provides that the success of a plaintiff in proceedings based on section 35 will not depend
upon whether the plaintiff carries on business or has any goodwill in South Africa.190
2.10.2.2 Misrepresentation
The claimant must show that the other party’s conduct amounts to a misrepresentation
indicating that his goods or services are in some way connected with the claimant.
‘Misrepresentation’ does not imply that the claimant must show fraudulent intent on the
part of the transgressor. Having said this, if fraud is shown, then the element of
misrepresentation will probably be found to be present.
Some examples of possible forms of misrepresentation which have been found by the
courts are listed below:
• Use of a symbol which has become well known as a result of character merchandising
In Federation Internationale de Football and Others v Bartlett,191 the court found that
character merchandising has become a well-known phenomenon in South Africa and
that consequently, if a trader makes use of a symbol which has become well known in
the minds of consumers in relation to a particular source, then passing off can occur.
• Use of one’s own name
In Policansky Bros Ltd v L&H Policansky,192 the court stated:
if a person has previously through his advertisements and through the quality of his
goods made his name valuable as a trade name so that his name has become
distinctive both of his goods and of himself as the manufacturer of those goods and if
his goods have become universally known in the market by his name, then his name
is said to have obtained a secondary meaning. When this is the case, another person
cannot use that name in connection with a similar class of goods unless he makes it
perfectly clear to the public that he is not selling the goods of the original manufacturer.
In Boswell-Wilkie Circus (Pty) Ltd v Brian Boswell Circus (Pty) Ltd,193 the court stated:
‘You may not call your business by any name which is likely to mislead the ordinary run
of persons into the belief that it is or has connections with the business of somebody else.’
In the Jenni Button case,194 the judge referred to the Policansky case195 and to the
following passage from it:
189 Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) 427 (T).
190 See para 2.9.2.4.
191 1994 (4) SA 722 (T).
192 1935 AD 89.
193 1984 (1) SA 734 (N).
194 Button v Jenni Button (Pty) Ltd 2008 BIP 242 (C).
195 Policansky Bros Ltd v L&H Policansky 1935 AD 89.

… A person has a property right or a quasi property right to the use and enjoyment
of his own family name as well as in carrying on a business and selling his goods
as he has to any other species of property … consequently, every person has a
prima face right honestly to use his own business and to sell his goods under his own
name, …
The court in Policansky found, however, that although a person does have a prima face
right honestly to use his own name for his own business and to sell his goods, there can
be limitations on this right, such as where the person has contracted not to do so.
In the Jenni Button case, the appellant had sold her name and goodwill to the respondent
and consequently the continued use by her of her own name would infringe the right to
the goodwill attaching to the JENNI BUTTON trade mark which then vested in the
respondent. Jenni Button was therefore found not to be entitled to make use of her own
name in the course of her business for as long as that business operated in the same field
as that of the respondent.
Consequently, the use even of one’s own name can amount to a misrepresentation if
that name has acquired a secondary meaning denoting someone else in the same trade.
• The use of code numbers and catalogue descriptions
If it can be established that a particular code of numbers has gained a reputation in
connection with particular products, and consumers will see it as indicating a trade
origin, passing off can be found.196 The code must of course be shown to have become
distinctive in relation to the claimant’s products.
• Use of a trade mark in a domain name
The use in a domain name of a trade mark which has a reputation can amount to a
mispresentation to consumers as is required under passing off.
• Orally or through conduct
Passing off can take place orally or through conduct, for example where the defendant
tells a customer that the goods manufactured by him are in fact those of the plaintiff or
where a defendant, after being asked for the plaintiff’s goods, hands to the customer
goods made by the defendant.
• Use of descriptive words or devices
In On-Line Lottery Services v National Lotteries Board,197 Heher JA stated:
… [M]any unsuccessful attempts have been made to restrain alleged passing off
arising from the use of descriptive names. In summary, the reason for this lack of
success is set out in Sea Harvest Corporation (Pty) Ltd vs Irvin & Johnson 1985 (2) SA
355 (C) …, viz that the Courts will not easily find that such words have become
distinctive of the business or products of the person using them, and will not give
what amounts to a monopoly in such words to one trader at the expense of others …
If a term is descriptive in the sense that it is the name of the goods themselves, it
cannot simultaneously denote any particular trade source. Therefore a party cannot
be prevented from unambiguously using a descriptive term in its original descriptive
sense unless it has wholly lost that descriptive sense and become distinctive of the
claim in any context … Even if the claimant succeeds in proving that a prima face
descriptive term has acquired some degree of secondary meaning the scope of
196 Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd [1955] 72 RPC.
197 [2009] 4 All SA 470 (SCA).

protection for the mark is narrower than for a wholly arbitrary term. Relatively minor
differences will suffice to distinguish the defendant’s goods or business when both
use a mark which is descriptive of the goods or services they provide. This applies
even though the defendant is using the closely similar term in a trade mark sense.
• Imitation of get-up/trade dress

Where a trader uses a get-up or trade dress which is similar to another get-up which has
acquired a reputation, the use of the similar get-up can amount to a misrepresentation
for the purposes of passing off.
‘Get-up’ is a capricious (ornamental) addition to a product and can include its colour
or shape or packaging.198 Any such elements must of course be distinctive and be able to
serve a trade mark function before they could form the subject of a passing off claim.
A trader does not, however, automatically obtain a monopoly in a get-up which he
adopts. A get-up which is adopted by a trader falls within the public domain and can be
used by other traders as long as they do not mislead the public in doing so and clearly
distinguish their goods from those of the other trader.199 The misrepresentation, in other
words, lies in a trader’s adopting a similar get-up to that of another and then not
taking the necessary steps to differentiate his goods from those of the other trader. If
he does take steps to differentiate, then there is unlikely to be misrepresentation and no
confusion would result for consumers.
In adidas AG and Another v Pepkor Retail Ltd,200 adidas instituted proceedings against
Pepkor for both trade mark infringement and passing off. The trade mark infringement claim
is discussed in paragraph 2.9.2.1 above. With respect to passing off, adidas claimed that
Pepkor was, through its use of two and four stripe devices on the shoes it was selling, passing
its products off as being products of adidas as Pepkor was copying adidas’ well-known three
stripe trade marks.
The table below sets out the comparison between the shoes made by Pepkor and adidas.
PEPKOR ADIDAS
198 JB Williams Company v H Bronnley & Co Ltd [1909] 26 RPC 765; Weber–Stephen Products Co v Alrite Engineering (Pty)
Ltd 1992 (2) SA 489 (A).
199 Distilleerderij voorheen Simon Rijnbende en Zonen v Rolfes, Nebel & Co 1913 WLD 3.
200 (187/12) [2013] ZASCA 3.

PEPKOR ADIDAS
THE ‘HANG TEN’ AND ‘GIRLS MUST HAVE’ SHOES THE SUPERSTAR SHOE
The court stated that the law of passing off does not confer monopolies on successful get-ups.
The court stated:
A trader may, to an extent, copy the successful get-up of a rival. However, the
moment he copies he will be at risk. The trader will only avoid liability for passing
off if he makes it perfectly clear to the public that the articles which he is selling are
not the other manufacturer’s, but his own, so that there is no probability of the
ordinary purchaser being deceived.
Applying this principle to the facts at hand, the court stated:
Passing-off (unlike trade mark infringement in terms of section 34(1)(a) of the Act)
requires that a comparison be made between the get-ups of the competing goods
and not just the trade marks applied to those goods. What had to be proved was that,
by adopting the particular get-ups, which included the 2 and 4 stripe marks, the
respondent was representing his goods to be those of the appellant’s or to be
connected therewith. This is a matter of first impression.
The court also found:
[t]he degree of distinctiveness (or the extent of the reputation) is of great importance in
passing off proceedings as it affects the issue of whether the general public will be
confused or deceived into thinking, because of this similarity of the name, mark or get-up,
that the goods or merchandise of the second trader are those of the first trader or are
connected therewith. It follows therefore that (just as in the case of trade mark
infringement) the more distinctive the get-up is (or the greater the extent of its reputation)
the greater the likelihood would be that the public will be confused or deceived.

In this instance, the distinctiveness (or reputation) of the adidas trade marks was not in dispute.
The court then went on to compare the respective footwear. With respect to the HANG
TEN and GIRLS MUST HAVE shoes, the court found that these shoes clearly identify the
products in such a way that the notional purchaser of the shoes would not be misled. The
wide spacing between the two stripes on the Pepkor shoes was clearly different from the
stripes on the adidas SUPERSTAR shoes. In addition, the SUPERSTAR shoes prominently
feature the adidas name and logo on the back of the heel and in other places, while Pepkor’s
shoes prominently feature the HANG TEN and ACTIF trade marks in similar places.
Accordingly, no passing off was found in connection with these shoes.
With respect to the remaining shoes, the court found that, ‘… taking into account the
distinctiveness of the [adidas shoes], the market and the purchasers of the competing goods,
these get-ups are misleading and would be likely to cause a notional purchaser to think that
the respondent’s products are or are connected with [adidas’] goods.’ Pepkor was,
accordingly, interdicted from passing off.
Often the get-up of one product can be distinguished from that of another as a result
of a very different trade mark appearing on the packaging. Where a trade mark appears
very prominently and clearly distinguishes the one product from the other, it would be
difficult to sustain a passing off cause of action based on the similar get-up of the products.201
Where a trader feels that his get-up has been copied, but the copied product contains a very
different trade mark, he would need to show:
• that his get-up has a reputation in itself that excludes the trade mark; and
• confusion on the part of consumers is still possible despite the fact that the trade marks
are so different.
If the trade mark is very well known, the likelihood of confusion as a result of a similarity between
respective get-ups is reduced. If, however, the style and font of the original trader’s trade mark
have also been copied, this could increase the potential for confusion and increase the chances
of being successful on passing off. Provided the shape of a product has become distinctive and
gained a reputation as a badge of origin of the particular product, it could constitute get-up which
could lead to a passing off claim. If, however, the shape of the product is exclusively functional,
then it will not be protected under passing off. If the shape performs a useful function, but is not
dictated by functional necessity, this could still found a passing off claim.
In Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd,202 the court stated:
It seems to me therefore that on purely logical grounds the reputation and goodwill
for which a trader can seek protection must relate to the non-functional elements
only and that purely functional elements of the article can in the absence of a
statutory or contractual limitation be freely copied. It follows that the getup which
the competing trader cannot copy relates to the non-functional elements only.
In the Weber-Stephen case,203 the get-up on which the complainant relied consisted of certain
functional and non-functional elements which made up the kettle-type barbeque grill. All
of these features were arranged in a way that was capricious in the sense that other kettle
grills did not have to be manufactured in the same way to achieve the same result. The shape
201 See Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) SA 884 (SCA) in which the court did find passing
off although the offending packaging bore different trade marks.
202 1981 (4) SA 873 (C).
203 1992 (2) SA 489 (A).

of the grill was consequently found to have become distinctive of the source of the product
and the manufacture of a competing grill with the identical shape constituted passing off.
The court also had regard to the fact that the respective trade marks of the parties, being
WEBER and MIRAGE, were relatively insignificant and that the principal indicator of origin
was the shape of the respective products.
In Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd,204 on the other
hand, the court found that the particular shape of a settee had not been found to be
distinctive. ‘The vital question is whether the shape of the goods is the crucial point of
reference as to origin for those who want to purchase them.’
In Daimler Chrysler Aktiengesellshaft v Afinta Motor Corporation (Pty) Ltd,205 the court
found the cab of the Daimler Chrysler vehicle to be distinctive despite the fact that the overall
shape of vehicles incorporating the Daimler Chrysler cab differed from vehicle to vehicle.
The imitation of the cab itself was held to constitute passing off.
2.10.2.3 Likelihood of confusion

As mentioned above, the misrepresentation made by the person guilty of copying must be
shown to lead to the deception or confusion of consumers. The confusion must be caused by
the misrepresentation.206 It is important to note that, unlike trade mark infringement, the court
must, in passing off cases, consider all extraneous factors in reaching a conclusion that
confusion is likely. The entire get-ups of the respective products are compared.207 The similarity
between two trade marks is only one possibly relevant factor to be taken into account.
In Pasquali Cigarette Co. Ltd v Diaconicolas & Capsopolus 208 the court stated:
The plaintiffs have to prove not only that there has been a certain amount of copying
but they must prove that the defendants have produced such a colourable imitation
of their box or label that the ordinary purchaser would be deceived;
The court in Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd,209 referred to the Pasquali
judgment and added:
… the plaintiff must prove that the defendant’s use of the feature concerned was
likely or calculated to deceive, and thus cause confusion and injury, actual or
probable, to the goodwill of the plaintiff’s business.
The same principles discussed in paragraph 2.11 will also apply in determining the likelihood
of consumers’ being confused or deceived under the law of passing off. The courts will
consider the likely target market of the goods or services and will postulate an average
member of that class of persons. In addition, it must be shown that a ‘substantial number’
of that class of persons is likely to be confused or deceived.
In Lennon Ltd v Sachs,210 the court stated that the question was not whether there were
differences but whether the general appearance was such that a person looking casually at
the marks would be likely to be deceived.
204 1991 (2) SA 455 (W).

205 [2001] 2 All SA219 (T).
206 Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (In liquidation) and Another 1987 (2) SA 600 (A).
207 Stellenbosch Farmers’ Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C).
208 1905 TS 472
209 1977 (4) SA 434 (W).
210 1906 TS 331.

There does not need to be a common field of activity between the two traders for passing
off to take place – the question is simply whether there is a likelihood of confusion arising,
despite the traders being in disparate fields of business. In Capital Estate & General Agencies
(Pty) Ltd and Others v Holiday Inns Inc and Others,211 the court held:
[w]hether there is a reasonable likelihood of … confusion arising is, of course, a

question of fact which will have to be determined in the light of the circumstances
of each case. If the evidence establishes that there is a reasonable likelihood of such
confusion arising even if the parties concerned cannot be said to be carrying on their
activities in a common field, it is difficult to see how the absence of such common
field can nevertheless constitute a ground for denying relief … the absence of a
common field of activities is, of course, a factor which one has to take into account
when considering whether someone’s conduct is likely to lead to confusion …
Having said this, the absence of a common field of activity is usually given significant weight
by the courts, which have held that there would have to be exceptional circumstances for
passing off to occur if there is no common field of activity.212 The following relevant factors
have been considered by the courts in making this determination:
• the degree of similarity in the respective fields of activity;
• the degree of diversification in these fields;
• the extent to which the public is aware of the diversification or the possibility thereof;
• the incidence in practice of individual traders carrying on both fields of activity.
Although evidence of actual confusion in the market place is not essential, it does have
significant value in determining whether or not confusion or deception is likely or, indeed,
unlikely in these circumstances.
PAUSE FOR Passing off in a nutshell

REFLECTION Webster and Page213 provide the following summary of passing-off:
In summary, it may be said that according to the existing authorities it is the

reputation component of goodwill arising out of the conduct of a business that is
the right protected by passing-off. The goodwill which is protected in passing-off
is dependent upon an existing reputation. The mark or symbol relied upon by the
plaintiff must be indicative or distinctive of the protectable reputation component
of the plaintiff’s goodwill and the defendant’s conduct must give rise to damages
or the reasonable apprehension of damages. In order for this to occur the
defendant’s misrepresentation must give rise to deception or confusion amongst
a substantial number of interested persons, in the locality where it is made and
therefore the reputation of the plaintiff’s symbol, with its consequent
distinctiveness must extend to a substantial number of interested persons in that
locality who would be deceived or confused.
211 1977 (2) SA 916 (A).

212 Lorimar Products Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T).
213 South African Law of Trade Marks pp. 15–29.

2.10.3 Procedure for instituting a passing off claim
Like trade mark infringement proceedings, passing off proceedings are instituted in the court
(generally the High Court) and usually follow the application procedure (commenced by a
Notice of Motion accompanied by a founding affidavit) as a dispute of fact does not usually
arise. Rather, the court is usually concerned with the legal question of whether or not two
symbols are confusingly similar. If, however, there is a dispute of fact, then the action procedure
(commenced by a summons accompanied by particulars of claim) would be followed.
The procedure to be followed is the same as the procedure followed for a claim lodged at the
court for rectification of the register of trade marks. See paragraph 2.7.5 for details of the procedure.
2.10.4 Remedies
The plaintiff in a passing off matter can claim delivery up of offending goods and materials
and an interdict and/or damages. See paragraph 2.9.5 for further discussion on delivery up.
Damages: The plaintiff will have to show that he has suffered actual damage as a result of
the defendant’s unlawful conduct. Such damage could be as a result of one of the following:214
• loss of sales due to the defendant’s competition;
• injury to repute due to the sale of inferior goods by the defendant, or to other causes;
• loss of sales due to reduction of price by the defendant;
• expenditure involved in seeking to meet competition resulting from the defendant’s sales.
Interdict: As it is very difficult to prove that actual damages have been sustained, the remedy
most commonly granted in passing off proceedings is an interdict. The court will grant an
interdict prohibiting any use which does not clearly distinguish the goods. In the case of
trade mark infringement, on the other hand, the court will, in granting an interdict, restrain
any use at all of the registered trade mark.
If the offending conduct has stopped or the defendant has provided an undertaking that
the offending conduct has ceased, then generally no interdict will be granted.215
2.10.5 Defences
Registered trade mark: The existence of a registered trade mark can constitute a defence
to a passing off claim. In Turbek Trading CC v A&D Spitz Ltd,216 the court stated that if the
owner of an unregistered trade mark wishes to stop the use of a registered trade mark, the
owner of the unregistered trade mark will first need to establish a ground on which the
registered trade mark can be cancelled before it can be successful in the passing off action.
Acquiescence or estoppel: As in the case of trade mark infringement, these defences can
also be applied against a passing off claim. (See para 2.9.5 above.)
Parallel importation: Parallel importation would not usually amount to passing off as the
goods are genuine and there is no misrepresentation. If, however, the distributor of the grey
goods misrepresents the position by implying that there is a connection between him and
the trade mark owner, for example by representing himself as an official distributor of the
goods, then such conduct could amount to passing off.
Unclean hands: If there has been a false representation by the claimant in the form of fraud,
dishonesty or mala fides, then the claimant cannot be granted relief.217
214 Webster & Page South African Law of Trade Marks pp. 15–86 para 15.30.1.
215 Smith and Nephew Ltd v Mediplast Pharmaceutical Sales CC 1999 (2) SA 646 (D).
216 [2010] (2) All SA 284 (SCA), [2010] FSR 16 (SCA) 409.
217 Caterham Car Sales & Coach Works Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 175 (A); 1998 (3) SA 938 (SCA).

2.11 Determining the likelihood of confusion: comparison of marks

Although there are certain differences as a result of the context and purpose of the
comparison, the court applies very similar tests in determining whether two trade marks are
confusingly similar for most purposes covered by the Trade Marks Act. Likewise, essentially
the same tests are applied for purposes of assessing whether passing off has occurred in terms
of the common law. In trade mark infringement proceedings a closer likeness is required than
in issues of registration and in proceedings based on ‘famous’ marks (ss 10(6) and 35), a closer
similarity is required than under other sections. The factors that the courts will take into
account when determining a likelihood of confusion are itemised below. These factors apply
across the board in most instances where such a determination is required under the Act or
under the common law. Where additional factors apply for the different provisions under the
Act, they are discussed in the particular sections dealing with those provisions.
• The overall test to be applied in determining whether two marks are confusingly similar
was summarised in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd:218
The determination of these questions involves essentially a comparison between the

mark used by the defendant and the registered mark and, having regard to the
similarities and differences in the two marks, an assessment of the impact which the
defendant’s mark would make upon the average type of customer who would be
likely to purchase the kind of goods to which the marks are applied. This notional
customer must be conceived of as a person of average intelligence, having proper
eyesight and buying with ordinary caution. The comparison must be made with
reference to the sense, sound and appearance of the marks. The marks must be
viewed as they would be encountered in the market place and against the
background of relevant surrounding circumstances. The marks must not only be
considered side by side, but also separately. It must be borne in mind that the
ordinary purchaser may encounter goods, bearing the defendant’s mark, with an
imperfect recollection of the registered mark and due allowance must be made for
this. If each of the marks contains a main or dominant feature or idea the likely
impact made by this on the mind of the customer must be taken into account. As it
has been put, marks are remembered rather by general impression or by some
significant or striking feature than by a photographic recollection of the whole. And
finally consideration must be given to the manner in which the marks are likely to
be employed as, for example, the use of name marks in conjunction with a generic
description of the goods.
• Confusion can arise as a result of the marks being similar phonetically, visually or
conceptually. Any one of these similarities is enough – it is not necessary to prove that
the two marks are similar in all three aspects.
• Only a likelihood of initial confusion need be shown. It need only be shown that there
is a likelihood that consumers would wonder, even if only for a moment, whether the
two marks are connected in some way.
• The test for determining confusing similarity of word marks was summarised as follows
in the United Kingdom case of Pianotist Co Ltd’s Appn:219
218 1984 (3) SA 623(A); see also Century City Property Owners Association v Century City Apartments Property Services CC
and Another [2010] 2 All SA 409 (SCA).
219 [1906] 23 RPC 774.

You must take the two words. You must judge them both by their look and their
sound. You must consider the goods to which they are to be applied. You must
consider the nature and kind of customer who would be likely to buy those goods.
In fact, you must consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trade marks is used in a normal
way as a trade mark for the goods of the respective owners of the marks.
• The judge must transport himself from the court room to the marketplace and stand in
the shoes of the purchaser, taking into consideration the actual circumstances in which
sales are likely to take place, the nature of the customers and likelihood of improper
articulation.220 For example, the court will take into account the fact that the first syllable
of word marks is generally the most important, considering that people generally slur
the ending of words. In addition, the court will also consider the possibility of confusion
arising as a result of orders being placed over the phone or in writing.
• The court will not confine a consideration of the marks to a situation where they are
placed side by side. The court will have regard to a situation where a person may at one
time see or hear one of the marks and later, possibly with an imperfect recollection of
that mark, come across the other mark.221
• The court will not compare two words ‘letter by letter’ and ‘syllable by syllable’
pronounced with perfect clarity. The court will make allowances for imperfect
recollection and the effect of careless pronunciation.222 The same would apply to devices/
logos where the effect of imperfect perception must also be taken into account.
• The marks must be compared as wholes. In Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys
(Pty) Ltd,223 the court found BABY LOVE and BABY FIRST LOVE to be confusingly similar
despite the fact that the owner of the BABY FIRST LOVE trade mark was also the
proprietor of the registered trade mark FIRST LOVE. The introduction of the word BABY,
in other words, rendered the two trade marks BABY LOVE and BABY FIRST LOVE
confusingly similar when compared as a whole.
• The marks must be compared overall and regard had to the overall impression of the
marks bearing in mind their distinctive and dominant components. The court will
consider the general impression of the marks and will look at their total effect in assessing
whether the contentious mark resembles the claimant’s mark too closely.
• In Searles Industrials (Pty) Ltd v International Power Marketing (Pty) Ltd,224 the statement
was made that ‘… the comparison is to be made between the main idea or impression
left on the mind by each of the marks, having regard to any essential or salient or leading
or striking feature or features in each’.
• The fact that a trade mark incorporates a registered trade mark in its entirety does not
automatically lead to a likelihood of deception or confusion. If the registered trade mark,
as incorporated in the new trade mark, retains its identity, then deception or confusion
is likely. This is not the case if the identity is lost or absorbed in the applicant’s mark. So
for example, the trade marks MOREX and REX and VIVYCYLLIN and CYLLIN were not
found to be confusingly similar.225
220 Oude Meester Groep Bpk and Another v SA Breweries Limited; SA Breweries Ltd and Another v Distillers Corporation
(SA) Ltd and Another 1973 (4) SA 145 (W).
221 American Chewing Products Corporation v American Chicle Co 1948 (2) SA 736 (A); Metcash Trading Ltd v Rainbow
Cash and Carry CC unreported decision TPD Case no. 4339/01 of 8 November 2001.
222 Rysta Ltd’s application [1943] 60 RPC 87.
223 1985 (1) SA 448 (A).
224 1982 (4) SA 123 (T).
225 Darwin Ltd’s Appn [1946] 63 RPC 1; Enoch’s Appn [1947] 64 RPC 119.

• Similarly, in Bata Ltd v Face Fashions CC and Another,226 the court found that the trade
marks POWER and POWERHOUSE were not confusingly similar. The court held:
According to the evidence, … there are numerous trade mark registrations in South Africa
in respect of clothing which incorporate or include the word ‘POWER’. it is an ordinary
word in everyday use, as distinct from an invented or made-up word, and it cannot follow
that confusion would probably arise if it is used in combination with another word. What
has to be considered, therefore, is whether the notional customer of average intelligence,
viewing the marks as a whole or looking at the dominant features of each mark, is likely
to be confused or deceived into believing that clothing bearing the words ‘POWERHOUSE’
has a connection in the course of trade with the ‘POWER’ trade mark.
The court will have regard to the idea conveyed by the mark. In Kraft Foods Inc v All Joy
Foods (Pty) Ltd,227 the court found the trade marks MAGIC WHIPP and MIRACLE WHIPP
to be confusingly similar in connection with salad cream. The court held ‘… whatever the
precise definition of these two words may be, I am satisfied that the two words are
conceptually similar. If a prospective customer sees or hears the word MIRACLE WHIPP
and enters a supermarket some time later, he or she may very well be confused when he
or she sees the trade mark MAGIC WHIPP’.
• In Safari Surf Shop CC v Heavywater and Others,228 the court found that there could be
confusion between the use of a Spider logo and the word mark SPIDER in relation to
surfboards. What played an important role in this conclusion was the nature of the goods
involved – surfboards are sold to a limited target market in a specific geographical area,
which increases the likelihood of confusion.
• On the other hand, in La Chemise Lacoste v Rong Tai Trading CC,229 the court found that
the defendant was entitled to use a logo of a crocodile in relation to belts despite the
existence of the well-known and registered Lacoste crocodile logo. In this case, the court
found that the registration of a logo of an animal (crocodile) does not grant the trade
mark proprietor a monopoly over all crocodile logos. Although the two logos convey the
same meaning (that of a crocodile) this similarity in meaning will not automatically lead
to confusion unless the two logos also look similar.
• Similarly, in Cowbell AG v ICS Holdings Ltd,230 the court found that the
trade mark application:
was not confusingly similar to the registered trade

marks DAIRYBELLE and JERSEYBEL for use in
connection with dairy products.
226 2001 (1) SA 844 (SCA).

227 Unreported judgment TPD 19 April 1999 Case No. 26539/98.
228 [1996] 4 All SA 316 (D).
229 2007 BIP 175 (T).
230 2001 (3) SA 941 (SCA).

• The court emphasised that unless the similarity in meaning gives rise to a likelihood of
confusion or deception, the similarity in meaning is irrelevant. The court held: ‘In short,
the respondent cannot lay claim to the exclusive use of words having a dairy connotation
or ending in ‘-belle’ or ‘-bel’ in relation to dairy products where these do not form a
dominant part of its marks and have not any particularly distinctive character.’
• The more descriptive or the less distinctive the major feature of the mark, the less the
likelihood of confusion. If, for example, the dominant feature of the mark has been disclaimed,
the threshold of proving confusing similarity would be very high – the offending mark would
need to be practically identical to the mark being protected. Similarly, the likelihood of
confusion is generally increased in the case of invented or fanciful words. The same applies
to a trade mark which is well known. The greater the mark’s reputation, the greater the
likelihood of confusion and the broader the range of goods likely to lead to confusion.
• Where the registered trade mark contains a disclaimed word and that word is the only
common element with the offending mark, there can be no infringement. The disclaimed
word is not in itself distinctive of the origin of the goods/services and so it cannot, alone, form
the basis of an infringement.231 However, each case must be considered on its own merits
and it must be clear that the disclaimed feature is being used in a manner which is covered
by the disclaimer. In the ‘Cambridge diet’ and the ‘Space Case’ cases, this was found not to
be the case and the registered trade mark was in each case found to have been infringed.232
• Where trade marks contain an element which is in common use in the market for the
goods, the public is more likely to pay attention to the other features in the marks. It must,
however, be shown that the common element is in use in the market and is not only
common on the register of trade marks, although if there is a significant number of such
registrations, this could play a role in determining that the matter is common to the trade
despite there being no proof of use.
• The court will also take into account the nature of the branded product. If, for example,
the goods are of a specialised nature and are not normally sold to the general public but
rather to specialists within a particular trade, the court may require evidence from
knowledgeable persons in that trade as the judge may not, of his own knowledge, be in
a position to form a view on likelihood of confusion. In addition, evidence of actual
confusion in a specialised field would be difficult to counter.
• If, on the other hand, the goods are largely used by an uneducated and illiterate mass market,
the likelihood of confusion between the two marks would be greater than in the case of a
product which is only purchased in a niche market, by a specialised group of people.
• The type of goods involved will of course also affect how carefully and deliberately a
consumer considers a purchase. A consumer is, for example, unlikely to purchase a
motor vehicle without very careful and thoughtful consideration of exactly what he or
she is buying. On the other hand, a food item which is chosen in a hurry and without
careful consideration could easily be mistaken for a similar brand.233
• The court will have regard to the ordinary purchaser who is neither very careful nor very
careless and ignorant.234
231 Société des Produits Nestlé S.A. v International Foodstuffs Co 2013 JDR 2699 (GNP); Hollywood Curl (Pty) Ltd and Another
v Twins Products (Pty) Ltd (1) 1989 (1) SA 236 (A).
232 Cambridge Plan AG v Moore 1987 (4) SA 821 (D); In re Slavin's Packaging (Pty) Ltd v Space Case Products (Pty) Ltd and
Another (683/94) [1996] ZASCA 64 (30 May 1996).
233 Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A); Lancer Trade Mark [1987] RPC 303 (CA).
234 Searles Industrials (Pty) Ltd v International Power Marketing (Pty) Ltd 1982 (4) SA 123 (T); Reckitt & Colman SA (Pty)
Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A) 315 F; Africa Sun Oil Refineries (Pty) Ltd v Unilever plc 2007
BIP 127 (N); Pasquali Cigarette Co Ltd v Diaconicolas & Capsopolus 1905 TS 472.

• In Triomed (Pty) Ltd v Beecham Group plc,235 the court found that where the goods in
question are prescription medicines, the target customer is not the patient – it is the
medical practitioner who prescribes the product and the pharmacist who dispenses it.
Since this decision, it has been necessary to show that a medical doctor or pharmacist
would be likely to be confused between the brands of two medicines and not that patients
might possibly be confused.
• However, in the later Appeal Court decision, Adcock-Ingram Intellectual Property (Pty)
Ltd and Another v Cipla Medpro (Pty) Ltd and Another,236 the court held that ‘…the patient
is the ultimate consumer whose wishes may not be disregarded and who has the right
to participate in any decision concerning his health and treatment. It may well be that
there is little likelihood of the medical practitioner or pharmacist being deceived or
confused, but the enquiry does not end there.’ In these circumstances, the court found
that the trade marks ZEMAX and ZETOMAX were confusingly similar. The court
consequently turned the previous law on its head and has now extended the relevant
target market for medicines beyond doctors and pharmacists to patients as well.
• The courts will often take notional use of a trade mark into account when determining
the likelihood of confusion. Notional use is any normal and fair use which a party could
make of his trade mark. The circumstances under which notional use can be taken into
account differ, depending on the cause of action involved, as has been discussed under
the relevant paragraphs above.
• In short:
◆◆ Section 10(12) opposition: Notional use by the trade mark applicant will be
compared with actual use by the opponent.
◆◆ Section 10(14) opposition: Notional use by the trade mark applicant on all goods/
services covered by the application will be compared with notional use by the
opponent of all goods/services covered by his registration.
◆◆ Section 34(1) infringements: Limited notional use by the defendant will be
compared with notional use by the plaintiff in relation to all goods/services covered
by the registration.237
◆◆ Passing off: Actual use by the defendant will be compared with actual use by the
plaintiff.
• Normal and fair use includes a consideration of:
◆◆ the full range of goods/services for which the mark could possibly be used;
◆◆ the field of possible purchasers for those goods/services; and
◆◆ possible use of the trade mark in association with descriptive wording.
• When considering the notional use of a mark, the court will consider how the mark could
‘notionally’ be used in future by the trade mark owner with respect to all of these factors
and will not confine itself to the manner in which the trade mark is actually being used
at the time when the determination is made. In SmithKline Beecham Consumer Brands
(Pty) Ltd v Unilever plc,238 the court stated: ‘…[t]he ultimate test is, after all, as I have
already indicated, whether on a comparison of the two marks it can properly be said that
there is a reasonable likelihood of confusion if both are to be used together in a normal
and fair manner, in the ordinary course of business.’
235 2001 (2) SA 522 (T); [2001] FSR 34.

236 2012 (4) SA 238 (SCA).
238 1995 (2) SA 903 (A).

• The determination of the likelihood of deception is a matter for the Registrar or the court
to decide239 – evidence from witnesses stating that they would be likely to be confused
will, in most cases, be disregarded by the court.
• Evidence of actual confusion could, however, carry significant weight. While it is not
essential, it could assist the court by making it easier to determine that confusion is likely.
It has, however, been held that confusion or deception may well have taken place without
anyone being aware of it and that this could explain the absence of evidence of confusion
or deception.240 The absence of evidence of actual confusion should only really be taken
into account by the court where circumstances exist where one would have expected
actual evidence of confusion to be available. Factors which the courts are likely to take
into account include:
• The extent and duration of the side-by-side use of the respective names, marks or get-ups.
• The likelihood of the deception or confusion being noticed by the victim or, if noticed,
being regarded by him as cause for complaint.
• The difficulty which the plaintiff might be expected to encounter in locating and
obtaining such evidence.241
• Another factor which could be taken into account in trade mark opposition and
infringement claims is that the comparison can sometimes be hypothetical and the
marks are not being seen as they would be by a consumer. For example, in the case of
so-called ‘nude label’ trade marks, where all word marks have been stripped out of a
label and only the remaining ‘nude’ elements have been registered, actual evidence of
confusion on the nude label per se would not be possible.242
2.12 Conclusion
In the modern economy, the practice of trade mark law is both relevant and rewarding. In
this chapter it has been shown that trade marks constitute some of the most valuable forms
of property available in commerce and that in essence they are created from nothing but
ideas as to what to call a product or service. It is remarkable that rights, and indeed, valuable
items of property, capable of being traded and protected, are created purely through a legal
process, as opposed to being based on tangible items such as brick and mortar, metal, wood,
plastic or the like.
To qualify for protection, the mark applied to the goods and/or services must, however,
be distinctive and must show some connection with the origin or source of the goods/
services. If a mark meets these requirements, subject to no specific prohibition in terms of
the Act, it may be registered. Registered trade marks grant exclusive rights to the owner. This
‘monopoly’ constitutes an extremely powerful weapon in commerce and enables action to
be taken against competitors using confusingly similar marks and thereby seeking ‘to reap
where they have not sown’.
A monetary value can be placed on a trade mark/brand and it can form an extremely
important asset of the owner. (See chapter 9.) Indeed, its trade marks are in many instances the
most valuable component of a trading entity. This chapter has been devoted to describing the
‘creation’ and enforcement of trade marks, an essential facet of modern commerce and business.
239 adidas AG v Pepkor Retail Ltd (187/12) [2013] ZASCA 3.

240 Adcock Ingram Ltd v Suresh Patel t/a Dolly Lou 2008 BIP 127 (T).
241 Webster & Page South African Law of Trade Marks pp. 15–60.
242 See Tiger Food Brands Intellectual Property Holding Company Ltd v Sunnyfield Packaging Company (Pty) Ltd 2008 BIP
158 (N).

Chapter 3 Unlawful competition
JOHN FOSTER AND EBEN VAN WYK

3.2 Development of unlawful competition 186
3.2.1 The Aquilian action 186
3.2.2 The rise of unlawful competition 187
3.3 The right to attract custom 190
3.4 Competition principle 191
3.5 Types of unlawful competition 191
3.5.1 Common law grounds 193
3.5.1.1 Passing off 193
3.5.1.2 Leaning on 193
3.5.1.3 Misappropriation and misuse of trade secrets of another 194
3.5.1.4 Misrepresentation as to geographic origin of goods 195
3.5.1.5 Misrepresentation as to nature/composition of goods 196
3.5.1.6 Misrepresentation as to class or quality of goods 196
3.5.1.7 Misrepresentation that another trader’s goods are own goods 196
3.5.1.8 Dishonest adoption of sign or get-up of competitor 196
3.5.1.9 Adoption of trade description of competitor 197
3.5.1.10 Disparaging comments regarding a competitor’s business 198
3.5.1.11 Interference with contractual relationships 199
3.5.1.12 Boycotting of a business 199
or employees 200
3.5.1.14 Trading in contravention of a right of another 200
3.5.2 Statutory prohibitions 200
3.5.2.2 False trade descriptions 203
3.5.2.3 Prohibited emblems and marks 204
3.5.2.4 Ambush marketing and protected events 205
3.6 Defences 208
3.6.1 Self-defence 208
3.6.2 Emergency or necessity 208
3.6.3 Public interest 208
3.7 Relationship with the Trade Marks Act and other IP statutes 209
3.8 Remedies 209
3.9 Conclusion 210
3.1 Introduction
The importance of a free market and of competition in our economic system has been
highlighted by the courts numerous times1 and has often been described as the life blood
1 See, e.g., Lorimar Productions Inc v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T); Payen Components
SA Ltd v Bovic Gaskets CC 1995 (4) SA 441 (A); Schultz v Butt 1986 (3) (SA) 667 (A).

of commerce.2 As a general rule, every person is entitled freely to carry on his trade or
business in competition with his rivals.
The right to freedom of trade, occupation and profession is enshrined in section 22 of
the Constitution of the Republic of South Africa, 1996.3 The consequence of the right to
freedom of trade is competition.4 These are undoubtedly rights of extreme import; however,
this does not mean that they should be universally upheld to the exclusion of all other rights.
These rights, like any other rights enshrined in the Constitution, are subject to limitation as
long as the limitation is justifiable in an open and democratic society based on human
dignity, equality and freedom.5
PAUSE FOR What is ‘competition’?

REFLECTION The English word ‘competition’ derives its meaning from the Latin word competitio meaning
‘rivalry’. Van Dijkhorst J, in his judgment in Lorimar Productions,6 provided a succinct
definition of this concept, in the field of trade and industry, stating that:
In general terms competition involves the idea of a struggle between rivals

endeavouring to obtain the same end. It may be said to exist whenever there is
potential diversion of trade from one to another. For competition to exist the articles
or services of the competitors should be related to the same purpose or must satisfy
the same end.
Similar interpretations have since been accepted by our courts.7
Competition is clearly important to our economic system; however, it must remain within
lawful bounds8 and no trader should benefit at the expense of his rivals through the use of
improper business methods. Any form of competition will pose a threat to a rival business
but this does not mean that all competition will necessarily constitute unlawful competition.
It has been accepted by our courts that it is only when the competition is wrongful that it
becomes actionable.9 As long as competitors confine themselves to legitimate methods of
2 Van Heerden JA, in his judgment in Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A) 421–422, stated that:
‘It has often been said that competition is the life blood of commerce. It is the availability of the same, or similar, products
from more than one source that results in the public paying a reasonable price therefor.’
3 S 22 provides that: ‘Every citizen has the right to choose their trade, occupation or profession freely. The practice of a
trade, occupation or profession may be regulated by law.’
4 See Phumelela Gaming and Leisure Ltd v Gründlingh and Others 2007 (6) SA 350 (CC).
5 S 36 of the Constitution, which is known as the ‘general limitations clause’, provides for the limitation of rights in
circumstances where such limitation is reasonable and justifiable in an open and democratic society based on human
dignity, equality and freedom. Different interests must be weighed up in determining the extent of the limitation,
including: (a) the nature of the right; (b) the importance of the limitation; (c) the nature and extent of the limitation;
(d) the relation between the limitation and its purpose; and (e) less restrictive means to achieve the purpose. These
factors are not prescriptive but, rather, give guidance to the court in the exercising of its discretion. In addition to the
aforementioned factors, the courts must in all cases take into account whether or not the limitation would promote
and/or protect a lawful public interest.
6 Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3) SA 1129 (T) at 1141.
7 For example, when considering the concept of ‘competition’ in Payen Components SA Ltd v Bovic Gaskets CC 1994 (2) SA
464 (W) 473, Van Zyl J found that ‘[t]he nature of the competition is that the competitors have the same or similar goals,
chief among which, at least in the field of trade and industry, is to attract the custom of the same clients or groups of clients’.
8 Schultz v Butt 1986 (3) SA 667 (A).
9 See Phumelela Gaming and Leisure Ltd v Gründlingh 2007 (6) SA 350 (CC) 32 where Langa CJ stated that: ‘Any form of
competition will pose a threat to a rival business. However, not all competition or interference with property interests
will constitute unlawful competition. It is accordingly accepted that it is only when the competition is wrongful that it
becomes actionable.’

competition which the business community and society recognise as inevitable

consequences of participation in commercial enterprise, the court will not interfere.10
South African common law recognises a general delict of unlawful competition (often
also referred to as unfair competition). Unlawful competition occurs when a trader commits
a wrongful (unlawful) act which causes damage, or which is likely to cause damage, to a
competitor by interfering with his right to attract custom or conduct business. This is based
on the general rule that an activity is wrongful or unlawful towards a particular individual if
it infringes a legal right which he possesses. If an individual has a legal or subjective right
(such as the right to attract custom), others have a duty to respect that right.11
3.2 Development of unlawful competition
3.2.1 The Aquilian action

The South African law of delict, which is derived from Roman-Dutch law, provides a general
remedy for wrongs to interests of substance, the infringement of which (intentionally or
negligently) gives rise to patrimonial (pecuniary) loss (damnum iniuria datum).12 The
remedy which is available in these circumstances is the actio legis Aquiliae, or Aquilian
action, as it is generally referred to. In an Aquilian action, a plaintiff must show that the
defendant’s wrongful and culpable conduct has caused him patrimonial loss.
Before conduct can constitute unlawful competition, it must satisfy the general
requirements for Aquilian liability.13 These are that there must be:
• an act or omission;
• that is wrongful;
• causation, which must not be too remote;
• fault, which may consist of either negligence (culpa) or intention (dolus); and
• patrimonial loss.
Modern South African law recognises an action for unlawful or unfair competition as a form
of Aquilian remedy14 but this was not always the case and the law of unlawful competition
had to travel a long road before it came to be recognised as a general remedy for loss caused
by wrongful conduct in business, whatever form such behaviour took.15
10 Elida Gibbs (Pty) Ltd v Colgate-Palmolive (Pty) Ltd (1) 1988 (2) SA 350 (W) at 358F–G.
11 OH Dean ‘Unlawful competition: A substitute for copyright infringement in technical works?’ (1990) 9 Copyright
World 21.
12 In Coronation Brick (Pty) Ltd v Strachan Construction Co (Pty) Ltd 1982 (4) SA 371 (D) at 377, Booysen J stated that:
‘The legal basis of the plaintiff’s claim is the lex Aquilia. In essence the Aquilian action lies for patrimonial loss caused
wrongfully (or unlawfully) and culpably. Although the contrary view had long been held by many authorities, it seems
clear that the fact that the patrimonial loss suffered did not result from physical injury to the corporeal property or
person of the plaintiff, but was purely economic, is not a bar to the Aquilian action.’ The Appellate Division has
confirmed this view in respect of unlawful competition a number of times. See for example Schultz v Butt supra; Taylor
& Horne (Pty) Ltd v Dentall (Pty) Ltd supra; Aruba Construction (Pty) Ltd and Others v Aruba Holdings (Pty) Ltd and
Others 2003 (2) SA 155 (C); Townsend Productions (Pty) Ltd v Leech and Others 2001 (4) SA 33 (C) 53–56; Payen
Components SA Ltd v Bovic Gasket CC 1995 (4) SA 441 (A) 453; Premier Hangers CC v Polyoak (Pty) Ltd 1997 (1) SA 416
(A); Geary and Son (Pty) Ltd v Gove 1964 (1) SA 434 (A).
13 Schultz v Butt 1986 (3) 667 (A).
14 Fn 12.
15 OH Dean ‘Unlawful competition: The roles of wrongfulness and dishonesty’ (1990) 20 Businessman’s Law 16. See in
general J Neethling Van Heerden-Neethling Unlawful Competition 2 ed (2008) 74–77.

3.2.2 The rise of unlawful competition
On the face of it, the concept of unlawful competition appears to be relatively uncomplicated.
It is merely the corruption of legitimate, lawful competition by an act (or acts) which are
wrongful. However, for many years actions based on unlawful competition were complicated
by the lack of an appropriate yardstick or criterion by which the ‘wrongfulness’ or
‘unlawfulness’ of conduct in a competitive situation could be determined.16
At first, the criteria of fairness and honesty in trade and competition were used by
the courts to determine the limits of the right to goodwill. These criteria appear to have
first been applied in Gous v De Kock, Combrinck v de Kock17 and thereafter also in Geary
& Son (Pty) Ltd v Gove;18 Stellenbosch Wine Trust Ltd and Another v Oude Meester Group
Ltd; Oude Meester Group Ltd v Stellenbosch Wine Trust Ltd and Another;19 and Dun &
Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) (Pty) Ltd 20 where
Corbett J stated that:
Fairness and honesty are themselves somewhat vague and elastic terms but, while
they may not provide a scientific or indeed infallible guide in all cases to the limits
of lawful competition, they are relevant criteria which have been used in the past
and which, in my view, may be used in the future in the development of the law
relating to competition in trade.
Despite the various judgments based on the criteria of ‘fairness’ and ‘honesty’, it was never
quite clear whether these were two independent criteria for wrongfulness and whether
competition had to be both unfair and dishonest before it could be considered unlawful.21
Nonetheless, the principles set by Corbett J in Dun & Bradstreet were approved and applied in
the two subsequent decisions of Salusa (Pty) Ltd v Eagle International Traders22 and Prok Africa
(Pty) Ltd and Another v NTH (Pty) Ltd and Others23 without any further clarity being provided.24
It was only in the case of Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd
and Others25 that further steps were taken in the development of an appropriate yardstick
and where proper recognition was first given to the general delict of unlawful competition
with an Aquilian basis. Considering the issue of a yardstick, Van Dijkhorst J said:
What is needed is a legal standard firm enough to form guidance to the court, yet
flexible enough to permit the influence of an inherent sense of fairplay … I have come
to the conclusion that the norm to be applied is the objective one of public policy.
This is the general sense of justice of the community, the boni mores, manifested in
public opinion … In determining and applying this norm in a particular case, the
interests of the competing parties have to be weighed, bearing in mind also the
interests of society, the public weal. As this norm cannot exist in vacuo, the morals of
16 Dean (1990) Copyright World 22.

17 (1887) 5 SC 405.
18 1964 (1) SA 434 (A) 441.
19 1972 (3) SA 152 (C) 161–162.
20 1968 (1) SA 209 (C) 218–219.
21 In Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd 1977 (2) SA 221 (C) at 249–250 Theron J stated that only
‘competition which was unfair and dishonest could be considered to be illegal’.
22 1979 (4) SA 697 (C).
23 1980 (3) SA 687 (W).
24 Webster & Page South African Law of Trade Marks (current authors C Webster and G Morley) 4 ed (2013) 15–8.
25 1981 (2) SA 173 (T).

the market place, the business ethics of that section of the community where the
norm is to be applied, are of major importance in its determination.
This approach, the boni mores or reasonableness test, has been generally accepted by the
court.
In Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd26 Van
Djikhorst J applied the boni mores test which he himself had formulated in Atlas Organic
supra. He said the following:
In applying the norm of public policy in the present case, the following
factors seem to me to be relevant: the protection already afforded by statutes
and by established remedies, like passing off, under the common law; the morals
of the market place: thereby I mean the ethics of the business community
concerned; an inherent sense of fairplay and honesty; the importance of a free
market and strong competition in our economic system; the question whether the
parties concerned are competitors; conventions with other countries like the
Convention of Paris.
The seal was placed on the boni mores as the test for the wrongfulness or unlawfulness of
competition in the leading case of Schultz v Butt27 where Nicholas AJA of the Appellate
Division of the Supreme Court (as it was then) said28 that in determining the unlawfulness
of competition and in judging fairness and honesty:
… regard is to be had to boni mores and to the general sense of justice of the
community … While fairness and honesty are relevant criteria in deciding whether
competition is unfair, they are not the only criteria. As pointed out in Lorimar
Productions (ubi cit), questions of public policy may be important in a particular
case, eg the importance of a free market and of competition in our economic system.
The Appellate Division set the criterion as the boni mores and general sense of justice of the
community, as interpreted by the policy makers of the community such as the legislature
and judges.
In Phumelela Gaming and Leisure Ltd v Gründlingh and Others,29 Langa CJ recognised
and accepted public policy as a criterion for unlawfulness, giving it the stamp of approval of
our highest court. He stated that:
The role of the common law in the field of unlawful competition is therefore to
determine the limits of lawful competition. This determination, which takes account
of many factors, necessitates a process of weighing up interests that may in the
circumstances be in conflict. Fundamental to a determination of whether
competition is unlawful is the boni mores or reasonableness criterion. This is a test
for wrongfulness which has evolved over the years.
26 1981 (3) SA 1129 (T).

27 1986 (3) SA 667 (A).
28 At 679C–E. Corbett, Hoexter and Boshoff JJA and Nestadt AJA concurring.
29 2007 (6) SA 350 (CC) at 361–2.

The question is whether, according to the legal convictions (boni mores) of the community,
the competition or the infringement of goodwill is reasonable or fair when seen through
the prism of the spirit, purport and objects of the Bill of Rights. 30 Several factors are
relevant and must be taken into account and evaluated. These factors include the honesty
and fairness of the conduct involved; the morals of the trade sector involved; the
protection that positive law already affords; the importance of competition in our
economic system; the question whether the parties are competitors; conventions with
other countries; and the motive of the actor (the person committing the alleged
infringement of goodwill).
The Constitution also plays an important role when weighing up the interests of
competing parties to determine and apply the boni mores or reasonable test in a particular
case. Section 39(2) of the Constitution provides that ‘[w]hen interpreting any legislation, and
when developing the common law or customary law, every court, tribunal or forum must
promote the spirit, purport and objects of the Bill of Rights.’
In the matter of Carmichele v Minister of Safety and Security31 the Constitutional Court
confirmed this shift in the development of the common law and stated the following:
Before the advent of the (Interim Constitution [Act 200 of 1993]), the refashioning
of the common law in this area entailed ‘policy decisions and value judgments’
which had to ‘reflect the wishes, often unspoken, and the perceptions, often but
dimly discerned, of the people.’ A balance had to be struck between the interests of
the parties and the conflicting interests of the community according to what ‘the
[c]ourt conceives to be society’s notions of what justice demands.’ Under section
39(2) of the Constitution concepts such as ‘policy decisions and value judgments’
reflecting ‘the wishes … and the perceptions … of the people’ and ‘society’s notions
of what justice demands’ might well have to be replaced, or supplemented and
enriched by the appropriate norms of the objective value system embodied in the
Constitution.
In view of the above, it is apparent that the norms reflected in the Constitution must
permeate the common law and influence the content of ‘wrongfulness’.
PAUSE FOR Do the boni mores of society change?

REFLECTION Importantly, it must be remembered that society’s boni mores are not static, but evolve over
time to accommodate ‘changing values and new needs’.32
In the matter of Van der Merwe and Another v Els and Another,33 an application was
brought for an interdict to restrain the respondents from competing unlawfully with the
applicants. The applicants claimed that the first respondent had made a mould from one
of their 25-foot ‘Hysucats’, after which the first respondent started manufacturing its own
26-foot ‘H Cat’ range of boats from such moulds. The respondents also started
30 Ch 2 of the Constitution.
31 2001 (4) SA 938 (CC) at para 56.
32 Amod v Multilateral Motor Vehicle Accidents Fund 1999 (4) SA 1319 (SCA) at 1330 A.
33 2008 BIP 404 (C).

advertising their boats using photographs of one of the applicants’ products as well as the
applicants’ logo. The applicants’ claim was based squarely on the principles laid down in
Schultz v Butt.34
Griesel J was, however, of the view that this reliance was misplaced. He agreed with
Dean35 that the decision in Schultz v Butt ‘has given recognition to a remedy of unlawful
competition of very limited scope in the field of the copying of three dimensional utilitarian
objects’ and falls far short of providing general remedy of unlawful competition for restraining
reverse engineering of technological products. In addition, he shared the view that the
introduction of section 15(3A) of the Copyright Act 98 of 197836 appeared to have reduced
the scope for arguing that reverse engineering of technological objects constitutes unlawful
competition.
Plewman JA, in Premier Hangers,37 stated regarding section 15(3A) that ‘[t]he
introduction of s 15(3A) to the Copyright Act 98 of 1978 in 1983 authorising ‘reverse
engineering’ under given conditions also serves as an example of an ongoing common
thread in intellectual property legislation favouring a freedom to copy works which have been
permitted to pass into the public domain.’ He further emphasised ‘that the absence (or
expiration) of statutory protection is regarded as opening the field to competition by copying
or imitating and that this is quite legitimate’.38
In the light of these dicta from Premier Hangers, together with the amendment of the
Copyright Act referred to above, Griesel J found that the ‘remedy of very limited scope’
created by Schultz v Butt39 had been diluted even further and that the legal landscape had
changed quite considerably since Schultz v Butt was decided more than 20 years ago. ‘After
all’, he stated with reference to Dean,40 ‘how can the boni mores denounce as unlawful
conduct that which is specifically authorised by the legislature in s 15(3A) of the Copyright
Act?’41
This is one example of how the legal convictions of a community can change over the
years, a visible change which is evident from amendments made to statutes.
3.3 The right to attract custom

In order to understand the concept of unlawful competition, one must understand the rights
which it is said to infringe, namely the right to attract custom or the ‘reg op werfkrag’42 of the
34 1986 (3) SA 667 (A).

35 OH Dean ‘Reproduction of three-dimensional utilitarian objects: Copyright infringement and unlawful competition’
(1990) 1 Stell LR 49–64.
36 Which provides that:
The copyright in an artistic work of which three-dimensional reproductions were made available, whether inside
or outside the Republic, to the public by or with the consent of the copyright owner (hereinafter referred to as
authorised reproductions), shall not be infringed if any person without the consent of the owner makes or makes
available to the public three-dimensional reproductions or adaptations of the authorised reproductions,
provided – (i) … (ii) the authorised reproductions primarily have a utilitarian purpose and are made by an
industrial process.
37 1997 (1) SA 416 (SCA) at 424C–D.
38 At 423D–E.
39 1986 (3) 667 (A).
40 Dean (1990) Stell LR 64–65.
41 At para 42.
42 Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T) 182; J Neethling Unlawful
Competition 2 ed (2008) 106–107.

undertaking. In Geary & Son (Pty) Ltd v Gove43 Steyn CJ made it clear that the right protected
is the right to attract custom when he said:
… the right upon which the plaintiff may be presumed to rely is its right to attract
custom. The interference alleged would, on that basis, appear to be a wilful
misrepresentation and dishonest conduct on the part of the plaintiff’s competitor
by which customers or potential customers have been or will be induced to deal with
the competitor rather than itself. I do not propose to attempt a definition of the limits
set to competition in trade by Aquilian liability but, whatever those limitations are,
it seems clear that interference of the nature indicated is recognised as an
infringement of a trader’s right and therefore as a delict in our law.
This is sometimes referred to as the trader’s goodwill, in the sense of ‘the attractive force that
brings in custom’. However, Webster and Page submit that these concepts are not
synonymous, arguing that while the right to attract custom may involve the right to exploit
an existing goodwill, its existence does not depend on, nor does it consist of, an existing
goodwill. For this reason, a trader can claim protection against unlawful competition without
having to establish an existing goodwill, only his right to attract custom.44
3.4 Competition principle

The South African courts have considered and accepted the principle of competition, namely
that ‘the competitor who renders the best or most reasonable performance must achieve
victory, while the one rendering the weakest performance must suffer defeat’.45 Competition
that prevents the competitor who renders the most reasonable (fairest) performance from
achieving victory in the competitive struggle is unlawful.46
This competition principle represents a concretisation of the boni mores or
reasonableness criterion as the general test for wrongfulness.47
3.5 Types of unlawful competition

Since at least 198648 there has been general acceptance that there is a remedy of unlawful
competition which has a number of recognised species, but that there is no closed number
of forms or manifestations of specific applications of the general remedy.
As discussed in paragraph 3.2.2 above, unlawful competition is judged based on the boni
mores criterion. Fairness and honesty, which are used in the development of the law relating
to unlawful competition, are vague and elastic terms.49 The natural standard of fairness or
reasonableness depends on the facts of each case50 and it is an almost impossible task to
43 1964 (1) SA 434 (A) 441A.

44 Webster & Page South African Law of Trade Marks 4 ed (RS 17 2013) 15–5.
45 Mfundisi v Liston 2006-5–19 case no. 4191/06 (C); Neethling Unlawful Competition 129; Van der Westhuizen v Scholtz
1992 (4) SA 866 (O) 873–874; Kellogg Co and Another v Bokomo Co-operative Ltd 1997 (2) SA 725 (C) 739.
46 Van der Westhuizen v Scholtz 1992 (4) SA 866 (O) 874.
47 Neethling Unlawful Competition 133.
48 After the ruling in Schultz v Butt 1986 (3) SA 667 (A).
49 Dun and Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) Ltd 1968 (1) SA 209 (C).
50 Van Dijkhorst J in Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2) SA 173 (T) 182.

provide a complete list of all forms of unlawful competition.51 As a result, there is no numerus
clausus (restricted number) of types of grounds for unlawful competition.
PAUSE FOR No numerus clausus

REFLECTION Although specific forms of unlawful competition have been recognised, any conduct that
meets the requirements of the general remedy for unlawful competition can still be
actionable, no matter what the nature or form of the business practice objected to. This was
highlighted in the case of Elida Gibbs (Pty) Ltd v Colgate-Palmolive (Pty) Ltd.52
In this case, both parties manufactured toothpaste and had commenced advertising
campaigns during 1986, claiming that their respective toothpastes inhibited the formation
of tartar, a form of hardened dental plaque. Colgate maintained that Elida Gibbs had acted
falsely and misleadingly in its advertising. The conduct, Colgate alleged, was wrongful because
it interfered with its right to exploit legitimate claims for its own product, free of the influence
of spurious statements by competitors, and because it contravened various statutes
prohibiting the making of misleading claims about one’s product. Colgate argued that its
goodwill was being impaired by the allegedly false claims made by Elida Gibbs and sought
an interdict restraining Elida Gibbs from displaying, publishing or otherwise distributing the
advertising material complained of.
Elida Gibbs argued that Colgate had failed to allege facts which, if proved, would establish
the element of wrongfulness necessary to sustain a claim of unlawful competition, because
Colgate did not allege that Elida Gibbs had acted fraudulently and deliberately in making the
statements that it did. Because the conduct objected to did not fall within an established
category of unlawful competition, such as passing off, it was argued that it could only
constitute unlawful competition if it was coupled with a dishonest intention (dolus) and that
it was not sufficient that the conduct of Elida Gibbs had been contra bonos mores, or contrary
to the sense of justice of the community.
The issue raised was whether, in order to satisfy the requirement of wrongfulness in a
claim based on unlawful competition, it is sufficient to allege that conduct is contra bonos
mores or whether the claimant must go further and allege dolus on the part of his trade
rival.
Elida Gibbs was in essence attempting to extend the criterion of wrongfulness applicable
in instances of injurious falsehood to all forms of unlawful competition. The mere fact that
in many other cases of unlawful competition the defendants or respondents acted
dishonestly does not mean that dishonesty is a sine qua non (an essential condition) of
unlawful competition. The criterion of unlawful competition is not whether the conduct
complained of is dishonest but whether it is contra bonos mores. The requirement of
wrongfulness may therefore be met whether the conduct was honest or not. If competition
must be adjudged wrongful on that criterion, the fact that the behaviour in question was
dishonest is, strictly speaking, irrelevant.
The test of wrongfulness is an objective one and is not necessarily influenced by the
state of mind of the defendant or respondent.
51 See Neethling Unlawful Competition 145 and the references to HD Nims The Law of Unfair Competition and Trade
Marks (1947) vol 1 14, viz that ‘No index exists of facts which constitute unlawful competition. No prophet has attempted
to foretell what acts will be held to constitute unfair competition in the future.’, and to IT McCarthy Trade Marks and
Unfair Competition (1984) ( Supplement 1991) vol 1 1–28, viz that ‘It is clear that there are many rooms in the house of
unfair competition.’
52 1988 (2) SA 350 (W).

A number of different specific forms of unlawful competition that have been recognised by
our courts are discussed below. These forms of unlawful competition, and more particularly
the necessary element of wrongfulness, are based either on common law grounds or
statutory grounds.
3.5.1 Common law grounds
3.5.1.1 Passing off

Passing off is probably the best-known form of unlawful competition.
As discussed in chapter 2, which deals with trade marks (including passing off ), the
wrong known as passing off consists53 of a representation by one person that his business
(or goods or services) is that of another, or that it is associated with another. In order to
determine whether a representation amounts to passing off, one must enquire whether there
is a reasonable likelihood that members of the public may be confused into believing that
the business of one is, or is connected with, that of another.
The requirements relating to passing off are discussed in detail in chapter 2, more
particularly in paragraph 2.10.
3.5.1.2 Leaning on
Leaning on is, in some respects, very similar to passing off,54 particularly in so far as the
requirements relating to goodwill and reputation are concerned.
Leaning on relates to the advertising value of a business and its trade marks and occurs
where a person or business uses the trade mark of another (and in particular its advertising
value) to promote its own performance and goodwill.55 There need not necessarily be any
misrepresentation or confusion as to the origin of the goods or services but simply a
misappropriation of goodwill and reputation. A typical example would be where trader A
advertises his goods as being just as good as, or similar to, those of competitor B – there is
clearly no misrepresentation as to origin, but A is using the goodwill and reputation of B to
promote his own performance.
Leaning on is contra bonos mores (and accordingly unlawful) to the extent that a competitor
attempts to attract custom, in conflict with the competition principle, through the merits of
another’s performance and not through the merits of his own performance. It would typically
occur where comparative advertising is used, in a manner contrary to the boni mores, by a
person or business to misappropriate the advertising value of a competitor’s business or trade
mark and its reputation to enhance the advertising value of its own product or service.
PAUSE FOR What is comparative advertising?

REFLECTION Comparative advertising occurs where an advertiser advertises its goods or services by
comparing them with the goods or services of another party, usually a competitor. It can be
done by either suggesting (directly or indirectly) that the advertiser’s products and/or
services are the same as (or a substitute for), similar, or superior to the products and/or
services of its competitor, or by implying that the quality of the competitor’s product or
service is inferior.
53 See Capital Estate & General Agencies (Pty) Limited and Others v Holiday Inns Inc and Others 1977 (2) SA 916 (A).
54 There are in fact some instances where leaning on can also constitute passing off.

The basic principles relating to comparative advertising are regulated by the Code of
Advertising Practice (the ASA Code) of the Advertising Standards Authority (ASA) of South
Africa;56 the Trade Marks Act;57 and the provisions relating to unlawful competition.
The ASA Code permits comparative advertising, subject to certain requirements. These
include inter alia the stipulation that all legal requirements (including the provisions of the
Trade Marks Act) must be complied with; that the facts appearing in the advertisement
should be capable of substantiation; that the claims made in the advertisement must be
material, relevant and objectively determinable and verifiable; that the claims made in the
advertisement must not be misleading or confusing; and that the products must have the
same or similar characteristics and must be compared on the same basis.58
Advertising may not infringe the advertising goodwill of another party. Goodwill eroded
by normal and healthy competition is not in itself unlawful.59 However, the comparative
advertisement should not unlawfully infringe the competitor’s advertising goodwill as a
result of, for example, trade mark infringement or a false representation as to the quality
of the competitor’s product – which could constitute unlawful competition.
Comparative advertising per se is not unfair or dishonest and, provided that the
requirements of the ASA Code have been met, comparative advertising will be consistent
with the morals of society and therefore reasonable. Provided that comparative
advertising complies with the Advertising Code, and accordingly with the boni mores, it
should enhance competition in a positive manner.
3.5.1.3 Misappropriation and misuse of trade secrets of another

A person who has obtained information in confidence is not permitted to use it in
a manner that is detrimental to the person who made the confidential communication.60
A defendant should not be in a better position as a result of his own wrong in appropriating
confidential information and cannot take advantage of his own wrong to the detriment
of another.61
56 See Clause 7 of Sect. II of the Advertising Standards Authority of South Africa: Code of Advertising Practice and Procedural
Guide Service (RS 20 2012) 2–7. The Advertising Standards Authority of South Africa (ASA) is an independent body
established in 1969 by the marketing communication industry to ensure that its system of self-regulation works in the
public interest. In terms of s 55(1) of the Electronic Communications Act 36 of 2005, all broadcasting service licensees
must adhere to the Code of Advertising Practice (the ASA Code) as determined and administered by the ASA. The ASA
Code is the guiding document of the ASA. It was drawn up by the ASA with the participation of representatives of the
marketing communication industry and is largely based on the International Code of Advertising Practice, prepared
by the International Chamber of Commerce. It contains general principles which apply to commercial advertising. It
is amended from time to time to meet the changing needs of both the industry and society.
57 Specifically the provisions relating to trade mark infringement in terms of ss 34 and 35 of the Trade Marks Act. After the
decision in BMW v Verimark 2007 (6) SA 263 (SCA) it is generally accepted that the unauthorised use of a third party’s
trade mark in a non-trade mark way (i.e. not as a badge of origin) does not constitute trade mark infringement. This is
discussed in para 2.9.2.1.
58 Clause 7 of Sect. II of the ASA Code 2-7–2-8. Advertising Standards Authority of South Africa. Sponsorship Code 3–7
Ambush Marketing. Available online: www.asasa.org.za/Default.aspx?mnu_id=87.
59 See the discussion relating to the competition principle in para 3.4 above.
60 Terrapin Ltd v Builders’ Supply Co. (Hayes) Ltd [1960] R.P.C. 128.
61 Stellenbosch Wine Trust Ltd and Another v Oude Meester Group Limited 1972 (3) SA 152 (C).

In order to be confidential, information must have the necessary quality of confidence

about it – it must not be something that is public property or public knowledge.62
In Dun and Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape)
Ltd 63 Corbett J described the conduct of a rival trader who obtained and used confidential
information to advance his own business interests as a deliberate misappropriation and
filching of the products of another’s skill and labour. He held that:
[t]he conduct of a rival trader who obtains and, well knowing the position, uses the
information to advance his own business interests and activities amounts to a
deliberate misappropriation and filching of the products of another’s skill and
labour. Such conduct must, in my view, be regarded as dishonest and as constituting
a fraud upon the compiler of the information.
The conduct of the trader misappropriating such information would amount to an

infringement of the rights of the compiler thereof to attract custom without unlawful
interference from competitors.64
A breach of confidence can occur without there necessarily being any contractual
relationship between the parties65 and a defendant can infringe the rights of a plaintiff if it
is proved that he used the confidential information of the plaintiff that was obtained, directly
or indirectly.66 Anyone who aids, abets or procures the breach of a contract of confidence
could also be guilty of infringing the plaintiff’s rights.67
3.5.1.4 Misrepresentation as to geographic origin of goods

A misrepresentation as to the geographic origin of goods is clearly misleading and cannot,
in terms of the competition principle, constitute lawful competition.
A misrepresentation of a product as having been manufactured in another country68 when
it was manufactured locally is likely to deceive potential purchasers of the product. On the same
basis, it would be unlawful if a producer created a misrepresentation that a whisky was produced
in Scotland when it was not;69 or that a sparkling wine was champagne if it was not produced
in the Champagne region of France.70 The same principle would apply to the misleading use of
other geographical indications such as Port and Sherry. These types of products have specific
characteristics and qualities (often making these products more desirable or valuable), which
can be attributed to their geographical origin. The use of such a geographical origin to describe
a product that was produced in a similar manner (such as describing a sparkling wine made
according to the champagne method as Champagne) is misleading.
62 Harvey Tiling Co (Pty) Ltd v Rodomac (Pty) Ltd 1977 (1) SA 316 (T).
63 1968 (1) SA 209 (C).
64 See fn 63 supra.
65 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] 65 RPC 203 (CA) at 211. This is based on the broad
principle of equity that anyone who has received information in confidence should not take unfair advantage of it. See
also Stellenbosch Wine Trust in this regard.
66 Stellenbosch Wine Trust v Oude Meester Group Ltd supra.
67 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd supra.
68 Haggar Co v SA Tailorscraft (Pty) Ltd and Another 1985 (4) SA 569 (T). It was held that the reference to the United States
on garment labels in respect of goods that were not manufactured there was a fraudulent deception and that it could
not simply constitute a form of puffery.
69 John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] RPC 489. See also William Grant and Sons and Another v Cape Wine
and Distillers Ltd and Others 1990 (3) SA 897 (C) and Long John International Ltd v Stellenbosch Wine Trust (Pty) Ltd
and Others 1990 (4) SA 136 (D).
70 Bollinger, J and Others v Costa Brava Wine Co and Another (i) [1960] RPC 16 and (ii) [1961] RPC 116. See also Webster
& Page South African Law of Trade Marks 4 ed (2013) 15–92.

3.5.1.5 Misrepresentation as to nature/composition of goods

In Erven Warnick BV v J Townend & Sons (Hull) Ltd71 the plaintiffs had been selling a drink that
was made in Holland, called Advokaat, in the United Kingdom for a number of years. The drink
consisted of eggs, ethyl alcohol and sugar but contained no wine and enjoyed a substantial
reputation and goodwill as a drink with recognisable qualities relating to its appearance, taste,
strength and the satisfaction it engendered. The defendants manufactured and sold a drink,
which they called ‘Old English Advocaat’, that was made from eggs and a fortified Cyprus wine.
The court found that the use of the name ‘Advocaat’ was indicative of a product with
specific characteristics and the defendants’ use of Advocaat in respect of a product without
those characteristics (despite the fact that the name was not indicative of a specific trade
origin) was a misrepresentation72 and accordingly constituted unlawful competition.
3.5.1.6 Misrepresentation as to class or quality of goods

Misrepresenting the class or quality of goods can constitute unlawful competition despite
the absence of a misrepresentation as to the origin of the goods.73 The use of the term
‘sparkling wine’, which describes a certain style of wine, in relation to a perlé wine, which is
generally a less luxurious and cheaper wine, was found to be unfair and dishonest in
Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd74 and it accordingly constituted
unlawful competition. This type of misrepresentation can also occur where second-hand
goods are sold while the impression is created that they are new.75
3.5.1.7 Misrepresentation that another trader’s goods are own goods

In Victor Products (SA) (Pty) Ltd v Lateulere Manufacturing (Pty) Ltd76 the plaintiff removed
the defendant’s labels from products and affixed its own label, bearing its own name,
indicating that it had manufactured the products.
The court dealt with a similar action in Geary & Son (Pty) Ltd v Gove,77 where the
defendant had falsely stated or implied that the products it was selling were manufactured
by it. Such conduct was held to be a wilful misrepresentation and dishonest conduct on the
part of the plaintiff’s competitor which could induce customers to deal with the competitor
rather than with itself. A trader does not have the right to gain an undue and improper
advantage by means of falsehoods to benefit himself at the expense of another.78
3.5.1.8 Dishonest adoption of sign or get-up of competitor

The use of a trade mark or get-up of another that has acquired a reputation and goodwill can
constitute passing off.79 Such use can also constitute unlawful competition where the trade
mark or get-up has not yet acquired a reputation or any goodwill (and where it will
accordingly not constitute passing off ).80
71 [1980] RPC 31.

72 See also Webster & Page South African Law of Trade Marks 15–92.
73 Webster & Page 15–93. However, the use of a geographical reference, such as ‘champagne from Stellenbosch’, even if
this is not misleading as to geographical origin, could still constitute leaning on to the extent that such use would create
an association between the wine and the quality or characteristics of a wine that was produced in Champagne.
74 1977 (2) SA 221. See also Webster & Page 15–94.
75 Webster & Page 15–94; Gillette Safety Razor Co v Diamond Edge Ltd [1926] 43 RPC 310; Gillette Safety Razor Co v
Franks [1924] 42 RPC 499.
76 1975 (1) SA 961 (W).
77 1964 (1) SA 434 (AD).
78 As stated by De Villiers CJ in Combrinck v de Kock (1887) 5 SC 405 referred to in Geary & Son 1964 (1) SA 434 (A) at 441.
79 See discussion of passing off in paragraph 2.10.
80 See Webster & Page 15–95.

In Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd81 the applicant was about to
launch a new wine to be sold under a new label. This new label was designed by advertising
agents and printed by printers, who were bound to observe strict confidence. This confidence
was breached and the label came into the hands of the respondent in a clandestine way. The
respondent copied the label and launched a product with a label that was a close imitation
of the applicant’s label.
The court was of the view that the respondent could not be placed in a better position as
a result of its own wrong in appropriating the confidential information and secret design of
the applicant in order to release its own wine a week before that of the applicant.82 It found
that this constituted a calculated attempt to pass off its goods as those of a competitor in
trade, despite the fact that these goods were not yet on the market.
Bearing in mind that the applicant’s goods had not yet been released (and that it could
accordingly not have a reputation and any goodwill in the new label), it is unlikely that this
could have constituted passing off.83 To the extent that such conduct is contra bonos mores,
it would, however, still constitute unlawful competition.
3.5.1.9 Adoption of trade description of competitor

The use of a trade description of another cannot constitute passing off or unlawful
competition if such trade description is descriptive and has not acquired a secondary
meaning to the extent that it is indicative of the applicant’s product.84 This was the case in
Sea Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd85 where the applicant, who was the
first in the country to use the trade descriptor ‘prime cuts’ in relation to the marketing of
fish, was unable to prevent the respondent’s use of the trade descriptor ‘kingklip prime cuts’
– despite spending substantial sums on advertising.86
The court was of the view that a trader cannot claim a monopoly in descriptive words as
part of its name or as an advertising campaign and held that:
A trader is entitled to use ordinary descriptive words or laudatory words, which

are appropriate to his product to describe his product: it does not become
unfair to do so because another trader first realised that they were appropriate,
and made extensive use of them, even though he deliberately adopts them for
his own product.
COUNTER Secondary meaning

POINT This situation is different, however, where a trader can show that it has, through the use of
a trade description, acquired a reputation and goodwill in such a description. A trade
description can also serve as a trade mark in some circumstances.
81 1972 (3) SA 152 (C).

82 It was held that, in terms of the equitable principle that a man cannot take advantage of his own wrong to the detriment
of another – nemo ex suo delicto meliorem suam conditionem facere potest – the respondent could not be a in a better
position than if it had waited and obtained possession of the label lawfully.
83 See Webster & Page 15–96.
84 At 15–96.
85 1985 (2) SA 355 (C).
86 There are a number of decisions that established that where descriptive words, as opposed to invented or fancy words,
are used in a trade mark, the courts will not easily find that such words have become distinctive of the business. It is
unlikely that the courts would give a monopoly in respect of such words to one trader at the expense of others. See Sea
Harvest v Irvin & Johnson supra in this regard.

In Sea Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd87 the applicant had
used ‘Oven Crisp’ in relation to a coated fish product for approximately 20 years. It launched
urgent proceedings to prevent the respondent from using ‘Oven Crunch’, also in relation to
a coated fish product, in a packaging that was similar to that of the ‘Oven Crisp’ product.
The court88 was of the view that:
… there is no doubt that the first respondent’s get-up and mark of its Oven Crunch
product are deceptively similar to that of the applicant’s Oven Crisp product, and
there is thus a reasonable likelihood that members of the public may be confused
into thinking that the Oven Crunch product of the first respondent is that of the
applicant’s. This will clearly impact negatively on the applicant’s goodwill, if not
its reputation.
3.5.1.10 Disparaging comments regarding a competitor’s business

Misrepresenting facts and making disparaging remarks or injurious falsehoods about
a competitor’s business, its performance and/or products constitutes unlawful
competition to the extent that such conduct will be contra bonos mores and against the
competition principle.89
In the matter of Post Newspapers (Pty) Ltd v World Printing & Publishing Co Ltd90 the
applicant, the proprietor and publisher of a newspaper, applied for an interdict to prevent
the publisher of a competing newspaper from circulating documents designed to persuade
recipients to place advertising with the respondent’s newspaper instead of that of the
applicant. In considering what facts had to be proven in order to succeed with the
application, Nicholas J referred to the statement of Steyn CJ in Geary & Son (Pty) Ltd v Gove,91
in which the plaintiff was basing its case on a wilful falsehood (i.e. not upon a negligent
misrepresentation but an intentional wrongful act). In that matter, Steyn CJ found that the
plaintiff had to prove that:
the defendant has, by word or conduct or both, made a false representation, that it
knew the representations to be false, that the plaintiff has lost or will lose customers,
that the false representation is the cause thereof, and that the defendant intended92
to cause the plaintiff that loss by the false misrepresentation.
Neethling93 is of the view that the perpetrator’s subjective attitude is irrelevant and that even
an innocent misrepresentation as to a competitor’s undertaking, goods or services, where
the perpetrator reasonably believed in the truth of the allegations, can constitute unlawful
competition.
87 WCHC 17-03-2011 case no. 2966/11.

88 Cloete AJ at 47.
89 See Grobbelaar v Du Toit 1917 TPD 433.
90 1970 (1) SA 454 (W).
91 1964 (1) SA 434 (AD) at 441 C–D.
92 The subsequent decision in Elida Gibbs (Pty) Ltd v Colgate-Palmolive (Pty) Ltd 1988 (2) SA 350 (W) made it clear that
the intention of the respondent is irrelevant.

COUNTER Puffery
POINT Puffery can be acceptable in some instances94 and a mere comparison with a competitor’s
product and a statement that a company’s own product is better will not necessarily
constitute unlawful competition.95 Such conduct nevertheless has to comply with the
provisions of the ASA Code, which provides that advertisers must be able to substantiate all
claims that are capable of objective substantiation. Advertisements should not contain any
statement or presentation which is likely to mislead consumers and value judgments,
matters of opinion or subjective assessments that constitute puffery are only permissible
provided that it is clear that what is being expressed is an opinion, and that there is no
likelihood that the opinion or the way it is expressed will mislead consumers about any
aspect of a product or service which is capable of being objectively assessed in the light of
generally accepted standards.
The guiding principle in terms of the ASA Code is that puffery is true when an expression
of opinion, but false when viewed as an expression of fact. Obvious untruths, harmless
parody or exaggerations, intended to catch the eye or to amuse, are permissible provided
that they are clearly to be seen as humorous or hyperbolic and are not likely to be
understood as making literal claims for the advertised product.96
3.5.1.11 Interference with contractual relationships

According to Neethling97 interference with a contractual relationship can occur where i) a
third party’s conduct is such that a contracting party does not obtain the performance that
he is entitled to from the other party, or ii) where a contracting party’s contractual obligations
are increased as a result of interference by a third person.
Such interference is unlawful if it results in a breach of contract. In Atlas Organic
Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others98 it was stated that a delictual
remedy is available to a party to a contract where a third party has intentionally, and without
lawful justification, induced another party to the contract to breach that agreement.
3.5.1.12 Boycotting of a business

In Times Media Ltd v South African Broadcasting Corporation99 the applicant launched a
promotional campaign, which included a television advertisement. The respondent refused
to broadcast the advertisement because it included a reference to one of the respondent’s
competitors (M-Net). The applicant sought an order to compel the respondent to broadcast
the advertisement on the basis that it constituted an unlawful boycott of M-Net.
The court was of the view that the boni mores of the market did not require the respondent
to broadcast an advertisement for a competitor. The respondent’s reason for its refusal was
commercially and morally sound and unexceptionable. The court held that the law of unfair
94 Clause 4.2.2 of Sect II of the ASA Code 2-3–2-4.

95 The court in Post Newspapers (Pty) Ltd v World Printing & Publishing Co Ltd 1970 (1) SA 454 (W) was of the view that it
cannot constitute unlawful competition for a seller to merely express opinions in advertising material, which he does
not honestly hold. The court referred to Wessels in Law of Contract in South Africa 2 ed (1951) vol.1310, sect. 1004 which
states that it is a matter of universal experience that persons who have goods for sale are in the habit of exaggerating
the qualities of those goods and suppressing their defects.
96 Clause 4.2.3 of Sect II of the ASA Code 2–4.
98 1981 (2) SA 173 (T) at 202.
99 1990 (4) SA 604 (W).

competition was not intended to restrain ‘commercial warfare’ and that it should not be
used to advance purely commercial, as opposed to legal interests.
This does not mean that the boycotting of a business will never constitute unlawful
competition. Such conduct will constitute unlawful competition in circumstances where it
is contra bonos mores and accordingly against public policy.

or employees
In Ebrahim v Twala and Others100 the applicant sought an interdict to restrain the
respondents from interfering with his business, following repeated assaults and intimidation,
which prevented or were calculated to prevent him from carrying on his lawful trade.
Although the respondents argued that there were other remedies available to the applicant
and that the court should not interdict a person from committing a criminal offence, the
other remedies were not adequate in that particular instance.
It was pointed out in Dun and Bradstreet (Pty) Ltd v SA Merchants Combined
Credit Bureau (Cape) (Pty) Ltd101 that such conduct can be actionable, not only where
the responsible party is a rival trader but also where he does not himself carry on
such trade.
3.5.1.14 Trading in contravention of a right of another

In Prok Africa (Pty) Ltd and Another v NTH (Pty) Ltd and Others102 it was held that it can
constitute unlawful competition where the respondent has obtained confidential
information in competition with the applicant, who has a licence to use such information.
Accordingly it not only constitutes unlawful competition by A against B, if A obtains B’s
confidential information in a dishonest way, but it could also constitute unlawful competition
against C, a trade rival of A, who is in lawful possession of such information.
3.5.2 Statutory prohibitions

In Patz v Greene & Co103 the appellant applied for an interdict to restrain the respondent from
carrying on an illegal trade. The appellant traded as a licensed general dealer, butcher and
restaurateur and the respondent traded in the same line of business, without the necessary
licence to do so. The appellant claimed that it had sustained damage as a result of illegal
competition from the respondent.104
Competition by the respondent directly affected the appellant and the competition was
the result of illegal trading. The court of appeal was of the view that a legal (common law)
right of the appellant had been infringed – the right to carry on his trade without wrongful
interference from others.
The court of appeal found that competition by means of conduct that is expressly
prohibited by law and interferes with trade is wrongful.105
100 1951 (2) SA 490 (W).

101 1968 (1) SA 209 (C).
102 1980 (3) SA 687 (W).
103 1907 TS 427.
104 To obtain an interdict, the appellant had to show: (i) that it had a clear right; (ii) that an injury was actually being
committed by the respondent, or a well-grounded apprehension that such an injury would be committed by the
respondent; and (iii) that there was no other ordinary remedy that could protect him with the same result.
105 The appellant was, however, not able to show more than a prima facie case of actual injury and he was accordingly
unsuccessful in this matter. The court of appeal ordered that the matter stand over until the conclusion of an action to
be instituted by the appellant.

Patz v Greene & Co laid down the general principle that a trader who acts in contravention
of a statutory prohibition perpetrates conduct that constitutes an unlawful act and thus creates
liability for a claim of unlawful competition on the part of a person who suffers damage on that
account, provided the other elements required for an Aquilian action are present.106 The
aforementioned principle can be, and has been, applied in respect of conduct contrary to a
variety of statutory provisions, certain manifestations of which are discussed below. In each
of these instances the contravention renders the doer’s conduct unlawful and has the potential
to provide the basis for a claim of unlawful competition. The focus is thus on conduct that
meets the element of unlawfulness for purposes of liability in an Aquilian claim.
The manifestations that have been selected are exemplary of the principle that someone
who trades in contravention of a statutory provision perpetrates conduct that is unlawful in
the context of the delict of unlawful competition. This principle applies generally to conduct
in contravention of any statutory provision.
3.5.2.1 Parallel importation

When a product offered for sale is a parallel imported product, section 25 of the Consumer
Protection Act107 requires a seller of goods to notify consumers that it is such an item. The
fact that it is such an item gives rise to various consequences in terms of the Act. The sale of
parallel imported goods can also raise issues of compliance with various other South African
legislative requirements (such as those of the Foodstuffs, Cosmetics and Disinfectants Act
54 of 1972; the Trade Metrology Act 77 of 1973; the National Regulator for Compulsory
Specifications Act 5 of 2008; or the specific alcohol content of liquor products in terms of the
Liquor Products Act 60 of 1989).
Conduct on the part of a seller which constitutes an offence in terms of legislation of this
nature is objectively unlawful and could thus provide the basis for a claim of unlawful
competition.
PAUSE FOR Parallel imports

REFLECTION Parallel importation refers to the importation and dealing in so-called ‘grey goods’, which
are goods manufactured in one jurisdiction by or with the permission of
the intellectual property rights owner and imported into another jurisdiction without the
intellectual property owner’s consent; or into a jurisdiction where the intellectual property
is owned by another entity and where the rights to exclusively trade in
those goods have been given to a distributor or licensee. Parallel imported goods
are accordingly genuine, and not counterfeit, goods but they are usually intended
for sale in another country and seek to meet the legal requirements for trade in
that other country, which may have different requirements from those that apply in South
Africa.
Parallel importation does not per se constitute unlawful competition. In Taylor and Horne v
Dentall108 the court indicated that it is in the interest of consumers that the same or similar
goods can be bought from more than one source as this will result in their paying a
reasonable price for such goods. Competition as such is not unlawful and, in the absence of
106 See Patz v Greene & Co supra and Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A).
107 68 of 2008.
108 1991 (1) SA 412 (A).

statutory protection, there is no protection afforded to a trader if another trader uses the
same idea or concept on which his product is based – even if the first trader has, through his
efforts, built up a demand for the product and despite the obvious advantage that grey goods
retailers get from the advertising and marketing activities of the authorised distributor.
Parallel importation is specifically countenanced in the Trade Marks Act.109 Section
34(2)(d) provides that:
a registered trade mark is not infringed by — … (d) the importation into or the
distribution, sale or offering for sale in the Republic of goods to which the trade mark
has been applied by or with the consent of the proprietor thereof;
It is accordingly not possible to rely on the provisions of the Trade Marks Act to prevent
parallel importation when the proprietor of the trade mark in South Africa is the same entity
that authorised the application for the trade mark to the products internationally.
Parallel importation, per se, is also expressly permitted in terms of the Consumer
Protection Act. However, this Act specifically requires that the seller of such products disclose
that the products offered for sale are parallel imports. More particularly, the seller is required
to give notice that the goods were imported without permission from the trade mark owner
and that the warranties or guarantees of the authorised distributors will not apply to such
goods.
The relevant section of the Consumer Protection Act (s 25) deals with disclosures
regarding reconditioned or grey market goods and provides as follows:
(1) A person who offers or agrees to supply, or supplies, any goods that – (a) have
been reconditioned, rebuilt or remade; and (b) that bear the trade mark of the
original producer or supplier, must apply a conspicuous notice to those goods stating
clearly that they have been reconditioned, rebuilt or remade, as the case may be.
(2) A person who markets any goods that bear a trade mark, but have been imported
without the approval or licence of the registered owner of that trade mark, must
apply a conspicuous notice to those goods in the prescribed manner and form.
Regulation 8 issued under the Act expands on the provisions of section 25 and provides that such
notice must be applied in a place on the goods and the marketing material of the goods where a
consumer is likely to see it; its application must be in an easily legible size and manner and must
be featured on the goods themselves and on all forms of advertising or promotion, including
in-store promotions, packaging, websites and brochures. When branded goods imported without
the approval or licence of the registered owner of the trade mark are advertised or promoted it
must be stated clearly that they are such and that no guarantee or warranty in respect of such
goods will be honoured or fulfilled by any official or licensed importer of such goods.110 In
addition, the supplier must, when selling the goods to the consumer, expressly draw his or her
attention to the notice and explain the meaning of it in plain language.111
The failure to display the required notice constitutes an offence in terms of the Consumer
Protection Act and could result in any interested person (i.e. a consumer, the duly authorised
109 194 of 1993.

110 Reg 8(1) under the Consumer Protection Act.
111 Reg 8(2) under the Consumer Protection Act.

distributor, etc.) filing a complaint with an appropriate tribunal. This could be the National
Consumer Tribunal, the National Consumer Commission, the applicable ombudsman or
the court with jurisdiction over the matter.112
Non-compliance with the provisions of the Consumer Protection Act could, in addition
to resulting in the penalties provided for in terms of the Act, also constitute conduct that is
unlawful for the purposes of unlawful competition.113 It should be borne in mind, however,
that in an unlawful competition claim in these circumstances the court can go no further
than to restrain the respondent from dealing in the goods otherwise than in compliance with
the Consumer Protection Act. The court cannot prevent the seller from trading in the grey
goods per se.
Trading in grey goods can in certain circumstances constitute copyright infringement.
This issue is discussed in paragraph 1.8.2.3.
3.5.2.2 False trade descriptions

The application of false trade descriptions, which may mislead the consumer, is specifically
prohibited by the Consumer Protection Act.
Section 24 of the Act deals with product labelling and trade descriptions and provides
that a person must not knowingly apply to any goods a trade description114 that is likely to
mislead the consumer as to any matter implied or expressed in that trade description; or
alter, deface, cover, remove or obscure a trade description or trade mark applied to any goods
in a manner calculated to mislead consumers.115
A burden is placed on retailers to ensure compliance with this section. In terms of section
24(3), retailers are obliged not to offer to supply, display or supply any particular goods if
the retailer knows, reasonably could determine, or has reason to suspect that (i) a trade
description applied to those goods is likely to mislead the consumer as to any matter implied
or expressed in that trade description; or (ii) a trade description or trade mark applied to
those goods has been altered. Moreover, with respect to any goods within the retailer’s
control, the retailer must take reasonable steps to prevent any other person from
contravening the aforementioned sections of the Act.
In terms of section 110(1) of the Act, it is an offence for any person to alter,
obscure, falsify, remove or omit a displayed price, labelling or trade description without
authority. In addition to incurring the penalties provided for in the Act, such conduct,
112 In terms of s 110(1) the Commission may issue a compliance notice in the prescribed form to a person or association
of persons whom the Commission on reasonable grounds believes has engaged in prohibited conduct. This includes
the failure to display the required notice in terms of s 25. Failure to act in accordance with a compliance notice and,
accordingly, display the required notice, amounts to an offence in terms of s 110(2) of the Consumer Protection Act.
113 As discussed in para 3.5.2, competition which is expressly prohibited by law and interferes with trade is wrongful.
114 The definition of a ‘trade description’ in terms of s 1 of the Consumer Protection Act includes:
any description, statement or other direct or indirect indication, other than a trade mark, as to i) the number,
quantity, measure, weight or gauge of any goods; ii) the name of the producer or producer of any goods; iii) the
ingredients of which any goods consist, or material of which any goods are made; iv) the place or country of origin
of any goods; v) the mode of manufacturing or producing any goods; or vi) any goods being the subject of any
patent, privilege or copyright; or b) any figure, work or mark, other than a trade mark, that, according to the
custom of the trade, is commonly understood to be an indication of any matter contemplated in paragraph (a).
115 S 24(2). S 24(1) provides that:
For the purposes of this section, a trade description is applied to goods if it is – (a) applied to the goods, or to
any covering, label or reel in or on which the goods are packaged, or attached to the goods; (b) displayed
together with, or in proximity to the goods in a manner that is likely to lead to the belief that the goods are
designated or described by that description; or (c) is contained in any sign, advertisement, catalogue,
brochure, circular, wine list, invoice, business letter, business paper or other commercial communication on
the basis of which a consumer may request or order the goods.

being objectively unlawful, provides the element of unlawfulness and thus potentially
constitutes unlawful competition.
3.5.2.3 Prohibited emblems and marks

The Merchandise Marks Act 17 of 1941 prohibits the use of certain emblems and trade marks,
the use of which is likely to mislead consumers as to, for example, the geographical origin
of goods or services to which the emblem or trade mark is applied.
Prohibited emblems
In terms of section 14 of the Act a person is guilty of an offence116 if he or she uses a mark or
trade mark, without appropriate authority, in connection with his or her trade, business,
profession or occupation; or in connection with a mark, trade mark or trade description
applied by him or her to goods made, produced or sold by him or her,117 which mark consists
of or contains:
a) the national flag of a convention country, or any imitation from a heraldic point of view;118
b) the armorial bearings or any other State emblem, of South Africa or a convention country,
or an imitation from a heraldic point of view;119
c) an official sign or hallmark adopted by South Africa or a convention country, or an
imitation from a heraldic point of view, and which indicates control and warranty in
relation to goods or services of the same or similar kind as those in relation to which such
official sign or hallmark indicates control and warranty;120 or
d) the flag, armorial bearings or any other emblem, or an imitation from a heraldic point
of view, or the name, or abbreviation of the name, of any international organisation of
which any convention country is a member.121
Any person who uses in connection with his or her trade, business, profession or occupation
any device, emblem, title or words in such a manner as to be likely to lead other persons to
believe that (a) his or her trade, business, profession or occupation is carried on under the
patronage of; or (b) he or she is employed by or supplies goods to, the President, any State
department or a provincial government, without authority in writing signed by or on behalf
of the President, the Minister administering that department or the Premier of the province
concerned, as the case may be, shall be guilty of an offence.122
Prohibited marks
The Minister of Trade and Industry may, after such investigation as he or she may think fit,
by notice in the Government Gazette, prohibit either absolutely or conditionally the use of:
a) the National Flag, or any former National Flag, of South Africa; or
b) any mark, word, letter or figure or any arrangement or combination thereof,
116 S 14(1E).
117 S 14(1).
118 S 14(1A). The term ‘convention country’ is defined as meaning a convention country in terms of the Trade Marks Act
– see para 2.2.5.4.
119 S 14(1B).
120 S 14(1C).
121 S 14(1D).
122 S 14(2).

in connection with any trade, business, profession, occupation or event, or in connection

with a trade mark, mark or trade description applied to goods.123 The Minister may also,
if he is satisfied that the circumstances require it, by notice in the Government Gazette,
withdraw, amend or qualify any such notice.124
Any person who contravenes any such absolute prohibition or fails to comply with any
condition prescribed in any such notice shall be guilty of an offence.125
Offending against any of the aforementioned provisions renders the doer’s conduct
unlawful in the context of a claim of unlawful competition.
3.5.2.4 Ambush marketing and protected events

Sponsorship126 of events, sports teams, tours and the like has become a very popular and
effective means of promoting brands and brand building. A brand holder, by means of
sponsorship, associates his brand with an activity which enjoys and attracts public and
media attention, thereby enhancing the reputation and public awareness of the brand. Vast
sums of money are paid for sponsorship of events such as the Rugby World Cup, the Cricket
World Cup, athletic tournaments and the like.127
Ambush marketing manifests itself in two forms, namely ‘association’ and ‘intrusion’. In both
forms of ambush marketing, the marketer has the objective of using the event as a platform to
promote his brand or product without incurring the financial and other obligations of a sponsor.128
Association
Ambush marketing by means of ‘association’ occurs when the ambush marketer misleads
the public into thinking that he is an authorised sponsor or contributor associated with the
event. This can be done by using the insignia of the event or insignia which are confusingly
similar to the event insignia, and furthermore by misrepresenting to the public in some
manner that the marketer or his brand is associated with the event.
In many countries ambush marketing is concerned only with ‘association’.
Section 9(d) of the Trade Practices Act 76 of 1976 was aimed specifically at ambush
marketing by association. In terms of this section, a representation by a marketer who holds
out, implies, or suggests a contractual connection or association between himself and a
sponsored event, or the person sponsoring the event, was rendered unlawful. This Act was,
however, repealed by the Consumer Protection Act 68 of 2008. Nevertheless, sections 41(1)
and 41(3) of the Consumer Protection Act are essentially to the same effect. Contravention of
these provisions can lead to a fine or imprisonment or to both a fine and imprisonment.
Intrusion
Ambush marketing by means of ‘intrusion’ occurs when the ambush marketer seeks to gain
exposure for his own brand through the medium of the publicity attracted by the event and
123 S 15(1).
124 S 15(2).
125 S 15(3).
126 ‘Sponsorship’ is defined in Clause 3.1 of the ASA Sponsorship Code as ‘a form of marketing communication whereby
a sponsor contractually provides financial and/or other support to an organisation, individual, team, activity, event
and/or broadcast in return for rights to use the sponsor’s name and logo in connection with a sponsored event, activity,
team, individual, organisation or broadcast’. Advertising Standards Authority of South Africa. Available online at www.
asasa.org.za/Default.aspx?mnu_id=87.
127 OH Dean‘Ambush marketing and protected events’ (2003) November De Rebus 20.
128 Dean (2003) De Rebus 21. See also C Dean-Wales & OH Dean ‘Ambush marketing: Virtue or vice?’ Encyclopaedia of
Brands & Branding in South Africa (2007) 58.

without the authorisation of the event organiser. This can be done by, for example, placing
product advertisements on the outskirts of a stadium at which a sponsored event is taking
place; flighting advertisements referring to a sponsored event without suggesting that the
advertiser is a sponsor; or running promotional competitions referring to a sponsored event.
Section 15A was introduced into the Merchandise Marks Act 17 of 1941 (the Merchandise
Marks Act) by the Merchandise Marks Amendment Act 61 of 2002 with the specific aim of
addressing ambush marketing by intrusion. Section 15A(2) provides specifically that:
For the period during which an event is protected, no person may use a trade mark
in relation to such event in a manner which is calculated to achieve publicity for that
trade mark and thereby to derive special promotional benefit from the event, without
the prior authority of the organiser of such event.
In this context, the concept ‘use of a trade mark’ includes any visual representation of the
trade mark upon or in relation to goods or in relation to the rendering of services; any audible
reproduction of the trade mark in relation to goods or the rendering of services; or the use
of the trade mark in promotional activities, which in any way, directly or indirectly, is
intended to be brought into association with or to allude to an event.129
An ‘event’ is defined to mean any exhibition, show or competition of a sporting,
recreational or entertainment nature which is held or to be held in public; likely to attract
the attention of the public or to be newsworthy; and financed or subsidised by commercial
sponsorship, and includes any broadcast of such exhibition, show or competition.
Anyone who contravenes the trade mark abuse provisions of section 15A(2) commits a
criminal offence and the normal penalties provided for in the Merchandise Marks Act
apply.130 In addition, in accordance with the principle in Patz v Greene & Co,131 the conduct
constitutes an act that is unlawful for purposes of the delict of unlawful competition. In this
instance the wrongdoer is competing with an authorised sponsor.
This was the basis of the cause of action in FIFA v Metcash Trading Africa (Pty) Ltd132
where the contravention of section 15A of the Merchandise Marks Act was held to constitute
unlawful competition.133
The Sponsorship Code

In an effort to alleviate the problem of ambush marketing, the ASA has produced a code of
conduct, specifically aimed at sponsorships, which sets down basic principles and guidelines for
good practice and fairness in sponsorship. This Sponsorship Code seeks in effect to introduce
self-regulation into the sponsorship market. The main roles of the Sponsorship Code include
ensuring that sponsorships are factual, honest, decent and do not violate any laws of the country;
129S 15A(3) of the Merchandise Marks Act 17 of 1941.

130S 15A(4).
1311907 TS 427.
132(53304/07) [2009] ZAGPPHC 123 (1 October 2009).
133The court, at para 14, held that:
[t]he Respondent’s version clearly discloses its intention in the marketing of its lollipops which is to derive special
promotional benefit from the event itself. Evidence shows how the sales have gone up since the trademark use was
implemented. The association with the event or the link thereto has generated a lot of money for the Respondent
without the prior authorisation or authority of the organiser of the event. This conduct is therefore, unlawful. No money
is paid for the association or the link while other sponsors and licensees are paying fees for the use of their trade marks.
It is submitted that in terms of Prok Africa (Pty) Ltd and Another v NTH (Pty) Ltd and Others 1980 (3) SA 687 (W) such
sponsors and licensees would also have a claim against the respondent on the basis of unlawful competition.
See also OH Dean ‘Ambushing event piracy’ (2012) 24 SA Merc LJ 16–30.

protecting sponsors by ensuring that the right to a fair return on commercial investment in
sponsorship is understood by all and is not jeopardised by unethical practices, such as ambush
marketing; and protecting and promoting a sponsored event or activity by ensuring that all parties
involved do not exploit the sponsorship to the detriment of the sponsored event or activity.
Unfortunately, the Sponsorship Code does not adequately address the issue of ambush
marketing, which it describes as:
The attempt of an organisation, product or brand to create the impression of being an

official sponsor of an event or activity by affiliating itself with that event or activity without
having paid the sponsorship rights-fee or being a party to the sponsorship contract.134
From the above definition it is apparent that the Sponsorship Code focuses entirely on ambush
marketing by ‘association’ and overlooks, or does not address, the issue of ambush marketing
by ‘intrusion’. It accordingly suffers from the same shortcomings and deficiencies as the
provision in the Consumer Protection Act and the common law remedy of passing off.135
The Sponsorship Code sets up a mechanism for dealing with complaints against
marketers for using unacceptable practices relating to sponsorship of events and wrongly
making associations between brands and events or the organisers of events. In the event of
a breach of the provisions of the Sponsorship Code, an interested party may file a complaint
with the ASA which, after considering the complaint, can impose ethical sanctions such as
the withholding of advertising space; a pre-clearance requirement; adverse publicity; referral
to a disciplinary hearing or any other form of sanction warranted by particular
circumstances.136 The ASA’s function is not to enforce the law and it is not empowered to
impose legal sanctions, although it may advise people of their rights and obligations and the
possible consequences of their actions in terms of, for example, the Trade Marks Act.
Unfortunately, this form of enforcement is only reactive and comes into play after the
transgression has already taken place. By this stage, the ‘damage’ caused by the ambush
marketing has already taken place. By its very nature, ambush marketing is a short-term
form of promotional marketing and the fact that injunctions or prohibitions may ensue some
time after the transgression has taken place is often of little consequence to the ambush
marketer. To counteract ambush marketing a sufficient deterrent would be needed to inhibit
the opportunist in advance from undertaking ambush marketing.137
PAUSE FOR Codified passing off

REFLECTION It is submitted that the provisions of Clause 3.7 of the Sponsorship Code are essentially
similar to those of sections 42(1)–(3) of the Consumer Protection Act and amount in reality
to a codified form of passing off relating particularly to major sports events. It is argued that
the Sponsorship Code, and the ASA Code138 as a whole, represent a crystallisation of the
boni mores in so far as sponsorships and the promotion and advertising of products
generally are concerned. If this is correct, then a contravention of the Sponsorship Code or
the ASA Code offends against the boni mores and gives rise to the general delict of unlawful
competition. This argument has been advanced in various court cases but has never been
adjudicated upon.
134 Clasue 3.7 of the Sponsorship Code.

135 OH Dean ‘Sponsorship under attack by ambush marketing’ Encyclopaedia of Brands & Branding (2002) 33.
136 Clause 13.6 of the Sponsorship Code.
137 Dean Encyclopaedia of Brands & Branding (2002) 35.
138 See fn 56 for a discussion of the ASA Code.

3.6 Defences
According to Neethling,139 the idea underlying a defence or justification is that an act that
would appear to infringe the right of another (and is prima facie wrongful) is in fact lawful as
a result of circumstances that justify it. In other words – although an act would appear to
infringe the legal right of a person, it would not be unlawful (based, for example, on the boni
mores) and such conduct would accordingly not constitute unlawful competition. Where a
contravention of a statutory provision is relied upon to constitute the element of unlawfulness,
any defence to the contravention of that provision would nullify the unlawfulness of the
conduct and would thus provide a defence to the unlawful competition claim as well.
Although a number of defences have been recognised in the past, these defences or
justifications are essentially an embodiment of the boni mores of society and there can
accordingly be no numerus clausus of defences to unlawful competition.140 The three most
common forms of justification are discussed below.
3.6.1 Self-defence
Private (or self-) defence in unlawful competition law occurs where a competitor defends
himself through the infringement of a plaintiff’s goodwill in response to the plaintiff’s
wrongful infringement of his (the defendant’s) goodwill.141 A typical example of such a
justification would occur where a misrepresentation by a plaintiff about its own performance
is corrected by a defendant to rectify such misrepresentation.
Importantly, in order to be a valid defence, the conduct of the defendant must be
reasonable and it cannot have taken place with retribution in mind.142
3.6.2 Emergency or necessity

In the law of delict a defendant’s infringement of the rights of a plaintiff is justified if he is
placed in a position as a result of superior force (vis maior) that renders him unable to
protect his own interests without infringing the rights of the plaintiff.143 It appears to be
highly unlikely that emergency would apply in relation to unlawful competition.144
Necessity could apply145 in circumstances where a trader is asked by a prospective client
to provide a comparison of products but, provided such conduct constitutes authentic
comparative advertising,146 it is unlikely to constitute unlawful competition.
3.6.3 Public interest

Public interest as a defence in relation to unlawful competition would apply in circumstances
where public interest outweighs the interests of a trader. In such circumstances, the
infringement of the plaintiff’s rights would be justified on the basis that it is in the public
interest and it would accordingly not be unlawful.
As discussed,147 comparative advertising per se is not unlawful, provided that it complies
with the provisions of the ASA Code. In such circumstances it would be in the public interest

140 Neethling 305.
141 Neethling 307.
142 Klopper et al Law of Intellectual Property in South Africa (2011) 67.
143 See Neethling supra 310.
144 Klopper et al supra 68.
145 According to Neethling supra 311.
146 See the discussion entitled ‘What is comparative advertising?’ under para 3.5.1.2 above.
147 See fn 145 supra.

to compare the performance of traders and such conduct would not conflict with the
competition principle.148
3.7 Relationship with the Trade Marks Act and other IP statutes
As discussed in chapter 2, prior to registration of a trade mark, no infringement action can be
brought by the proprietor. However, the common law enables a trade mark proprietor to enforce
rights in a trade mark in certain circumstances prior to registration, for instance where the mark
enjoys a certain repute and the requirements for a claim of passing off can be met. Once the
mark is registered, the common law rights which have accrued do not fall away. A trade mark
proprietor can thus bring an action based on common law rights, such as passing off or a general
action on the basis of unlawful competition, in the alternative to, or in tandem with, an action
for trade mark infringement in terms of the Trade Marks Act.149 This principle applies equally
to the other intellectual property statutes such as the Copyright Act150 and the Designs Act.151
Section 33 of the Trade Marks Act makes it clear ‘that nothing in the Act shall affect the
rights of any person, at common law, to bring any action against any other person’. This
provision effectively preserves the common law rights of the proprietor of a registered trade
mark, including the right to bring an action based on unlawful competition. Similarly, section
15 of the Trade Marks Act provides that ‘no disclaimer or memorandum on the register shall
affect any rights of the proprietor of a trade mark except such as arise out of the registration
of the trade mark in respect of which the disclaimer is made’. This means that even if words
or phrases are the subject of disclaimers, action may nevertheless be taken against others
based on common law rights established through use of the disclaimed matter.
The common law therefore supplements the Trade Marks Act and can in certain
circumstances provide even wider protection than that afforded by registration of a trade
mark. The same is true of other statutory forms of intellectual property rights, such as
copyright. Nevertheless, the court has cautioned that a claim of unlawful competition should
not indiscriminately be added in each and every intellectual property dispute. Corbett CJ,
in Payen Components SA Ltd v Bovic Gaskets CC and Others,152 opined that:
Unlawful competition should not be added as a ragbag and often forlorn final
alternative to every trade mark, copyright, design or passing off action. In most such
cases it is one of the established categories or nothing.
This dictum nevertheless underlines an important point, namely, that there can be cases or
circumstances where there may be an unlawful competition cause of action falling outside
the established categories, albeit perhaps on an exceptional basis. Herein lie the value and
strength of the law of unlawful competition.
3.8 Remedies
The Aquilian action is a broad remedy available to assist an aggrieved competitor even in
the absence of statutory remedies or precedent in case law. Its function is to claim damages
148 See also Neethling Unlawful Competition 313.

149 194 of 1993.
150 98 of 1978.
151 195 of 1993.
152 1995 (4) SA 441 (A) 29.

as compensation for patrimonial (pecuniary) loss (damnum iniuria datum), if such loss was
in fact suffered. However, as with passing off, an interdict is generally considered to be the
most appropriate remedy as a result of the difficulties faced by a plaintiff in proving quantum
of the damages suffered as a result of unlawful conduct.
The procedure for instituting claims for infractions of common law rights and the
remedies of damages and interdict are discussed in detail in paragraph 2.10.4, in relation to
passing off.
3.9 Conclusion
The law of unlawful competition is a challenging and difficult subject. With its criterion of
the boni mores, or the general sense of justice of the community, for determining
unlawfulness, it has the flexibility to regulate trade in a fair but competitive manner and to
adapt to changing circumstances. A well-developed unlawful competition jurisprudence
could promote honesty, fairness and lawfulness in trade in South Africa, qualities that are
essential ingredients of a successful and vibrant free-enterprise economic system.

Chapter 4 Counterfeit goods
MOHAMED KHADER
4.1 Introduction to the Counterfeit Goods Act 212

4.1.1.1 Counterfeit goods 213
4.1.1.2 Intellectual property rights 214
4.1.1.3 Dealing in counterfeit goods 215
4.1.2 Offence of dealing in counterfeit goods 215
4.2 Search and seizure operation 215
4.2.1 Who may lodge a complaint? 215
4.2.2 What are the substantive requirements for a complaint? 216
4.2.3 Lodging the complaint with inspectors 219
4.2.3.1 Definition of inspectors 219
4.2.4 The inspector’s consideration of the complaint 219
4.2.5 Application for a search and seizure warrant 220
4.2.6 Execution of a warrant 222
4.2.7 Initiating a search and seizure without a warrant 223
4.2.8 Powers of inspector to search, seize and collect evidence 225
4.2.9 Duties of the inspector 225
4.2.9.1 Preparation of inventory of seized goods 225
4.2.9.2 Transportation of seized goods to a counterfeit goods depot 226
4.2.9.3 Notice of seizure 226
4.2.10 Storage of seized goods and access 227
4.3 Post seizure 227
4.3.1 Lodging of criminal complaint 227
4.3.2 Obligations of state and complainant 227
4.3.3 Application for release by a dispossessed party 228
4.3.4 Orders that a court may issue 229
4.4 Border control 230
4.4.1 Who may lodge the application? 230
4.4.2 Substantive requirements for the application 230
4.4.3 Response by the Commissioner 231
4.4.4 Detention of goods by the customs authorities 231
4.4.5 Post-detention procedure and seizure 233
4.5 General 233
4.5.1 Evidence and presumptions 233
4.5.2 Liability for loss or damage 235
4.5.3 Penalties 235

4.1 Introduction to the Counterfeit Goods Act

The Counterfeit Goods Act 37 of 1997 came into operation on 1 January 1998,1 and
subsequent amendments to certain sections of the original text were made by the
Counterfeit Goods Amendment Act 25 of 2001.2 The Counterfeit Goods Act forms the
cornerstone of anti-counterfeiting enforcement in South Africa and, as is evident from its
preamble, it was enacted to introduce measures aimed against the trade in counterfeit
goods. This was done to further protect owners of trade marks, copyright works and certain
marks proclaimed under the Merchandise Marks Act 17 of 1941 against the unlawful
misuse of their intellectual property rights and to restrict the release of counterfeit goods
into the channels of commerce.
Prior to the enactment of the Counterfeit Goods Act, curtailment of dealing in
counterfeit goods was imperfectly dealt with by various statutes, including the
Merchandise Marks Acts3 and the Copyright Act.4 When the Counterfeit Goods Act was
enacted, simultaneous amendments were made to the Merchandise Marks Act, 1941,
removing the anti-counterfeiting enforcement provisions from that Act. Such amendments
were brought about by the Intellectual Property Laws Amendment Act 38 of 1997. The
penal provisions of the Copyright Act relating to certain types of copyright infringement
were retained in that Act.
International concern about counterfeiting and piracy led to the adoption under the
auspices of the General Agreement on Tariffs and Trade (GATT) of the Agreement on
Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement), the preamble
to which speaks of the desire of member states:
… to reduce distortions and impediments to international trade, and taking into

account the need to promote effective and adequate protection of intellectual
property rights, and to ensure that measures and procedures to enforce intellectual
property rights do not themselves become barriers to legitimate trade.
The Counterfeit Goods Act has its genesis in the TRIPS Agreement and was enacted with a
view to bringing South African law into compliance with the provisions of that agreement.
The TRIPS Agreement requires member states to provide certain minimum measures for
the protection of intellectual property rights. In terms of Article 1.1, members may, but are
not obliged to, implement more extensive protection than is required by it and they are also
free to determine the appropriate method of implementing its provisions within their own
legal systems and practice. Although South Africa is a party to the TRIPS Agreement, its
provisions do not, per se, form part of our domestic law. For this to occur, the relevant
provisions would have to be incorporated in a statute. This was achieved by means of the
Counterfeit Goods Act.
The Counterfeit Goods Act provides a complainant5 with quick and effective recourse
against dealing in counterfeit goods subject to certain strict conditions. These will be
discussed separately below.
1 See Proclamation R93, GG 18573, 19 December 1997.

2 See Proclamation 1077, GG No 22791, 30 October 2001.
3 The Merchandise Marks Act 12 of 1888; Merchandise Marks Law 22 of 1888; Merchandise Marks Ordinance 47 of 1903,
which were replaced by the Merchandise Marks Act 17 of 1941.
4 98 of 1978.
5 See discussion of ‘complainant’ in para 4.2.1.

4.1.1 Definitions
4.1.1.1 Counterfeit goods
The term ‘counterfeit goods’ is defined as meaning goods that are the result of counterfeiting,
and includes any means used for purposes of counterfeiting.6 The interpretation of the
Counterfeit Goods Act, in particular, the definition of ‘counterfeiting’, has been a contentious
issue in our courts and the poor draughtsmanship of the statute has been severely criticised.7
The term ‘counterfeiting’:
(a) means, without the authority of the owner of any intellectual property right
subsisting in the Republic in respect of protected goods, the manufacturing,
producing or making, whether in the Republic or elsewhere, of any goods
whereby those protected goods are imitated in such manner and to such a degree
that those other goods are substantially identical copies of the protected goods;
(b) means, without the authority of the owner of any intellectual property right subsisting
in the Republic in respect of protected goods, manufacturing, producing or making, or
applying to goods, whether in the Republic or elsewhere, the subject matter of that
intellectual property right, or a colourable imitation thereof, so that the other goods
are calculated to be confused with or to be taken as being the protected goods of the
said owner or any goods manufactured, produced or made under his or her licence; or
(c) where, by a notice under section 15 of the Merchandise Marks Act, 1941 (Act No.
17 of 1941), the use of a particular mark in relation to goods, except such use by
a person specified in the notice, has been prohibited, means, without the
authority of the specified person, making or applying that mark to goods,
whether in the Republic or elsewhere.
However, the relevant act of counterfeiting must also have infringed the intellectual property
right in question.
Unlike the TRIPS Agreement, which distinguishes between ‘counterfeit trademark goods’
and ‘pirated copyright goods’,8 the definition of ‘counterfeiting’ in the Counterfeit Goods Act
does not specifically distinguish between those two types of counterfeiting in the technical
sense. The court in AM Moolla Group Ltd and Others v The Gap Inc and Others9 stated that
although it to some extent follows the wording of footnote 14, it does not distinguish
clearly between piracy and counterfeiting in the technical sense. Instead, both are
referred to as counterfeiting. In the definition of ‘counterfeiting’, the Act has also changed
the wording of the footnote in such a manner as to make the definition unintelligible.
PAUSE FOR Counterfeiting/Piracy

REFLECTION In Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and Others,10 the question posed
by the court was whether paragraphs (a) and (b) of the definition are intended to cover both
copyright piracy and trade mark counterfeiting and held that paragraph (a) was intended to
deal with copyright piracy while paragraph (b) was intended to deal with trademark
counterfeiting. In reaching this conclusion, the court observed that while
6 Definition of ‘counterfeit goods’, s 1(1) of the Counterfeit Goods Act 37 of 1997.

7 AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (2) SA 412 (SCA); (123/2004) [2005] ZASCA 72; [2005]
4 All SA 245 (SCA).
8 Art 51 fn 14 of the TRIPS Agreement.
9 2005 (2) SA 412 (SCA).
10 (59/10) [2010] ZASCA 140; 2011 (2) SA 463 (SCA); [2011] 2 All SA 290 (SCA).

both paragraphs of the definition refer in general terms to ‘any’ intellectual property right, the
expression ‘substantially identical copies’ in paragraph (a) of the definition is phrased in
copyright terms while the concepts of ‘colorable imitation’ and ‘calculated to be confused’
while in paragraph (b) the definition is cast in traditional trade mark terminology. Furthermore,
the word ‘applying’ with reference to goods in paragraph (b) of the definition cannot refer to
copyright but clearly applies to trade marks; paragraph (b) of the definition covers the use
of identical marks through the phrase ‘the subject matter of that intellectual property right’
and it is accordingly not necessary to rely on paragraph (b) of the definition to prohibit the
use of ‘copies’ of trade marks.
Although the definition of ‘counterfeiting’ is couched in somewhat opaque terms,

counterfeiting is not the same as copyright or trade mark infringement. This follows from
the proviso to the definition that the relevant act of counterfeiting must also have infringed
the intellectual property right in question. Counterfeiting requires more than mere trade
mark or copyright infringement. What is clear is that counterfeiting firstly involves a
deliberate and fraudulent infringement or a ‘fraudulent imitation’11 of another’s trade mark
and/or copyright work. Counterfeit cases secondly involve an infringer attempting to
reproduce – and substitute – the actual goods (not just the trade mark or copyright in a work
ancillary to them) also produced by the trade mark or copyright owner.12
Notwithstanding the deficiencies in the definition and the fact that there are no apparent
steps being taken to resolve the problem by way of an appropriate amendment to the
Counterfeit Goods Act, our courts have a duty, and no other option, but to interpret the
definition as best they can.
4.1.1.2 Intellectual property rights

As defined in section 1 of the Counterfeit Goods Act, the term ‘intellectual property right’
means:
1. The rights in respect of a trade mark conferred by the Trade Marks Act, 1993,13 and
includes rights in respect of a trade mark in terms of section 35 of that Act (i.e.the
so-called well-known marks). (See paragraph 2.9.2.4.) Well-known trade marks did not
form part of the definition of ‘intellectual property rights’ in the original text of the Act,
but were added to it later by an amendment in terms of section 1 of the Counterfeit
Goods Amendment Act, 2001.
2. The copyright in any work in terms of the Copyright Act, 1978.14
3. In the case where, by a notice issued under section 15 of the Merchandise Marks Act,
1941, the use of a particular mark in relation to goods, except such use by a person
specified in the notice, has been prohibited, means the concomitant exclusive right of
that specified person so to use that mark.
It is evident from the definition that the rights granted by the Counterfeit Goods Act are
circumscribed and do not afford protection to owners of patents and designs, nor is any
protection afforded to common law rights such as the right to object to passing off. The term
11 AM Moolla v The Gap supra.

12 Cadac (Pty) Ltd v Weber-Stephen Products Co and Others (530/09) [2010] ZASCA 105; [2011] 1 All SA 343 (SCA); 2011
(3) SA 570 (SCA) para 6; R v Johnstone [2003] UKHL 28; [2003] 3 All ER 884.
13 194 of 1993.
14 98 of 1978.

‘intellectual property right’ as used in the Act therefore does not have its nomal meaning
and scope and is thus in reality a term of art in the Counterfeit Goods Act.
4.1.1.3 Dealing in counterfeit goods

The Counterfeit Goods Act prohibits certain conduct relating to dealings with counterfeit
goods. The Act terms these prohibited acts ‘dealing in counterfeit goods’. These activities
include: a person simply being in possession of such goods, or their being under the control
of a person, in the course of business, for purposes of dealing in those goods; manufacturing,
producing or making counterfeit goods (save for the private and domestic use of the person
by whom those goods were manufactured, produced or made); selling, exposing for sale or
exhibiting in public counterfeit goods for purposes of trade; distributing counterfeit goods
for purposes of trade, or for any other purpose to such an extent that the owner of an
intellectual property right in respect of any particular protected goods suffers prejudice;
importing into, or through, or exporting from, or through, the Republic15 counterfeit goods
(save if so imported or exported for the private domestic use of the importer or exporter);
and in any manner disposing of counterfeit goods in the course of trade.16
4.1.2 Offence of dealing in counterfeit goods

Section 2(2) is the heart of the Counterfeit Goods Act. It provides that any person who
performs or engages in the prohibited act of dealing in counterfeit goods will be guilty of an
offence if, at the time of the commission of the act or conduct in question, that person knew,
or had reason to suspect, that the goods to which the act or conduct relates were counterfeit
goods, or failed to take all reasonable steps to avoid an act or conduct being performed or
engaged in with respect to counterfeit goods.17
PAUSE FOR Mens rea

REFLECTION It may be inferred from section 2(2) that mens rea at least in the form of negligence is
required before the court can convict a person of having committed an offence.18 Obviously
this includes the requirement that the person should reasonably have known of (or should
have foreseen) the possibility that the dealing would be an offence.19
4.2 Search and seizure operation

The essence of the Counterfeit Goods Act is that it provides a mechanism for intellectual property
rights holders to take formal steps to locate and eradicate counterfeit goods. This is done primarily
by arranging and executing procedures for seizing counterfeit goods where they are found. Action
is taken by inspectors,20 usually at the instigation of rights holders or their agents.
4.2.1 Who may lodge a complaint?

The Counterfeit Goods Act explicitly requires the complainant to be a person who has an
interest in the protected goods,21 whether as the owner or a licensee of an intellectual
15 See AM Moolla v The Gap supra as it relates to the transhipment of alleged counterfeit goods.
16 S 2(1) of the Counterfeit Goods Act 37 of 1997.
17 S 2(2).
18 LA Group and Another v B & J Meltz (Pty) Limited and Others (2672/04) [2005] ZAPHC 23; S v De Blom 1997 (3) SA 513
(A) at 533E.
19 LA Group v Meltz supra.
20 See s 1(1)(x); see definition of ‘inspectors’ in para 4.2.3.
21 See s 1(1)(xvi).

property right in respect of them or as an importer, exporter or distributor thereof, including

the duly authorised agent or representative, or the attorney, of any such person. A
complainant who reasonably suspects that an offence referred to in section 2(2) has been
committed, is being committed, or is likely to be committed by any person, may lodge a
complaint to that effect with any inspector.22
The category of persons who qualify as a complainant is broadly framed. This must,
however, be viewed in the context of the consequences that can follow from being a
complainant. Section 10(1)(c) of the Counterfeit Goods Act provides that a court may order
that the complainant in certain circumstances is required to pay damages, in an amount
determined by the court, to the person from whom those goods were seized and is required
to pay that person’s legal costs. This section envisages a situation where the seizure of goods
from a person is set aside by a court on account of being irregular. There could be a number
of grounds for such an order, including, for example, where the search and seizure warrant
is declared invalid or the seized goods were declared not to be counterfeit goods. A
complainant therefore assumes a considerable responsibility when he or she lodges a
complaint and someone with a remote connection with the protected goods may be slow
to take steps of this nature.
The implications of filing an invalid complaint make it imperative that the person acting
as the complainant and deposing to the affidavit of complaint is properly qualified to do so
and adduces sufficient facts and evidence in that complaint from which it can be concluded
that the requirements of the Counterfeit Goods Act for a valid complaint have been met.
Failure to do so would be fatal to the legality of all further action taken pursuant to the
complaint by an inspector or a magistrate when issuing a search and seizure warrant23 and
could ultimately give rise to an award of damages and an adverse costs order being made
against the complainant.
In practice, the intellectual property right owner is usually the formal complainant and
the affidavit of complaint is usually made on its behalf by a duly authorised employee or the
intellectual property right owner’s attorney. In cases where the intellectual property right
owner is not the complainant, it is necessary for the complainant to keep the intellectual
property right owner informed of the complaint and of all steps taken pursuant to it. This
requirement stems from section 9(2)(a)(ii) of the Counterfeit Goods Act, which deals with
the civil proceedings that must follow a seizure of goods.24
4.2.2 What are the substantive requirements for a complaint?

The complainant must furnish information and particulars, to the satisfaction of the
inspector, to the effect that the goods with reference to which that offence allegedly has been,
or is being, or is likely to be, committed, are prima facie counterfeit goods.25 The applicable
criterion of proof is one of prima facie, which is a less demanding evidentiary burden than
a balance of probabilities, the criterion that generally applies in civil proceedings. Support
in this regard is to be found not only in our case law26 but also in the Counterfeit Goods Act,
which envisages that the actual determination of whether the seized goods are in fact
counterfeit goods or not is to be made in subsequent proceedings provided for in sections
7(4) and 9 of that Act.
22 See definition of ‘inspectors’ in paragraph 4.2.3.

23 LA Group (Ltd) and Another v B & J Meltz (Pty) Limited and Others (2672/04) [2005] ZAGPHC 23.
24 See s 24 of the Copyright Act 98 of 1978 and s 34(3) of the Trade Marks Act 194 of 1993. See also para 4.3.2.
25 S 3(2)(a).
26 LA Group v Meltz supra.

Although the standard of proof is less demanding, the complainant must place
sufficient information and particulars before the inspector for the inspector to be satisfied
that the goods to which the complaint relates are prima facie counterfeit goods. For this
purpose, the complainant may furnish the inspector with a specimen of the alleged
counterfeit goods, or, if this is not reasonably possible, with sufficient information and
particulars from which the essential physical and any other distinctive features, elements
and characteristics of the alleged counterfeit goods may be ascertained.27 In practice,
before lodging a complaint with the inspector, the complainant would cause a test
purchase to be conducted at the premises of the person who is dealing in the alleged
counterfeit goods. Colour digital photographs of that test purchase, including
photographs of the essential physical features and distinctive features and elements,
would be included in the complaint. In a case where the complainant is relying on a
registered trade mark and the alleged counterfeit goods are clothing, the photographs
submitted with the complaint would typically include photographs of the trade mark that
appears on the test purchase and photographs of the wash care label, neck label, buttons
and the like. When reasons are given why the test purchase constitutes ‘counterfeit goods’,
suitable evidence might include the claim that the information appearing on the wash
care label of the test purchase differs from the information that appears on the wash care
label of the protected goods and a similar analysis would be conducted in relation to
other distinctive features of the test purchase. The complainant might include a
photograph of the original wash care label to enable the inspector to compare the two
labels. This is the type of evidence that must be placed before the inspector in order to
satisfy the requirements of the Counterfeit Goods Act. It is not necessary for the
complainant to prove that an item of alleged counterfeit goods is a cloned copy of the
protected goods.
COUNTER Cloning unnecessary

POINT In Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and Others28 the court held
that counterfeiting is possible without cloning and stated that the fact that ‘Puma may not
have produced a shoe bearing the particular trade mark does not mean that Rampar’s
shoes could not be counterfeit’. On the other hand, counterfeiting requires more than trade
mark or copyright infringement.29 Therefore, allegations relating to trade mark or copyright
infringement alone would not suffice. In effect it must be shown that the alleged counterfeit
goods will be taken to be the product of the intellectual property rights owner.
In order to discharge the onus of proof resting on him, the complainant must furnish the
inspector with sufficient information and particulars as to the subsistence and extent of the
intellectual property right, the subject matter of which has allegedly been applied to the
goods alleged to be counterfeit goods, and sufficient information and particulars of the
complainant’s title or interest in that right.30 Where the enforceable intellectual property
right is a registered trade mark, the subsistence, title or interest in respect of that right may
27 S 3(2)(d).
28 (59/10) [2010] ZASCA 140; 2011 (2) SA 463 (SCA) at para 19; [2011] 2 All SA 290 (SCA).
29 LA Group v Meltz supra; Puma supra.
30 S 3(2)(b).

be proved in accordance with sections 4931, 5032 and 5133 of the Trade Marks Act.34 It would
be sufficient for the complainant to include a certified extract in respect of the mark from
the Register of Trade Marks in the complaint, and this is what usually happens in practice.
In a case where the enforceable intellectual right is a copyright in a work, the subsistence,
title or interest in respect of that right may be proved in accordance with the provisions of
section 26(12)35 of the Copyright Act.36
In a case where the enforceable intellectual property right is a mark covered by a notice
issued under section 15 of the Merchandise Marks Act, the subsistence, title or interest in
respect of that right may be proved by producing a copy of the Gazette in which that notice was
published, accompanied by a statement under oath or affirmation made by the Minister of
Trade and Industry or by any officer in the Department of Trade and Industry designated by
the Minister, to the effect that such notice has not been withdrawn or amended in its essence.37
PAUSE FOR World Cup prohibited marks

REFLECTION Marks specified in a notice in terms of section 15 of The Merchandise Marks Act would typically
be enforced during major sporting events where the intellectual property right owner applies to
the Minister of Trade and Industry to protect certain of its marks in terms of these provisions.
For example, during the FIFA World Cup that was hosted in South Africa in 2010, FIFA, being the
intellectual property right holder in respect of a number of marks, including representations of
the mascots from past events, obtained protection for those marks in terms of section 15 of
the Merchandise Marks Act. Accordingly counterfeit goods bearing those marks could be dealt
with under the Counterfeit Goods Act and FIFA was entitled to lodge appropriate complaints
with inspectors in terms of that Act.
Marks protected under section 15 of the Merchandise Marks Act could be registered trade
marks or unregistered trade marks. There could be several reasons why this form of protection
would also be sought for registered trade marks, including the fact that those trade marks
might be vulnerable to expungement from the trade marks register on the grounds of non-use.
31 S 49 of the Trade Marks Act 194 of 1993 provides that any register kept under the Trade Marks Act shall be prima facie
evidence of any matters directed or authorised by that Act to be inserted in that register.
32 S 50 of the Trade Marks Act provides that:
(1) A certificate purporting to be under the hand of the registrar as to any entry, matter or thing which he is
authorised by that Act to make or do, shall be prima facie evidence of the entry having been made and of the
contents thereof and of the matter or thing having been done or left undone; and
(2) Printed or written copies or extracts purporting to be copies of or extracts from any register or book or
document relating to trade marks and kept in the trade marks office and certified by the registrar and sealed
with the seal of that office, shall be admitted in evidence in all courts and proceedings without further proof
or production of the originals.
33 S 51 of the Trade Marks Act provides that in all legal proceedings relating to a registered trade mark (including applications
under s 24 of that Act) the fact that a person is registered as the proprietor of the trade mark shall be prima facie evidence
of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.
34 S 16(5)(a) and the definition of ‘intellectual property right’ in s 1(1).
35 S 26(12)(a) of the Copyright Act provides that in any proceedings by virtue of that Chapter relating to the alleged
infringement of the copyright in a work, evidence to prove (i) the subsistence of the copyright in that work; or (ii) the
title of any person in respect of such copyright, whether by way of ownership or licence, may be adduced by way of
affidavit, and the mere production of such affidavit in such proceedings shall be prima facie proof of the relevant facts.
S 26(12)(b) of that Act provides that the court before which an affidavit referred to in paragraph (a) is produced may in
its discretion order the person who made the affidavit to be subpoenaed to give oral evidence in the proceedings in
question, or may cause written interrogatories to be submitted to such person for reply, and any reply purporting to be
a reply from such person shall likewise be admissible in evidence in such proceedings.
36 S 16(5)(b) and definition of ‘intellectual property right’ in s 1(1) of the Counterfeit Goods Act 37 of 1997.
37 S 16(5)(c) and definition of ‘intellectual property right’ in s 1(1).

In these circumstances section 15 of the Merchandise Marks Act can be of benefit to

intellectual property right owners, especially in regard to major sporting events.
Finally, section 3(2)(b) concludes by providing that the complainant may furnish the
inspector with a specimen of the protected goods where the complaint is to the effect that
such protected goods have been cloned and a relevant intellectual property right has been
infringed. This facility applies in the situation contemplated in sub-paragraph (a) of the
definition of ‘protected goods’.38 This section only requires a specimen of the protected goods
to be submitted in the circumstances envisaged in sub-paragraph (a) because, as referred to
in the earlier discussion of the definition of ‘protected goods’, it is apparent that the protected
goods referred to in sub-paragraph (b) of the definition of ‘protected goods’ are not necessarily
actual goods but could merely be notional goods which do not exist in practice.
4.2.3 Lodging the complaint with inspectors
4.2.3.1 Definition of inspectors

An inspector is any person appointed as, or designated to be, an inspector for purposes of
the Counterfeit Goods Act by virtue of section 22 of the Act, as well as various other officials
appointed under specified legislation. Such other officials comprise a police official as
defined in section 1(1) of the Criminal Procedure Act 51 of 1977 holding the rank of sergeant
or a higher rank, and the Commissioner for Customs and Excise as well as any customs
officials classified as ‘officers’ as defined in section 1(1) of the Customs and Excise Act 91 of
1964 when and while they are carrying out their duties under that Act.
The Minister of Trade and Industry has the power to appoint any fit and proper person
as an inspector in terms of section 22 of the Counterfeit Goods Act. The Minister, or any
official acting under his authority in making such an appointment, must issue to each of the
inspectors a certificate of appointment in the prescribed form stating that the person in
question has been appointed or designated as an inspector. The prescribed form was
published in Government Gazette 23136, dated 15 February 2002.
A police official who is in the employ of the Minister of Police does not hold office as an
inspector by virtue of having been appointed or designated as contemplated in section 22,
but would be an inspector by virtue of being a police official as defined in section 1(1) of the
Criminal Procedure Act, provided that he or she holds the rank of sergeant or a higher rank.
4.2.4 The inspector’s consideration of the complaint

Once a complaint has been received, an inspector must take appropriate steps in terms of,
and subject to, section 4(1), if he is reasonably satisfied that the person who laid the
complaint prima facie qualifies as a complainant in terms of section 3(1)(a), that the goods
claimed to be protected goods prima facie are protected goods, that the intellectual property
right, the subject matter of which is alleged to have been applied to the offending goods
prima facie subsists, and that the suspicion on which the complaint is based appears to be
reasonable in the circumstances.39
Where an inspector has reasonable grounds to suspect that an offence contemplated in
section 2(2) of the Act has been, or is being, committed, or is likely to be committed, or to
believe that an act of dealing in counterfeit goods has taken place, or is taking place, or is likely
to take place, he has various powers. He is entitled, inter alia, to enter any place, premises or
38 Definition of ‘protected goods’ in s 1(1) of the Counterfeit Goods Act 37 of 1997.

39 S 3(3).

vehicle in order to inspect any relevant goods and to seize any counterfeit goods; he may collect
or obtain evidence relating to the suspected counterfeit goods, or the relevant act of dealing
in counterfeit goods; and he may conduct whatever search may be reasonably necessary to
obtain such evidence, including the search of a person, and may take whatever steps are
reasonably necessary in order to terminate the relevant act of dealing in counterfeit goods.40
However, the powers vested in an inspector by virtue of section 4(1) of the Act (save for
the specific circumstances referred to in section 4(2), relating to acting without a warrant)
cannot be exercised lawfully without the authority of a warrant issued in terms of section
6(1). The existence of reasonable grounds for believing that an act of dealing in counterfeit
goods has taken place, or is likely to take place, is a jurisdictional requirement for the
granting of such a warrant. Before the inspector applies for a warrant, it is incumbent on him
to determine for himself that the requirements have been satisfied on the basis of the
evidence placed before him, independently of the stipulations in section 4(1).
4.2.5 Application for a search and seizure warrant

The same complaint lodged by the complainant with the inspector is also utilised to obtain a
search and seizure warrant in terms of section 6 of the Act. Such a warrant may be issued by a High
Court judge in chambers or by a magistrate who has jurisdiction in the area where the relevant
act of dealing in counterfeit goods is alleged to have taken place, or to be taking place, or to be
likely to take place. A warrant will be issued only if it appears to the judge or magistrate from
information before him on oath or affirmation that there are reasonable grounds for believing
that an act of dealing in counterfeit goods has taken place, is taking place, or is likely to take place.
The inspector seeking the warrant may be asked to specify which of the powers contemplated in
section 4(1) is or are likely to be exercised and such powers can be authorised by that warrant.
From the wording of the Act it would appear that the legislature took cognisance of the
fact that it was granting intrusive remedies to complainants, and that the utilisation of such
remedies would have to be constitutionally justifiable.41 In an attempt to balance those
intrusive remedies, certain checks and balances were introduced to protect parties against
whom the provisions of the Act would be enforced, such as traders, against the potential
unconstitutional use of those intrusive remedies. In this regard, the constant use of the word
‘reasonable’ when referring to decisions that the complainant, the inspector and the judge
or magistrate must make in the process sets the threshold that any complainant must cross
before the complainant can avail himself of the remedies for which provision is made.
Section 6(1) circumscribes the nature of the discretion conferred on a judicial officer,
namely, whether there are reasonable grounds for believing that an act of dealing in
counterfeit goods has taken place, or is taking place, or is likely to take place. The only
prescribed requirements are that the discretion has to be exercised in chambers and on the
basis of information on oath or affirmation. Such a belief must not only exist in fact but must
furthermore be based on the existence of objective facts consistent therewith.42
Inspectors, judges or magistrates can only come to a reasonable decision if they have all
the relevant information before them and it cannot be argued that a decision was reasonable
if relevant information was not considered, because it was not placed before the decision
maker. For this reason, the Act sets out the minimum requirements for the complaint. If they
40 S 4(1).
41 Janse van Rensburg NO and Another v Minister of Trade and Industry and Another NO [2000] ZACC 18; 2001 (1) SA 29 (CC).
42 Pick ‘n Pay Retailers (Pty) Ltd v Commissioner of South African Revenue Services and Others (13354/2007) [2008]
ZAWCHC 24; 2008 BIP 187 (C); R v Ismail and Another 1958 (1) SA 206 (A); O’Hara v Chief Constable of the Royal Ulster
Constabulary [1997] All ER 129 (HL); Vumba Intertrade CC v Geometric Intertrade CC 2001 (2) SA 1068 (W).

are not met, the decision cannot be reasonable and must be treated as void as it does not
comply with the requirements of the Act.43 The uberrimae fides rule requires an applicant in
an ex parte application to disclose all material facts that might influence the court in coming
to a decision.44 As the declaration of invalidity of a warrant operates retrospectively, once a
warrant is nullified, it is assumed that it never existed and anything done pursuant thereto
was consequently unlawful.45
PAUSE FOR Inadequate disclosure

REFLECTION In The Commissioner for the South African Revenue Service and Others v Moresport (Pty)
Ltd and Others,46 the appeal concerned a warrant issued ex parte in terms of section 6(1),
which was set aside in the court a quo. Although the matter was settled between Moresport
(Pty) Ltd and Crocs Inc (the complainant), the Commissioner for the South African Revenue
Service persisted with the appeal on the basis that the judgment of the court a quo had
far-reaching consequences for his officials in the performance of their duties in preventing
the proliferation of counterfeit goods into the channels of commerce in South Africa. The
court a quo found that the defence raised by Moresport (Pty) Ltd in a letter was relevant
and material and should have been disclosed to the magistrate at the time when application
was made for the issuance of the warrant. This failure to disclose was such that it rendered
the warrant susceptible to being set aside.
The Supreme Court of Appeal noted that our courts have frowned upon the failure by the
applicants in ex parte applications to disclose relevant and material facts. However, those
decisions did not deal with the failure on the part of the applicant to disclose that the
respondent claimed to have a defence, as was the case in the Moresport matter.
The Court held that at the stage when a judge or magistrate is considering issuing a warrant,
he or she is not required to adjudicate on the issue of whether the goods are counterfeit or not,
but merely to make a decision on whether there are reasonable grounds for believing that an
act of dealing in counterfeit goods has taken place, or is taking place, or is likely to take place.
At that stage of the proceedings, the inspector need only satisfy the judge or magistrate that a
prima facie case exists and is not required to prove on a preponderance of probabilities that
the goods which are the subject matter of the application for the warrant are indeed counterfeit
goods. On the other hand, facts or issues of law that a legal representative presenting an
application before a judge or magistrate might have an ethical duty to bring to the attention of
the judicial officer because they might affect his or her decision are another matter and the
weight of the onus resting on the applicant has no bearing on them.
Section 6(1) provides that the warrant contemplated in section 4(2), as read with section
5(1) of the Act, will be issued in chambers by the judicial officer and not in open court to
which the general public would have access.47 Other than specifying that the information to
be considered has to be on oath or affirmation, the Act is silent regarding the nature and
format of the proceedings. The nature and format of the proceedings were considered in
Pick ’n Pay Retailers (Pty) Ltd v Commissioner of the South African Revenue Services and
43 LA Group Limited and Another v B & J Meltz (Pty) Limited and Others (2672/04) [2005] ZAGPHC 23.
44 Schlesinger v Schlesinger 1979 (4) SA 342 (W).
45 Cadac (Pty) Ltd v Weber-Stephen Products Company and Others 2011 (3) SA 570 (SCA).
46 2009 (6) SA 220 (SCA).
47 Robinson v Rossi [1996] 2 All SA 349 (W); Pick ‘n Pay Retailers (Pty) Ltd v Commissioner of South African Revenue Services
and Others (13354/2007) [2008] ZAWCHC 24; 2008 BIP 187 (C).

Others.48 In this case the court held that the legislature did not envisage that the power to
issue a warrant in terms of section 6(1) had to be exercised pursuant to proceedings of a
formal nature and furthermore, it did not intend that the rules of natural justice need be
complied with in the issuance of a search and seizure warrant under the section. The court
took cognisance of a number of factors including that section 6(1) refers to the persons of a
judge or magistrate, as opposed to the institutions in which they do service; the requirement
that the discretion is to be exercised in chambers, and not in open court; and the absence
of any indications that proceedings of an adversarial nature are envisaged. The court also
pointed to a number of factors in the Act itself that are consistent with a recognition of the
need for an expeditious resolution to matters relating to counterfeiting.
4.2.6 Execution of a warrant

A warrant in terms of section 6(1), read with sections 4(2) and 5(1) of the Act may be issued
on any day of the week and will remain in force until it has been executed or it is cancelled
by the presiding officer who issued it (or if that person is not available, it may be cancelled
by any other judge or magistrate with like authority), or the expiration of three months from
the day of its issue, or, if the purpose for which the warrant was issued no longer exists,
whichever may occur first.49
The warrant may be executed only during the daytime (unless the presiding officer who
had issued the warrant has authorised its execution by night) at times which must be
reasonable. The inspector executing the warrant must ensure that the execution of the
warrant is conducted with strict regard to decency and order, including a person’s right to
respect for, and protection of, his or her dignity; the right of a person to freedom and security
of his or her person; and the right of a person to his or her personal privacy.50
The inspector executing a warrant must immediately before commencing with the
execution of that warrant identify himself or herself to the person in control of the place,
premises or vehicle at which that warrant is to be executed and hand a copy of the warrant
to that person, if present. If that person is not present, the inspector must affix a copy of the
warrant to a prominent spot at the place, premises or vehicle.51
The inspector must also furnish that person, at his or her request, with particulars
regarding the inspector’s authority to execute such a warrant. For that purpose, the inspector
may be requested to produce the certificate issued to him or her under section 22(3).52 The
production of a certificate issued in terms of section 22(3) would of course only apply to
those inspectors appointed or designated in terms of section 22 of the Act. Police and
customs officers acting in the capacity of inspectors under the Act would produce a suitable
form of identification from their respective offices.
An inspector executing a warrant may enter upon the premises, place or vehicle referred
to in the warrant and search that place, premises or vehicle, and search any person present.
The inspector may also use such force as may be reasonably necessary to overcome any
resistance to the entry and search.53 An inspector may enter and search any place, premises
or vehicle and search any person present only if he or she audibly has first demanded access
and has notified the purpose of the entry, unless the inspector on reasonable grounds is of
48 [2008] ZA WCHC 24; 2008 BIP 187 (C).

49 S 6(3).
50 S 6(4).
51 S 6(5)(a).
52 S 6(5)(b).
53 S 6(6).

the opinion that any goods, documents, article or item may be destroyed or be lost if access
is first demanded and that purpose notified.54
If, during the execution of a warrant, a person claims that any goods, documents, article
or item found at the premises in question contains privileged information and objects to the
inspection or removal thereof, and the inspector executing the warrant is of the opinion that
the goods, documents, article or item may be relevant to and necessary for the investigation
of any complaint, or any alleged or suspected act of dealing in counterfeit goods, that
inspector must request the registrar of the High Court having jurisdiction, or that registrar’s
deputy, to seize and remove such goods, documents, article or item for safe custody until
the court has made a ruling on the question whether or not the information in question is
privileged.55
In undertaking any search for an inspection and seizure of suspected counterfeit goods,
an inspector may be assisted by the complainant or any knowledgeable person in identifying
goods as suspected counterfeit goods.56
The inspector also has the power to take whatever steps may be reasonably necessary in
order to terminate the relevant act of dealing in counterfeit goods.57
4.2.7 Initiating a search and seizure without a warrant

An inspector may in certain circumstances during daytime, without a warrant, enter any
place, premises or vehicle and, after having identified himself or herself, exercise the powers
of search, seizure, removal and detention of goods, and collection of evidence,58 but does
not, however, have the power to search any person.
Such action may be taken provided a person who is competent to do so gives consent to
the entry, search, seizure, removal and detention,59 or, alternatively, the inspector believes
on reasonable grounds that the required warrant would have been issued to him or her in
terms of section 6 if he or she were to apply for one and the delay that would have ensued
by first obtaining the warrant would defeat the object or purpose of the entry, search, seizure,
removal, detention, collection of evidence and other steps.60
However, section 5(2)(b) does not serve as authority for conducting a search and seizure
operation without a warrant at any private dwelling.61 Accordingly, a search and seizure
operation at any private dwelling can only be undertaken by the authority of a warrant issued
in terms of section 6.
Before exercising a search and seizure operation without a warrant as contemplated in
section 5(2), the inspector must be satisfied from the facts and evidence before him or her
that he or she would be able to persuade a judge or magistrate that there are reasonable
grounds for believing that an act of dealing in counterfeit goods has taken place, is taking
place, or is likely to take place. The powers provided in section 5(2) are typically exercised
in cases where the inspector enters a premises under the authority of a warrant contemplated
in section 6 to seize specific suspected counterfeit goods and during the execution of that
warrant, certain other suspected counterfeit goods are identified but these are not goods
which the inspector is authorised to seize in terms of the existing warrant.
54 S 6(7).
55 S 6(8).
56 S 6(9).
57 Contemplated in s 4(1)(d).
58 Contemplated in s 4(1)(a), (b) and (c) and s 5(1)(a)–(f).
59 S 5(2)(a).
60 S 5(2(b).
61 S 5(3).

PAUSE FOR Seizure without warrant

REFLECTION In The Minister of Trade and Industry and Another v EL Enterprises and Another,62 the
inspector obtained a warrant in terms of section 6 authorising him to enter and search the
premises of the respondents and to seize certain items that imitate the registered OMO
trade marks, which trade marks were registered in the name of Unilever PLC. While executing
the warrant at the premises of the respondents, the inspector found images, positives and
screen prints depicting the SUNLIGHT and RAJAH trade marks, which, according to
information that was available to the inspector, were registered trade marks belonging to
other companies, namely Unilever South Africa Home & Personal Care (Pty) Ltd and Unilever
South Africa Foods (Pty) Ltd, but which trade marks were not included in the existing warrant.
Having found these items, and having been informed by representatives of those two
companies that the respondents were not authorised to produce images of the SUNLIGHT
and RAJAH trade marks, the inspector concluded that he held a reasonable suspicion that
an offence was being committed in terms of the Counterfeit Goods Act, and that, considering
the nature of the operation of the respondents, he should act without a warrant to terminate
the alleged acts of counterfeiting and seize those goods.
The inspector’s decision not to obtain a warrant first was also motivated by the fact that
he could not leave the premises to approach a magistrate because he was the only inspector
available at the scene and there were no additional inspectors available to secure the goods.
Furthermore, as it was 16h30 on a Friday afternoon, the chances were slim that a magistrate
would be available at that hour. He was of the opinion that he had sufficient evidence to
proceed without a warrant and that a warrant would have been granted by a magistrate in
the circumstances. He was also of the opinion that the delay that would have been caused
by obtaining a warrant first would have defeated the object and purpose of the seizure,
removal and detention of the evidence. His action was found to be acceptable.
However, notwithstanding the provisions of section 5(1) and (2), any act performed by an
inspector by virtue of section 5(2) must be confirmed by a magistrate or a judge of the High
Court having jurisdiction in the area where the acts were performed, on the application of
the inspector brought within 10 days of the day on which those acts were performed.
The word ‘application’ as used in section 5(4)(a) denotes the manner in which the
inspector is to approach the judge or magistrate to obtain ex post facto confirmation of his
action. The section does not refer to a notice of motion, which suggests that no formal
application on notice of motion in terms of the rules of court is envisaged. In The Minister
of Trade and Industry and Another v EL Enterprises and Another, the court noted that the
legislature must have been alive to the distinction between a judge or magistrate, on the one
hand, and a court, on the other hand, as well as the difference between an application and
an application on notice of motion. These distinctions are placed in focus by a comparison
with the provisions of section 7(4), which provides that any person prejudiced by a seizure
of goods is entitled to apply to the court on notice of motion for a determination that the
seized goods are not counterfeit goods and for the return of those goods to the dispossessed
person. Accordingly, so the court concluded, the confirmation after the search and seizure
is to be sought from, and given by, a magistrate or a judge of the High Court in chambers,
on oath or affirmation, and not in open court pursuant to a formal application on notice of
62 [2010] ZASCA 149; 2011 (1) SA 581 (SCA).

motion. Thus, as an application in terms of section 5(4)(a) is not an application on notice of

motion; it does not have to be served on the respondent.
The section requires that the confirmatory application must be brought within 10 days.
It does not require that the confirmation by the judge or magistrate is to be granted within
the 10 day period. It is sufficient for the application to be issued and lodged with the registrar
and then it is for the registrar to place that application before a magistrate or judge of the
High Court in chambers.
The circumstances of each case must be considered on its own merits. Where the
circumstances do not justify an inspector’s exercising his or her powers to act in terms of
section 5(2), the inspector must then apply for a warrant in terms of section 6. Inspectors
must proceed with caution when it comes to conducting search and seizure operations
without a warrant as contemplated in section 5(2). If a magistrate or judge does not confirm
the acts performed by the inspector, the inspector must return any of the goods seized
forthwith and make good any damages caused.63
4.2.8 Powers of inspector to search, seize and collect evidence

An inspector acting under the authority of the warrant issued under section 6 may at any
reasonable time take the steps that may be reasonably necessary to terminate the
manufacturing, production or making of counterfeit goods, or any other act of dealing in
counterfeit goods and to prevent the recurrence of any such act in future.64 Those steps may
include seizing and detaining, and where applicable, removing all goods found for detention;65
sealing off any premises, place or vehicle where the goods in question are found, or are
manufactured, produced or made, either wholly or in part, or where any intellectual property
right is applied to those goods, or where the packaging for those goods is prepared or the
packaging of those goods is undertaken.66 Furthermore, he may seize and detain and where
applicable, remove for detention, any tools which may be used in the manufacture, production,
making or packaging of those goods or the application of an intellectual property right to them.67
If the inspector reasonably suspects that a person at those premises, that place, or in that
vehicle may furnish information with reference to any act of dealing in counterfeit goods,
that inspector may question that person and take down a statement from him or her. The
inspector may demand and procure from that person any book, documents, article, item or
object which in any way may be relevant to the nature, quantity, location, source or
destination of the goods in question, or the identity and address of anyone involved or
ostensibly involved as a supplier, manufacturer, producer, maker, distributor, wholesaler,
retailer, importer, exporter or forwarding agent of, or other dealer in, the goods in question.68
4.2.9 Duties of the inspector
4.2.9.1 Preparation of inventory of seized goods

An inspector who, in exercising his or her powers in terms of section 4(1) of the Act, has
seized any suspected counterfeit goods, must forthwith seal, clearly identify and categorise
those goods and prepare an inventory in quadruplicate. The inspector must cause the person
63 S 5(4A).
64 S 5(1)(b).
65 S 5(1)(c).
66 S 5(1)(d).
67 S 5(1)(e).
68 S 5(1)(f).

from whom the goods were seized to check the correctness of that inventory and, if correct,
cause that person to confirm the correctness thereof and sign each original of that inventory.
If the seized goods are removed to a counterfeit goods depot,69 the inspector must endorse
that fact and place his or her signature on every original of that inventory, in which case that
inventory will also serve as a receipt.70
The inspector must, within 72 hours of the seizure, furnish one original of the inventory
to the person from whom those goods were seized and another to the complainant.71
4.2.9.2 Transportation of seized goods to a counterfeit goods depot

If the seized goods are transportable, the inspector must as soon as possible remove the
seized goods to a counterfeit goods depot designated in terms of section 23, for safe storage.
However, if the seized goods are not capable of being removed or transported, the inspector
must declare the goods to have been seized, seal those goods or place them under guard at
the place where they were found and that place will then be deemed to be a counterfeit
goods depot.72
4.2.9.3 Notice of seizure

The inspector must, by written notice (the seizure notice), inform the person from whom
those goods were seized, and the complainant, of the actions taken by the inspector in terms
of section 4(1) and of the address of the counterfeit goods depot where the seized goods are
stored.73 In the seizure notice issued to the complainant, the inspector must also notify the
complainant of his or her right by virtue of section 9(1)(a) to lay a criminal charge, not later
than three days after the date of the seizure notice, against the person from whom those
goods were seized.74
Whereas the Act specifies that the inspector must furnish an inventory to the dispossessed
person and to the complainant within 72 hours and contains the words ‘as soon as possible’
when referring to the transportation of goods to a counterfeit goods depot, it is silent on the time
period within which the seizure notice contemplated in section 7(1)(d) must be issued. To err
on the side of caution, that notice is usually issued by the inspectors on the day the warrant is
executed and the goods seized. In the absence of clarity, this may be a prudent approach on the
part of inspectors to avoid technical arguments of non-compliance by the suspects.
COUNTER Timing of issue of seizure notice

POINT If the legislature intended that the seizure notice should be issued immediately upon the
execution of the warrant and the seizure of goods, it should have said so. There are practical
difficulties encountered when issuing a seizure notice immediately upon the execution of the
warrant and seizure of goods. It leaves the inspector, the complainant and the state with little
time to pursue further investigations as the notice relates not only to the laying of the criminal
charge contemplated in section 9(1)(a), but also to the civil proceedings and criminal
prosecution contemplated in section 9(2), especially since it is pertinent to the persons to
be cited as defendants or respondents (as the case may be) in the civil proceedings and the
persons to be criminally charged by the state in the criminal proceedings.
69 Definition of ‘counterfeit goods depot’ in s 1.

70 S 7(1)(a).
71 S 7(1)(b).
72 S 7(1)(c).
73 S 7(1)(d).
74 S 7(2).

4.2.10 Storage of seized goods and access
The seized goods must be stored in safe custody at a counterfeit goods depot until the person
in charge of the depot is ordered by a competent court in terms of the Act to return, release,
destroy or otherwise dispose of those goods as specified in the order, or is directed by the
inspector concerned to release those goods to the suspect.75 The seized goods will be
available for inspection by the complainant, the suspect and any other interested person at
the counterfeit goods depot on any working day during normal office hours.76
At the request of the complainant or the suspect, the person in charge of the counterfeit
goods depot must make the relevant seized goods available for testing or analysis on certain
conditions. These conditions are that the person so in charge, after taking account of the
nature of such seized goods, the nature of the tests or analysis to be conducted, and the
competence and suitability of the person by whom the test or analysis is to be conducted,
must be satisfied that a request in that regard is reasonable.77 However, where the person in
charge of the counterfeit goods depot is not willing to allow the seized goods in his or her
custody to be made available to the suspect for testing or analysis, he or she must forthwith
refer the matter to the complainant, who must either confirm or reverse that decision within
48 hours.78 Where a complainant has confirmed the decision not to allow the seized goods
to be made available to the suspect for testing or analysis, that decision must be conveyed
in writing to the suspect, who may then apply to the court for an order rescinding the
decision and allowing those goods to be made available. The court will grant the application
if it finds the decision to be unreasonable in the circumstances.
4.3 Post seizure
4.3.1 Lodging of criminal complaint

Where suspected counterfeit goods have been seized by an inspector in terms of section
4(1), a complainant wishing to lay a criminal charge against the suspect with the South
African Police Service for having committed an offence referred to in section 2(2), and to
request that a criminal investigation into the matter be conducted, must do so not later than
three days after the date of the issuance of the seizure notice.79 If upon the expiration of that
three day period, a criminal charge has not been laid, the relevant seized goods must be
released to the suspect, subject to the provisions of section 9(2).80
4.3.2 Obligations of state and complainant

The goods seized in terms of section 4(1) must also be released to the suspect if the state fails
within 10 working days after the date of the seizure notice given to the suspect in terms of
section 7(1)(d)(i) to inform the suspect, by further written notice (the prosecution notice),
of its intention to institute criminal proceedings against him or her for having committed
an offence referred to in section 2(2).
Furthermore, the seized goods must be released to the suspect if any person to whom
the seizure notice has been given in terms of section 7(1)(d)(ii), that is the complainant or
75 S 8(1).
76 S 8(2).
77 S 8(3).
78 S 8(4).
79 S 7(1)(d) read with s 7(2).
80 S 9(1)(b).

the intellectual property right holder, fails within 10 working days after the date of the seizure
notice to inform the suspect, by further written notice (the litigation notice), of that person’s
intention to institute civil proceedings against the suspect founded on a delict arising from
an act of dealing in counterfeit goods on the part of the suspect.81
Therefore, in terms of this section, the seized goods must be released to the suspect if the
state and the complainant/intellectual property right owner (as the case may be) both fail
to inform the suspect by written notice (i.e. the prosecution notice or the litigation notice)
of the intention to institute the criminal prosecution or civil proceedings. The seized goods
will therefore not be released to the suspect when either the state or the complainant/
intellectual property rights holder issues the appropriate notice to the suspect timeously.
Where the state or complainant/intellectual property rights holder has informed the
suspect of the intention to institute the criminal prosecution or civil proceedings by issuing
the appropriate notice, the seized goods must nevertheless be released to the suspect if the
proposed criminal prosecution or the civil proceedings, as the case may be, is or are not
actually instituted within 10 days after the date of the relevant further notice,82 or if the
complainant instructs the inspector in writing to release those goods to the suspect, or upon
the order of a competent court.83 However, such an instruction to release the goods may not
be given, and the relevant goods may not be so released, at any time after a criminal
prosecution involving those goods has actually been instituted against the suspect.84
4.3.3 Application for release by a dispossessed party

Any person prejudiced by a seizure of goods in terms of section 4(1), may at any time apply
to court on notice of motion for a determination that the seized goods are not counterfeit
goods and for an order that they be returned to him or her.85 The court may grant or refuse
the relief sought in such a restitution application and make such order as it deems suitable
in the circumstances, including an order as to the payment of damages and costs, if
appropriate. The restitution applicant bears the onus of showing that all of the requirements
for the relief sought are met. The applicable evidentiary criterion appears to be proof on a
balance of probabilities and not prima facie proof as required under section 6(1), which
deals with the obtaining of a search and seizure warrant. Where a court refuses a restitution
application, in the case of goods seized pursuant to a complaint laid in terms of section 3(1),
it may order that the complainant furnishes security to the applicant in respect of those
goods in an amount and manner determined by the court.86
PAUSE FOR Evidentiary burden

REFLECTION In Pick ’n Pay Retailers (Pty) Ltd v Commissioner of the South African Revenue Services
and Others 87 the restitution applicant was merely the importer (and not the
manufacturer) of the goods imported and for that reason could not have possessed
first-hand knowledge of the circumstances surrounding the copying and manufacturing
of the seized goods. However, the court considered that the restitution applicant had
failed to provide any evidence in that respect when it was in a more favourable position
to do so than the complainant, and had also failed to provide an acceptable
81 S 9(2)(a).
82 S 9(2)(b).
83 S 9(2)(d).
84 S 9(2)(c).
85 S 7(4)(a).
86 S 7(4)(c).
87 [2008] ZAWCHC 24; 2008 BIP 187 (C).

explanation for the absence of such evidence. The court held that the applicant had therefore
failed to discharge the onus of showing that the complainant did not hold copyright in the
design drawings that were the basis of the complainant’s case and that such copyright had
not been infringed in the manufacture of the seized goods. The applicant had therefore failed
to discharge the evidentiary burden of showing that the seized goods were not counterfeit
goods as is required by section 7(4).
4.3.4 Orders that a court may issue

A court may order that the goods that have been found to be counterfeit goods be
delivered-up to the owner of the intellectual property right in question or to any complainant
deriving his or her title from that owner, irrespective of the outcome of the proceedings.88
For a court to make an order that the counterfeit goods be delivered up to the intellectual
property right owner or, where relevant, to the complainant, it would be necessary for
sufficient evidence to be placed before the court to satisfy it that the goods in question are
in fact counterfeit goods.
PAUSE FOR Deliver-up of counterfeit goods

REFLECTION It would seem that the reference to ‘irrespective of the outcome of the proceedings’ was intended
to apply mainly to criminal proceedings, in particular, where the court is satisfied that the goods
in question are counterfeit goods, but no conviction of the suspect was obtained for reasons
other than the nature of the goods. It would be contrary to the purpose and object of the
Counterfeit Goods Act if counterfeit goods were released to the suspect to enable him to trade
in them. For example, the state might have failed to prove that the suspect possessed the
requisite knowledge that the seized goods were counterfeit goods. It would be anomalous for
the counterfeit goods to be released into the channels of trade in these circumstances. In order
to prevent this situation from arising, the Counterfeit Goods Act authorises the court to deliver-up
those counterfeit goods to the intellectual property right owner or the complainant even when
the suspect is not convicted.
A court may order that counterfeit goods be released to any specified person.89 In granting
a restitution application in terms of section 7(4)(a), a court would invariably order that the
seized goods be returned to the restitution applicant in terms of section 10(1)(b). In any
criminal proceedings where the court has made a determination that the seized goods are
not counterfeit goods, it will generally release the seized goods to the suspect in those
criminal proceedings, assuming that the suspect is in fact the owner of those goods or is
entitled to possess them.
A court may in appropriate circumstances (i.e. where the seizure of the goods was not
justified or lawful) order that the complainant pays damages in an amount determined by
the court to the person from whom those goods were seized and pays that person’s costs.90
It is envisaged that, where a restitution application is successful, the applicant may bring an
action against the complainant seeking damages and payment of costs. It is, of course,
necessary that the plaintiff in those proceedings leads evidence to prove that he or she has
suffered damages and the quantum of those damages.
88 S 10(1)(a).
89 S 10(1)(b).
90 S 10(1)(c).

A court may also order that the accused in criminal proceedings, or the defendant or
respondent in civil proceedings, discloses the source from which those counterfeit goods
have been obtained, as well as the identity of persons involved, or ostensibly involved, in
the importation or exportation, manufacture, production or making, and the distribution,
of the counterfeit goods and the channels of distribution of those goods.91 In civil
proceedings, the applicant or plaintiff must seek this form of relief as part of his case. In
criminal proceedings, the State Prosecutor would request the presiding officer to make such
an order against the convicted accused.
If a court in any civil or criminal proceedings has ordered the delivery-up of
counterfeit goods to any person then, notwithstanding the provisions of any other
law, and unless the court on good cause shown orders otherwise, those goods may not
be released into the channels of commerce upon the mere removal of the subject
matter of the intellectual property right that was unlawfully applied to those goods.92 If
the counterfeit goods were imported, they may not be exported in an unaltered state.93
In section 10 provision is made for the delivery-up of counterfeit goods to the intellectual
property right owner or the complainant, without specifying that those counterfeit
goods must be destroyed. Notwithstanding the absence of a specific direction in
this regard, it is submitted that by implication the provisions of section 10(2) should
nevertheless be interpreted as envisaging that goods found by a court to be counterfeit
goods must be destroyed.
4.4 Border control
4.4.1 Who may lodge the application?

One of the main purposes of the Counterfeit Goods Act is to prevent the release of counterfeit
goods into the channels of commerce in South Africa. Section 15(1) of the Act entitles an
owner of an intellectual property right to apply to the Commissioner for Customs and Excise
(the Commissioner) for seizure and detention of counterfeit goods.94 Although a complaint
in terms of the Counterfeit Goods Act may be lodged by a complainant (which term is
defined in broad terms),95 it is evident from section 15(1) that the application to the
Commissioner can only be lodged by the owner of the intellectual property right.
4.4.2 Substantive requirements for the application

The owner of an intellectual property right seeking the benefit of the border control
provisions of the Counterfeit Goods Act may apply to the Commissioner in terms of section
15 of the Act to seize and detain all goods which are counterfeit goods and which are
imported into or enter South Africa, for a specified period. In the customs application the
applicant must submit proof of the subsistence of his intellectual property right on which
he relies and of his title to that right.
An applicant may in substantiating his application furnish the Commissioner with a
specimen of the goods that are protected goods and to which the subject matter of his
relevant intellectual property right relates, together with sufficient information and
91 S 10(1)(d).
92 S 10(2)(a).
93 S 10(2)(b).
94 S 15(1).
95 See earlier discussion of ‘complainant’ in para 4.2.1.

particulars as to the subsistence and extent of that intellectual property right and as to his
title to that right.96
In the case where the application pertains to registered trade marks, it would be sufficient
for the applicant to place documents before the Commissioner in terms of sections 49, 50
and 51 of the Trade Marks Act relating to the subsistence, title or interest in respect of that
right. Where the application pertains to copyright in a work, it would be sufficient for the
applicant to submit an affidavit of the nature contemplated in section 26(12) of the Copyright
Act, providing proof of the subsistence, title or interest in respect of that copyright.97
4.4.3 Response by the Commissioner

The Commissioner must consider and deal with the application without delay and may grant
the application if satisfied on reasonable grounds that the goods claimed to be protected
goods are prima facie protected goods; that the intellectual property right, the subject matter
of which relates to the protected goods, prima facie subsists, and that the applicant prima
facie is the owner of that intellectual property right.98
The Commissioner must notify the applicant in writing within a reasonable time whether
the application has been granted or refused. If granted, the Commissioner must state the period
during which any stipulated goods being imported into or entering the Republic will be made
subject to seizure and become subject to detention. The stipulated goods may then be detained
by the customs authorities in performing their functions under the Customs and Excise Act,
1964. If the application is refused, the Commissioner must state the reasons for the refusal.99
4.4.4 Detention of goods by the customs authorities

The South African Revenue Service, in effect the customs authorities, is empowered in terms
of section 15(4) of the Counterfeit Goods Act and section 113A(1)(b)(i) of the Customs and
Excise Act, 1964, to seize and detain counterfeit goods or suspected counterfeit goods
imported into or entering South Africa, during a particular period. This entails securing
goods until such time as it has been determined whether they are counterfeit or not.
The provisions of the Customs and Excise Act dealing with the detention of goods have
considerable relevance as they, to a large extent, complement the provisions in this regard
contained in the Counterfeit Goods Act. Indeed, recourse should first be had to them before
suspected counterfeit goods are seized in terms of the Counterfeit Goods Act.
In terms of section 4(8A)(a) of the Customs and Excise Act, an officer may stop and detain
and examine any goods while under customs control in order to determine whether the
provisions of the Customs and Excise Act, or any other law, have been complied with in
respect of such goods, as contemplated in section 107(2)(a). In terms of section 107(2)(a)(i),
the Commissioner must not, except on certain conditions as may be determined by him,
allow goods to pass from his control until the provisions of the Customs and Excise Act, or
any other law relating to the importation, exportation, transhipment or transit carriage
through South Africa of goods, have been complied with in respect of such goods.
Furthermore, in terms of section 88(1)(a) of the Customs and Excise Act, an officer,
magistrate or member of the police force may detain any ship, vehicle, plant, material or
goods at any place for the purposes of establishing whether that ship, vehicle, plant, material
or goods is or are liable to forfeiture under the Customs and Excise Act. In terms of section
96 S 15(2).
97 See further discussion in para 4.5.1.
98 S 15(3).
99 S 15(5).

88(1)(c) of this Act, if such ship, vehicle, plant, material or goods is or are liable to forfeiture
under the Customs and Excise Act, the Commissioner may seize same.
In terms of section 113A(1)(a) of the Customs and Excise Act, an officer may detain any
goods to ascertain whether such goods are counterfeit goods as contemplated in the
Counterfeit Goods Act. Notwithstanding anything to the contrary contained in the
Counterfeit Goods Act, a customs officer may, in terms of the Customs and Excise Act, while
acting as an inspector in terms of the Counterfeit Goods Act, seize and detain any goods
when requested to do so in accordance with the provisions of section 15 of the Counterfeit
Goods Act, whether or not such goods are under customs control.100 An officer may also
seize and detain any goods in accordance with the provisions of the Counterfeit Goods Act
where such officer has reasonable cause to believe that such goods are prima facie
counterfeit goods as defined in the Counterfeit Goods Act, while such goods are under
customs control.101 Furthermore, an officer may also seize and detain any goods while such
goods are in transit through South Africa or transit goods found in the area of control of any
controller, where such officer has reasonable cause to believe that such goods are prima
facie counterfeit goods as defined the Counterfeit Goods Act.102
It is clear that the Customs and Excise Act makes provision for the ‘detention’ of goods,
prior to actual ‘seizure’, for the purpose of determining or ascertaining whether the goods in
question ought to be properly seized, whether by the customs authorities or another
authority administering other relevant legislation. This distinction or separation applies to
customs officers whether for purposes of the Customs and Excise Act or any other law.
In practice a customs officer is entitled to detain any goods in terms of section 113A(1)(a)
of the Customs and Excise Act in order to ascertain whether they are counterfeit goods as
contemplated in the Counterfeit Goods Act. Only after this investigation and determination
have been completed is the officer bound to take the step of either releasing the goods or
seizing them. He would seize them on the basis that the investigation has provided him with
reasonable cause to believe that the goods are at least prima facie counterfeit goods, in
accordance with section 113A(1)(b) of the Customs and Excise Act. In terms of section
113(8)(a) of the Customs and Excise Act, an officer may, for purposes of any law other than
of the Customs and Excise Act, or at the request of a member of the police force or the
authority administering such a law, detain any goods while such goods are under customs
control. Section 107(2)(a) of the Customs and Excise Act places a duty on the Commissioner
and/or his employees not to allow detained goods to pass from customs’ control until
satisfied that the relevant provisions of the Customs and Excise Act, or any other law, have
been complied with.
In practice, customs officers would usually detain goods that are suspected of being
counterfeit goods in terms of the provisions of the Customs and Excise Act to ascertain
whether those goods are counterfeit goods. Following an investigation which revealed that
the goods in question are prima facie counterfeit goods in terms of the Counterfeit Goods
Act, those goods would be formally seized in terms of the Counterfeit Goods Act.
A comparison of the provisions of sections 113(8) and 113A(1)(a) of the Customs and Excise
Act clearly contemplates that an officer may detain goods in order to enable him to ascertain
whether the goods are counterfeit goods before an application for seizure is made and granted
in terms of section 15 of the Counterfeit Goods Act.
100 S 113A(1)(b)(i) of the Customs and Excise Act 91 of 1964.

101 S 113A(1)(b)(ii).
102 S 113A(1)(b)(iii).

PAUSE FOR Releasing counterfeit goods

REFLECTION In The Commissioner for the South African Revenue Service and Another in re Bayerische
Motoren Werke and Others103 the court was called upon to interpret and apply the
aforementioned principles. It held that a customs officer is indeed entitled, in terms of the
of the Customs and Excise Act, to detain any goods as provided for in section 113A(1)(a)
of the Customs and Excise Act in order to ascertain whether they are counterfeit goods as
contemplated in the Counterfeit Goods Act. It is only after such an investigation has been
completed that the officer is bound to either release the goods or to seize them on the basis
that the investigation has provided him with reasonable cause to believe that the goods are
at least prima facie counterfeit goods as contemplated in section 113A(1)(b) of the
Customs and Excise Act. This means that the customs officers can delay starting the steps
and procedures (with their very strict time limits) laid down under the Counterfeit Goods Act
until after the necessary investigations as to the counterfeit nature of the goods have been
completed. By adopting this approach the customs officers can gain valuable breathing
space and time to carry out their investigations as to the true character of the goods.
It is not the task of the customs authorities to make decisions on whether goods are
counterfeit goods or not. That is a matter for resolution in later litigation between the
intellectual property right owner and the importer of the goods in question.104
4.4.5 Post-detention procedure and seizure

Having ascertained that goods detained in terms of the provisions of the Customs and Excise
Act are prima facie counterfeit goods as contemplated in the Counterfeit Goods Act, the customs
officer acting as an inspector under the Counterfeit Goods Act will apply for a search and seizure
warrant pursuant to the provisions of section 6(1) and, having obtained that warrant, will
exercise the powers conferred in terms of sections 4 and 5 and seize those counterfeit goods.
The inspector must ensure that an inventory contemplated in section 7(1)(a)105 is properly
prepared; the seized goods are transported to a designated counterfeit goods depot;106 and the
notice of seizure contemplated in section 7(1)(d) is issued.107 Thereafter, it is for the intellectual
property rights owner/complainant and/or the state to take the matter further.108
4.5 General
4.5.1 Evidence and presumptions

Any statements taken down, or other documentary evidence procured, by an inspector in
the course of exercising any power in terms of section 4(1) of the Counterfeit Goods Act may
be made available to a complainant at his or her request and the complainant may make
copies of, or extracts from, any such statement or documentary evidence and must return
the original statement or documents to the inspector.109 This section is subject to the
103 A 1796/04 [2005] ZAGPHC 108.

104 Pick ‘n Pay Retailers (Pty) Ltd v Commissioner of South African Revenue Services and Others (13354/2007) [2008]
ZAWCHC 24; 2008 BIP 187 (C).
105 See para 4.2.9.1.
106 See para 4.2.9.2.
107 See para 4.2.9.3.
108 See s 9 of the Counterfeit Goods Act 37 of 1997 and the earlier discussion in para 4.3.
109 S 16(1).

provisions of section 5(4)(a), which provides that no statement made by any person to an
inspector will, if self-incriminating, be admissible as evidence against that person in any
criminal proceedings, except in criminal proceedings where that person is tried for the
offence contemplated in section 18(d)(ii) of giving information or an explanation to an
inspector knowing it to be false or misleading, and only to the extent that it is relevant to
prove the offence charged.
An inspector may be called as a witness by any party to civil or criminal proceedings
concerning counterfeit goods, or by the court, whenever the inspector’s conduct, the exercise
or performance of his powers, or the nature of the circumstances in, or activities with
reference to which, those powers or duties were exercised or performed, is in issue or
relevant in those proceedings.110
In any civil proceedings concerning an act of dealing in counterfeit goods by any person,
it will be permissible, if relevant, to present evidence about that person’s previous conviction
for an offence founded on the same act of dealing in counterfeit goods.111
A statement in the prescribed form, made under oath or affirmation by an inspector, to
the effect that the goods specified in the inventory attached to that statement and bearing
his signature in respect of goods seized by him from a specified person at a specified place
and at a specified time, will, upon production to the court, be admissible in evidence and
be sufficient proof of the facts stated therein in any civil or criminal proceedings concerning
counterfeit goods or any act of dealing in counterfeit goods, relevant to those proceedings.
This is subject to the proviso that the inventory was prepared by the inspector and has been
certified to be correct as required in section 7(1)(a).112 The court may, however, require that
inspector to give oral evidence concerning any matter mentioned or dealt with in that
statement.113
Where the subsistence of a trade mark in respect of protected goods, or any person’s
title to or interest in such trade mark, is in issue in any civil or criminal proceedings
concerning counterfeit goods, the subsistence of that trade mark, or the title to or interest
in it may be proved in accordance with the provisions of sections 49, 50 and 51 of the Trade
Marks Act, 1993.114 Where the intellectual property right is alleged to be copyright in a
work, the particulars of such right may be proved by means of an affidavit in accordance
with the provisions of section 26(12) of the Copyright Act, 1978.115 Where the intellectual
property right is alleged to be the exclusive right to use a particular mark conferred by a
notice issued under section 15 of the Merchandise Marks Act, 1941, such right may be
proved by producing to the court a copy of the Government Gazette in which that notice
was published, accompanied by a statement under oath or affirmation by the Minister or
any officer in the Department of Trade and Industry designated by the Minister, to the
effect that such notice has not been withdrawn or amended in its essence.116 However,
these provisions will not be construed so as to detract from the power of the court to
require oral evidence to be given, or in the case of a High Court, to order that the evidence
of a person who resides or is for the time being outside the area of jurisdiction of that court
is taken by means of interrogatories.
110 S 16(2).
111 S 16(3).
112 S 16(4)(a).
113 S 16(4)(b).
114 S 16(5)(a).
115 S 16(5)(b).
116 S 16(5)(c).

Where any person who conducts business in protected goods is proved to have been
found in possession of suspected counterfeit goods which are the subject matter of the same
intellectual property right as the protected goods, it will, in any civil proceedings concerning
an act of dealing in counterfeit goods found in that person’s possession, be presumed until
the contrary is proved, that such person was in possession of the latter goods for the purpose
of dealing in those goods. This applies provided the quantity of those goods is more than
that which, in the circumstances, would be reasonably required for his or her private and
domestic use. The same presumption will apply in criminal proceedings unless credible
evidence in rebuttal of the facts presumed is tendered.117
4.5.2 Liability for loss or damage

Any person suffering damage or loss caused by the wrongful seizure, removal, or detention
of goods alleged to be counterfeit goods, or by any action wrongfully taken by an inspector,
will be entitled to claim compensation for that damage or loss, and such claim will be against
the complainant and not against the state, inspector or the person in charge of the counterfeit
goods depot where those goods are or were detained.118
The state, inspector, or person in charge of the counterfeit goods depot will be liable for
any claim contemplated in section 17(1)(a) only if in seizing or removing the alleged
counterfeit goods the inspector, or the person in charge of the detention and storage of the
goods, as the case may be, has been grossly negligent119 or has acted in bad faith.120 Reference
to the inspector or to a person in charge of the counterfeit goods depot is construed so as to
include any person acting on the instruction, or under the supervision, of the inspector or
the person so in charge, as the case may be.121
4.5.3 Penalties
Any person convicted of an offence of dealing in counterfeit goods in terms of section 2(2)
will be punishable, in the case of a first offence, with a fine in respect of each article or
item involved in the particular act of dealing in counterfeit goods to which the offence
relates that may not exceed R5 000 per article or item, or to imprisonment for a period that
may not exceed three years, or with both such fine and such term of imprisonment.122 In
the case of a second or subsequent conviction, a wrongdoer will be punishable with a fine
in respect of each such article or item that may not exceed R10 000, or with imprisonment
for a period that may not exceed five years, or with both such a fine and such term of
imprisonment.123
The person convicted of a miscellaneous offence referred to in section 18 will be
punishable with a fine or imprisonment for a period not exceeding six months.124
A court convicting a person for having committed an offence in terms of section 2(2)
must, when considering which penalty to impose, take into account inter alia any risk to
human or animal life, health or safety or danger to property (whether movable or immovable)
that may arise from the presence or use of the counterfeit goods in question.125
117 S 16(6).
118 S 17(1).
119 S 17(2)(a).
120 S 17(2)(b).
121 S 17(3).
122 S 19(1)(a).
123 S 19(1)(b).
124 S 19(2).
125 S 19(3)(a).

A court convicting a person of having committed an offence in terms of section 2(2) may
take into account, in mitigation of sentence, any evidence to the effect that such person had
fully and truthfully co-operated with an inspector or a member of the South African Police
Service investigating that offence in certain respects. These are that he disclosed information
available to him in relation, inter alia, to the source from which the counterfeit goods
involved in the commission of the offence were obtained; the identity of the persons involved
in the importation, export, manufacture, production or making of those counterfeit goods;
the identity of and, if reasonably demanded, the addresses or whereabouts of the persons
involved in the distribution of those goods; and the channels for the distribution of those
goods.126
The Minister of Trade and Industry may from time to time, by notice in the Government
Gazette, increase the amount of the fine imposed in sections 19(1)(a) and (b).127
126 S 19(3)(b).
127 S 19(4)(a).

Chapter 5 Patents
TYRON GRANT

5.1.1 History 239
5.1.2 The nature of the right 239
5.1.2.1 Monopoly 239
5.1.2.2 Territorial nature 239
5.1.3 The legislative framework and international arrangements 240
5.2 Basic requirements for obtaining a patent 241
5.2.2 What is an invention? 241
5.2.2.1 Discoveries 241
5.2.2.2 Scientific theories 241
5.2.2.3 Mathematical methods 241
5.2.2.4 Literary, dramatic, musical and/or artistic works 242
5.2.2.5 Schemes, rules, methods of performing mental acts, playing games
or doing business 242
5.2.2.7 Presentation of information 243
5.2.2.8 Offensive or immoral behaviour 243
5.2.2.9 Varieties of plants or animals or biological methods for their production 243
5.2.2.10 Medical methods of treatment 244
5.2.2.11 Inventions contrary to natural laws 244
5.2.2.12 Nuclear energy and material and inventions which are contrary to law 244
5.2.3 Novelty 245
5.2.3.1 The ‘state of the art’ and ‘made available to the public’ 245
5.2.3.2 Exceptions to the ‘general rule’ of novelty 246
5.2.3.3 The test for novelty 247
5.2.4 Inventiveness 248
5.2.4.1 Obvious to a person skilled in the art 248
5.2.4.2 The test for obviousness 249
5.2.4.3 Mosaicing 251
5.2.4.4 New uses of known contrivances 251
5.2.5 Capable of being used or applied in trade or industry or agriculture 251
5.2.6 Lack of utility 251
5.3 Procedure for obtaining a patent 252
5.3.1 The applicant and the inventor 252
5.3.2 Patent applications 253
5.3.2.1 Provisional patent applications 254
5.3.2.2 Complete patent applications 255
5.3.2.3 PCT patent applications 257
5.3.2.4 National phase applications 258

5.3.3 Procedure after filing 258

5.4 Amendment and correction 260
5.4.1 Corrections – section 50 260
5.4.2 Amendments – section 51 261
5.4.2.1 Amendment of provisional patent applications 262
5.4.2.2 Amendment of a patent application prior to grant 262
5.4.2.3 Amendment of a patent after grant 263
5.4.2.4 Amendment of a patent in the course of legal proceedings 263
5.4.3 Procedure on amendment 263
5.4.4 Grounds of objection to amendment 264
5.5 Revocation 265
5.5.1 The absolute nature of the grounds 265
5.5.4 The grounds 266
5.5.4.1 The patentee is not entitled to apply 267
5.5.4.2 The patent was granted in fraud of rights of the applicant 267
5.5.4.3 The invention is not patentable under section 25 267
5.5.4.4 Inutility 268
5.5.4.5 Insufficiency 268
5.5.4.6 Ambiguity and fair basis 269
5.5.4.7 False statement or representation 270
5.5.4.8 Frivolous, immoral or illegal inventions and nuclear inventions 271
5.5.5 Procedure 272
5.5.6 Partial validity 272
5.6.3 Acts of infringement 273
5.6.3.1 Making 273
5.6.3.2 Using 273
5.6.3.3 Exercising 274
5.6.3.4 Disposing of 274
5.6.3.5 Offering to dispose of 274
5.6.3.6 Importing 274
5.6.4 Presumptions in relation to new substances 275
5.6.5 Marketing approval 275
5.6.6 Construction of the claims 275
5.6.6.1 Literal infringement 275
5.6.6.2 Purposive construction 276
5.6.7 The role of expert evidence 277
5.6.8 Defences 277
5.6.8.1 Invalidity of the patent 278
5.6.8.2 Leave and licence 278

5.6.8.3 Exhaustion of rights 279

5.6.8.4 Acquiescence, election, waiver and estoppel 279
5.6.8.5 Ignorance not a defence 279
5.6.8.6 Invalidity of a single claim 279
5.6.9 Contributory infringement 279
5.6.10 Remedies 280
5.6.11 Procedure 281
5.7 General 281
5.7.2 Patents of addition 282
5.1 Introduction
5.1.1 History
The grant of patents for inventions has a long history, although its origins are obscure. In
Britain, the Crown first granted specific privileges to manufacturers and traders in the 15th
century.
The earliest known English patent for an invention was granted to John of Utynam in
1449 for a method of making stained glass.1
The first Patents Act in South Africa was passed by the Cape Parliament in 1860. Since
then, a series of Acts providing for the grant of patents have been promulgated, culminating
in the present Patents Act 57 of 1978.
5.1.2 The nature of the right
5.1.2.1 Monopoly
A patent is a statutory monopoly right which provides for the protection of an invention.
In essence a patentee is granted the right to prevent others from exploiting his invention
for a fixed period of time. In return for being granted this right, the patentee must fully
disclose his invention so that third parties can exploit the invention once the patent term
has ended.
The term of a South African patent is 20 years from the date upon which the complete
specification is lodged at the patent office, subject to the payment of the prescribed renewal
fees. No extension of term is possible in respect of South African patents.
5.1.2.2 Territorial nature

A patent right is territorial in nature, in that a patent is applied for and granted in terms of
the intellectual property laws of a particular country. A patent granted in South Africa
therefore only provides a monopoly in respect of the invention in South Africa and its
territorial waters. If a patentee requires protection in other territories, individual patent
applications will need to be filed in those territories.
1 www.ipo.gov.uk.

PAUSE FOR Infringement across national boundaries in the Internet age

REFLECTION With the rapid development in several fields of intellectual property, particularly in the field
of mobile technology, jurisdiction is becoming an increasingly important issue in infringement
cases. Establishing jurisdiction for intellectual property rights disputes is difficult at the best
of times. However, mobile applications (apps) and other forms of computer-implemented
inventions add a new level of complexity. This is due to the fact that the content of mobile
apps or the infrastructure of computer-implemented inventions, that is servers and user
computer terminals, is often based in more than one country and/or the underlying content
may be based in the internet ‘cloud’. Thus a mobile app user in South Africa may be
accessing a server in India, which routes it to a server in China, which then supplies the
content that the user requires. It therefore becomes difficult to prove where the actual act
of infringement took place. As mobile technology develops, there may be a need to review
the territorial nature of intellectual property rights.
5.1.3 The legislative framework and international arrangements

The law of patents is governed by the Patents Act 57 of 1978, which repealed the Patents Act
37 of 1952 when it came into force on 1 January 1979. In this chapter the Patents Act 57 of
1978 will be referred to as ‘the Act’. Proceedings under the Act are governed by the Patent
Regulations 1978, which will be referred to as ‘the Regulations’.
South Africa is a party to the Paris Convention for the Protection of Industrial Property
(the Paris Convention), and acceded to this convention on 20 October 1947. The Paris
Convention applies to industrial property in the widest sense. Its substantive provisions fall
into three main categories:
1. National treatment: Each contracting state must grant the same protection to nationals
of other contracting states that it grants to its own nationals.
2. Right of priority: Where a first application is filed in one of the contracting states, the
applicant may, within a period of 12 months for patents, apply for a patent in any other
contracting state and these later applications will be treated as if they had been filed on
the same day as the first application.
3. Common rules: These rules are aimed at harmonisation of the laws in different
contracting states.2
Schedule 4 to the Regulations sets out the member states of the Paris Convention. This
schedule is updated from time to time.
The Act was amended to bring it into substantial compliance with the Agreement on
Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) by means of
the Intellectual Property Laws Amendment Act 38 of 1997. The aim of the TRIPS agreement
is to harmonise intellectual property laws around the world.
South Africa has also bound itself to the Patent Cooperation Treaty (the PCT),
which came into effect in South Africa on 16 March 1999. The PCT provides a unified
procedure for filing patent applications in order to protect inventions in the contracting
states of the PCT.
2 www.wipo.int/treaties/en/ip/paris/summary.

5.2 Basic requirements for obtaining a patent
5.2.1 Introduction
Section 25(1) of the Act states that a patent may be granted for any new invention which
involves an inventive step and which is capable of being used or applied in trade or industry
or agriculture.3
The requirements for patentability are thus:
1. the invention must be an invention by definition;
2. the invention must be new (or novel);
3. the invention must involve an inventive step (it should not be obvious);
4. the invention must have utility; and
5. the invention must be capable of being used or applied in trade or industry or agriculture.
5.2.2 What is an invention?

The Act does not contain a definition of what an invention is but rather lists certain things that
are specifically excluded from being considered to be inventions.4 Accordingly, an invention
can be anything which does not fall within the exclusions listed in the Act. An invention may
be, for example, a device, machine, composition of matter, method, process, etc.
There is no overriding principle determining what is not an invention. In certain
instances the exclusions are as a result of the subject matter being the subject of other forms
of intellectual property protection. In other instances the exclusions have developed over
the years for different reasons, often in the interests of public policy.
The exclusions listed in section 25(2) of the Act are set out in detail below.
5.2.2.1 Discoveries5
The underlying principle of an invention is that it should be a creation which is the result of
human ingenuity. Accordingly, an invention requires creative thought on the part of the
inventor and entails using objects, ideas or theories that are already known to create new
objects, ideas and theories that are not yet known.
A discovery, on the other hand, is something which already exists (although it may be
outside the scope of human knowledge). As such, a discovery cannot be invented. Examples
of discoveries include gravity and electricity.
5.2.2.2 Scientific theories6

A scientific theory is a logical explanation of some aspect of the natural world. Examples of
scientific theories are Einstein’s theory of relativity and Newton’s laws of motion.
5.2.2.3 Mathematical methods7

A mathematical method is a description of a system using mathematical concepts.
Mathematical methods are effectively an extension of scientific theories. Examples are the
theorem of Pythagoras and calculus.
3 S 25(1) of the Patents Act 57 of 1978.

5 S 25(2)(a) of the Patents Act 57 of 1978.
6 S 25(2)(b) of the Patents Act 57 of 1978.
7 S 25(2)(c) of the Patents Act 57 of 1978.

5.2.2.4 Literary, dramatic, musical and/or artistic works8

Literary, dramatic, musical or artistic works and other aesthetic creations are defined in and
protected under the Copyright Act,9 and as a result are excluded from patentability.
5.2.2.5 Schemes, rules, methods of performing mental acts, playing games or

doing business10
All of these acts are considered to be essentially mental steps or methods of applying one’s
mind and are thus not patentable. For instance, a scheme for winning the lottery, the rules
for chess, or a method of operating a business, all fall within this exclusion. However, a board
game and its pieces are patentable. Further, there is widespread debate worldwide at present
on the patentability of business methods. In certain forms it is believed that methods of
doing business may well be patentable.
POINT TO Patentability of business methods and software-related inventions

PONDER Computer software-related inventions and business methods have traditionally been
considered to be unpatentable subject matter. The general view is that computer programs
are more like books (‘literary works’) than other technological subject matter, such as
automobiles, machines and chemical compounds, and should thus be protected by
copyright. Copyright does provide a degree of protection for business methods and computer
software-related inventions; however it does not protect the underlying concepts in these
inventions. With the progression of the computer age, computers and computer software
have taken on an increasingly central role in the field of technological development. Although
patent law has been slow to adapt over the same period of time, there have been rapid
advances in the law in this area recently, and these changes tend to favour the recognition
of software and business methods as patentable subject matter. It is probably time that
South Africa reviewed its patent laws relating to the exclusion from patentability of software-
related inventions and business methods.
5.2.2.6 Computer programs11

A program for a computer is defined in and protected under the Copyright Act12 and is
thus excluded from patentability. However, it is important to note that this exclusion is
also the subject of widespread debate. The Copyright Act only protects an original
computer program as it has been written (i.e. its source code) from being copied. This is
as opposed to the principles underlying the computer program itself. It is thus fairly easy
to circumvent copyright protection in a computer program. There is no specific case law
in South Africa relating to the patentability of software, computer programs or computer-
implemented inventions.
8 S 25(2)(d) of the Patents Act 57 of 1978.

9 Copyright Act 98 of 1978.
10 S 25(2)(e) of the Patents Act 57 of 1978.
11 S 25(2)(f) of the Patents Act 57 of 1978.

5.2.2.7 Presentation of information13

The presentation of information would typically also be protectable under the Copyright
Act14 and is thus excluded from patentability. An example is written instructions, or a
package insert, instructing a person on how to use a pharmaceutical composition.
The subject matter that is considered as not being an invention in terms of section 25(2)
is qualified by section 25(3), which states that the exclusion applies only to the extent to
which the invention relates to that subject matter as such. Thus the abovementioned
exclusions must be interpreted narrowly.
At present, there is no case law in South Africa that interprets the meaning of sections
25(2) and 25(3). However, it is presumed that our courts will follow a European-type
approach requiring a ‘technical effect’ as laid down by the Boards of Appeal of the European
Patent Office. If a patent describes the use of the subject matter from one of the specifically
excluded categories in order to obtain a specific technical result, as opposed to directly
claiming the unpatentable subject matter, then a valid patent may be obtained.
Certain other types of invention are also deemed to be unpatentable in terms of the Act for
various reasons. These inventions are inventions in terms of the Act, but are not patentable,
generally because they offend against law, ethics or morality. These unpatentable inventions
are set out in more detail below.
5.2.2.8 Offensive or immoral behaviour15

A patent may not be granted for an invention the publication or exploitation of which would
be generally expected to encourage offensive or immoral behaviour.16 Further, the Registrar
is provided with a discretionary power to refuse a patent application if it appears to him that
the use of the invention to which the application relates would generally be expected to
encourage offensive or immoral behaviour.17
An example of an invention which would encourage offensive or immoral behaviour would
be a patent application whose claims are drawn to the use of a chemical compound as a date
rape drug. The exploitation and/or publication of the aforementioned invention would
obviously encourage offensive or immoral behaviour and would not be patentable as such.
5.2.2.9 Varieties of plants or animals or biological methods for their production18

A patent may also not be granted for a variety of animal or plant or any essentially biological
process for the production of animals or plants, not being a microbiological process or the
product of such a process. At present, there is no case law in South Africa interpreting the
meaning of this section. However, this section makes it clear that it will not be possible to
patent a new breed of dog or a new variety of wheat. The latter may, however, be protected
in terms of the Plant Breeders’ Rights Act.19
Biological processes include, for example, methods of crossing, interbreeding or
selectively breeding plants or animals, merely by selecting for breeding or bringing together
13 S 25(2)(g) of the Patents Act 57 of 1978.

15 S 25(4)(a); s 36(1)(b) of the Patents Act 57 of 1978.
19 Plant Breeders’ Rights Act 15 of 1976 – See ch 6.

the specific plants or animals having certain desired characteristics. On the other hand, a
process of genetically manipulating a plant to render it resistant to pests would not be
essentially biological since the essence of the invention is technical, not biological.
It is important to note that microbiological processes and the products thereof are
patentable. Thus, the processes of culturing a particular microorganism in order to produce
a useful product such as an antibiotic are patentable.
5.2.2.10 Medical methods of treatment20

An invention 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 deemed to be capable of being
used or applied in trade or industry or agriculture. In other words, an invention of a medical
method of treatment of the human or animal body is not patentable. The reason for this is
to ensure that doctors and veterinarians are not hindered in their work by the threat of patent
infringement.
However, a product consisting of a substance or composition for use in a medical method
of treatment is deemed to be capable of being used in trade, industry or agriculture and is
not excluded from patentability merely due to the fact that its intended use is for such a
method.21 This means that it is possible to patent a pharmaceutical product for use in treating
a disease, but not a method of treating the disease using the product. This applies both to
the first and to second and/or subsequent medical uses of a known substance or
composition.
In Elan Transdermal Ltd v Ciba Geigy (Pty) Ltd22 our courts held that the first medical
use of a known substance must be claimed in the ‘for use type’ form: ‘A substance A for use
in a method of treatment of B’, and that the second medical use of a known substance cannot
be claimed in this form. However, the court went on to hold that it is permissible to claim a
second medical use of a known substance in the ‘Swiss-type’ format. Such a claim would
read: ‘The use of substance A in the manufacture of a medicament to treat B’.
5.2.2.11 Inventions contrary to natural laws

The Registrar may refuse a patent application for an invention which is obviously contrary
to well-established natural laws.23 Such inventions include, for example, perpetual motion
machines which by their very nature are contrary to the laws of physics.
5.2.2.12 Nuclear energy and material and inventions which are contrary to law24
The Registrar is further provided with a discretionary power to refuse applications for
inventions that may be used in any manner contrary to law.25 For instance, certain types of
weapons, such as anti-personnel landmines, whose sole purpose is to maim unsuspecting
people, would be considered an invention whose use is contrary to law. However, a patentee
may still obtain patent rights in respect of the invention if it specifically disclaims the illegal,
harmful, dangerous or unlawful aspects thereof.
In a similar vein, the patenting of nuclear inventions is also regulated.

22 1994 BP 1 (CP).

5.2.3 Novelty
5.2.3.1 The ‘state of the art’ and ‘made available to the public’
It is a basic concept of South African patent law that an invention must be new immediately
before its priority date in order to be the subject of a valid patent. The reason for this goes
back to the basic theory of the patent system, which is that a person is granted a limited
monopoly in return for disclosing the invention to the public. If the invention is already in
the public domain (i.e. is not new) then this quid pro quo no longer holds. Consider this as
the ‘general rule’ of novelty of an invention.
An invention is deemed to be new if it does not form part of the state of the art
immediately before the priority date of that invention.26 The priority date of an invention is
the date on which the first patent application in which the invention is disclosed is filed,
anywhere in the world. Thus, if a patent application is a South African originating patent
application then the priority date is the date of first filing in South Africa. On the other hand,
if a patent application was first filed abroad and is subsequently filed in South Africa, then
the priority date is the date of first filing abroad.
The state of the art is defined as comprising all matter (whether a product, a process,
information about either, or anything else) which has been made available to the public
(whether in South Africa or elsewhere) by written or oral description, by use or in any other
way.27 Stated differently, the state of the art includes anything which it was possible for any
member of the public to gain knowledge of and which could freely be disclosed without a
breach of confidence (either express or implied).
Accordingly, any public disclosure of the invention will count as part of the state of
the art (also referred to as prior art) against the invention. Prior art includes oral
disclosures such as lectures or presentations; written publications such as books,
magazines, earlier filed published patents, scientific papers; television or radio
programmes; prior use by carrying out a method, or manufacture or sale of an article; or
disclosure on a website.
In McCauley Corporation Ltd v Brickor Precast (Pty) Ltd28 the court, in dealing with the
meaning of the term ‘made available to the public’ stated:
As to what is meant by this expression [made available to the public] will depend
on the facts of each particular case. If the invention deals with a highly involved
technical subject the word ‘public’ must mean something more than the ordinary
man on the street and I think it means those persons to whom the specification is
addressed. Similarly the question whether the material is ‘available to the public’
would appear to cover the concept that it is available to the public anywhere in the
world.
Thus a disclosure which forms part of the state of the art, and destroys novelty, may have
been made anywhere in the world, not just in South Africa. This standard of novelty is known
as absolute novelty.
It is important to note that a disclosure which is the subject of confidentiality will not be
considered to be prior art. In this regard, in McCauley supra the court pointed out:

28 1989 BP 314 (CP) at 333B to 335A.

… the state of the art includes anything which is in possession of any member of the
public which he may disclose to others without any inhibiting fetter of confidence
whether express or implied ... there must be a non-confidential disclosure to
another: mere disclosure would not appear to suffice.29
5.2.3.2 Exceptions to the ‘general rule’ of novelty

As with many general legal rules, there are certain exceptions or circumstances where
information which has not been made available to the public is considered to form part of
the state of the art, and other instances where information which has been made available
to the public does not form part of the state of the art.
A first exception to the ‘general rule’ occurs in the case of co-pending South African patent
applications. Information contained in a patent application is kept confidential, for a certain
period of time after filing. However, despite this information being kept confidential it is
considered to form part of the state of the art against a co-pending, later filed, patent
application. The exception effectively states that the state of the art is deemed to include
information contained in a patent application, which is open to public inspection, despite the
fact that the patent application only became open to public inspection on or after the priority
date of the invention to which it is considered to be prior art. The information must, however,
have been contained in that patent application as lodged and as open to public inspection,
and the priority date of that information must be earlier than that of the invention.30
To simplify what is said above, consider a scenario where person X and person Y,
independently of each other, invent the same invention. Person X files a patent application
for his invention on 1 January 2000 and person Y files a patent application for his invention
four months later on 1 April 2000. Person Y has no way of knowing that person X had filed a
patent application for the same invention. However, once person X’s patent is granted and
thus falls into the public domain (i.e. becomes open to public inspection) then person X’s
patent will be considered to be prior art against person Y’s patent application, because
person X’s patent has an earlier priority date. In summary, if there are two co-pending patent
applications at the South African Patent Office, the one with the earliest priority date ‘wins’,
and is considered to be novelty destroying in respect of the second patent application.
A PCT patent application which proceeds to the national phase in South Africa is regarded
as a South African patent application and will thus be regarded as a co-pending application in
appropriate circumstances. It is, however, an open question whether a PCT patent application
which designates South Africa but which does not proceed to the national phase in South Africa
would also be regarded as a co-pending application in appropriate circumstances.
A second exception to the ‘general rule’ involves the secret use of an invention in South
Africa for commercial purposes. Thus, an invention which is kept confidential is considered
to be a novelty-destroying disclosure of the invention, if the reason for keeping it confidential
is financial gain.31 For example, if a process has been carried out in secret for several years,
in a South African factory, and the process relates to the manufacture of a chemical
compound which is sold to the public, then the novelty of the process is deemed to be
destroyed and it cannot later be patented.
There are also other exceptions to the ‘general rule’, where prior disclosure of an invention
will not be considered to be novelty destroying.
29 McCauley Corporation v Brickor Precast supra at 335E.


South African case law provides that where two products or processes are substantially
the same, the difference in purpose between the two products or processes is irrelevant. In
other words, the new use of a known product or process, without anything else, is not
regarded as being patentable.32
However an exception to this rule is provided in the case of an invention consisting of a
substance or composition for use in a method of treatment of the human or animal body by
surgery or therapy or of diagnosis practised on the human or animal body. The fact that the
substance or composition forms part of the state of the art immediately before the priority
date of the invention does not prevent a patent being granted for the invention, if the use of
the substance or composition in any such method does not form part of the state of the art
at that date.33 The new use of a known pharmaceutical compound is thus considered
patentable. The earlier disclosure of the compound for a different use will not be considered
novelty destroying in respect of the new use.
A second exception arises when a patentee can show that information relating to its
invention was acquired, disclosed or used without its knowledge or consent, and that the
information was derived or obtained from the patentee. In this case the disclosure will be
excused provided that the patentee applies for patent protection as soon as possible after
discovering that the invention has been so disclosed.34
A third exception is that disclosure of an invention would be excused if the invention was
disclosed as a result of being worked in South Africa by way of a reasonable technical trial
and/or experiment by the patentee.35 What is considered ‘reasonable’ is always a question
of fact and will be determined by the circumstances surrounding each case. However, if for
example the patented invention had been sold by the patentee, it would be difficult to argue
that this was working by way of a reasonable technical trial or experiment.
5.2.3.3 The test for novelty

The test for novelty relates to the invention as claimed in the claims. In order to establish whether
or not a particular piece of prior art, which has been made available to the public, destroys the
novelty of an invention as claimed in the claims, a three-step enquiry is followed by our courts:
1. the claims of the patent have to be construed;
2. the piece of prior art has to be construed; and
3. finally, the construed claims have to be compared to the piece of prior art.
This test was set out by Trollip JA in Gentiruco A.G. v Firestone South Africa (Pty) Ltd36 as
follows:
I turn now to the objection of anticipation.37 It relates to the claims and not the
description of the invention in the body of the specification ... Hence the particular
claim must be construed to ascertain its essential constituent elements or integers.
For the purpose of this objection the claim so construed is assumed to be inventive
… The prior printed publication or patent alleged to be anticipatory is then
construed. As Blanco White, supra, says at p. 101: ‘The question whether a claim has
32 Gentiruco A.G. v Firestone South Africa (Pty) Ltd 1971 BP 58 (A); 1972 (1) SA 589 (A) at 149.
34 S 26(a) of the Patents Act 57 of 1978.
35 S 26(b) of the Patents Act 57 of 1978.
36 1971 BP 58 (A) at 149.
37 The term ‘anticipation’ as used by the court is synonymous with ‘lack of novelty’.

novelty over what is disclosed in an earlier document is primarily one of construction

of the two documents.’ The two documents are then compared to ascertain whether
the prior patent was granted for, or the prior printed publication ‘describes’ the same
process, etc., as that claimed ... In regard to a prior publication, the ordinary
meaning of ‘describe’ means ‘to set forth in words or recite the characteristics of’ …
Hence for it to ‘describe’ the invented process etc., it must set forth or recite at least
its essential integers in such a way that the same or substantially the same process
is identifiable or perceptible and hence made known, or the same or substantially
the same thing can be made, from that description. ‘Substantially the same’ means
practically the same, or, … the same ‘for the purposes of practical utility’; i.e.
substance and not form must be regarded. Consequently, if on the comparison of
the two documents it appears that the same or substantially the same process, etc.,
is described in the above sense in both, the claim has been anticipated and is not
novel; conversely, if the description in the prior document differs, even in a small
respect, provided it is a real difference, such as the non-recital of a single essential
integer, the objection of anticipation fails.
Our courts have, over the years, clarified various aspects of this test, as set out below.
In order to be novelty destroying, a prior disclosure (or anticipation) must fully disclose
the invention which it is intended to invalidate. In this regard our courts have held:
Anticipation destroys the claim to novelty, but the prior publication (or public use)
relied upon as an anticipation must be of the identical – or substantially identical –
invention claimed. Essence, of course, and not form is what is looked to ... But
novelty is not destroyed by prior publication of an invention closely resembling that
of the patent challenged if the difference between the two, however small, is a real
difference.38
A further gloss on the test for novelty which has been cited with approval by our courts over
the years is:
Would a man who was grappling with the problem solved by the patent attacked,
and having no knowledge of that patent, if he had had the alleged anticipation in his
hand, have said, ‘that gives me what I wish’?39
In order to be novelty destroying, the invention must be fully described in a single

prior art document (or any other item of prior art). It is not possible to mosaic several
prior art documents and then allege that an invention lacks novelty in view of the
mosaic.
5.2.4 Inventiveness
5.2.4.1 Obvious to a person skilled in the art

It is a further basic concept of South African patent law that an invention must have
something more than just novelty, it must also be inventive.
38 Veasey v Denver Rock Drill and Machinery Co Ltd 1930 AD 243 at 282.
39 John Hay Chapman Drummond-Hay v DI Fram & Company Limited 1963 BP 380 (A) at 386B–C.

PAUSE FOR Place for a petty patent?

REFLECTION The general requirements for patentablility in South Africa are quite stringent – in that an
invention must fulfil the requirements of novelty and inventiveness in order to be patent
eligible. In many instances this precludes inventors who have made minor incremental
improvements to existing inventions from being able to obtain rights in respect of those
improvements. In several countries, however provision is made for the protection of ‘petty
patents’. A petty patent is very similar to a patent but it usually has a shorter term and lower
patentability requirements. In most instances inventions covered by petty patents are only
required to be novel – there is no inventiveness requirement. At present South African law does
not make provision for the protection of petty patents, but petty patents may be a particularly
suitable form of intellectual property for a developing economy. This is because in many
developing economies research and development are not a major priority and many inventions
that are made in these countries are as a result of slight incremental improvements in existing
technologies.
An invention is deemed to involve an inventive step if it is not obvious to a person skilled in

the art, having regard to any matter which forms, immediately before the priority date of the
invention, part of the state of the art.40
It is to be noted that the terms non-obviousness, inventiveness and inventive step are
used interchangeably and essentially mean the same thing.
The determination of whether the claims lack inventiveness is usually only considered
once it has been found that the claims are novel. Lack of inventiveness is the ground of
revocation which is most often used in revocation proceedings and is also the most difficult
to judge in practice.
5.2.4.2 The test for obviousness

In Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd,41
the court pointed out that in order to apply the provisions relating to obviousness ‘it is
necessary to determine what the art or the science to which the patent relates is, who the
person skilled in the art is and what the state of the art at the relevant date was’.
The court then went on to set out a simple four-step test which should be applied when
determining whether an invention is obvious or not. The test may be stated as follows:
1. What is the inventive step said to be involved in the patent?
2. What was the state of the art, at the priority date of the patent, relevant to that step?
3. How does the step go beyond, or differ from, that state of the art?
4. Having regard to the further development or difference, would taking the step be obvious
to the skilled man?
The steps of the test as considered by the court may be described as follows:
1. What is the inventive step said to be involved in the patent?
In Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others42 the court stated that
when determining the inventive step:

41 1998 BIP 271 (SCA).
42 2011 BIP 12 (SCA).

The Act does not require that the inventive step be stated in the body of the
specification or, if stated, that it should have been correctly stated. As was said in
Ensign-Bickford (SA) Pty Ltd at 282E-F:
Secondly, the questions themselves were not properly directed to the invention
defined by the claims. The objection of lack of inventiveness is not an objection to
‘teaching’ in the body of the specification. It is the claims which must be considered …
Accordingly, when determining what the inventive step is one should not look to the
content of the specification; instead the claims must be considered in order to identify
what the inventive step is. If the inventive step is not specifically stated, it must be
construed from the claim when looked at in the light of the state of the art.43
2. What was the state of the art, at the priority date of the patent, relevant to that step?
When determining whether the claims of a patent are inventive, the state of the art does
not include prior co-pending South African patent applications44 and/or secret use on a
commercial scale.45
Thus, any information that has been made available to the public and which is not
the subject of the aforementioned exclusions will be considered as prior art.
3. How does the step go beyond, or differ from, that state of the art?
It is important to note that the inventive step does not have to be a step forward, or an
improvement to the existing technology. Rather, for example, in the case of a process the
inventive step could be a different way of reaching the same outcome. The step also does
not need to be a giant leap; instead a small improvement which makes a measurable
difference will be considered to be inventive.
The court confirmed this position in Ausplow supra, when it stated:
The inventive step has often been referred to as a step forward but that term is misleading
… The seeding apparatus of the patent in suit may do the same as other seeding machines
but, provided it does it in a sufficiently different manner, it may be inventive.
4. Having regard to the further development or difference, would taking the step be
obvious to the skilled man?’
Although it is ultimately for the court to decide whether or not an invention is obvious,
the court will almost invariably require the assistance of expert witnesses, and the primary
evidence will be that of properly qualified expert witnesses who will explain the nature of
the inventive step, the state of the art at the relevant priority date of the invention in
question and how the inventive step differs from the relevant state of the art.
In Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd,46 the court clearly set
out the role of expert witnesses in providing testimony in patent matters:
The technical evidence of expert witnesses as to the nature of the step claimed to be
inventive, the state of the art as at the priority date relevant to that step, and the
respect or respects in which the step goes beyond or differs from that state of the art
(the ‘primary evidence’), is admissible, but the opinion of expert witnesses as to
whether an invention is obvious is inadmissible.
43 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others 2011 BIP 12 (SCA); Kerr-McGee Chemical Corporation v
Tioxide Group Services Ltd 1999 BIP 83 (CP) at 91.
46 2006 BIP 25 (CP).

5.2.4.3 Mosaicing
In order to show that an invention lacks inventiveness a third party is allowed to mosaic two
or more prior art documents which formed part of the state of the art. However, such a
mosaic of prior art documents must have been able to be put together by an unimaginative
man with little or no inventive capacity. In this regard our courts have held:
It is permissible to mosaic documents when considering obviousness – … but it must

be a mosaic which can be put together by an unimaginative man with no inventive
capacity – see the Technograph Printed Circuits Ltd case. And as pointed out in
Speedmark Holdings (Pty) Ltd v Roman Roller CC and Another (supra) at 411A-C,
there are dangers in mosaicing. The existence of a large number of publications
alleged to give pointers or clues to the achievement of an aim, coupled with the
failure over the years to fulfil it, suggests that there was no obviousness in finally
achieving the successful result.47
5.2.4.4 New uses of known contrivances

Our courts have also confirmed that a new use of a known thing or process is capable of
overcoming the hurdle of lack of inventiveness. The approach adopted is that a new use of
a known invention, or adaptation thereof, is capable of being patented, if the new use or
adaptation required inventive ingenuity.48
5.2.5 Capable of being used or applied in trade or industry or agriculture

In order to be patentable, an invention must also be capable of being used or applied in trade
or industry or agriculture.49
Whether an invention is capable of being used or applied in trade or industry or
agriculture is a question of fact and will ordinarily be apparent from the invention itself. Trade
can be taken to include all activities in society where services or commodities of any kind are
exchanged for money or other goods of value. Industry can be taken to be a particular branch
of productive labour, and agriculture covers the science of farming, whether with animals or
crops, and in its broad sense includes forestry, gardening and horticulture.
It is difficult to conceive of an invention which would not be capable of being used or
applied in trade or industry or agriculture, with the exception of those inventions specifically
excluded from patentability on this ground. Such inventions include methods of medical
treatment, which are dealt with in paragraph 5.2.2.10.
In Europe one example of an invention which is deemed not to be capable of being used
or applied in trade or industry or agriculture is a DNA sequence without any indication of a
function of that sequence, or a protein produced by the sequence without an indication of
what function the protein performs.
5.2.6 Lack of utility

It is important to draw a distinction between an invention being capable of being used in
trade, industry or agriculture and lack of utility of the invention.
The Act provides that a patent can be revoked if the invention as illustrated or
exemplified in the complete specification concerned cannot be performed or does not
47 Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd 2006 BIP 25 (CP) at 50F–H.
48 John Hay Chapman Drummond-Hay v DI Fram & Company Limited 1963 BP 380 (A) at 393.

lead to results and advantages set out in the complete specification.50 This ground of
revocation is often referred to as lack of utility. This ground relates specifically to the
information contained in the description, examples and drawings, and does not relate
to the claims.
Clearly if an invention cannot be performed it lacks utility and thus a patent to the
invention will be invalid. This occurs in practice because patent applications for inventions
are often filed when the invention is still a theoretical concept, that is before the inventor
has tried to put the invention into practice. When the inventor does try to put the invention
into practice he may find that it does not work.
It is also important to note that the invention must lead to results and advantages set
out in the complete specification.51 It is thus important not to make promises in a
specification as to what the invention will be able to achieve, as the invention may work,
but if it does not do what the inventor has said it can do in the specification, the patent is
liable to be revoked.
The issue of lack of utility was succinctly summarised in the case of Integrated
Mining Systems (Pty) Ltd v Chamber of Mines of South Africa,52 where the court quoted
from a previous UK decision stating:
Not useful in patent law means that the invention will not work either in the sense
that it will not operate at all or, more broadly, that it will not do what the specification
promises that it will do. If the invention will give the result promised at all, the
objection fails; the practical usefulness of the invention does not matter, nor does
its commercial utility unless the specification promises commercial utility, nor does
it matter whether the invention is of any real benefit to the public, or particularly
suitable for the purposes suggested. Further, it is only failure to produce the results
promised that will invalidate, not misstatements as to the purposes to which such
results might be applied.
5.3 Procedure for obtaining a patent
5.3.1 The applicant and the inventor

It is important to distinguish between an inventor and an applicant for a patent application.
Whether a person is considered to be an inventor is a question of fact – an individual either
is an inventor or he is not an inventor. An inventor is the person or people who made an
inventive contribution to the development of an invention. Accordingly, a person who was
told what to do and merely followed instructions will generally not be considered to be an
inventor. It is important to identify correctly all of the inventors when filing a patent
application. The contribution of each individual to the inventiveness of the invention in
question must be assessed in order to determine whether he is an inventor or not. An
inventor can only be a natural person.
Despite the importance of correctly identifying the inventor, there has been very
little litigation in South Africa on the issue. However, in the case of Galison

52 1974 BP 281 (CP) at 317E–F.

Manufacturing (Pty) Ltd v Set Point Industrial Technology (Pty) Ltd and Another,53 the court
said the following:
The parties agree that there is no South African precedent dealing with this issue.
The plaintiff ’s counsel referred to the judgment in Stanelco Fibre Optics Ltd’s
Applications [2005] RPC 15 (Ch) where the judge said at 326 lines 12–13:
‘The task of the court is to identify the inventive concept of the patent or application
and identify who devised it … The court is not concerned with issues of validity or
inventiveness: merely with the concept as described.’
On the other hand, an applicant for a patent application is the person who applies
for the right to have a patent granted in respect of an invention. An applicant may be a
natural person or a juristic person. The term ‘applicant’ is defined as including the legal
representative of a deceased applicant or of an applicant who is a person is under legal
disability.54
An application for a patent in respect of an invention may be made by: the inventor, or
by any person who has acquired the right to apply from the inventor, or by both the inventor
and a person who has acquired the right to apply from the inventor.55
If the applicant for a patent is not the inventor, then the applicant must prove his
entitlement to apply for and be granted a patent. The applicant must prove the transfer of
title between the inventor(s) and the applicant. This proof must be to the satisfaction of the
Registrar and can be by way of a deed of assignment,56 an employment contract,57 a contract
to do something58 or by operation of law.59
In the absence of an agreement to the contrary, joint inventors may apply for a patent in
equal undivided shares.60
5.3.2 Patent applications

In order to obtain patent rights in South Africa in respect of an invention an applicant must
file a patent application at the patent office. A patent application consists of application
forms and a patent specification which describes the invention. Four forms of patent
application are possible in South Africa, namely a patent application accompanied by a
provisional patent specification (referred to as a provisional patent application), a patent
application accompanied by a complete patent specification (referred to as a complete
patent application), a patent application filed in terms of the Patent Cooperation Treaty
(PCT) (referred to as a PCT patent application) and a subsequently filed national phase of
an application filed in terms of the PCT (referred to as a national phase application).
53 2009 BIP 5 (CP) at para 14.

54 S 2 of the Patents Act 57 of 1978.
56 See s 60 of the Patents Act 57 of 1978 and ch 9.
57 See ch 9.
58 See ch 9.
59 An example of such a law is the Intellectual Property Rights from Publicly Financed Research and Development Act 51
of 2008.

Usually, the patenting procedure commences with the filing of a provisional patent
application. The date on which the provisional patent application is filed (also referred to as
the priority date) is very important since it is as of this date that the novelty and inventiveness
of the invention will be judged. Further, the priority date is the date from which the invention
is acknowledged in law as being protected.
5.3.2.1 Provisional patent applications

A provisional patent application must be made in the prescribed manner,61 on payment of
a prescribed fee62 and must be accompanied by a provisional specification.63 A provisional
patent application is effective for a period of 12 months64 and cannot mature into a granted
patent without the filing of a further patent application, namely either a complete patent
application or a PCT patent application.
An application for a provisional patent application must be accompanied by the following
documents:
1. an application form65 and a form which becomes the register sheet66 containing details
that include: the name and address of the applicant, the names of the inventors, the title
of the invention, and the applicant’s address for service67 in South Africa;
2. a declaration and power of attorney signed by the applicant, or if the applicant is a juristic
person, a natural person who has been authorised to sign the declaration and power of
attorney on behalf of the applicant;68
3. an assignment or other proof of the applicant’s right to apply where the applicant has
acquired a right to apply from the inventor;69 and
4. a provisional specification70 which must ‘fairly describe the invention’71, with drawings
if appropriate.
At first glance it would seem that ‘fairly describing’ the invention is a relatively simple
requirement. However, in practice, it is important that the provisional patent specification
is reasonably detailed and includes a description of any aspect of the invention which could
possibly be of value or importance.
In addition, in order for many foreign countries to recognise a South African provisional
patent application as a priority application, the provisional patent specification must meet
the requirements of those countries’ patent laws, which normally require a comprehensive
description of the invention.
The provisional patent application and the provisional patent specification are
confidential documents and are kept secret by the patent office.
61 Reg 22 of the Patent Regulations 1978.

62 Reg 2 and Schedule 1 of the Patent Regulations 1978.
64 S 31(1)(c)(i) of the Patents Act 57 of 1978 provides an exception in respect of claiming priority from a South African
provisional application and provides for a 15-month period within which to claim priority in South Africa.
66 Reg 22(1)(b) of the Patent Regulations 1978.
67 An ‘address for service’ is an address to which all notices and communications may be sent by the Registrar and/or
third parties. The ‘address for service’ is deemed to be the address of the applicant and all documents in relation to a
patent or patent application, notices or other documents may be served on the applicant by leaving the documents at
or sending them to the address for service.
68 Reg 22(1)(c) of the Patent Regulations 1978.
69 Reg 22(1)(d) of the Patent Regulations 1978.
70 Reg 22(1)(e) of the Patent Regulations 1978.

5.3.2.2 Complete patent applications

In order to obtain the grant of a patent in South Africa, the applicant must file an application
for a complete patent application in the prescribed manner, on payment of a prescribed fee
and the application must be accompanied by a complete patent specification.72
An application for a complete patent application must comply with all the requirements
for the filing of an application accompanied by a provisional patent specification. In addition,
the applicant must also file a complete specification,73 a statement stating whether or not
the invention is based on or derived from an indigenous biological resource, genetic
resource, or traditional knowledge or use,74 and an abstract.75
A complete patent application may be filed in the first instance, in other words with no
preceding patent application and no claim to priority, or it may follow and claim priority from
an earlier South African provisional application76 or from an earlier South African complete
patent application which does not contain a claim to priority.77 Alternatively, in the case of an
invention made in a foreign country, if that country is a party to the Paris Convention, the
complete patent application may claim priority from an earlier patent application filed in
that foreign country.78
In order validly to claim priority from an earlier provisional or complete patent
application or application in a foreign country, the complete patent application which claims
priority must be filed at the South African patent office within one year of the filing date of
the earlier patent application.79 A complete patent application claiming priority from an
application filed in a convention country is often referred to as a convention application.80
A complete patent specification must 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 performed by a person skilled in the art of the
invention81 and must end with one or more claims defining the invention for which
protection is sought.82
In all cases involving infringement of patent rights, and in virtually every case in which the
validity of patent rights is in question, the wording of the claims will determine the outcome.
When drafting a claim a balance has to be struck between drafting the claim as broadly
as possible, to obtain the greatest protection, and yet not claiming anything which would
render the claim invalid. For a patent to be valid, the claims must define an invention which
is both novel and inventive, when compared to the prior art. Broadly worded claims will be
infringed by a greater number of possible variations of the invention, but the broader the
claims are, the less likely the patent is to survive an attack of lack of novelty or of obviousness.
Narrowly worded claims are more likely to be valid but will cover fewer variations of the
invention. Furthermore, the narrower the claims are, the easier it will be for a competitor to
avoid infringement.

73 Reg 22(1)(e) of the Patent Regulations 1978.
74 See ch 8.
75 Reg 22(1)(g) of the Patent Regulations 1978.
79 S 31(1)(c)(i) of the Patents Act 57 of 1978 provides for a three month extension of time for the filing of a complete
application claiming priority from a South African application.

PAUSE FOR What’s in a claim?

REFLECTION A few examples of claims for some famous products are provided below.
PRODUCT CLAIM
Acetyl salicylic acid having the formula:
OCOCH3
C6H4
COOH
Aspirin
being when crystallised from dry chloroform in the shape of
white glittering needles, easily soluble in benzene, alcohol and
glacial acetic acid, difficultly soluble in cold water, being split
by hot water into acetic acid and salicylic acid, melting at
about 135 °C.
As a new article of manufacture, a pair of pantaloons having
the pocket openings secured at each edge by means of rivets,
Jeans substantially in the manner described and shown, whereby
the seams at the points named are prevented from ripping,
as set forth.
The combination of carbon filaments with a receiver made
An incandescent entirely of glass and conductors passing through the glass,
light bulb and from which receiver the air is exhausted, for the purposes
set forth.
In an aircraft, a direct lift reaction driven propeller, a rotatable
vertical shaft on which the propeller is mounted, an aerofoil
A helicopter beneath said propeller, and a transfer box for a fluid medium
under pressure and including bearing means for said shaft
disposed in said aerofoil.
A velvet type fabric comprising a foundation structure
including a plurality of weft threads, a plurality of warp
threads, and a plurality of auxiliary warp threads of a synthetic
Velcro®
resin material in the form of raised pile threads, the ends of at
least part of said raised pile threads being in the form of
material-engaging hooks.
The Act stipulates that the claims are required to relate to a single invention,83 however the
Act later goes on to state that no person may in any proceedings object to a patent on the
ground that it comprises more than one invention,84 and therefore this is not a ground of
revocation.85
Since questions of patent validity and infringement are generally determined with
reference to the claims of the complete patent specification, the Act requires the complete
patent specification to be signed by a qualified patent attorney.86

85 Elrick and Another v Registrar of Patents and Another 2007 BIP 28 (CP).
86 S 9(b) of the Patents Act 57 of 1978; reg 28 of the Patent Regulations 1978.

5.3.2.3 PCT patent applications

Another route for obtaining a granted patent in South Africa is to file a so-called international
patent application (PCT patent application) within twelve months of the filing of the initial
provisional application.
The PCT is an international treaty, administered by the World Intellectual Property
Organization (WIPO), between more that 140 Paris Convention countries. The PCT makes
it possible to seek patent protection for an invention simultaneously in each of a large
number of countries by filing a single international patent application as opposed to filing
separate national or regional patent applications.
Briefly, the PCT procedure is as follows:87
Firstly you file an international application which must comply with PCT formality
requirements, in one language, and one set of fees is paid. In this application, it is possible
to designate any or all of the contracting states.
The second step is that an International Searching Authority (ISA), which is one of the
world’s major patent offices, conducts a search to identify published documents which may
be relevant to the patentability of the invention claimed in the PCT application. An
international search report is issued which consists mainly of a listing of references to
published patent documents and technical journal articles which may affect the patentability
of the invention.
Together with the international search report, the ISA prepares a written opinion on
patentability. This is a preliminary and non-binding opinion on whether the invention
appears to meet the patentability criteria in the light of the search report results. The written
opinion enables the applicant to evaluate the chances of obtaining granted patents in the
various contracting states.
As soon as possible after the expiration of 18 months from the earliest priority date, the
international application is published, which means that the content thereof is disclosed to
the general public.
If no further steps are taken, the written opinion of the ISA forms the basis of the
international preliminary report on patentability (IPRP) which issues and which is
communicated to all PCT contracting state patent offices that request it.
However, it is possible to request a second evaluation of the patentability of the
invention claimed, by means of a request for international preliminary examination. At this
stage the applicant may make amendments to the application in order to overcome the
documents identified in the international search report and the conclusions drawn in the
written opinion.
At the end of this procedure, an international preliminary report on patentability (IPRP)
is issued, and is communicated to those PCT contracting state patent offices that request it.
Once the IPRP has been issued, it is necessary to proceed nationally or regionally in the
countries for which final patent protection is required. In other words, the filing of a PCT
patent application does not lead to the grant of an international patent. Rather, once the
initial stages of the patenting procedure as described above have been completed, the
applicant has to enter the national phase in the PCT contracting states in which it requires
protection. This is done by filing individual national phase applications in those countries
where protection is sought. Accordingly, in terms of South African practice, and if a PCT
87 www.wipo.int/pct.

patent application has been filed, the applicant has 31 months88 from the priority date of the
original application to enter the national phase in South Africa.
5.3.2.4 National phase applications

After the filing of a PCT patent application designating South Africa, if final patent
protection in South Africa is required, it is necessary to enter the national phase. To enter
the national phase, before the expiration of the relevant period which is 31 months from
the priority date of the PCT application, with a possible extension of a further period of
no more than three months to 34 months, the applicant must pay the prescribed national
fee to the South African patent office and, if the international application has not been
lodged or published in English, lodge at the patent office a translation into an official
language of South Africa.89
Once filed in South Africa a national phase application essentially follows the same route
as a complete patent application and if all of the formalities in respect of the national phase
application are met, a patent will be granted based on the national phase application.
5.3.3 Procedure after filing

Once a complete patent application or a national phase patent application has been filed,
and all the formalities are in order, the procedure described below takes place.
There is no examination on the merits in South Africa. In other words, the patent office
takes no interest in the substantive content of a patent specification. Provided that all the
formalities are in order, the patent office will allow the application to proceed. This is in
contrast to many other territories such as the United States of America and Europe, where
patent applications undergo substantive examination before they can proceed to acceptance
and grant.
The Act provides that a complete patent application must be accepted by the patent office
within 18 month from the date of application in South Africa and that a national phase
application must be accepted within 12 months from the date of application in South Africa,
unless an appeal has been lodged in respect of the application, or the time within which
such appeal may be lodged has not expired, or the delay in accepting the specification was
not due to any act or omission on the part of the applicant.90
In addition, it is possible to request an extension of time for the acceptance of a complete
patent application or a national phase application.91 It is important to note that in terms of
the judgment in University of Pretoria v Registrar of Patents and Others92 any request for an
extension of time for acceptance must be made before the expiry of the relevant 18 month
or 12 month period. The Registrar is not competent to grant a request for an extension filed
after the expiry of the relevant 18 month or 12 month period.
Once a patent application has been accepted, notice of acceptance is given to the
applicant by the Registrar.93 The applicant must then advertise the acceptance in the Patent
Journal within a period of three months of such acceptance or within such further time as
the Registrar may allow.
88 The Registrar may on application made either before or after the expiry date for entering the national phase, extend the
period for a further period of no more than three months.
89 S 43E of the Patents Act 57 of 1978.
90 Ss 40; 43F(3)(h) of the Patents Act 57 of 1978.
92 2011 BIP 41 (CP).
93 S 42 of the Patents Act 57 of 1978; reg 46 of the Patent Regulations 1978.

Again, in the case of University of Pretoria v Registrar of Patents, the court found
that if acceptance is not advertised within this three month period and if there is no
request for an extension of the period for advertisement before it expires, the application
lapses.
The date of publication of the notice of acceptance in the Patent Journal is deemed to be
the date of grant of the patent. In due course, the Registrar issues a patent certificate, also
known as Letters Patent, which certifies that the applicant has been granted a patent in
respect of a particular invention.94
As indicated above, a national phase patent application is published in the international
phase at approximately 18 months after the earliest priority date.
In addition, any complete patent application which claims priority from a foreign patent
application automatically comes open to public inspection at 18 months from the earliest
priority date.
However, a complete patent application which claims priority from an earlier South
African patent application, or which claims no priority, only becomes open to public
inspection on the date of grant.
Public inspection means that the patent or patent application and all documents lodged
in support thereof are open to public inspection at the patent office. There is no publication
of the whole application or patent, over and above the publication of the abstract of the
patent in the Patent Journal.95
5.3.4 Grant, duration and effect

On grant, the patentee is granted for the duration of the term of the patent, the right to
exclude other persons from making, using, exercising, disposing or offering to dispose of, or
importing the invention into South Africa so that he or she shall have and enjoy the whole
profit and advantage accruing by reason of the invention.
A patent is in essence a negative right, it is not a right to do anything but rather a right
which allows the patentee to exclude others from doing certain things. This will be discussed
in more detail later in the infringement section of this chapter.
A patent is granted from the date of publication in the Patent Journal96 and
it has effect from the date of grant. Thus the patentee can only act against infringements of
the patent which are committed after the date of grant. However, no proceedings for
the infringement of a patent may be instituted within a nine month period from the date
of grant, without leave of the court and on good cause shown.97 The reasoning behind the
nine month moratorium period is that as South African patent applications are not examined
on the merits, this period allows third parties an opportunity to be made aware of the
existence of the right and to investigate the validity of the patent and, if necessary, to
challenge the patent.
The term of a South African patent is 20 years from the date of filing of a
complete application in South Africa or 20 years from the international filing date of a
South African national phase application of a PCT patent application, subject to the payment
of renewal fees. There is no provision in the Act for the extension of a patent beyond the
20 year term.
94 S 44 of the Patents Act 57 of 1978, Schedule 5 to the Patent Regulations 1978.

96 S 44(1) and 44(2) of the Patents Act 57 of 1978.

5.4 Amendment and correction

Once a patent application has been filed or a patent granted, the most common procedure
that it will undergo is amendment and/or correction of the specification and/or
claims. Amendments or corrections are generally carried out in order to ensure that
the patent or patent application is maintained in a valid form. In practice, more of the
litigation related to patents centres around amendments or corrections than any other cause
of action. Accordingly, the rules relating to the amendment and/or correction of patents are
very important.
5.4.1 Corrections – section 50

Section 50 of the Act deals with issues relating to the correction of patents, patent
applications, documents lodged in support of a patent application and/or the register. The
Registrar or the Commissioner may authorise the correction of any clerical error or error in
translation in any patent, application for a patent or document lodged in pursuance of such
an application, or in the register.98
There have been three cases which have dealt with what a clerical error is and the nature
of such an error.
In McCauley Corporation Ltd v Brickor Precast (Pty) Ltd99 the court held that a clerical
error is a careless unintentional error. In this regard the court stated:
… A careless error because it is unintentional is in my view a clerical error. It would

still be a clerical error if the error was inadvertently made in an earlier draft and was
then unintentionally transferred to a later draft.
In qualification of this statement the court pointed out that a deliberate error for the
purposes of detecting plagiarism or an error made out of sheer ignorance would not be
considered to be clerical in nature.
In the case of Hokuriku Pharmaceutical Co Ltd v Cipla-Medpro (Pty) Ltd100 the court
departed from the ruling in McCauley Corporation supra, and held that an error made in
the course of a mechanical process, even if made out of sheer ignorance, would be
considered to be a clerical error. In this particular case the attorney preparing the
documents for a patent application had inadvertently omitted the names of two of the
inventors. As a result of the position taken by the court it was held that the application
documents could be corrected.
And finally in Pfizer Ltd and Another v Cipla Medpro (Pty) Ltd and Others101 the court
held that a mindless error made through inadvertence would clearly fall within the dictum
in the McCauley Corporation case, and thus be regarded as a clerical error.
In light of the above it is apparent that in order to be considered a clerical error, the error
must have been carelessly made, inadvertently made in writing or copying something or the
error must be an error in a mechanical process, such as copying.
Section 50 also provides for the amendment of any document for the amending of which
no express provision is made in the Act. In other words, this covers amendments which are
not the correction of clerical errors as discussed above, or amendments provided for in

99 1989 BP 314 (CP).
100 1999 BIP 384 (CP).
101 2005 BIP 1 (CP).

section 51, as discussed below. This provision may be used, for example, to amend a
document generated in the international phase of a national phase application, where there
is some error or omission in the document.
5.4.2 Amendments – section 51

South African patent applications are not examined on their merits prior to grant. Thus, there
are South African patents which remain on the register with claims which are invalid as a
result of their lacking novelty and/or inventiveness in the light of prior art, or which are invalid
for other reasons. Often, an applicant or patentee is aware of the invalidity of its claims, as
these issues were raised during the examination of corresponding foreign patent applications.
Although it is not imperative to make voluntary amendments, and there is no obligation
in the Act on an applicant for a patent (or the patentee of a granted patent) to amend a patent
application or patent in the light of prior art of which he becomes aware, our courts tend to
penalise a patentee who allows a patent to be maintained in an invalid form.
Section 51 of the Act makes provision for the amendment of patents and patent
applications and sets out the requirements for amendment in each case. The Act makes
provision for:
1. the amendment of a provisional application;
2. the amendment of a patent application prior to grant;
3. the amendment of a patent after grant; and
4. the amendment of a patent in the course of legal proceedings.
When applying for any amendment it is necessary for the applicant for amendment (i) to
set out the nature of the proposed amendment and (ii) to provide full reasons for any
amendment made.102
In practice, the nature of the amendment is set out by indicating what parts of the
specification and/or claims the applicant for amendment proposes changing.
The requirement of providing full reasons for an amendment has been the subject of several
leading cases,103 but was succinctly dealt with by the court in Byk Gulden SA (Pty) Ltd v AB Hässle
and Others.104 In this matter the court held that the determination of whether full reasons have
been provided is a factual question, which depends on the nature and effect of the amendment
sought, and in essence, the reasons must enable the Registrar or court to exercise its proper
discretion as to whether or not to allow the amendment. Further, the reasons must allow a
possible objector to the amendment to decide whether or not to oppose the amendment.
Thus, the reasons given must be comprehensive and must include the underlying reasons
or motivations for the proposed amendments. In addition, the reasons given must be the
true reasons.105
There are additional requirements for amendment, depending on what is being
amended. These additional requirements are dealt with below.

103 Dantex Explosives (Pty) Ltd v Sasol Chemical Industries (Pty) Ltd 1992 BP 265 (CP); Water Renovation (Pty) Ltd v Gold
Fields of South Africa Ltd 1994 BP 73 (CP); Byk Gulden SA (Pty) Ltd v AB Hässle and Others 1995 BP 332 (CP); Multiknit
2000 (Pty) Ltd v Industrial Netting & Mining Products (Pty) Ltd 1995 BP 381 (CP); Procter & Gamble SA (Pty) Ltd v Carlton
Paper of South Africa (Pty) Ltd and Another 1996 BP 470 (T); Auergesellschaft GmbH v African Oxygen Limited 2001 BIP
53 (CP); B Braun Melsungen AG and Another v Specialised Systems Electro Medical (Pty) Ltd and Others 2005 BIP 22
(CP); Glaxo Group Ltd v Cipla Medpro (Pty) Ltd and Others 2007 BIP 91 (CP).
104 1995 BP 332 (CP).
105 Auergesellschaft GmbH v African Oxygen Limited 2001 BIP 53 (CP).

5.4.2.1 Amendment of provisional patent applications

The correction of a mistake, including an obvious mistake, is the only allowable type of
amendment that can be made to a provisional patent application.106
It is further important to note that the amendment of a provisional specification may not
introduce new matter or matter that is not in substance disclosed in the specification prior
to its amendment.
An applicant who has made further developments in respect of his invention and who
requires the scope of his protection to be broadened is required to file a further provisional
specification in order to protect the new subject matter. When a complete or PCT patent
application is filed thereafter, the two or more provisional specifications may be
amalgamated, and priority may be claimed from both or all.107
5.4.2.2 Amendment of a patent application prior to grant

Prior to grant, no amendment of a complete specification will be allowed if the effect of the
amendment would be the introduction of new matter or matter not in substance disclosed
in the specification before its amendment.108
This involves ascertaining what is disclosed, either explicitly or implicitly, in the
specification before amendment, ascertaining what is disclosed in the amendment, and
comparing the two to determine whether any matter has been added which was not present
before amendment.109
Another way of setting out the requirement is found in the case of the Richardson-Vicks’
Patent, quoted with approval by our courts:
I think the test of added matter is whether a skilled man would, upon looking at the
amended specification, learn anything about the invention which he could not learn
from the unamended specification.110
Further, prior to grant, no amendment of a complete specification will be allowed, if the

specification as amended would include a claim which is not fairly based on subject matter
disclosed in the specification before amendment.111 This aspect is dealt with in more detail
in paragraph 5.5.4.6 below. However, the following passage from the Bateman Equipment
Ltd and Another v The Wren Group (Pty) Ltd case112 summarises the import of this
requirement in so far as amendments are concerned:
It is a basic requirement of patent law that a patentee is not entitled to claim more
than he has disclosed and identified as the invention in the specification. That does
not mean that the claim may not extend beyond the examples or embodiments
disclosed, but only that the claim may not be for something not covered by the
general or generalised disclosure of the invention. … Transposed to the amendment
stage, and taking into account that the effect of an amendment is retrospective, the
objective of s 51(6)(b) is to prevent an inventor from claiming ex post facto something

109 Beecham Group Limited v Bristol-Myers Company 1979 BP 91 (CP) at 101.
110 [1995] RPC 566 at 576, quoted in SHFL Entertainment Inc (formerly Shuffle Master Inc) v TCS John Huxley (Pty) Ltd
and Another 2013 BIP 92 (CP).
112 1999 BIP 413 (SCA) at 419.

not contained in his original disclosure which has become available for public
inspection. … The provision should be interpreted in a broad common sense way …
and that it should be given a liberal interpretation so as to permit any fair
amendment which has already in substance been disclosed.
5.4.2.3 Amendment of a patent after grant

After grant, the applicant for amendment needs to comply with both of the requirements
for the amendment of a patent application prior to grant and thus the amendment may not
introduce new matter and the claims must be fairly based on subject matter contained in
the specification prior to amendment.
Additionally, the applicant for amendment must ensure that all of the amended claims
fall wholly within the scope of a claim included in the specification before amendment. The
scope of a claim is the sphere or area covered by a claim, or the field or branch of knowledge
covered by a claim.113 Accordingly, the Registrar may refuse an amendment to a granted
patent if the claims, as amended, are broader in scope than the claims prior to amendment.
5.4.2.4 Amendment of a patent in the course of legal proceedings

If legal proceedings are pending in any court in relation to a patent application or a patent then
an application for the amendment of the patent application or patent must be made to that
court.114 For example, if a patent is the subject of a revocation application or a counterclaim for
revocation in infringement proceedings, and the patentee believes there may be merit in any of
the grounds of revocation, the patentee may make an application for amendment of the patent to
the court seized with the application for revocation or the infringement action as the case may be.
All of the requirements for the amendment of a patent after grant apply to the amendment
of a patent in the course of legal proceedings, thus the amendment may not introduce new
matter; the claims must be fairly based on subject matter contained in the specification prior
to amendment; and the amended claims must fall wholly within the scope of a claim included
in the specification before amendment.
The application for amendment may be opposed by the other party or parties to the
proceedings, and it is up to the court to decide whether or not to allow the amendment with
or without requiring that it be advertised first for opposition by third parties. Alternatively the
court may stay the pending proceedings and remit the application for amendment to the
Registrar to be dealt with in the usual way.
5.4.3 Procedure on amendment

An application for amendment of a provisional patent application is only considered by the
Registrar. Likewise, an application for amendment of a complete patent application prior to
grant is also only considered by the Registrar. The Registrar decides whether to allow or
refuse the amendment.
On the other hand, an application for amendment of a patent after grant must be
advertised for a two month opposition period in the Patent Journal. During this two month
opposition period third parties may oppose the amendment of the patent. The opposition
is brought by way of an application to court supported by affidavit evidence.
Finally, as mentioned above, if an amendment is sought during the course of
legal proceedings in respect of the patent or patent application, then the application for
113 Bristol-Myers Company v Beecham Group Limited 1980 BP 434 (T) at 443.

amendment must be brought to the court and it will be up to the court to decide whether
or not to allow the amendment.
In addition, an allowed amendment (whether to a patent application or a patent) may
be set aside at any time on application to the Court of the Commissioner of Patents, where
the amendment was made in conflict with any of the provisions of section 51 of the Act.115
The courts have held that the ‘provisions’ referred to are those relating to the addition of
new matter, the requirement for fair basis and that after grant, any amended claim must be
wholly within the scope of an existing claim. The term ‘provisions’ does not include the
requirement for full reasons to be given. In the case of Kimberly-Clark of South Africa (Pty)
Ltd v Procter & Gamble SA (Pty) Ltd116 the court said the following:
In short, no amendments may be made which would (i) introduce new matter or matter
not in substance disclosed in the specification before amendment and (ii) no claim not
fairly based on matter disclosed in the specification before amendment or (iii) include
a claim not wholly within the scope of a claim in the patent before amendment. These
limitations are fundamental to the scheme of the Act as I will later show. They are
designed to ensure that a patentee may not obtain a priority date … to which he is not
entitled and may never broaden his monopoly after his invention has been made known
to the public by public disclosure. Any amendment allowed in breach of these provisions
would, it is clear, be an amendment made in conflict with the provisions of the section.
5.4.4 Grounds of objection to amendment

An amendment may be objected to on a number of grounds, depending on when the
objection is raised. These grounds include:
1. failure to comply with any one of the requirements set out above;
2. following the incorrect procedure;117
3. continuing invalidity after amendment.118 The courts have the power to refuse to grant
an application for amendment where the patent after amendment would still be invalid
on one or more grounds.119 However, the courts have also held that where the validity of
the patent is the subject of debate in another forum, for example revocation proceedings,
it would be inappropriate to consider the issue in amendment proceedings;120
4. undue delay or prejudicial conduct on the part of the applicant for amendment.121 Undue
delay in filing an application for amendment can be a bar to the allowance of the
application. In this regard, the courts said the following:
The legal position on the question of delay on the part of a patentee in applying for
amendments has been considered in a number of cases. A deliberate intention to
delay knowing full well that some of the claims are invalid can in some circumstances

116 1998 BIP 228 (SCA).
117 Sanofi Aventis and Others v Cipla Medpro (Pty) Ltd and Another 2009 BIP 1 (CP).
118 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others 2011 BIP 1 (CP).
119 Auergesellschaft GmbH v African Oxygen Limited 2001 BIP 53 (CP); Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd
and Others 2011 BIP 12 (SCA).
120 Deton Engineering (Pty) Ltd and Another v J P McKelvey and Others 1997 BIP 113 (CP).
121 H Lundbeck A/S v Cipla Medpro (Pty) Ltd 2008 BIP 79 (CP); H Lundbeck A/S v Cipla Medpro (Pty) Ltd (No 2) 2008 BIP
107 (T).

be a bar to amendment. Even though a patentee never attempted to enforce them

he has created an area which prevented competitors from freely entering it.122
or,
5. the amendment is a mere stratagem.123 This ground of opposition finds basis in the case
of Water Renovation (Pty) Ltd v Gold Fields of SA Ltd, where the court said:
To elaborate, what the learned Judge wished to convey is that a Court can, in the
exercise of its discretion, refuse an amendment if the patentee attempts to elevate
what he regarded as immaterial and what is in fact inessential, to an essential integer
in order to save the claim. That may justifiably be termed a stratagem and is to be
distinguished from an amendment by way of a true disclaimer to save a claim. The
approach of the learned Judge cannot, in my view, be faulted.124
5.5 Revocation
The procedure for obtaining a South African patent does not involve substantive
examination of a patent application. Further, the Act does not make provision for third
parties to oppose the grant of a patent. The Act does, however, provide for the revocation of
a granted patent.
PAUSE FOR To examine or not to examine, that is the question

REFLECTION As mentioned above, the South African patent office is a non-examining patent
office. Accordingly, one could file a patent application for any invention which is
not new or inventive, for example the wheel, and as long as the formal requirements have
been met, a patent will be granted on the application. For some this situation is a cause for
concern as there is a view that the South African patent register is littered with invalid
patents. On the other hand, examination of patent applications on the merits is costly. This
is mainly due to the fact that the patent examiners need to be technically qualified people
with some knowledge of patent law who are employed by the government to examine patent
applications. The Act does, however, contain ‘checks and balances’ which ensure that the
patentee of an invalid patent is not able to enforce its rights. Specifically, section 68 of the
Act precludes a patentee from relief for infringement of its patent if any of the claims of the
patent are invalid. It is thus up to the patentee to ensure that its patent is maintained in a
valid form at all times.
5.5.1 The absolute nature of the grounds

Section 61 of the Act lists the grounds upon which a South African patent may be revoked.
Section 61(1) makes it clear that the list of grounds for revocation is exhaustive and that no
other grounds of revocation can be relied upon.125 The absolute nature of the grounds of
revocation was confirmed by our courts in Buzzbee (Pty) Ltd v Registrar of Patents.126 Further,
122 South African Druggists Ltd v Bayer Aktiengesellschaft 1989 BP 222 (A) at 229; Also H Lundbeck A/S and Another v Cipla
Medpro (Pty) Ltd 2008 BIP 79 (CP).
123 1993 BP 493 (A).
124 Water Renovation (Pty) Ltd supra at 514.
125 S 61(1) of the Patents Act 57 of 1978 reads – ‘…on any of the following grounds only…’ .
126 2010 BIP 42 (CP).

it is apparent that a patent can only be revoked in terms of the law under which it was
granted. In other words, where the Act has been amended, the Act before amendment will
apply to those patents and patent applications filed before the date of amendment of the
Act, unless the amendment is favourable to the applicant or patentee.127
5.5.2 The applicant for revocation

Section 61 provides that ‘any person’ may apply for the revocation of a patent. There is no
need for an applicant for revocation to show any interest in the outcome, although this would
usually be the case.
5.5.3 When an application for revocation may be brought

Section 61 provides that an application for revocation may be applied for ‘at any time’. In practice
this means that an application for revocation may be applied for from the date on which the
patent is granted to the date on which it expires, and even after expiry. Our courts have held that:
A patent which has expired is nevertheless capable of being revoked, because

revocation dates back to the date of the grant of the patent, and therefore revocation
can affect claims for infringement or for royalties.128
5.5.4 The grounds

Any one or more of the grounds for revocation may be relied upon by any person in order
to bring an application for revocation. Further, in infringement proceedings, a defendant
can either counterclaim for the revocation of a patent, or raise any of the grounds upon
which a patent may be revoked, as a defence in the infringement proceedings.
The grounds for revocation of a patent129 are:
(a) that the patentee is not a person entitled under section 27 to apply for the patent;
(b) that the grant of the patent is in fraud of the rights of the applicant or of any
person under or through whom he claims;
(c) that the invention concerned is not patentable under section 25;
(d) that the 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;
(e) 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 such invention;
(f) that the claims of the complete specification concerned are not—
(i) clear; or
(ii) fairly based on the matter disclosed in the specification;
(g) that the prescribed declaration lodged in respect of the application for the patent
or the statement lodged in terms of section 30(3A) contains a false statement or
representation which is material and which the patentee knew or ought
reasonably to have known to be false at the time when the statement or
representation was made;
127 S 61(1)(e) and (g) were amended by the Patents Amendment Act 20 of 2005 which came into force on 14 December 2007.
128 Wright Boag & Head Wrightson (Pty) Limited v Buffalo Brake Beam Company 1965 BP 222 (CP) at 223.

(h) that the application for the patent should have been refused in terms of section
36;
(i) that the complete specification claims as an invention a microbiological process
or a product thereof and that the provisions of section 32(6) have not been
complied with.
The grounds for revocation generally find basis in a patentee’s failure to comply with a
relevant section of the Act.
Each of the grounds of revocation will now be dealt with.
5.5.4.1 The patentee is not entitled to apply130

A patent may be revoked if the patentee is not a person entitled under section 27 to apply
for the patent. The persons who are entitled to apply are dealt with in paragraph 5.3.1 above.
This ground may be raised by any applicant for revocation. There is no requirement that
the applicant for revocation should have any proprietorial interest in the patent.
5.5.4.2 The patent was granted in fraud of rights of the applicant131

A patent may be revoked on the basis that the grant of the patent was in fraud of the rights
of the person who has applied to have the patent revoked; alternatively, that the grant of the
patent was in fraud of the rights of any person under or through whom the applicant for
revocation has claimed.
This ground may only be raised by persons who assert that they have a proprietorial
interest in the patent, for example because the applicant for revocation claims to be an/the
inventor of the invention claimed, or because the applicant for revocation claims to be the
true owner of the patent.
In Botha v Lindeque132 the court held that the term ‘fraud’ should be construed as
conduct on the part of the applicant that is deliberately designed to deprive the true
proprietor of his rights. Accordingly, ‘fraud’ in this context does not refer to the criminal act
of fraud, rather it relates to dishonest conduct by a party.
Section 63 of the Act provides the true owner with relief in the circumstances where a
patent has been granted, to a third party, in fraud of the true owner’s rights. Where a patent
is revoked on the ground of fraud, or a patent fraudulently obtained has been surrendered
and revoked, the Commissioner may direct the grant to the true owner of a patent for the
whole or any part of the invention, bearing the same date as the patent so revoked.
5.5.4.3 The invention is not patentable under section 25133

If any of the requirements for patentability, as set out in section 25 of the Act, are not met, a
patent will be open to revocation.134 Accordingly, a patent may be revoked if:
1. the invention is not considered to be an invention for the purposes of the Act;135
2. the invention is not new;136
3. the invention does not involve an inventive step;137

132 1955 BP 127 (CP).
136 S 25(1), (5), (6) and (7) of the Patents Act 57 of 1978.
137 S 25(1) and (10) of the Patents Act 57 of 1978.

4. the invention is not capable of being used or applied in trade or industry or agriculture;138
5. exploitation of the invention will encourage offensive or immoral behaviour;139
6. the invention is a variety of animal or plant or any essentially biological process for the
production of an animal or plant, not being a microbiological process or the product of
such a process;140
7. the invention was used secretly and on a commercial scale within South Africa; 141
and
8. the invention is a method of treatment of the human or animal body by surgery or
therapy or of diagnosis practised on the human or animal body.142
Each of the above requirements is dealt with in detail in paragraph 5.2. above.
5.5.4.4 Inutility143
If the invention as illustrated or exemplified in the complete specification cannot be
performed or does not lead to results and advantages set out in the complete specification,
then the patent may be revoked.144
This ground of revocation applies to the specification and not the claims. A patentee
has an obligation to describe how his invention is to be performed in the specification
by way of examples and/or drawings. If he does not meet this obligation his patent is
liable to be revoked.
There are two separate parts to this ground for revocation. The first is that the invention
cannot be performed. This may arise where a particular example given in the specification
does not actually work.145 The second is that the invention does not lead to the results or
advantages set out in the specification. This may arise where the patentee makes a promise
in his specification which cannot be met, for instance if a specification states that a process
gives 50% more yield than a prior art process, and the yield of 50% more cannot in fact be
achieved. An applicant for revocation may rely on either of these parts, or both, when
applying for the revocation of a patent.
Only a small quantum of utility is required. There is no requirement of practical or
commercial utility. Thus if a patentee can show that his invention works and leads to the
results or advantages set out in the examples and drawings, the patent will not be revocable
on this ground.
5.5.4.5 Insufficiency146
A patent may be revoked if 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 such invention.147

145 Marine 3 Technologies Holdings (Pty) Limited v Afri-Group Investments (Pty) Limited and Another 2013 BIP 67 (CP).

The enquiry into whether a specification is insufficient is a question of fact. Essentially,

one needs to ask ‘does the specification contain proper instructions for enabling a person
skilled in the art to put the invention into use?’148 If the answer is yes, then the specification
is not insufficient. On the other hand if the answer is no, then the specification is insufficient
and the patent is liable to be revoked.
The inventor is not required to theorise or explain how the invention works.149 However,
a person wishing to avoid infringement of a patent should not be obliged to embark on long
periods of testing and experimentation in an attempt to avoid producing the claimed
invention.150
5.5.4.6 Ambiguity and fair basis151

A patent may be revoked if the claims of a complete specification are not clear, or are not
fairly based on matter disclosed in the specification.
This ground only applies to the claims. The ground has two parts, firstly that the claims
are not clear and secondly that the claims lack fair basis.
On the issue of whether the claims are clear, our courts have ruled that it is the duty of a
patentee to state clearly and distinctly, either in direct words, or by clear and distinct
reference, the nature and limits of what he claims.152 The inventor must therefore clearly
define the scope of his monopoly so that third parties know what they may not do.
The rules relating to lack of clarity were summarised in the case of Bayer Pharma AG
(Formerly Bayer Schering Pharma AG) and Another v Pharma Dynamics (Pty) Ltd,153 as follows:
• The beacons of the monopoly are to be found in the claim alone, put conversely the
forbidden field must be found in the language of the claims and not elsewhere.
• ‘As a matter of interpretation of the claim, however, as pointed out by Trollip, J.A., in the
Gentiruco case, if certain words or expressions in the claims are affected or defined by
what is said in the body of the specification, the language of the claims must be construed
accordingly.’
• The degree of clarity of the definition of the subject matter for which protection is claimed
is reasonable certainty.
• A technical term must be interpreted in the light of the evidence given by witnesses
skilled in the relevant art.
• Words which have no special technical meaning are to be interpreted not by witnesses
but by the court and are to be given their natural and ordinary meaning as read in
context.
• ‘I add the following principle from Gentiruco A.G. v Firestone S.A. (Pty) Ltd 1972 (1) AD
589 at 615A–D:
Hence, if on such reading it appears that a word or expression is used, not in its
ordinary sense, but with some special connotation, it must be given that meaning.
Indeed the specification may occasionally define a particular word or expression
with the intention that it should bear that meaning in its body or claims, thereby
providing its own dictionary for interpretation.’
148 Reeves Brothers Incorporated and Spunnyfoam Laminations (Pty) Ltd v Furpile (Pty) Ltd 1971 BP 21 (CP) at 36A.
149 Lego M Lemelstreich Limited v Hydro-Plan Engineering Limited 1981 BP 1 (CP) at 8.
150 Unilever Limited v Colgate-Palmolive Company 1977 BP 200 (CP) at 212.
151 S 61(1)(f) of the Patents Act 57 of 1978.
152 Colgate-Palmolive Company v Unilever Limited 1981 BP 121 (CP) at 124.
153 (No 1) 2013 (BIP 1) (CP).

On the issue of whether the claims are fairly based on matter disclosed in the
complete specification, reference must be had to what has been disclosed by the
patentee in his specification. Our courts have held that ‘an inventor is in law entitled
to claim, and by inference predict, a wide field in spite of limited data. The reason
is that it may be impossible for the inventor at an early stage to determine the
exact boundaries of his invention.’154 Further, in this regard the UK courts have held
the following:
[I]n an enquiry as to fair basis the starting point was to look at the specification to
see what it was that the patentee was describing as his inventive concept. The next
stage was to construe the claims and see whether the disclosure made in the
specification justified the width of the monopoly defined. The presence of a
consistory clause was not conclusive, although it might be a relevant factor in
deciding the extent of disclosure in the specification. If, on a fair reading, the claims
for the invention were wider than the totality of disclosure in the specification, the
claim was not fairly based.155
5.5.4.7 False statement or representation156

A patent may be revoked if the prescribed declaration lodged in respect of the application
for the patent (contained in the Form P3) or the statement lodged in terms of section 30(3A)
(contained in the Form P26) contains a false statement or representation which is material
and which the patentee knew or ought reasonably to have known to be false at the time when
the statement or representation was made.
Section 61(1)(g) was introduced by the Patents Amendment Act 20 of 2005, which came
into force on 14 December 2007. Prior to the amendment, the old wording of the section
read ‘that the prescribed declaration lodged in respect of the application for the patent
contains a false statement or representation which is material and which the patentee knew
to be false at the time when the declaration was made’. Further, prior to the amendment, no
Form P26 had to be filed.
The old wording applies to any Form P3 signed before 14 December 2007 and the new
wording applies to any Form P3 or Form P26 signed on or after 14 December 2007.
The introduction of the wording ‘ought reasonably to have known’ has made this ground
of revocation far more onerous for applicants. This is because the new wording suggests that
a patentee will fall foul of this provision not only by knowingly making a false statement, but
also by making a negligent false statement.
A ‘material misrepresentation’ is any misrepresentation of fact, which would, if acted
upon by the Registrar, result in the applicant obtaining rights in something to which he is
not entitled in terms of the Act.157
The aspects of the Form P3 which can lead to an applicant making a misrepresentation
include falsely identifying or omitting an inventor, falsely stating that the applicant has
acquired the right to apply for the invention, falsely stating that there is no lawful ground for
revocation of the patent, and making a false claim to priority.
154 Stauffer Chemical Company and Stauffer Chemical (South Africa) (Pty) Ltd and FBC Agrochemicals (Pty) Ltd v Safsan
Marketing and Distribution Company (Pty) Ltd and Chemtrade (Pty) Ltd and Kempton Produce Supply (Pty) Ltd 1983
BP 209 (CP) at 262.
155 Glaverbel SA v British Coal Corporation [1994] RPC 443.
156 S 61(1)(g) of the Patents Act 57 of 1978.
157 Bendz Ltd and Another v South African Lead Works Ltd 1963 BP 409 (A) at 421A.

An overview of case law on material misrepresentations is to be found in Gallagher Group

Limited and Another v IO Tech Manufacturing (Pty) Ltd and Others.158 In this case, the
court found that the value of conclusions drawn from the state of the law prior to the present
Act may be limited, because of the change in the wording of the section. The court then
found that a
... misrepresentation must be assessed at the time when the statement or

misrepresentation is made and that it would offend both the clear language of the
section as well as the policy imperatives that seek to ensure good faith and honesty
on the part of patent applicants, if it was possible to simply amend out of the
consequences of a material misrepresentation made at the time with knowledge of
the falsity of its content.
The aspects of the Form P26 which can lead to an applicant making a misrepresentation
include falsely stating that the invention for which protection is claimed is not based on or
derived from an indigenous South African biological resource, genetic resource or traditional
knowledge or traditional use. This is dealt with further in chapter 8.
5.5.4.8 Frivolous, immoral or illegal inventions and nuclear inventions159

A patent may be revoked on the ground that the application for the patent should have been
refused in terms of section 36.160
As mentioned in paragraph 5.2.2 above, section 36 provides the Registrar with the power
to refuse an application which is frivolous in that it claims anything obviously contrary to
well established natural laws,161 that use of the invention would encourage offensive or
immoral behaviour,162 that the invention might be used in any manner contrary to law163 or
that the invention relates to the production, processing or use of nuclear energy or nuclear
material and the required procedures have not been followed.164
An applicant for revocation may apply to revoke a patent if he is of the view that the
Registrar should have refused the application on one or more of these grounds.

A patent may be revoked if the complete specification claims as an invention a
microbiological process or a product thereof and the provisions of section 32(6) have not
been complied with.166
Section 32(6) deals with the deposit of a microorganism with a recognised depositary
authority, in compliance with the requirements of the Budapest Treaty on the International
Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure.167 The
deposit of microorganisms may be required for patenting purposes in order to ensure that
the requirement of sufficiency, as discussed above, is met.
158 2013 (BIP) 45 (CP) at para 27 ff.

159 S 61(1)(h) of the Patents Act 57 of 1978.
160 S 61(1)(h) of the Patents Act 57 of 1978.
165 S 61(1)(i) of the Patents Act 57 of 1978.
166 S 61(1)(i) of the Patents Act 57 of 1978.
167 www.wipo.int/budapest.

5.5.5 Procedure
Patent revocation proceedings take the form of an application in the court of the
Commissioner of Patents.
Patent revocation proceedings are commenced by a party serving an application for
revocation on the patentee and lodging it at the Patent Office. The application for revocation
is made on Form P20, and must have a statement of particulars, setting out the grounds on
which the application for revocation is based, annexed to it.168
Within two months of the date of lodging and service of the application for revocation,
the patentee must serve and lodge a counterstatement in the form of a plea.
Within two months of the date of lodging and service of the counterstatement, the
applicant for revocation must serve and file its evidence in the form of one or more
affidavits.169
Within two months of the date of lodging and service of the applicant’s evidence, the
patentee must serve and file its answering evidence, in the form of one or more affidavits.170
Within two months of the date of lodging and service of the patentee’s answering
evidence, the applicant must serve and file its replying evidence. The replying evidence is
in affidavit form and is confined to matters strictly in reply to the answering evidence.171
Thereafter, no further evidence is filed by either party except with leave or direction of
the Commissioner of Patents.172
Once all evidence has been filed, the applicant for revocation (or if he fails to do so, the
patentee) may request a date for the hearing.173
The Commissioner of Patents has to decide whether the patent is to be revoked or
whether, subject to any amendments, the patent is to be upheld.
5.5.6 Partial validity

Section 68 of the Act specifically prevents a patentee from enforcing its patent if a single
claim is found to be invalid.174 Accordingly, where in proceedings for infringement, one claim
is found to be valid and infringed, but another claim is found to be invalid, the patentee will
not be granted relief for infringement until such time as the invalid claim has been amended
or deleted.
For this reason, a patentee should ensure that its patent is maintained in valid form at
all times and, if necessary, make any application for amendment to cure an invalidity before
launching infringement proceedings.
In addition, in cases where a patent is found to be invalid, whether partially or wholly,
and section 68 does not apply, it is customary for courts to give the patentee an opportunity
to apply for amendment, before the revocation order is made final.175

169 Reg 90(2) of the Patent Regulations 1978.
170 Reg 90(3) of the Patent Regulations 1978.
175 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others 2011 (BIP) 12 (SCA) at para [6].

5.6 Infringement
5.6.1 Locus standi

A patentee has the locus standi to institute an action for infringement.176 A licensee under a
patent has no independent right to institute infringement proceedings. However, a patentee
must give notice to every licensee who is recorded as such in the register, who is then entitled
to intervene as a co-plaintiff.177
5.6.2 Determination of infringement

In order to determine whether or not there has been an act of infringement of a patent one
must:
1. decide whether the act alleged to have been done by the defendant is of such a nature
that it could constitute an infringement of the patent or whether the act is excusable;
2. construe the claims of the patent in order to determine whether the alleged infringement
falls within the scope of any of the claims; and
3. establish whether the defendant has a valid defence.178
The test for infringement is thus essentially a comparison of the claims of the patent
specification with the alleged infringing article or process, or both.179
5.6.3 Acts of infringement

Section 45 of the Act defines the effect of a patent and in essence sets out which acts the patentee
may prevent third parties from committing in respect of its invention. These acts fall within the
exclusive domain of the patentee. The section states that the effect of a patent is to grant to the
patentee, in South Africa, for the duration of the patent, the right to exclude other persons from
making, using, exercising, disposing or offering to dispose of, or importing the invention, so that
he or she shall have and enjoy the whole profit and advantage accruing by reason of the invention.
5.6.3.1 Making
The word ‘make’ means ‘to form by putting parts together or combining substances, to alter
something so that it forms something else, to cause to become or to constitute, amount to
or serve as’.180
The making of a patented article for sale, even though not followed by an actual sale, is
an act of an infringement.
Our courts have held that a purchaser has an implied licence to repair a patented article,
but cannot, under the guise of repair, make an article which is essentially new.181
5.6.3.2 Using
The act of using an invention means to ‘to put into practice or operation; to carry into action
or effect’.182

178 Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA).
179 Letraset Limited v Helios Limited 1972 BP 243 (A) at 283 E.
180 Oxford Online Dictionaries www.oxforddictionaries.com/access.
181 Dana Corporation v Rhobrake (Pty) Ltd 1992 BP 297 (CP).

For example the use of an industrial process which is the subject of patent rights
by a person who is not authorised to do so by the patentee, will amount to an act of
infringement.
Innocent possession of a patented article may not amount to use, but possession of a
patented article with the intention of using it for trade purposes does amount to use.183
Experimental use of an invention amounts to an infringement if the experimenter uses
the invention.184
Use is, however, limited by the so-called Bolar provision in section 69A. This section
makes provision for use of an invention in order to obtain regulatory approval, and is
discussed below in paragraph 5.6.5.
5.6.3.3 Exercising
The act of exercising an invention means ‘to put into operation; to employ, apply, make use
of’.185 This act of infringement is of particular application to a process or method which is
normally exercised, that is carried out, as against a machine or article or composition of
matter which is generally used.
5.6.3.4 Disposing of
The act of disposing of an invention means ‘to bestow, make over; to deal out, distribute’.186
It is to be noted that ‘disposing of’ an invention has a broader meaning than the act of
‘selling’. The term disposing of is broad enough to encompass acts such as giving away for
no value, loss of physical possession and destruction.
5.6.3.5 Offering to dispose of

In an English case it was held that ‘the possession of an infringing article, accompanied by
exposure for sale, even without the proof of any actual sale, is actionable infringement’.187 It
is likely that our courts would follow this approach. In other words, if you offer to dispose of
an article by means of an advertisement, and you are in possession of that article, even if no
sale or the like takes place, this would be an act of an infringement, namely an offer to
dispose of an infringing article.
5.6.3.6 Importing
The act of importing means that the importation into South Africa of a patented article
which is the subject of a South African patent is an act of infringement of the patent. In its
broad sense, the term importing means ‘to bring in from an outside source or to bring in
from abroad’.188
It is important to note that South African law distinguishes between goods in transit and
imported goods. Goods in transit are goods which are not destined for the South African
market. Accordingly, if patented articles are in transit via South Africa to another country,
an act of importation has not been committed, as the goods are not destined for the South
African market.
183 Black and Decker Inc v Verimark Holdings (Pty) Ltd and Others 1996 BP 521 (CP) at 532.
184 Stauffer Chemicals Chemical Products Division of Chesebrough-Pond’s (Proprietary) Ltd v Monsanto Company 1987 BP
37 (T) at 44.
187 No-Fume Ltd v Frank Pitchford & Co [1935] 52 RPC 231.

5.6.4 Presumptions in relation to new substances

Section 67(1) of the Act makes provision for certain presumptions relating to patents for
products produced by a process. Where there is a patent for a process or for an apparatus
for producing a product, the patent is interpreted as extending to the product if the product
is produced by the patented process or apparatus.189
In view of this presumption, the importation into South Africa of a product made in
another country by a process which is patented in South Africa will amount to an act of
infringement of the South African patent. The onus rests on the patentee to show that the
alleged infringing product has been made by the patented process.
5.6.5 Marketing approval

Section 69A(1) of the Act, the so-called Bolar provision, provides that ‘it shall not be an act
of infringement of a patent to make, use, exercise, offer to dispose of, dispose of or import
the patented invention on a non-commercial scale and solely for the purposes reasonably
related to the obtaining, development and submission of information required under any
law that regulates the manufacture, production, distribution, use or sale of any product’.190
This section thus allows, inter alia, manufacturers of generic pharmaceutical, veterinary
and/or agricultural products to obtain registration of generic equivalents of patented
products with the Medicines Control Council (MCC) or other applicable registration
authority in South Africa, prior to the expiry of the patent, and to carry out the testing needed
for such registration, such as carrying out stability studies or bioequivalence testing. In view
of this exception, using a patented pharmaceutical product for the purpose of obtaining
MCC approval in South Africa is not deemed to be an act of infringement.
It should be noted, however, that the only actions which are permitted are those related
to obtaining the information necessary for registration and those associated with registration
itself. It is not permissible, for example, for a generic manufacturer to stockpile a product
prior to the expiry date of the relevant patent with a view to commercial sales immediately
after the patent expires.
5.6.6 Construction of the claims

Once it has been established that an act of infringement has been committed, the
determination of infringement commences. The claims define the scope of the monopoly
of a patent and the court will therefore look to the claims in order to determine whether
there is infringement.
Our courts have held that there is only one type of infringement, but for practical purposes
it is often convenient to deal with infringement by determining whether there is ‘literal
infringement’ of a claim and/or whether the claim is infringed once ‘purposively construed’.191
5.6.6.1 Literal infringement

Literal infringement is determined by comparing whether each of the integers of a claim is
present in an alleged infringement.
Accordingly, the claim is firstly divided into integers. Once the claim has been divided
into integers, each integer is compared with the alleged infringing product or process. If all
of the integers are present in the alleged infringing product or process, then the claim is

190 S 69A(1) of the Patents Act 57 of 1978.
191 Catnic Components Ltd and Another v Hill & Smith Ltd [1982] RPC 183.

infringed. If, however, certain integers differ or are not present in the infringing product or
process then the claim is held not to be infringed.
The rules relating to the establishment of literal infringement were succinctly set out in
Coflexip SA v Schlumberger Logelco Incorporated,192 where it was stated:
1. The rule of interpretation is to ascertain, not what the inventor or patentee may
have had in mind, but what the language used in the specification means; i.e.
what his intention was as conveyed by the specification, properly construed,
since he is presumed to have intended what his language means …;
2. To ascertain that meaning the words used must be read grammatically and in
their ordinary sense. Technical words of the art or science involved in the
invention must also be given their ordinary meaning, i.e. as they are ordinarily
understood in the particular art or science, to prove which extrinsic evidence is
admissible and usually necessary …;
3. A court may be instructed by expert evidence in so much of the art or science,
commonly known at the time, as is necessary to enable it to construe the
specification properly … ;
4. Subject to this exception, extrinsic evidence is not admissible to construe the
specification as such evidence would not necessarily be available to enable
interested members of the public to understand the specification when reading
it in the Patents Office or on its being published … ;
5. … the specification must be read as a whole … If on such a reading it appears
that a word or expression is used not in its ordinary sense, but with some special
connotation, it must be given that meaning. … ;
6. If a word or expression is susceptible of some flexibility in its ordinary
connotation, it should be interpreted so as to conform with and not to be
inconsistent with or repugnant to the rest of the specification … ;
7. Ordinarily, the meaning of the claims, as ascertained from their own language,
must prevail over the rest of the specification … If the meaning of a claim so
ascertained is clear and unambiguous, it is decisive, and cannot be restricted or
extended by anything else stated in the body or title of the specification … ;
8. If it appears from a reading of the specification as a whole that certain words or
expressions in the claims are affected by what is said in the body of the
specification, the language of the claims must be construed accordingly … ;
9. If a claim is ambiguous (in the wide sense) the body and the title of the
specification must be invoked to ascertain whether at least a reasonably certain
meaning can be given to the claim …;
10. The evidence of experts’ opinions on the meaning of the specification is
inadmissible and must be disregarded.
5.6.6.2 Purposive construction

Even if there is no literal infringement of a claim, there are circumstances in which the courts
may still find that a product or process infringes a claim.
This approach developed firstly as the so-called ‘pith and marrow’ doctrine under British
law. The pith and marrow doctrine was set out in Frank & Hirsch (Pty) Ltd v Rodi &
Wienenberger Aktiengesellschaft193 as follows:
192 2001 BIP 1 (CP) at 5.

193 1960 BP 162 (A).

… assume that A, B and C are essential features of an invention as claimed and that D,
though mentioned in the claim, is in fact not an essential feature. If the alleged infringer
omits A or B or C in his apparatus … he does not infringe the patent. To infringe he
must take the whole of the essentials of the invention. So far as D is concerned it does
not matter what he does. If he has taken A and B and C he has infringed, whether he
leaves D out entirely or keeps it or substitutes a mechanical equivalent for it.
The doctrine of pith and marrow was further developed into the concept which has become
known as purposive construction, as a result of the English case Catnic Components Ltd &
Another v Hill & Smith Ltd.194 Purposive construction of a claim requires the claim to be
divided into its relevant integers. Once the claim has been divided into its integers a
determination is made as to which of these integers are ‘essential integers’. The doctrine of
purposive construction was succinctly stated by the court in Catnic supra as follows:
A patent specification should be given a purposive construction rather than a purely

literal one derived from applying to it the kind of meticulous verbal analysis in which
lawyers are too often tempted by their training to indulge. The question in each case
is: whether persons with practical knowledge and experience of the kind of work in
which the invention was intended to be used, would understand that strict
compliance with a particular descriptive word or phrase appearing in a claim was
intended by the patentee to be an essential requirement of the invention so that any
variant would fall outside the monopoly claimed, even though it could have no
material effect upon the way the invention worked …
In order to determine what are and what are not the ‘essential integers’ of a claim, the
specification has to be read and interpreted with the understanding of persons with practical
knowledge and experience of the kind of work in which the invention was intended to be
used and in light of what was generally known by such persons at the priority date of
the patent.195
When interpreting the scope of the claim, the court will consider which of the integers
are essential to the invention, and which are inessential, and will then disregard the
inessential integers in determining whether there is infringement.196
5.6.7 The role of expert evidence

The role of expert evidence and the way the court should approach expert evidence is dealt
with above under the heading of literal infringement.
5.6.8 Defences
The defences to infringement are not listed in the Act and thus any defence may be raised by an
alleged infringer. Among others the following have been recognised as defences to infringement:
• non-infringement of the patent;197
194 [1982] RPC 183 at 242–243.

195 Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd 1982 BP 421 (A); Stauffer Chemical
Company and Stauffer Chemical (South Africa) (Pty) Ltd and FBC Agrochemicals (Pty) Ltd v Safsan Marketing
and Distribution Company (Pty) Ltd and Chemtrade (Pty) Ltd and Kempton Produce Supply (Pty) Ltd 1983 BP 209 (CP)
at 262.
196 Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger Aktiengesellschaft 1960 BP 162 (A).
197 Murray v Vodacom (Pty) Ltd and Another 2008 BIP 31 (CP).

• invalidity of the patent;

• exhaustion of rights;198
• the Gillette defence;199
• leave and licence;200
• acquiescence, election, waiver201 and estoppel.202
PAUSE FOR A defence called Gillette

REFLECTION The Gillette defence comes from a decision203 from the House of Lords in the UK in relation
to a patent covering a safety razor. The defence raised to an action for infringement of the
patent, in short, was that the defendants had been making a safety razor for some time.
There were thus two possibilities – if the defendants’ safety razor fell within the scope of the
claims, then the patent was invalid for lack of novelty; alternatively, if the claims of the patent
were novel, then the safety razor of the defendants did not infringe. To quote from the case:
If the claims of such a patent were so wide as to include it, the patent would be
bad, because it would include something which differed by no patentable
difference from that which was already in possession of the public. Such a patent
would be bad for want of novelty. If the claims were not sufficiently wide to include
the defendant’s razor, the patentee could not complain of the public making it.
In other words, the defendants must succeed either on invalidity or on
non-infringement.
This is an interesting defence in that it puts the patentee on the horns of a

dilemma – if the patentee seeks a broad interpretation of the claims, they may
be found to be invalid for lack of novelty, but if the patentee seeks a narrower interpretation
of the claims, the alleged infringer may be able to escape a finding of infringement. It is
not clear whether this defence, as such, is good in South African law, but it can always be
pleaded in the alternative – as either lack of novelty or non-infringement.
5.6.8.1 Invalidity of the patent

The most usual defence offered is that the claims of the patent are invalid on one or more
grounds.
It is possible either to raise the invalidity of the patent as defence to an action for
infringement, or to counterclaim for revocation of the patent.
5.6.8.2 Leave and licence

This defence is usually based on an alleged grant of a licence under the patent from the
plaintiff/patentee to the alleged infringer.
198 Stauffer Chemical Company v Agricura Limited 1979 BP 168 (CP).

199 Gillette Safety Razor Company v Anglo-American Trading Company Ltd [1913] 30 RPC 465.
200 Beecham Group Ltd v The B-M Group (Pty) Ltd 1977 BP 14 (CP).
201 Netlon Limited and Van Leer South Africa (Pty) Ltd v Pacnet (Pty) Ltd 1977 BP 87 (A).
202 Water Renovation (Pty) Ltd v Gold Fields of South Africa Ltd 1993 BP 493 (A).
203 See Gillette Safety Razor Company supra.

For this defence, the alleged infringer pleads that he had a licence under the patent in
respect of which he is being sued. The licence may be express or implied.204
5.6.8.3 Exhaustion of rights

The doctrine of exhaustion of rights provides that once an article covered by a patent has
been sold anywhere, by or with the consent of the patentee or his licensee, the article may
later be dealt with by any other party as though it were not covered by a patent.205
For this defence, the alleged infringer pleads that he acquired the infringing article
directly or indirectly from the patentee and thus that the patentee’s rights over the article
have been exhausted. The Stauffer Chemical Co case supra sets out the principles to
determine whether the patentee’s rights have been exhausted.
The following principles in this regard can be distilled from the case:
1. Where a patentee himself sells or disposes of the patented article, that article is freed
from all restraints which the patentee’s monopoly had imposed upon it.
2. Where the patented article is disposed of by the patentee’s assignee or his agent, acting
within the scope of his authority, it is similarly freed from such restraints.
3. Where the sale of the patented article is by a licensee of the patentee, the matter must
depend on the extent of the authority conferred on the licensee by the licensor under
the licence or the agreement.
5.6.8.4 Acquiescence, election, waiver and estoppel

The defences of acquiescence and election may be considered as forms of waiver. For this
defence the onus is on the alleged infringer. He must show that the patentee, with full
knowledge of his rights, decided to abandon them, whether expressly or by conduct plainly
inconsistent with an intention to enforce them.206
The defence of estoppel arises where a patentee makes an election on an issue. Having
made the election, the patentee must abide by it.207
5.6.8.5 Ignorance not a defence

Ignorance of the existence of a patent is not a defence. Accordingly, a defendant cannot
claim that he was not aware of the existence of the patent and by so doing avoid the
consequences of infringement.
5.6.8.6 Invalidity of a single claim

Invalidity of a single claim is dealt with in paragraph 5.5.6 above.
5.6.9 Contributory infringement

The Act does not specifically recognise contributory infringement, but in recent years
contributory infringement has been held to form part of South African law.208
In the law of delict a person who aids and abets another to commit a delict is himself
guilty of a delict. The infringement of a patent right is a delict and it therefore follows that a
person who aids and abets another in infringing a patent will himself be regarded as an
infringer of that patent. It has also been held that a patent can be infringed by a person who
204 Netlon South Africa Ltd and Another v Pacnet (Pty) Ltd 1974 BP 237 (CP).
205 Stauffer Chemical Co v Agricura Ltd 1979 BP 168 (CP).
206 Netlon Ltd and Van Leer South Africa (Pty) Ltd v Pacnet (Pty) Ltd 1977 BP 87 (A) at 133.
207 Water Renovation (Pty) Ltd v Gold Fields of South Africa Ltd 1993 BP 493 (A).
208 Grande Paroisse SA v Sasol Ltd and Another 2003 BIP 11 (CP).

does not directly commit an infringing act, but who induces or procures another to commit
an infringing act.
The five requirements for a delict must be present in order for a patentee to prove
contributory infringement. These are:
1. an act or conduct;
2. wrongfulness or unlawfulness;209
3. fault;
4. harm; and
5. causation.
The acts of procuring, inducing, aiding and abetting may constitute acts of contributory
infringement. Accordingly, any person involved in these acts could be held to have infringed
a patent.
The alleged infringer’s subjective intent is an important factor in determining whether
or not there has been wrongful or unlawful conduct and hence infringement.
POINT TO How does one ‘contribute’ to infringement

PONDER A practical example of the concept of contributory infringement is to be found in the facts of
Dynamic Fluid Control (Pty) Ltd v LW Tank Systems CC.210 In this case the claims of the patent
related to ‘a method of venting air from a pipeline using a valve with certain characteristics’. The
defendant (D) was a manufacturer of valves which had ‘certain characteristics’. D sold its valves
to Company E, which installed the valves in a pipeline. The use of the valves in the pipeline
allegedly resulted in an act of contributory infringement by D as it was inducing, aiding and/or
abetting E to infringe the patent. However, the patentee did not provide evidence of the use of
the alleged infringing valve in E’s pipeline. Accordingly, the court held that under the circumstances
contributory infringement had not been proved.
5.6.10 Remedies211
A successful plaintiff in an action for infringement is usually entitled to the following relief:
1. an interdict;
2. an order for delivery up of any infringing product or any article or product of which the
infringing product forms an inseparable part;
3. damages;
4. a reasonable royalty in lieu of damages;
5. costs of suit.
An interdict ordering the defendant to refrain from further infringement is usually the first
prize for a patentee. If the defendant continues to infringe the patent and ignores the
interdict he or she may be committed for contempt of court.
An order for delivery up of any infringing product means delivery up for destruction.
A defendant is liable for damages in the same way he or she would be so liable for
committing any other type of wrong. In other words, the defendant must compensate the
209 Vari-Deals 101 (Pty) Ltd t/a Vari-Deals and Others v Sunsmart Products (Pty) Ltd 2007 BIP 69 (CP).
210 2011 BIP 79 (CP).

plaintiff for his or her patrimonial loss, actual or prospective, sustained through the
infringement. The enquiry is as follows:
1. What is the extent of the infringement, that is the quantity of infringing products that the
infringer has sold?
2. What proportion of the infringing products could or would the patentee have sold for
itself but for the infringement?
3. What profit could and would the patentee itself have made on selling them?212
It is sometimes very difficult to prove the exact quantum of damages suffered. It is not
unusual to ask the court initially only for an enquiry into damages so that complex questions
such as loss of profits and so forth can be left to be considered once the questions of patent
infringement and validity have been decided upon.
In lieu of damages, the plaintiff may, at his or her option, be awarded an amount
calculated on the basis of a reasonable royalty which would have been payable by a licensee
in respect of the patent concerned.
5.6.11 Procedure
Infringement proceedings are brought by way of action proceedings in terms of the Uniform
Rules of Court.
5.7 General
5.7.1 Restoration
As mentioned in paragraph 5.3.4 above, the duration of a patent is 20 years from the date of
application, subject to payment of renewal fees by the patentee. If a renewal fee is not paid
the patent will lapse.213 A six month grace period for the late payment of an unpaid renewal
fee is available to the patentee on application to the Registrar and subject to the payment of
an additional fee.214
Section 47 provides that where a patent has lapsed due to the non-payment of a renewal
fee within the prescribed period or within the six month grace period referred to above, the
patentee may apply to the Registrar for the restoration of the patent. Restoration of a lapsed
patent is, however, only possible if the patentee can show that the failure to pay the renewal
fee was unintentional and that there was no undue delay between the time when the
patentee became aware of the fact that the patent had lapsed and the bringing of the
application for restoration.
In order to provide legal certainty for third parties, section 48 of the Act provides for
the situation where a third party enters the South African market during the period in
which the patent concerned has lapsed and before it is restored. The third party would
rightfully be entitled to do so and a patentee would not be able to obtain an interdict and/
or damages preventing the third party from doing so. This situation is, however, conditional
upon the requirements that a six month period must have passed since the patent lapsed
and the patentee must not yet have filed an application for restoration of its patent, which
has been advertised.
212 Omega Africa Plastics (Pty) Ltd v Swisstool Manufacturing Co (Pty) Ltd 1978 (3) SA 465 (A) at 472.

Further, if a third party has spent time, money and labour with a view to entering the
South African market with a product but is prevented from doing so because the patent
concerned has been restored, then it may apply for compensation in respect of the time,
money and labour expended in bringing the product to market.215
5.7.2 Patents of addition

Where a patent has been applied for or granted for an invention (‘the main invention’) and
the applicant or patentee then makes an addition to, improvement in or modification of the
main invention, he may apply for a patent of addition.216
The advantages of a patent of addition are that the invention claimed in the patent of
addition need not involve an inventive step over the main invention, and that no renewal
fees are payable for a patent of addition.
A disadvantage of a patent of addition is that the term thereof is the same as that of the
patent for the main invention, which will inevitably be less than 20 years.
5.7.3 Assignment and licensing

Assignment and licensing are dealt with in chapter 9. The Act also makes provision for
compulsory licences in the case of abuse of rights.217


Chapter 6 Plant breeders’ rights
DAVID COCHRANE

6.1.1 The essence of plant breeders’ rights 284
6.1.2 International arrangements 284
6.2 The nature of plant breeders’ rights 284
6.2.1 Plant varieties 284
6.2.2.1 Breeder/applicant 285
6.2.2.2 Bred, discovered and developed 285
6.2.2.3 New 286
6.2.2.4 Distinct 287
6.2.2.5 Uniform 287
6.2.2.6 Stable 287
6.3 Registration 288
6.3.1 Registration procedure 288
6.3.2 Claiming priority 289
6.3.3 Denomination 289
6.3.4 Publication 289
6.3.5 Opposition to the grant of a plant breeder’s right 289
6.3.6 Provisional protection 290
6.3.7 Evaluation 290
6.3.8 Grant/refusal 290
6.3.9 Duration 290
6.4.1 Effect of a plant breeder’s right 291
6.4.2 Exceptions to infringement 291
6.4.2.1 General exceptions 291
6.4.2.2 Research/breeders’ exception 291
6.4.2.3 Farmers’ privilege 292
6.4.3 Remedies in respect of infringement 292
6.5 General 293
6.5.1 Revocation 293
6.5.2 Transfer of plant breeder’s right 293
6.5.3 Licensing 293
6.5.5 Marking 294
6.5.6 Plant variety listing 294

6.1 Introduction
6.1.1 The essence of plant breeders’ rights

Plant breeding has been practised since the beginning of civilisation and is a cornerstone of
agriculture. The breeding of new plants ranges from the breeding of new and improved crops
that produce higher yields and are resistant to drought, diseases and pests, to the breeding
of cut flowers simply for their beauty. The breeding of new plant varieties is time-consuming
and costly, and the rationale behind granting plant breeders’ rights is to grant plant breeders
a temporary monopoly in order to encourage breeders to develop new plant varieties for the
benefit of society.
Patent law in South Africa specifically excludes protection for plant varieties produced
by essentially biological processes. Plant breeders’ rights protection (also known as plant
variety protection) is aimed at protecting these new plant varieties. Plant breeders’ rights
also afford protection to new plant varieties that are produced by genetic engineering.
Plant breeders’ rights in South Africa are governed by the Plant Breeders’ Rights Act1 (the
Act) together with the Regulations2 in terms of the Act.
6.1.2 International arrangements

South Africa is a member of the World Trade Organization’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (the TRIPS Agreement). Article 27(3)(b) of the TRIPS
Agreement provides that members shall provide for the protection of plant varieties either
by patents or by an effective sui generis system or by any combination thereof.
South Africa has elected to protect plant varieties by way of the sui generis system of plant
breeders’ rights and is a member of the International Union for the Protection of New
Varieties of Plants (commonly referred to as UPOV)3. UPOV is an intergovernmental
organisation that was established by the UPOV Convention adopted in Paris in 1961. The
UPOV Convention provides the framework for plant breeders’ rights legislation for member
countries, together with guidance on how to test and examine plant breeders’ rights
applications.
Currently, there are 71 member countries of the UPOV Convention. South Africa is a
signatory to the UPOV Convention as revised in 1978. Although South Africa has not yet
acceded to the 1991 revision of the UPOV Convention, South Africa’s Plant Breeders’ Rights
Act already complies with it in many respects.
6.2 The nature of plant breeders’ rights
6.2.1 Plant varieties

The plant kingdom is vast. In order to name plants, the plant kingdom has been divided into
the following taxonomic groups (taxa): kingdom, division, class, order, family, genus and
species. The lowest group, the ‘species’, denotes a group of plants that are related, resemble
one another, are able to breed among themselves, but are not able to breed with members
of another species. Examples of species of plants are: apple, wheat, maize, onion, avocado,
1 15 of 1976.
2 GN R1186, GG 18266, 12 September 1999 as amended.
3 www.upov.int/portal/index.html.en.

tomato, strawberry, cabbage, lavender, olive, peach, grape and rose (to name but a few).
Within each species of plant we find different cultivars or ‘varieties’ of plants.
POINT TO Apples of many colours

PONDER Take the apple as an example: the domesticated orchard apple is the species Malus
domestica, of the genus Malus, in the family Rosaceae. There are about 7 500 different
varieties (cultivars) of apple which have been bred to thrive in different
environments and for different tastes and uses, such as cooking, fresh eating and cider
production. Two of the best known varieties of apple are the ‘Granny Smith’ and ‘Cripps
Pink’ (trade name Pink Lady®). The Granny Smith variety was discovered by Maria Ann
Smith in Australia in 1868. Granny Smith apples are light green in colour. The Cripps Pink
variety was originally bred by John Cripps in Australia in the 1970s by crossing the
Australian apple Lady Williams with a Golden Delicious apple in order to combine the
best features of both apples. Cripps Pink has a pink blush over a greenish-yellow base
skin. Granny Smith and Cripps Pink are examples of two different varieties of the apple
plant (Malus domestica). There are other characterising features that distinguish these
two varieties, but the main characterising feature is the colour of the fruit.
6.2.2 Requirements for registrability

A plant breeder’s right may be obtained by a plant breeder who has bred, or discovered and
developed, a variety of plant that is new, distinct, uniform and stable. The requirements of
distinctiveness, uniformity and stability are often abbreviated as the ‘DUS’ requirements.
6.2.2.1 Breeder/applicant
Only a ‘breeder’ may apply for a plant breeder’s right.4 The breeder is the person who
bred or discovered and developed the variety, the person’s employer (if the variety
was bred or discovered and developed in the course of employment), or the successor in
title of the person or employer.5 A breeder who applies for a plant breeder’s right is referred
to as the ‘applicant’.6
Only a person who is a citizen of or is domiciled in South Africa or a country that is a
member of the UPOV Convention or a country with which South Africa has a bilateral
agreement may apply for a plant breeder’s right.7
If the breeder is not resident in South Africa, the application must be submitted by a local
agent.8 The agent must be a resident in South Africa who has been authorised by the
applicant to act on its behalf.9
6.2.2.2 Bred, discovered and developed

The term ‘bred’ is fairly straightforward in that it indicates that a new plant variety has been
developed in a breeding programme (for example by crossing varieties) or through genetic
engineering.
4 S 6 of the Plant Breeders’ Rights Act 15 of 1976.

5 See s 1 of the Plant Breeders’ Rights Act 15 of 1976 for a definition of ‘breeder’.
6 See s 1of the Plant Breeders’ Rights Act 15 of 1976 for a definition of ‘applicant’.
8 S 7(2) of the Plant Breeders’ Rights Act 15 of 1976.

POINT TO Discovered and developed

PONDER The term ‘discovered and developed’ is more intriguing because it is applicable where
someone has discovered a variety of plant, whether in a cultivated environment such as an
orchard or vineyard, or in the wild. It is possible for a person to obtain a plant breeder’s right
for a newly discovered plant variety, provided the person takes the extra step of developing
the plant variety, through selection, so that it complies with the requirements of uniformity
and stability discussed below. In the case of Weltevrede Nursery (Pty) Ltd v Keith Kirsten’s
(Pty) Ltd and Another,10 Mr Kirsten alleged that he had discovered a new variety of Canna
(called Phasion) which he had subsequently developed; he obtained a plant breeder’s right
for the variety. However, the Supreme Court of Appeal found that Mr Kirsten had not in fact
discovered the variety. Mr Kirsten found the plant in the garden of a Mr Kruger, a well-known
nurseryman in Bethal, and Mr Kruger was fully aware of the Canna variety growing in his
garden. Mr Kirsten was therefore not the first person to learn about something previously
unknown and could not be said to have discovered it.
6.2.2.3 New
To qualify as ‘new’,11 propagating material or harvested material of a plant variety must not
have been sold or otherwise disposed of by, or with the consent of, the breeder, for purposes
of exploitation of the variety:
a) in South Africa for more than one year; and
b) in a UPOV Convention country, or a country with which South Africa has a bilateral plant
breeders’ rights agreement, in the case of:
i) varieties of vines and trees, for more than six years, or
ii) other varieties, for more than four years,
prior to the date of filing of the application for a plant breeder’s right.
‘Propagating material’ or ‘reproductive material’ is any part of a plant that can be used to
create a new plant such as seeds, cuttings, bulbs, tissue culture and other plant parts.
‘Harvested material’ is any material that has been gathered from a plant and may include
a part or the whole of the plant.
A breeder must file a plant breeder’s rights application in South Africa within one year
of the first sale or disposal of plant material of the variety in South Africa or, if the sale or
disposal has taken place in another country, for vines and trees within six years of the sale
or disposal, and for all other varieties within four years of the sale or disposal. Sale or disposal
of plant material of a plant variety outside South Africa in a country that is not a member of
the UPOV Convention would immediately destroy the novelty of that plant variety.
POINT TO The meaning of a sale

PONDER The definition of ‘sell’ in the Act is broad 12 and includes agree to sell, or to offer,
advertise, keep, expose, transmit, send, convey or deliver for sale, or to exchange or to
dispose of to any person in any manner for a consideration. Despite this broad
10 2004 (4) SA 110 (SCA); [2003] ZASCA 136.

11 S 2(2)(a) of the Plant Breeders’ Rights Act 15 of 1976.
12 See s 1 of the Plant Breeders’ Rights Act 15 of 1976 for a definition of ‘sell’.

definition, an Appeal Board13 held in the matter of Improvement Association and Unifruco
Ltd v The Registrar of Plant Breeders’ Rights and Sunworld Inc14 that in interpreting the term
‘sale’ it must, of necessity, be given a narrow interpretation. The term ‘sale’ does not include
the transfer of ownership (proprietary rights) in the variety and material of the plant variety
from the original breeder to a successor in title. In other words, the term ‘sale’ is limited to
the open commercial sale of plant material to the public.
6.2.2.4 Distinct
The plant variety must be distinct,15 that is, the plant variety must be clearly distinguishable
from any other variety of the same kind of plant the existence of which is a matter of common
knowledge on the date of application for the plant breeder’s right. The existence of a plant
variety will be regarded as common knowledge if that plant variety has already been
cultivated, exploited for commercial purposes, is held in a recognised reference collection,
or has been precisely described in a publication.16
The distinguishing features of a plant (referred to as the characteristics) are usually
the phenotypic (visible) features of the plant such as the shape of the leaf, shape and
colour of the fruit, colour of the flower or length of the stem. However, the features
can also be development characteristics such as the time of fruiting or flowering;
more recently the genetic characteristics (for example DNA fingerprinting) have been
recognised as well.
6.2.2.5 Uniform
The plant variety must be sufficiently uniform17 with regard to the characteristics of the
variety in question, subject to the variation that may be expected from the particular features
of the propagation thereof. In other words, the individual plants of the variety must be
uniform in their characteristics. To take the apple variety Cripps Pink as an example,
individual plants of the variety must all produce apples which display the characteristic of
a pink blush over a greenish-yellow base skin of the fruit.
6.2.2.6 Stable
The plant variety must be stable,18 that is when the plants are grown, the characteristics of
the individual plants must remain unchanged after repeated propagation or, in the case of
a particular cycle of propagation, at the end of such cycle. In other words, the variety must
reproduce true to form across generations. To take the apple variety Cripps Pink as an
example, plants across generations must all display the characteristic of a pink blush over a
greenish-yellow base skin of the fruit.
13 An Appeal Board constituted in terms of s 42 of the Plant Breeders’ Rights Act 15 of 1976.
14 1997 BIP 1 (RPBR).
15 S 2(2)(b) of the Plant Breeders’ Rights Act 15 of 1976.
16 The Notion of Breeder and Common Knowledge in the Plant Variety Protection System Based upon the UPOV
Convention, adopted by the Council of UPOV at its nineteenth extraordinary session on April 19, 2002.
17 S 2(2)(c) of the Plant Breeders’ Rights Act 15 of 1976.
18 S 2(2)(d) of the Plant Breeders’ Rights Act 15 of 1976.

POINT TO Piquante peppers

PONDER In the matter of Piquante Brands International (Pty) Ltd v OMC Marketing (Pty) Ltd and
Another,19 an Appeal Board20 held that the Registrar of Plant Breeders’ Rights had erred in
cancelling the plant breeder’s right for the ‘Piquante’ pepper variety on the basis that the
variety was not ‘fully developed’ at the time when the plant breeder’s right application was
filed. Furthermore, the term ‘fully developed’ (as used by the Registrar) is not recognised in
the internationally accepted terminology used in genetics and/or plant breeding literature.
The Act requires in terms of section 2(1) that apart from being ‘new’, a variety must be
‘distinct’, ‘uniform’ and ‘stable’ before it can qualify for plant breeders’ protection. Having
regard to the evidence of the breeder of the Piquante variety, the Appeal Board held that it
was clear that at the time of the filing of the application for a plant breeder’s right for the
Piquante variety, the breeder believed that uniformity and stability for that variety had been
reached. Peppers are self-fertilising plants. It is a scientific fact that, after six to eight
generations of in-breeding of a self-fertilising plant, the level of homogeneity reached is
sufficiently high for the plant to be regarded as uniform and stable. There was no evidence
as to the generation of the plant that the breeder originally discovered and then developed
through in-breeding. The only evidence, which was uncontested, was that the breeder was
satisfied that the Piquante variety was sufficiently uniform and stable at the time of filing the
application for the plant breeder’s right. Scientifically speaking, there is always a chance that
there will be shifts in homogeneity and it was those small shifts that the breeder was looking
for in the hope of attaining ‘the perfect plant’. The Appeal Board was therefore satisfied that,
on the evidence, the Piquante variety was sufficiently uniform and stable at the time of filing
of the plant breeder’s right application, and that therefore the grant of the right was correct
and should not have been cancelled.
6.3 Registration
6.3.1 Registration procedure

The Act is administered by the Department of Agriculture. The Registrar of Plant Breeders’
Rights is an officer of the Department of Agriculture who has been appointed by the Minister
of Agriculture.21
An application for a plant breeder’s right is submitted to the Registrar together with a
completed technical questionnaire and proof of payment of an application and examination
fee. If the applicant has obtained the right to apply from the original breeder, proof of the
applicant’s right to apply (for example a signed deed of assignment) must also be submitted.
Where the application is submitted by an agent on behalf of the applicant, the agent must
also submit a power of attorney.
The technical questionnaire is a document supplied by the Department of Agriculture
and there is a particular technical questionnaire for each type of plant. The technical
questionnaire makes provision for a technical description of the plant variety and the
19 2007 BIP 453 (RPBR).

20 An Appeal Board constituted in terms of s 42 of the Plant Breeders’ Rights Act 15 of 1976.

applicant must indicate the characteristics (features) of the plant variety that distinguish it
from other plants of the same type, and also supply photographs of the plant variety.
Within one year of filing the application, the applicant must submit or make plant
material available to the Department of Agriculture so that the Department can evaluate
(examine) the plant.
6.3.2 Claiming priority

By virtue of South Africa’s membership of UPOV (and the provision made for bilateral
agreements on plant breeders’ rights), it is possible for an applicant to claim priority from
an earlier plant breeder’s right application in another UPOV or agreement country, provided
the South African plant breeder’s right application is filed within a period of 12 months from
the date on which the application from which priority is claimed was deposited in the UPOV
or agreement country.22 The effect of claiming priority is that the plant breeder’s right
application is afforded an effective filing date of the filing date of the earlier application from
which priority is claimed. When a claim to priority is made, the applicant must submit a
copy of the previously filed application to the Registrar.
6.3.3 Denomination
When a plant breeder’s right is applied for, the new plant variety must be given a name,
that is a ‘denomination’. If a trade mark is used in conjunction with the denomination, the
trade mark and denomination must be clearly distinguishable.23 For example, the well-
®
known Peppadew peppers in South Africa are sold under the trade mark Peppadew
and the plant breeder’s right for this variety has the denomination Piquante. The reason ®
for this requirement is to ensure that when the plant breeder’s right protecting the variety
expires, the denomination of the variety also becomes available for public use. The plant
breeder’s right for the Piquante variety of peppers has expired and anyone is allowed to
grow and sell this variety under the name Piquante. No one is allowed to use the trade
®
mark Peppadew without permission, however. Another example is the Cripps Pink apple
variety mentioned above, which also bears the trade mark Pink Lady . The trade mark
®
®
Pink Lady can only be used by a licensed user, and the Cripps Pink apples sold under
this trade mark must comply with certain quality requirements.
6.3.4 Publication
Once the Registrar has accepted the documentation for a plant breeder’s right application,
particulars of the application are published in the Government Gazette.24
6.3.5 Opposition to the grant of a plant breeder’s right

Any person may lodge an objection to the grant of a plant breeder’s right with the Registrar
within six months from the date of publication in the Government Gazette of particulars of
the plant breeder’s right application.25 Procedures are provided for a counterstatement to
be lodged by the applicant and for the objection to be heard by the Registrar.26 The Registrar’s
decision may be appealed to an Appeal Board.27

23 Reg 5 of the Plant Breeders’ Rights Act 15 of 1976.
25 S 17 and reg 8 of the Plant Breeders’ Rights Act 15 of 1976.

6.3.6 Provisional protection

It is possible to obtain provisional protection, known as a ‘protective direction’,28 while a
plant breeder’s right application is pending. The applicant must, however, give a written
undertaking to the Registrar that he or she will not, while the protective direction is in force,
sell or consent to sell in South Africa any reproductive material of the variety in question.
While a protective direction is in force, anything that would constitute an infringement of a
plant breeder’s right is actionable.29
6.3.7 Evaluation
The Registrar evaluates the application and plant material that has been submitted to make
sure that the plant complies with the information provided in the technical questionnaire,
and with the registrability requirements (that the plant is distinct, uniform and stable). The
evaluation process usually takes from two to four years (depending on the type of plant).
The evaluation of slow-growing plants such as trees may take longer.
6.3.8 Grant/refusal
Once the Registrar has determined that a plant breeder’s right application conforms
to the requirements of the Act, the Registrar will issue a certificate of registration
and publish particulars relating to the grant of the application in the Government
Gazette.30
If the Registrar refuses the application, he or she will advise the applicant of the refusal
in writing and publish particulars relating to the refusal of the application in the Government
Gazette.31 The Registrar’s decision may be appealed to an Appeal Board.32
6.3.9 Duration
The duration of a plant breeder’s right is:
a) 25 years, in the case of vines and trees; and
b) 20 years, in all other cases,
calculated from the date on which a certificate of registration is issued (i.e. from the date
of grant).33
An annual renewal fee is payable on or before 31 January of each year during the currency
of the plant breeder’s right.34 It is possible to pay the renewal fee within a six-month grace
period, on payment of additional late payment fees.
6.3.10 Restoration
The Act contains no provisions for the restoration of a plant breeder’s right that has lapsed
due to non-payment of the annual renewal fee.

30 S 20(1) and (2) of the Plant Breeders’ Rights Act 15 of 1976.

6.4 Infringement
6.4.1 Effect of a plant breeder’s right

The effect of the grant of a plant breeder’s right is that any person wanting to undertake:
a) production or reproduction;
b) conditioning for the purpose of propagation;
c) sale or any other form of marketing;
d) exporting;
e) importing;
f ) stocking for any of the purposes referred to in paragraphs (a) to (e), of –
i) propagating material for the relevant variety; or
ii) harvested material, including plants, which was obtained through the unauthorised
use of propagating material of the relevant variety,
is only entitled to do so during the currency of the plant breeder’s right if authority is
obtained by way of licence from the holder of the right.35
The above rights also apply to varieties which are essentially derived from the protected
variety and which are not distinguishable from the protected variety and the production of
which requires the repeated use of the protected variety.36
Any person who carries out any of these acts without a licence will infringe the plant
breeder’s right.
Infringement proceedings are brought in the High Court. In these proceedings, should
a ground exist, a defendant can raise the invalidity of the plant breeder’s right as a defence
and the Court can adjudicate on the validity of the right.
6.4.2 Exceptions to infringement

There are various exceptions to infringement37 set out in the Act.
6.4.2.1 General exceptions

A person who procures propagating material of a protected variety in a legitimate manner
will not infringe a plant breeder’s right in respect of the variety if he or she:
a) resells the propagating material;
b) sells any plant, reproductive material or product derived from the propagating material
for any purpose other than the further propagation or multiplication thereof; or
c) uses the propagating material for private or non-commercial purposes.38
6.4.2.2 Research/breeders’ exception

A person who procures propagating material of a protected variety in a legitimate manner
will also not infringe a plant breeder’s right in respect of the variety if he or she:
a) uses the propagating material in the development of a new variety; or
b) uses the propagating material for bona fide research.39

38 S 23(6)(a) and (b) of the Plant Breeders’ Rights Act 15 of 1976.
39 S 23(6)(c) and (d) of the Plant Breeders’ Rights Act 15 of 1976.

This exception is important because it allows plant breeders to develop new and
improved plant varieties and build on plant varieties that are already protected, and
allows research on those varieties, even where there is a commercial objective for
the research.
In practice, the owners of plant breeders’ rights try to circumvent this
provision contractually by including a clause in the sale agreement (or packaging) of
the propagating material that disallows the use of the material for further development
of the variety.
6.4.2.3 Farmers’ privilege

A farmer who procures propagating material of a protected variety in a legitimate
manner and grows plants from the propagating material on a piece of land is allowed
to save harvested material from the plants and replant the material on the same piece
of land.40
This provision in the Act, called ‘farmers’ privilege’, is there to allow subsistence farmers
to save seed from a crop and replant the saved seed the following season and thus to protect
these farmers from being locked into buying plant material from a plant breeder’s right
holder year after year. The provision has, however, allegedly been abused in South Africa by
large-scale commercial farming operations and the authorities are looking at amending the
Act to address this.
POINT TO Farmers’ privilege: a change ahead

PONDER Farmers’ privilege is included in the Act to safeguard subsistence farmers. There is no
definition of ‘farmer’ in the Act, however, and it is therefore open to commercial farming
operations to save and replant seed year after year without having to pay a licence fee to
the plant breeders’ rights holder. The South African draft Plant Breeders’ Rights Bill was
published in GN 407, Government Gazette 36392, dated 26 April 2013. This Bill proposes
substantial amendments to the Act. One of the amendments is to the provisions relating to
farmers’ privilege. In particular this amendment proposes to define the categories of farmers
and also the categories of plants that farmers’ privilege will apply to.
6.4.3 Remedies in respect of infringement

The holder of a plant breeder’s right will be entitled to the normal delictual remedies of an
interdict, delivery up of infringing material and damages.
The holder of a plant breeder’s right may upon proof of infringement and without proof
of damages, in lieu of any action for damages, recover compensation in an amount not
exceeding R10 000.0041 in total. In proceedings pursuant to the infringement of a plant
breeder’s right, in addition to any other remedy, a court may make an order in respect of the
custody, surrender or disposal of any book, document, plant, propagating material, product,
substance or other article.42 An order from the court for an infringer to surrender a book or
document detailing customer sales can be very useful to a plant breeder’s right holder, as
can an order to surrender or dispose of infringing plant material.
40 S 23(6)(f) of the Plant Breeders’ Rights Act 15 of 1976.


6.5 General
6.5.1 Revocation
There are no provisions in the Act for applying for the revocation of a granted plant breeder’s
right.
The Registrar may, however, terminate a plant breeder’s right under certain
circumstances, one of which is if information comes to light which, if discovered earlier,
would have resulted in the plant breeder’s right being refused.43 This may include
information which shows that:
a) the applicant was not entitled to apply for the plant breeder’s right, or
b) the plant was not new, distinct, uniform and stable when the application for a plant
breeder’s right was filed.
In practice, a third party can submit such information to the Registrar. The Registrar
will review the information and has a discretion as whether to act on the information.
If the Registrar decides to act on the information, he or she will hold a hearing and
decide whether or not to terminate the right. The Registrar’s decision may be appealed
to an Appeal Board.44
6.5.2 Transfer of plant breeder’s right

The holder of a plant breeder’s right must (within a period of 30 days) inform the Registrar
of the transfer of that plant breeder’s right and provide the Registrar with proof that notice
of the transfer has been served on every person licensed in respect of that right.45 There
is no sanction should the holder of a plant breeder’s right fail to notify the Registrar of
the transfer. However, the person to whom the right has been transferred will not be able
to enforce or deal with the right until such time as the Registrar has been informed of
the transfer.
6.5.3 Licensing
Licence agreements must be recorded in writing and the holder of a plant breeder’s right
must notify the Registrar (within a period of 30 days from the issue of a licence) of each
licence issued, and furnish the Registrar with a copy of each licence issued.46 There is no
sanction should the holder of a plant breeder’s right fail to notify the Registrar of a licence.
It is, however, advisable to notify the Registrar. In the patent infringement case of British
Technology Group Ltd v Sanachem (Pty) Ltd47 the court held that licensees who had not been
recorded in the Patent Register were not entitled to intervene as co-plaintiffs in the action
or to a claim for damages.48 The same may apply to plant breeders’ rights.
6.5.4 Compulsory licences

Any person who is of the opinion that the holder of a plant breeder’s right has unreasonably
refused to grant him a licence or has agreed to grant a licence but imposes unreasonable
43 S 33(2)(b) of the Plant Breeders’ Rights Act 15 of 1976.

47 1993 BP 415 (CP).
48 Burrell’s South African Patent and Design Law 3 ed (1999) 279.

terms may apply for a compulsory licence in respect of that right.49 An application for a
compulsory licence can, however, only be made after the expiry of a period of ‘sole rights’
for that kind of plant.50 The term is eight years for trees and vines, and five years for other
varieties.51
The Act does not provide an explanation of what is meant by ‘unreasonably refuses to
grant him a licence’. This provision is included in the Act in the public interest, and the
following are possible grounds for applying for a compulsory licence: the plant variety is not
being commercially exploited in South Africa, or is not being made available at reasonable
prices.
An application for a compulsory licence is made to the Registrar. Procedures are provided
for the application to be heard by the Registrar.52 The Registrar’s decision may be appealed
to an Appeal Board.53
6.5.5 Marking
After registration, propagating material which is sold for the purposes of propagation must
indicate the denomination of the variety on a label which is attached thereto or, if it is packed
in a container, on the container.54 If a trademark is used in conjunction with the
denomination, the trademark and denomination must be clearly distinguishable.55
6.5.6 Plant variety listing

Varieties of certain kinds of plants, typically important commercial crop plants, cannot be
sold in South Africa unless the variety has been placed on the variety list which is compiled
in terms of the South African Plant Improvement Act.56 This is intended to control the sale
and distribution of these plants and to protect the South African market against plants of
low genetic quality, and agricultural produce with inferior properties, being made available.
An application for registration in terms of the Plant Improvement Act may be made at the
same time as the application for a plant breeder’s right.

50 Ss 23(5) and 25(4) and reg 11(a) of the Plant Breeders’ Rights Act 15 of 1976.
51 Table 1 of the Regulations under the Plant Breeders’ Rights Act 15 of 1976.
52 Ss 26 and 27 and reg 13 of the Plant Breeders’ Rights Act 15 of 1976.
56 53 of 1976.

Chapter 7 Designs
LODEWYK CILLIERS
7.1 The nature of a registered design 296

7.1.1 Designs and patents 297
7.1.2 Designs and trade marks 298
7.1.3 Designs and copyright 299
7.2 The legislative framework and international arrangements 300
7.3 Basic requirements for obtaining a registered design 300
7.3.1 What is a registered design? 300
7.3.2 Protectable features 301
7.3.2.1 Definitions 301
7.3.2.2 Article 301
7.3.2.2.1 Definition of an article 301
7.3.2.2.2 Sets of articles 303
7.3.2.2.3 Class 304
7.3.2.3 Shape, configuration, pattern and ornamentation 304
7.3.2.4 Judged solely by the eye 306
7.3.2.5 Necessitated by the function 307
7.3.3.1 Basic requirements 307
7.3.3.2 Novelty 307
7.3.3.2.1 Novelty criteria 307
7.3.3.2.2 Exclusions 308
7.3.3.2.3 Test for novelty 309
7.3.3.3 Originality 310
7.3.3.4 Not commonplace 311
7.3.4 Additional requirements 311
7.3.4.1 Unity of design 311
7.3.4.2 Multiplied by an industrial process 311
7.3.4.3 Articles in the nature of spare parts 312
7.3.4.4 Functional features 313
7.3.4.5 Methods or principles of construction 314
7.4 Procedure for obtaining a registered design 314
7.4.1 The applicant 314
7.4.2 Procedure 315
7.5 Revocation 318
7.5.1 The absolute nature of the grounds for revocation 318
7.5.4 The grounds for revocation 318
7.5.4.1 Applicant not entitled 319
7.5.4.2 Application in fraud of rights 319
7.5.4.3 Design not registrable under section 14 319

7.5.4.4 False statement 320

7.5.4.5 Application should have been refused under section 16 320
7.5.5 Procedure 320
7.6.2.1 Acts of infringement 321
7.6.2.2 Act in correct class 322
7.6.2.3 Assessment of infringement 322
7.6.3 Defences 323
7.6.4 Remedies 324
7.6.5 Procedure 324
7.7 General 324
7.7.1 Correction and amendment 324
7.8 Traditional designs 326
7.8.1 Basic requirements for obtaining a traditional design 326
7.8.1.1 Forms of traditional designs 326
7.8.1.2 Requirements for registrability 327
7.8.2 Procedure for obtaining registration of a traditional design 328
7.8.2.2 The procedure 328
7.8.3 Revocation of a traditional design 329
7.8.4 Infringement of a traditional design 329
7.8.5 General 330
7.8.5.1 Benefit sharing 330
7.1 The nature of a registered design

Registered designs can be aesthetic or functional in nature, and provide for the protection
of the appearance of an article resulting from a particular design being applied to the article,
whether for aesthetic or functional reasons. A registered design is a form of intellectual
property that is generally not well known, and even less clearly understood. Essentially, a
registered design is the lesser known stepsister of its more prominent siblings – patents, trade
marks and copyrights – and is the mechanism by which the outward appearance of an article
is protected. However, registered design rights are often overlooked at the peril of the
inventor or designer. If properly understood and applied, registered designs can be a very
valuable part of an intellectual property portfolio.
The nature of a registered design was succinctly captured by Lord Reid in Amp Inc v
Utilux Pty Ltd:1
1 [1972] RPC 103 (HL).

Those who wish to purchase an article for use are often influenced in their choice
not only by practical efficiency but by appearance. Common experience shows that
not all are influenced in the same way. Some look for artistic merit. Some are
attracted by a design which is strange or bizarre. Many simply choose the article
which catches their eye. Whatever the reason may be one article with a particular
design may sell better than one without it: then it is profitable to use the design. And
much thought, time and expense may have been incurred in finding a design which
will increase sales.
7.1.1 Designs and patents

There is a strong link between registered designs and all three of the other primary forms of
intellectual property. A sound foundation for understanding the essence of registered designs
is provided by a detailed comparison between designs and patents, trade marks and copyright.
A surprising but convenient point of departure for gaining an understanding of the
difference between patents and registered designs is found in the cult novel written by Robert
Pirsig, Zen and the Art of Motorcycle Maintenance.2 In his book, Pirsig differentiates between
two kinds of thinkers: classical thinkers and romantic thinkers. In essence, he describes how
differently programmed people would perceive the same object – in this case a motorcycle.
When the classical thinkers see a motorcycle, they see a system of concepts worked out
in steel. To them it all boils down to a blueprint of systems, functions and processes, with
the appearance of the motorcycle being no more than a necessary derivative of the collective
functionality. This is typically the domain of patents – the part of intellectual property law
that focuses on protecting an underlying idea in its broadest form, irrespective of the specific
appearance thereof.
The romantic thinkers perceive the world in terms of its appearance; they are
not bound by the laws of physics, but rather by aesthetic conscience. The romantic
thinker is much more concerned about the emotive reaction triggered by the motorcycle.
He focuses on the appearance, while the internal workings of the engine and the
interaction of parts are of little concern. Enter the registered design, and more particularly
the aesthetic design – the appearance of an article in so far as it appeals to the eye, and is
judged solely by the eye.
One would be inclined to conclude that the difference between patents and designs can
therefore be crisply formulated: patents protect underlying concepts whereas registered
designs protect appearance. Although this is true it is an oversimplification since nothing is
absolute. Sometimes an article may indeed have a particular appearance, but the appearance
is necessitated by the function that the article is to perform, as in those rare cases where form
truly and absolutely follows function. An example here would be the design of a gear which
has teeth that are designed to have a very particular profile in order to mesh with a mating
gear, and to exert a force at an exact point of rotation. The shape, and hence the appearance,
is still the predominant feature, but now the shape is necessitated by the function that the
gear is to perform. This is the territory of the functional design – a further type of registered
design used to protect a design applied to an article having features that are necessitated by
the function which the article is to perform.
From the above it is clear that patents and registered designs are very different in terms
of what they protect, but that the same article often attracts both patent and design
2 RM Pirsig Zen and the Art of Motorcycle Maintenance (1975).

protection. The forms of protection are therefore not mutually exclusive but rather two
different arrows that fit comfortably in the same quiver.
7.1.2 Designs and trade marks

The once reasonably clear interface between registered designs and trade marks is
rapidly being obscured by developments in design law and practice – both locally
and abroad.
A trade mark is a mark used or proposed to be used by a person in relation to goods or
services for the purpose of distinguishing those goods or services from the same kind of
goods or services connected in the course of trade with any other person.3 A mark is defined
as any sign capable of being represented graphically, including a device, name, signature,
word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for
goods, or any combination of the aforementioned.4
Registered designs, whether aesthetic or functional, relate to designs applied to articles,5
and the purpose is therefore to protect the appearance of the article and not to link the
appearance of the article with the underlying goodwill associated with the supplier of the
article.
For present purposes, it is sufficient to recognise that in many cases one would be
able to file a trade mark application and/or a design application to protect the same design.
At first glance this may appear to be somewhat of a dichotomy, but if one considers the
nature and effect of the two forms of protection, the complementary working thereof
becomes apparent.
There has, for some time, been a degree of overlap in so far as the protection of the
appearance of containers is concerned, because the appearance of a container is protectable
by way of a registered design and/or trade mark. However, the degree of overlap for other
articles is rapidly increasing, which raises some questions about the interplay between
designs and trade marks. The advent of a new class of registered design, class 32, has in
particular muddied the waters, because class 32 designs extend to logos and get-up, which
used to fall squarely within the ambit of trade marks.
PAUSE FOR Horses for courses

REFLECTION Both forms of intellectual property are associated with their own advantages and
disadvantages, and a comparison of some salient aspects is set out below:
Feature Design Trade mark

Duration Limited – 10/15 years Potentially perpetual
Scope of Protection limited to class, Protection also limited to
protection but classes are relatively broad, class, but classification is
e.g. any bottle will be protected more specific, e.g. a bottle
if filed in class 9, irrespective of will only be protected for
contents. specific contents, e.g.
detergent.
3 S 2(1) of the Trade Marks Act 194 of 1993.

5 S 1(1) of the Designs Act 195 of 1993.

Time to grant Quick – proceeds to registration Slower – normally takes

and enforceable within about 9 between 18 and 30 months
months from filing. to proceed to registration.
Prosecution Only formal examination. Substantive examination and
process Simple process, although provision for third party
validity remains untested. opposition.
Registrability Must be new. Must be distinctive.
Novelty Must not have been disclosed Can be known to the public
to the public
Use requirement No use requirement Use requirement
Maintenance Annual maintenance fee Maintenance fee only
payable after third year. payable every ten years.
It is clear from the above that the decision on whether to file a design or a trade
mark application will depend on what the proprietor wants to achieve. However,
a prudent approach would be to file both a design application and a trade
mark application in cases where both are possible. The two forms of protection augment
each other, and should not be seen as mutually exclusive, but rather
as mutually supportive.
7.1.3 Designs and copyright

One of the central tenets of copyright law is that copyright does not protect ideas, but rather
the reduction of those ideas to material form. As mentioned above, registered designs are
not concerned with underlying concepts either, but rather with the physical embodiments
of such concepts. It is apparent that there is a substantial overlap between registered designs
and copyright, especially in so far as artistic works are concerned.
In terms of the Copyright Act an artistic work includes, inter alia, sculptures, works of
architecture and other works of craftsmanship.6 However, section 15(3A)7 introduces an
important limitation, and states that protection will not extend to the reproduction of a
three-dimensional article which has been made available to the public, provided that the
three-dimensional article is of a utilitarian nature (i.e. not a work of art), and is multiplied
in an industrial process (i.e. not through the practice of art). Therefore, when a new vehicle
is designed, copyright will subsist in the technical drawings and in artistic concept models.
However, protection would not extend to an actual three-dimensional production model,
because the production model falls within the scope of section 15(3A). The three-
dimensional production model would, however, be protectable by way of a registered design,
and more particularly an aesthetic design.
In the case of copyright and registered designs, the rights are therefore contiguous,
rather than coinciding, and it is important that the differences between the rights are
well understood.
6 S 1(1) of the Copyright Act 98 of 1978.

7 S 15(3A) of the Copyright Act 98 of 1978.

7.2 The legislative framework and international arrangements

The law of designs is governed by the Designs Act 195 of 1993, which repealed the Designs Act
57 of 1967 when it came into force on 1 May 1995. In this chapter the Designs Act 195 of 1993
will be referred to as ‘the Act’. Proceedings under the Act are governed by the Designs
Regulations, 1999,8 which will be referred to as ‘the Regulations’. The Act was amended by the
Intellectual Property Laws Amendment Act 28 of 2013, which introduced the traditional design.
South Africa is party to the Paris Convention for the Protection of Industrial Property (the
Paris Convention),9 having acceded thereto on 20 October 1947. The Act also complies with
the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)10
following the amendment of the Act by virtue of the Intellectual Property Laws Amendment
Act 38 of 1997.
It should be noted that South Africa is not party to the Hague Agreement Concerning the
International Deposit of Industrial Designs,11 and protection can therefore not be obtained
in South Africa by filing an international application in terms of the Hague Agreement.
Priority can, however, be claimed from such an international application.
South Africa also has not signed the Locarno Agreement Establishing an International
Classification for Industrial Designs,12 but has adopted the Locarno classification system
through the 1999 Regulations, as amended in December 2010.
7.3 Basic requirements for obtaining a registered design

This section deals with the basic requirements for obtaining conventional aesthetic
and functional design registrations. Traditional designs are dealt with in paragraph 7.8
of this chapter.
7.3.1 What is a registered design?

South African design law provides for the registration of both aesthetic and functional
designs. These are referred to as Part A and Part F registrations, respectively, according to
the part of the official designs register in which their details are recorded. It should be noted
that whereas the aesthetic design finds its equivalent in most jurisdictions, the functional
design is a unique South African creation. In most other jurisdictions an article which does
not have any ornamental value cannot easily be protected by way of a design, and protection
must be sought in the form of patents and/or utility models.
An aesthetic design is a design applied to an article, and which has features that
appeal to and are judged solely by the eye – that is, features that persuade a purchaser
to select it over another article that performs the same function, but has a different
appearance. The fact that an article performs a particular function does not mean that the
design should be a functional design rather than an aesthetic design. Only if the article has
to look a certain way in order to perform its function will it be the subject of a functional
design. For example, every soft drink bottle has a function – to hold a soft drink. However,
myriad designs exist for bottles that all essentially fulfil the same function. The aim of the
different designs is therefore clearly to appeal to the eye, and as such the designs are
protectable as aesthetic designs.
8 Designs Regulations 1999 (GN R843, GG 20256, 2 July 1999 as amended).

9 www.wipo.int/treaties/en/ip/paris.
10 www.wto.org/trips.
11 www.wipo.int/hague/en.
12 www.wipo.int/classifications/locarno/en.

A functional design is a design applied to an article, and which has features which are
dictated by the function of the article to which the design is applied. For example, a metal
extrusion may have a particular profile based on the requirement to house a seal and an
edge of a pane of glass, while also meeting particular structural requirements. Such a profile
would be irrelevant in so far as classical aesthetic considerations are concerned, and might
not even be seen by an end-user. However, the profile is still important and is thus
protectable as a functional design.
An aesthetic design registration affords the rights holder no rights in the purely functional
features of an article embodying the registered design, or in its method of construction. If it
is important that a functional feature of an article should also be protected, it will be
necessary to file applications for design protection in both Part A and Part F of the designs
register.
7.3.2 Protectable features
7.3.2.1 Definitions
According to the Act an aesthetic design means any design applied to any article, whether
for the pattern or the shape or the configuration or the ornamentation thereof, or for any
two or more of those purposes, 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.13
A functional design14 means any design applied to any article, whether for the pattern or
the shape or the configuration thereof, or for any two or more of those purposes, and by
whatever means it is applied, having features which are necessitated by the function which
the article to which the design is applied, is to perform, and includes an integrated circuit
topography, a mask work and a series of mask works.15
The fundamental difference between aesthetic and functional designs has been discussed
in some detail above, but a number of concepts are introduced in the above definitions, and
require further discussion and explanation in order to elucidate the inner workings of
registered designs in general, as well as the practical differentiation between aesthetic and
functional designs.
7.3.2.2 Article
7.3.2.2.1 Definition of an article

From the definitions it is clear that both aesthetic designs and functional designs relate to a
‘design applied to any article’. Therefore, a design can only be a design in the context of the
Act if it is applied to an article, and cannot exist as an esoteric conceptual design. It is
important to note that the words ‘design’ and ‘article’ are not synonymous. A design is
something that is applied to an article, for example ornamentation in the form of a pattern

15 According to s 1(1) of the Act, an integrated circuit means an article, in final or intermediate form, containing electrical,
electromagnetic or optical elements and circuitry, which is capable of performing an electrical or an optical function,
and in which at least a part of the electrical, electromagnetic or optical elements and circuitry are integrally formed, in
accordance with a predetermined topography, in a semiconductor material. An integrated circuit topography means
a functional design which consists of the pattern, shape or configuration of the three-dimensional disposition of the
electrical, electromagnetic or optical elements and circuitry of an integrated circuit. A mask work means a functional
design which consists of a pattern of an image however fixed or encoded, having or representing at least a part of an
integrated circuit.

of flowers (the design) which is applied to crockery (the article), or a conical shape (the
design) which is applied to a bottle (the article).
In addition, in terms of section 20(1) of the Act, the effect of the registration of a design
is to grant to the registered proprietor the right to exclude other persons from the making,
importing, using or disposing of any article included in the class in which the design is
registered and embodying the registered design or a design not substantially different from
the registered design [own emphasis]. The correct interpretation of the word ‘article’ is
therefore important, and more so in light of recent developments in terms of which registered
designs and trade marks are becoming increasingly entwined.
In the Act an article is defined as any article of manufacture, and includes a part of
such article if manufactured separately. From this definition it is clear that the parts of a
composite article also form part of the article as a whole. For example, in the case of a
hammer comprising a forged steel head and a separately manufactured wooden handle,
both the head and the handle form part of the hammer. To apply the wording of the
definition – the article is defined as the hammer, and includes the handle of the hammer
if manufactured separately. This does not mean that the handle will not be regarded as
part of the hammer if it is not manufactured separately, that is, if the hammer and head
are integrally formed, because in that example the handle and the head would implicitly
be part of the hammer.
Furthermore, the definition also implies that a part of an article that is manufactured
separately may constitute an article in its own right, such as a handle for a hammer.
No additional guidance as to the meaning of the term ‘article’ is to be found in
South African jurisprudence. It is therefore useful to have recourse to an authoritative
dictionary in order to ascertain the ordinary meaning of the word.16 This approach
of referring to an authoritative dictionary will be applied throughout this chapter owing
to the dearth of case law.
In terms of the ordinary dictionary17 definition, an article is a ‘particular item or object’
and manufacture is to ‘make or produce … in a merely mechanical way’. Collation of these
two phrases results in a definition of an article as ‘a particular object made or produced in
a merely mechanical way’. In most cases this definition is sufficient to determine whether
an object would indeed qualify as an article under the Act. However, it becomes more
complicated when the intended design is applied to a non-traditional article, such as a logo
or a symbol. It is common cause that the logo or symbol will in use be applied to an article
(e.g. an item of clothing), but whether the logo or symbol can in itself constitute an article
is not as clear.
A narrow interpretation of the definition seems to imply that logos, symbols and the
like are not articles, because they are not tangible, material objects. However, a broader
(and equally arguable) interpretation of the definition may well allow for intangible objects
such as logos and symbols to fall within the scope of the Act. It should be noted that, as
mentioned above, the 9th edition of the Locarno Classification (2013), which is in use in
South Africa, includes class 32, which was not present in previous editions. Class 32
specifically extends to logos, get-up, surface ornamentation and the like, and it would
therefore appear as if a broader interpretation of ‘article’ may well be apposite. This is
supported by the fact that type faces – similarly intangible ‘articles’ – formed part of the
6th edition of the Locarno Classification (1994) which was initially introduced into our
16 Fundstrust (Pty) Ltd (In Liquidation) v Van Deventer 1997 (1) SA 710 (A).

law by the Regulations.18 However, it should be noted that the Locarno Classification has
been introduced by way of regulation, and does not override the provisions of the Act. It
is therefore not a given that ‘article’ will be afforded the broad interpretation referred to
above, but it is most certainly a possibility. There will only be certainty once our courts
have had the opportunity to consider this issue in more detail, and until they have had
occasion to do so, the prudent approach would be to be open to and aware of both
potential interpretations.
The above should not be confused with situations where a logo or symbol is protected
in the context of a design applied to another article, for example a logo applied to an item
of clothing and thus filed in class 2, or a symbol applied to a computer screen and thus filed
in class 14. In this case the logo or symbol constitutes the design as a form of ornamentation
applied to the article, but does not become the article per se. This approach has also not been
tested by our courts, but would appear to be reasonable.
PAUSE FOR What’s in an article?

REFLECTION Although these are not binding in South Africa, the UK courts have made some interesting
rulings on the interpretation of the term ‘article’ in the 1949 UK Registered Designs Act.
These include:
• An article must itself be of substance, and a football coupon does not constitute
an article because it has no existence or function independent of the pattern on
its face.19
• Photographs and cartoons are not articles for the same reason, but wallpaper is,
by contrast, an article.20
• ‘A set of user interfaces for computer display’ which generated icons on a computer
screen has been held to be registrable, as the article involved was the computer
screen itself upon which the design was displayed.21
• A symbol is not an article.22
• An article must be portable, and a concrete air raid shelter is therefore not
an article.23
7.3.2.2.2 Sets of articles
A design for a set of articles may be covered in a single design application, provided that it
meets the criteria defined in the Act.24 A set of articles means any number of articles of the
same general character that are ordinarily sold together or intended to be used together,
and in respect of which the same design is applied to each article. The applied design need
not be identical, as long as variations and modifications of the design applied to the
different articles are not sufficient to alter the character of the articles or substantially alter
their identity.
18 Designs Regulations GN R844, GG 20256, 2 July 1999.

19 Re Littlewood’s Pools Ltd Application [1949] 66 RPC 309.
20 Saunders v Weil [1893] 10 RPC 29; Dean’s Rag Book Co. Ltd v Pomeranz & Sons [1930] RPC 485; Re Spice Girls Ltd v Aprilla
World Service BV [2002] EWCA Civ 15 [2000] ECDR 148.
21 Apple Computer Inc v Design Registry [2002] FSR 602.
22 Supra.
23 Re Concrete Ltd’s Application [1940] 57 RPC 121.

Examples of sets of articles that may be protected as single designs include a set of
crockery of which the individual components share the same pattern or ornamentation, or
a set of cutlery that all have handles that embody the same new shape.
The criteria for sets of articles should not be confused with the requirement of unity of
design, as discussed below. The mere fact that different articles are generally sold together
and used together is not enough for the articles to qualify as a set of articles. For example, a
wheel rim and a wheel nut that is used with the wheel rim would only constitute a set if the
same design was applied to both articles. However, in most cases one would have to file
separate applications for the wheel rim and the wheel nut.
In Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers and Another25 the court held
that once the registrar has registered articles as a set when they in truth do not form a set, it
is at best a matter for review but it cannot be raised as a defence to infringement or be a
ground for revocation. In addition, the court also held that, once registered, each member
of a set has its own individuality and must be assessed on its own. Upon registration it is
therefore as if each member of a set becomes the subject of a design in its own right, and the
fact that registration is for a set of articles cannot be used as an interpretive tool for
determining the scope of protection of the individual articles making up the set.
7.3.2.2.3 Class
In terms of the Regulations, articles to which designs may be applied are classified in
accordance with the classification provided in the Regulations. In principle, articles are first
classified according to their purpose and then receive a subsidiary classification, if this is
possible, according to the object that they represent. Where there is no special classification
provided for articles intended to form part of another product, the articles are placed in the
same class as the product of which they are intended to form part.26 At present, the Locarno
Classification (9 ed) includes 32 classes and 223 subclasses.
The choice of an appropriate class is very important, as the rights afforded by a registered
design in South Africa are limited to the class in which the design has been registered.
For example, a registration for a motor vehicle in class 12 would not prevent another
person from selling a toy car of the same design, as the toy car would fall within class 21.
It is possible to file applications in more than one class, but such applications will be separate
and independent applications, each of which will only be enforceable in the class in which
it was filed.
7.3.2.3 Shape, configuration, pattern and ornamentation

The features of a design for which protection can be claimed are the shape, configuration,
pattern or ornamentation, or any combination thereof, as applied to an article.
These innocent words have given rise to many a debate, and the precise meaning of these
words seems to be virtually impossible to establish, given the overlap in their meanings. The
issue has not been dealt with in depth by South African courts, but has been considered in
other jurisdictions.
In Kestos Ltd v Kempat Ltd and Kemp, 27 one of the most frequently quoted
English cases, shape and configuration were interpreted as practically synonymous
three-dimensional features, and pattern and ornamentation were interpreted as practically
25 [2007] SCA 24 (RSA).

26 International Classification for Industrial Designs under the Locarno Agreement, General Remarks.
27 [1936] 53 RPC 139.

synonymous two-dimensional features. However, in Cow (P.B.) & Co. Ltd v Cannon
Rubber Manufacturers Ltd,28 another seminal English case, shape and configuration
were given different meanings. The situation is therefore far from clear, even in
other jurisdictions.
However, in terms of the Act, a functional design does not include the feature of
ornamentation even though it does include pattern, which implies that pattern and
ornamentation cannot be regarded as synonymous in our law. What is sauce for the goose
ought to be sauce for the gander, and the same principle can therefore be extended to shape
and configuration. It is submitted that a reasonable approach would be to give the terms
shape, configuration, pattern and ornamentation their own individual interpretations, while
being cognisant of potential overlap.
Following this approach, and using ordinary dictionary29 meanings, the following
definitions for these terms are suggested:
• Shape: the external form, contours, or outline of someone or something; the outline of
an area or figure;
• Configuration: an arrangement of parts or elements in a particular form or figure;
• Pattern: a repeated decorative design;
• Ornamentation: decorating something or making it more elaborate
In Sunsmart Products (Pty) Ltd v Flag & Flagpole Industries (Pty) Ltd t/a National Flags30 the
Supreme Court of Appeal confirmed that the shape of an article is the external form or the
three-dimensional appearance thereof. In this case the respondent attempted to prove that
a design was not new by comparing a three-dimensional design to two-dimensional
representations of similar articles. It was held that the fact that a two-dimensional
representation of the shape of an article is similar to a two-dimensional representation of
the registered design does not prove that the design of the article anticipated the registered
design. Even though this is not particularly helpful in defining shape, the judgment seems
to indicate that the same interpretation should be given to features of the registered design,
and to features in the prior art article when novelty is assessed.
It is interesting to note that in MCG Industries (Pty) Ltd v Chespak (Pty) Ltd31 it was held
that the use of the plural form ‘features’ in the Act suggests that the intention of the legislature
was that an aesthetic design should have two or more features which appeal to and are
judged solely by the eye. Similarly, if a design has at least two functional features, the design
will fall within the definition of a functional design. An argument to the contrary is that in
terms of the Interpretation Act,32 in every law, unless the contrary intention appears, words
in the singular number include the plural, and words in the plural number include the
singular. It is not readily apparent from a reading of the Act that there was a contrary
intention by the legislature, and the approach adopted in MCG v Chespak may require
further consideration by our courts. It should also be noted that the above approach is not
widely accepted among intellectual property practitioners.
28 [1959] RPC 347.

30 2007 BIP 44 (SCA).
31 2011 BIP 284 (GNP).
32 S 6(b) of the Interpretation Act 33 of 1957.

PAUSE FOR The role of colour

REFLECTION Colour is not specifically included in the protectable features of shape, configuration, pattern
and ornamentation. However, there is no apparent reason why colour cannot be a
contributing factor that establishes or at least supports pattern or ornamentation. In the
case of Marley (South Africa) (Pty) Ltd v Piping Innovations (Pty) Ltd and Another,33 which
is the only South African design case dealing with colour, De Klerk J remarked that he was
not persuaded that a single colour applied to an article, seen with the article, should not
qualify as a design. In addition, he agreed with a statement made by Graham J in Smith
Kline & French Laboratories’ Application34 that the importance of colour varies with the
circumstance of each case. For example, where a design has a strong distinguishing shape
or pattern, such as in wallpaper, colour would play no part. The same design in a different
colour would not be new. On the other hand, where the colours are dominant with a simple
pattern which plays a secondary role, another design with the same simple pattern but
distinctly different colours would be perceived as a different design and the later design
would be new. The same would apply to football shirts, for example. Therefore, even though
there is no certainty as to the role of colour in terms of South African design law, the prudent
approach would be not to disregard colour in its entirety.
7.3.2.4 Judged solely by the eye
An aesthetic design must have features which appeal to the eye, and which are
judged solely by the eye. This implies that an aesthetic design, unlike a functional
design, is not concerned with the functionality of an article. The only relevant question
when assessing the design is what the article looks like, or put differently, whether a
purchaser would be influenced by the appearance of the article. It should be noted that
the aesthetic quality is irrelevant, and the mere fact that the features are judged by the eye
is sufficient, irrespective of the outcome of such judgement. Returning to the example of
the motorcycle above, the design of a particular Harley Davidson® may not appeal to some
people, but the features nevertheless remain aesthetic, irrespective of the subjective
aesthetic merit.
A further question that arises is: whose eye must the features appeal to? Would it
be the eye of the court, the eye of the designer, or the eye of the likely consumer?
In Swisstool Manufacturing Co v Omega Africa Plastics35 it was held that the eye to
be considered is the eye of the court but the court should view the design through
the spectacles of the customer. This approach was confirmed in BMW v Grandmark,36
where it was held that while the court is ultimately the arbiter, it must, when determining
these matters, consider how the design in question would appeal to and be judged by the
likely consumer of the class of article to which the design is applied. A design aimed at a
small child will, for example, have to be assessed differently from a design intended for
the adult market.37
33 1989 (2) SA 510 (T).

34 [1974] 9 RPC 253.
35 1975 (4) SA 379 (W) at 383B.
36 Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another (722/12) [2013]
ZASCA 114.
37 Slavepak Holdings (Pty) Ltd v Buddy Manufacturers CC 21/12/2001 Case No 21613/01 (T) (unreported).

7.3.2.5 Necessitated by the function

The definition of a functional design in section 1(1) of the Act includes the phrase ‘having
features which are necessitated by the function which the article to which the design is
applied, is to perform’. This clearly indicates that a functional design must include features
that are not introduced to give aesthetic appeal to an article, but rather features without
which the article will essentially not work. In addition, section 14(5)(a) of the Act excludes
features of an article in so far as they are necessitated solely by the function which the article
is intended to perform, from protection as an aesthetic design.
It should be noted that the Act does not state that any article that has a function should
be deemed a functional design. Most articles do have a function, but that is not enough to
classify the design of the article as a functional design. Consider, for example, the shape of
a beverage container. The container does have to comply with the definition of a receptacle
in order to hold a fluid, and therefore has certain essential features that it requires to fulfil
its function. However, the appearance of these features can differ considerably, and is not
necessitated by the function that the article has to perform, but is rather chosen to attract
the attention of a likely consumer.
In MCG v Chespak38 the court held that if a feature of a design does not appeal to, and is
not judged solely by the eye as contemplated by the definition of an aesthetic design and is
functional, but is not necessitated solely by the function which the article is intended to
perform, it is not affected by section 14(5)(a).
The inverse question of features that do not qualify for protection under an aesthetic
design is dealt with in paragraphs 7.3.4.4 and 7.3.4.5 below.
7.3.3 Requirements for registrability
7.3.3.1 Basic requirements

Section 14(1) of the Act sets out the basic requirements that have to be met in order for a
design to be registrable. These are:
• in the case of an aesthetic design, new and original; and
• in the case of a functional design, new and not commonplace in the art in question.
The novelty requirement is a common requirement for aesthetic and functional designs,
with each form of design including a further unique qualifier, namely originality and not
commonplace respectively.
7.3.3.2 Novelty
7.3.3.2.1 Novelty criteria

A design is deemed to be new if it is different from, or if it does not form part of, the state of
the art immediately before the date of application for registration thereof or the release date
thereof, whichever is the earlier.39
The date of application is the date on which the application is filed in South Africa, or in
the case of a convention application claiming priority from an application filed in another
country, the date on which the priority application was filed in the other country.40
38 2011 BIP 284 (GNP).


In terms of the Paris Convention,41 an applicant that files a design application in a

foreign member country is entitled to claim priority for a period of six months to file a
convention application in South Africa. The filing date of the first application is referred to
as the priority date.
The release date is 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. If the applicant relies on a release date, the application for the registration of the
design has to be filed within two years from the release date in the case of an integrated
circuit topography, a mask work or a series of mask works, and within six months of the
release date in the case of any other design.42,43 A proprietor of a design may therefore, for
example, release a product to the marketplace, and if the uptake is positive, still file an
application for a registered design, provided that this is done within the prescribed six month
or two year period, depending on the subject matter involved.
The state of the art is defined as comprising all matter which has been made available to
the public (whether in South Africa or elsewhere) by written description, by use or in any
other way. The definition is therefore very broad, and will encompass, for example:
• the publication of an article embodying the new design in printed form (e.g. in a
magazine, trade journal or newspaper) or electronic form (e.g. on a website);
• display of the article at a trade show, conference, exhibition or any other public forum;
• the sale of the article; and
• the use of the article in public.
It is also important to note that the novelty requirement extends to disclosure of the design
anywhere in the world, and a disclosure in another jurisdiction will therefore destroy the
novelty in South Africa.
In addition, the state of the art includes matter which has not been made available to the
public if that matter is contained in an application for the registration of a design in South
Africa, or in a convention country for the registration of a design which has subsequently been
registered in South Africa, and of which the date of application in South Africa or the
convention country is earlier than the date of application or the release date referred to above.44
From the above is clear that, save for the provision of the release date and other
exclusions mentioned in 7.3.3.2.2 below, absolute novelty applies. This essentially means
that any form of disclosure to the public anywhere in the world will constitute a bar to
obtaining valid design protection in South Africa.
7.3.3.2.2 Exclusions
The Act makes provision for a number of cases where prior disclosure to the public will not
constitute a bar to registrability. The obvious exclusions are disclosures made after a priority
application has been filed but before the date of filing of the design application in South
Africa, as well as disclosures after the release date but before the date of filing of the design
application in South Africa.
Section 17 of the Act provides that the registration of a design shall not be invalid by
reason only of the fact that the design was disclosed, used or known prior to the release
41 Paris Convention for the Protection of Industrial Property, 1883, Article 4.

43 Note that in the case of derivative indigenous designs a two year period applies – S 53B(2) of the Designs Act 195 of 1993.

date if the proprietor proves that such knowledge was acquired, or such disclosure or use
was made, without his knowledge or consent, and that the knowledge acquired or the
matter disclosed or used was derived or obtained from him, and that he applied for and
obtained protection for his design with all reasonable diligence after learning of the
disclosure, use or knowledge. For example, should the proprietor of a design disclose his
design to a potential business partner, and the business partner proceed to advertise the
design to the public in order to test the commercial potential, the proprietor of the design
would still be able to file a design application provided he did not give permission for the
disclosure, and provided he filed the application as soon as possible after becoming aware
of the disclosure.
A further exclusion to absolute novelty arises where the proprietor of an existing design
(whether registered or pending) is exercising the design only in the class in which the design
has been filed, but subsequently decides to extend the design to articles falling into a
different class. Section 15(5) of the Act provides that the proprietor of the first design may
file a second design in a new class, provided that the design has only been made available
to the public in the class in which it was originally filed. For example, if the manufacturer of
a motor vehicle previously filed a design in class 12 to protect the appearance of the motor
vehicle, and the manufacturer has only been selling motor vehicles, it would be possible for
him to file a further design in class 21 for toys, if the intention was to start selling toy replicas
of the motor vehicle. Note that such a design can, however, only be filed by the proprietor
of the first design.
It is important to note that the Act does not include any provision in terms of which a
disclosure as part of a reasonable technical trial will not be regarded as a novelty destroying
event. Disclosures at trade shows, conferences and other exhibitions will also destroy the
novelty of a design.
7.3.3.2.3 Test for novelty

A sensible approach when considering the novelty of a design registration is to apply a
systematic approach comprising the steps of:
• determining the scope of protection of the registered design by construing the design
representations in the context of the definitive statement;
• determining the import of the relevant prior art; and
• comparing the registered design to the prior art.
Some factors to consider when determining whether a particular design is new have been
summarised by the Supreme Court of Appeal in Clipsal v Trust Electrical Wholesalers.45 The
following passages are of particular relevance:
Important aspects to consider when determining the scope of the registered design
protection flow from the definition of an ‘aesthetic design’, namely that design
features have to appeal to and be judged solely by the eye. First, although the court
is the ultimate arbiter, it must consider how the design in question will appeal to and
be judged visually by the likely customer. Secondly, this visual criterion is used to
determine whether a design meets the requirements of the Act and in deciding
questions of novelty and infringement. And thirdly, one is concerned with those
features of a design that ‘will or may influence choice or selection’ and because they
45 [2007] SCA 24 (RSA).

have some ‘individual characteristic’ are ‘calculated to attract the attention of the
beholder.’ To this may be added the statement by Lord Pearson that there must be
something ‘special, peculiar, distinctive, significant or striking’ about the appearance
that catches the eye and in this sense appeals to the eye.
and also:
This does not mean that absolute identity has to be shown; only substantial identity
is required. Immaterial additions or omissions are to be disregarded, so, too,
functional additions or omissions.
Immaterial additions and omissions are therefore not sufficient to impart novelty. This was
also the case in Schultz v Butt46 in which it was held that where the novel part of a design is
nothing more than an ordinary trade variant, it is insufficient to impart novel character:
In my opinion, Schultz’ window structure is no more than an ordinary trade variant

of window structures in common use in the boat-building trade. As such, its
introduction cannot make the design of the boat new or original. If it were otherwise,
one would have the absurd position that anybody could obtain registration of the
design of a boat comprising a Butt-Cat hull and a variant of a window structure.
The test for novelty is furthermore not limited to the particular class in which a design is
filed. The class in which it is filed can for all practical purposes be ignored when assessing
novelty, provided that the anticipating prior art is at least of the same general character and
general use as the article in respect of which design protection is sought.47
Finally, in Clipsal v Trust Electrical Wholesalers48 it was also confirmed that, as in patent
law, one is not entitled to mosaic different pieces of prior art when considering the novelty
of a design.
7.3.3.3 Originality
‘Original’ is not defined in the Act, but in the case of Clipsal v Trust Electrical Wholesalers 49
it was held that the meaning of original is the same as or akin to the meaning in copyright
law. In arriving at this conclusion the court quoted with approval from Farmers Build v
Carier,50 in which it was stated that:
The court must be satisfied that the design for which protection is claimed has not
simply been copied (eg like a photocopy) from the design of an earlier article. It must
not forget that, in the field of design of functional articles, one design may be very
similar to or even identical with another design and yet not be a copy: it may be an
original and independent shape and configuration coincidentally the same or
similar. If, however, the court is satisfied that it has been slavishly copied from an
earlier design, it is not an ‘original’ design in the ‘copyright sense’.
46 1986 (3) SA 667 (A).

47 Screentex (Pty) Ltd v J Lyons & Co (Pty) Ltd And Others 1967 (2) SA 375 (D).
48 [2007] SCA 24 (RSA).
49 [2007] SCA 24 (RSA).
50 Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] R.P.C 461 at para [20] in Clipsal.

Originality therefore means that the designer or author must have expended some skill and
labour in the creation of the work. Originality does not mean that the work must be novel or
unique. This is where the novelty requirement comes into play.
7.3.3.4 Not commonplace

‘Not commonplace’ is not defined in the Act, and neither has it received any particular
attention in our courts to date. The dictionary51 definition of commonplace yields ‘not
unusual; ordinary’. In a similar vein, an often quoted passage in a UK case, Ocular Sciences
Ltd & Another v Aspect Vision Care Ltd and Others52 indicates that ‘any design which is trite,
trivial, common-or-garden, hackneyed or of the type which would excite no particular
attention to those in the relevant art is likely to be commonplace’.
What is clear from the above is that the meaning of commonplace undoubtedly differs
from the meaning ascribed to original,53 which is to be expected given the differentiation in
the requirements for registrability of aesthetic and functional designs. It does not, however,
provide objective criteria in terms of which commonplaceness can be assessed and the
practical application of this requirement is therefore unclear.
7.3.4 Additional requirements
7.3.4.1 Unity of design

Section 32 of the Act states that registration of a design shall be granted for one design only,
but adds that no person may in any proceedings apply for the revocation of such registration
on the ground that it comprises more than one design. In addition, the Act also refers to ‘a
design’ (in singular form) in section 14. In theory it is therefore not allowable to cover
multiple designs in a single application. However, in practice the registrar does not review
a design application for unity of design, and a design application including more than one
embodiment will in all likelihood proceed to grant. Once granted, a third party will not be
able to apply for the revocation of the design based on lack of unity, as this is specifically
excluded as a ground of revocation.
It is arguable that the registrar may be taken on common law review, as the design
application should not have been granted in the first place. However, this approach has never
been tested in our courts and is mere conjecture.
7.3.4.2 Multiplied by an industrial process

A further requirement for registrability is that the article to which a design is applied must
be intended to be multiplied by an industrial process.54 This excludes once-off works of art
(which would be protected by copyright). However, the term ‘industrial process’ allows room
for an interpretation that extends beyond sophisticated mechanised processes, as long as
the intention is to multiply the article in question. In the copyright judgment of Bress Designs
(Pty) Ltd v G Y Lounge Suite Manufacturers (Pty) Ltd and Another,55 the court had to consider
the meaning of the same wording used in the Copyright Act.56 The court held that the concept
of an industrial process must not be limited to manufacture by a mechanised process. Even

52 [1997] RPC 395.
53 Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA).
55 1991 (2) SA 455 (W).
56 S 15(3A) of the Copyright Act 98 of 1978.

though there is no specific case law dealing with section 14(4) of the Act, a similar
interpretation should be given to ‘industrial process’ in the design law context, and the
question should therefore be whether the intention is to mass-produce the product, even if
the process is manual and unsophisticated. The only requirement would then be for the
protected features to be consistently applied to the individual articles, and for such features
to remain substantially similar in appearance, even if they are not carbon copies.
7.3.4.3 Articles in the nature of spare parts

In terms of section 14(6), in the case of an article which is in the nature of a spare part for a
machine, vehicle or equipment, no feature of pattern, shape or configuration of such article
shall afford the registered proprietor of a functional design applied to any one of the articles
in question, any rights in terms of the Act in respect of such features.
The exact meaning of the term ‘spare part’ has not been considered by our courts.
However, even though the term is not defined, the preceding phrase ‘in the nature of’’
implies a broad interpretation. Also, the most relevant dictionary57 meaning of ‘spare’ is ‘an
item kept in case another item of the same type is lost, broken or worn out’, and it would
therefore appear as if the term ‘spare part’ should be given a broad interpretation, and
should include both parts that are designed to wear and to be replaced (for example brake
pads) and parts that are replaceable even though the intention of the designer was not for
the part to have a limited lifetime (for example a bumper for a car).
It should furthermore be noted that the exclusion in section 14(6) only relates to
functional designs. It is therefore arguable that it would be possible to obtain protection for
some articles that are in the nature of spare parts, but that have features that appeal to the
eye, and which are judged solely by the eye. In these rare circumstances it may be possible
to protect the non-functional aspects of a spare part as an aesthetic design.
The practice of filing aesthetic design applications to protect the aesthetic features of
spare parts came under the spotlight in BMW v Grandmark.58 The court held that aesthetic
designs are those that invite customer selection, and customer discrimination between
articles, solely by their visual appeal. The court proceeded to argue that even though the
appearance of a vehicle per se may play a material role in customer selection thereof, the
designs in issue were designs of individual components that make up a motor vehicle and
such designs therefore have to be judged for the qualities of the individual components,
independently of the design of the built-up vehicle. The court was of the view that the articles
embodying the designs (i.e. the spare parts or replacement parts) are not selected by
customers for their appeal to the eye, but that they are selected solely for the function they
perform – which function is to restore the vehicle to its original form.
COUNTER Spare a thought for spare parts

POINT The judgment leaves a number of lingering questions. For example, if it is true that
aesthetic designs are those that invite customer discrimination between articles solely
by their visual appeal, many existing designs are hovering on the brink of invalidity. This
is so because in most cases the visual appeal is only one aspect that a consumer takes
into account when deciding which product to buy. Obviously a user will be influenced by
the visual appeal of an article, but will hardly ever be swayed into buying

58 (722/12) [2013] ZASCA 114.

a particular car, watch or container solely due to its visual appeal. Also, there is a subtle but
significant difference between an article which is of a functional nature, and an article having
some functional features. The mere fact that an article has a function should not be the
deciding factor – the question should rather be whether the features of an article (for
example the fluting on a bonnet, or the pattern applied to a grille) are functional in nature.
But be that as it may, as the law currently stands spare parts have been booted out of
the domain of aesthetic designs. The door was, however, left open for articles such as
mirrors, steering wheels, seats and wheels to be potentially registrable as aesthetic designs,
due to the interchangeable nature of these articles.
7.3.4.4 Functional features

Section 14(5) states that no feature of an article in so far as it is necessitated solely by the
function which the article is to perform shall afford the registered proprietor of an aesthetic
design any rights in terms of the Act in respect of such feature. It will be readily apparent that
this section is essentially the inverse of the definition of a functional design, save for the use
of the word ‘solely’, which seems to indicate that there may be cases where functional features
may also have aesthetic appeal, that is where the features are not solely necessitated by the
function that the article is to perform.
Our courts have interpreted a similar limitation in the 1967 Designs Act by considering
whether the user will be influenced to buy an article on the basis of its appearance. This
approach was followed in Klep Valves (Pty) Ltd v Saunders Valve Co Ltd,59 in which it was
held that the appearance of a valve, which was determined by purely functional
considerations, was not protectable as an aesthetic design. The court emphasised the fact
that many of the features would not be visible in use. Similarly, in Robinson v D.Cooper
Corporation of South Africa (Pty) Ltd 60 it was held that a frame for a trapdoor in a ceiling
was not designed to attract the attention of the user, and therefore did not constitute
subject matter falling within the scope of an aesthetic design. Again, the fact that the frame
would be installed in a location where it would not be visible was also taken into account.
The same approach was applied in Xactics (Pty) Ltd v Tailored Containers (Pty) Ltd,61 in
which it was held that particular ribbing applied to a plastic bottle had no aesthetic value,
but was used simply because of functional considerations. However, in Homecraft Steel
Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd and Another 62 it was held that flutings
provided in a facia board were not solely functional. While the flutings did perform the
function of imparting additional rigidity to the facia board, they were also found to have
definite visual appeal. Further, in MCG v Chespak,63 which dealt with an aesthetic design
filed in terms of the 1993 Act, the court found that a design for a bottle carrier included
features which were not necessitated solely by the function which the article is to perform,
and that such features also had eye appeal. The aesthetic design for the bottle carrier was
therefore held to be valid.
59 1987 (2) SA 1 (A).

60 1984 (3) SA 699 (A).
61 1971 (2) SA 562 (C).
62 1984 (3) SA 681 (A).
63 2011 BIP 284 (GNP). See also the judgment on appeal 2014 (unreported).

7.3.4.5 Methods or principles of construction

In terms of section 14(5)(b) of the Act no method or principle of construction shall afford
the registered proprietor of an aesthetic design any rights in respect of such feature, method
or principle. The reasoning behind this exclusion is simply to ensure that the focus of design
protection remains on the appearance of a particular article, and does not extend to any
underlying concept utilised to arrive at the particular appearance.
In Robinson v D. Cooper Corporation of South Africa (Pty) Ltd64 the court held that the
mere principle of the sides of a frame for a trapdoor being bevelled is not capable of design
protection, because protection for such a design would result in a monopoly over the method
or principle of manufacturing a frame with bevelled sides. If valid, the protection would be
closer to that afforded by a patent or petty patent, which would be untenable.
7.4 Procedure for obtaining a registered design

This section deals with the procedure for obtaining conventional aesthetic and
functional design registrations. Traditional designs are dealt with in paragraph 7.8 of
this chapter.
7.4.1 The applicant

The proprietor of a design may apply for the registration thereof.65 In terms of the Act66 the
proprietor of a design is:
• the author (creator) of the design;
• a person for whom the author has executed the design;
• an employer of an employee who, in the course of his employment, makes the
design; or
• a person to whom the ownership of the design has passed, for example by assignment
from the author.
The term ‘author’ is not defined in the Copyright Act or the Designs Act, but has been
considered by our courts in the past. In Pan African Engineers (Pty) Ltd v Hydro Tube (Pty)
Ltd and Another 67 it was held that the author denotes the maker or creator of the work
concerned. The court also quoted from Nottage and Another v Jackson,68 in which it was
stated that an author is the man who really represents or creates or gives effect to the idea
or fancy or imagination; the man who is most nearly the effective cause of the representation
when completed.
The applicant includes the legal representative of a deceased applicant, or of an applicant
who is under legal disability.69
The Act also makes provision for joint applicants, and the specific situation that
applies in the case of joint proprietors of a granted design is regulated by section 25. It is
important to note that where registration of a design is granted to two or more persons
jointly, each of them is, in the absence of an agreement to the contrary, entitled to an equal
undivided share in the registered design. This has important implications, because one
64 1984 (2) SA 393 (A).

66 S 1(xix) of the Designs Act 195 of 1993.
67 1972 (1) SA 470 (W).
68 (1883) 11 QBD 627 at 637.

proprietor is not able to do certain things without the permission of the other proprietor,
including exercising any of the rights under section 20, assigning or licensing the design
or part of the design, applying for the amendment of the design or taking any other steps
relating to the design, save for paying renewal fees and instituting action for infringement
of the design.70
Where designs emanating from publicly funded research institutions are concerned,
regard should be had to the provisions of the Intellectual Property Rights from Publicly
Financed Research and Development Act 51 of 2008 (the IPR Act). The IPR Act deals, inter
alia, with ownership of intellectual property that is developed by publicly funded research
institutions, or developed while using the facilities of publicly funded research institutions,
and is discussed in more detail in chapter 9.
7.4.2 Procedure
An application for the registration of a design is made to the Designs Office (which is part of
the Patent Office) and must be accompanied by the following information and/or
documentation:
• type of design, that is, whether the design is an aesthetic or functional design;
• representations of the design as applied to an article or the design to be applied to an
article, which representations may take the form of drawings, photographs, specimens,
or other records where the registrar so directs;
• title of the design, which will correspond to the name of the article to which the design
is applied;
• indication of the class in which the application is filed;
• release date and priority date (if applicable);
• a definitive statement setting out the features for which protection is claimed;
• optionally, an explanatory statement that describes the article to which the design is
applied and/or the design applied to the article, in more detail; and
• declaration by the applicant that he/she is the proprietor of the design and the grant of
a power of attorney (so that an attorney can file the application).
The definitive statement is of particular importance because it defines the scope of the
claimed protection. In Clipsal v Trust Electrical Wholesalers71 it was confirmed that the
purpose of the definitive statement, previously known as a statement of novelty, is to set out
the features of the design for which protection is claimed and the definitive statement is used
to interpret the scope of the protection afforded by the design registration. The definitive
statement typically sets out:
• whether protection is claimed for the shape, configuration, pattern, ornamentation, or
any combination of these features;
• whether the design is applied to a whole article, or only a part of an article; and
• whether any features that are shown in the representations should be disregarded.
70 S 25 of the Designs Act 195 of 1993.

71 [2007] SCA 24 (RSA).

PAUSE FOR Definitive statements

REFLECTION A few examples of definitive statements as used in practice are given below:
Aesthetic The features for which protection

design is claimed reside in the pattern
and/or ornamentation as
applied to a soccer ball,
substantially as shown in the
accompanying representation.
Aesthetic The features for which protection

design is claimed reside in the pattern
and/or ornamentation as
applied to a fabric, substantially
as shown in the accompanying
representation.
Aesthetic and/ The features for which protection

or functional is claimed reside in the shape
design and/or configuration of a light
fitting substantially as shown in
the accompanying
representation.
Functional The features for which protection

design is claimed reside in the shape
and/or configuration of a
vacuum tube substantially as
shown in the accompanying
representation, irrespective of
the length of the tube.
When filing a convention design application, in addition to the requirements referred to

above, the following documents must be filed:
• a certified copy of the first filed application in support of the claim of convention priority;
and
• an assignment of priority rights if the South African applicant is not the same as the
applicant in the first filed application.
Design applications are only examined by the registrar for their compliance with formal
requirements. If the registrar is satisfied that all the formal requirements for the registration
of a design have been met, he issues a notice of registration, and the notice of registration is
subsequently advertised in the Patent Journal, after which the design becomes open for

public inspection. Finally, a certificate of registration is issued to the proprietor. The time
period from filing to registration is usually between nine and 12 months.
It should specifically be noted that there is no substantive examination of a design
application. The Act requires the registrar to examine the application in the prescribed
manner,72 but it was confirmed in MCG v Chespak73 that the examination referred to only
relates to the formal aspects set out in the Act and Regulations, and that there is no onus on
the registrar to consider the substantive registrability of the design application.
In addition, there is no provision for opposition proceedings in the design registration
process. If a third party wishes to challenge a design registration on a substantive basis, it is
necessary for application to be made for its revocation once the design has proceeded to
registration.
7.4.3 Grant, duration and effect

Once a design application has proceeded to registration, the proprietor of the design is
granted, for the duration of the registration, the right in South Africa to exclude others from
making, importing, using or disposing of any article included in the class in which the design
is registered, and embodying the registered design, or a design not substantially different
from the registered design.74
Significantly, the right is limited to articles included in the class in which the design is
registered. The proprietor of a design in class 12 for the design of a car will therefore not be
able to stop a third party from selling toy cars embodying the same design, because toy cars
would fall within the scope of class 21. As another example, someone who designs a new
pattern, and who wants to apply the design to crockery and tablecloths would have to file two
separate applications – one in class 7 (Household goods) and one in class 6 (Furnishing). This
situation is unique to South African law, as in most other jurisdictions the class is of lesser
relevance when infringement is considered. For example, the class is of no significance when
filing a registered Community design application in Europe,75 and a design for a car in class
12 would extend to a teapot or any other product which embodies the three-dimensional
design of the car. In the United States of America there is also no prohibition on asserting
design rights against different classes of products that nevertheless look the same as the
claimed design. For example, the United States Patent and Trademark Office often allows
registrations76 in class 12 that are intended to cover both toy cars and actual cars. In South
Africa, the correct classification is therefore of the utmost importance, as is the need to file
separate applications in every class where a design is likely to be used. It will be apparent that
the importance of classification for designs is akin to the importance of classification in trade
mark law, as opposed to the bibliographic role that classification fulfils in patent law.
It should also be noted that the acts of ‘offering to dispose’, and ‘exercising’, which are
exclusive acts in terms of the Patents Act77 are not included in the corresponding section of
the Act. Accordingly, advertising the future sale of an article embodying a registered design
is allowable, provided it is not done in conjunction with the manufacture, importation, use
or disposal of the article.

73 2011 BIP 284 (GNP).
75 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs A36(6).
76 USD497327 and USD500710.

A design is registered from the date of application, which is the earliest of the priority
date of a convention application, the release date of an application or the date of filing an
application at the Designs Office if there is neither a release date nor a priority date. An
aesthetic design registration has a duration of 15 years while a functional design registration
has a duration of 10 years from the date of application. The duration of a design cannot be
extended. Renewal fees are payable from the third year calculated from the date of
application and annually thereafter.
7.5 Revocation
As mentioned above, the procedure for obtaining a registered design does not involve any
form of substantive examination, and neither does it allow for third party opposition to the
registration of the design. Provision is, however, made for the revocation of a design once
granted. This section deals with the revocation of conventional aesthetic and functional
designs. The revocation of traditional designs is dealt with in paragraph 7.8.3 of this chapter.
7.5.1 The absolute nature of the grounds for revocation

The Act specifies a number of grounds for revocation, but it is not entirely clear whether the
list of grounds is exhaustive. In the Patents Act,78 it is specifically stated that a revocation
application can be made ‘… on any one of the following grounds only, namely …’ (our
emphasis). It is therefore clear that the list of grounds in the Patents Act is exhaustive, and
that no additional grounds can be relied on during revocation proceedings. However, in the
Designs Act the corresponding wording is ‘… on the following grounds, namely …’, with the
notable exclusion of the word ‘only’. It is therefore arguable that the list of grounds for
revocation is not exhaustive, but considering the limitations of the expressio unius est exclusio
alterius rule, and given the structure of the section, it would appear more likely that the list
is exhaustive.
7.5.2 The applicant for revocation

Section 31 provides that ‘any person’ may apply for revocation. There is no need for an
applicant for revocation to show any interest in the outcome, although this would usually
be the case.
7.5.3 When an application for revocation may be brought

Section 31 provides that an application for revocation may be applied for ‘at any time’. In
practice this means that an application for revocation may be applied for from the date of
registration of the design to the date on which it expires, and even after expiry.79
7.5.4 The grounds for revocation

The grounds for revocation are as follows:80
1. The application for the registration of the design was not made by a person entitled
thereto under section 14.
2. The registration of the design is in fraud of the rights of the applicant or of any person
under or through whom he claims.

79 Wright Boag & Head Wrightson (Pty) Ltd v Buffalo Brake Beam Company 1965 BP 222 (CP).
80 S 31of the Designs Act 195 of 1993.

3. The design in question is not registrable under section 14.

4. The application for the registration of the design contains a false statement or
representation which is material and which the registered proprietor knew was false at
the time when the statement or representation was made.
5. The application for the registration of the design should have been refused in terms of
section 16.
The Act81 furthermore expressly states that the registration of a design shall be granted for
one design only, but that no person may in any proceedings apply for the revocation of such
registration on the ground that it comprises more than one design.
7.5.4.1 Applicant not entitled

The meanings of ‘applicant’ and ‘proprietor’ have been discussed in paragraph 7.4.1 above.
If the registered proprietor is not the true owner of a design, the design is open to revocation.
This ground may be raised by a person who claims to be the true owner, or by any unrelated
third party.
7.5.4.2 Application in fraud of rights

Section 31(1)(b) states that a design can be revoked if the registration of the design is in fraud
of the rights of the applicant or of any person under or through whom he claims. In most
cases this would also entail that the applicant is not entitled, but this ground is differentiated
from that provided in section 31(1)(a) because it is only available to a defrauded party, and
an additional remedy is available to such defrauded party. The defrauded party may apply
to the court to have the fraudulent design granted to the defrauded party, with the design
still bearing the date of the revoked design.82
In so far as the interpretation of ‘fraud’ is concerned, the same interpretation should be
given to it as that given to the same ground for revocation in the Patents Act.83 In Botha v
Lindeque84 it was held that ‘fraud’ should be construed as conduct on the applicant’s part
deliberately designed to deprive the true proprietor of rights. The term should therefore not
be equated to the criminal act of fraud, and is more descriptive of general dishonest conduct
rather than an act which contains all the essential elements of fraud in the criminal law sense.
7.5.4.3 Design not registrable under section 14

If any of the requirements for registrability set out in section 14 of the Act is not met, a design
will be open to revocation. This ground therefore includes the following:
• The design is not a design as defined.
• The design is not new.
• The design is not original.
• The design is commonplace in the art in question.
• The design is not for an article which is intended to be multiplied by an industrial process.
• The design is an aesthetic design, and protection is sought for features necessitated solely
by the function which the article is intended to perform.
• The design relates to a method or principle of construction.
• The design is a functional design, and relates to an article in the nature of a spare part.

84 1955 BP 127 (CP).

The first ground mentioned above, namely that a design is not a design as defined, would
include situations where, for example, an aesthetic design is filed as a functional design and
vice versa, where the design does not meet the criteria of either an aesthetic design or a
functional design, or where a design is not applied to an article.
The other requirements of section 14 have already been dealt with in detail above.
7.5.4.4 False statement

A design will be open to revocation if the application for the registration of the design
contains a false statement or representation which is material and which the registered
proprietor knew was false at the time when the statement or representation was made. It is
important to note that the false statement must be material, and that it requires knowledge
on the part of the applicant. Clerical errors therefore do not fall under this ground for
revocation, and neither do innocent mistakes.
Some examples of false statements include:
• The applicant claims to be the proprietor of the design, but the applicant is not the author
of the design, and there is no chain of title in terms of which the applicant has obtained
the rights in the design from the author. This can also extend to the situation where the
applicant is the author, but has already assigned his rights to a third party who is now
the rightful proprietor.
• The applicant claims that the design was first made available to the public on the release
date stated in the application, but the actual release date is different from the claimed
release date. It should be noted that an exact release date is required, and not a mere
estimation.
• The applicant declares that to the best of its knowledge and belief there will be no lawful
grounds for revocation against a design granted on the application, even though the
applicant is aware of anticipating prior art or some other fundamental shortcoming.
• The application is a convention application, and the applicant states that the application
from which priority is claimed is the first application in a convention country in respect
of the design, even though the convention application is not in fact the first application
in a convention country.
7.5.4.5 Application should have been refused under section 16

If it appears to the registrar that an application was not made in the prescribed manner, the
application has to be refused.85 This section does not place an onus on the registrar to consider
the substantive registrability of the design application, but requires the registrar to ensure that
the formal application process is followed. Should a design application, for example, proceed
to grant without the Declaration and Power of Attorney form D3 having been executed and
filed by the applicant, the design will be open to revocation. It is accordingly important to note
that failure to comply with the formal filing requirements, set out in paragraph 7.4.2 above, is
not condoned by the subsequent registration of a defective application.
7.5.5 Procedure
An application for revocation takes the form of an application to the High Court, in which
both the registered proprietor of the design and the registrar are cited as respondents. Note
that, in contrast to the situation in patent law, there is no dedicated court having jurisdiction
over design matters, and normal rules of jurisdiction will therefore apply.

The application must be made on form D14, which has to be supported by evidence on
affidavit setting out the facts on which the applicant relies. However, in the case of FIFA v
Executive African Trading86 the court rejected an objection that an application for revocation
was defective because it was not contained on a form D14, and allowed an application
brought on an ‘ordinary’ notice of motion because the application included all the details
required to be recorded on the form D14.
Once the founding papers have been served and lodged, the application is dealt with in
accordance with the procedure set out in regulation 36 of the Regulations, which deals with
opposition in any matter in which opposition is allowed under the Act. Once the process
has taken its course, the application concludes in a hearing, and the court will decide
whether the design should be revoked or not. It should be noted that the process is effectively
brought by notice of motion, and that the ensuing process takes the form of application
proceedings. All evidence is accordingly on affidavit, and no oral evidence is allowed during
the hearing.
7.6 Infringement
This section deals with infringement of conventional aesthetic and functional designs.
Infringement of traditional designs is dealt with in paragraph 7.8.4 of this chapter.
7.6.1 Locus standi

The registered proprietor may institute proceedings for infringement. A licensee may
not institute infringement proceedings, but the proprietor must give notice to every
licensee who is recorded as such in the register, who will then be able to intervene as a
co-plaintiff.87 The only exception to this rule is that a licensee that has been granted an
exclusive compulsory licence is able to institute infringement proceedings88 as if he were
the proprietor.
7.6.2 Determination of infringement

The test for infringement was succinctly summarised in BMW v Grandmark89 in which it was
said that to ascertain whether or not there has been an infringement of a design registration,
it is necessary to establish whether:
• the alleged act is of such a nature that it could constitute an infringement of the design
registration or is excusable;
• the article in issue is included in the class in which the design is registered;
• the alleged infringement falls within the scope of the registration having regard to the
representations and definitive statement filed in support of the application for
registration; and
• the defendant or respondent has a valid defence.
7.6.2.1 Acts of infringement

As discussed in paragraph 7.4.3 above, the proprietor of a design is granted the right in South
Africa to exclude others from making, importing, using or disposing of any article embodying the
86 Federation Internationale de Football Association (FIFA) v Executive African Trading CC and Registrar of Designs 2011
(GNP).
89 Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another [2012] ZAGPPHC 139.

registered design, or a design not substantially different from the registered design. A third party
can therefore only potentially infringe a design if at least one of these acts of infringement is
committed. The first step is therefore to determine if there has indeed been an act of infringement.
The meaning of ‘acts of infringement’ is not defined in the Act, but a broad interpretation
should be applied. Accordingly, acts of infringement include:
• Making: Forming something by putting together parts;90 manufacturing an infringing
article in South Africa irrespective of subsequent sale; manufacturing an infringing article
under the guise of repair;91
• Importing: Making goods abroad and subsequently importing them into South Africa,
but not extending to goods in transit through South Africa;
• Using: Taking, holding or deploying as a means of accomplishing or achieving
something,92 excluding innocent possession where there is no intention of achieving or
accomplishing anything;
• Disposing of: Getting rid of, dealing out or distributing, including selling, letting and
donating.
7.6.2.2 Act in correct class

Because of the class-specific nature of South African registered designs, the next step is to ensure
that the act of infringement is in fact committed in the class in which the design has been
registered. If the design is for a new shoe design (class 2), but the third party is selling key holders
in the form of the shoe (class 3), the design will not be enforceable against the third party, even
if the shoe in the key holder embodies the design of the shoe represented in the design. The
design may therefore lawfully be applied to articles that do not fall within the registered class.93
7.6.2.3 Assessment of infringement

A number of issues need to be considered before and during the actual comparison of the
allegedly infringing article with the representations of the registered design. These include
the following:
• the identity of the likely consumer, through whose eyes the court will interpret the design,
as this may have an impact on the interpretation of the scope of the design, as well as the
infringement of the design;94
• the definitive statement, which delineates the scope of the claimed design.95 The
definitive statement may for example disclaim certain features that are shown in the
drawings, or may emphasise what the proprietor believes are the essential features of
the design. Interpretation of the definitive statement is therefore critical in determining
the scope of the claimed protection;
• the explanatory statement (if any) to assist in interpreting the scope of the protection
afforded by the design registration.96
This brings us to the question of infringement, which involves a determination of whether

the allegedly infringing article embodies the registered design or a design not substantially

91 Dana Corporation v Rhobrake (Pty) Limited 1992 BP 297 (CP).
93 W R B Enterprises (Pty) Limited and Another v Plasbox Industrial Appliances (Pty) Limited and Another 1975 (1) SA 801 (T).
94 Swisstool Manufacturing Co v Omega Africa Plastics 1975 (4) SA 379 (W); Homecraft Steel Industries (Pty) Ltd v SM Hare
& Son (Pty) Ltd 1984 (3) SA 681 (A).
96 Reg 15(4) of the Design Regulations 1999.

different from the registered design. The question of imperfect recollection does not apply,97
and the article and the registered design must be viewed side by side and a little way apart.98
In practice, a design and an allegedly infringing article are seldom identical, and the
phrase ‘substantially different’ is therefore very important. The interpretation of the scope
of ‘substantially different’ cannot be determined in isolation, and requires a comparison of
the registered design with the closest prior art. In Homecraft v Hare Corbett JA quoted with
approval the following passages from Russell-Clarke:99
If only small differences separate the registered design from what has gone before,
then equally small differences between the alleged infringement and the registered
design will be held to be sufficient to avoid infringement.
and
Thus, it may be said that a registered design which is possessed of substantial novelty
and originality will have a broader reading given to the monopoly which it affords
than will a design which is barely novel or original. In the latter case, where the
novelty is small, the Court may refuse to hold anything to be an infringement, unless
it is almost exactly like the registered design.
It is against this background that the court can proceed to compare the allegedly infringing
article with the registered design, and establish whether the article embodies the registered
design or a design not substantially different from the registered design.
This approach was also adopted in Clipsal v Trust Electrical Wholesalers,100 where it was
also stated that:
This then brings me to the question of infringement which involves a determination

of whether the respondents’ products embody the registered design or a design not
substantially different from the registered design. The search is not for differences
but for substantial ones.
In Clipsal v Trust Electrical Wholesalers, Harms ADP also applied the test of ‘what anticipates
if earlier, infringes if later’ which furthermore reinforces the point that small insubstantial
differences will generally not save a third party from infringing a registered design, in
particular in cases where the level of novelty of the design is not such that small differences
are material.
7.6.3 Defences
When sued for infringement, the defendant can rely on a number of defences, including:
• non-infringement of the design;
• invalidity of the design;
• exhaustion of rights;101
• use of integrated circuit topographies for private purposes or for the sole purpose of
evaluation, analysis, research or teaching;102
98 Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd 1984 (3) SA 681 (A).
99 AD Russell-Clarke Copyright in Industrial Designs 4 ed (1968).
100 [2007] SCA 24 (RSA).

• performing of infringing acts prior to the registration date of the design;103,104

• leave and licence;105
• acquiescence, election, waiver and estoppel.
In addition, by way of a counterclaim, the defendant may apply for the revocation of the
design on any one or more of the grounds of revocation set out in the Act.106
7.6.4 Remedies
A successful plaintiff in an action for infringement is usually entitled to the following relief:107
• an interdict ordering the defendant to refrain from further infringement. If the defendant
continues to infringe the registered design and ignores the interdict he or she may be
committed for contempt of court.
• an order for the surrender of any infringing product or any article or product of which
the infringing product forms an inseparable part.
• damages. A defendant is liable for damages in the same way he or she would be so liable
for committing any other type of wrong. In other words, the defendant must compensate
the plaintiff for his or her patrimonial loss, actual or prospective, sustained through the
infringement. It is sometimes very difficult to prove the exact quantum of damages suffered,
but the quantum can include any loss of profits that the proprietor of the design has
sustained in respect of those infringing articles that would have been made and sold by the
proprietor, had it not been for the sale of infringing articles carried out by the infringer.108 In
view of the difficulty in calculating and proving damages and in order to keep the issues
before the trial judge clear, it is not unusual to ask the court initially only for an enquiry into
damages so that complex questions such as loss of profits and so forth can be left to be
considered once the questions of design infringement and validity have been adjudicated
upon. Such a request can be made without abandoning any rights to claim damages.
• in lieu of damages, the plaintiff may, at his or her option, be awarded an amount
calculated on the basis of a reasonable royalty which would have been payable by a
licensee in respect of the design concerned.
• costs of suit.
7.6.5 Procedure
The Regulations do not prescribe a specific process to be followed in the case of design
infringement proceedings, and the patentee can therefore make an application to the High
Court, or institute action before the High Court in accordance with the Uniform Rules of Court.
7.7 General
7.7.1 Correction and amendment

Section 26 of the Act provides for the correction of clerical errors, as well as the amendment
of other documents associated with a design or design application, but for which no express
provision is made. In terms of this section the registrar may authorise the correction of any

105 Grossberg v Central Cabinet Works (Pty) Ltd 1955 (2) SA 346 (T).
108 Omega Africa Plastics (Pty) Ltd v Swisstool Manufacturing Co (Pty) Ltd 1978 (3) SA 465 (A).

clerical error or error in translation in any certificate of registration, application for the
registration of a design or document lodged in pursuance of such application, or in the
register, as well as the amendment in any other manner of any document for the amending
of which no express provision is made in the Act.
There is no case law that deals with the interpretation of a clerical error in the context of
design law, but one can assume that the interpretation will be the same, or at least very
similar, to that in patent law. In McCauley Corporation Ltd v Brickor Precast (Pty) Ltd 109
MacArthur J was of the view that a clerical error is an unintentional careless error. However,
in Hokuriku Pharmaceutical Co Ltd v Cipla-Medpro (Pty) Ltd110 the court applied a test closer
to that used in UK law, and held that a clerical error is a mistake made in a mechanical
process such as writing or copying. In terms of this interpretation a mistake made out of
sheer ignorance is still regarded as a clerical error.
Section 27 of the Act provides for the amendment of an application for registration, or
the amendment of a registered design. The application to amend is made to the registrar,
and the application must set out the nature of the proposed amendment, while also
providing full reasons for the amendment, in other words stating why the amendment is
to be effected.
No amendment will be allowed if the effect of the amendment would be to introduce
new matter or matter not in substance disclosed in the application for the registration of a
design or the registration of the design before amendment, or if the registration of a design
as amended would include any matter not fairly based on matter disclosed in the document
before amendment. This is so irrespective of whether the amendment is to be made to a
design application or a registered design.
In addition, no amendment of a registered design, that is a post-registration amendment,
will be allowed if the scope of the registered design after amendment would be wider in
scope than it was before amendment. For example, if the design prior to amendment
extended to a cup having a particular shape which is combined with a particular pattern (i.e.
the combination of the shape and the pattern), it would not be possible to widen the scope
by deleting reliance on the pattern so as to claim the shape alone, because this would result
in broader protection (i.e. the shape of the cup irrespective of the pattern applied thereto).
The requirements for amending a registered design are therefore clearly more onerous than
the requirements for amending a design application.
An application to amend a registered design is furthermore open to opposition by third
parties, which is not the case with an application to amend a design application.
7.7.2 Restoration
In order for a registered design to remain in force, annual renewal fees are payable from the
end of the third year after the registration date of the design. If a renewal fee is not paid, the
design will lapse.111 A six month grace period for late payment of the renewal fee is available
upon application to the registrar, and subject to the payment of an additional fee.
Section 23 provides that where the registration of a design has lapsed owing to
non-payment of a renewal fee within the prescribed period or the six month grace period
referred to above, the registered proprietor may apply to the registrar for the restoration of
such registration. This is, however, only possible if the failure to pay the renewal fee was
109 1989 BP 314 (CP).

110 1999 BIP 384 (CP).

unintentional, and if there has not been an undue delay between the time when the
proprietor became aware of the fact that the design had lapsed and the time when the
application for restoration was made.
It should be noted that there is some recourse for third parties who have begun to exploit
the design during the period between the lapsing of the design and its restoration. In
particular, where a registration of a design has been restored, any person who, during the
period between the lapse of such registration and its restoration, has expended any money,
time or labour with a view to making or disposing of articles embodying the registered
design, may apply to the court for compensation in respect of the money, time and labour
so expended.112
7.7.3 Assignment and licensing

Assignment and licensing are dealt with in chapter 9. The Act also makes provision for
compulsory licences in the case of abuse of rights.113
7.8 Traditional designs

A newcomer to the registered design scene is the traditional design, which is in turn
subdivided into indigenous designs and derivative indigenous designs. Traditional designs
were introduced by the Intellectual Property Laws Amendment Act,114 which, at the time of
writing, has yet to be promulgated.
7.8.1 Basic requirements for obtaining a traditional design
7.8.1.1 Forms of traditional designs

In addition to conventional aesthetic (Part A) and functional (Part F) designs as
discussed above, the Act also makes provision for the registration of traditional (Part T)
designs. Traditional designs in turn include indigenous designs, as well as derivative
indigenous designs.
An indigenous design means an aesthetic or functional design with an indigenous or
traditional origin and a traditional character, and includes indigenous cultural expressions
or knowledge which was created by persons who are or were members, currently or
historically, of an indigenous community and which design is regarded as part of the heritage
of the community.115
An aesthetic indigenous design refers to an indigenous design applied to an article for
the pattern or the shape or the configuration or the ornamentation thereof, or for two or
more of those purposes, 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.116
A functional indigenous design refers to an indigenous design applied to an article for
the pattern or the shape or the configuration thereof, or for two or more of those purposes,
and by whatever means it is applied, having features which are necessitated by the function
which the article to which the indigenous design is applied, is to perform.117

114 Intellectual Property Laws Amendment Act 28 of 2013.

A derivative indigenous design means any aesthetic or functional design applied to

any form of indigenous design recognised by an indigenous community as having an
indigenous or traditional origin, and a substantial part of which was derived from
indigenous cultural expressions or knowledge, irrespective of whether such derivative
indigenous design was derived before or after the commencement of the Intellectual
Property Laws Amendment Act.118
An aesthetic derivative indigenous design refers to a derivative indigenous design applied
to an indigenous design for the pattern or the shape or the configuration or the
ornamentation thereof, or for two or more of those purposes, 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.119
A functional derivative indigenous design refers to a derivative indigenous design applied
to an indigenous design for the pattern or the shape or the configuration thereof, or for two
or more of those purposes, and by whatever means it is applied, having features which are
necessitated by the function which the indigenous article to which the derivative indigenous
design is applied, is to perform.120
Aesthetic indigenous designs and aesthetic derivative indigenous designs are registered
in Part TA, and functional indigenous designs and functional derivative indigenous designs
are registered in Part TF of the register.
The indigenous community referred to in the definitions above means any recognisable
community of people originated in or historically settled in a geographic area or areas
located within the borders of South Africa, as such borders existed at the date of
commencement of the Intellectual Property Laws Amendment Act, characterised by social,
cultural and economic conditions which distinguish them from other sections of the
national community, and who identify themselves and are recognised by other groups as
a distinct collective.121
7.8.1.2 Requirements for registrability

There is no requirement for an indigenous design to be new, original or not commonplace
in the art in question. By definition, an indigenous design cannot adhere to requirements
of this kind, which implies a departure from conventional registered design principles. As
long as a design applied to an article has an indigenous or traditional origin and a traditional
character, the design will be protectable as an indigenous design.
However, a derivative indigenous design has to be new, in addition to including features
which are based on or derived from an indigenous design of an indigenous community.122
A derivative indigenous design is deemed to be new if it is different from or does not form
part of the state of the art immediately before the date of application for registration thereof,
or the release date thereof, whichever is the earlier. If the release date is a date after the date
of commencement of the Intellectual Property Laws Amendment Act, the application for
the registration of the design must be lodged within two years of such release date.123
No specific requirement is laid down for an aesthetic derivative indigenous design to
be original, or for a functional derivative indigenous design not to be commonplace in

122 S 53B(1) of the Designs Act 195 of 1993.

the art in question, but it is arguable that these requirements are indeed applicable because
the provisions of the Act, as they apply to conventional aesthetic and functional designs,
should be applied to indigenous designs and derivative indigenous designs in so far as they
can be applied.124
7.8.2 Procedure for obtaining registration of a traditional design
7.8.2.1 The applicant

An indigenous community may apply for the registration of an indigenous design.125 The
proprietor of a traditional design is furthermore defined in the Act.126
The author of a derivative indigenous design may apply for the registration of the
derivative indigenous design.127
7.8.2.2 The procedure

An application for a traditional design must be made in the prescribed manner, and the same
procedure used for conventional designs will be applied in so far as it can be applied.
It is important to note that no right in a derivative indigenous design shall vest or be
eligible for registration unless:
• prior informed consent has been obtained from the relevant authority or indigenous
community;
• disclosure of the indigenous cultural expressions or knowledge has been made to the
Commission;128 and
• a benefit-sharing agreement between the applicant and the relevant authority or
indigenous community has been concluded.129
The registrar will examine any application for the registration of a traditional design
and, if it complies with the requirements of the Act, register the design in Part T of the
database, which for the purposes of this Act means the relevant sections of the National
Database for Indigenous Knowledge as defined in section 1 of the Copyright Act.130
Once a traditional design has been registered the Council131 must be notified.132
7.8.2.3 Grant, duration and effect

Once a traditional design application has proceeded to registration, the proprietor of the
design is granted, for the duration of the registration, the right in South Africa to exclude
others from making, importing, using or disposing of any article included in the class in
which the design is registered, and embodying the registered design, or a design not
substantially different from the registered design.133
124 S 53A(1) of the Designs Act 195 of 1993.

128 ‘Commission’ is not defined in the design section of the Intellectual Property Laws Amendment Act but it is assumed
to have the same meaning as in the trade marks and copyright sections, i.e. the Commission established in terms of
section 185 of the Companies Act 71 of 2008.
130 S 53C(12) of the Designs Act 195 of 1993.
131 ‘Council’ means the National Council for Indigenous Knowledge as defined in section 1 of the Copyright Act 98 of 1978.
133 S 53(D), read with s 20, of the Designs Act 195 of 1993.

An indigenous design remains in force in perpetuity,134 and there is no requirement

for the payment of renewal fees. The duration of the registration of an aesthetic derivative
indigenous design is 15 years from the date of registration or from the release date,
whichever date is earlier, and the duration of the registration of a functional derivative
indigenous design is 10 years from the date of registration or from the release date, whichever
date is earlier.135 A derivative indigenous design remains in force subject to the payment of
renewal fees.
7.8.3 Revocation of a traditional design

The provisions relating to the revocation of conventional designs also apply, with the
necessary changes, to the revocation of traditional designs.136 It follows that the grounds for
revocation set out in section 31(1) of the Act apply, but only to the extent that this makes
sense in the context of traditional designs. An indigenous design will, for example, not be
open to revocation because it is not new in the context of section 14 of the Act, and the
specific registrability requirements of traditional designs therefore need to be read into
section 31.
Any application relating to the revocation of a traditional design must also be served on
the Council.137 The Council must then notify the registrar within a prescribed period whether
it intends to contest the revocation.138
7.8.4 Infringement of a traditional design

The general principles of design infringement, as well as the provisions relating to
design infringement in the Act apply, in so far as they can be applied, to traditional
designs.139
An additional exception relating to the infringement of a traditional design is that the
proprietor of a traditional design (indigenous design or a derivative indigenous design) will
not be entitled to interfere with or restrain a person who commenced making, importing,
using or disposing of any articles included in the class in which the traditional design is
registered and embodying the traditional design or a design not substantially different from
the traditional design, prior to the commencement of the Intellectual Property Laws
Amendment Act, provided that if any commercial benefit is derived from any such act, a
royalty, benefit, or both such royalty and benefit, must be paid by such person to the
proprietor of the traditional design.
A further exception to infringement is that a traditional design may be used without
obtaining prior consent of the traditional design proprietor, if it is for the purpose of:
• private study or private use;
• professional criticism or review;
• reporting on current events;
• education;
• scientific research;
• legal proceedings; or
134 S 53E(1)(b) of the Designs Act 195 of 1993.

135 S 53E(1)(a) of the Designs Act 195 of 1993.
137 S 53E(2) of the Designs Act 195 of 1993.
138 S 53E(3) of the Designs Act 195 of 1993.
139 S 53A(1) of the Designs Act 195 of 1993.

• the making of recordings and other reproductions of indigenous cultural expressions or

knowledge for purposes of their inclusion in an archive, inventory, dissemination for
non-commercial cultural heritage safeguarding purposes and incidental uses.140
Two provisos to the above are that only such portions as are reasonably required are used
and that the traditional design proprietor’s name is acknowledged.141
7.8.5 General
7.8.5.1 Benefit sharing

As discussed above, the applicant for a derivative indigenous design must enter into a
benefit-sharing agreement with the relevant authority or indigenous community. In addition,
a person who commenced making, importing, using or disposing of any articles included
in the class in which the traditional design is registered and embodying the traditional design
or a design not substantially different from the traditional design, prior to the
commencement of the Intellectual Property Laws Amendment Act, must also pay a royalty,
benefit, or both such royalty and such benefit to the proprietor of the traditional design. The
owner of a derivative indigenous design must furthermore also pay a royalty, benefit, or both
such royalty and such benefit, to the owner of an indigenous design from which the
derivative indigenous design was derived.142
140 S 53F(8) of the Designs Act 195 of 1993.


Chapter 8 Traditional knowledge,
traditional cultural
expressions and folklore
TERTIA BEHARIE AND TSHEPO SHABANGU
8.1 Introduction: background 332

8.1.1 Definition of traditional knowledge 333
8.1.2 Structure of this chapter 333
Part A: 8.2 Biodiversity and traditional knowledge with respect to patents 333
8.2.1.1 Biodiversity 334
8.2.1.2 Indigenous biological resource 334
8.2.1.3 Indigenous species 334
8.2.1.4 Genetic resource 334
8.2.1.5 Traditional knowledge and use 334
8.2.1.6 Bioprospecting 334
8.2.1.7 Biopiracy 335
8.2.2 The Convention on Biological Diversity 335
8.2.3 The Nagoya Protocol 336
8.2.4 The National Environmental Management: Biodiversity Act 10 of 2004 (NEMBA) 336
8.2.4.1 Background 336
8.2.4.2 Permits 337
8.2.4.3 Benefit-sharing agreements 338
8.2.4.4 Material transfer agreements 338
8.2.4.5 Discovery phase notification form 338
8.2.5 The Patents Amendment Act 20 of 2005 338
8.2.6 Case studies 339
8.2.6.1 Hoodia 339
8.2.6.2 Rooibos/honeybush 340
8.2.6.3 Pelargonium sidoides and Pelargonium reniforme 341
Part B: 8.3 Traditional knowledge and traditional cultural expressions with respect to
trade marks, copyright, performers’ protection and designs 342
8.3.1 Definition of traditional cultural expressions or expressions of folklore 342
8.3.2 The interface between TK, TCEs/folklore and conventional intellectual property (IP) 343
8.3.3 Challenges surrounding the protection of TK/TCEs 344
8.3.4 The international response 346
8.3.5 South Africa’s solution 347
8.3.6 Intellectual Property Laws Amendment Act 28 of 2013 (IPLAA) 347
8.3.6.1 Nature and objectives of the IPLAA 347
8.3.7 Common definitions and concepts introduced into host Acts 348
8.3.7.1 Indigenous community 348
8.3.7.2 Indigenous cultural expressions or knowledge 348
8.3.7.3 Community protocols 349
8.3.7.4 Unsatisfactory approach 350

8.3.8 Administrative structures 350

8.3.8.1 National Council for IK 350
8.3.8.2 National Trust for IK 351
8.3.8.3 National Trust Fund for IK 351
8.3.8.4 National Database for IK 351
8.3.9 Protection of traditional properties in host Acts 353
8.3.9.3 Performers’ protection 354
8.3.9.4 Designs 355
8.3.10 Saving of vested rights 355
8.3.11 Role of collecting societies 355
8.3.12 Dispute resolution 357
8.3.13 Modes of protection for TK/TCEs 357
8.4 Conclusion 358
8.1 Introduction: background

Under intellectual property laws, owners are granted certain exclusive rights to a variety of
intangible assets, including patents, trade marks etc. It happens that from time to time these
assets are based on, or derived from, traditional knowledge, practices of traditional knowledge
holders or our indigenous biological resources. As a result the interface between intellectual
property and the management of traditional knowledge or indigenous biological resources
has become a major issue of contention at present. This has been particularly marked since
the implementation of the Agreement on Trade-Related Aspects of Intellectual Property
Rights, 1994 (TRIPS Agreement), which establishes minimum levels of intellectual property
protection for members of the World Trade Organization (WTO). The TRIPS Agreement is
part of the General Agreement on Tariffs and Trade (GATT) and is administered by the WTO.
There has been considerable debate in recent years at both the WTO and the World
Intellectual Property Organization (WIPO) about the need to protect what might be loosely
termed ‘traditional knowledge’ under the general umbrella of intellectual property. Progress
in reaching substantial international consensus on whether protection of this form of
property is desirable, and if so, what form it should take, has been slow. There appears to be
a general understanding that some measure of protection for traditional knowledge is
desirable but there is still much work to be done before any international treaty or approved
model law can be formally adopted. As discussed below, however, a draft international treaty
and a draft model law are in the process of being formulated by WIPO.
Furthermore, while the meaning of the term Traditional Knowledge (TK) (as well as the
meanings of certain of its subsets such as Traditional Cultural Expressions (TCEs) and
Folklore), which has featured in the international discussions, has been the subject of
considerable debate, an internationally accepted definition for this term has yet to be found.
However, some of the generally used descriptions for TK are instructive and useful.
Despite the fluid international situation regarding the protection of TK, South Africa has
implemented statutory measures to grant a degree of protection to various forms of TK. It is
therefore important to have some clarity as to what TK means and entails and to examine
how the protection of TK is dealt with in South African statutes.

8.1.1 Definition of traditional knowledge
The feasibility of devising a fixed definition of TK has been questioned in view of the evolving
and diverse nature of this subject. The various definitions or descriptions applied to TK
include the following:
• TK is ‘a cumulative body of knowledge, know-how, practices and representations
maintained and developed by people with extended histories of interaction with
the natural environment. These sophisticated sets of understandings, interpretations
and meanings are part and parcel of a cultural complex that encompasses language,
naming and classification systems, resource use, practices, ritual, spirituality and
world view’.1
• TK is ‘knowledge, know-how, skills and practices that are developed, sustained and
passed on from generation to generation within a community, often forming part of its
cultural or spiritual identity’.2
• TK is regarded as referring to ‘the content or substance of knowledge that is the
result of intellectual activity and insight in a traditional context, and includes the
know-how, skills, innovations, practices and learning that form part of traditional
knowledge systems, and knowledge that is embodied in the traditional lifestyle of a
community of people, or is contained in codified knowledge systems passed between
generations. It is not limited to any specific technical field, and may include
agricultural, environmental and medicinal knowledge, and knowledge associated with
genetic resources’.3
8.1.2 Structure of this chapter

This chapter is divided into two sections, each dealing with a separate aspect of
TK governed by separate legislation. Part A deals with biodiversity and traditional
knowledge with respect to patents, while Part B deals with traditional knowledge and
traditional cultural expressions with respect to trade marks, copyright, performers’
protection and designs.
The legislation relevant to patents with respect to biodiversity and traditional knowledge
in Part A is the National Environmental Management: Biodiversity Act 10 of 2004 (NEMBA).4
The remaining areas of intellectual property falling into Part B are dealt with in the
Intellectual Property Laws Amendment Act 28 of 2013 (IPLAA). At the time of writing the
IPLAA has been passed but has not yet been put into operation. For the purposes of this
chapter the IPLAA will be deemed to be of full force and effect.
Part A: 8.2 Biodiversity and traditional knowledge with respect

to patents
As a prelude to discussing the protection granted in South Africa to biodiversity and to the
form of traditional knowledge dealt with in Part A, it is necessary to identify and explain the
relevant terminology and certain international agreements which play a significant role in
the matter. Thereafter, the relevant provisions of our law will be addressed.
1 Science and Traditional Knowledge Report from the International Council for Science (ICSU) Study Group on
Science and Traditional Knowledge, March 2002, p. 3.
2 www.wipo.int/tk/en/tk/.
3 wipo/grtkf/ic/13/7: Recognition of Traditional Knowledge within the Patent System.
4 For full text of NEMBA see www.gov.za.

8.2.1 Definitions
As mentioned above, there are no internationally accepted definitions for several of the
terms used in connection with TK. With regard to the discussion in this part of the chapter,
the terms are given the meanings employed in NEMBA, or generally accepted meanings.
8.2.1.1 Biodiversity5
Biological diversity, or biodiversity, is the term given to the variety of life on earth and
encompasses plants, animals and microorganisms. Certain biological material is limited in
origin to a specific area and this is where the term indigenous biodiversity is relevant.
8.2.1.2 Indigenous biological resource6

An indigenous biological resource is defined in NEMBA as:
• any living or dead animal, plant or other organism of an indigenous species; derivatives
thereof; genetic material derived therefrom; a cultivar, variety, strain, derivative, hybrid
or fertile version thereof; and any exotic species which has been altered with any
indigenous genetic material or an indigenous chemical compound.
The definition excludes:

• genetic material of human origin; any exotic species which has not been altered with any
indigenous genetic material or an indigenous chemical compound; and any indigenous
biological resource listed in the International Treaty on Plant Genetic Resources for Food
and Agriculture.7
8.2.1.3 Indigenous species8

An indigenous species is defined as a species that occurs, or has historically occurred,
naturally in a free state in nature within the borders of South Africa, but excludes a species
that has been introduced into South Africa as a result of human activity.
8.2.1.4 Genetic resource9

A genetic resource includes any material of animal, plant, microbial or other biological origin
containing functional units of heredity and may also include the genetic potential or
characteristics of any species.
8.2.1.5 Traditional knowledge and use

In the present context, traditional knowledge refers to the knowledge associated with biodiversity
and interactions among plant and animal species. Traditional use has a similar meaning.
8.2.1.6 Bioprospecting
Bioprospecting is the term used to describe the process of searching for new potentially
valuable products when such products are based on biological resources and traditional
knowledge, and then of commercialising such new products. This includes research on, or
developments or applications of, indigenous biological resources for commercialisation or
industrial exploitation.
5 www.wipo.int/tk/en/resources/glossary.html#6.
6 Ss 1(1) and 80(2) of NEMBA 10 of 2004.
7 www.planttreaty.org/.
8 S 1(1) of NEMBA 10 of 2004.
9 S 1(1) of NEMBA 10 of 2004.

8.2.1.7 Biopiracy
Biopiracy is the term used to describe the situation where traditional knowledge originating
with indigenous people is used by others for profit, without permission from, and with little
or no recognition of, the indigenous people.
PAUSE FOR Biopiracy and patents

REFLECTION Filing an application for a complete patent application is regarded as commercialisation in
South Africa. The controversy lies in the fact that bioprospectors draw on indigenous
biological resources and/or traditional knowledge and then patent their findings without
recognising or acknowledging that the knowledge is not new or was not invented by the
professed inventor. This deprives the indigenous community of the rights to commercial
exploitation of the technology that they themselves have developed.
8.2.2 The Convention on Biological Diversity

The Earth’s biological resources are vital to humanity’s economic and social development. As
a result, there is a growing recognition that biological diversity is a global asset of tremendous
value to present and future generations. At the same time, the threat to species and ecosystems
is increasing at an alarming rate. In response to this, the first international attempt was made
to protect the world’s biodiversity in the form of the Convention on Biological Diversity (CBD).10
The CBD is an international legally binding treaty which came into force in 1993. It has
three main goals: conservation of biodiversity, sustainable use of biodiversity, and fair and
equitable sharing of the benefits arising from the use of biodiversity, including by appropriate
access to genetic resources and by appropriate transfer of relevant technologies, taking into
account all rights over those resources and rights to technologies, and by appropriate funding.
Its overall objective is to encourage actions which will lead to a sustainable future. South
Africa signed the CBD on 4 June 1993 and deposited its ratification instruments on 2
November 2005.11
Some important sections of the CBD are highlighted below.
Article 15 affirms that States have sovereign rights over their biological resources. In
particular, before access to any indigenous biological resource is allowed, a recipient is
supposed to obtain informed consent from the providing contracting party.12 In order to
promote the application of these provisions, Article 15 also provides that each contracting
party must take legislative, administrative and policy measures to establish financial
mechanisms for sharing in a fair and equitable way the results of research and development
and the benefits arising from the commercial utilisation of genetic resources, with the
contracting party providing such resources.
Article 19 provides for the handling of biotechnology and the distribution of its benefits.
Articles 19(1) and (2) provide that each contracting party must take measures, whether
legislative, administrative or policy measures, to provide for effective participation in
biotechnological research activities. It is also provided that each contracting party must take
all practicable measures to promote and advance access, on a fair and equitable basis, by
contracting parties to the results and benefits arising from biotechnologies based upon
genetic resources. Such access must be on mutually agreed terms.
10 For the full text of the CBD see www.cbd.int/convention/text.

11 For a list of the current member countries of the CBD, see www.cbd.int/information/parties.shtml.
12 A contracting party is a State which has acceded to the CBD.

As a signatory to the CBD, South Africa introduced NEMBA in order to comply with
its international obligations. In addition, in order to ensure full compliance with the CBD
on access to genetic resources, and fair and equitable sharing of benefits arising from
their use, the Patents Act 57 of 1978, was amended by the Patents Amendment Act 20 of 2005,
to link it to NEMBA.
8.2.3 The Nagoya Protocol

As indicated above, one of the objectives of the CBD is to ensure fair and equitable sharing
of benefits arising from the utilisation of genetic resources. To further advance the
implementation of this objective, the World Summit on Sustainable Development, which
was initiated by the United Nations, called for the negotiation of an international regime,
within the framework of the CBD, to promote and safeguard the fair and equitable sharing
of benefits arising from the utilisation of genetic resources.
After many years of negotiations, the Nagoya Protocol13 on Access to Genetic Resources
and the Fair and Equitable Sharing of Benefits Arising from their Utilisation, was adopted
on 29 October 2010 in Nagoya, Japan. The Nagoya Protocol will enter into force 90 days after
the deposit of the fiftieth instrument of ratification, acceptance, approval, or accession. South
Africa ratified the Protocol on 10 January 2013.14
This international agreement aims at regulating the sharing of the benefits arising from
the utilisation of genetic resources in a fair and equitable way, including by appropriate
access to genetic resources and by appropriate transfer of relevant technologies, taking into
account all rights over those resources and technologies, and by appropriate funding,
thereby contributing to the conservation of biological diversity and the sustainable use of
its components. For example, the agreement makes provision for the establishment of
National Focal Points (NFPs) and Competent National Authorities (CNAs) to serve as contact
points for information. Such authorities will also be able to cooperate on issues of
compliance. Provision is also made for an Access and Benefit-sharing Clearing-house to
share information such as domestic regulatory access and benefit sharing requirements or
information on NFPs and CNAs.
8.2.4 The National Environmental Management: Biodiversity Act 10 of

2004 (NEMBA)
8.2.4.1 Background
As mentioned above, South Africa has enacted NEMBA to give effect to the CBD.
NEMBA includes provisions to ensure that, where a patent is sought in South Africa for
an invention which is derived from an indigenous biological or genetic resource, adequate
compensation will be given to any person or community giving access to that indigenous
biological or genetic resource. Furthermore, it also ensures that indigenous communities
are compensated when an invention is based on, or derived from, traditional knowledge,
and where the indigenous community is the owner of that traditional knowledge. The
objectives of NEMBA are therefore to provide for (i) the management and conservation of
biological diversity within South Africa; (ii) the use of indigenous biological resources in a
sustainable manner; and (iii) the fair and equitable sharing among stakeholders of benefits
arising from bioprospecting involving indigenous biological resources.
13 For full text of the Nagoya Protocol, see www.cbd.int/abs.

14 The Nagoya Protocol has received the required deposits and will enter into force on 12 October 2014.

PAUSE FOR The geographical limitation of NEMBA

REFLECTION It is important to note that ‘indigenous biological or genetic resource’ means a South African
biological or genetic resource. In other words, NEMBA only deals with access to South African
biological and genetic resources and provides no protection for the biological and genetic
resources of other countries.
It is arguable that one of the weaknesses of NEMBA is that it is limited to South African
biological and genetic resources. For example, a plant that is indigenous to South Africa
may be indigenous to other African countries as well. A prime instance of this is the baobab
tree, which is widely distributed over Africa and Madagascar. Therefore, the traditional
knowledge associated with the indigenous biological resource may belong to indigenous
communities in South Africa as well as those in other African countries. It may well be asked
how the sharing of benefits would be dealt with in such a situation.
With respect to patents, there are certain important Chapters of NEMBA, together with
the Regulations,15 that must be highlighted. These Chapters (Chapters 6 and 7) set out
how the objectives of NEMBA are to be achieved. The purpose of these Chapters is (i) to
regulate bioprospecting involving indigenous biological resources; (ii) to regulate the
export from South Africa of indigenous biological resources for the purpose of
bioprospecting or any other kind of research; and (iii) to provide for a fair and equitable
sharing by stakeholders in benefits arising from bioprospecting involving indigenous
biological resources.
8.2.4.2 Permits
Section 81(1) of Chapter 6 of NEMBA prohibits any person from engaging without a permit
in bioprospecting involving any indigenous biological resource, or from exporting from
South Africa any indigenous biological resources for the purposes of bioprospecting or for
any other kind of research. Section 81(1) further states that before any application for a
permit may be considered by a relevant issuing authority, the applicant must at the request
of the issuing authority disclose to the issuing authority all information concerning the
proposed bioprospecting and the indigenous biological resources to be used for such
bioprospecting that is relevant for a proper consideration of the application.
Before any permit is issued, certain requirements have to be met.16 In particular, the
issuing authority must protect the interests of stakeholders, including any person or
community providing or giving access to the indigenous biological resources, and any
indigenous community whose traditional uses and knowledge about the indigenous
biological resource have initiated or will contribute to the proposed bioprospecting.
The issuing authority may issue a permit only if the applicant has disclosed all material
information relating to the relevant bioprospecting to the indigenous community and on
the basis of that disclosure has obtained the prior consent of the community. The permit
will also only be issued if the applicant and the stakeholder have entered into a material
transfer agreement that regulates the provision of, or access to, such resources, and a benefit-
sharing agreement that provides for sharing by the stakeholder in any future benefits that
may derive from the relevant bioprospecting.
15 For the full text of the NEMBA Regulations, see www.gov.za.

16 S 82 of NEMBA 10 of 2004.

8.2.4.3 Benefit-sharing agreements17

As indicated above, a permit will only be issued if the applicant enters into a benefit-sharing
agreement with the stakeholder. This agreement basically sets out the manner in which, and
the extent to which, the indigenous community will share in the benefits that may arise from
the bioprospecting. In particular, the benefit-sharing agreement should clearly identify the
indigenous biological resource, the current traditional uses associated with the resource, as
well as the manner in which the resource is to be utilised and the manner in which the
benefits are to be shared.
8.2.4.4 Material transfer agreements18

As indicated above, a permit will only be issued if the applicant enters into a material transfer
agreement with the stakeholder. The material transfer agreement basically prescribes the
particulars surrounding the collection, supply and/or export of the indigenous biological
resource. Such particulars include, for example, the particulars of the provider and recipient,
the area/source from which the indigenous biological resource is to be collected, the quantity
of the resource that is to be provided, as well as the purpose which the resource is to serve.
8.2.4.5 Discovery phase notification form19

According to the definition of ‘bioprospecting’ given above, one is engaged in bioprospecting
only when there is research on, or development or application of, an indigenous biological
resource for commercial or industrial exploitation. What happens in a case where research
is carried out on an indigenous biological resource for purposes other than commercial
exploitation?
NEMBA distinguishes between the ‘discovery phase’ of a bioprospecting project and the
‘commercial phase’. In the discovery phase, researchers attempt to find out if an indigenous
biological resource has any potential for further development into a commercial product.
People doing discovery phase research need to notify the Minister20 about what they are
doing, but do not require a bioprospecting permit. A bioprospecting permit is needed only
when the commercialisation phase commences.
The commercialisation phase of bioprospecting includes (i) the filing of any complete
patent application, whether in South Africa or elsewhere; (ii) obtaining or transferring any
intellectual property rights or other rights; (iii) commencing clinical trials and product
development, including the conducting of market research and the seeking of pre-market
approval for the sale of resulting products; or (iv) the multiplication of indigenous biological
resources through cultivation, propagation, cloning or other means to develop and produce
products, such as drugs, industrial enzymes, food flavours, fragrances, cosmetics, emulsifiers,
oleoresins, colours and extracts.
8.2.5 The Patents Amendment Act 20 of 2005

The Patents Amendment Act is linked to NEMBA in that it requires that every applicant who
lodges a complete patent application in South Africa must state whether or not the claimed
invention is based on or derived from an indigenous biological resource, a genetic resource,
or from traditional knowledge or traditional use.
17 S 83 of NEMBA 10 of 2004.
18 S 84 of NEMBA 10 of 2004.
19 For the details of the Discovery Phase Notification Form see www.environment.gov.za/content/documents/
forms#biodiversity.
20 According to s 1(1) of NEMBA 10 of 2004, the Cabinet member responsible for national enviromental management.

As a result, every applicant for a complete patent application filed in South Africa on or
after 14 December 200721 is required to lodge a declaration or statement on Form P26,
irrespective of the nature of the invention sought to be protected. A patent application
cannot be accepted until the required statement has been lodged at the Patent Office.
It is important to note that, if the Form P26 lodged contains a false statement or
representation which is material and which the applicant knew, or ought reasonably to have
known, to be false at the time when the statement or representation was made, the patent
can be revoked.
As mentioned above, the statement on Form P26 relates only to South African indigenous
biological resources, genetic resources and traditional knowledge or use. The statement does
not refer to biological resources, genetic resources or traditional knowledge or use arising
from countries other than South Africa.
If an applicant acknowledges that its invention is based on, or is derived from, an
indigenous biological resource, genetic resource or traditional knowledge or use, the
applicant must submit proof of its title or authority to make use of the indigenous biological
resource, genetic resource or traditional knowledge or use, by lodging one of the following:
(i) a copy of the permit issued in terms of Chapter 7 of NEMBA;
(ii) if applicable, proof that prior consent has been obtained as contemplated in section
82(2)(a) or 82(3)(a) of NEMBA;
(iii) if applicable, proof of a material transfer agreement;
(iv) if applicable, proof of a benefit-sharing agreement;
(v) if applicable, proof of co-ownership of the invention for which protection is claimed; or
(vi) any other proof to the satisfaction of the Registrar.
PAUSE FOR Other forms of proof

REFLECTION The proof to be provided in terms of point (vi) could relate to instances where the indigenous
biological resource or genetic resource in question left South Africa many years ago and
thus the invention is based on the indigenous biological resource or genetic resource
obtained outside South Africa.
PAUSE FOR Is the form P26 aligned with the Patents Act?
REFLECTION Form P26 requires the applicant to state whether the invention for which protection is
claimed is (i) based on or is derived from an indigenous biological resource or a genetic
resource; or (ii) is based on or derived from traditional knowledge or use; or (iii) is co-owned
with the local community or an individual. Interestingly, although point (iii) appears on Form
P26, this point is not required by the Patents Act.
8.2.6 Case studies

In order to illustrate the manner in which the legislation operates, relevant case studies will
be discussed. They deal with the cases of hoodia, rooibos/honeybush, and Pelargonium
sidoides/Pelargonium reniforme.
8.2.6.1 Hoodia
The San people are known to have used the bitter flesh of the hoodia plant (Hoodia
gordonii) for centuries to block feelings of hunger and to give them energy. The South
African Council for Scientific and Industrial Research (CSIR) began taking an interest in
21 These amendments to the Patents Act 57 of 1978 (in s 36(3)(A) and (B)), came into force on 14 December 2007.

the properties of hoodia. Their research resulted in the isolation of an active ingredient
(called P57) and investigations into its properties and its potential as an appetite
suppressant and anti-obesity drug.22
The CSIR sought protection for their isolation of P57 by filing a patent application. In
some countries, including the USA, a patent was granted.23 The patent covers pharmaceutical
compositions containing P57 and identifies them as compositions having appetite
suppressant activity.
Initially, the CSIR was criticised for exploiting the San’s traditional knowledge without
appropriate recognition thereof and without appropriate benefit sharing with them. After
controversial negotiations, the role of the San in the initial discovery and development of
the properties of hoodia and the San’s traditional knowledge were recognised and explicitly
acknowledged by the CSIR.
The South African San Council and the CSIR then contractually agreed to recognise the
San people as the traditional knowledge holders of the hoodia plant and to allocate to them
a share of the profit derived from commercialising the active ingredient.
As a result, the San Hoodia Benefit Sharing Trust was established. The primary objective
of the Trust is to ensure that the monies received are used for the general development and
training of the San community.
PAUSE FOR The benefits of hoodia

REFLECTION Although the benefit-sharing agreement reached between the San people and the CSIR is
a step forward in the recognition of the collective rights of indigenous communities as
holders of traditional knowledge related to biodiversity, to date the patented product is not
yet on the market. All the hoodia products that are currently on sale seek to bypass the
patent. Therefore, it is questionable whether the San have received any share of the profit
from commercialisation of hoodia.
8.2.6.2 Rooibos/honeybush
The San and Khoi people of South Africa are believed to be the first to have discovered that
rooibos or Aspalathus linearis can be used in a refreshing brew. Rooibos is endemic to South
Africa and only grows in the Cederberg Mountains. Efforts to grow the plant elsewhere have
failed. Because of its anti-inflammatory and anti-allergic properties, rooibos has traditionally
been used by Khoi and San communities for the treatment of various diseases and
conditions, including skin disorders.24
Honeybush (Cyclopia) is a shrub that is also endemic to South Africa, particularly to the
coastal regions of the Western Cape and Eastern Cape. Like rooibos, the plant has been
traditionally used by the Khoi and San as a beverage as well as for certain medicinal purposes.
During 2012 several reports surfaced alleging that a foreign company may have
engaged in biopiracy through the filing of five patent applications via the Patent Cooperation
Treaty (PCT), relating to compositions containing either rooibos or honeybush extracts
and their uses. The allegations arose because the patent applications were apparently
in conflict with NEMBA and the CBD, as no benefit-sharing agreement had been
negotiated, and the foreign company had not obtained any permits to use these South
African biological resources.
22 www.wipo.int/export/sites/www/academy/en/.../cs1_hoodia.pdf.
23 US Patent No. 6, 376, 657.
24 www.naturaljustice.org/our-work/campaigns.

A spokesman for the foreign company denied that it had contravened NEMBA since it
had not carried out any research in South Africa on these plants.25 It was also indicated that
the company had not collected any material in South Africa, that no commercial use had
been made of the subject matter of the patent applications, and that there were no plans to
do so in the near future; however, once commercial plans were in place, the requirements
of NEMBA would be complied with.
8.2.6.3 Pelargonium sidoides and Pelargonium reniforme

In 2010, the Alice community living in the Eastern Cape Province of South Africa, in close
collaboration with the African Centre for Biosafety, and supported by others, challenged a
European patent26 granted to the German company Schwabe Willmar GmbH & Co
(Schwabe).27
The subject of the patent was a method of producing an extract from Pelargonium
sidoides and/or Pelargonium reniforme, characterised by subjecting the roots of the plants
to certain steps in order to obtain the extract. The description mentioned that the use of
Pelargonium sidoides as a medicament has been traditional in South Africa for a long time.
The Alice community has historically been producing tinctures from the roots of
Pelargonium sidoides and Pelargonium reniforme to treat respiratory infections and diseases,
including tuberculosis (TB). Schwabe manufactures a syrup called Umckaloabo from the
same roots for the treatment of respiratory tract infections. Marketed as a unique African
®
®
natural remedy, Umckaloabo is a highly sought after medicine in Germany.
The patent was opposed on the grounds of lack of novelty, lack of an inventive step and
lack of sufficiency of disclosure. In addition, the opponents relied on the fact that the
Pelargonium roots, as well as the traditional knowledge of indigenous communities, had
been available in South Africa for many years. It was argued that the patent is an illegitimate
and illegal monopolisation of a genetic resource from South Africa and the traditional
knowledge of the communities in the Eastern Cape.
The patent was subsequently revoked. It was held that there was no evidence
that Schwabe had complied with the provisions of NEMBA and further that the subject
matter of the patent simply replicates extraction methods in current practice within the
Alice community.
Shortly after the hearing Schwabe announced that it would not pursue its other
Pelargonium-related patents any further.
In April 2013, the Department of Environmental Affairs published a biodiversity
management plan28 for Pelargonium.
These case studies clearly show that although the aims and objectives of NEMBA are
clear, the implementation of such objectives can be difficult. For example, as can be seen
from the hoodia case study, although significant research has been carried out, the
commercialisation of the product has proved difficult and therefore the indigenous
community has seen little benefit.
25 www.naturaljustice.org/wp-content/uploads/pdf/Response_by_Natural_Justice_and_the_Berne_Declaration.pdf.
26 EP1429795.
27 African Centre for Biosafety www.acbio.org.za.
28 For full text of the management plan, see www.polity.org.za/article/national-environmental-management-
biodiversity-act-102004-biodiversity-management-plan-for-pelargonium-sidoides-in-south-africa-2011-2020-gazette-
36411-notice-433-2013-04-26.

Part B: 8.3 Traditional knowledge and traditional cultural

expressions with respect to trade marks, copyright,
performers’ protection and designs
In Part B traditional knowledge in the form of Traditional Cultural Expressions (TCEs),
or Expressions of Folklore, will be addressed. In addition some attention will be given
to Geographical Indications which constitute trade marks. It is important that there
should be a measure of clarity as to what these terms mean in the context of the laws of
copyright, designs, performers’ protection and trade marks. These are the areas of intellectual
property law into which protection for this form of traditional knowledge has been
introduced by the IPLAA.
8.3.1 Definition of traditional cultural expressions or expressions of folklore

As with the definitions of TK, no set international definitions of traditional cultural
expressions or expressions of folklore have been formulated, and concerns have been raised
by some local and indigenous communities regarding the use of the term ‘Folklore’, which
is seen as suggesting that their cultures are old and static. WIPO uses these terms
interchangeably, and this approach will be followed in this chapter.
Some of the definitions used for the terms TCEs/Folklore have been adapted from the
WIPO-UNESCO29 Model Provisions for National Laws on the Protection of Expressions of
Folklore Against Illicit Exploitation and other Forms of Prejudicial Action, 1982 (the Model
Provisions) and the Convention on the Protection and Promotion of the Diversity of Cultural
Expressions, 2005.30 These instruments have not yet been finalised or formally adopted by
the international community and they should be viewed as drafts.
In terms of section 2 of the Model Provisions, expressions of folklore are said to mean
productions consisting of characteristic elements of the traditional artistic heritage
developed and maintained by a community of a country or by individuals reflecting the
traditional artistic expectations of such a community, in particular:
(i) verbal expressions such as folk tales and folk dances, folk poetry and riddles;
(ii) musical expressions such as folk songs and instrumental music;
(iii) expressions by action, such as folk dances, plays and artistic forms or rituals;
whether or not reduced to a material form; and
(iv) tangible expressions, such as productions of folk art, in particular drawings, paintings,
carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewellery,
basket weaving, needlework, textiles, carpets, costumes, musical instruments and
architectural forms.
TCEs, on the other hand, are defined in terms of article 43 of the Convention on the
Protection and Promotion of the Diversity of Cultural Expressions as resulting from ‘the
creativity of individuals, groups and societies, and that have cultural content’.
According to WIPO, therefore, TCEs are passed down from generation to generation
and may be the forms in which traditional culture is manifested or expressed. Such
manifestations or expressions form part of the identity and heritage of a traditional or
indigenous community.
29 United Nations Educational, Scientific and Cultural Organisation.

30 www.wipo.int; www.unesco.org.

While it may not be possible to develop a single definition of TK31 and TCEs/Folklore,32 it is
desirable for these terms to be defined in national laws so as to provide some measure of certainty.
In South Africa, reference to TK in the IPLAA33 appears to be a misnomer, as the Act in fact
deals with what are internationally referred to as TCEs. In practice, TK is a genus, or class, of
which TCEs are a species, or type. The IPLAA is only concerned with the narrower field of TCEs
and does not deal with the balance which would make up the class of TK. There is therefore a
need to look at our terminology, and bring it into line with the generally accepted international
norms. Furthermore, the IPLAA uses TK and Indigenous Knowledge (IK) interchangeably.
8.3.2 The interface between TK, TCEs/Folklore and conventional

intellectual property (IP)
In view of the pervasive nature of TK/TCEs and the fact that they transcend international
boundaries, it is necessary to find a solution to preserving and protecting them which can
operate internationally. Various avenues for protecting TK/TCEs have been explored,
including using existing IP laws, amending such IP laws to accommodate the unique nature
of TK/TCEs and drafting new sui generis legislation to cater for the unique nature of TK/TCEs.
As noted in the definitions section, TCEs/Folklore can take various forms, including
symbols, designs, artwork and handicrafts. Some of those symbols or designs can be protected
in terms of current IP laws, in particular trade marks, and in principle traditional artwork or
handicrafts can be protected as artistic works in terms of copyright law and as designs under
the law of designs. Furthermore, written traditional stories or fables may qualify for protection
as literary works and fixed traditional songs as musical works under copyright law. Of course,
the requirements for registrability of trade marks, subsistence of copyright and the registration
of designs must be fulfilled before such rights are granted.34 Performances of traditional songs
and dances can be protected in terms of the Performers’ Protection Act.35
PAUSE FOR Can conventional intellectual property laws protect TK?

REFLECTION Although existing IP laws cannot meet all the needs of the owners of TK/TCEs, there are
examples worldwide where such laws have been used to protect the rights of TK holders.
For instance, the well-known certification trade mark ‘Toi Iho Maori Made’ is a registered
trade mark in the name of the Maori Arts Board of Creative New Zealand, Te Waka Toi,36 and
guarantees quality and authenticity of the products to which this mark is applied. It warrants
that the articles/products sold under the ‘Toi Iho Maori Made’ mark are genuine articles made
by Maori artists. In order to become licensed users of the mark, Maori artists must apply to
Te Waka Toi, and in this way quality control is exercised.
A further example is the Arte Seri trade mark registered by the Cooperative ‘Artesanos
Los Seris’ on behalf of the Seri people of Mexico for use in relation to ironwood goods made
by means of a traditional technique or process.37
31 As demonstrated in Part A of this chapter.

32 See the various definitions of TCEs/Folklore discussed immediately above.
33 The IPLAA is discussed briefly below and in chs 1, 2 and 7 dealing with trade marks, copyright and designs respectively.
34 Refer to ch 2 for the requirements for registrability trade marks, ch 1 for the conditions of subsistence of copyright, and
ch 7 for the registrability of designs.
35 See para 8.3.9.3 on perfomers’ protection for a discussion of what this right entails.
36 See www.toiiho.co.nz or www.toiiho.com.
37 WIPO: Intellectual Property and Traditional Knowledge, booklet no. 2, p. 19.

Another example where TK was protected as confidential information or trade secrets is

that of the Tulalip tribe, which is an Indian indigenous community in Washington State, North
America. This indigenous community developed a digital collection of their TK, aspects of
which were reserved for the exclusive use of that community in terms of their customary law
and protected as confidential information or trade secrets.38
An example closer to home where current IP laws, in particular copyright law, have been
used to protect local TCEs is the well-known pioneering Mbube case.39 The case dealt with
the song ‘Mbube’, which was arguably derived from Zulu folklore and was written by Solomon
Linda, a Zulu, in the late 1930s. This song was adapted a number of times and gave rise to
the popular international songs ‘Wimoweh’ and ‘The Lion Sleeps Tonight’ The latter was used
in the LION KING movie, a Walt Disney production. Linda died a pauper in 1962, leaving his
family destitute. Linda’s authorship was not acknowledged and he and his family received no
compensation for the exploitation of the adaptations of his song. Linda’s heirs (represented
by the executor in Linda’s estate), who had by operation of law become the owners of the
copyright in ‘Mbube’, sued Walt Disney Enterprises Inc for copyright infringement on account
of the unauthorised use in South Africa of an adaptation of their work in the movie. This
ultimately led to the conclusion of a settlement agreement between Walt Disney Enterprises
Inc. and the executor of the estate, which upheld the copyright infringement claim. This case
was fought on the basis that Mbube enjoyed conventional copyright under the Copyright Act.40
8.3.3 Challenges surrounding the protection of TK/TCEs

In view of the challenges experienced by indigenous communities owing to the
misappropriation and misuse of their TK/TCEs, it became imperative to create a legal
framework that would prevent third parties from illegitimately claiming rights to TK/TCEs,
or using such TK/TCEs in a manner which would bring disrepute to the cultural heritage of
indigenous communities.
Preliminary measures were undertaken to encapsulate the concerns of indigenous
communities with regard to their TK/TCEs. In particular, WIPO undertook a series of fact-
finding missions and conducted interviews with communities that were the holders of TK/
TCEs in many countries. The findings were summarised by WIPO in its report Intellectual
Property Needs and Expectations of Traditional Knowledge Holders: Report on Fact Finding
Missions 1998–1999.41 The concerns and challenges of the holders of TK/TCEs were
summarised as follows:
• the loss of traditional knowledge and traditional lifestyles, particularly since members
of the younger generation in their communities were inclined to follow a westernised
lifestyle, and were reluctant to carry on with their traditional way of life. Further, their
languages, which provided the context for their TK, were in danger of extinction and
there was therefore an urgent need to preserve the TK;
38 Supra fn 37 pp. 19–20.

39 Griesel NO v Walt Disney Enterprises Inc and Others: case withdrawn subsequent to the conclusion of a settlement
agreement before the trial. For the facts of the case refer to OH Dean ‘The return of the lion’ (2006) March in Without
Prejudice.
40 Arguably, TK protection may apply in parallel with conventional IP protection, and particular works may enjoy dual
protection relying on both systems.
41 www.wipo.int/globalissues/tk/report/final/index.html.

• the lack of respect for TK and TK holders, in particular for their traditional medicine,
which may be based on many years of observation rather than on a scientifically
documented formula;
• the misappropriation and misuse of TK, including the use of TK without obtaining prior
informed consent from the holders of such TK and without benefit sharing, or using such
TK in a disrespectful or derogatory manner.
These concerns are pervasive and affect not only IP laws but many other areas of law and
policy. However, this chapter will focus only on how IP systems can address such challenges
and concerns, including whether promulgating a sui generis legislation granting IP rights to
TK/TCEs holders is the best way to deal with the challenges raised.
In order to obtain rights under conventional IP laws, there are certain requirements
which must be fulfilled, and which in some instances are not met by TK/TCEs. For example,
there is the requirement of distinctiveness in trade marks, originality in copyright and novelty
in designs and patents, which must be met for rights to ensue.
Another challenge lies in the identification of a creator and thus the owner of the right.
PAUSE FOR Who is the creator and owner of TK/TCEs?

REFLECTION 1. As most TK and TCEs are transmitted orally, rather than reduced to material form, which
is one of the requirements for subsistence of copyright, it is not possible to accord such
TK/TCEs copyright protection. Furthermore, it is very difficult, if not impossible, to identify
an author in the case of traditional works as such works have been preserved and
passed on from generation to generation, with the result that the author is usually
unknown. This presents a problem as ownership of a copyright work starts with the author.
2. If the TK/TCE is reduced to material form, that is put in writing for a literary work,
the copyright in such work will generally belong to the author, and that may be
problematic if the author is not from the indigenous community holding the TK/
TCEs. Hence, the criticism of conventional IP systems by holders of TK/TCEs that it
legitimises the misappropriation of TK/TCEs by granting rights to unauthorised third
parties who have created works derived from TK/TCEs.
3. In conventional IP systems, it is crucial that the owner of such IP be identified, which
is not always easy to do in relation to TK/TCEs. The following questions are often
raised: who is the holder or the owner of TK/TCEs in an indigenous community? Is
it the individual creator within that community? The elders or leaders of that
community? A group within that community or the entire community? If multiple
communities claim rights in the TK/TCEs, who is the rightful owner?
These questions are not easy to answer, and the answer may well lie in the customary rules
governing the particular indigenous community.
Another challenge which has been experienced around TK protection is that once the TK
has been disclosed to the public or is generally known to the public, it may be regarded as
being in the public domain. This view has been vehemently opposed by TK holders who
argue that, even if the TK is known to many people, that does not mean that it is in the public
domain and free for all to use. They maintain that they still have proprietary rights over such
TK, and that it should not be used without their prior consent or approval. Commenting on
this issue, the Tulalip tribes of Washington State, North America, have stated that ‘traditional

cultural expressions are not in the public domain because indigenous peoples have failed
to take the steps necessary to protect the knowledge in the western intellectual property
system, but from a failure of governments and citizens to recognise and respect the
customary laws regulating their use’.42
The challenges expounded above are not exhaustive, but demonstrate the importance
of finding suitable legislation that will adequately deal with the unique nature of TK/TCEs
for the benefit of indigenous communities.
PAUSE FOR What are indigenous communities/people?

REFLECTION There is no single definition which is accepted internationally to describe indigenous
communities/people. This is not surprising in view of the diverse nature of indigenous
communities/people. However, some of the widely canvassed definitions include the
following:
(i) the term ‘indigenous peoples’ describes social groups with a social and
cultural identity distinct from the dominant society … and can be identified
in particular geographical areas by the presence in varying degrees of the
following characteristics:
(a) a close attachment to ancestral territories and to the natural resources
in these areas;
(b) self-identification and identification by others as members of a distinct
cultural group;
(c) an indigenous language, often different from the national language;
(d) presence of customary social and political institutions; and
(e) primarily subsistence-oriented production.43
(ii) indigenous communities, peoples and nations are those which, having a historical
continuity with pre-invasion and pre-colonial societies that developed on their
territories, consider themselves distinct from other sectors of the societies now
prevailing on those territories, or parts of them. They form at present
non-dominant sectors of society and are determined to preserve, develop and
transmit to future generations their ancestral territories, and their ethnic identity,
as the basis of their continued existence as peoples, in accordance with their own
cultural patterns, social institutions and legal system.44
8.3.4 The international response

In view of the loud outcry by indigenous communities against the misappropriation and
misuse of their TK/TCEs, the need to protect TK/TCEs has earned international recognition.
This led to the establishment in late 2000 of WIPO’s Intergovernmental Committee on
Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).
The main mandate of the IGC was to develop or establish legal instruments that would
give effective protection to TK, TCEs/Folklore and genetic resources and, together with
42 CB Graber & M Burri-Nenova Intellectual Property and Traditional Cultural Expressions in a Digital Environment (2008).
43 World Bank: The World Bank Operational Manual: Operational Directive – Indigenous Peoples (1991) 1.
44 State of the World’s Indigenous Peoples – United Nations Sub-Commission on Prevention of Discrimination and Protection
of Minorities and its Study of the Problem of Discrimination against Indigenous Populations, UN Doc. E./CN.4/
Sub.2/1986/7/p. 4.

indigenous communities, it has played a significant role in deciphering the complex issues
surrounding the protection of TK, TCEs/Folklore and their interaction with IP systems. This
committee has held many sessions in which this important issue was debated, and although
headway has been made in unpacking most of the salient issues, no international legal
instrument has yet been formulated.
8.3.5 South Africa’s solution

South Africa has also played an active role in finding a legal solution to protect TK/TCEs. To
this end, an Indigenous Knowledge Systems (IKS) policy was developed in consultation with
a number of stakeholders, including the Department of Trade and Industry (DTI), the
Department of Science and Technology (DST), the Department of Arts and Culture (DESAC)
and the Department of Health (DOH). The IKS policy was adopted by cabinet in November
2004. This was seen as a first step in the promotion and protection of TK in South Africa, and
its main drivers include the following:
• the affirmation of African cultural values in the face of globalisation;
• practical measures for the development of services provided by indigenous knowledge
holders and practitioners, with a particular focus on traditional medicine, but also including
areas such as agriculture, indigenous languages and folklore;
• underpinning the contribution of indigenous knowledge to the economy/the role of
indigenous knowledge in employment and wealth creation; and
• interfaces with other knowledge systems, for example when indigenous knowledge is
used together with modern biotechnology in pharmaceutical and other sectors to
increase the rate of innovation.45
8.3.6 Intellectual Property Laws Amendment Act 28 of 2013 (IPLAA)

The DTI sought to give effect to the policy objectives by drafting and publishing their
Intellectual Property Laws Amendment Bill in 2008. The Bill was subsequently amended in
2010 and republished for public comment. On 10 December 2013 the Bill was signed into
law by the President and became an Act of Parliament. The Act is not yet in force. It amends
the Copyright Act, the Designs Act, the Performers’ Protection Act and the Trade Marks Act
so as to introduce into them provisions creating protection for forms of TK that have a
measure of compatibility with their subject matter.
8.3.6.1 Nature and objectives of the IPLAA

The aim of the IPLAA is to provide for the recognition and protection of certain manifestations
of IK as a species of intellectual property by amending the Trade Marks Act 194 of 1993, the
Copyright Act 98 of 1978, the Designs Act 195 of 1993, and the Performers’ Protection Act 11
of 1967. These Acts are hereafter referred to as the ‘host Acts’ for convenience. The effect of
the IPLAA on the various host Acts is discussed in chapters 1, 2 and 7.
The IPLAA is very repetitious. It introduces the same lengthy provisions into a multiplicity of
the host Acts, and in so doing repeats them several times in its own text. The IPLAA is badly drafted
and contains numerous errors and aberrations of principle. It is very difficult to comprehend and
it is doubtful whether it can be properly put into effect and whether it will achieve its objectives.
By introducing alien principles into the host Acts it also undermines their integrity.
45 Department of Science and Technology Indigenous Knowledge (2011) 9 available at www.dst.gov.za/index.php/

resource-center/strategies-and-reports/161-indigenous-knowledge systems.

Several of its definitions are common to the host Acts, as amended by it. These definitions
play a crucial role in the application of the host Acts to traditional properties. Certain of the
more important ones are discussed below.
8.3.7 Common definitions and concepts introduced into host Acts
8.3.7.1 Indigenous community

In intellectual property law generally the creator or originator of the property is the
cornerstone of the system. After all, intellectual property law has as its main purpose the
provision of an incentive to the creative person to create more and better works or properties
and to enable that person to derive financial reward from the commercial exploitation of his
works or properties. In copyright law the author of a work is all-important. Whether or not
copyright subsists in a work depends on how the author went about making it; whether the
work qualifies for copyright can depend on whether the author is a qualified person;
generally the author of the work is the initial owner of the copyright in it; and the term of the
copyright is often determined by the death of the author.
In the IPLAA the cornerstone of the protection introduced by it into the host Acts is the
indigenous community. This term is defined in section 3(f) and elsewhere as meaning:
any recognisable community of people originated in or historically settled in a

geographic area or areas located within the borders of the Republic, as such borders
existed at the date of the commencement of the Intellectual Property Laws
Amendment Act, 2013, characterised by social, cultural and economic conditions
which distinguish them from other sections of the national community, and who
identify themselves and are recognised by other groups as a distinct collective
This definition is vague and difficult to interpret with any precision. This is unfortunate in
view of the key role that an indigenous community plays in the host Acts, as amended.
Section 4 of the IPLAA, which inserts section 28D into the Copyright Act, provides that
an indigenous community is deemed to be a juristic person for the purposes of this Act.
Similar provisions have been inserted into the other host Acts. This is necessary in view of
the rights, powers and role which the amendments to the host Acts attribute to an indigenous
community in those Acts. For instance, in the Copyright Act, as amended by the IPLAA, an
indigenous community can be the author of a work, the owner of the copyright in the work
and can fulfil other functions in respect of a work. Comparable roles are played by an
indigenous community in the other host Acts. This is a contrived situation and one can but
wonder what legal status will be attributed to an indigenous community outside the ambit
of the host Acts, for instance in the High Court Rules.
8.3.7.2 Indigenous cultural expressions or knowledge

The term ‘indigenous cultural expressions or knowledge’ is defined in section 3(f) of the
IPLAA and elsewhere as meaning:
any form, tangible or intangible, or a combination thereof, in which traditional

culture and knowledge are embodied, passed on between generations, and tangible
or intangible forms of creativity of indigenous communities, including, but not
limited to-

(a) phonetic or verbal expressions, such as stories, epics, legends, poetry, riddles,
and other narratives, words, signs, names or symbols;
(b) musical or sound expressions, such as songs, rhythms, or instrumental music,
the sounds which are the expression of rituals;
(c) expressions by action, such as dances, plays, ceremonies, rituals, expressions of
spirituality or religion, sports, traditional games, puppet performances, and
other performances, whether fixed or unfixed; or
(d) tangible expressions, such as material expressions of art, handicrafts,
architecture, or tangible spiritual forms, or expressions of sacred places.
This definition is clearly derived from the Model Provisions referred to in paragraph 8.3.1
above, but it has considerably amplified the corresponding definition in that instrument.
The result is a definition which is rambling and tortuous and difficult to interpret with any
degree of precision. It occurs in all the host Acts, as amended, and it is difficult to
comprehend how it can apply sensibly to, for instance, trade marks and designs. Be that as
it may, indigenous cultural expressions and knowledge are an element of indigenous works
for the purposes of the Copyright Act, geographical indications for the purposes of the Trade
Marks Act, and indigenous designs for the purposes of the Designs Act, as amended by the
IPLAA. The practical implications of this are difficult to fathom.
An applicant seeking the making of an entry in the National Database for IK (see
paragraph 8.3.8.4 below) is required to submit to the registrars of patents, copyright, trade
marks and designs a request for a manifestation of indigenous cultural expressions or
knowledge to be recorded in the relevant database. This is required by section 28C(7) of the
amended Copyright Act. Similar provisions appear mutatis mutandis in the other host Acts,
with the exception of the Performers’ Protection Act. Section 28C(2) of the amended Copyright
Act requires that the National Database must form part of the existing intellectual property
registers and must incorporate separate sections for the recording of information on different
manifestations of indigenous cultural expressions or knowledge. These provisions seem to
suggest that the term indigenous cultural expressions or knowledge is the generic term for
traditional works, traditional trade marks and traditional designs. This construction is difficult
to reconcile with those provisions referred to above, which suggest that such expressions or
knowledge are an element or component of each of the traditional properties. This is a good
example of the muddled thinking and confusion that permeate the IPLAA.
8.3.7.3 Community protocols

Community protocols are a feature of the amendments inserted into the host Acts by the IPLAA.
This term is defined in section 3(c) of the IPLAA, with reference to the Copyright Act, as
meaning:
a protocol developed by an indigenous community that describes the structure of the

indigenous community and its claims to indigenous cultural expressions or knowledge
and indigenous works, and provides procedures for prospective users of such indigenous
cultural expressions or knowledge or indigenous works, to seek the community’s prior
informed consent, negotiate mutually agreed terms and benefit sharing agreements.
(This definition suggests that indigenous cultural expressions or knowledge is something

separate and distinct from, for instance, indigenous or traditional works. This is in
contradistinction to, and in conflict with, the other constructions discussed above.)

In terms of section 28C(8) of the Copyright Act, as amended by the IPLAA, where an
applicant seeking registration in the National Database is an existing indigenous community,
the request for registration must include a community protocol setting out relevant
information about the indigenous community, including:
(a) identification of the indigenous community and its acknowledged structure;

(b) full details of the appointed representative of the indigenous community in
whose name the copyright must be registered;
(c) if the representative is a juristic person, full details of registration of such juristic
person;
(d) the indigenous work that is being recorded and the jurisdiction for the
indigenous community claiming rights to it;
(e) whether such indigenous work is sacred, or should for any other reason, which
must be provided, be kept confidential; and
(f) a written undertaking by the representative of the indigenous community to the
effect that he or she will hold the copyright on behalf of the indigenous community.
The above quotations are taken from the Copyright Act, as amended by the IPLAA. Sub-
stantially identical provisions have, mutatis mutandis, been inserted into the other host Acts.
Where a licence agreement is entered into in respect of the copyright in a traditional
work, in terms of section 28A(4) of the amended Copyright Act that agreement must be
submitted to the National Council for IK (discussed below), which is required to scrutinise
it for compliance with the law and the relevant community protocol. The National Council
can in certain circumstances require clauses of the agreement to be renegotiated. A
corresponding provision is to be found in section 53F(5) of the amended Designs Act. The
relevant community protocol can dictate the terms on which a certification or collective
trade mark can be assigned in terms of section 43H(2) of the amended Trade Marks Act.
These instances reflect the purpose and utility of a community protocol.
8.3.7.4 Unsatisfactory approach

The route chosen by the legislature to protect TK by amending the host Acts to incorporate
into them provisions dealing with TK as a species of the property regulated by each such Act
is a cumbersome and ineffectual way of achieving the objective of protecting TK. It is highly
unlikely that the elaborate and tortuous provisions that have been inserted in the host Acts (of
which those discussed above are examples) will provide any meaningful protection to TK.
8.3.8 Administrative structures

The IPLAA provides for the establishment of various administrative structures for dealing
with TK/IK, namely a National Council, National Databases for the recordal of IK and
indigenous works, a National Trust and a National Trust Fund. These administrative structures
are introduced into each of the host Acts in turn, save for the Performers’ Protection Act.
8.3.8.1 National Council for IK

The IPLAA provides for the establishment of a National Council for IK.46 The National
Council (Council) consists of not less than fifteen members appointed by the Minister.47 It
46 See, for instance, s 28L(1) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
47 Minister of Trade and Industry.

must have at least two persons with expertise in and extensive knowledge of the traditional
cultures and values of indigenous communities, a further two persons at least with expertise
in and extensive knowledge of traditional artistic, literary and musical works and the
performing arts, and at least two persons with expertise in and extensive knowledge of the
law. The Council is required to be broadly representative of indigenous communities from
different cultures and the Companies and Intellectual Property Commission (CIPC) will be
responsible for its functions, administration and subcommittees.
The duties of the Council48 include the provision of advice to the Minister on any matter
concerning indigenous cultural expressions or knowledge, providing advice on the integrity
of the database of IP in relation to indigenous cultural expressions or knowledge and
advising the Registrars of patents, trade marks, copyright and designs on any matter relating
to the registration of indigenous cultural expressions or knowledge.
The Council functions as the Council for performances of traditional works in terms of
the amendments to the Performers’ Protection Act.49 The Council is also required to serve
the Registrar of Trade Marks in an advisory capacity regarding the registration of traditional
terms and expressions in terms of section 43D(14)(a) and (b) of the amended Trade Marks
Act. The amendments to the Designs Act also entail provisions regarding the advisory role
to be accorded to the Council with regard to traditional designs.50
8.3.8.2 National Trust for IK

The host Acts, as amended by the IPLAA, provide for the establishment of a National Trust
for IK (Trust).51 The role of the Trust will be, among others, to promote the commercialisation
and exploitation of indigenous cultural expressions and to train and raise awareness within
communities regarding IP and associated rights arising from indigenous cultural expressions
or knowledge. The trustees are appointed by the Minister and must not be more than five.52
8.3.8.3 National Trust Fund for IK

The Trust is mandated with the task of establishing a National Trust Fund for the preservation
and promotion of indigenous cultural expressions and knowledge as well as administering
moneys flowing from the commercialisation of such indigenous cultural expressions and
knowledge.53
8.3.8.4 National Database for IK54

The host Acts, as amended by the IPLAA, provide for the establishment of databases for IK,
to form part of the existing intellectual property registers. There will be separate subsections
in the registers for the recordal of information on different manifestations of indigenous
cultural expressions or knowledge,55 and for traditional terms and expressions and
geographical indications.56 Part T of the design register will be opened for the recordal of
traditional designs.57
48 Set out in, for instance, s 28M(1)(a) to (g) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
49 S 8C(1) of the Performers’ Protection Act 11 of 1967, as amended by s 2 of the IPLAA 28 of 2013.
50 S 53C(15)–(18) of the Designs Act 195 of 1993, as amended by s 12 of the IPLAA 28 of 2013.
51 See, for instance, s 28I(1) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
52 The CIPC is responsible for administering the Trust.
53 See, for instance, s 28I(2)(a)–(c) and section 28I(3) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
54 See, for instance, s 28C(1) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
55 See, for instance, s 28C(2) and (3) of the Copyright Act 98 of 1978, as amended by s 3 of the IPLAA 28 of 2013.
56 S 43D(1) of the Trade Marks Act 194 of 1993, as amended by s 9 of the IPLAA 28 of 2013.
57 S 53C(1) and (2) of the Designs Act 195 of 1993, as amended by s 12 of the IPLAA 28 of 2013.

While documentation of TK is welcomed by many as a tool to curtail the loss of TK,

concerns have been raised that such recordal may result in the loss of the secret nature of
TK and make it easier for such TK to be misappropriated.58
PAUSE FOR TK recordal in India

REFLECTION India provides a good example of the use of a database for TK. In view of the misappropriation
of certain TK owned by Indian communities, the Indian System of Medicine and Homeopathy
(ISMAH) collaborated with the Indian National Institute of Science Communication (NISCOM)
to establish a Traditional Knowledge Digital Library (TKDL). The aim of the TKDL is to record
traditional Indian systems of medicine as well as to document TK available in the public domain
in digital form. The TKDL is made available to European Patent Office (EPO) and United States
Patent and Trade Mark Office (USPTO) examiners and is meant to assist patent examiners to
unearth prior art. This is aimed at ensuring that patents are not granted for works based on TK
that are already in the public domain.
In South Africa, as a separate issue and apart from the National Database for IK created by
the IPLAA, the Department of Science and Technology (DST), in collaboration with the CSIR,
launched a National Recordal System (NRS) for IK. The NRS is intended to document IK
associated with biological resources, but it can also be used to conduct prior art searches in
the fight against biopiracy. There is a concern that the National Database established in
terms of the IPLAA will amount to a duplication of the NRS, but a contrary view is that these
systems would complement each other. As regards concerns pertaining to the confidentiality
of information disclosed on the NRS regarding IK, it was indicated that access will be
regulated to prevent abuse, and that there will be three levels of access, namely:59
(i) so-called ‘open access’ – access which is open to the public at large for the purposes of
raising awareness, education and tourism;
(ii) restricted access – where confidential information will be preserved and will be made
available to IK holders and to communities and to a limited extent to approved
scientists, researchers and IP offices for conducting searches and for the purpose of
looking up prior art; and
(iii) confidential access – where full confidential access to IK is granted to approved
researchers and scientists for development purposes, and subject to the conclusion of
relevant agreements, including benefit-sharing agreements.
The host Acts, as amended by the IPLAA, provide for interested parties to oppose the recordal
of IK in the National Database.60
PAUSE FOR The pros and cons of TK recordal

REFLECTION There are pros and cons to recording IK/TK in a database, but the benefits appear to
outweigh the disadvantages. It may be that a comprehensive database is what is required
to prevent IK/TK from suffering the fate of oblivion. The practicality and efficacy of such a
database is however open to serious question. For instance, it is difficult to contemplate
how a meticulous record can be created of all traditional copyright works in which protection
subsists automatically and which by their nature may have been in existence for centuries.
The cost of creating such a record is extremely daunting.
58 Available at: www.wipo.int/tk/en/resources/tkdocumentation.html and WIPO, booklet no. 2 pp. 9, 26 and 30.
59 See Tom Suchanandan’s comments on the NRS on Afro-IP blog on 06/12/2013.
60 See, for instance, s 28C(12) and (13) of the Copyright Act 98 of 1978 as amended by s 3 of the IPLAA 28 of 2013.

8.3.9 Protection of traditional properties in host Acts
As previously mentioned, the IPLAA amends each of the host Acts by inserting into them
special provisions aimed at protecting TCEs as a species of the subject properties regulated
by each such Act. For example, whereas the Copyright Act protects a variety of categories of
work, such as literary, musical and artistic works and so forth, a new category of work eligible
for protection, namely traditional works, has been created by the IPLAA. The amendments
to the host Acts seek to adapt the provisions and fundamental principles of those Acts to deal
with the new category of traditional property. Unfortunately, the new properties so introduced
are in many respects not compatible with the fundamentals of the host Acts and this creates
tensions within the amended host Acts. Not only does this not augur well for viable protection
being afforded to the traditional properties, but it also compromises and subverts the integrity
of the host Acts and calls into question the future interpretation of some of the basic concepts
enshrined in those Acts, for instance the principle of originality in copyright law.
The IPLAA evidences a remarkable and unwelcome approach in attempting to achieve
its purpose. This point will be elucidated with reference to the Copyright Act. Section 28A(1)
of the Act, as amended, reads as follows: ‘Subject to the provisions of this Chapter, the
provisions of this Act shall, except in so far as is otherwise provided in the said Chapter, and
in so far as they can be applied, apply to traditional works’ (emphasis added).
This provision, and in particular the wording emphasised, is interpreted by the
government to mean that, if a provision of the pre-existing Copyright Act cannot apply to a
traditional work because of the nature of a traditional work, then it must be ignored as far
as traditional works are concerned; consequently, since a handed-down folklore story that
is centuries old cannot meet the requirement of originality for the subsistence of copyright,
that requirement can simply be ignored and traditional works are not required to be original.
It defies comprehension how a work can be protected by copyright if it is not original, given
the crucial nature of this characteristic in copyright law. See the discussion of originality for
purposes of copyright in paragraph 1.3.2 and the application of this principle to copyright
in traditional works in paragraph 1.16.1.2.
Provisions that correspond to section 28A(1) of the Copyright Act have been inserted
mutatis mutandis in the other host Acts. They create similar implications in those Acts, for
instance by removing the requirement of novelty for the registration of a design; this
characteristic of a design is similarly crucial in design law. See the discussion of novelty for
purposes of design law in paragraph 7.3.3.2.
The manner in which traditional properties are afforded protection in the host Acts is
described in this book in chapter 1, which deals with copyright and performers’ protection,
in chapter 2, which deals with trade marks, and in chapter 7, which deals with designs. A
brief introduction to the treatment of TK in these branches of the law is given in the ensuing
paragraphs.
8.3.9.1 Trade marks

Section 9 of the IPLAA amends the Trade Marks Act by the introduction of new sections into
Part XIIA, entitled ‘Certification Trade Marks and Collective Trade Marks’. These new sections
deal with the new concept of traditional trade marks.
The achievement of the objective of the IPLAA of providing legislative mechanisms to
protect categories of traditional property such as trade marks and geographical indications
(GIs) has been facilitated through the amendment of the Trade Marks Act to make provision
for the protection of traditional terms and expressions and geographical indications (GIs).

To this end, the Trade Marks Act, as amended by the IPLAA, provides for the registration
of traditional terms and expressions as certification or collective trade marks, provided that
they are capable of distinguishing the goods or services of indigenous communities in
respect of which they are registered or proposed to be registered from the goods or services
of another community or person.61 The amended Trade Marks Act further provides for the
registration of GIs as certification and collective trade marks, provided that the registrar
clearly indicates in the register that such certification or collective mark is a GI.62 The
provisions regarding the registrability of traditional trade marks, as well as definitions of
traditional terms or expressions, derivative indigenous terms or expressions and
geographical indications, are discussed in detail in chapter 2, paragraph 2.3.4.
It should be mentioned that the duration of a mark registered in terms of the new
section 43B(8)(a) is a period of 10 years, renewable for further periods of 10 years
subsequent to the expiration of the last registration.63 On the other hand, the duration of
a registration of a traditional term or expression or geographical indication which has been
passed down from a previous generation is perpetual in terms of section 43B(8)(b) of the
amended Trade Marks Act.
8.3.9.2 Copyright
The IPLAA has amended the Copyright Act by making provision for the protection of a
further category of work, namely traditional works.64 A discussion of the protection of
traditional works in terms of copyright law, including the requirements for the subsistence
of copyright in such works, the authorship and ownership of such works, and the duration
of copyright protection in them, is provided in chapter 1, paragraph 1.16.
Section 4 of the IPLAA introduces Chapter 2A into the Copyright Act and most of the
provisions dealing with traditional works in the Copyright Act are contained in this chapter,
which is to some extent a stand-alone part of the Act. This is perhaps fortunate as it assists
somewhat in limiting the harm done to the Copyright Act by the amendment.
8.3.9.3 Performers’ protection

The IPLAA amends the Performers’ Protection Act 11 of 1967 by the introduction into it of
sections 8A–D. These sections adapt the Performers’ Protection Act so as to deal with the
rights subsisting in performances of traditional works.
The amendments provide for the specific recognition and protection of performances of
traditional works. It is doubtful whether any substantive change to the Performers’ Protection
Act has been brought about by this amendment as the Act has always protected performances
of works of whatsoever nature, including specifically performances of folklore.
The nature of the protection granted in terms of the Performers’ Protection Act is often
misunderstood. What is protected is the particular rendition of a work by a specific
61 S 43B(3) of the Trade Marks Act 194 of 1993.

62 S 43B(4) and (5) of the Trade Marks Act 194 of 1993.
63 See s 37 and 43E of the Trade Marks Act 194 of 1993.
64 In terms of s 3 of the IPLAA 28 of 2013, which amends the definitions in the Copyright Act, ‘traditional work’ is an
umbrella term which covers ‘indigenous works’ and ‘derivative indigenous works’. ‘Indigenous work means ‘a literary,
artistic or musical work with an indigenous or traditional origin, including indigenous cultural expressions or knowledge
which was created by persons who are or were members, currently or historically, of an indigenous community and
which literary, artistic or musical work is regarded as part of the heritage of such indigenous community’. The term
‘derivative traditional work’ is defined as meaning essentially a work which comprises indigenous matter. The term
‘Traditional work’ is thus a genus of which ‘indigenous work’ and ‘derivative indigenous work’ are species. The two
terms are therefore not really synonymous, although an indigenous work would also be a traditional work.

performer. The work being performed (i.e. a literary, musical or traditional work), which may
be protected by copyright owned by the writer, composer and so forth, must be distinguished
from the act of the performer in performing that work, which is protected by the Performers’
Protection Act. It is not always clear that the legislature fully appreciated this distinction in
adopting the IPLAA.
8.3.9.4 Designs
Section 12 of the IPLAA amends the Designs Act 195 of 1993 by the introduction into it of
sections 53A–L. These sections provide for the protection of new types of designs with a
traditional character. As with copyright, the new sections are to some extent a self-contained
part of the Act which assists in limiting the damage done to the Designs Act by the
amendments.
The amendments to the Designs Act provide for the recognition and registration of
traditional designs of indigenous origin. They create a further part, namely Part T, in the
designs register to provide for the registration of traditional designs. The requirements for
the registration of traditional designs, the definitions of indigenous designs and derivative
indigenous designs, and provisions relating to infringement and term of registration, among
others, are discussed in chapter 7, paragraph 7.8, under the subheading ‘Traditional designs’.
8.3.10 Saving of vested rights

The IPLAA inserts provisions dealing with the saving of vested rights into the host Acts.65
These provisions preclude the proprietor of a traditional property from stopping or
interfering with the use by a person of an item of intellectual property which commenced
prior to the coming into operation of the IPLAA. This principle is subject to the proviso that
if any commercial benefit is derived from such use after the coming into operation of the
IPLAA, a licence fee or a benefit, or both such licence fee and benefit, must be paid by the
user to the proprietor of the traditional property. In this situation, the implication is that
within twelve months after the commencement of the IPLAA, disclosure of the use of the
relevant indigenous cultural expressions or knowledge is required to have been made to the
designated official body and a benefit-sharing agreement between the user and the rights
holder of the traditional property is required to have been concluded.
The prescriptions laid down in the legislation relating to payment of the aforementioned
licence fee or benefit are discussed in chapter 9, paragraph 9.2.6.4, which deals with the
commercialisation of intellectual property.
8.3.11 Role of collecting societies

Section 3 of the IPLAA inserts a definition of ‘collecting society’ into the Copyright Act. This
definition replaces a previous definition in the Copyright Act. The term means –
a collecting society created by this Act [Copyright Act], or agreement and which
amongst others –
(a) manages matters related to rights in copyright works;
(b) negotiates for, and collects royalties and benefits on behalf of its members; and
(c) distributes royalties and benefits to copyright owners.
65 Ss 28G(2) of the Copyright Act 98 of 1978, 43F(1) of the Trade Marks Act 194 of 1993 and 53F(1) of the Designs Act 195
of 1993, as amended by the IPLAA.

A corresponding definition has been inserted, mutatis mutandis, into the other host Acts.
It is clear from the definition that a collecting society is an agency that represents rights
holders, and not users, of intellectual property.
The host Acts, as amended, make provision for determinations to be made of the royalties
or benefits payable by users of traditional properties. This matter is discussed in paragraph
9.2.6.4 of chapter 9. The relevant provisions state that one of the options for making a
determination of the royalties and benefits payable is by way of an agreement between the
user of the traditional property and the owner of that property, ‘or between their respective
collecting societies’.66 What appears to be contemplated in this provision is that users of
traditional properties could be represented by collecting societies. Not only is this at odds
with what happens in practice, but clearly users cannot be represented by collecting societies
by virtue of the manner in which this term is defined. Intellectual property owners are at
liberty under the common law to appoint agents (including juristic persons) to act on their
behalf in exercising their rights and it is therefore doubtful whether it is necessary to make
statutory provision for this situation. Be that as it may, the right of the owners of traditional
properties (indigenous communities) to appoint organisations to act as their agents in
commercialising their properties has been officially endorsed.
In practice the role of collecting societies has been confined in the past to the copyright
industry, where they perform a useful function. It remains to be seen whether there is any
scope in practice for organisations of this kind to operate in the trade mark and design milieus.
PAUSE FOR Collecting societies

REFLECTION Collecting societies are organisations dealing mainly with the administration of copyright
works on behalf of their members. They enter into agreements with third parties who may
wish to use the copyright works and collect royalty payments for distribution to the copyright
owners. In South Africa there are, for example, the Southern African Music Rights
Organisation (SAMRO) and the Dramatic, Artistic and Literary Rights Organisation (DALRO),
which act as collecting societies. SAMRO67 deals primarily with the administration of
copyright in respect of musical works and performers’ performing rights, both locally and
internationally. It has entered into reciprocal agreements with other collecting societies
worldwide to ensure that royalties are paid by users for the copyright works of their members.
One of its roles is to grant music users such as retail outlets, broadcasters and restaurants,
licences to use musical works, subject to payment of a royalty to the owners of the works
and after deducting an administration fee.
DALRO,68 on the other hand, is responsible for the administration of reproduction rights in
dramatic, artistic and literary works on behalf of the copyright owners. For instance, a user can
approach DALRO for a licence to reproduce books, articles from magazines and newspapers,
musicals and plays etc., subject to payment of a royalty which will be distributed to the copyright
owners by DALRO, after deducting their administration fee.
Collecting societies perform a useful and practical role in the commercialisation of
copyright works. They relieve copyright owners of the administrative burden of policing uses
of their works and of gathering royalties for the exploitation of their works. From
66 See for instance s 28H(3)(a) of the Copyright Act 98 of 1978, as amended by s 4 of the IPLAA 28 of 2013.
67 See www.samro.org.za for other functions of SAMRO.
68 www.dalro.co.za.

the users’ perspective, they provide an easy and accessible means of obtaining licences to
use works, particularly where a multiplicity of works are used. Generally, collecting societies
represent a wide portfolio of copyright owners and they are therefore usually in a position
to grant bulk licences covering a wide spectrum of works.
8.3.12 Dispute resolution

The IPLAA inserts alternative dispute resolution (ADR) provisions into each of the host
Acts.69 Disputes arising in regard to matters pertaining to traditional properties are to be
dealt with under the auspices of the CIPC, which is tasked with the duty of appointing
accredited institutions to deal with such disputes. The IPLAA is silent as to the identity of
such accredited ADR institutions, but appointments in that regard will doubtless take place
in due course.
Parties appearing before an ADR institution are precluded from having legal
representation, unless:
• the adjudicator and the involved parties consent to such legal representation; and
• in view of the relative complexity and importance of the dispute and the comparative
ability of the parties to represent themselves, the adjudicator is of the view that it would
be unreasonable to expect the parties to deal with the adjudication process without legal
representation.
The adjudication process is expected to take cognisance of existing customary dispute

resolution mechanisms, and the decision of an ADR institution will be executed and
enforced as if it were an order of the High Court. The decision of the adjudicator may be
appealed to a court of law and must be dealt with as if it were an appeal against a civil order
or a decision of a single judge.70
8.3.13 Modes of protection for TK/TCEs

International discussions have emphasised that it is necessary to grant TK positive
and defensive modes of protection, but the difference between these types of protection is
not easily discerned. Positive protection is intended to grant the holder of TK/TCEs a
mechanism to protect their rights and to have recourse against third parties who are
misusing their TK/TCEs. On the other hand, defensive protection is aimed at protecting
traditional and indigenous communities from the misappropriation and misuse of their TK/
TCEs without their consent and to conclude benefit-sharing agreements with third parties
using their TK/TCEs.
International thinking on the subject of protection of TK/TCEs is divided. There is a
school of thought that says that existing IP laws are adequate to grant these properties the
protection that they warrant and that therefore nothing needs to be done in this connection.
At best, if it is really considered necessary, some form of defensive protection should be
introduced. The predominant view is that special protection is warranted and that this
should be achieved by means of customised sui generis legislation, within the intellectual
69 See for instance s 28K of the Copyright Act 98 of 1978, as inserted by s 3 of the IPLAA 28 of 2013. Corresponding sections
have been inserted into the other host Acts.
70 S 28K of the Copyright Act 98 of 1978, s 43I of the Trade Marks Act 194 of 1993, and s 53I of the Designs Act 195 of 1993,
as amended by the IPLAA 28 of 2013.

property family, which takes account of the special and peculiar characteristics of TK/TCEs.
A distinctly minority view, which is reflected in the IPLAA, is that existing intellectual
property legislation should be amended and adapted to provide protection for this class of
intellectual property.
Whatever opinion one might hold on the optimum form of protection, and on the efforts
of the legislature to give effect to the minority view in the IPLAA, the simple and unfortunate
fact of the matter is that IPLAA is poorly drafted, and there is doubt whether it will achieve
its proclaimed objective.
PAUSE FOR A sui generis regime

Some countries have come to the conclusion that the protection of TK/TCEs through
REFLECTION
conventional IP laws and the adaptation of those laws to accommodate such subject matter
is not sufficient or appropriate and that customised or sui generis legislation is required to
cater for the unique characteristics of TK/TCEs.
For example, the Philippines has enacted The Indigenous Peoples Rights Act of 1997,71
which affords indigenous communities protective rights over their TK. The legislation has
introduced the concept of prior informed consent of the traditional community if third parties
seek to use their TK and benefit-sharing arrangements. The Philippines legislation also takes
cognisance of customary laws. Portugal enacted similar legislation on 20 April 2002.72
Further examples of countries which have adopted sui generis legislation for the
protection of biodiversity and related TK include Peru, Costa Rica and India. Thailand has
introduced legislation for the protection of traditional medicine and Panama has also
customised legislation dealing with the rights of traditional and indigenous communities.
8.4 Conclusion
The demand of indigenous communities to be recognised as custodians of their own TK/
TCEs and to benefit when third parties use their properties is both legitimate and reasonable.
There is therefore a need to find a lasting solution to this question.
It is apparent that existing IP laws have a role to play in protecting TK/TCEs, but the
impact made by such laws is not very significant in view of the unique nature of TK/TCEs.
The huge costs involved in obtaining and enforcing intellectual property rights may also
make it difficult for indigenous communities to access the system. A multifaceted approach
is therefore required for this diverse and unique subject, and this may include sui generis
legislation for the protection of TK/TCEs, customary laws, and the use of databases to record
TK and prevent misappropriation.
TK/TCEs cannot be protected in isolation and cognisance must be taken of national and
international instruments to protect such TK/TCEs. Caution must especially be exercised
to ensure that rights are not given to nationals of other countries, without reciprocal rights
being granted to South African indigenous communities. Also, the legislation must not be
so complicated and unworkable that its objectives are not realised. Furthermore, it is not
71 Republic Act No. 8371.

72 Portugal’s sui generis Decree-Law No. 118 of 2002. The Decree-Law established a legal regime for the registration and
protection of Autochthonous Plant Material as well as associated knowledge.

enough that an effective system is in place, it is important that the indigenous communities
are aware of the existence of the system and are trained in how to use it.
It is up to each individual country, in collaboration with its communities, to find a legal
system which works to protect TK/TCEs, but this must not be done to the exclusion of
international arrangements. WIPO has not yet perfected an international instrument for the
protection of TK/TCEs, but much work has been done in this regard and it appears that they
may be close to finding a solution. The sensible approach is to await the outcome of WIPO’s
efforts and then to enact legislation which is in harmony with that outcome. This is the
successful and time-tested approach which has been adopted in the past with the Paris
Convention for the Protection of Industrial Property (Paris Convention) and the Berne
Convention for the Protection of Literary and Artistic Works (Berne Convention) forming
the basis of, respectively, patent, trade mark and design law, and copyright law, throughout
the world, including in South Africa. This approach has the merit that the relevant laws of
the countries of the world have a large measure of uniformity and that it is possible to provide
for meaningful and effective international reciprocal protection. The latter is difficult to
achieve if individual countries, such as South Africa, go out on a limb and adopt a unilateral
approach which is out of kilter with the rest of the world. This is the current position brought
about by the IPLAA.
The IPLAA was signed into law on 10 December 2013. In terms of section 15 of the IPLAA,
it will come into effect on a date to be announced by the President in the Government
Gazette. At this point this has not yet occurred. The Regulations envisaged by the IPLAA are
yet to be promulgated, but at the time of writing the Department of Trade and Industry is
working on the project.
Time will tell whether the IPLAA provides an adequate solution for the protection of TK/
TCEs, but it is doubtful that this is the case. Its efficacy will be tested once the courts are
called upon to give effect to the amended host Acts.

Chapter 9 Commercial considerations
for transactions involving
intellectual property
DINA BIAGIO
9.1 Assignment 361

9.1.3 Copyright 364
9.1.3.1 Formalities for the valid assignment of copyright 364
9.1.4 Assignment of intellectual property rights in respect of traditional properties 365
9.2 Licensing 366
9.2.2 Fundamental terms of a licence 366
9.2.2.1 The subject of the licence 366
9.2.2.2 Protected acts 367
9.2.2.3 Field of use 368
9.2.2.4 Nature of the licence 368
9.2.2.5 The duration of the licence 369
9.2.2.6 The territory of the licence 369
9.2.2.7 Licence fees 369
9.2.2.8 Sublicensing 370
9.2.2.9 Other important licence terms 371
9.2.3 Formalities and recordal of licences 371
9.2.3.1 Patents and designs 371
9.2.4 Expressly prohibited provisions in patent licence agreements 375
9.2.5 Licences of right 375
9.2.6.1 Dependent patent 376
9.2.6.2 Abuse of patent and design rights 376
9.2.6.3 Compulsory licensing of copyright 378
9.2.6.4 Licensing of traditional properties 379
9.2.7 The doctrine of exhaustion of rights as applied to patents and designs 381
9.2.8 The doctrine of exhaustion of rights as applied to trade marks 383
9.3 Hypothecation and attachment 383
9.3.3 Copyright 385
9.4 Exchange control requirements 385
9.4.1 Regulation 10(1)(c) 385
9.4.2 Regulation 10(4) 387

CHAPTER 9 COMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING INTELLECTUAL PROPERTY 361
9.4.3 Licences granted to foreigners under South African-owned intellectual property 388
9.5 Intellectual property from publicly financed research and development 388
Intellectual property is a commercial tool that can be used by a business to gain a competitive
advantage. Like any other business asset, intellectual property must be properly exploited
for its benefit to be realised.
Aside from its being assignable outright for value, there are many ways in which intellectual
property can be exploited commercially: it can be enforced against others to create a monopoly
for the proprietor with respect to a protected product/service; it can provide negotiation
leverage in a collaborative development arrangement or in the context of an infringement suit
(for example, through cross-licensing and IP pooling); it can be licensed to gain access to
markets which the proprietor would not otherwise have been able to benefit from; it can be
used defensively to ensure freedom to operate; it can be swapped for equity in a joint venture
in which two or more parties pool their collective resources; it can be used as the basis of a
product distribution network; and it can be used as collateral to secure a loan.
In this chapter we will look at some of these mechanisms for exploiting intellectual
property rights, and commercial considerations relevant thereto.
9.1 Assignment
Generally, ownership of intellectual property can be transferred from the proprietor
to another person by assignment, testamentary disposition or operation of law, much
like other legally recognised forms of property. An assignment of intellectual property from
the proprietor to an assignee will be valid whether or not the assignment is made
in exchange for value.1 The effect of an assignment of intellectual property is that ownership
of the rights in question is transferred to the assignee, thereby entitling the assignee to
enforce these rights against the assignor and all others. In assigning the intellectual property,
the assignor divests himself of all such rights, which become the property of the assignee.
In principle, the proprietor of intellectual property cannot assign more rights to another
than he himself owns.
9.1.1 Patents and designs

An assignment of a patent/design or an application for a patent/design must be in writing2
and no other formalities are prescribed or required.
It is common for an applicant for a patent to make a partial assignment of rights in the
application, for example, as an assignment of priority rights in an international application
for a particular country or countries.
9.1.1.1 Recordal of assignment

The assignment can be recorded in the patent/design register3 but does not have to be
recorded. However, an application to record an assignment must be lodged at the patent
office within six months4 of the event entitling the recordal.5
1 Provided that the conditions for the formation of a valid and binding contract have been fulfilled.
2 S 60(1)(a) of the Patents Act 57 of 1978; s 30(1)(a) of the Designs Act 195 of 1993.
3 S 60(1)(b) of the Patents Act 57 of 1978; s 30(1)(b) of the Designs Act 195 of 1993.
4 The Registrar may extend this time limit on payment of the prescribed fee.
5 Or within six months of the grant of the patent/design, if the licence agreement preceded such grant.

If the assignment is not recorded it will not be valid except as between the parties
thereto.6 In this regard, cognisance should be taken of section 72 of the Patents Act7
and section 39 of the Designs Act8 which stipulate that the person appearing from the
register to be the proprietor of a patent/design/application therefor shall have power to deal
with that item as the owner thereof.9 An assignee of a patent/design would therefore have
no basis on which to institute infringement proceedings against an infringer if the
assignment has not been recorded in the register as, in the eyes of the infringer, the assignor
is the proprietor of the patent/design. Furthermore, the assignee is prevented10 from
producing the written assignment document as evidence of his title to the patent/design in
infringement proceedings.11
A co-proprietor of a patent/design or an application therefor is not able to assign
the same, or his undivided share in the same, without the consent of the other
co-proprietor(s).12
9.1.2 Trade marks

An assignment of a trade mark registration/application must be in writing and be signed by
or on behalf of the assignor, to be of any force or effect.13
In South Africa, trade mark registrations/applications can be assigned with or without
the goodwill attaching to the trade mark.14 Conversely, an unregistered trade mark is not
capable of assignment separately or independently from the business in which it is used.
This is based on the principle that an unregistered trade mark exists only as a symbol and
a part of the goodwill that has been established by a business through using the trade mark,
whereas a trade mark registration/application is a legally recognised asset that can exist
independently from the business in which it is used and can therefore be assigned to
another person.
In some countries, like the United States of America, a trade mark cannot be assigned
without at the same time transferring the goodwill of the business in which the trade mark
has been used. This is to ensure that there is continuity in the source of the goods/services
which the trade mark denotes, with a view to avoiding a situation where the use of the trade
mark causes confusion in this respect.
The proprietor of a trade mark registration/application for registration can assign
all the rights conferred by that registration/application or only some of these rights.15
For example, the proprietor of a trade mark registration could assign his rights
in that registration as they pertain to use in association with certain goods/services
while retaining other rights in the trade mark registration (i.e. the right to prevent
others from using the mark in association with other goods/services could be
retained).
6 S 60(1)(c) of the Patents Act 57 of 1978; s 30(1)(c) of the Designs Act 195 of 1993.
7 57 of 1978.
8 195 of 1993.
9 Subject to any right appearing from the register to be vested in any other person.
10 By s 72(3) of the Patents Act 57 of 1978; and s 39(3) of the Designs Act 195 of 1993.
11 Except with good cause shown.
12 S 49(2)(b) of the Patents Act 57 of 1978; and s 25(2)(b) of the Designs Act 57 of 1978.

PAUSE FOR In practice, how is the partial assignment of a trade mark effected?
REFLECTION A ‘partial assignment’ of a trade mark is usually allowed by the Registrar if it can be shown
that the proposed assignee:
• deals in different goods and services despite the fact that the mark falls in the same
class of the trade marks classification; or
• is still related to the assignor in some way, or perhaps forms part of the same group,
and that therefore no confusion as to the origin of the goods/services is likely.
For example, the Registrar has allowed the partial assignment of trade marks where the
respective separated owners:
• are engaged in the manufacture of motor vehicles on the one hand and aeroplanes on
the other;
• are engaged in the manufacture of cigarettes on the one hand and luxury smokers’
articles (such as lighters, etc.) on the other; and
• manufacture sweets and candy on the one hand and fresh bakery products on the other.
The same outcome could be achieved by applying for the amendment of the specification
of goods and/or services of the existing trade mark by deleting the goods and/or services
in conjunction with which the trade mark will be used by the ‘assignee’. At the same time a
new application may be lodged in the name of the ‘assignee’ in respect of goods and/or
services of interest to it, namely the goods/services that are deleted from the registered
mark which is being ‘assigned’.
9.1.2.1 Recordal of assignment

Where the transfer of the ownership of a trade mark registration/application takes place, the
new proprietor must take appropriate steps to record the change in the register of trade
marks.16 Not only is the wording in the Trade Marks Act17 peremptory regarding the recordal
of the assignment/transmission,18 but failure to record an assignment/transmission will
cause uncertainty and could prejudice the new proprietor. It could even lead to the trade
mark being invalidated. The assignment/transmission should be recorded in the trade marks
register within 12 months, but thereafter, recordal is still possible on payment of a fee.19
PAUSE FOR Could a mark be ‘attacked’ if new title is not recorded when ownership changes?
REFLECTION Marks may be removed from the register on the grounds of non-use if, up to the date
three months before the date of application for removal, a continuous period of five
years or longer has elapsed since the date of issue of the certificate of registration
during which the trade mark was registered and during which there was no bona fide
use thereof by the proprietor.20 The ‘proprietor’ refers to the person recorded as such in
the register. Therefore, should a mark be assigned, and the new proprietor not
16 S 40 of the Trade Marks Act 194 of 1993.

17 194 of 1993.
18 According to s 2 of the Trade Marks Act 194 of 1993, ‘transmission’ means a transfer by operation of law, not being assignment.

officially recorded in the register for a period of five years, the mark can be ‘attacked’ even
though it has been used by the new owner.
A mark may also be removed from the register if the manner in which the mark has been
used would be likely to cause deception or confusion.21 An argument could be made that
where an assignment of a mark is not recorded, the public may be confused as to the
ownership of the mark and therefore that the mark should be removed from the register. The
confusion stems from the fact that the use of the mark denotes origin in one person,
whereas the register reflects the supposed origin as another person.
The Trade Marks Act further provides that where a person becomes entitled by assignment
or transmission to a registered trade mark, he shall make application to the Registrar to
register his title.22 The wording of this particular section is peremptory and should, if not
complied with, provide grounds for the removal of the mark.
In conclusion, there are several advantages to recording assignments of trade marks. Of
greater importance, however, is that a mark may be removed from the register if the
assignment is not recorded.
9.1.3 Copyright
The Copyright Act23 classifies copyright as moveable property which is transmissible by way
of assignment; by testamentary disposition; and by operation of law.24 An assignment or
testamentary disposition of copyright may be limited so as to apply to only some of the acts
which the copyright proprietor has the exclusive right to control (i.e. the protected or
‘restricted’ acts), or to only a part of the term of the copyright, or to a specified country or
other geographical area in which the copyright is enforceable.25
9.1.3.1 Formalities for the valid assignment of copyright

Section 22 of the Copyright Act26 prescribes certain formal requirements for a valid
assignment of copyright. Non-compliance with the prescribed formalities will result in a
purported assignment being void ab initio and having no effect, despite the parties having
intended ownership of the copyright to be transferred.
A valid assignment of copyright must be in writing (a written instrument, e.g. a deed of
assignment, is required) and be signed by or on behalf of the assignor (i.e. the copyright
proprietor).27 Furthermore, the assignment instrument should clearly indicate the intentions
and consensus of the parties, on the one hand to transfer ownership of copyright, and on
the other, to receive ownership thereof; and must clearly identify the subject of the
assignment.
An assignment can be effected in respect of copyright in a future work (where the
copyright does not exist at the time when the assignment is made but will come into
existence at some time in the future) and the future copyright in any such work is also
assignable as moveable property.28

23 98 of 1978.
26 98 of 1978.

Where a copyright proprietor has assigned copyright in a copyright work to another, he

is placed in the same position as a third party, in relation to that work, and any reproduction
or adaptation of the work by him without the authority of the assignee would constitute an
infringement of the copyright in that work.29
9.1.4 Assignment of intellectual property rights in respect of traditional

properties
The Copyright Act,30 the Trade Marks Act31 and the Designs Act32 have been amended by the
Intellectual Property Laws Amendment Act33 to deal with the assignment or transmission
of traditional copyright works, traditional designs, indigenous terms or expressions,
geographical expressions and associated rights (traditional properties).
Save in certain circumstances provided for in the amended legislation, traditional
properties are not assignable and cannot be transferred by testamentary disposition or
operation of law.34 In the specified circumstances, however, traditional properties are
capable of being assigned to a collecting society, transferred to a duly appointed
representative of an indigenous community, to a natural or juristic person designated by the
indigenous community, or to the National Trust for Indigenous Knowledge.35 While the
aforementioned restrictions exist in the case of the assignment or transfer of traditional
properties, they have no application to the licensing of traditional properties.
Traditional properties may be assigned to a collecting society (i.e. an organisation that
acts on behalf of, or in lieu of, an intellectual property rights holder in collecting royalties
for the use of traditional properties and, in certain circumstances, in enforcing rights in such
properties), thus enabling such a collecting society to carry out its function.36
A traditional community owning a traditional property may transfer its title to
such property to a duly appointed representative of the community. Where the ownership
of a traditional property vests in a duly appointed representative of a community
(whether a natural or a juristic person) prior to or upon the death or liquidation of
such representative, as the case may be, the relevant community may transfer the
ownership of the traditional property in question to a natural or juristic person of
its choice.37 This must be done by agreement as set out in the relevant community
protocol as provided in the amended legislation. When the longest surviving member of
the community dies the ownership of the traditional property is automatically transferred
to the National Trust for Indigenous Knowledge for which provision is made in the
amended legislation.38
29 Galago Publishers (Pty) Ltd and Another v Erasmus 1989 (1) SA 276 (A).
30 98 of 1978.
31 194 of 1993.
32 195 of 1993.
33 28 of 2013.
34 Ss 28J(1) of the Copyright Act 98 of 1978, 43H(1) of the Trade Marks Act 194 of 1993 and 53H(1) of the Designs Act 195
of 1993, as inserted by the Intellectual Property Laws Amendment Act 28 of 2013.
35 Ss 28J of the Copyright Act 98 of 1978, 43H of the Trade Marks Act 194 of 1993 and 53H of the Designs Act 195 of 1993,
as inserted by the Intellectual Property Laws Amendment Act 28 of 2013.

9.2 Licensing
9.2.1 Introduction
Intellectual property rights are so-called ‘negative rights’ that enable the proprietor to
prevent others from performing certain acts in relation to that intellectual property. These
acts are referred to as the ‘protected acts’ in the remainder of this chapter. Licensing is a
mechanism whereby the proprietor of the intellectual property authorises another person
to perform some or all of the protected acts in relation to that intellectual property, which
would otherwise be unlawful.
For example, a trade mark proprietor may authorise another person (the licensee) to sell
goods and/or services under the trade mark. In the absence of a licence to do so, this person
would be infringing the trade mark. This authorisation (or licence) is usually contingent
upon the licensee agreeing to certain terms and conditions.
Generally,39 a licence agreement for intellectual property may be verbal, in writing, tacit
or inferred from conduct, in alignment with normal common-law principles.
It is important to note that licensing of intellectual property can take many forms and is at
the heart of various commercial arrangements such as franchising, endorsement, publishing,
syndication of television programmes, film production and software commercialisation.
In this section, the circumstances in which a licence for intellectual property may be
required, and the most important terms of such a licence, will be looked at more closely.
9.2.2 Fundamental terms of a licence

When authorising another person to perform a protected act in relation to certain intellectual
property, the scope of this authorisation must be clearly and unequivocally set out. At
the very least, the parties must give consideration to the following fundamental terms of
the licence.
9.2.2.1 The subject of the licence

A licence can be granted under various forms of intellectual property, such as patents, patent
applications, design registrations and applications therefor, registered and unregistered
trade marks, know-how and copyright. By properly identifying the subject of a licence the
parties create certainty as to the scope of the licence (as the licensee cannot lawfully perform
a protected act in relation to intellectual property that lies outside the ambit of the licence
and is therefore beyond the scope of what he or she has been authorised to perform by the
licence). Identifying the subject of the licence is also important in establishing the extent of
the licensee’s rights on termination/expiry of the licence or the expiry/lapsing/revocation
of an item of intellectual property.
In practice, the relevant registration/application numbers for trade marks/patents/
designs should be cited in the licence agreement and the know-how and copyright works
that the licensee is authorised to use, reproduce or adapt should be clearly specified. Where
a licence is granted for unregistered intellectual property, the parties may deposit the
copyright works and a detailed description of the licensed know-how that forms the subject
of the licence into trust, with an escrow agent,40 for example. If a dispute arises, the escrowed
material can be released to both parties on request, as evidence of the subject of the licence.
39 There are some exceptions to this general statement, for example, in terms of s 22(3) of the Copyright Act 98 of 1978, an
exclusive licence granted for copyright must be in writing signed by or on behalf of the licensor.
40 This is an independent, trusted third party who will hold materials in custody or trust until one or more specified
conditions have been fulfilled.

9.2.2.2 Protected acts

As indicated previously, the proprietor of intellectual property is entitled to prevent others
from performing certain acts in relation to that intellectual property. Recall the following
from previous chapters:
9.2.2.2.1 Patents
A patentee is entitled to exclude others from making, using, exercising, disposing or offering
to dispose of, or importing the invention, in South Africa.41
9.2.2.2.2 Designs
A proprietor of a registered design is entitled to exclude other persons from making,
importing, using or disposing of any article included in the class in which the design is
registered and embodying the registered design or a design not substantially different from
the registered design, in South Africa.42
9.2.2.2.3 Trade marks

A proprietor of a trade mark is entitled to exclude other persons from:
i) using in the course of trade in relation to goods or services in respect of which the trade
mark is registered, an identical mark or a mark so nearly resembling it as to be likely to
deceive or cause confusion;43
ii) using a mark which is identical or similar to the registered trade mark in the course of trade
in relation to goods or services which are so similar to the goods or services in respect of
which the trade mark is registered that there is a likelihood of deception or confusion;44
iii) in certain circumstances, using in the course of trade in relation to any goods or services
in respect of which a trade mark is registered an identical mark which is similar to the
registered trade mark. The registered trade mark must be well known in South Africa and
the use of the contentious mark must be likely to take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the registered trade mark. This
exclusion of use of a trade mark applies notwithstanding the fact that such use is not
causing confusion or deception.45
9.2.2.2.4 Copyright
A copyright owner is entitled to exclude other persons from performing various acts in
relation to the subject work, depending on the type of work in question,46 but, generally,
from reproducing the work.
The scope of a licence is circumscribed by delineating the range of protected acts that the
licensee is authorised to perform in relation to the intellectual property in issue. For example,
a licensee may be authorised to manufacture and sell a patented article but not to import the
patented article into South Africa. A distributor of a patented article may be authorised to
dispose of, or offer to dispose of, the article, but not to use it. A distributor may be authorised
to use a particular trade mark as part of its corporate identity and trading style in order to

43 S 34(1)(a) of the Trade Marks Act 194 of 1993.
44 S 34(1)(b) of the Trade Marks Act 194 of 1993.
45 S 34(1)(c) of the Trade Marks Act 194 of 1993.
46 See ss 6–11 of the Copyright Act 98 of 1978, and ss 12–19 of the same Act for exclusions.

resell goods purchased from the licensor, but may not be authorised to manufacture its own
goods and apply that trade mark to those manufactured goods for sale to the public.
9.2.2.3 Field of use

A licence can be restricted by the field in which the licensee is entitled to use the intellectual
property that forms the subject of the licence. For example, a patentee may grant an exclusive
licence to a licensee under a patent for the composition of a plastics material, for use in the
manufacture and sale of containers and an exclusive licence under the same patent to
another licensee for use in the manufacture and sale of plastic sheeting. A trade mark
proprietor may, similarly, grant an exclusive licence under a particular registered trade mark
in class 25 for use in relation to clothing and an exclusive licence under the same trade mark
to another licensee for use in relation to wet suits.
9.2.2.4 Nature of the licence

When licensing another person, the licensor is effectively agreeing either to ‘share’ the
monopoly afforded by the intellectual property with that other person or to substitute that other
person as the beneficiary of the monopoly afforded by the intellectual property. A licence can
be non-exclusive, sole or exclusive in nature and this will determine whether the beneficiary
of the monopoly will be substituted or the monopoly will be shared with the licensee:
i) Where the licence granted is a non-exclusive licence, the licensor retains the licensed
rights for himself without restriction but extends these to the licensee. In other words,
the licensor is himself able to perform the protected acts in relation to the intellectual
property in the territory and the field of use and is able to authorise other persons besides
the licensee to perform the same acts in the same territory and in the same field of use.
ii) Where the licence granted is a sole licence, the licensor retains the licensed rights for
himself, subject to some restriction, and extends these to the licensee. The licensor’s rights
are restricted by a sole licence as in terms of the contract the licensor is not able to
authorise any other person to perform the same protected acts in the same territory and
the same field of use. The result is that the licensee is the only person, in addition to the
licensor, that is authorised to perform the protected acts in the territory and field of use.
iii) Where the licence granted is an exclusive licence, the licensor effectively agrees to a
restraint that prevents him from performing the protected acts in the territory and the
field of use, so that the licensee is the only person who is authorised to perform the
protected acts in relation to the intellectual property in the territory and field of use.
Where the licence granted is a sole or exclusive licence, the licensee is often obliged to meet
a minimum performance standard, failing which the licensor may have various options such
as to terminate the licence, convert the licence to a non-exclusive licence or demand
payment of a default amount from the licensee.
In this way, the licensor is protected against a non-performing licensee in that he will be
released from the restraint from appointing other licensees, which is characteristic of a sole/
exclusive licence, or will be compensated financially for the licensee’s non-performance
(usually in an amount equivalent to the royalty that would have been payable on revenue
had the licensee met the minimum performance standard).
A franchise agreement is a common form of licence agreement in which a bundle of
rights is licensed to a franchisee to enable him to closely imitate a particular business. The
subject of the licence granted in a franchise agreement is usually intellectual property

pertaining to the particular trade dress, trade get-up, trade marks, copyright and business
know-how of the franchisor but could include rights under patents and/or registered designs
as well. Franchise arrangements are regulated by consumer protection legislation.47
9.2.2.5 The duration of the licence

A licence to perform a protected act in relation to intellectual property could but may not
necessarily be limited in time.48 Where, for example, a licensor receives royalties on the sale
of articles, the duration of the licence can be used to incentivise the licensee to perform, as
a short but renewable licence should motivate the licensee to sell as many of the articles as
he can, failing which the licensor will not renew the licence.
Where a patent forms the subject of a licence, statute49 provides that the licence will
terminate on the date on which the patent expires, is revoked or otherwise ceases to exist.
9.2.2.6 The territory of the licence

The rights associated with registered intellectual property such as patents, registered designs
and registered trade marks are territorial in nature. Rights associated with other forms of
intellectual property, such as copyright and know-how, which may enjoy international protection
automatically, are not necessarily so territorially limited in practice and can be enforced in
territories outside South Africa, albeit in terms of the foreign law which regulates the item of
intellectual property in a given country. A licensor cannot grant rights to a licensee in a territory
in which he has no protectable interest as conferred by some form of intellectual property.
Rights associated with know-how are territorially restricted only to the extent to which
these rights are not recognised or afforded protection by the laws of a particular country. In
other words, a licensor can grant rights to a licensee for know-how in territories in which no
patent protection exists, and the licensee can be obliged, on the basis of this licence, to pay
licence fees to the licensor. Conversely, where the subject of a licence is intellectual property
that is territorial in nature, the licensor can only grant the licence in the territories in which
he has registered rights.
9.2.2.7 Licence fees

A licensee typically pays the licensor an amount in consideration for the grant of rights. The
licensee can pay a once-off upfront payment; a fixed amount per year/month/quarter; an
amount calculated as a percentage of turnover generated through the grant of the licence;
an amount per article sold or weight of product sold; or a combination of some or all of these.
A licence may be ‘royalty-free’ or ‘fully-paid up’, meaning that the licensee is not obliged
to pay any royalty or other consideration to the licensor for the rights granted.
Parties to a licence agreement often agree on a licence fee calculated as a royalty on the
revenue generated by the licensee because this arrangement shares the risk between them
– the licensor only benefits from the licence if the licensee benefits from the licence.
An important question in any licence negotiation is ‘What is a reasonable royalty?’ There
is some guidance from our courts as to the factors which should be taken into consideration
when determining an appropriate royalty in the context of a compulsory licence (see
paragraph 9.2.6), but generally parties negotiating a voluntary licence still seek a ‘formula’
to calculate the royalty percentage.
47 For example, the Consumer Protection Act 68 of 2008 and Regulations require franchisors to provide certain
information to the franchisee(s) prior to signing a franchise agreement.
48 A licence can be granted in perpetuity or can endure indefinitely until the occurrence of a termination trigger.

Parties to licence agreements frequently rely on the so-called ‘25% rule of thumb’ to
determine the ballpark in which a reasonable royalty should fall. The rule is founded on the
assumption that a licensee is typically prepared to pay to the licensor about a quarter of the
benefit (usually profit) he receives through the grant of the licence. If any more than a quarter
is asked, the licensee, who bears the bulk of the business risk, may lack incentive.
The 25% rule of thumb has been widely used since the 1970s as a starting point in
determining a reasonable royalty, both generally in licence negotiations and in more specific
circumstances, such as for the purpose of valuing intellectual property (using a royalty-
savings method) or for quantifying damages in an intellectual property infringement suit.
COUNTER 25% rule of thumb – is it sound?

POINT In January 2011 the Court of Appeals of the Federal Circuit of the United States of America
ruled in Uniloc USA, Inc. v. Microsoft Corp50 that ‘the 25 percent rule of thumb is a
fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation.
Evidence relying on the 25% percent rule of thumb is thus inadmissible under Daubert and
the Federal Rules of Evidence because it fails to tie a reasonable royalty base to the facts of
the case at issue.’
The Federal Court’s criticism of the bald use of the 25% rule by the patentee to justify
its damages claim indicates that the facts and circumstances of a particular case should
be the primary consideration in determining a reasonable royalty.
9.2.2.8 Sublicensing
A licensee of intellectual property rights is able to sublicense all or some of the rights he has
been granted to others, provided that he may not purport to grant more rights than he
himself has been granted. A sublicence involves the licensee, who has acquired the right to
perform certain acts from the licensor, in turn granting some or all of those rights to a third
party (the sublicensee). A licence agreement should therefore deal with whether or not the
licensee is able to grant sublicences under the licensed rights and the conditions under
which such sublicences may be granted.
A licensor should be careful to exercise some control over the sublicensing of rights, for
example, to prevent a situation where a licensee is entitled to sublicense a competitor of the
licensor.
PAUSE FOR Sublicencing under the Copyright Act

REFLECTION The Copyright Act51 is the only intellectual property legislation that regulates the rights of a
sublicensee of intellectual property. Section 2752 entitles an exclusive sublicensee to take
infringement action and obtain relief for infringement of the copyright under which he has
been sublicensed in the same way as the owner of the sublicensed copyright would be
entitled to do.
The distinction between the sublicence of intellectual property rights and the assignment
of rights under a licence agreement must be appreciated. In the former instance, the licensee
remains entitled to exercise all his rights in terms of the licence agreement and extends these
50 632 F. 3d 1292 (2011).

51 98 of 1978.

rights to the sublicensee. In the latter, the licensee divests himself of all his rights under the
licence agreement in favour of the sublicensee, who then stands in the shoes of the licensee.
9.2.2.9 Other important licence terms

There are various other terms that may need to be included in a licence agreement, depending
on the particular circumstances and the nature and subject of the licence. For example, where
a trade mark forms the subject of a licence, it is crucial that the licensor be entitled to exercise
control over the quality of the goods/services sold by the licensee in conjunction with the
licensed trade mark so that such use does not damage the reputation and goodwill associated
with the trade mark. Furthermore, the trade mark proprietor should exercise control over the
use of the mark by the licensee and oblige the latter to use the mark in such a manner that it
is evident that he is a licensee and not the trade mark proprietor. The trade mark should retain
its function as the trade mark proprietor’s badge of origin. If the licensee uses the mark in a
manner that causes confusion as to its connection with the goods and/or services in relation
to which it is used, the validity of the trade mark could be endangered.
Parties to a licence agreement might also want to give consideration to the specific
obligations of the licensor. For example:
• Is the licensor obliged to maintain the intellectual property in force for the duration of
the licence?
• Is the licensor obliged to defend the intellectual property if its validity is challenged?
• Is the licensor obliged to institute infringement proceedings against third parties where
the licensee is suffering damage?
9.2.3 Formalities and recordal of licences

A licensee’s right under a registered form of intellectual property such as a patent, registered
design or registered trade mark may be recorded in the relevant register, but does not have
to be recorded.
9.2.3.1 Patents and designs

There is nothing in the Patents Act53 or the Designs Act54 which requires a licence to be
recorded in the register. There are, however, advantages for the licensee in doing so.
The Patents and Designs Acts make provision for the recordal of a licence for a patent/
design or an application therefor.55 An application to record a licence must be lodged at the
patent office within six months56 of the event entitling the recordal.57 A deed of record
evidencing the fact that a licence has actually been granted is often used to record a licence
in the patent/design register, so that the licence agreement containing all the terms and
conditions of the licence need not be submitted to the patent office, where it will be open
to public inspection.
Generally,58 proceedings for infringement of a patent/design may only be instituted by
the proprietor of the patent/design.59 Where a proprietor is contemplating instituting
53 57 of 1978.
54 195 of 1993.
55 S 10(2) of the Patents Act 57 of 1978 read with reg 62 and s 7(2) of the Designs Act 195 of 1993 read with reg 39(1).
56 The Registrar may extend this time limit on payment of the prescribed fee.
57 Or within six months of the grant of the patent/design, if the licence agreement preceded such grant.
58 There are exceptions for a patent endorsed with the words ‘licences of right’ in terms of s 53 of the Patents Act 57 of
1978; and an exclusive compulsory licence granted under a design registration in terms of s 21(11) of the Designs Act
195 of 1993.
59 S 65(1) of the Patents Act 57 of 1978; and s 35(1) of the Designs Act 195 of 1993.

infringement proceedings for relief in respect of infringement, he must, before instituting

the proceedings, give notice of his intention to every recorded licensee under the patent/
design and any recorded licensee will be entitled to intervene as a co-plaintiff.60
It is important to note that61 a document or instrument in respect of which no
entry has been made in the register cannot be admitted in evidence in any proceedings in
proof of the title to a patent/design or an application therefor or any interest therein, unless
the court directs otherwise on good cause shown;62 and a person who does not appear from
the register as having an interest in a patent/application therefor will not be allowed to prove
such interest in any proceedings, unless the court directs otherwise, on good cause shown.63
In other words, where a licence is not recorded in the register, the licence agreement will
not, without good cause shown, be admissible as evidence in any proceedings and the
licensee has no grounds on which to join infringement proceedings to claim relief from an
infringer of the patent/design.
PAUSE FOR Licences and infringement proceedings

REFLECTION Generally, a licensee, whether an exclusive, non-exclusive or sole licensee, is not entitled
under any circumstances to institute proceedings for infringement of a patent/design, in its
own right as sole plaintiff. A licensor may, however, be contractually obliged in a licence
agreement to institute proceedings at the election of the licensee, to enable the licensee to
join in the proceedings as co-plaintiff. A licensor may agree to such an obligation provided
that he is indemnified against the costs associated with the proceedings and any costs order
awarded against the plaintiffs in the proceedings.
9.2.3.2 Trade marks

There is nothing in the Trade Marks Act64 which requires a licence to be recorded in the
register. There are, however, advantages for both parties in doing so.
The Trade Marks Act65 makes provision for the recordal of a licensee in the register. A
recorded licensee is referred to in this Act as a ‘registered user’. To record a licensee as a
registered user, the proprietor must apply to the Registrar providing details of the licence,
such as the name and address of the licensee; the relationship, existing or proposed, between
the proprietor and the licensee; and the goods or services in respect of which the licensee
is licensed.66 The application for recordal must be accompanied either by an affidavit
executed by the proprietor confirming the particulars of the licence or a certified copy of the
licence agreement.67
The date of the entry of a registered user in the register is the date on which the
application for recordal was made and not the commencement date of the licence.68
The registration of a licensee as a registered user may be cancelled or varied by
the Registrar on application by the proprietor or by such registered user or by any
61 Except where, in terms of s 53 of the Patents Act 57 of 1978 or s 28 of the Designs Act 195 of 1993, the Registrar intends
to give an order for the rectification of the register, he must give notice of his intention to do so to the applicant/
proprietor, and to any other person who appears to him to be concerned, and must give the applicant/proprietor and
any other person who appears to him to be concerned, an opportunity of being heard before making the order.
64 194 of 1993.
67 Reg 39 to the Trade Marks Act 194 of 1993.
68 Reg 40 to the Trade Marks Act 194 of 1993.

other registered user of the trade mark.69 Such a registration may also be cancelled by
the Registrar where an application has been made for recordal of an assignment of
the trade mark.70
You may recall from other chapters that there are serious consequences for a trade mark
proprietor if the trade mark is not used or if an applicant for the registration of a mark has
no intention of using the mark as a trade mark at the date of filing the application.71 Use of
a trade mark by a registered user is deemed to be use by the trade mark proprietor, for all
the purposes for which use is material in terms of the Trade Marks Act.72
The recordal of a licence is not necessary for use by the user to be recognised as permitted
use;73 use by a licensee that is not recorded as a registered user may also be permitted use,
but the recordal will be prima facie evidence that the use of the trade mark by a licensee is
permitted use, so there is benefit to be gained by the trade mark proprietor in recording a
licensee as a registered user.
The benefit to the licensee in recording himself as a registered user manifests in
circumstances of trade mark infringement. In the case of infringement, a registered user can
call upon the proprietor to institute proceedings for relief from the infringement but if the
proprietor refuses or neglects to do so within two months, a registered user is entitled to
institute proceedings in his own name as if he were the proprietor of the trade mark.74 In the
case of a refusal, the proprietor must be cited as a co-defendant, but a proprietor so cited will
not be liable for any costs unless he enters an appearance and takes part in the proceedings.75
Before a proprietor institutes infringement proceedings he must give notice of his
intention to do so to all registered users and these registered users will be entitled to
intervene in the proceedings and to recover any damages suffered as a result of the
infringement.76
9.2.3.3 Copyright
The formalities in respect of licences under copyright and the rights of a licensee in
circumstances of copyright infringement are quite different from those pertaining to licences
granted under patents, designs and trade marks.
Unlike the statutes pertaining to patents, designs and trade marks, section 22(3) of the
Copyright Act77 expressly provides that an exclusive licence under copyright will have effect
only if it is in writing and signed by or on behalf of the licensor or, in the case of an exclusive
sublicence, the exclusive sublicensor, as the case may be.78 No such requirements are
prescribed for sole and non-exclusive licences under copyright. In the event that a purported
exclusive licence does not meet the formal requirements for the existence of an exclusive
licence, the effect is not that the licence is void, but rather that what may have been intended
as an exclusive licence is reduced to a non-exclusive licence.

70 Unless the assignee requests the Registrar not to cancel any such registration and furnishes the Registrar with all the
information referred to in s 39(6)(b) of the Trade Marks Act 194 of 1993.
71 These are grounds for removal of the trade mark from the register under s 27(1)(a) and (b) of the Trade Marks Act 194
of 1993.
72 Ss 38(1) and 38(2) of the Trade Marks Act 194 of 1993.
73 Beacon Sweets & Chocolates (Pty) Ltd v Trebor Bassett Ltd and the Registrar of Trade Marks 1997 BIP 12 (T) at 15C.
77 98 of 1978.

It is sometimes difficult to distinguish between an exclusive licence and an assignment

of copyright as their practical effects are similar. An important distinction is that, in the case
of an assignment of copyright, ownership of the copyright is transferred, whereas on the
grant of an exclusive licence under copyright, the licensor retains ownership of the copyright
and allows the licensee the exclusive right to perform the protected acts in relation thereto.
Where a licence has been granted under copyright by the proprietor of the copyright, the
licence will be ‘binding upon every successor in title to his interest in the copyright, except
to a purchaser in good faith and without notice, actual or constructive, of the licence or a
person deriving title from such a purchaser …’79 This means that a licence agreement, which
usually gives the parties rights that are personal in nature, will survive an assignment of the
subject of the licence to an assignee and be binding on the assignee, provided that the
assignee was given notice of the licence.
In the case of infringement, an exclusive licensee and an exclusive sublicensee have the
same rights of action and are entitled to the same remedies as if the licence were an
assignment.80 In other words, an exclusive licensee and an exclusive sublicensee will be
entitled, in their own right, to institute proceedings for infringement of the licensed copyright
and to claim relief as though they were the assignee of the copyright. Before doing so, the
exclusive licensee or sublicensee must give written notice to the copyright proprietor of its
intention to institute proceedings, and the proprietor may intervene in such proceedings
and recover any damages suffered as a result of the infringement concerned or a reasonable
royalty to which he may be entitled.81
There are no formal requirements for the existence of a non-exclusive licence. A
non-exclusive licence may be granted orally, in writing or may be inferred from the parties’
conduct.82 The Copyright Act83 provides that a non-exclusive licence may be revoked at any
time provided that a non-exclusive licence granted by contract shall not be revoked, either
by the person who granted the licence or by his successor in title, except as the contract may
provide, or by a further contract.84 In considering whether the term ‘contract’ was to be
limited to a written contract, the court85 held that there was no reasonable basis for limiting
the meaning of the word, and therefore that the same should apply in the case of tacit or
implied contracts. The effect of this provision is that a licence that has been duly granted
cannot be unilaterally terminated by the licensor.
Section 9A of the Copyright Act contains special provisions applicable to the licensing
of performance rights in respect of sound recordings. These rights are known in practice as
‘needletime’. Similar complementary provisions are contained in section 5(2) of the
Performers Protection Act 11 of 1967.
Needletime entails the use of sound recordings to make public performances (including
broadcasts and communications to the public) of musical and other works fixed on, and
embodied in, sound recordings (also referred to in the Copyright Act as ‘records’). Section
9A86 effectively provides for persons to obtain needletime licences on a structured basis,
subject to payment of a reasonable royalty. Particulars of this manner of copyright licensing
can be obtained from chapter 1, ‘Copyright’, under the heading ‘Needletime licences’.

83 98 of 1978.
85 In Catgraphics CC v Africon Engineering International (Pty) Ltd 2005 BIP 343 (T).
86 S 9A of the Copyright Act 98 of 1978.

9.2.4 Expressly prohibited provisions in patent licence agreements
Intellectual property legislation includes provisions aimed at preventing the abuse

of intellectual property rights by the proprietor. 87 For example, section 90 of the
Patents Act 88 prohibits a patentee from attempting to secure rights contractually
which fall outside of the scope of the rights afforded by a patent. In this way, a licensee
cannot be pressured into agreeing to provisions in favour of the licensor that extend
beyond the rights afforded by the patent, as a condition to the grant of the
licence.
Section 90, as it applies to licensing, directs that:
i) a licensor cannot prohibit or restrict a licensee from purchasing or using any article
supplied or owned by a third party. Where for example a licence agreement stipulates
that the licensor will be the exclusive supplier of an unpatented article, this provision
will be null and void.
ii) a licensor cannot prohibit or restrict a licensee from using any article or process not
protected by the patent. A licensee cannot, for example, be contractually restrained from
using an article or method that could be a substitute for, for example, the patented article
or method that forms the subject of the licence.
iii) a licensor cannot require a licensee to acquire any article from the licensor other than
that which forms the subject of a patent owned/licensed by the licensor.
iv) a licensor cannot require or induce a licensee to impose a specified minimum resale
price in respect of any patented article.
v) a licensor cannot prohibit or restrict the making, using, exercising or disposing of the
invention in any country in which the invention is not patented. A provision in a licence
agreement that obliges a licensee to pay consideration to the licensor in respect of a
patented article/method in territories in which the licensor has not secured patent
rights is null and void.
9.2.5 Licences of right

Where a patentee is not willing or able to work a patent himself and does not have any
prospective licensees, he may endorse a patent with the words ‘licences of right’.89 If a patent
is endorsed in this manner, any person is entitled, as of right, to a licence under the patent.90
The renewal fee payable in respect of a patent so endorsed is one-half of the renewal fee that
would apply if the patent was not so endorsed.91
In the case of infringement, the licensee of a licence granted through endorsement
of the patent in this manner may call upon the patentee to institute proceedings and if
the patentee fails to do so within two months after having been called upon to do so,
the licensee may institute proceedings for the infringement in his own name as if he
were the patentee.92
87 See s 56 of the Patents Act 57 of 1978; and s 20 of the Designs Act 195 of 1993.
88 57 of 1978.
89 Provided that the patentee is not precluded by contract from granting licences (s 53(1) of the Patents Act 57 of 1978).
90 The terms of this licence will be agreed by the parties or, in default of agreement between them, be decided by the
Commissioner – s 53(2)(a) of the Patents Act 57 of 1978.

9.2.6 Compulsory licences
9.2.6.1 Dependent patent

The Patents Act93 provides for the grant of a compulsory licence to an applicant, where the
working of a patent without infringing a prior patent is dependent upon the obtaining of a
licence under that prior patent (i.e. a dependent patent situation).94
In these circumstances, an applicant for a compulsory licence must offer a cross-licence
on reasonable terms to the patentee of the prior patent, to use the invention claimed in the
dependent patent.95 Aside from ‘consideration’ in the form of a cross-licence, no other form
of consideration to the patentee is prescribed by the Patents Act or Regulations in respect of
the licence sought.
Where a compulsory licence is granted, the use authorised by the compulsory licence
may not be assigned by the licensee (patentee of the prior patent) to any other person, except
with the assignment of the prior patent.96
9.2.6.2 Abuse of patent and design rights

Since patent and design rights are monopoly rights it is possible that a proprietor could
abuse these rights by refusing to work the invention/design adequately in South Africa, to
the detriment of the public. Both the Patents Act and the Designs Act contain provisions97
aimed at preventing the abuse of the rights conferred by a patent/design.
The rights associated with the patent/design will be deemed to be abused by the
proprietor in the following circumstances:
i) if the protected invention/article is not being worked in South Africa on a commercial
scale or to an adequate extent, after the expiry of a certain period and without
any satisfactory reason for such non-working.98 Case law99 suggests that the word ‘worked’
is given a broad interpretation, meaning either manufacture in South Africa of the article
from its starting materials, or the importation of the completed article into South Africa.
ii) in the case of designs,100 if the availability of articles embodying the registered design in
South Africa on a commercial scale or to an adequate extent is being prevented or
hindered by the importation of such articles.101
iii) if the demand for the protected invention/article in South Africa is not being met to an
adequate extent and on reasonable terms.102 In the past, our courts103 have found that it
could not be concluded that the demand was not being met on reasonable terms merely
because the applicant would be able to sell the same type of article at a lower price.
iv) if the trade or industry or agriculture of South Africa or of any person in South Africa is
being prejudiced, or the establishment of a new trade or industry in South Africa is being

94 Provided the invention claimed in the dependent patent involves an ‘important technical advance of considerable
economic benefit’ in relation to the invention claimed in the prior patent.
95 S 55(b) of the Patents Act 57 of 1978.
96 S 55(c) of the Patents Act 57 of 1978.
97 S 56 of the Patents Act 57 of 1978; and s 21 of the Designs Act 195 of 1993.
98 S 56(2)(a) of the Patents Act 57 of 1978; and section 21(2)(a) of the Designs Act 195 of 1993.
99 Sanachem (Pty) Limited v British Technology Group plc 1992 BP 276 (CP); and Afitra (Pty) Limited and Another v Carlton
Paper of South Africa (Pty) Limited 1992 BP 331 (CP).
100 But excluding designs in respect of an integrated circuit topography, a mask work or a series of mask works.
101 S 21(2)(b), read with s 21(14) of the Designs Act 1995 of 1993.
102 S 56(2)(c) of the Patents Act 57 of 1978; and s 21(2)(c) of the Designs Act 195 of 1993.
103 Sanachem (Pty) Limited v British Technology Group plc1992 BP 276 (CP); Afitra (Pty) Limited and Another v Carlton
Paper of South Africa (Pty) Limited 1992 BP 331 (CP).

prejudiced, by reason of the refusal of the proprietor to grant a licence or licences upon
reasonable terms; and it is in the public interest that a licence should be granted.104
v) if the demand for the protected article in South Africa is being met by importation
and the price charged by the proprietor (or authorised agent) in South Africa is excessive
in relation to the price charged for the same article in countries where the protected
article is manufactured by or under licence from the proprietor (or his predecessor/
successor in title).105
An applicant for a compulsory licence must show that the proprietor’s conduct falls within
one or more of the categories listed above.106 Furthermore, the applicant must have
attempted to obtain a voluntary licence from the proprietor on reasonable terms prior to
applying to court for a compulsory licence.107 There is no statutory guidance as to what
‘reasonable terms’ would be, but when awarding costs against a party in an application
for a compulsory licence, regard will be had to whether the application for a compulsory
licence might have been avoided by the grant of a voluntary licence on reasonable terms.108
At that stage, the court may consider the reasonableness of the licence terms offered by
the parties.
As regards the royalty payable should a compulsory licence be granted, there is neither
guidance in statute nor any authority in case law as to how a reasonable royalty is to be
determined.109 It has been decided,110 however, that an applicant for a compulsory licence
has an onus to prove that the royalty he suggests is reasonable.
The calculation of an appropriate royalty should involve accounting for the patentee’s
expenditure on research and development, its expenditure on marketing and promoting the
invention, and the interest incurred on the capital spent on such activities.111
Case law112 further indicates that the question whether the terms of a licence are
reasonable should be judged with regard to the price that a typical customer would be
104 S 56(2)(d) of the Patents Act 57 of 1978; and s 21(2)(d) of the Designs Act 195 of 1993.
105 S 56(2)(e) of the Patents Act 57 of 1978; and s 21(2)(e) of the Designs Act 195 of 1993.
106 In other words, the list of circumstances in which patent/design rights are deemed to be abused is exhaustive.
107 S 56(2)(d) of the Patents Act 57 of 1978; and s 21(2)(d) of the Designs Act 195 of 1993.
109 In Atomic Energy Corporation of South Africa Limited v The Du Pont Merck Pharmaceutical Company plc 1997 BIP 90
(CP) the applicant alleged that it had successfully negotiated an option agreement including a voluntary licence for a
radioactive pharmaceutical (the compulsory licence sought was in respect of another radioactive pharmaceutical) at
a royalty of 6% of the invoiced sales costs of the compositions and that it would have negotiated with the respondent in
the range 3% to 10%, expecting that a royalty of about 6% would have been a reasonable one in the circumstances.
However, in this case, it was decided that the applicant had not shown that the needs of South Africa were not being
met by the respondent’s licensees to an adequate extent and that therefore the application could not succeed.
Accordingly, the reasonableness or otherwise of the licence terms proposed were not addressed by the Commissioner.
110 Delta G Scientific (Pty) Limited v Janssen Pharmaceutica N.V. 1996 BIP 455 (CP); and Atomic Energy Corporation of
South Africa Limited v The Du Pont Merck Pharmaceutical Company plc 1997 BIP 90 (CP).
111 Syntheta (Pty) Limited (formerly Delta G Scientific (Pty) Limited) v Janssen Pharmaceutica NV and Another 1999 (1) SA
85 (SCA).
112 In Afitra (Pty) Limited and Another v Carlton Paper of South Africa (Pty) Limited 1992 BP 331 (CP), the respondent was
willing at one stage to grant a limited licence on the basis of a 43% royalty on sales, to import diapers into South Africa.
The applicant alleged that this was unreasonable since its profit would be reduced to 10%. The court found Kamborian’s
Patent [1961] 78 RPC 403 to be useful in interpreting the meaning to be ascribed to ‘reasonable terms’. The English court
in this case stated:
The applicants contend that they are unable to meet this demand because of the price, and the price is too
high because of the unreasonable royalty. The question of whether the terms are reasonable or not falls, I
think, to be judged in the light of what the customer is prepared to pay. There is no evidence before me of
public dissatisfaction with the price of the machine at the date of application.
The South African court also referred to the English case of Brownie Wireless Co Limited’s Applications [1929] 46 RPC
457 in which it was decided that it was not unreasonable to charge a royalty which the trade would carry.

prepared to pay for the licensed article and not with regard to the profit to be made by the
licensee in selling the article once the royalty has been paid to the licensor.
The court is granted wide discretion to grant any licence that it may deem fit but must
have regard to the risks to be undertaken by the licensee, the research and development
undertaken by the proprietor and the terms and conditions typically stipulated in licence
agreements in respect of the subject matter of the invention.113 Specifically, the court may
impose a condition precluding the licensee from importing into South Africa any protected
articles.114 In any event, any limitations which are included in the compulsory licence must
be made with a view to avoiding the abuse found by the court to have been established.115
Statute further directs that a compulsory licence granted under a patent or under certain
designs116 will be non-exclusive and non-transferable except to a person to whom the
business or part thereof has been transferred.117 Furthermore, a compulsory licence granted
under a patent or design must include a provision that, subject to adequate protection of
the licensee’s interests, the licence will terminate on application by the proprietor, if the
circumstances which led to its grant cease to exist and are unlikely to recur.118
PAUSE FOR Do compulsory licence provisions work?

REFLECTION Despite the HIV/AIDS-related public health crisis and argument that medicines are
unaffordable due to the prevailing anti-competitive patent regime, no compulsory licence
has ever been granted under a South African patent. This may be as a result of the narrow
definition of ‘abuse’ in section 56 of the Patents Act119 and the difficulty faced by potential
licensees in proving abuse by the patentee.
In considering any change to patent legislation, a fine line must be drawn between
enabling the public needs of the country to be satisfied and ensuring that the law provides
adequate and effective protection of intellectual property rights so as not to deter foreign
investment in South Africa.
The People’s Republic of China recently revised its patent laws so that compulsory licences
may be granted ‘for the benefit of public health’ and for the purpose of export. The amended
law now provides detailed guidelines and procedures for applying for compulsory licences.
9.2.6.3 Compulsory licensing of copyright

Section 29 of the Copyright Act120 established a Copyright Tribunal, which is able to grant a
licence (the terms and conditions of which are at its discretion) under copyright in any type
of copyrighted work, to a licensee who has been unreasonably refused a licence by the
copyright proprietor.
Furthermore, section 14 of the Copyright Act121 provides for a licence to be granted, in
certain circumstances, by the proprietor of copyright subsisting in a musical work to a person
who makes a record of the work (or an adaptation thereof ). Such a licence can be obtained
114 S 56(4)(a) of the Patents Act 57 of 1978; and s 21(4)(a) of the Designs Act 195 of 1993.
116 Not applicable to designs in respect of an integrated circuit topography, a mask work or a series of mask works, in terms
of section 21(1)(a) of the Designs Act 195 of 1993.
117 Section 56(5) of the Patents Act 57 of 1978; and section 21(5) of the Designs Act 195 of 1993.
118 Section 56(4)(c) of the Patents Act 57 of 1978; and section 21(14)(c) of the Designs Act 195 of 1993.
119 57 of 1978.
120 98 of 1978.
121 98 of 1978.

by a prospective licensee simply by giving prior notice to the copyright proprietor of his
intention to make the record and subsequently paying the prescribed royalties to the
copyright proprietor, according to the procedures and requirements set out in regulation 10
to the Copyright Act.122 The royalty payable is prescribed123 as 5% of the retail selling price
of the record.124
More information on this type of compulsory licence is provided in chapter 1, ‘Copyright’,
under the heading ‘Records of Musical Works’.
9.2.6.4 Licensing of traditional properties

As noted in other chapters, certain intellectual property legislation125 has been amended in
the past decade126 to recognise indigenous knowledge as being eligible for intellectual
property protection and to provide a mechanism for indigenous communities to benefit
from the performance, reproduction or use by others, of indigenous genetic material or
resources or use pertaining thereto, indigenous designs, indigenous terms or expressions,
traditional works or any derivative of the aforesaid (in the remainder of this section, we refer
to all these collectively as ‘indigenous knowledge’ and to each of the designs, terms and
expressions, words, derivative material and associated rights as ‘traditional properties’).
To this end, the amended legislation establishes a National Council for Indigenous
Knowledge, National Trust for Indigenous Knowledge, a National Trust Fund for Indigenous
Knowledge and a National Database for Indigenous Knowledge as part of existing intellectual
property registers.
Generally, the royalty and/or benefit to be paid to the rights holder in exchange for a
licence to perform one or more protected acts in relation to a traditional property is
determined by agreement between the parties or by one or more collecting societies, failing
which it is determined by an institution accredited by the Companies and Intellectual
Property Commission (CIPC),127 by the Copyright Tribunal128 or through arbitration,
depending on the nature of the traditional property.129
Where a licence arrangement to acquire rights pertaining to the use of a traditional
property is concluded, a written agreement reflecting the arrangement must be submitted
to the National Council for Indigenous Knowledge, which will review the agreement for
compliance with intellectual property laws and the ‘community protocol’.130 Where any
clause in this agreement is prejudicial to the indigenous community or its members, the
National Council for Indigenous Knowledge may require that it be renegotiated and will
advise the indigenous community in this regard.131
122 98 of 1978.
123 By regulation 14 to the Copyright Act 98 of 1978.
124 Provided that, if the amount of the royalty calculated at 5% of the retail selling price includes a fraction of a cent that
fraction will be rounded up or down to the nearest cent.
125 The Patents Act 57 of 1978, the Copyright Act 98 of 1978, the Designs Act, 195 of 1993 and the Trade Marks Act 194 of
1993.
126 By the Patents Amendment Act 20 of 2005 and the Intellectual Property Laws Amendment Act 28 of 2013.
127 Established in terms of s 185 of the Companies Act 71 of 2008.
128 If the traditional property is a traditional work.
129 Ss 28H(3) of the Copyright Act 98 of 1978, 43F(4) of the Trade Marks Act 194 of 1993 and 53F(4) of the Designs Act 195
of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.
130 Ss 28H(4)(a) of the Copyright Act 98 of 1978, 43F(5)(a) of the Trade Marks Act 194 of 1993, and 53F(5)(a) of the Designs
Act 195 of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.
131 Ss 28H(4)(b) of the Copyright Act 98 of 1978, 43F(5)(b) of the Trade Marks Act 194 of 1993, and 53F(5)(b) of the Designs
Act 195 of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.

Income payable by users in consideration of a licence for a traditional property is

received into the National Trust Fund for Indigenous Knowledge, which will pay the income
so received into sub-funds to be applied for the benefit of the relevant indigenous
communities.132
No right in a derivative traditional property can be registered unless a benefit-sharing
agreement between the applicant and the relevant authority or indigenous community has
been concluded.133
The owner of a certification or a collective trade mark in a derivative indigenous term
or expression or geographical indication (derivative traditional mark) must pay a licence
fee or benefit as agreed in the specified manner to the owner or owners of certification or
collective trade marks in the indigenous term or expression or geographical indication
from which the derivative traditional mark was derived.134
In introducing protection for traditional properties into the Copyright Act,135 Designs Act136
and Trade Marks Act,137 the Intellectual Property Laws Amendment Act138 creates savings
provisions in those Acts to safeguard the vested rights of persons who have performed acts
which were lawful at the time when they were done, but have subsequently become subject
to the protection and proprietary rights of others on account of the new forms of intellectual
property that have been created by the latter Act. The continued commission of acts which are
the subject of vested rights dating from before the commencement of the Intellectual Property
Laws Amendment Act is rendered lawful in each of the host Acts subject to certain conditions.
Disclosure of the traditional property in question must be made to the CIPC, and a benefit-
sharing agreement must be entered into between the user and the relevant authority or
indigenous community. If an indigenous community has established a community protocol,
account must be taken of it. These steps must be taken within 12 months of the commencement
of the Intellectual Property Laws Amendment Act. If any commercial benefit is obtained by
the user from the continued exercise of the vested rights, the beneficiary must pay a royalty or
a benefit, or both, to the author (although this is the term used in the relevant provision, it is
submitted that it is incorrect and should be interpreted as a reference to the traditional property
owner) in the manner in which royalties are to be paid, as described above. Somewhat
anachronistically, the disclosure and benefit-sharing requirements are made applicable to any
person who intends to acquire a licence in respect of a traditional property; this is done in
sections dealing with exceptions to the protection of traditional properties.139
PAUSE FOR The challenge of licencing traditional properties

REFLECTION The licensing provisions outlined above which have been inserted into the Copyright
Act, the Trade Marks Act and the Designs Act by the Intellectual Property Laws
Amendment Act create a licensing regime for traditional properties which is challenging
to use. Many formalities and conditions are laid down for the acquisition and exercise
of such licences, which may act as a disincentive to businesses wanting to use
132 Ss 28I(6) of the Copyright Act 98 of 1978, 43G(2) of the Trade Marks Act 194 of 1993 and 53G(2) of the Designs Act 195
of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.
133 Ss 28B(4)(c) of the Copyright Act 98 of 1978 and 53B(3)(c) of the Designs Act 195 of 1993, as amended by the Intellectual
Property Laws Amendment Act 28 of 2013.
134 S 43F(6) of the Trade Marks Act 194 of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.
135 98 of 1978.
136 195 of 1993.
137 194 of 1993.
138 28 of 2013.
139 S 28G(2)–(5) of the Copyright Act 98 of 1978, s 43F(1)–(4) of the Trade Marks Act 194 of 1993, and s 53F(1)–(3) of the
Designs Act 195 of 1993, as amended by the Intellectual Property Laws Amendment Act 28 of 2013.

traditional properties commercially. This may defeat the objective of the amended legislation,
namely to enable revenue to be generated for the benefit of traditional communities from
the commercial use of their traditional knowledge.
9.2.7 The doctrine of exhaustion of rights as applied to patents

and designs
The proprietor of a patent/registered design is entitled to prevent others from performing
protected acts in relation to the invention/design. These rights are not, however, unlimited
in nature. In fact, according to the doctrine of exhaustion of rights, these rights will become
exhausted on the first sale of an article protected by a patent/registered design.140
Section 45(2) of the Patents Act141 expressly provides that ‘the disposal of a patented
article by or on behalf of a patentee or his licensee shall, subject to other patent rights, give
the purchaser the right to use, offer to dispose of and dispose of that article’.142 So, in
considering the circumstances in which a licence may be required, we must have regard to
the circumstances in which a licence will not be required – in other words, circumstances
in which the intellectual property proprietor’s rights have been exhausted.
The doctrine is usually applied to prohibit a proprietor of an intellectual property right from
imposing restrictions regarding the onward sale of an article that is the subject of that right,
where the buyer has purchased that article lawfully from the proprietor or his authorised agent.
The basis of the doctrine is that the sale of a protected article does not grant the buyer any
rights in the intellectual property related to the article but rather extinguishes the proprietor’s
entitlement to control commercial transactions related to the article, after it is first sold.
Where a country recognises a doctrine of national exhaustion of rights, an intellectual
property proprietor’s right to control the trade in protected articles is extinguished by the
first sale of the article within that country. Where a country recognises regional or
international exhaustion of rights, an intellectual property proprietor’s right to control the
trade in a protected article is extinguished when the article is first sold anywhere in the
region or in the world.
There has been one decision of South African courts relating to the exhaustion of a
patentee’s rights, namely that in Stauffer Chemical Co. v Agricura Limited,143 which provides
an insight into the nature of the doctrine as it is applied in South Africa. In this case, Stauffer
had distribution agreements with all United States distributors which contained the
restriction that ‘No sales are authorised by Stauffer outside the United States’ and also that
‘Distributor undertakes and warrants that Distributor shall not knowingly sell Stauffer
products to customers for transport to and use in foreign countries where such action may
constitute illegal conduct in such foreign country.’
Agricura obtained the patented product from Stauffer’s distributors in the United States
and sold it in South Africa at a substantially lower price than Stauffer’s local agents were
charging. Stauffer instituted proceedings against Agricura for patent infringement. Stauffer’s
140 A German luxury vehicle manufacturer gained publicity in 2006, when it advertised that it had ‘filed 9 621 patents’
during the development of its new model A6 sedan compared with NASA’s 6 509 for the space shuttle. If you bought
this luxury sedan you would not need to be licensed under these patents though – this is because of the doctrine of
exhaustion of rights or the doctrine of ‘first sale’.
141 57 of 1978.
142 A similar statutory provision can be found in s 20(2) of the Designs Act 195 of 1993.
143 1979 BP 168 (CP).

contention was that the fact that the product sold by Agricura was its own product did not
detract from the fact that the sale of the material by Agricura was an infringement of its South
African patent because Agricura could not demonstrate an express or implied licence to
vend the product in South Africa. Stauffer’s position was that there is no such thing in South
African law as the international exhaustion of patent rights. It must therefore be decided in
each case of sale of goods by a patentee, whether or not the sale carries with it an implication
of the right to deal with the goods in South Africa as unpatented property. Stauffer’s case
hinged on the fact that it was open to a patentee to curtail the rights obtained in goods sold
by him and more specifically that South African rights in an article cannot be exhausted by
a sale of that article unless the foreign vendor from whom the article was purchased was
possessed of those rights. Since the United States distributors were not permitted to sell the
product outside the United States, Agricura could not have derived an implied licence via
Stauffer’s United States distributors to sell the product in South Africa.
Agricura had several lines of defence, the principal one being the existence of the
statutory provision for the exhaustion of patent rights,144 the effect of which, it argued, is to
override any contractual restriction which the patentee purports to impose upon a purchaser
of a patented article.
The court found that there was a restraint against sale for export in the distribution
agreement between Stauffer and its United States distributors. This being the case, Agricura
could not have derived an implied licence under the South African patent and could not
avail itself of the exhaustion of rights provision.
Indications from the Stauffer case are that the position in South Africa is probably that:
i) where the proprietor himself sells or disposes of the protected article, that article is freed
from all restraints which the proprietor’s monopoly had imposed upon it;
ii) where the protected article is disposed of by the proprietor’s assignee or his agent, acting
within the scope of his authority, it is similarly freed from such restraints; and
iii) where the sale of the protected article is by a licensee of the proprietor, the matter must
depend on the extent of the authority conferred on the licensee by the licensor under
the licence.
PAUSE FOR Exhaustion of risks versus contractual restrictions

REFLECTION Can the doctrine of exhaustion of rights prevent the rights holder from placing contractual
restrictions on the use of a patented article after it has been sold?
In the Stauffer case, Agricura failed in its defence that the statutory provision for the
exhaustion of patent rights overrides any contractual restriction which the patentee purports
to impose upon a purchaser of a patented article, so there is some evidence in South African
case law to suggest that an implied licence to vend the protected article that a purchaser
obtains when purchasing it, is relevant as to whether or not a patentee’s rights in that article
are exhausted.
There are no other South African cases on this specific topic but there is support in US
case law for the approach adopted in Stauffer, where it has been held that
patent owners can grant restricted licences to manufacturers and enforce the restrictions
against the licensee’s purchasers through infringement suits on the basis that the licensee’s
purchaser could not obtain a right that the licensee was not authorised to grant.

There is also evidence in the Stauffer case as well as in United States case law145 to
suggest that a purchaser obtains an implied licence to deal in the protected article and that
it is possible to place conditions on the sale of a protected article, which if not met, will
preserve the patentee’s rights.
9.2.8 The doctrine of exhaustion of rights as applied to trade marks

Does the unauthorised resale of genuine goods (bearing a trade mark) and originating from
the trade mark proprietor constitute an infringement of that trade mark? Our courts146 have
applied the doctrine of exhaustion of rights to trade marks in deciding that the unauthorised
resale of genuine goods (i.e. goods that are not counterfeit goods illegally produced and
sold by a person other than the trade mark proprietor) cannot be an infringement of the
trade mark.147
This conclusion is founded on the fact that since the goods in question are genuine
goods, no confusion or deception can arise as to their origin. Where genuine goods are resold
or otherwise dealt with in the course of trade, the trade mark does no more than indicate
that the goods emanated from the proprietor of the trade mark.
9.3 Hypothecation and attachment

Intellectual property can be offered as collateral to secure a debt. As with a tangible asset,
the borrower and the lender agree contractually to the terms upon which the item of
intellectual property will be hypothecated in a deed of security.
9.3.1 Patents and designs

The fact that a patent/design or an application therefor has been hypothecated in favour of
a creditor can be recorded in the relevant register.148 As with the recordal of a licence or
assignment, a deed of record can be used to record the hypothec so that the details of the
pledge document do not need to be filed at the patent office, where the document would be
open to public inspection. A proprietor who has pledged a patent/design or an application
therefor as security for a debt is not entitled to alienate or encumber that item of intellectual
property149 through assignment or the grant of any licences. In practice, the effect of recordal
of a hypothec against an item of intellectual property is that the Registrar will not record an
assignment or licence against that item in the register, for as long as the record of hypothec
remains on the register.
As with a tangible asset, a patent/design or an application therefor can also be attached
where, for example, a judgment for recovery of a debt has been issued against the
proprietor, by recording the warrant of execution or attachment order concerned in the
register.150 The record of attachment will expire after three years, unless it is renewed before
145 Mallinckrodt, Inc. v Medipart, Inc. 976 F. 2d 700 (Fed Cir. 1992).
146 In Sodatream Limited v Berman Bros (Pty) Limited 1985 (4) SA 257 (C); Frank & Hirsch (Pty) Ltd v Roopanand Bros (Pty)
Ltd 1987 (3) SA 165 (D); and Protective Mining and Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape) (Pty) Ltd
1987 (2) SA 961 (A).
147 Under s 44(1)(a) of the Trade Marks Act 194 of 1993.

expiry.151 When the attachment is discharged, the person who applied for the warrant/
attachment order to be recorded in the register will apply for that entry to be deleted.152
Any other interested person may apply to the Registrar to have a record of attachment
deleted from the register.153
9.3.2 Trade marks

The Trade Marks Act154 provides expressly only for the hypothecation of a trade mark
registration and not for hypothecation of a trade mark application.155 The hypothecation can
be recorded in the register156 and the effect of recordal is that the deed of security will have
the effect of a pledge of the trade mark to the person in whose favour the deed of security
has been made.157
Whereas a hypothecated patent/design or an application therefor cannot be alienated
or encumbered by the proprietor after the hypothec has been recorded,158 a hypothecated
trade mark registration can be assigned159 provided that:
i) the written consent of the person in whose favour the deed of security has been recorded
will be required for the assignment;160 and
ii) the assignment will be subject to the deed of security hypothecating it.161
Any person may apply to the Registrar to remove the record of hypothec from the register
once the debtor has discharged the obligation secured by a deed of security.162
A registered trade mark may be attached to found or confirm jurisdiction for the purposes
of any proceedings before the North Gauteng Division of the High Court of South Africa or the
magistrate’s court for the district of Pretoria and may be attached and sold in execution
pursuant to an order of any such court.163 While the Trade Marks Act specifically refers to these
two courts, under the common law and the High Court Rules a registered trade mark, as an
item of property, can be attached for any purpose for which, and in the same manner as, other
forms of property can be the subject of an attachment. Accordingly other courts, besides the
two mentioned in the Trade Marks Act, can also grant orders attaching registered trade marks.
PAUSE FOR Attaching intellectual property rights

REFLECTION In the Walt Disney case164 the Respondent had successfully brought an ex parte
application to attach various registered trade marks, as well as the copyright in a
cinematograph film, owned by Disney Enterprises Inc., in order to found the court’s
jurisdiction against that company. Disney Enterprises Inc. sought to set aside the
attachment on various grounds, but it was common cause that both the registered
154 194 of 1993.
164 Disney Enterprises Inc. v Griesel NO 2006 BIP 29 (T), which was preceded by an ex parte application brought by Griesel
NO to attach copyright to found jurisdiction.

trade marks and the copyright were in principle liable to attachment. The court upheld the
validity of the attachment. The Copyright Act165 has no provision explicitly authorising the
attachment of copyright but the copyright in question was nevertheless attached based on
common law principles. There is no reason in principle why copyright should be capable of
attachment under the common law while a registered trade mark is not. Both a registered
trade mark and copyright are forms of property and in general common law principles
pertaining to tangible property apply equally to these forms of property without any
distinction being made between them.
9.3.3 Copyright
While there is no difference in principle between the nature of a trade mark and copyright
in a copyright work, as both are legally recognised forms of intellectual property, a registered
trade mark has a physical manifestation in the trade marks register whereas copyright, being
an unregistered form of intellectual property,166 has no such physical manifestation. As a
result, the hypothecation and attachment of copyright can pose difficulties in practice
although they are possible in principle.
Despite these difficulties, copyright is sometimes the subject of a form of hypothecation.
In some cases, copyright is assigned by the proprietor to a person in whose favour the security
is provided, for a finite period of time – this assignment period expiring on discharge of the
proprietor’s obligations. On expiry of the assignment period, ownership of the copyright will
revert back to the party that originally assigned it as security. In this instance the effect of a
hypothecation is achieved by entering into a conditional assignment of copyright.
The absence of a copyright register for most copyright works makes the attachment of
copyright problematic. Where copyright in cinematograph films is registered, it is capable
of attachment,167 in particular to found jurisdiction to act against a foreign defendant.
9.4 Exchange control requirements

The South African Reserve Bank controls the movement of money and assets into and out
of the country. The Currency and Exchanges Act168 and the Regulations under this Act place
restrictions on exchange control in respect of residents169 regarding the export of capital from
South Africa, and some of these restrictions apply to intellectual property.
9.4.1 Regulation 10(1)(c)

Regulation 10(1)(c) to the Currency and Exchanges Act170 provides that no person may,
without the approval of Treasury, ‘enter into any transaction whereby capital or any right to
capital is directly or indirectly exported from [South Africa]’.
165 98 of 1978.
166 Save for copyright registered in the register in terms of s 15 of the Registration of Copyright in Cinematograph Films Act
62 of 1977.
167 See Disney Enterprises Inc. v Griesel NO 2006 BIP 29 (T), which was preceded by an ex parte application brought by
Griesel NO to attach copyright to found jurisdiction.
168 9 of 1933.
169 Exchange control residents include individuals who are resident in South Africa, companies and close corporations
established in terms of South African law and certain South African citizens who are living abroad but who have not
formally emigrated.
170 9 of 1933.

The interpretation of the terms ‘capital’, ‘right to capital’ and ‘export’ in relation to
intellectual property has been the subject of debate for many years.
In 2002, the court provided some guidance on the interpretation of regulation 10(1)(c)
in the matter of Couve and Another v Reddot International (Pty) Ltd and Others.171 In this
case, the defendants claimed that an agreement assigning to the first defendant (a South
African company with a foreign shareholder) the right in and to certain patent applications
in exchange for the awarding of equity in the first defendant was void ab inito because the
assignment was made without prior exchange control approval having been obtained. The
court agreed with the defendant, and ruled that the transaction contemplated by the
agreement fell within the scope of regulation 10(1)(c) and furthermore that non-compliance
with this regulation rendered the agreement null and void.
The decision in Couve provided eagerly awaited guidance on the application of regulation
10(1)(c) to transactions involving intellectual property, by holding the following:
i) The transfer of ‘[t]he rights in and to the patent applications and concomitant right to
receive royalties are “capital’’ ’ for the purposes of regulation 10(1)(c)’;172 and
ii) because a foreign entity held shares in the assignee of the patent applications and
because this foreign shareholder would derive dividends from the royalties which the
assignee would enjoy, the transfer should be considered as one where capital is exported
from South Africa, despite the fact that the assignee was a South African entity.
The application of regulation 10(1)(c) to intellectual property was then considered by

the Supreme Court of Appeal in the matter of Oilwell (Pty) Ltd v Protec International Ltd
and Others.173 The applicant in this matter sought to have an assignment agreement, in
terms of which it assigned a trade mark to the first defendant (a company existing outside
South Africa) declared to be null and void on the basis that it was in contravention of
regulation 10(1)(c). The applicant relied almost exclusively on the Couve decision. The
court a quo had dismissed the application,174 finding that the decision in Couve was
wrong and ruled instead that intellectual property rights are not capital for the purposes
of regulation 10(1)(c).
The matter was subsequently appealed and the appeal was dismissed. In the
judgment 175 the SCA considered how the term ‘capital’ should be interpreted,
and concluded that it should not be interpreted as it was in Couve but rather within
the context of the Regulations, as meaning ‘cash for investment[,] money that can be
used to produce further wealth’. 176 Furthermore, the interpretation that patent
applications include the concomitant right to receive royalties as capital was held to be
misconceived.177 It was decided instead that even a granted patent does not give rise to a
right to receive royalties; if anything gives rise to this, it is a subsequent royalty agreement
between parties.
Notably, the court held178 that the decision, although it was made in relation to trade
marks, would apply equally to patents, designs and copyright.
171 2004 (6) SA 425 (W).

172 At [26].
173 2011 (4) SA 394 (SCA).
174 2010 JDR 0107 (GNP).
175 of Harms, DJP (Ponnan J, Lewis J, Malan J and Theron AJA concurring).
176 At [9].
177 At [13].
178 At [7].

9.4.2 Regulation 10(4)
In 2012, regulation 10 was amended179 by the insertion of subregulation (4), which stipulates
that for the purpose of subregulation 10(1)(c), ‘capital’ will include ‘any intellectual property
right, whether registered or unregistered’ and ‘exported from [South Africa] will include ‘the
cession of, the creation of a hypothec or other form of security over, or the assignment or
transfer of any intellectual property right, to or in favour of a person who is not resident in
[South Africa]’.
Clearly, the amendment is aimed at bringing the assignment of intellectual
property within the scope of regulation 10(1)(c), notwithstanding the judgment in the
Oilwell case.
The amendment to regulation 10 does not, however, take into account the legal issues
that may prevent capital from including intellectual property, many of which were raised by
the court in Oilwell. For example: how can a territorial right (which all registered intellectual
property is by its very nature) be exported?180 Furthermore, what happens in a situation
where a transfer of ownership of intellectual property occurs not by assignment but by
operation of law, or by way of an employment contract, or through marriage in community
of property?
COUNTER Validity of the amendment to regulation 10

POINT Concerns have been raised as to whether the amendment to regulation 10 is valid.
As noted in Oilwell, the empowering Act, the Currency and Exchanges Act,181 has
the objective of ‘amend[ing] the law relating to legal tender, currency, exchanges
and banking’. The term ‘exchanges’ refers to what is better known as ‘exchange
rates’.182
Section 9(1) of this Act, which empowers the President to promulgate Regulations in
terms of the Act, also reflects this intention. It reads as follows:
‘The [President] may make regulations in regard to any matter directly or
indirectly relating to or affecting or having any bearing upon currency, banking
or exchanges.’
It is clear that section 9(1)(c) limits the role of the President to making Regulations ‘in
regard to any matter directly or indirectly relating to or affecting or having any bearing upon
currency, banking or exchanges’. In the light of the views expressed by the SCA in Oilwell, it
is questionable whether the promulgation of the amendment to regulation 10 can be said
to accord, either directly or indirectly, with this limited right, with the result that the President
could be deemed to have acted ultra vires when promulgating the amendment.
179 Effective on 8 June 2012.

180 The court stated at [13] ‘Reverting to trade mark rights: like all other intellectual property rights they are territorial and
akin to immovables. They can therefore not be “exported”. ’ On the other hand, section 22(1) of the Copyright Act states
that copyright is transmissible as movable property. It is difficult to see on what basis a trade mark is akin to immovable
property while copyright is movable property. It is submitted that the key lies in the fact that a South African trade mark
(or copyright), or rights in it, whether movable or immovable property, existing as it does in terms of a South African
statute, and being territorial in nature, never leaves the country, and is not capable of doing so. It is property which is
necessarily and irretrievably bound to, and rooted in, South Africa, as is the case with immovable property, hence
perhaps the comparison made by the court.
181 9 of 1933.
182 At [6].

9.4.3 Licences granted to foreigners under South African-owned

intellectual property
Regulation 10(4) does not deal with all the interpretation issues previously raised by the
judiciary, in particular, the question whether a licence granted to an off-shore entity under
intellectual property owned by a South African exchange control resident constitutes the
‘export’ of a ‘right to intellectual property’.
In Oilwell, the SCA does not deal expressly with this aspect but does indicate183 that the
decision in Couve was founded on the misconceived idea that a patent conveys a right to a
claim to royalties, and that although the Income Tax Act 58 of 1962 regards a patent as a
capital asset, royalties and licence fees are in fact regarded as ‘gross income’.
It should be noted that regulation 10(4) includes examples (albeit non-limiting examples)
of instances where intellectual property or the right to intellectual property would be
exported from South Africa (cession, assignment or transfer of intellectual property, or the
use of intellectual property as security in favour of a person who is not resident in South
Africa, through pledge or hypothec). The amendment does not include the grant of a licence
to a foreigner as an example of the export of the ‘right to intellectual property’, which would
surely have been an obvious inclusion if the intention of the legislature were to have licensors
obtain exchange control approval for the grant of such a licence.
In light of this, it could be argued that the grant of a licence to a foreigner which gives
rise to the payment of royalties would not constitute the ‘export of a right to capital’.
That being said, the written guidelines circulated by the South African Reserve Bank on
the interpretation of the Regulations stipulates that ‘[t]he transfer of South African owned
intellectual property by way of sale, assignment or cession and/or the waiver of rights in
favour of non-residents in whatever form, directly or indirectly, is not allowed without the
prior approval of the Financial Surveillance Department’. The words ‘waiver of rights in
favour of non-residents’ could be interpreted to include a waiver of the right to enforce the
monopoly afforded by an item of intellectual property, by way of licence, for example.
It must also be noted that although the grant of a licence under intellectual property
owned by a South African exchange control resident to a foreign licensee may not require
exchange control approval under regulation 10(1)(c),184 the payment of licence royalties by
a South African exchange control resident to a foreigner in respect of a licence under
intellectual property owned by a foreigner will require approval under regulation 3(1)(c),185
which directs that the permission of Treasury186 is required to ‘make any payment to, or in
favour, or on behalf of a person resident outside the Republic, or place any sum to the credit
of such person’.
9.5 Intellectual property from publicly financed research and

development
In 2010 the Intellectual Property Rights from Publicly Financed Research and Development
Act187 (the IPR-PFRD Act) came into force. As the name suggests, the IPR-PFRD Act aims to
regulate the identification, protection, utilisation and commercialisation of intellectual
183 At [14].
184 To the Currency and Exchanges Act 9 of 1933.
185 To the Currency and Exchanges Act 9 of 1933.
186 In practice, this is the South Africa Reserve Bank.
187 51 of 2008.

property that results from publicly financed research and development to ensure benefit to
the people of South Africa.188 The IPR-PFRD Act applies only to intellectual property
(including know-how but excluding copyright in certain copyright works) created with
public funds.189
The IPR-PFRD Act has implications for public research institutions, such as universities
and scientific research councils, as well as for private entities that engage with these
institutions to undertake research and development on their behalf. Prior to 2 August 2010190
private entities contracting with public institutions to conduct research and development
were free to negotiate and agree on the commercial terms of their engagement. The
IPR-PFRD Act makes certain consequences of the relationship with a private entity
unavoidable. For example, public institutions which create intellectual property with public
resources will own that intellectual property, regardless of what might have been agreed
with a private entity. Furthermore, the proprietor of publicly financed intellectual property
may not assign that intellectual property to a private entity, without the approval of the
National Intellectual Property Management Office (NIPMO).191
In terms of section 15(2) of the IPR-PFRD Act, a private entity may become a co-owner
of publicly financed intellectual property if:
i) there has been a contribution of resources, which may include relevant background
intellectual property, by the private entity;
ii) there is joint intellectual property creatorship;
iii) appropriate arrangements are made for benefit-sharing for intellectual property creators
at the institution; and
iv) the institution and private entity conclude an agreement for commercialisation of the
intellectual property.
If research and/or development undertaken by a public research institution is funded by a

private entity on a full cost basis, the intellectual property created will fall outside the ambit
of the IPR-PFRD Act.192 Full costs are calculated in accordance with international financial
reporting standards, having regard to the institution’s financial policies.193
The IPR-PFRD Act also regulates how publicly financed intellectual property is to be
commercialised.194 For example, in any South African IP transaction, the proprietor must
prefer non-exclusive licensing over exclusive licensing195 and where an exclusive licence is
granted, the licensee must undertake, where feasible, to manufacture, process and
commercialise the intellectual property in South Africa.196
188 S 2 of the IPR-PFRD Act 51 of 2008.

189 S 1 of the IPR-PFRD Act 51 of 2008 – definition of ‘intellectual property’.
190 The date on which the IPR-PFRD Act 51 of 2008 came into force.
191 S 4 of the IPR-PFRD Act 51 of 2008 read with reg 2 thereto.
192 S 15(4) of the IPR-PFRD Act 51 of 2008.
193 Reg 16 to the IPR-PFRD Act 51 of 2008.
194 Ss 11 and 12 of the IPR-PFRD Act 51 of 2008 read with regs 11 and 12.
195 S 11(1)(a) of the IPR-PFRD Act 51 of 2008.
196 S 11(1)(d) of the IPR-PFRD Act 51 of 2008.

Chapter 10 Intellectual property law
in the digital environment
(EIP law)
COBUS JOOSTE AND SADULLA KARJIKER

10.2 Copyright in computer programs 393
10.2.1 Protection as literary work 393
10.2.2 Protection as sui generis work 395
10.2.2.1 Definition 396
10.2.2.2 Requirements for subsistence 397
10.2.2.2.1 Originality 397
10.2.2.2.2 Material form 399
10.2.2.3 Preparatory materials 400
10.2.2.4 Authorship 402
10.2.2.5 Scope of protection 403
10.2.2.5.1 Exclusive rights 403
10.2.2.5.1.1 Reproduction 403
10.2.2.5.1.2 Adaptation 407
10.2.2.5.1.3 Communication to the public 408
10.2.2.5.2 Exemptions from infringement 409
10.2.2.5.2.1 Fair dealing 409
10.2.2.5.2.2 Back-up copies 412
10.2.2.5.2.3 Reverse engineering 413
10.2.2.5.2.4 Decompilation 414
10.3 Selected themes relating to intellectual property in regard to the utilisation
of computers 416
10.3.1 The Internet 416
10.3.2 Copyright in the digital environment 417
10.3.2.1 Protection of websites 418
10.3.2.1.1 Linking 418
10.3.2.1.2 Framing 424
10.3.2.1.3 Spidering 424
10.3.2.1.4 Database protection 426
10.3.2.1.5 Other forms of possible protection for websites 427
10.3.2.1.5.1 Passing off or unlawful competition 427
10.3.2.1.5.2 Contract 427
10.3.2.2 Caching 428
10.3.2.3 File sharing 430
10.3.2.3.1 Peer-to-peer file sharing 431
10.3.2.3.2 Joint wrongdoing or contributory infringement 432
10.3.2.3.3 BitTorrents and more 434
10.3.2.3.4 A new approach 435
10.3.2.3.4.1 Pursuing individual infringers 435

10.3.2.3.4.2 Blocking access to websites 436

10.3.3 Copyright in digital works 437
10.3.3.2 Distribution 437
10.3.3.3 Disposition 438
10.3.4 Digital rights management 441
10.3.4.2 Types of DRM 441
10.3.4.3 DRM legislation 442
10.3.4.4 DRM limitation 444
10.4 Trade marks in the digital environment 445
10.4.1 Trade mark law 446
10.4.2 Domain names 446
10.4.2.1 Domain name system 447
10.4 2 2 Domain name system v trade marks 447
10.4.2.3 Split mark disputes 448
10.4.2.4 Cybersquatting 448
10.4.2.4.1 Trade mark infringement 449
10.4.2.4.2 Passing off 451
10.4.2.4.3 Unlawful competition 452
10.4.2.5 ADR 452
10.4.2.6 Other forms of abuse related to domain name registrations 454
10.4.3 Metatags 456
10.4.4 Keyword advertising 458
10.4.5 Secondary markets 462
10.4.6 Social networks 464
10.5 Conclusion 465
10.1 Introduction
In, probably, the first book on Computer Law (or Information Technology Law) Tapper1
addressed the question of why this field of study is required. Tapper contended, 35 years ago,
that the use of computers has not only resulted in a quantitative legal challenge, as a
consequence of the scale of interactions they enable, but has also resulted in qualitative
differences. He observed that until the emergence of computers, legal rules were generally based
on the fact that humans interacted with each other physically, and physical items were often
part of such interactions, which makes their application problematic in a digital environment.
Murray, in similar vein, states that even in relation to intellectual property law, such as copyright,
legal rules had always been based on the fact that physical items would be the medium by which
intangible property would be conveyed and consequently also regulated.2
It should therefore come as no surprise that, as will be demonstrated in this chapter, the
application of intellectual property law in the digital environment has not been
straightforward. Besides the rapid changes in technology, which means that legal regulation
1 C Tapper Computer Law (1978) xxiii.

2 A Murray Information Technology Law: The Law and Society (2010) 55.

is hard put to keep pace with developments, what makes the intersection between
intellectual property law and the digital environment such an interesting topic is that it often
requires us to engage in a fundamental analysis of what it is that we seek to regulate or
protect. In other words, what makes it challenging is that legal principles and rules which
were developed in the pre-digital era are sought to be applied in the digital environment,
where they are not so easily transposed because of the different considerations.
It is recommended that, prior to perusing this chapter, the reader should familiarise
himself/herself with the chapters of this book dealing with copyright, trade marks and
unlawful competition (chapters 1, 2 and 3) because to a large extent this chapter amounts
to a specific application of these branches of the law in the digital environment. Familiarity
with the basic elements of these branches of the law is therefore a prerequisite for gaining a
proper understanding of the contents of this chapter.
Given the fact that this book is not intended to be a comprehensive, specialised publication
concerning intellectual property issues in the digital environment, the treatment of the subject
in this chapter is necessarily selective. We have sought to focus on the substantive issues
concerning intellectual property law, rather than procedural issues. This is not to suggest that
the procedural issues are any less thorny in the digital environment. For example, as a result of
the fact that the activities on the Internet in a given situation may not be confined to a specific
country, the jurisdictional issues concerning the regulation thereof may raise challenges. It may
be necessary to ascertain the geographic location of an activity to determine if it is subject to
regulation in a particular jurisdiction. While activities involving more than one jurisdiction are
not a new phenomenon in the law, the principles of private international law (or conflict of
laws), as with other areas of the law, may not be so easy to apply in the digital environment.3
The analysis of the legal issues concerning copyright and trade mark law in the digital
environment will focus on the legal developments in the US and Europe (particularly the
UK), as there is a dearth of case law on the subject in South Africa.
There are strong historical connections, and similarities, between South African and UK
law relating to both copyright protection and trade marks, which make UK case law
particularly persuasive and instructive. The current Trade Marks Act 19934 (TMA 1993)
replaced the Trade Marks Act 1963,5 and was based on drafts of the United Kingdom’s Trade
Marks Act of 1994 (UK TMA).6
There is a further reason for focusing on UK case law. Because UK law must harmonise
with the EU directives, such as the EU Copyright Directive,7 which represent the consensus
position on the relevant areas of regulation across the member states of the European Union,
its law is representative of the level of protection considered appropriate in Europe. For
example, the UK TMA was itself a response to the need for the UK to implement the required
changes to ensure compliance with its obligations under the 1989 Trade Marks Directive
(TM Directive),8 and to give effect to the 1989 Madrid Protocol Relating to the International
3 I Edwards & C Waelde Law and the Internet 3 ed (2009) 12.

4 Trade Marks Act 194 of 1993.
6 HB Klopper, T Pistorius, BR Rutherford, L Long, A van der Merwe & P van der Spuy Law of Intellectual Property in South
Africa (2011) 74.
7 Directive on Copyright and Related Rights in the Information Society 2001/29/EC.
8 Directive to Approximate the Laws of Member States relating to Trade Marks 89/104/EEC. The aforementioned directive
has been replaced by a codified version, following amendments to the earlier version. This was just a house-keeping
exercise as the substantive provisions and article numbers have remained the same: Directive to Approximate the Laws
of the Member States Relating to Trade Marks 2008/95/EC.

Registration of Marks.9 Thus, owing to the number of similarities between the TMA 1993, the
UK TMA and the 1989 TM Directive, the decisions of the UK and European courts have
particular persuasive authority in this area.10
The need to focus on intellectual property in the digital environment is a consequence
of the advent of the computer, and more particularly the personal computer (PC). In the first
place computers are reliant for their functionality on programs which drive them, the making
of which requires considerable effort and skill. These programs have commercial value and
have an independent existence. A computer program is inherently an intangible item of
property. In the modern commercial world computer programs warrant protection. It
therefore became a priority to devise a system for the protection of computer programs so
that the maker of the program might enjoy the fruits of his labour. Copyright law came to be
utilised for this purpose. The protection granted to literary works by copyright law was
deemed to be suitable and adequate for adaptation to apply to computer programs and
consequently computer programs came to be seen as a form of work eligible for copyright
in accordance with the standard rules applicable to that branch of the law. Our study
therefore begins with the protection afforded to computer programs by copyright law.
Computers are not only driven by works which require protection. They also are capable
of carrying, and in fact carry, many types of works which enjoy a separate and independent
existence and are themselves the subjects of intellectual property rights, for instance written
works, pictorial and visual material, compilations of information and the like. Not only do
computers carry these works but they are also capable of manipulating, reproducing and
disseminating them by means of digital processes. The speed and ease with which these
functions can be accomplished and their sheer extent are dizzying by comparison with
conventional analogue means. These capabilities of computers have revolutionised the trade
in, and dissemination of, these materials and have given rise to a situation where the efficient
operation of the conventional law dealing with such matters has been placed under
considerable strain. The pace of change and technological advances in these areas has
exacerbated this situation. It has become increasingly necessary for the applicable law to be
adapted and to evolve in order to keep up with the changing circumstances. New
manifestations of works have also come about in the process. Our study will include a
description of these adaptations and this evolution.
We will commence with the protection of computer programs and will then go on to
discuss the many innovations and developments which have been spawned by the
widespread use of computers in the cultural, technological and commercial fields, and,
indeed, in virtually all walks of life.
10.2 Copyright in computer programs
10.2.1 Protection as literary work

Measured against the lifespan of copyright law, the emergence of computer programs as a
species of copyrightable work is a comparatively new phenomenon. In fact, the debate about
the most appropriate vehicle for the protection of computer programs came to a head as
9 Webster & Page South African Law of Trade Marks 4 ed (1997) para 1.2.
10 Klopper et al Law of Intellectual Property in South Africa 74; Webster & Page South African Law of Trade Marks para
1.2. See also Century City Apartments Property Services CC and Another v Century City Property Owners’ Association
2010 (3) SA 1 (SCA) [26].

recently as the 1970s11 during the rise in piracy of computer programs. This debate, between
the proponents of intellectual property and the advocates for sui generis legal protection of
computer programs, argued that either copyright law or patent law,12 on the one hand, or
some other bespoke means of legal protection, on the other hand, must be developed to
address the need for legal certainty about the rights to software.
The debate was largely settled, albeit temporarily, with the first significant legislative
measure for the protection of computer programs in 1978, namely the World Intellectual
Property Organization (WIPO) Model Provisions on the Protection of Computer Software.13
Because the WIPO Model Provisions were rooted in copyright law,14 the debate was soon
abandoned and domestic laws adapted to provide copyright protection to software.15 Finally,
the TRIPS Agreement of 199416 and the WIPO Copyright Treaty of 199617 made it clear that the
international community considers copyright law best suited to protect computer programs
and henceforth required that all signatories to the Berne Convention for the Protection of
Literary and Artistic Works, 1886 (Berne Convention), the international treaty creating the
world-wide system of international copyright protection (of which most countries of the world,
including South Africa, are members), provide for such protection of computer programs.
In South Africa, Parliament’s tradition of expert committee-based lawmakers and its
progressive stance towards future-proof intellectual property law laid the foundation for the
development of software copyright law. However, it was through case law that South Africa
was to become one of the first countries in the world to grant such protection.
In 1981, one year after the introduction of the Computer Software Copyright Act in the USA
and four years ahead of Britain, the Cape High Court in Northern Office Microcomputers (Pty)
Ltd and Others v Rosenstein18 held that computer programs are eligible for copyright protection
in South Africa. In this seminal judgment Marias AJ addressed each of the requirements for
the subsistence of copyright as it applies to computer programs and held that:
• a computer program is eligible for protection as a species of literary work because a
literary work need not possess literary quality and may therefore include prosaic works19
and works that do not express a meaning in language;20
• a computer program may be protected as a literary work within the definition of the
Copyright Act21 if the program in question embodies sufficient effort or skill on the part
of the creator to give it a distinctive quality or original character and the program has
been written down, recorded or otherwise reduced to material form;22
• the programs in question were sufficiently reduced to material form once the source
code for each program had been written or printed on paper. The court opined that the
11 A Kolb ‘Protection of computer software’ in L Edwards & C Waelde (eds) Law and the Internet (2009) 337.
12 See para 5.2.2.6 for a discussion of the question of patenting computer programs.
13 WIPO ‘Model Provisions on the Protection of Computer Software’ 1978 Copyright (January).
14 Kolb ‘Protection of computer software’ 337.
15 In the USA the Computer Software Copyright Act 94 Stat 3015 was introduced in December 1980 and in the United
Kingdom the Copyright (Computer Software) Amendment Act granted copyright protection to computer programs in
1985 while the European Union adopted copyright as the most appropriate means for protecting computer programs
with the EU Council Directive on the Legal Protection of Computer Programs (the Software Directive) 91/250/EEC in
1991.
16 Agreement on Trade-Related Aspects of Intellectual Property Rights 1994, Art. 10(1).
17 WIPO Copyright Treaty (WCT) WO033EN 1996 Art. 4.
18 1981 (4) SA 123 (C).
19 Northern Office Micro Computers v Rosenstein 1981 (4) SA 123 (C) at 130.
20 At 132.
21 Note that the court referred to the Copyright Act 98 of 1978 as it stood before the Copyright Amendment Act 56 of 1980
came into force.
22 Northern Office Micro Computers supra at 129–130.

meaning of the word ‘record’ (one of the means recognised in section 2 of the Copyright
Act for reducing a work to a material form) did not readily permit expansion to include
the recording of a computer program on a floppy disc, but that this interpretation should
nevertheless be attributed to the definition to include digital storage;23
• The programs were the result of months of work on the part of the creators and therefore
embodied the expenditure of sufficient effort and skill to qualify as an original work.24
COUNTER Originality of computer programs

POINT The court in Northern Office Micro Computers and Others v Rosenstein pointed out that it was
not presented with the necessary evidence about the nature of the programs or their intended
functions in order to determine whether the degree of effort and skill invested were sufficient
to create a work with new and original character (at 135). In fact, the court did not know what
each of the constituent programs do or how they work. Yet, the court was satisfied that the
amount of time (according to the testimony of both parties) invested in creating the work was
sufficient to indicate that sufficient effort and skill had been invested in the work for the
purposes of the originality requirement.
This appears at odds with the meaning of originality applied elsewhere. Was the court
wrong in this finding or does it suggest a lower threshold requirement for purposes of the
originality test in the case of computer programs? In the light of subsequent judgments on
copyright, would the same court arrive at the same judgment today?
The combined effect of the Northern Office decision and the enactment of legislation in
America and the UK that classified software as a literary work was that South African copyright
law could develop on par with its foreign counterparts.25 Therefore, software copyright
jurisprudence in South Africa could compare with, and borrow from, British and American
judgments on software copyright as it has done before with regard to other types of work.
Copyright in computer programs in general is discussed in chapter 1 and more
particularly in paragraphs 1.2.2.9; 1.5.1.2; 1.5.2.8 and 1.9.1.7.
10.2.2 Protection as sui generis work

However, this position did not last long. While the world IP community largely agreed on
copyright as the most appropriate means of protecting software, it remained divided about
the manner in which copyright law should be applied to software. This second phase of the
debate included two schools of thought.
The first, more traditional, approach advocated that software is best protected by
copyright law as a species of literary work. This view is supported by the 1978 WIPO Model
Provisions and reiterated in the 1990 WIPO Model Provisions.26
The second approach argued that the 1990 WIPO Provisions signalled a move away from
software as literary work and, in so doing, recognised that software is ill-suited to such
protection in the long run. This view is based on the fact that the 1990 Provisions suggested
that software be protected ‘as a subcategory of works expressed in writing and [alternatively]
as a separate category’,27 namely a sui generis type of copyrightable work.
23 At 130–133.
24 At 135.
25 OH Dean ‘Protection of computer programs by copyright in South Africa’ (1995) 1 Stell LR 86 at 86.
26 WIPO ‘Committee of Experts on Model Provisions for Legislation in the Field of Copyright – Draft Model Law on
Copyright (Preparatory Document) CE/MPC/III/2’ 1990 Copyright (9); WIPO ‘Committee of Experts on Model
Provisions for Legislation in the Field of Copyright – Report CE/MPC/III/3’ 1990 Copyright (9).
27 T Pistorius & C Visser ‘The Copyright Amendment Act 125 of 1992 and computer programs: A preliminary overview’
(1992) 4 SA Merc LJ 346–348.

The latter approach is clearly an oversimplification of the 1990 WIPO Provisions and is
based on the erroneous assumption that by referring to sui generis protection as an
alternative, WIPO considered protection as a literary work a less suitable option. In fact, by
supporting both approaches to software copyright protection, WIPO clearly indicated its
view that either means of protection (as a literary work or a sui generis work) may be
appropriate and would, at least, offer the same level of protection.
However, this position changed when the WIPO Copyright Treaty (WCT) of 199628 entered
into force on 2 March 2002. It provides that computer programs are protected as literary works
regardless of the mode or form of expression,29 but shall not include ‘ideas, procedures,
methods of operation or mathematical concepts as such.’30 Furthermore, this position is
aligned with Article 2 of the Berne Convention and the TRIPS Agreement.31 Similarly, in the
European Union all member states are obliged to provide copyright protection to computer
programs as literary works within the meaning of the Berne Convention in terms of Article
1(1) of the EU Directive on the Legal Protection of Computer Programs.32
Be that as it may, when the time came for the South African legislature to formalise its
position on the protection of computer programs, it opted for the sui generis route with the
enactment of the Copyright Amendment Act 125 of 1992 (the Amendment Act). In the
accompanying Memorandum33 to the Amendment Act, it was stated that it is ‘artificial and
not entirely appropriate to treat a computer program as if it were a written text’34 due to
‘certain peculiarities of computer programs’35 which made them unsuitable for prolonged
protection as a species of literary work. Therefore the legislature decided, in light of ‘the
model law on protection of computer programs proposed by the World Intellectual Property
Organization’,36 to amend the Copyright Act to protect software as a sui generis type of
copyrightable work.
10.2.2.1 Definition
The Amendment Act introduced computer programs as a unique type of work eligible for
copyright protection if the computer program is ‘a set of instructions fixed or stored in any
manner and which, when used directly or indirectly in a computer, directs its operation to
bring about a result’.37
Accordingly, the definition shifted the emphasis away from the manifestation of the work
and onto the nature of the work. In other words, a computer program is deemed fit for
copyright protection if it is a set of instructions that causes a result, rather than a set of
instructions that consists of literary elements. Therefore, the legislator clearly intended for
copyright to subsist in this sui generis type of work because it is capable of affecting the
28 WIPO Copyright Treaty (WCT).

29 WCT Article 4.
30 WCT Article 2.
31 WCT Agreed Statement Concerning Article 4. See: The agreed statements of the Diplomatic Conference that adopted
the Treaty (WIPO Diplomatic Conference on Certain Copyright and Neighboring Rights Questions) concerning certain
provisions of the WCT, 20 December 1996.
32 Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the Legal Protection of
Computer Programs (Official Journal of the European Union 2009 L111 at 18).
33 Memorandum on the Copyright Amendment Bill 1992, GN 576, GG 13328, 28 June 1991 (The Memorandum) 61.
34 Memorandum at 61.
35 At 61.
36 At 61; the Memorandum does not indicate whether it referred to the 1987 or 1990 WIPO Model Provisions, or both. For
a discussion of the memorandum, see Pistorius & Visser ‘The Copyright Amendment Act 125 of 1992 and computer
programs: A preliminary overview’.

operation of a computer, unlike a literary work. Furthermore, the focus on instructions that
produce a result introduced a limitation on the copyrightability of computer programs that
did not apply to software as literary work. In other words, the new definition restricted the
possibility of vesting copyright protection in a computer program that is incomplete or
incapable of performing a function.
However, it must be noted that the definition refers to ‘a result’ and does not require that
the program perform the correct, desired, entire or intended result.38 This point becomes
clear when compared to the definition in the American Copyright Act that refers to ‘a set of
statements or instructions [that] bring about a certain result’.39 Therefore, in order to qualify
as a computer program for purposes of copyright, the set of instructions must be shown to
produce an ascertainable result, even though it need not be a visible or audible result. A
program that causes another program to perform or initiate a function would suffice, since
the definition includes instances where the set of instructions is used indirectly to operate
the computer. Furthermore, by referring to a result, as opposed to the result, the definition
includes computer programs that merely perform preparatory or intermediary functions,
such as accessing a database file required by another program, conveying or translating a
command between linked programs or simply monitoring or logging the activity of the user.
This means that each constituent program in a suite of programs or any part of a single
program capable of independent function would qualify for separate protection despite the
fact that the result produced by that part of the program may only be appreciable when
conducted in concert with the rest of the program or suite of programs.
Similarly, in a complex computer program consisting of many divisible programs that
each produce a result in order to achieve the desired end-result requested by the user, it is
not only the program that delivers the final product to the user in appreciable form that is
protected but also all of the subprograms that each contributed towards the end product.
For example, the program that shows the letters on the computer screen while the user is
typing, the program that translates the document into a format that the printer can interpret
and the program that moves the mouse pointer about on the display will each qualify for
copyright protection as a computer program based on the particular result achieved by that
program, even though only some of the results are ever seen by the user. Therefore, a
computer program would also produce ‘a result’ for the purposes of the definition where
the user did not directly request such a result or remained unaware that a result had been
requested or delivered.
10.2.2.2 Requirements for subsistence

The requirements for subsistence of copyright are discussed elsewhere.40 The discussion
below refers only to specific, additional issues particular to computer programs.
10.2.2.2.1 Originality
It is important to bear in mind that the originality requirement does not import a creativity,
novelty or innovation test for copyright protection. The originality requirement merely refers
38 In Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd 2006 (4) SA 458 (SCA) Streicher JA held that the
definition of a computer program ‘does not require the result to be correct’ (470 [23]) or that it be produced as a
consequence of the entire computer program. In casu the court dismissed the contention that the program is not eligible
for copyright protection because the result it brought about failed to account for, or process, large portions of the data
that it was designed to manipulate.
39 Copyright Act of 1976, Pub. L. No. 94–553, 90 Stat, 2541, Title 17 of the United States Code §101.
40 See para 1.3.

to the fact that the work embodies a level of distinctiveness so that the author may be
identified as the origin of the work.41 Therefore, in order to satisfy this requirement any
degree of independent effort, skill and/or judgment on the part of the author that is more
than de minimis would suffice.42
In the case of computer programs, the fact that South African copyright law subscribes
to the ‘sweat of the brow’43 approach is important. It means that a computer program is not
required to perform a function that differs in any way from the functions performed by
existing programs. Therefore, as long as a computer program is able to perform anything
more than a mediocre function,44 it would meet the originality requirement. In the field of
mobile applications, the low level of originality is particularly important since many
computer programs designed for mobile phones do little more than translate text from one
format into another.45
Conversely, in the case of intricate computer programs designed to perform or
facilitate complex tasks, the degree of copyright protection afforded to such programs
remains the same as for simple programs. Therefore, copyright law does not protect
the function of the program from reproduction. In other words, copyright protection
does not allow the author to prevent another from creating a program that mimics the
same functions.
Furthermore, originality need not relate to the creation of the material embodied by the
work itself. It would suffice that the author invested some effort in packaging the work by
collecting and arranging pre-existing work into a new derivative work. Therefore, an author
that collects several computer programs and distributes the collection would be considered
the author of that collective work for purposes of copyright and thus be entitled to collect a
royalty for any reproduction of that composition.46 This would be the case even if the
reproduction and distribution of the constituent works amounts to an infringement.
However, in the case of open-source software the author of the composite work is able to
lawfully obtain and distribute both the source and object code of the programs. Furthermore,
certain common open-source licences only prohibit the user from charging a royalty for the
reproduction of that program. Where the author of the composite work asserts copyright in
the composition, he is entitled to charge a royalty for reproduction of the composition
without contravening the provisions of the open-source licence.
Furthermore, in the case of shareware and freeware47 distributed under a royalty-free
licence by a number of hosts it is possible to infer a tacit reproduction licence by conduct if
the end-user licence agreement does not specifically prohibit the user from distributing the
41 See discussion on the originality requirement above in ch 1, para 1.3.2.

42 See for example, the court in Northern Office Micro Computers (Pty) Ltd v Rosenstein 1981 (4) SA 123 (C).
43 See Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others 2006 (4) SA 458 (SCA) at 473–474 where
the court confirmed that South Africa supports this position.
44 See Northern Office Micro Computers (Pty) Ltd and Others v Rosenstein at 133 where the court held that a program that
‘does no more than produce the multiplication tables, or the alphabet, cannot lay claim to copyright protection’.
45 See, for example, the range of instant text-message services such as BBM, WhatsApp, WeChat and MXit are all computer
programs designed to receive and translate text messages into the appropriate format relevant to the user’s specific
mobile phone. Similarly, many traffic or mapping applications, weather and surf forecasting applications, traffic
monitoring tools, stock and other statistical reporting applications all rely on a basic core program that collects data
from a specified location and then translates it into a format that is compatible with the user’s chosen device.
46 See the discussion of compilations in para 1.2.2.1. This type of composite work is often referred to as a software suite
and enables the user to install several programs by means of a single installation process.
47 Shareware and freeware refer to computer programs that are usually not open-source but distributed in object code
form under a royalty-free licence. It is instructive to note that the copyright owner and several, seemingly unrelated,
websites operating as large-scale depositories of such programs, often distribute freeware and shareware programmes
simultaneously.

work. In these cases, the author of the composite work is similarly entitled to raise a royalty
on the reproduction of existing works that are individually available for free.
However, section 11B(h) of the Copyright Act prohibits the ‘letting or offering or exposing
for hire by way of trade directly or indirectly a copy of the computer program’.48 In the case
of open-source software, freeware and shareware, this right is usually reserved and the
composite author would be prevented from indirectly deriving a profit from the trade in
copies of the program. Therefore, much will depend on an interpretation of the provisions
of the licence agreement that accompanies the computer program. If the program is
distributed without an express reservation of these rights, the free manner of distribution
may be interpreted as either an implied licence to reproduce, distribute and trade or a waiver
of the exclusive right in section 11B(h).
10.2.2.2.2 Material form

Copyright will only subsist in an original computer program if it has been reduced to material
form, which includes any ‘representation in digital data or signals’.49 Furthermore, the
moment the work is created is usually determined with reference to the moment it is reduced
to material form.50 However, read with the definition of a computer program, the moment
a computer program is created would be the moment that the instructions are recorded to
the extent that the program is capable of performing a function.51 Prior to this moment, the
instructions written in any format would constitute literary works.
A further issue is the medium on which the program is recorded. The wide meaning
attributed to the word ‘writing’ led the court to conclude that a computer program is reduced
to material form once the source code is written by hand or produced on paper as a
printout.52 The court also opined that a recording of the source code on a floppy disc53 may
suffice. Furthermore, copyright in the computer program is not lost if the first fixation
(original material expression) is lost or destroyed. The fact that the work was first reduced
to an ephemeral material form is irrelevant.54
The sum position of these judgments and the relevant provisions of the Act is instructive
in so far as it includes all conceivable forms of digital and transient expression as material
forms of the computer program. Therefore, a computer program is fixed in material form
even before the source code is entered into the computer program used to test the
correctness of the code and compile it into object code.55 Consequently, a computer program
is reduced to material form once the source code is written (by hand or in digital format),
even if it is recorded by means of a simple word-processing program.
As a result, the material form requirement has become largely irrelevant in the case of
computer programs. Because the source code is inherently capable of producing a result,
any form of notation would suffice even if the source code in that particular format does not
48 S 11B(h) of the Copyright Act, emphasis added.

49 S 2(2).
50 S 44.
51 See discussion in para 10.2.2.1 above.
52 Northern Office Micro Computers (Pty) Ltd and Others v Rosenstein 1981 (4) SA 123 (C) at 132.
53 Northern Office at 132–133. However, the court found it unnecessary to decide on this point. In Golden China TV Games
Centre v Nintendo Co Ltd [1996] 4 All SA 667 (SCA) at 673 the court confirmed that a cinematograph film would be
sufficiently reduced to material form once it is recorded on a ROM chip, even if the process of fixation was
computer-aided.
54 See Pastel Software (Pty) Ltd v Pink Software (Pty) Ltd and Another 399 JOC (T) 398 at 410.
55 The program used to turn the source code into executable object code is referred to as the compiler program. Without
the aid of a compiler, it is difficult to establish the correct operation of the computer program. The compiler is also used
to create the object code version of the program that will eventually be used by the consumer.

produce a result. The inclusion of storage in ‘any manner’,56 read with section 2(2), will
include storage on any digital device, removable disc or cloud storage service.
However, on a narrow interpretation of the definition of a computer program, the
material form requirement would have residual application regarding the moment of
creation. If it is interpreted to mean that a computer program is only created once it is
actually, in its recorded form, capable of producing a perceivable result, it would delay the
moment of creation until after the program is compiled into object code. This interpretation
is incorrect and at odds with the plain-language interpretation of the Act and would mean
that a computer program would only be an eligible type of work in object code form.
Therefore, the correct interpretation is that a computer program is created once the text
of the source code is written and stored in whatever medium, provided that it is sufficiently
developed for a result to be produced once the program is used in combination with a
computer, that is, compiled and executed.
10.2.2.3 Preparatory materials

The process of creating a computer program requires extensive conceptual planning
regarding the arrangement of functions and logical processes that the program should be
able to perform. This is not only important to ensure the efficient, correct and reliable
operation of the program but also to ensure interoperability. As a result, the creative process
often relies on a range of graphic illustrations, flow charts, mathematical calculations,
algorithms, arrays and raw data used to create parts of the source code, to test and adapt
individual functions of the program and to design the visual appearance of the user interface
and other output.
All of these works are collectively referred to as preparatory material and embody the
greater part of human labour, skill and judgment invested in the creation of the computer
program. Without the preparatory material the source code cannot be successfully written.
However, a computer program is specifically excluded from the definition of a literary work.57
Therefore, the scope of copyright protection for a computer program is limited to the
instructions that may direct the operation of the computer towards a result, that is, the source
code and object code. Consequently, the preparatory material is not included.
This may seem trouble-free at first.58 After all, much of the preparatory material will
qualify for copyright protection in its own right as literary, artistic, musical or other types of
work. However, in most cases a computer program is developed by a team of programmers
consisting of specialists in various elements of the program. Therefore, during the
development process constituent parts of the program will be coded separately. In some
cases these individual elements will not be capable of producing a result and therefore will
not qualify for copyright protection as a computer program. In most other cases each
56 See definition of ‘computer program’ in s 1(1) of the Copyright Act.

57 See the definition of ‘literary work’ in the Copyright Act.
58 However, some authors argue that the exclusion of preparatory materials from the scope of protection afforded to
computer programs is ‘a serious flaw in that integral elements of the work are thus not protected in an integrated
manner’ (see D van der Merwe, A Roos, T Pistorius & S Eiselen (eds) Information and Communications Technology Law
(2008) 251; H Klopper et al Law of Intellectual Property in South Africa (2011) 159). This statement is unqualified, but
should not be read as suggesting that any preparatory material other than written source code should be included as
part of a computer program for purposes of copyright protection. Prepared works such as drawings, films and sound
recordings should never be considered part of a computer program for purposes of copyright protection. These works
remain distinct types of work regardless of the reason for their creation or the manner in which they are digitally applied.
Extending the scope of copyright in computer programs to subsume these preparatory works would result in an undue
blurring of the demarcation between the types of eligible work and narrow copyright in computer programs by effectively
equating computer programs with published editions.

individual element will only be able to produce a test result when used in combination with
one or more of the other elements.
Consequently, while the individual parts of the program have yet to be assembled into
a program capable of producing a result, the source code remains a literary work. Therefore,
preparatory material for a computer program will often include large portions of the source
code protected as literary work. However, once the program is assembled the preparatory
code becomes part of the program, in so far as it is included in the final program, and
protected as a computer program. But copyright does not cease to exist in one work after it
is subsumed in another.59 Therefore, the literary works created during development will
survive the point when the computer code becomes a computer program for purposes of
copyright. This creates the position that one work may simultaneously attract copyright as
two distinct types of work.
PAUSE FOR Computer program/literary work

REFLECTION The fact that parts of a computer program are protected as literary works while the whole
of the program, including those parts, may be protected as a sui generis type of work, creates
difficulties in practice. It is conceivable that the author of the computer program and the
author(s) of the constituent literary works will not be the same individual(s).60 Therefore,
the situation may arise where the author of the literary work is restrained from the normal
exploitation of his work because it is embodied in a second, derivative work. For example,
the programmer may want to reproduce his part of the program for purposes of another
project. As long as he is the copyright owner of that literary work, he may lawfully do so.
However, because that work is now included as part of the computer program and copyright
in the program will in most cases vest in the person who controlled the creative process,
namely someone other than the programmer, a reproduction of any part of the code may or
may not be an infringement of copyright in the computer program,61 depending on the
source from which the reproduction is made.
In other words, where the copyright owner of the literary works (i.e. the programmer) and
the owner of the computer program are not the same individual, the programmer would be
entitled to reproduce all or parts of the code from the literary work, but not from the source
code. Therefore, infringement would not occur if the programmer reproduced the code from
his original literary works (albeit written in computer code). Conversely, if the programmer
re-used parts of the code from the computer program, it would amount to a reproduction.
In practice this creates an untenable situation because the two versions of code (in literary
work form and in computer program format) are likely to be indistinguishable.
Furthermore, in the event that copyright in the computer program is infringed by a third
party it may amount to an infringement of the rights of two or more authors who
59 See for example OH Dean Handbook of South African Copyright Law 14 ed (2012) 1–9 2.4.6; 1–19 2.12.2; 1–32; R de
Villiers ‘Computer programs and copyright: The South African perspective’ (2006) 123 SALJ 319 n 31. Others argue that
once a literary work reaches the stage of development where it satisfies the definition of a computer program, it ceases
to constitute a literary work. See Van der Merwe et al Information and Communications Technology Law 251. This is
incorrect. The Copyright Act does not provide for the termination of a work under any circumstances. Even after the
term of copyright protection has expired the work survives. Similarly, even if the first material fixation (or all of the
physical copies) of the work is destroyed, copyright in the work does not cease.
60 See the discussion of authorship in computer programs below, in paragraph 10.2.2.4.
61 See A Marshall ‘Code borrowing and copyright’ (2005) April De Rebus, where the author argues that the problem may
be addressed in part by distinguishing between elements of the program that relate to core functions and those parts
that are non-essential to the core functions.

are not joint authors for purposes of copyright. For example, if a computer program in source
code form is unlawfully reproduced it follows that the literary works (that first embodied that
source code) are also reproduced. Consequently, the rights of the author of the computer
program and the rights of the authors of the literary works are simultaneously infringed.
Similarly, an authorised reproduction of the source code will constitute an infringement of
the copyright in the literary works if the permission of the original programmer was not
obtained, or vice versa.
It is therefore clearly desirable that copyright in the computer program should encompass
copyright in the preparatory material that consisted of source code.
In practice these problems are usually avoided by the operation of section 21(1)(d) that
vests the employer with copyright in all of the literary works created by the employee. Thus,
where a program is created by a software house, the company will own copyright in the
literary works and will also own copyright in the computer program. However, in a situation
where the programmers are not employed by the person in control of the making of the final
computer program, section 21(1)(d) does not apply. Furthermore, in the absence of a written
agreement, copyright in the literary works is not assigned to the author of the computer
program.
In these cases a solution is to be found in section 22(4), which provides that a copyright
licence may be inferred from conduct. Therefore it may be argued that, by allowing the literary
works to be included in the computer program, the programmer/author of the literary works
granted a licence to the author of the computer program to use the literary works. However,
establishing the scope of an implied licence is fraught with difficulty. Particularly in the case
of freelance programmers, it is foreseeable that the programmer’s tacit consent would only
address the use of the code in the program while reserving the right to re-use the same
code for another program in future.
10.2.2.4 Authorship
The author of a computer program is defined as ‘the person who exercised control
over the making of the computer program’.62 This definition is unique to computer
programs and is intended to address both scenarios under which a computer program
may be created.
In the first case where an individual programmer63 is working independently he or she
would be the author as the person responsible for the first fixation of the work.64 In the
alternative, a computer program is created by one or more programmers working on
commission from a third party, in which case the commissioner will be the author if he or
she exercised the necessary control over the making of the program.65 However, if the
commissioner did not exercise control he will not be the author of the program and copyright
will vest in one or more of the persons who carried out the commission.
62 S 1 of the Copyright Act, s.v. ‘author’.

63 Where more than one programmer are working together to create a program, they may qualify as joint authors and
co-owners of copyright in the work. See Dean Handbook of South African Copyright Law 1–33 para 4.4.
64 In this case the programmer would of course be in control of the process and thus qualify as the author. By default, the
author is identified with reference to the moment the work is first reduced to material form and the party responsible
for the embodiment of the work. See Dean Handbook of South African Copyright Law 1–32 para 4.3.
65 Where the work is created in the course of the programmer’s employment, the employer would be the owner of copyright
while the programmer remains the author. See s 21(1)(d) of the Copyright Act and the discussion of authorship in para
1.4 and ownership of copyright in para 1.6.

It is important to note that the degree of control required of the author of a computer
program differs from the control necessary to qualify as an employer for purposes of
copyright ownership. In Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd66 the
court held that control for purposes of section 1 should be afforded a wider interpretation
to include the scenario where the programmers are not employed by the author.67 Therefore,
the court held that an author would be in control of the making of the program even if the
programmer were an independent contractor.
Furthermore, it is clear that the control requirement is a factual question and a largely
subjective test. To determine whether a sufficient level of control was exercised over the
making of the program the court considered several factors:
• The author instructed the programmer as to the end result that should be achieved by
the program.
• The author and the programmer were in constant contact.
• The program was periodically submitted for evaluation and approval by the author.
• The author directed the further development of the program.
• The author was in a position of authority and could terminate the project at will.68
However, in order to be in control it is not necessary that the author be sufficiently skilled
in computer programming to be able to give technical instructions on how the program
should be created. Therefore, the author will have sufficient control over the making of the
program if he or she is empowered to direct the programming process but need not direct
the programming itself or even understand the source code.69
10.2.2.5 Scope of protection
10.2.2.5.1 Exclusive rights

10.2.2.5.1.1 Reproduction
A computer program is afforded the full spectrum of protection70 available in terms of the
Copyright Act, including the limitation on reproduction in any manner or form.71 However,
the exclusive rights to publication 72 and broadcasting 73 do not currently address
the distribution of unauthorised reproductions of computer programs by means of
the Internet.
Software piracy amounts to an infringement of copyright as a result of the way the
Internet works. In order to convey a particular data file from one location to another (the
practice commonly known as downloading or uploading a file), the Internet necessarily
makes a reproduction of the relevant file. Therefore, a user who uploads an unauthorised
reproduction of a computer program engages in making a reproduction of the program as
a matter of course. The same holds true for the user who requests that a program be
downloaded to his or her computer.
66 2006 (4) SA 458 (SCA).

67 Haupt at 41.
68 Haupt at 475–476.
69 The court held (at 476 para 41) that, in order to be the author of a computer program, the person in control does not
have to be a computer programmer.
70 See para 1.5.2.8.
71 S 11B(a).
72 The publication right is exhausted after the first authorised reproductions have been distributed to the public.
73 The broadcasting right applies only to distribution by means of electromagnetic waves without an artificial conductor
and therefore does not include the Internet.

Where a computer program in either source or object code form is reproduced wholly
or in part, this may amount to an infringement. This would be the case even if the infringing
reproduction was not capable of performing all of the functions of the original or, indeed,
able to perform any function.
However, all computer programs produce some sort of result. In the case of consumer
computer programs the result includes an array of visual elements that make up the user
interface or screen display in addition to various calculations or manipulations of user input
and data performed by the program. This raises the question whether copyright in the
computer program is infringed where a second work performs the same function, despite the
fact that it was created without recourse to the source or object code of the original program.
This question was addressed by the court in the matter of Pastel Software (Pty) Ltd v Pink
Software (Pty) Ltd and Another.74 The case was decided in terms of the law prior to the 1992
Amendment Act and therefore dealt with computer programs as a species of literary work.
In this case the respondent argued that ‘there cannot be anything unlawful or improper in
one learning that there is on the market a program which performs a particular task or
provides a particular facility and thereupon resolving to write a new program which will be
sold in competition of the former which incorporates that very facility.’75
The copyright claim turned on the screen images (user interface) produced by Pink’s
version of the TurboCASH accounting program in so far as it resembled those produced by
Pastel’s program. It was common cause that Pink did not have access to the source code of
Pastel’s program and therefore produced the screen images without reproducing the
underlying code of Pastel’s work. Based on this fact, Pink contended that their screen images
did not amount to a reproduction. The fact that the disputed images resembled the original
work to a large extent was alleged to be the result of giving expression to standard accounting
practices and therefore merely the most efficient manner of facilitating the required tasks
within the constraints imposed by the nature of the program. Consequently, the apparent
objective similarity was not due to an act of reproduction, but rather the standard method
of portraying the requisite information.76
Eloff found that the individual screen images of Pastel’s program, by virtue of their
original layout, each qualify as a literary work in the form of written tables and
compilations.77 Furthermore, the claimant invested substantial labour, skill and judgment
in designing the original screen images and, thereafter, the necessary source code was
written to produce the images on the screen.
However, because the original designs were no longer available, the respondent argued
that the screen images no longer existed in material form. Furthermore, the screen layouts
produced by the claimant’s program are only perceivable temporarily while being displayed
on the computer screen. Therefore, the original work does not exist in material form and can
thus not be reproduced.
The court disagreed and held that the first material fixation of the work is required in
order for copyright to subsist in the work, but the continued survival of that material
expression is not required to sustain copyright protection. The loss or destruction of the first
74 1991 JOC (13).

75 Pastel Software supra 398 at 408.
76 The court dismissed this argument and held (at 399) that
Pastel does not claim exclusivity to any fundamental accounting knowledge or to any concept. It is the way in
which such accounting principles as are involved in the ideas associated therewith have been reduced to
material form by having been written down by Katz, that forms the basis of Pastel’s claim to the subsistence
of copyright in their screens it relies upon.
77 Pastel Software supra at 410.

material expression does not terminate copyright. Furthermore, the fact that the work
currently exists only in ephemeral form is irrelevant. The original screen images did exist in
material form at some point prior to their being incorporated as part of the program and are
protected by copyright. This remains true regardless of the medium or form in which the
work is expressed by the author after the first fixation. Therefore, it is irrelevant that, by the
time of the alleged infringement, the screen images were ephemeral works.78
However, the computer code responsible for the production of the screen images had
since been integrated with the rest of the program and so became part of the new literary
work that embodied a computer program.
Based on these facts, the court found that the screen images produced by Pastel’s
program were authorised reproductions of their copyright computer program and therefore
themselves protected against further reproduction.79 Therefore, if Pink’s work was found to
be a reproduction of the screen layouts produced by Pastel’s program, it follows that a case
for copyright infringement in the computer program has been made. To this end, the court
found that ‘the inference is inescapable that Pink copied Pastel’s screens and did not arrive
at its screens as an independent work of its own’.80 Consequently, the screen images
produced by Pink’s program did infringe copyright by reproducing a reproduction of Pastel’s
original program.81
However, it must be observed that the court did not deal with the disputed screen layouts
as independent computer-generated works. Instead, the case turned on copyright infringement
of the computer program (as a literary work) by reproduction of the screens brought about by,
and embedded in,82 the code of the computer program. Therefore, despite the fact that Pink’s
screen images did not rely on a reproduction of the source code of Pastel’s program,83 the
emulation of the screen images did indirectly constitute a reproduction of the source code.
In other words, the court found that a reproduction of the screen layout amounted to a
reproduction of the computer code that brought about that particular screen layout,
regardless of the extent to which the two programs shared the same source code. The court
specifically held that the ‘screen forms part of the program and may not be imitated’84 and
thus concluded that there is ‘everything wrong in someone examining the reproductions
and imitating them. An imitation is a copy of a reproduction of the screen image in regard
to which Pastel enjoys copyright.’85
This judgment has been cited as a limited recognition of the protection of non-literal
elements of computer programs in South Africa in so far as it extended protection beyond
the source code to include the results produced by the code.86 This assumption must,
however, be qualified.
78 At 411. Similarly, the fact that the infringing reproductions were transient reproductions only apparent while the
computer program was operated, is irrelevant. A reproduction in ephemeral form will therefore constitute a
reproduction. See also Dean Handbook of South African Copyright Law 1–68 para 8.4.2.
79 At 410–411. Note that the court found that copyright subsists in the screen layouts themselves. See also Dean Handbook
of South African Copyright Law 1–69 para 8.4.3 and the Copyright Act s 1(1) definition of ‘reproduction’, which includes
‘a reproduction made from a reproduction of that work’.
80 At 412.
81 At 410.
82 At 411.
83 At 409 the court confirmed that ‘Pastel is not here concerned with source codes or copying of them, but with copying
of original written works and compilations’.
84 At 410.
85 At 410. It should be noted that the degree of similarity between the original work and the reproduction was such that
the court found them to be almost identical with only minor additions or alterations (at 407).
86 See also Van der Merwe et al Information and Communications Technology Law at 253.

The introduction of computer programs as a sui generis type of work signalled

a departure from the scope of copyright protection afforded to computer programs
as literary works. Prior judgments, including the Pastel case, can therefore not simply
be applied to computer programs after 1992. Computer programs created before and
after the amendment constitute two distinct types of copyrightable work. A finding
in relation to computer programs as literary works is thus not automatically applicable
to computer programs as sui generis works merely because the two types of work consist
of the same type of expression. This would be as artificial as finding that a reproduction
of a book would only be actionable if an entire page were copied because this amounts
to a reproduction of a published edition and both types of work have an essentially
literary nature.87
The current definition of a computer program refers specifically to the nature of the work
as ‘a set of instructions’.88 Where that set of instructions produces a particular result, that
result is merely a consequence of the operation of the program and not a reproduction of
the program or any of its preparatory materials. The fact that, in some cases, the computer
necessarily reproduces a computer program in order to bring about the result89 does not
mean that the result is a reproduction of the computer program.
Therefore, a second program that delivers the same result or performs the same
function does not necessarily bring about a reproduction of the first program and can
therefore not be held to be an infringing copy of any part of the first program. Simply put,
if there is no reproduction of source code, there can be no copyright infringement of the
computer program. Therefore, a reproduction of the work would only occur if the set of
instructions were in fact reproduced.
COUNTER Bringing about a result

POINT The definition of a computer program also limits the protection to computer programs that
‘bring about a result’.90 Does this mean that the 1992 amendment intended to afford
protection to the result of the computer program in addition to its source code? If so, does
it refer to the perceivable results only (such as the user interface and printouts) or should
it be read to protect all of the functions that the computer program performs?
It has been noted that copyright protection of computer programs as a species of literary
work was considered inappropriate because it did not consider the particularly utilitarian
nature of computer programs.91 This suggests that sui generis protection should afford wider
protection that incorporates the function of the program. If this argument is supported, the
Pastel judgment was ahead of its time and remains applicable as authority for the protection
of the full spectrum of the so-called look-and-feel of a computer program.
87 Of course it is common practice to determine the scope of a restricted act in relation to a particular type of work with
reference to another type of work. There is nothing wrong with this practice. However, the nature of the work and the
scope of copyright protection afforded to that particular type of work must always be considered when interpreting the
nature of the restricted act.
88 S 1(1) of the Copyright Act 98 of 1978 s.v. ‘computer program’.
89 This would depend on the manner in which the computer executes the object code and the way in which the computer
operates. For example, when the user executes (opens) a computer program, a part of the object code may be copied
into the temporary storage of the computer from which it can be accessed repeatedly and quickly without recourse to
the full version of the program stored on the hard drive or other permanent storage.
90 S 1(1) of the Copyright Act 98 of 1978 s.v. ‘computer program’.
91 See for example Dean ‘Protection of computer programs by copyright in South Africa’; Pistorius & Visser ‘The Copyright
Amendment Act 125 of 1992 and computer programs: A preliminary overview’.

COUNTER Screen layouts

POINT The original screen layouts in the Pastel case resembled the layout of an accounting ledger
in so far as they consisted of a collection of rows and columns with descriptive headings
and pre-defined spaces where the user can enter variable values. This was surrounded by
instructions and indications of the commands that the user may execute. The program could
produce several variations of the default layout, depending on the user’s needs. Does this
mean that the screen layouts are merely computer-generated literary works? If so, why did
the court not find infringement based on the computer-generated literary works?
Section 2(2) of the Copyright Act requires that a literary work be expressed in writing,
including representation of digital data or signals. This suggests that a computer-generated
work will be reduced to material form if it exists on the screen only. In fact, the Pastel case
is often cited as authority for this position. Similarly, a work may be infringed by a
reproduction on the computer screen.
Could the court have avoided the question of infringement in the computer program by
finding that copyright in Pastel’s computer-generated work was infringed by Pink’s computer-
generated reproductions?
10.2.2.5.1.2 Adaptation
The exclusive right to make an adaptation92 is understood to include the right to transform
the program from source code (the programming language used to write the instructions
that the program should perform) to object code (machine-readable code relevant to the
particular environment in which the program is designed to operate) – a process known
as encoding the program.93 This position was developed with reference to computer
programs as literary works and therefore considered object code to be a translation of the
source code, which necessarily results in an adaptation of the work.94 The Supreme Court
of Appeal confirmed that the same holds true for computer programs as a sui generis type
of work.95 Therefore, encoding the source code into object code without consent from the
copyright owner amounts to a copyright infringement, and vice versa.96
However, once the program is lawfully encoded the original source code remains the
primary protected work and the scope of its protection is extended to the work in object code
form as a secondary, yet distinct, copyright work. Therefore, an unauthorised reproduction
of the object code amounts to a simultaneous infringement of the source and object code,
even though the source code may not have been reproduced. Since all commercially
available computer programs are distributed in object code form, any pirated version thereof
is an unauthorised reproduction of the object code.
In addition, the definition of adaptation includes the ‘fixation of the program on or in a
medium different from the medium of fixation of the program’,97 and therefore prohibits the
92 S 11B(f).
93 S 1(1)(d) defines an ‘adaptation’ in relation to a computer program as:
(i) a version of the program in a programming language, code or notation different from that of the program;
or
(ii) a fixation of the program in or on a medium different from the medium of fixation of the program.
94 Apple Computer v Rosy t/a SA Commodity Brokers (Pty) Ltd and Another 134 JOC (D).
95 King v SA Weather Service [2009] 2 All SA 31 (SCA).
96 The process of reverse-engineering a computer program by translating the program from object code back to source
code is known as decompilation.
97 S 1(1)(d)(ii) of the Copyright Act 98 of 1978 s.v. ‘adaptation’.

digital distribution of a program on the Internet if the program was originally only distributed
by means of optical or removable discs. However, where the program was available as a
downloadable file, the medium of fixation would not differ from the medium in which it is
stored by the host of the infringing copies. Therefore, a pirated copy would not amount to
an adaptation of the program, although it is still a reproduction.
However, most lawful reproductions of computer programs distributed as a
downloadable file require the user to enter a serial key. This key is provided to the user upon
the successful purchase of the program and is required in order to install and use the
program. In the case of pirated programs a pre-installed serial key that accompanies the
downloadable file or that part of the program that requires a valid serial key has been
removed. Thus, the file as distributed would amount to an adaptation of the program by
either the addition of the key to the program or the removal of a part of the program before
distribution. In these cases an instance of piracy would amount to an adaptation of the
program98 in addition to being a reproduction thereof.
10.2.2.5.1.3 Communication to the public

It has been observed above99 that, despite the fact that the Act provides that the author
of a computer program shall have the exclusive right to broadcast or transmit the work,100
this does not include the unauthorised distribution of the computer program by means
of the Internet.
The author’s copyright monopoly also extends to public performance of the work.101
Furthermore, the definition of ‘public’ for purposes of copyright law is understood to refer
to any group of individuals that do not share a domestic character.102 Therefore, it may be
argued that a computer program that is distributed by means of the Internet is being publicly
performed. This interpretation should be avoided. Since a computer program is defined with
reference to its function, it follows that it can only be performed if its function is carried out
in view of the public. Consequently, the mere distribution of a computer program does not
amount to a public performance of the work.
This is borne out by article 8 of the WIPO Copyright Treaty (WCT),103 which specifically
created a new restricted act, known as the right of communication to the public, which
prohibits the unauthorised communication of protected work ‘by wire or wireless means’
in a manner that allows public access to the work. Therefore, distributing pirated copies of
a work, or merely hosting such unauthorised copies, amounts to copyright infringement
regardless of the means by which the work is distributed.
Unfortunately, South Africa has yet to accede to the WCT and in light of the Draft
National Policy on Intellectual Property 104 it seems unlikely that it will do so in the
near future.
98 The individual who adapts the program to remove or falsify the serial key may incur further civil and criminal liability
in addition to copyright infringement. See the discussion on digital rights management and anti-circumvention
protection measures in paragraph 10.3.4 below.
99 See paragraph 10.2.2.5.1. See also Van der Merwe et al Information and Communications Technology Law at 266–267
para 8.4.1.4.
100 S 11B(d)–(e).
101 S 11B(c).
102 See Dean Handbook of South African Copyright Law para 7.10.5 fn 2.
103 WIPO Copyright Treaty (WCT).
104 Draft National Policy on Intellectual Property 2013 GG 36816, GN 918 of 2013, 4 September 2013 p. 30.

10.2.2.5.2 Exemptions from infringement
10.2.2.5.2.1 Fair dealing

The Copyright Act exists in order to provide a limited monopoly over the use of a work and
thereby facilitate the commercial exploitation of intellectual endeavour. However, the law
recognises that a balance must be maintained between the interests of the author and the
public need to use the work for specific purposes without having a duty to obtain permission
or pay a royalty.
Therefore, in relation to each type of work the Act lists several instances where the
individual is exempted from liability in specific circumstances that would otherwise amount
to copyright infringement. For this reason the exemptions are available as statutory defences
to copyright infringement. However, although the exemptions are often collectively (albeit
imprecisely) referred to as fair-dealing exceptions, the Act does not impose a fairness test in
all cases addressed by the exemptions.105 Only the provisions of section 12(1) contain explicit
fair-dealing exemptions, while the rest of section 12 lists several exemptions from infringement
that are per se considered to be fair, with the exception of sections 12(3) and 12(4).
In relation to computer programs, the user is entitled to:
• use the program for purposes of criticism or review of that program or another
program;106
• use the program to report current events;107
• use the program for the purpose of judicial proceedings or reproduce the program for
the purpose of a report of judicial proceedings;108
• make quotations from the program;109
• use the program for illustration during teaching, either by means of a publication,
broadcast, sound or visual record;110
• reproduce the program as part of a lawful broadcast;111
• preserve that broadcast;112
• use the program for bona fide demonstration of radio or television receivers, recording
or playback equipment to the client by the dealer;113
• broadcast the program if permission has been obtained to use the program as the basis
for the making of a cinematograph film;114
• reproduce, archive and distribute the program by a library or archive depot;115
• produce multiple copies of the work for classroom use or discussion by a teacher to the
limit of one copy per student;116
• make one copy of the program at the request of the teacher for research, teaching or
preparation for teaching in class.117
105 Only the exemptions in ss (12)(1)(b) and (c), 12(3), 12(4) of the Copyright Act 98 of 1978 and regs 3, 7 and 8 of the
Copyright Regulations 1978 are subject to a fairness test.
106 S 19B(1) read with s 12(1)(b).
107 S 19B(1) read with s 12(1)(c).
108 S 19B(1) read with s 12(2).
109 S 19B(1) read with s 12(3), provided that the source is mentioned.
110 S 19B(1) read with s 12(4), provided that the source is mentioned.
111 S 19B(1) read with s 12(5)(a).
112 S 19B(1) read with s 12(5)(b).
113 S 19B(1) read with s 12(12).
114 S 19B(1) read with s 12(13).
115 S 19B(1) read with s 13 and reg 3 of the Copyright Regulations, 1978.
116 S 19B(1) read with s 13 and reg 7 of the Copyright Regulations, 1978, subject to reg 9.
117 S 19B(1) read with s 13 and reg 8 of the Copyright Regulations, 1978, subject to reg 9.

These general exemptions are based on the manner in which the public would generally
desire to exploit literary and musical works without the need for permission. Therefore,
some of the exceptions are impracticable with regard to computer programs118 and are often
insufficient to balance the public interest while other exceptions are not available in relation
to computer programs.
For example, it is often desirable that a new computer program should be able to open
and manipulate a file that was created by another, competing program.119 This form of
compatibility, which is more accurately described as interoperability between programs,
may be achieved by referring to the source code of the earlier program120 and aligning the
new program accordingly.121 It is in the public interest that a programmer should be able
to reproduce and adapt the object code of an existing program in order to observe the
source code. However, the fair-dealing exemption for purposes of research or private
study122 does not apply to computer programs. Because a translation of the object code to
source code amounts to an adaptation of the work, such use is prohibited and not
exempted by the Act.
Furthermore, the interaction between section 12 and section 13 narrows the scope of the
available fair-dealing exemptions to the extent that it is often of little use to the public. This
observation relies on an analysis of section 13 in comparison with regulation 2 of the
Copyright Regulations.
Section 13 empowers the Minister to enact additional exemptions by means of regulation,
but restricts this power by imposing a general fairness test. It provides that all cases of
permitted reproduction in terms of the Regulations must also be:
i) not in conflict with the normal exploitation of the work; and
ii) not unreasonably prejudicial to the legitimate interests of the copyright owner.
At first glance this provision appears to do nothing more than empower the Minister and
thereafter circumscribe his or her power to permit reproductions only in so far as they meet
the two-step test above. However, the Copyright Regulations contain a similar two-step test123
that differs in four important respects from the wording of section 13. Firstly, the test in
regulation 2 refers to the rights of the author, while section 13 refers to the rights of the
copyright owner. Secondly, the scope of regulation 2 is wider than section 13 and extends
to the cumulative effect of the reproduction. Thirdly, regulation 2 refers to the legal interest
of the author while the Act refers to the legitimate interest of the owner. Lastly, regulation
2 adds a further element to the test by also protecting the residuary rights of the author.
Clearly section 13 and regulation 2 are not duplicates. This raises the question why the
legislature chose to include two variations of the two-step test.
The first possibility is that section 13 dictates to the Minister the nature of any postulated
exception, while regulation 2 further restricts the application of all exceptions made by the
Minister. This interpretation is problematic and appears to elevate the rights of the copyright
owner above those of the author.
118 For example, it is impossible to broadcast a computer program and it would only be sensible to make quotations of the
source code of a program, which is usually not available to the public.
119 A common example would be the ability to open a file created in Microsoft Word with the comparable program Pages
for the Apple operating system OSX.
120 See also the discussion on decompilation in para 10.2.2.5.2.4 below.
121 This may be done in any number of ways and may, in some cases, result in a reproduction of the source code while in
other cases the same function is performed by means of different computer code.
122 S 12(1)(a).
123 Reg 2(b).

The second possibility is that regulation 2 is intended to supplement section 13 by

addressing the omission of the author’s rights and expanding the scope of the test to include
the author’s residual rights. In view of the circumstances under which the Regulations were
introduced this interpretation is far more likely. On the other hand, Regulations made in
terms of an empowering provision in the Act cannot broaden the effect and ambit of what
is contained in the empowering section or else the regulation would be ultra vires the Act
and thus invalid.
A further possibility is that the Regulations were carelessly and imprecisely drafted and
that, where they refer to the ‘author’ in the relevant context, they were intended to refer to
the ‘copyright owner’ and should therefore be interpreted accordingly.
Be that as it may, the fact remains that the legislature’s intention must be gleaned from
the wording chosen and must be understood to be purposive; legislative amendment is not
done by means of regulation. Therefore, it is submitted that the two versions of the two-step
test have distinct application beyond a mere limitation of the Minister’s power. Furthermore,
the Act has seen several amendments, none of which addressed the apparent duplication
of the two-step test. This suggests that the test in section 13 is intended to apply to the Act in
general in addition to directing the Minister, while regulation 2 applies to the regulations.
Consequently, it is submitted that the two-step test in section 13 informs the interpretation
of fairness. This does not mean that section 12 is subject to section 13 to the extent that all fair
dealing must be tested against the two-step test, but it does mean that when the court is
required to give content to the word ‘fair’ in section 12 it should consider section 13. In other
words, the fair-dealing defence can only succeed if, in the judgment of the court, the
reproduction does not conflict with the normal exploitation of the work and is not
unreasonably prejudicial to the owner’s interest. As such, section 13 serves as a discretionary
threshold test.
It is important to note that the wording of section 13 is based on the three-step test in the
Berne Convention124 and is mirrored in the TRIPS agreement.125 In both cases the three-step
test is a general empowering provision that limits the power of member states to permit
reproduction. South Africa is of course bound by the provisions of these agreements and is
obliged to give effect to them in its domestic law. Therefore, the three-step test applies in all
cases of fair dealing and it must be assumed that in general the fair-dealing exceptions in
section 12 of the Act were deemed by the legislature to have passed this test in principle. In
other words, while the fair-dealing exceptions in South Africa must be regarded as in
principle being fair per se, scope is nevertheless created for a specific act falling generally
within the compass of section 12 not to be considered as being in fact fair in the particular
circumstances that obtain in that case. Consequently, any act of fair dealing in terms of
section 12 may be challenged on the basis that it does not in fact amount to a fair dealing
as contemplated in section 13. In other words, while the court is not obliged to test every
instance of fair dealing against section 13, it would be able to refuse a fair-dealing defence
derived from section 12 based on the meaning of fair dealing (as determined with reference
to section 13) if the facts justify such a finding. Conversely, an interpretation of an exemption
provided for in section 12 which enables a particular use of a computer program to be
regarded as fair, even though the use of, say, a literary or musical work in the same
circumstances would not be considered to be fair, would be tenable.
124 Berne Convention for the Protection of Literary and Artistic Works to the WIPO Copyright Treaty and the WIPO
Performances and Phonograms Treaty WIPO/CR/DAM/05/8 Article 9.
125 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Annex 1C of the Marrakesh Agreement
Establishing the World Trade Organization, 15 April 1994 Art. 13.

This is of crucial importance in the case of computer programs and, especially, the digital
exploitation of authorial works. For example, it is obvious that in the print media one
newspaper would be entitled to reproduce the literary work of another newspaper in pursuit
of reporting current events. As long as the second work is in fact reporting current events in
a suitable publication, the two-step test is not required to give further meaning. Conversely,
in the case of digital media the copyright owner may desire that his work be viewed only on
his website or only in unabridged form. In this case, the owner’s legitimate interest would
be prejudiced by the operation of a news aggregation service and the principle espoused in
section 13 should be available to support an opposition to the fair-dealing defence.
Similarly, computer programs are by default utilitarian and do not contain material
suitable for use in news reporting. Therefore, reproducing a computer program to use it as
a tool to report on current events would be contrary to the normal exploitation of the work,
unless the making of the reproduction was itself authorised by law without recourse to
section 12. Thus, a computer program may only be used under this exemption to report on
the computer program itself or a particular event facilitated thereby. This would be the case
where the screen layout of the program is reproduced in the media to illustrate a particular
point. Save for such limited uses, the exemption permits no other forms of exploitation.
In addition, leaving aside open-source programs, all computer programs are distributed
in object code form, which is generally illegible. Therefore, it is impossible to use the program
for purposes of criticism or review of the object code. However, this may not be true if the
exemption refers to instances where the reproduction of the program is used and its
functions studied so that criticism or review may be delivered on the user experience or
operation of that program. Clearly the Act is intended to apply to this scenario only and
therefore has limited application. Particularly in the competitive software industry the public
interest also lies in the manner in which the program was created, as opposed to the manner
in which it operates. It is therefore desirable that the criticism and review exemption should
permit the user to decompile the program so that the source code may be studied.126
However, the current formulation of this exemption, coupled with the principle embodied
in section 13, does not bear such a wide interpretation.
10.2.2.5.2.2 Back-up copies

The only exemption specific to computer programs is section 19B(2), which permits the user
to make one copy of a program provided that:
• the user is in lawful possession of the original program or an authorised copy thereof;
• the reproduction is made exclusively for back-up purposes to be used for personal or
private purposes;127
• the reproduction is destroyed once the user’s entitlement to the original ceases to
be lawful.128
This does not mean that the user should be the purchaser of the computer program, or the
licensed user. All that is required is that the user be in lawful possession of the program.
Therefore, where the user obtained a second-hand copy of the program, the exemption could
still be applicable. In practice it can be difficult to determine from which item a copy was
made. A copy made from an infringing copy cannot be distinguished from a copy made from
126 See the discussions on reverse engineering in para 10.2.2.5.2.3 and decompilation in para 10.2.2.5.2.4 below.
127 S 19B(2)(b)–(c).
128 S 19B(2)(c).

an authorised copy. The provision could therefore be used to exculpate a person who makes
an alleged back-up copy from a pirate copy of the program. This poses a particular problem
for evidentiary purposes where the suspected infringing user is found in possession of a copy
of a program but the ‘master’ from which the copy was made has since been removed.
Where the user’s entitlement to the legitimate version of the program (i.e. the original or
an authorised copy) is no longer lawful, the copy must be destroyed. Therefore, if the user
were to sell or dispose of the legitimate version, the back-up may not be retained. The same
would apply where the user’s entitlement to the legitimate version was subject to a renewable
subscription to the program, and the subscription has since lapsed.
It must be noted that the right to make a back-up copy of a computer program may in
fact be curtailed, or in some cases obviated, if reproduction of the program is prevented by
technical means attached to the program.129
10.2.2.5.2.3 Reverse engineering

The practice of reverse engineering in relation to a computer program is also referred to as
‘black box’130 programming and involves studying the function and results of the computer
program by observing its operation. It does not involve access to the source code of the
program or any adaptation or reproduction of the computer program, except in the United
States of America, where reverse engineering is used to refer to black box programming and
decompilation of computer programs.131
An example of a reverse engineering exemption is found in section 50BA of the British
Copyright, Designs and Patents Act of 1988, which stipulates:
(1) It is not an infringement of copyright for a lawful user of a copy of a computer

program to observe, study or test the functioning of the program in order to
determine the ideas and principles which underlie any element of the program
if he does so while performing any of the acts of loading, displaying, running,
transmitting or storing the program which he is entitled to do.132
The South African Copyright Act does not contain a comparable provision and does not make
express provision for reverse engineering of computer programs. However, on a proper analysis
there is nothing that prevents such conduct. The individual who, by means of reverse
engineering, produces a computer program that is similar or even identical to the original will
nevertheless not infringe copyright if no actual copying of the work took place.133 Even where
the two programs are objectively similar and the later program is based upon the operation of
the earlier program, infringement would still be precluded if it were proven that the second work
was produced without reproducing any part of the source code from the original program.134
The fact that, through reverse engineering, the user is effectively reproducing the function
and/or results produced by the program does not amount to an infringement. The exclusive
129 See the discussion on digital rights management in para 10.3.4 below.
130 De Villiers ‘Computer programs and copyright: The South African Perspective’ 327 fn 80.
131 See for example DL Lee ‘Reverse engineering of computer programs under the DMCA: Recognising a “fair access”
defence’ (2006) 10 Marquette Intellectual Property Law Review 538; D Pruitt ‘Beyond fair use: The right to contract
around copyright protection of reverse engineering in the software industry’ (2006) 6 Chicago-Kent Journal of Intellectual
Property; JG Mills ‘Possible defenses to complaints for copyright infringement and reverse engineering of computer
software: Implications for antitrust and IP law’ (1998) Journal of the Patent and Trademark Office Society 80.
132 S 50BA of the Copyright, Designs and Patents Act 1988.
133 See Dean Handbook of South African Copyright Law 1–75 para 8.6.3.
134 See para 1.8.1.

acts in relation to a computer program are limited to circumstances involving the reproduction
of the set of instructions only. This follows on the fundamental principle that copyright does
not protect the underlying ideas of a work and is limited to the material expression of the work.
However, if the judgment in Pastel Software (Pty) Ltd v Pink Software (Pty) Ltd135 is found
to be applicable to computer programs created after 1992,136 the possibility exists that reverse
engineering will amount to copyright infringement where the function or, particularly, the
results of the computer program are reproduced. Nevertheless, considering the increasing
emphasis on intellectual property as a stimulus to innovation and creativity, it is unlikely
that the court will confirm the Pastel judgment. It is submitted that the Copyright Act should
be amended to include a specific reverse engineering exemption, if only to draw a line under
the Pastel judgment and provide legal certainty.
10.2.2.5.2.4 Decompilation
The act of manipulating the object code form of a computer program in order to discover the
source code is described as decompilation. This process is achieved with the aid of a computer
program and amounts to a re-translation of the object code. However, the process of decompilation
does not reveal the actual source code used to create the object code version. The decompiler
merely analyses the object code and then produces a version of source code that it considers to
be the likely set of instructions from which the object code in question may have originated.
Decompilation is a complex process and in some cases also analyses the internal
instructions, functions and results produced by the program (in object code form) while it
is operational.137 Consequently, the resultant decompiled source code is often highly
accurate and will resemble the original source code to a large extent. As a result, the
decompilation process will amount, at least, to an infringing adaptation of the object code
and thus at least indirectly of the source code and therefore of the computer program.
The practice of decompilation is usually defended as a necessary and fair manner of
dealing with the work, in particular for reasons of interoperability. This refers to the need to
understand the operation of a particular program so that a further program may be developed
to interact with it, contribute additional functionality to the first program or facilitate the
communication of information between the first and second programs. Therefore, the
developer of the second program requires insight into the source code of the first program in
order to develop the second program in an analogous manner. However, interoperability
assurance does not mean that the second program will share any source code with the
decompiled program or the original version – it merely refers to the establishment of common
rules of data interchange between the first and second programs. Decompilation should
therefore not be viewed as a means to facilitate the reproduction of the computer program.
In fact, the decompilation process is expensive, laborious and resource-intensive while
reproduction of a computer program is achievable by less onerous means.
Of course, decompilation would be unnecessary if the developer obtained an authorised
copy of the source code from the original creator. However, this is seldom possible. The
creator may simply refuse to provide the source code for fear that it will be used to create
unauthorised copies of the work or in an attempt to establish a limited monopoly over the
function of the program itself and all compatible programs. If the creator is persuaded to
135 399 JOC (T) 398.

136 See discussion on reproduction at para 10.2.2.5.1.1 above.
137 This process is referred to as dynamic decompilation and requires specialised software to execute and a particularly
powerful computer. See further Lee ‘Reverse engineering of computer programs under the DMCA: Recognising a “fair
access” defence’ 541.

provide a copy of the source code, the licence fee may exceed the amount that the developer
is willing or able to pay. For this reason, a prohibition on decompilation is said to amount
to an undue barrier to innovation in the software industry.
Recognising the need to allow decompilation for the purpose of interoperability, the UK
introduced a fair dealing exemption that provides:
(1) It is not an infringement of copyright for a lawful user of a copy of a computer

program expressed in a low level language—
(a) to convert it into a version expressed in a higher level language, or
(b) incidentally in the course of so converting the program, to copy it, (that is,
to ‘decompile’ it), provided that the conditions in subsection (2) are met.
(2) The conditions are that—
(a) it is necessary to decompile the program to obtain the information necessary
to create an independent program which can be operated with the program
decompiled or with another program (‘the permitted objective’); and
(b) the information so obtained is not used for any purpose other than the
permitted objective.138
This exemption does not per se permit the decompilation of the entire program and will exceed
the scope of fair dealing if it is performed in relation to a portion of the program in excess of
that which is necessary to achieve interoperability.139 The comparable provision in the Digital
Millennium Copyright Act140 specifically limits the reverse engineering right to ‘a particular
portion’ of the program that contains the source code required for interoperability purposes.141
It is clear that the standard decompilation exemption does not permit any authorised
reproduction or adaptation or distribution of computer programs and therefore does not conflict
with the ‘normal exploitation of the work’.142 Nor does the exemption facilitate the utilisation of
the work in a manner for which the creator may reasonably expect to receive a royalty and is
therefore not ‘unreasonably prejudicial to the legitimate interests’143 of the copyright owner.144
Consequently, a decompilation exemption similar to the British or American model
would be compatible with fair dealing under South African copyright law. In so far as it is a
more circumspect and comprehensive provision, it is submitted that the British exemption
is best suited as a model for South Africa.145
138 S 50B of the Copyright, Designs and Patents Act 1988. A similar provision is found in the United States of America in
§1201(f )(1) of the The Digital Millennium Copyright Act 112 Stat 2860 of 1998, which provides the following:
(f ) REVERSE ENGINEERING.—(1) Notwithstanding the provisions of subsection (a)(1)(A), a person who has lawfully
obtained the right to use a copy of a computer program may circumvent a technological measure that effectively
controls access to a particular portion of that program for the sole purpose of identifying and analysing those
elements of the program that are necessary to achieve interoperability of an independently created computer
program with other programs, and that have not previously been readily available to the person engaging in the
circumvention, to the extent any such acts of identification and analysis do not constitute infringement under
this title.
139 S 50B(3)(b) determines that the conditions set by ss 50B(1) and (2) will not be met if the user ‘does not confine the
decompiling to such acts as are necessary to achieve the permitted objective [of interoperability]’.
140 The Digital Millennium Copyright Act § 1201(f )(1).
141 However, the object code is not humanly legible and therefore, in most cases, it would be impossible to determine
which part of the object code contains the requisite elements prior to decompilation of the program. See further Lee
‘Reverse engineering of computer programs under the DMCA: Recognising a “fair access” defence’ at 555.
142 S 13 of the Copyright Act.
143 S 13.
144 See the discussion on fair dealing in para 10.2.2.5.2.1 above.
145 The addition of a decompilation exemption to the Copyright Act has been raised as a future possibility by the Department
of Trade and Industry in the Draft National Policy on Intellectual Property.

10.3 Selected themes relating to intellectual property in regard

to the utilisation of computers
The utilisation of computers in the commercial and other fields impacts primarily on
copyright and trade mark law in the area of intellectual property and we will concentrate on
these branches of the law. We will deal with certain selected themes, namely those that are
considered to be the most important. The role of the Internet in the utilisation of computers
is of paramount importance and significance and our focus will be on Internet-related issues.
Before considering the selected themes in copyright and trade mark law, a brief technical
introduction to the operation of the Internet is provided. An understanding of the basics of
how the Internet operates should make the various legal issues clearer. Where necessary,
any jargon in this field will also be explained.
10.3.1 The Internet

The Internet is, in essence, simply a network of networks of computers, which allows for a
standardised method for transferring digital data (digital bits) within that extended
network.146 Given its military origins, in order for the network to be resilient and enduring,
the Internet was developed on two simple principles: there must be no central control, and
there must be no preference for any particular type of application.147 These two principles
find expression at the foundational level of the Internet, which is also, arguably, the source
of its dynamism, namely in the way data transfer takes place. Unlike other communication
networks, such as the traditional telephone network that preceded it, the Internet does not
rely on a direct, dedicated connection between any two computers seeking to exchange data
and this obviates the need for an established central control. These previous networks,
known as circuit-switched networks, are not as resilient and have limited capacity. In
contrast, the Internet is a packet-routed network.
Data transmitted over the Internet are split into small portions, or packets, which may
be sent via different routes to their final destination. The standard, or protocol, by which
data are split and reassembled at their destination is the Transmission Control/Internet
Protocol (or TCP/IP), which is central to the Internet.148 Because transmission of data may
be distributed, it is imperative that each computer on the network has a unique address to
ensure the accurate delivery of data to the intended recipient computer.149 The Internet is
arranged by giving each computer in the network a unique identification, its Internet
Protocol (IP) address. There are currently two versions of IP-address protocols in use, IPv4
and IPv6.150 These addresses are used, for example, to access material by an Internet user to
its computer which may be held (or hosted) on a particular computer, such as a website.
The problem is that these IP addresses are strings of numbers which are not easy for
humans to remember, probably because the system was never designed with the intention
146 C Gringras The Laws of the Internet 2 ed (2003) 1; Murray Information Technology Law: The Law and Society 16.
147 J Naughton What You Really Need to Know About the Internet: From Gutenberg to Zuckerberg 1 ed (2012) 45–6.
148 The TCP/IP protocol is actually a combination of two protocols: the Transmission Control Protocol (TCP) determines how
the data are split, and the order in which the packets must be recombined at their destination; and, the IP protocol
determines the format and the relevant addresses to ensure delivery of the data. See Naughton 303.
149 Murray Information Technology Law: The Law and Society 24; Naughton 305.
150 Because of the greater demand for IP addresses, with the growth of the Internet, IPv4, which had a 32-bit capacity for
addressing, proved to be inadequate, and IPv6 was introduced, which has a 128-bit capacity. Whereas IPv4 could provide
232, or 4 294 967 296, unique addresses, IPv6 can provide for 2128, or about 3.403 × 1038, unique addresses. See Murray
Information Technology Law: The Law and Society 24.

of making it necessary for people to remember such addresses. Accordingly, following the
emergence of the World Wide Web, a system was devised by which each IP address could
be matched with more user-friendly addresses which are descriptive of what may be found
at that website or of the operator of the website, and, therefore, more easily remembered.
These more easily remembered addresses are the domain names or Uniform Resource
Locators (URLs). For example, the IP address for the Google URL (www.google.com) is
173.194.113.41. The system which ensures that there is a unique matching of IP addresses
and domain names is the Domain Name System (DNS), a database, which is administered
by the Internet Corporation for Assigned Names and Numbers (ICANN).
Apart from the absence of a central authority, the consequence of the second
fundamental principle on which the architecture of the Internet is based is that the network
is indifferent to the content which is encoded in the digital data; it may, for example, be a
piece of text, an image, or an audio file.151 The Internet does not give preference to any
particular type of information, or application. It is claimed that because of the Internet’s
agnosticism regarding the type of content being transmitted, individuals were free to develop
a wide range of applications which could utilise the new network, which led to an explosion
of innovation.152 Some of these applications have transformed how we manage information,
and have created new business opportunities, while threatening the existing business models
of some industries.153
PAUSE FOR Internet/World Wide Web

REFLECTION Because the terms ‘Internet’ and ‘World Wide Web’ (or simply the ‘Web’) are often used
interchangeably (as may even be the case in this chapter), it is worthwhile bearing in mind
that they are not the same thing. The Web is the result of a higher level protocol (Hypertext
Transfer Protocol (HTTP)) which uses the Internet’s foundational TCP/IP protocol; it is, thus,
a specific application of the network established by the Internet.154
10.3.2 Copyright in the digital environment

It is a widely known fact that the content producing industries (i.e. those giving rise to the
production of copyright works) have railed against the Internet as a platform which has
facilitated wholesale piracy of copyright works. Advances in technology have permitted the
digitisation of copyright content, be it literary works, musical works, cinematograph films,
or sound recordings. What has made the development of the Internet and digitisation of
content such a significant problem, and disruptive development, more than any copying of
copyright works that had preceded it, are the following: first, the copying of digital content
does not result in any degradation of the quality of the content (all copies are perfect
reproductions), and, second, the scope of the sharing of copyright works is no longer
confined by physical restrictions or personal exchanges. Works are now infinitely copyable,
and no longer require distribution by physical means. Before the development of the Internet
it was relatively expensive to copy content and its distribution was confined to relatively
small groups.155 That is why the Internet has been described as ‘the most efficient copying
machine built by man’.156
151 Naughton at 305.

152 Naughton at 50–1.
154 Murray at 31–2; Naughton at 4.
156 Murray at 234.

However, the Internet is not a copyright-free space, and copyright infringement in the
digital environment is at least as serious as it is in the physical or analogue environment.
Given the ease with which digitised copyright material can be copied and disseminated,
and the amount of copyright material available on the Internet, the scale of copyright
infringement may not be quantifiable. Before considering the use of the Internet
to facilitate large-scale infringement of copyright works, it is useful to first consider
the protection copyright affords the ‘building blocks’ of the Web, namely, web pages
or websites.
10.3.2.1 Protection of websites

Websites contain a wide range of elements which may each be protectable as
distinct copyright works: text, including compilations of information (protectable as literary
works); pictures, logos and images (protectable as artistic works); animated
footage (protectable as cinematograph films); audio clips (protectable as musical works or
sound recordings); and the source code responsible for their generation (protectable as
computer programs).157 Provided each of these works satisfies the requirements for
copyright protection, that is, they are original, are reduced to a material form, and produced
by a qualified person, or are qualified by virtue of the place of their first publication, they
would enjoy copyright protection.158 The only distinguishing feature of these copyright
works from their traditional forms is that they are digitally stored. Accordingly, we will
examine the extent to which another website can use such content, or refer to such content.
The typical manner in which one website may seek to use a third party’s content is by linking
or framing, and spidering is a technique through which material can be located for purposes
of linking or framing.
For purposes of the discussion that follows it will be assumed that when copyright-
protected material embodied in a website is used this takes place without the specific
authority of the rightsholder in respect of such material.
PAUSE FOR Linking/framing/spidering

REFLECTION Although linking, framing and spidering are not topics which typically spring to mind when
considering intellectual property rights in the digital environment, it is important to bear in
mind that intellectual property rights, such as copyright, may be infringed in more subtle
ways than the obvious unlawful sharing of music and movies.
10.3.2.1.1 Linking
What makes the Web the valuable resource it has become is that it employs hypertexts: text
that contains a selectable link (or hyperlink) – the most common form being a highlighted
word or picture – to other documents or web pages, which can be accessed by Internet users
clicking on such links, icons or text.159 Section 1 of the Electronic Communications and
Transactions Act 160 (ECTA) defines a ‘hyperlink’ as ‘a reference or link from some point in
one data message directing a browser or other technology or functionality to another data
message or point therein or to another place in the same data message’.
157 G Ebersöhn ‘Web sites and copyright’ (2004) 12 Juta’s Business Law 89–90.
158 The fact that the content of a website constitutes digital data satisfies the requirement that it be reduced to a material
form (s 2(2) of the Copyright Act 98 of 1978). Sometimes another stated requirement is that the work must not amount
to improper or scandalous material. See para 1.3 for a discussion of the requirements for subsistence of copyright.
159 Naughton at 52.
160 25 of 2002.

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Figure 1 Example of a hyperlink: Note that hyperlinks may appear in the form of linked text, menu items,
navigation buttons or digital content such as images. All of these instances of hyperlinking appear in the
above example.161
161 Anton Mostert Chair of Intellectual Property Law, Homepage Stellenbosch University, Faculty of Law. Available at www.
sun.ac.za/iplaw (July 2014).

hyperlink
live hyperlinks
hyperlinks
live hyperlink
hyperlink
hyperlinks
hyperlink
hyperlinks
hyperlink
hyperlink
hyperlink
hyperlink
hyperlinks
Figure 2 Example of a news aggregation website. Note that some of the hyperlinked content also contain a
“blurb”, or extract of text, from the full text article to which the referenced content refers.162
162 24.com, News 24 Homepage, Published by 24.com. Available at www.news24.com (July 2014).

Initially, in determining whether a party had infringed the rights in another party’s website, the
courts appeared to have drawn a distinction between a simple (or surface) link, on the one hand,
and a deep link, on the other. A simple link is a link to the homepage of the referenced (or
linked-to) website, without retaining an element of the website which creates the link to it, the
linking site. Deep linking involves the use of a link taking users directly to an internal web page of
the referenced website, bypassing the homepage (or front page) of the other website.163 Besides
the potential loss of revenue which deep linking may cause, deep links may result in an Internet
user not seeing certain notices, policies (e.g. the privacy policy), or contractual terms that the
website owner wishes the user to see, or accept, before using the website.164 However, subsequent
European and US case law indicates that the provision of a link per se, whether a simple link or a
deep link, is unlikely to constitute copyright infringement.165 At a fundamental level, there is no
cogent reason why there should be any distinction between a simple link and a deep link: the Web
is structured as a series of interlinked individual web pages, rather than websites.166 Furthermore,
the definition of ‘hyperlink’ in ECTA does not distinguish between simple links and deep links.
There may be legal as well as pragmatic social welfare reasons why linking, whether by
way of simple links or deep links, should be permitted. A copyright owner who places its
content on a website may, in the absence of technical protection measures restricting access
thereto,167 be assumed to have granted others an implied licence to access and enjoy such
content.168 The European Court of Justice has held that the provision of clickable links to
freely available copyright works on another website did not lead to those works being
communicated to a new public,169 and, accordingly, did not require the authorisation of the
copyright holders pursuant to article 3(1) of the EU Copyright Directive.170 Authorisation
would be required if access to the websites through which the copyright works were initially
communicated was restricted, or the copyright works were no longer available on those
websites.171 The copyright owner, by making such material available on a website, arguably
seeks to attract the widest possible audience, and websites are ranked partly on the basis of
the number of other sites which link to them.172 Furthermore, a web page’s address, or URL,
is intended to provide functional directions and not per se to be protected by copyright; it
would be permissible for others to use that address, or there may be an implied licence to
use it.173 On a more pragmatic ground, and one which would probably be decisive under an
open-ended fair-dealing regime in copyright law, the Web would be of limited social value
if its linking functionality were stifled.174 Hyperlinking is fundamental to the Web, and is said
to form part of its DNA.175 This fact could, in the absence of an express prohibition, also be
the basis for an implied licence in favour of others to link to a website.176
163 Murray Information Technology Law: The Law and Society 224.
164 There are technical means by which Internet users can be forced to go through the homepage, or to ensure that they
are exposed to the necessary advertising, and thereby negate the effects of deep linking.
165 Murray Information Technology Law: The Law and Society 233. While the European position is discussed below, the US
position is exemplified by Ticketmaster Corp et al v Tickets.com Inc 54 USPQ 2d 1344 (CD Cal) 2000.
166 Van der Merwe et al Information and Communications Technology Law 255.
167 Software can, for example, be used to restrict access to the website from specific addresses.
168 Paperboy [2005] ECDR 7 [37].
169 Svensson & Others v Retriever Sverige AB 2014 C–466/12[25].
170 Supra at [28].
171 Supra at [31].
173 Murray 224; Van der Merwe et al Information and Communications Technology Law 257–8.
174 Unlike the relevant US legislation, however, the South African Copyright Act does not have an open-ended approach
to fair-dealing exceptions.
176 Van der Merwe et al Information and Communications Technology Law 255.

This does not mean that third parties have unlimited rights to exploit material on a
website. It appears that whether the copyright in a website is infringed by another website
linking to it depends on the nature of the link (picture, graphic, icon or text) used by the
linking website, that is, the material contained in the link. Whether a link infringes the
copyright in the content of the referenced website depends on whether the link itself used,
or contained, copyright material (e.g. text, a logo, a photograph or other artistic work) of the
referenced website.177 Provided the link itself does not use such copyright material, or any
substantial part thereof, there should be no infringement. For example, sometimes the link,
in addition to displaying the title of an article on the referenced site, also displays an extract
from the article.
As far as a text-based linking is concerned, although the text taken from the referenced
website would generally be too short to comprise a protectable copyright work (or the
copying of a substantial part of a copyright work), this may not always be the case. Text-based
linking can pose a particular problem in the case of aggregation websites (those websites
which gather content from various sources), particularly news aggregation websites.
In Shetland Times Ltd v Wills,178 the plaintiff’s headlines were copied verbatim on the
defendant’s website as hypertext links. These links enabled Internet users to access the
relevant stories as published by the plaintiff.179 The plaintiff sought an interim interdict to
prevent such copying of its headlines and deep linking to its news stories.180 Its cause of action
was copyright infringement, as it alleged that its headlines were protected literary works and
cable programmes.181 The court held that as the headlines consisted of about eight words,
which had been deliberately selected by their author, they could be protected by copyright
and their unauthorised reproduction by the defendant could constitute copyright
infringement. Accordingly, the interim interdict sought was granted.182 Although the issues
were not fully ventilated in the Shetland Times case, as it concerned proceedings for interim
relief, the English Court of Appeal has subsequently confirmed that newspaper headlines are
capable of being original literary works, and could therefore be protected by copyright.183
Furthermore, the display of the opening words of newspaper articles, together with 11-word
extracts from such articles, could constitute a substantial part thereof, and therefore, when
copied, amount prima facie to an infringement of copyright in such articles.184 The South-
African court has also held that sentences or phrases may qualify as separate, distinct literary
works enjoying copyright protection.185 A Belgian court similarly held that Google’s activities
in relation to the aggregation on its Google News service constituted copyright infringement,
and that Google’s conduct was not protected by its rights to freedom of expression or any
177 Where the text or logo has been registered as a trade mark, such reproduction may also constitute trade mark
infringement.
178 Shetland Times Ltd v Wills [1997] FSR 604.
179 At 606.
180 The argument of deep linking, which resulted in Internet users bypassing the plaintiff’s homepage, thereby affecting
the plaintiff’s advertising revenue, was made (see Shetland Times supra 606–7).
181 Shetland Times v Wills 607. The Copyright, Designs and Patents Act 1988 was amended in 2003, and the amending
legislation abolished cable programmes as a separate category of copyright work (or type of broadcast), and also
provided that Internet transmissions would not ordinarily be considered to be broadcasts (s 6). This had the effect of
setting aside the court’s finding that the hyperlinks could also constitute the inclusion of a cable programme in another
cable programme.
182 Shetland Times v Wills 609. In a subsequent ECJ decision, the court held that 11-word extracts by a media monitoring
business from newspaper and periodical articles, for circulation to its clients, could constitute copyright infringement
(Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20).
183 Newspaper Licensing Agency v Meltwater Holding [2011] EWCA Civ 890 [22].
184 At [28].
185 Juta & Company Ltd and Others v De Koker and Others 415 JOC (T) 421.

fair-dealing exceptions.186 In the most recent decision of the European Court of Justice,
involving what appears to have been a news aggregation service, it is not clear whether the
hyperlinks to the news stories provided by the aggregation service as such were copies of the
headlines of the articles which they linked to (or included extracts from those articles), as the
issue was essentially confined to whether the mere provision of such links amounted to a
communication to the public of the newspaper articles, as copyright works, which required
the copyright holders’ consent.187 As stated above, the court held that the provision of
hyperlinks to freely available copyright works on another website did not lead to those works
being communicated to a new public,188 and, accordingly, did not require the authorisation
of the copyright holders pursuant to article 3(1) of the EU Copyright Directive.189
In addition, news aggregation sites sometimes create copies (also known as mirroring,
which is a type of caching) of the relevant web pages they link to (and store them) in order to
make them available to users should the original website be unavailable. Such copying, if
unauthorised, would result in copyright infringement.190 Furthermore, there would be copyright
infringement if the copyright work was no longer available on the initial website, but was still
available on the linking website.191 While the potential liability for the infringing conduct of
news aggregation websites, particularly those that simply gather news content which can be
accessed through their websites, has largely been confined to the operators of such aggregation
websites, some news aggregators’ offerings may also result in their clients being liable for
copyright infringement. This is particularly the case where an aggregator’s activities, based on
criteria specified by their client, include the processing and distribution of extracts of third-party
content, possibly by way of emails, which are considered to be of a non-transient nature.
However, the mere viewing of such content by the client on the aggregator’s website would not
amount to copyright infringement by the Internet user, as such viewing (or browsing) is
exempted as a temporary reproduction under article 5(1) of the Copyright Directive.192
PAUSE FOR Electronic Communications and Transactions Act (ECTA)

REFLECTION The Electronic Communications and Transactions Act 25 of 2002 covers a wide variety of
matters, including the regulation of electronic communications and devices. It seeks, for
example, to create so-called ‘cybercrime’ offences such as hacking (s 86(1)), cracking (that
is, the alteration, copying, or destruction, of information on computer systems (s 86(2)), and
using devices to overcome technical security measures designed to protect such data or access
thereto (s 86(3) and (4)). Although these provisions are not primarily concerned with copyright
protection, they can complement copyright protection, particularly of digital copyright works
such as electronic databases which require authorisation to access subscriptions and
passwords, for example. If such copyright works are accessed in an unauthorised manner, such
conduct may constitute a criminal offence.
186 Google Inc v Copiepresse SCRL [2007] ECDR 5. See also Danske Dagblades Forening v Newsbooster [2003] ECDR 5. In
contrast, the Dutch courts have held, based on journalistic exceptions in Dutch law, that deep linking in a news
aggregation service did not constitute copyright infringement (Algemeen Dagblad BV & Others v Eureka Internetdiensten
[2002] ECDR 1).
187 Svensson v Retriever Sverige [14].
188 [25].
189 [28].
190 Google Inc v Copiepresse SCRL [2007] ECDR 5.
191 Svensson v Retriever Sverige [31].
192 Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Others [2013] UKSC 18.

10.3.2.1.2 Framing
Until the recent decision of the European Court of Justice, framing was generally considered
to be substantively different to linking.193 Framing concerns a situation where the content
of the referenced web page, owned by a third party, is displayed within the web page which
links to or references it.194 Framing seeks to keep the Internet user within the existing web
page or website, and this is essentially achieved by incorporating the content of the
referenced web page to look as though it is part of the linking (framing) website.195 In the
case of linking, the web browser would replace the web page of the linking website with a
web page of the referenced website, displaying the referenced web page’s Web address, or
launch a new web page for the referenced website (again displaying its Web address).
Website owners object to their web pages being framed by another website, because it may
be financially harmful to the referenced website as framing typically strips out any
advertising that appears on such website.
It has been suggested that with framing, unlike linking, there is a good case for arguing that
the operator of the framing website has made an unauthorised reproduction of the contents
of the referenced web page, thereby infringing copyright.196 Such liability for infringement will
only be exempted if use of the copyright work falls within a fair-dealing exception, such as the
criticism or review thereof, or if the prevention of such use would infringe a constitutional
right, such as freedom of expression.197 Furthermore, given the greater likelihood of confusion
on the part of the Internet user, or the possible misrepresentation made by the website operator
that frames a third party’s content, there may also be instances where such conduct could
amount to passing off or unlawful competition.198 There have been cases in the US which have
indicated, or found, that framing constitutes copyright infringement.199
10.3.2.1.3 Spidering
While spidering may be different to linking or framing, in that it generally precedes possible
linking or framing, it is an activity which may be harmful to the interest of website owners.
Spiders, bots, webcrawlers or crawlers are computer programs which seek out (scrape or crawl)
specific information on the Internet.200 These programs are used by, amongst others, search
engines, aggregation websites and comparison websites in order to create entries or extracts
for their websites (so-called indexing and scraping201). Because these entries or extracts involve
the copying of a substantial part of a copyright work, as discussed in relation to linking above,
this does constitute copyright infringement.202 From a technical perspective, the biggest
concern for website owners is that spiders, due to their repeated targeting of a website, can
distort traffic figures for that website and significantly affect its performance.
In two early US cases the courts considered spidering to be unlawful on the basis of
trespass, despite the fact that the websites which were the subject of spidering were
193 Svensson v Retriever Sverige AB.

194 Inline linking, or hotlinking, can be considered to be a form of framing as content, typically an image, from the
referenced website is incorporated into the web page which links to it.
195 G Ebersöhn ‘Framing and intellectual property law’ (2003) 11 Juta’s Business Law 49.
196 50.
197 51.
198 51–2.
199 See, for example, Futuredontics Inc v Applied Annagramics Inc 45 USPQ 2d 2005 (CD Cal 1998); Kelly et al v Arriba Soft
Corp et al 280 F 3d 934 (9th Cir) 2002.
200 R Buys Cyberlaw@SAII: The Law of the Internet in South Africa 2 ed (2008) 15.
202 Newspaper Licensing Agency Ltd & Others v Meltwater Holding BV & Others [2] and [23].

accessible to the general public.203 For example, in the eBay v Bidder’s Edge case, Bidder’s
Edge was an aggregator of auction listings from various auction sites, including eBay. In
providing this service, it reportedly accessed the eBay website 100 000 times a day.204 The
court granted eBay an interim injunction preventing Bidder’s Edge from accessing its website
on the basis of trespass: eBay’s servers were private property, to which eBay granted the
public conditional access, and the conduct of Bidder’s Edge amounted to the meddling with
or use of eBay’s personal property.205
However, in the subsequent Ticketmaster case, the court held that the information which
Tickets.Com gathered from the Ticketmaster website (venues of concerts and ticket prices)
was factual data not protected by US copyright law.206 It would not be contrary to that policy
to allow the use of spiders to acquire unprotected public information found on websites.207
The court also suggested that even in the case of copyright material, the gathering of
unprotected public information found on websites may amount to fair dealing.208 Unlike the
eBay case, because the effect on the performance of the Ticketmaster website was not
significant, the claim for trespassing was dismissed, and there was no evidence that the
spidering had interfered with Ticketmaster’s business.209 The approach in the Ticketmaster
case was subsequently confirmed,210 and the US position, thus, appears to be that unless the
plaintiff is able to establish harm, or the likelihood of harm, to its service or network as a
consequence of the defendant’s activities, an action for trespass will not succeed.
There has been no case law in the UK which has sought to rely on property law to address
similar conduct.211 Trespass is a specific tort under Anglo-American law, which follows a
casuistic approach to tort law, with specific actions and requirements.212
PAUSE FOR Aquilian action

REFLECTION South African law of delict is based on a general action, and does not recognise a separate
delict of trespass.213 In order to determine whether conduct such as indexing and scraping will
also constitute an actionable delict in South African law, the particular case will have to be
determined in accordance with the general principles of delictual liability. Put differently, it will
simply be a specific application of the general Aquilian action. This would require a
determination of whether such conduct is wrongful, based on the relevant policy considerations.
It is submitted that, given the fact that these websites were generally accessible by members
of the public, it would place a substantial burden on the website operator to establish the
wrongfulness of such conduct. But it is certainly possible that conduct in relation to a website
may be wrongful if it affects the performance of the website or seeks to unfairly exploit the
efforts of the website operator.214 The delict of unlawful competition in South African law is
discussed in chapter 3.
203 eBay v Bidder’s Edge 100 F Supp 2d 1058 (ND Cal 2000); Oyster Software Inc v Forms Processing Inc & Others 2001 US
Dist LEXIS 22520.
204 1063.
205 1070–1.
206 Ticketmaster Corp v Tickets.Com Inc 2003 US Dist LEXIS 6483 15. It is submitted that, given the lower sweat-of-the-brow
standard for originality, the collection of similar information would be protected by copyright under South African law.
207 Ticketmaster Corp v Tickets.Com Inc 12.
208 15.
209 12.
210 Intel Corp v Hamidi 2003 71 P 3d 296. See also Assessment Technologies v Wiredata Inc 2003 350 F 3d 640 (7th Cir).
212 JM Neethling, JM Potgieter & PJ Visser Law of Delict 5 ed (2006) 4.
213 PQR Boberg The Law of Delict (1984) 170.
214 Incidentally, criminal acts of trespass require a physical act in respect of land or a building ( s 1 of the Trespass Act 6
of 1959).

Conduct such as indexing and scraping could in certain circumstances constitute unlawful
competition. An example of such possible unlawful conduct is illustrated in a French
decision, where the court held that the gathering, and subsequent publishing, of financial
information by the second defendant obtained from the plaintiff’s website amounted to both
an infringement of the plaintiff’s sui generis database right215 and unlawful competition.216
The plaintiff and the second defendant were competitors, as both companies transmitted
financial news over the Internet.217 As a result of the plaintiff’s efforts in relation to the
collection, verification and presentation of the information it had database rights therein.218
Although the second defendant was gathering only small amounts of information from the
plaintiff’s website, there was substantial infringement of the database right because of the
repeated and systematic extraction of insubstantial parts thereof, and such conduct was
prejudicial to the interests of the plaintiff.219 Further, the second defendant’s conduct enabled
it to compete with the plaintiff’s website without expending any effort, and misrepresent the
quality of its service. This caused financial harm to the plaintiff and amounted to unlawful
competition.220
Thus, particularly in the context of competitors, besides a possible claim for copyright
infringement, spidering activities may amount to unlawful competition221 if such activities
interfere with the performance of the referenced website, or if the linking site takes unfair
advantage of the content on the referenced website, causing harm to the owner of the
referenced website. In addition, spidering may also breach the terms of the relevant website.
From a technological perspective, some spidering software allows websites to indicate
whether they permit spidering.
10.3.2.1.4 Database protection

Depending on the nature of a website, it may qualify as a database, namely, an organised
collection of information. In Europe, unlike the position in South Africa, a sui generis
database right is available, which seeks to protect the investment in obtaining, verifying or
presenting the contents of the database.222 If the selection or arrangement of the contents
of the database also evidences some creativity on the part of its author, the database will be
considered to be original, and will also be protected by copyright.223 If the referenced website
does qualify as a database, it could, arguably, be infringed by exploitation through deep
linking, should this constitute a reutilisation or extraction of such database, or the systematic
exploitation thereof.224
Given the rather low threshold for copyright protection in South Africa, which simply
requires that the creation of a protected work must have involved the expenditure of
sufficient effort (labour), skill or judgement (namely, the industriousness, ‘sweat-of-the-
brow’, or the skill-or-labour standard), even databases which are not considered original
under the EU Database Directive may receive copyright protection in South Africa.225 South
215 See para 10.3.2.1.4.

216 PRLine SA v Communication & Sales SA & Another [2002] ECDR 2.
217 [22].
218 [19].
219 [23].
220 [30]–[32].
221 Unlawful competition is, of course, simply a specific application of the general Aquilian action. See para 3.2.1.
222 Art 7 Directive on the Legal Protection of Databases 96/9/EC.
223 Art 3 Directive on the Legal Protection of Databases.
224 Art 7 Directive on the Legal Protection of Databases.
225 A database could be considered to be a compilation pursuant to s 1(1) (s.v. ‘literary work’) of the Copyright Act. See
paras 1.2.2.1 and 1.3.2.

African law, therefore, arguably, provides wider protection for compilations and, provided
the exploitation is in respect of a substantial part of the compilation, it should amount to
copyright infringement.
10.3.2.1.5 Other forms of possible protection for websites

Besides copyright protection, there may be other forms of possible legal protection
applicable to the material copyright seeks to protect, which may be available to the website
operator to prevent the exploitation of its content.
10.3.2.1.5.1 Passing off or unlawful competition

Even if the particular conduct in relation to a referenced website does not amount to
copyright or trade mark infringement, there may be cases where conduct may be actionable
as a form of passing off or amount to unlawful competition. Websites may serve a variety of
purposes. For example, they may be used to provide Internet users with information about
the products or services of a firm, they may seek to generate income in a more direct manner
(by allowing online purchases), or provide information of interest. If any conduct unlawfully
interferes with the ability of a website operator to fulfil its intended purpose, or takes unfair
advantage of its website, causing or threatening to cause harm, the website operator should
have the right to prevent or stop such harm.
For example, where hyperlinks, or framing, are presented or used in such a way that they
create confusion as to the relationship between the two websites by suggesting, for example,
that there is a commercial connection between the owners of the two websites, there may
be a claim for passing off. Further, in the Shetland Times case the court noted that the
defendant’s conduct allowed Internet users to bypass the plaintiff’s homepage, thereby
avoiding exposure to the advertising that appeared there.226 Given the fact that Internet
advertising income is often based on the number of users who click on an advertiser’s
advertisement, this may cause the plaintiff financial harm. Although no loss had been
established by the plaintiff in that case, the court was cognisant of the prospect of loss of
potential advertising revenue, which would be difficult to quantify, if the defendant’s conduct
were allowed to continue.227 However, given the fact that there are technical means by which
Internet users can be forced to go through the homepage, or to ensure that they are exposed
to the necessary advertising, the conduct complained of would have to be particularly
deleterious to the website owner.
10.3.2.1.5.2 Contract
Given the fact that the provision of a link to a third party’s website per se does not infringe
intellectual property rights of website owners, website owners seek to establish some
type of control over those wishing to link to their websites. To this end, website
owners often seek to prohibit linking, framing or spidering, or stipulate conditions for
these practices through the incorporation of contractual provisions (terms and conditions)
on their websites. An action for breach of contract may therefore theoretically arise if
another website performs such acts in relation to the website without the necessary
authorisation, or contrary to the stipulated conditions. However, the enforceability of
provisions aiming to prevent or limit linking, framing or spidering has not been fully
considered by the courts. The prospects of such provisions being enforceable would be
226 Shetland Times v Wills supra 607–7.

227 609.

greatly increased if they were brought to the notice of third parties or were readily
accessible. Ideally, third parties should be forced to indicate their acceptance of such
provisions by means of a clickwrap agreement. 228 For example, in the US case of
Ticketmaster v Tickets.com the court held that the website terms were not enforceable since
they could be bypassed by Internet users.229
10.3.2.2 Caching
The most basic exclusive right, or restricted act, afforded to the copyright owner in relation
to a copyright work is the right to reproduce or copy the work, in any manner or form.230
Thus, in the absence of a fair-dealing defence, the copying of a protected work or any
substantial part thereof will constitute copyright infringement.
Furthermore, reproduction of a copyright work can take place in any form (which would
include any digital format), and is not confined to the making of a reproduction in material
form.231 There is also no requirement that the infringing reproduction should be of a
permanent nature.232 This fact means that making a temporary copy of a copyright work
would constitute copyright infringement.
In the context of web browsing, caching is a technical measure which ensures the faster
and cheaper delivery of web pages to an end user. When an end user visits a web page, the
data needed to transmit the requested information will initially come from the host server
where the files for the particular web page are stored. Temporary copies, or ‘cache copies’,
of the web page will be made on the server of the Internet service provider used by the end
user (and on the end user’s computer). This enables the Internet service provider to deliver
such web page faster and more cheaply, if the end user (or another end user) subsequently
wants to access the same web page. A problem with caching is that end users do not
necessarily access the most recent version of the particular web page, as the web page on
the host server may have been changed.
The technical reality about how the Internet, and computers, function is that every
time an Internet user browses a website or listens to a song online, a copy of that content
is made on the user’s computer, albeit temporarily. In other words, when content is
downloaded for viewing or listening on the Internet, the Internet user is making a
reproduction thereof which, if not authorised by the copyright owner, would constitute
copyright infringement. Furthermore, when data are transmitted over the Internet,
because the transmission of data is distributed by means of packet switching, copies of
the packets of data (and therefore the content they represent) are made on any
intermediary computer they may have passed through.
In the context of the Internet, where access is only possible through a series of service
providers and third parties who provide the infrastructure for communication, these
intermediaries – whose role may be largely passive – are arguably also infringing copyright,
or may be liable on a contributory basis for copyright infringement, if their services are being
228 Clickwrap (or click-through) agreements are agreements created when users indicate their acceptance of the specified
terms by clicking on ‘I agree’ or ‘Accept’ when these are presented to the user.
229 Ticketmaster Corp v Tickets.Com Inc 2003 US Dist LEXIS 6483 6–9.
230 Although the Copyright Act refers to the exclusive right of reproduction, our court has simply equated ‘reproduction’
within the meaning of the Act with ‘copying’, and these terms will be used interchangeably (see Galago Publishers (Pty)
Ltd and Another v Erasmus 1989 (1) SA 276 (A) 280). Reproduction is a restricted act in respect of all types of copyright
works, except sound recordings and programme-carrying signals. There is a substantively similar restricted act to making
a reproduction in respect of sound recordings, viz the making of a ‘record’ (s 9(a)).
231 Dean Handbook on South African Copyright Law 1–68 and 1–69.
232 Pastel Software (Pty) Ltd v Pink Software (Pty) Ltd and Another (1991) 399 JOC (T) 409. See also para 10.2.2.5.1.2.

used when copyright is infringed. This exposes these intermediaries to possible claims of
copyright infringement and makes them convenient targets for copyright owners who seek
to prevent infringement of their works. Of course, if a copyrighted work is made available on
the Internet by the copyright owner, without restricting access thereto, it may be assumed
that the copyright owner has granted others an implied licence to access and enjoy such
content. In Europe, certainty was introduced in relation to the position of Internet users and
intermediaries by way of article 5 of the EU Copyright Directive (also sometimes referred to
as the Information Society Directive).
Pursuant to article 5 of the Copyright Directive, copyright is not infringed by the
temporary copying which is a necessary part of a technological process and enables the
transmission in a network between third parties by an intermediary, or lawful use of the
work. Such copying must also not have an independent economic significance.233 While this
provision may be helpful for Internet end users, it does not deal with the potential liability
of intermediaries who are unwittingly involved in the unlawful (that is, infringing)
transmission of copyright material (and other unlawful content, such as defamatory
material) between third parties. Furthermore, intermediaries are not able to rely on the
exemption if the copying is not essential, and if the caching of web pages is to enhance their
transmission to third parties as part of their business offering to users.234 As will be indicated
below, although South African law does provide protection to certain intermediaries against
claims of copyright infringement, Internet end users are not expressly protected against such
claims in relation to their browsing activities. However, as already indicated, there may be
more than an arguable case that Internet end users have an implied licence to access the
copyright content made available on the Internet by copyright owners who have not
restricted access thereto.
The reason why the position of intermediaries, such as Internet service providers
(ISPs), is so fraught is that copyright owners would for tactical reasons rather seek to hold
them liable for infringement than pursue the individual infringers. These intermediaries
are more likely to be financially capable of satisfying any judgment for damages, as
opposed to the individuals who are responsible for initiating the unauthorised exchange
of copyright works (the primary infringers), who may very well be impecunious. It may
also be easier to pursue the intermediaries, who may be much fewer in number, than the
countless primary infringers, who would need to be identified and pursued through the
courts of the various jurisdictions in which they may be present. Another reason for
seeking to pursue intermediaries like ISPs is that they often retain copies of the most
popular content sought by Internet users, such as websites, in order to facilitate speedier
access. As ISPs do so as part of their business, they cannot rely on the aforementioned
article 5 exemption. The process in terms of which these copies are temporarily made is
referred to as caching. Because of their importance in facilitating access to the Internet, it
was considered necessary to protect certain intermediaries from incurring liability in
respect of some forms of conduct, such as caching, that may be performed to improve the
efficiency of Internet access.
Accordingly, in South Africa ECTA affords intermediaries, technically
‘service providers’, various forms of exemption from liability, depending on their role
in the dissemination of information over the Internet, that is, whether they simply
facilitate transmission of the information, distribute information or control its publication.
233 Art 5 has been given effect in the UK through s 28A of the Copyright, Designs and Patents Act 1988.
234 Edwards & Waelde Law and the Internet 233.

The Act defines a ‘service provider’ as any person who provides information
system services.235 While the widest exemption is given to intermediaries who simply
transmit data (so-called mere conduits),236 section 74 also affords intermediaries who
cache information extensive protection. A service provider will not be liable for the
automatic, intermediate and temporary storage of data to facilitate its transmission,
provided that, inter alia: it does not modify such data; does so in accordance with industry
norms; and removes or disables access to the data upon receiving a take-down notice.
This provision is almost identical to the equivalent provision, article 13, relating to caching
in the EU E-Commerce Directive.237 The only substantive difference is that the E-Commerce
Directive provides that service providers will lose immunity from liability if they fail
to remove defamatory material once they have actual knowledge thereof. In contrast,
ECTA provides that a service provider only needs to remove data upon receipt of a take-
down notice, which may afford service providers greater certainty about when content
needs to be removed.
10.3.2.3 File sharing

As indicated, the combination of the digitisation of copyright content and the emergence of
the Internet (and subsequent technological advances) has increased the illegal copying of
content to an extent that was not contemplated before its emergence, which has seen the
music and film content industries (the content industry) mount a concerted effort to prevent
such copying. The legal proceedings launched by the copyright industry have been widely
covered in the media. What will be illustrated in the discussion in this section is that there
have been continuing attempts to develop technologies to circumvent copyright law. The
copyright industry has achieved considerable success through the courts in stopping large-
scale copyright infringement, despite the innovative technological developments used to
copy content.
Although there have been no reported cases in South Africa in which copyright holders
have instituted legal proceedings concerning copyright infringement as a consequence of
file sharing, it may just be a matter of time before such cases emerge. There have been
reports of foreign copyright holders who have requested details of subscribers who have
allegedly been involved in copyright infringement, from local ISPs. The local ISPs have
refused to divulge such information without a court order in terms of the Regulation of
Interception of Communications and Provision of Communication-related Information
Act,238 and to date no court orders appear to have been sought to compel them to do so.239
This position could change if legislation requires ISPs to disclose details of subscribers. In
the UK, for example, pursuant to the Digital Economy Act,240 ISPs will be obliged to provide
copyright owners with anonymised copyright infringement lists of subscribers involved in
alleged copyright infringement.241 On the basis of this information, copyright owners could
apply to the courts for an order compelling the ISPs to disclose the names and addresses
of the relevant subscribers.
235 S 70 and s 1 (s.v. ‘information system services’) of the Electronic Communications and Transactions Act 25 of 2002.
236 S 73.
237 Directive on Certain Legal Aspects of Electronic Commerce in the Internal Market 2000/31/EC.
238 Regulation of Interception of Communications and Provision of Communication-related Information Act 70 of 2002.
239 ‘SA ADSL subscribers using torrents being watched’ www.moneyweb.co.za/moneyweb-technology-news/sa-adsl-
subscribers-using-torrents-being-watched (accessed 3 July 2013).
240 Digital Economy Act 2010.
241 S 3.

10.3.2.3.1 Peer-to-peer file sharing

The Napster case242 is very well known, given the extensive media coverage it enjoyed at the
time. However, it is important to understand the legal issues involved and how the law
developed subsequently to deal with further attempts by file-sharing technologies to avoid
similarly infringing copyright. The Napster software, created by Shawn Fanning, enabled
users to directly swap MP3 files – the format in which audio recordings were stored – with
each other: so-called peer-to-peer (or P2P) file-sharing. The plaintiffs were in the business
of recording, distributing and selling copyright musical compositions and sound
recordings.243
What the Napster software effectively did was to turn individual users’ computers into
servers. Each user created a ‘shared’ folder containing the content they were willing to share
with other users. When a Napster user made the dial-up connection with his ISP, its software
would determine the user’s IP address and compile a list of the content in the user’s shared
folder. This information was then sent to a permanently connected server run by Napster
(the ‘central indexing server’), which logged and stored this information. Other users could
then search Napster’s central indexing server for particular content, and, if found, simply
initiate a direct file transfer between the two computers.244
The plaintiffs alleged that Napster was a contributory and vicarious copyright infringer,
as Napster had designed and was operating a system which facilitated the transmission and
retention of sound recordings.245 It had been established that, prima facie, Napster users
were responsible for direct infringement of the plaintiffs’ copyright works.246 Napster harmed
the plaintiffs’ market in at least two ways: it reduced audio CD sales, and it raised barriers
to the plaintiffs’ entry into the market for the digital downloading of music.247 Having digital
downloads available for free on the Napster system necessarily harmed the plaintiffs’
attempts to charge for the same downloads.248 However, Napster maintained that its service
allowed for the fair uses of sampling and space-shifting.249
Napster contended that its users downloaded MP3 files to ‘sample’ the music in order
to decide whether to purchase the recording. However, legitimate free downloads typically
provided by the record companies consisted of 30–60 second samples or were full songs
programmed to ‘time out,’ that is, to exist only for a short time on the downloader’s computer,
not full, free and permanent copies of the recording.250 Napster claimed that space-shifting
– the downloading of MP3 music files in order to listen to music which the Napster user
already owns on audio CD – was fair use. However, the court held that, unlike the Napster
system, previous instances of shifting did not result in the simultaneous distribution of the
copyright material to the general public; such time or space-shifting of copyright material
exposed the material only to the original user.251
A person will be liable as a contributory infringer if it has knowledge of the infringing
nature of the activity, and encourages, or assists in, such infringement.252 Napster, by its
242 A&M Records Inc & Others v Napster Inc & Others 2001 239 F 3d 1004 (9th Cir).
243 1010–1.
244 1011–2.
245 1011.
246 1013.
247 1016.
248 1017.
249 1017.
250 1018.
251 1019.
252 1019.

conduct, knowingly encouraged and assisted the infringement of plaintiffs’ copyright.253

Napster could also be vicariously liable if it failed to affirmatively use its ability to patrol its
system and preclude access to potentially infringing files listed in its search index.254 Its
failure to police the system, combined with the fact that it benefitted financially from the
continuing availability of infringing files on its system, meant that it could be vicariously
liable.255 Accordingly, a preliminary injunction against Napster’s participation in copyright
infringement was warranted and required.256 The injunction did not mean that Napster was
forced to shut down its service as the software could be used for non-infringing purposes.
Furthermore, Napster could not be expected to block content based simply on the file names,
as these were created by users, which meant that they were not definitive of what those files
contained. However, the court ordered Napster to block access to infringing content if it was
notified thereof by the plaintiffs. Napster also had to police its system.257 It was actually the
administrative burden, and associated costs, of complying with the court order that forced
Napster to close down.258
10.3.2.3.2 Joint wrongdoing or contributory infringement

As the infringement of copyright can also constitute a statutory delict, or statutory offence,
the general delictual or criminal principles concerning joint wrongdoing, or participation,
may also be applicable in relation to particular conduct. Through the application of these
principles, liability can extend beyond the principal perpetrator to persons (joint
wrongdoers) who instigated or aided or abetted in the infringing conduct. In any event, as
far as South Africa is concerned, section 23(1) of the Copyright Act extends liability for
copyright infringement to any person who causes another to do any of the exclusive acts,
reserved for the copyright owner, in relation to a copyright work. Accordingly, someone may
be liable for primary infringement simply by having instigated the particular infringing
conduct, or having instructed another to perform the infringing act. Such liability does not
require that there must have been knowledge of the unlawful nature of the conduct.
Given the fact that the Napster decision did not suggest that P2P technology was illegal
in itself, there was an attempt to remove the generally perceived Achilles heel in the Napster
system, the central indexing server, and in so doing, avoid liability for copyright
infringement.259 This led to the development of decentralised or semi-structured P2P
services, as evidenced in the subsequent Grokster case.260 In a decentralised service (such
as Morpheus) each user computer on the system became a node (or local server): when a
new user logs on, a connection is established with the nearest node. If such node does not
have the requested material, the request is passed on to other computers to which that node
is connected. This process continues until a node is found containing the material and the
address of such computer is sent back to the person who requested the material. A direct
connection can then be established between the two computers. In a semi-structured system
(such as Grokster), some users’ computers in the network are ‘supernodes’ and requests for
material from users on the network are handled by, or via, these supernodes.261 The providers
253 A&M Records Inc & Others v Napster Inc & Others 1020.
254 1027.
255 1024.
256 1027.
257 1027.
259 241–2.
260 Metro-Goldwyn-Mayer Studios Inc & Others v Grokster Ltd & Others 2005 545 US 913.
261 Murray 242.

of these decentralised or semi-structured P2P services argued that they did not have
knowledge of their users’ activities or the ability to control them. In other words, there was
no basis on which they could be held liable for contributory or vicarious copyright
infringement.
In Grokster, the court held that at common law a person will be liable for the
infringing acts of others if such person provides the means for such infringing acts and
expressly promotes such infringing conduct. Mere knowledge by the manufacturer of a
product that such product can be used to infringe copyright is not sufficient to render such
person liable for such infringement.262 Liability is dependent on there being active
encouragement (or inducement) of infringement.263 There were three notable factors which
evidenced such intention to promote or induce infringement. First, the respondents targeted
former Napster users as users of that system were known to be copyright infringers. Second,
the respondents made no attempt to develop filtering tools, or other mechanisms, to
diminish the infringing activity using their software. Third, the respondents made money by
selling advertising space, which required them to increase the number of users, and this was
achieved because of the widespread copyright infringement which their system facilitated.264
In an Australian case concerning a similar decentralised system, Kazaa (the successor
of Napster), the court also found that the use of the software operating the system
infringed, or was likely to infringe, copyright. The court held that the respondents knew
that the predominant use of Kazaa was for the sharing of copyright-infringing material.
None of them had an interest in preventing or curtailing that use; if anything, the contrary
was true. Each of the respondents was at least acquiescent in the use of Kazaa for
copyright-infringing activities.265 Even if there was no central server, as in the Napster case,
other measures were available to the respondents that would have prevented (or at least
limited) copyright infringements by Kazaa users. Although the respondents did not
themselves engage in copying the applicants’ sound recordings or communicating them
to the public, they may be said to have authorised users to infringe the applicants’
copyright in their sound recordings.266 Section 101 of the Australian Copyright Act of 1968,
which concerns primary infringement, provides that copyright is infringed by a person
who, not being the owner of the copyright and without the licence of the copyright owner,
authorises another person to do an infringing act in Australia. 267 Pursuant to section
101(1A), in determining whether someone has authorised an infringing act, the following
factors may be taken into account: (a) the extent (if any) of the person’s power to prevent
the doing of the act concerned; (b) the nature of any relationship existing between that
person and the person who did the act concerned; (c) whether the person took any other
reasonable steps to prevent or avoid the doing of the act, including whether the person
complied with any relevant industry codes of practice.268
Sharman, the principal respondent in the matter, while ultimately being found to have
infringed copyright, was not held to have authorised copyright infringement by Kazaa users
262 Metro-Goldwyn-Mayer Studios v Grokster 2005 545 US 935.

263 942.
264 939.
265 Universal Music Australia Pty Ltd & Others v Sharman License Holdings Ltd & Others [2005] FCA 1242 [194].
266 [43].
267 [357]. The section provides that ‘Copyright is infringed by a person who, not being the owner of the copyright, and
without the licence of the owner of the copyright, does in Australia, or authorises the doing in Australia of, any act
comprised in the copyright.’ This is similar to s 23(1) of the Copyright Act , which uses the phrase ‘or cause another to
do’ instead of ‘or authorises the doing’.
268 [359].

merely on account of the fact that it provided the facilities that they used in order to infringe
the applicants’ copyright.269 A claim of authorisation requires that the person should have
sanctioned, approved or countenanced the infringement. It is not essential that there should
be direct evidence of the person’s attitude; inactivity or indifference, exhibited by acts of
commission or omission, may reach a level that supports an inference of authorisation or
permission.270 The respondents were found to have authorised the infringing acts by their
conduct. First, despite the fact that the Kazaa website contained warnings against copyright
infringement, the respondents were aware that those measures were ineffective, and that
the Kazaa system was widely used for the sharing of copyright files.271 Second, there were
technical measures that would have enabled the respondents to reduce the sharing of
copyright files which they did not implement as it was against their financial interest to do
so.272 Third, the respondents’ website actively exhorted users to increase their file-sharing,
and promoted the idea that copyright infringement was acceptable.273 As in the Grokster
case, the respondents were ordered to modify the Kazaa system in a targeted way, so as to
protect the applicants’ copyright interests.
10.3.2.3.3 BitTorrents and more

The BitTorrent technology is different to P2P file-sharing technology. It is a specific file-sharing
protocol which allows users to download (and upload) a file from (and to) multiple users, rather
than a single source, using software known as a BitTorrent client (for example, BitTornado,
µTorrent and BitLord).274 The protocol splits larger files into smaller packets. In order to
download (leech) a particular file (containing the copyright content), a user has to obtain a
Torrent file which contains information about the various locations of copies of the file, which
can be downloaded simultaneously from multiple other users (known as seeds). These Torrent
files are made available through BitTorrent indexes (or trackers) such as The Pirate Bay.275
The founders of The Pirate Bay were prosecuted in the Swedish court for complicity in
making copyright material available.276 The defendants argued that the indexing service it
provided was analogous to that provided by search engines like Google; their service did not
check whether the Torrent file which was indexed contained copyrighted content. In
rejecting this analogy, the court held that, unlike Google, it actively sought to assist copyright
infringement and profited from such conduct.277
The illegal file-sharers have constantly sought to find new methods of avoiding detection,
or seeking to make the task of the content industry significantly more difficult in trying to
prevent their activities. For example, sophisticated illegal file-sharers already employ
technological means to conceal their computers’ Internet Protocol (IP) addresses, thereby
269 Universal Music Australia Pty Ltd & Others v Sharman License Holdings Ltd & Others [2005] FCA 1242 [396]. There is an
express provision in the Australian Copyright Act, section 112E, which states: ‘A person … who provides facilities for
making, or facilitating the making of, a communication is not taken to have authorised any infringement of copyright
in an audio-visual item merely because another person uses the facilities so provided to do something the right to do
which is included in the copyright.’
270 [402].
271 [407].
272 [466].
273 [405].
274 Murray supra 250–1.
275 251.
276 The case, No B13301–06, by the State in the District Court of Stockholm was brought against Frederik Lennart Neijj and
Others. An unofficial translation of the judgment can be found at www.infpi.org/content/library/Pirate-Bay-verdict.
English-translation.pdf.
277 252.

making it appear as though they are operating from another location. Two relatively new
methods of file-sharing have been the use of encrypted cyberlockers (or file hosting services)
and virtual private networks. Cyberlockers provide Internet users online, password-protected
data storage services, which may be used for any type of content, including copyright
material. While these services may be convenient and may be lawfully used to share content
with others, they have been used for illegal file sharing. Illegal file-sharers use cyberlockers
to house copyrighted material, and share the location and password information with others,
who are then able to access such content. Detection of illegal file-sharing through
cyberlockers is more difficult than through monitoring the use of BitTorrents. The best-
known case of such an abuse of cyberlockers was the MegaUpload website. A virtual private
network (VPN) simply involves the establishment of a security-enabled communications
network and is therefore accessible only to a limited user group.
10.3.2.3.4 A new approach

Despite these legal victories against providers of systems which facilitate large-scale
copyright infringement, the pace of infringement does not seem to have abated. For example,
file-sharing service providers, such as The Pirate Bay, have moved their operations to
jurisdictions where they have been allowed to operate. The practise of hosting such websites
in jurisdictions (or by ISPs) which are unlikely to prevent their operation is known as
‘bulletproof hosting’. As a result, the content industry has relied on alternative methods in
seeking to address the problem: pursuing individual infringers through legislative changes
and litigation; and compelling ISPs to block access to file-sharing indexing websites like The
Pirate Bay. It is too early to tell whether these new approaches will reduce the extent of online
copyright infringement, given the emergence of cyberlockers and virtual private networks.
Some appear to be more effective than others.
10.3.2.3.4.1 Pursuing individual infringers

The first type of approach has, for example, led to the introduction of legislation in countries
like the US and Japan which criminalise illegal downloading of copyright material.278 In
addition, the content industry has managed to successfully lobby for anti-file-sharing
legislation in some jurisdictions, which imposes obligations (and the administrative costs
of identifying infringement and notifications) on ISPs to help combat copyright infringement.
PAUSE FOR ‘Three strikes’

REFLECTION In New Zealand and the UK,279 ISPs must send notifications to users who have been
identified by copyright owners as being involved in infringing activities, but the UK
notification provisions have not been brought into force yet. New Zealand has also
implemented the controversial ‘three-strikes’ system. 280 A recent news report about
Internet piracy rates in New Zealand, based on figures supplied by a recording industry
body, claims that Internet piracy has halved since the introduction of the controversial
‘three-strikes’ system.281 Interestingly, France had a three-strikes law, which enabled
278 ‘Japan to make illegal downloading of music, videos punishable with jailterms’ Japan Today, 24 June 2012 www.
japantoday.com/category/crime/view/ (accessed 28 June 2012).
279 The UK provisions are contained in ss 3 to 16 of the Digital Economy Act .
280 Murray supra 254. Under a ‘three-strikes’ system ISPs must terminate a customer’s Internet services should such
customer persist in illegal file-sharing despite having received two warnings to stop such activity.
281 ‘Three strikes rule has ‘halved piracy’ in New Zealand’ BBC News 23 July 2012, www.bbc.com/news/technology-18953353
(accessed 23 July 2012).

local courts to suspend copyright infringers’ Internet connectivity for up to a month if they
were caught three times, but it has recently abolished the system. Apparently, the reasons
given for the change were that the system was expensive to run, ineffective, and the sanction
was considered to be disproportionate.282
The other approach has been for copyright owners to embark on volume litigation
against individual infringers. Volume litigation involves copyright owners’ joining
forces in monitoring file-sharing networks to discover the Internet Protocol (IP) addresses
that are infringing copyright. On the basis of this information, a copyright owner could
apply to the courts for a Norwich Pharmacal order283 to compel an ISP to disclose the
names and addresses of the subscribers on the list.284 For example, on the basis of such
information, customers of a particular ISP, O2, suspected of illegally sharing pornographic
films made by Ben Dover Productions, were sent letters, the text of which had been
approved by the High Court, from the film-maker. In short, the letters informed the
recipients that they had to contact the copyright holder within 28 days to negotiate a
settlement, and recipients were warned that if they did not respond they could be found
liable for copyright infringement.
10.3.2.3.4.2 Blocking access to websites

The copyright industry has now focused on getting ISPs to block access to websites
like The Pirate Bay, rather than proceeding against the file-sharing service providers
because they have moved their operations to jurisdictions where they have been allowed
to operate. For example, in the UK, legislation provides that an injunction (interdict) can
be granted against a service provider (an Internet intermediary) that has actual knowledge
of persons using its service to infringe copyright.285 Based on this provision, copyright
owners were, for example, granted an injunction against a website operator, Newzbin, that
indexed and enabled searching for infringing copyright content, including films, posted
on the Usenet online bulletin board, restraining it from indexing material that infringed
copyright.286 In fact, the relevant service provider against which such an injunction can be
granted is not restricted to a website operator which facilitated copyright infringement: it
may also be granted against an ISP. Following the aforementioned injunction against
Newzbin, a new Newzbin website, run by an unknown operator, was set up offshore, which
meant that it was not subject to UK jurisdiction. In a first for the UK, copyright owners
managed to obtain an injunction, on the basis of section 97A(1), against British
Telecommunications plc, an ISP, to block access to the Newzbin website.287 Since then, in
another case, copyright owners, having established that The Pirate Bay’s users and
operators infringed the claimants’ copyrights in the UK,288 obtained an injunction against
282 ‘France ends three-strikes internet piracy ban policy’ 10 July 2013 www.bbc.co.uk/news/technology-23252515 (accessed
10 July 2013).
283 This is an order for the disclosure of the identity of a wrongdoer against anyone who, albeit innocently, becomes involved
in the wrongful act of another.
284 See, for example, Golden Eye (International) Ltd & Others v Telefonica UK Ltd [2012] EWHC 723 (Ch).
285 S 97A(1) Copyright, Designs and Patents Act .
286 Twentieth Century Fox Film Corporation & Others v Newzbin Ltd [2010] EWHC 608 (Ch).
287 Twentieth Century Fox Film Corporation and Others v British Telecommunications plc [2011] EWHC 1981 (Ch).
288 Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others [2012] EWHC 268 (Ch).

six ISPs in the UK, requiring them to take measures to block or impede access by their
customers to The Pirate Bay.289
COUNTER Ineffective measure

POINT A rather troubling development for the content industry was a news report which suggested
that, only a week after the blocking measures against The Pirate Bay were enforced, the
general volume of file-sharing, not necessarily via The Pirate Bay, was almost back to the
level prior to the block. It has been suggested that ISP blocks are an ineffective method
because of the ease with which they can be circumvented.290
10.3.3 Copyright in digital works
Digital works commonly refer to the material expressions of traditional copyrightable types of
work in digital form distributed by means of the Internet. The most common forms of digital
literary work, sound recordings and cinematograph films, take the form of eBooks, music files
and video clips respectively. Of course digital works include computer programs, most notably
for current purposes in the form of apps291 and musical and artistic work (such as photographs
and illustrations). These works are often computer-aided or computer-generated works and
are protected by copyright despite the fact that they usually exist in digital form only.292
10.3.3.2 Distribution
The trade in digital works represents a large portion of all online trade and is driven by the
ostensible purchasing of digital versions of tangible goods such as printed books, music CD’s,
movie DVD’s and computer programs recorded on disc. For this reason proprietors of digital
works293 usually offer digital works for sale through their respective online storefronts,294
creating the erroneous impression that a contract of sale has been concluded.
In fact, the distribution of digital works is based on the licensing of these works in terms
of copyright law and does not amount to a contract of sale. The third party who ‘buys’ a
digital work is merely concluding a copyright licence for the limited exploitation of a
reproduction of the work as defined by the licence agreement.295 Therefore, the impression
created by web traders that the rights in digital works are analogous to the rights of a
purchaser to a comparable physical work is incorrect. The purchaser of a digital work does
not acquire any property rights over the digital work because a copyright licence agreement
does not transfer ownership of the digital work – the copyright owner of the digital work
remains the only individual with any proprietary right in the work.
289 Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012] EWHC 1152 (Ch). See also
EMI Records Ltd & Others v British Sky Broadcasting Ltd & Others [2013] EWHC 379 (Ch).
290 ‘Pirate Bay block effectiveness short-lived, data suggests’ D Lee 16 July 2012, www.bbc.com/news/technology-18833060
(accessed 16 July 2012).
291 The short form of the word ‘application’. Commonly used to refer to software designed to operate on a mobile phone or
tablet computer.
292 Provided that the requirements for subsistence are met. See para 1.3.
293 Prominent webtraders include Amazon, Apple, Kalahari, Barnes & Noble, Exclusive Books, BestBuy, iStockphoto and
Getty Images.
294 For example the Amazon.com and Kalahari.com websites or the iTunes application.
295 See para 1.7.2. See also Dean Handbook of South African Copyright Law 1–147 para 12.10 et seq; S Mathieson ‘Access
versus ownership: A changing model of intellectual property’ (2008) 21 Legal Reference Services Quarterly 153 at 157.

Nor does the licence agreement create any other transferable rights for the user. In the
case of digital works distributed by Amazon and Apple, the standard contractual terms
specifically state that the works are not sold to the user. Furthermore, these agreements
confer a non-exclusive, non-transferable right on the user for the use of the work under
specified conditions.296 Therefore, a ‘purchase’ agreement for digital works is more
appropriately viewed as a contract for the provision of services as opposed to a contract
for goods.
Consequently, unless the licence agreement specifically provides for the transfer of the
rights conferred therein, or for the further reproduction or adaptation of the work, digital
works cannot be sold as second-hand goods, lent to another person, transferred to multiple
devices or changed in medium. The licence agreement simply confers upon the recipient
the non-transferable right to use the item in question in certain specified manners.
10.3.3.3 Disposition
The standard and most common licence agreement for the use of digital works is expressly
concluded with the user in his or her personal capacity. For this reason the consumer of
digital works is described as the end-user, implying that the rights conferred by the licence
adhere to the contracting person.
Consequently, the end-user is not able to dispose of the works by means of a testamentary
disposition.297 Upon the death of the user, any digital works lawfully obtained (or more
correctly, rights granted to use a digital work) will effectively cease to exist. However, in
practice the data files representing the works will survive and are in practice capable of use
by any individual, such as an heir to the deceased, with access to the collection of works
formerly held by the deceased.
This raises the question whether such use would amount to copyright infringement. There
is no doubt that it would be a breach of contract to permit anyone other than the end-user
(i.e. the contracting party) to exercise the rights conferred by the licence, but this would be
irrelevant in the event of the death of the contracting party. Furthermore, where the heir
continues to use the digital works in the same manner as permitted by the licence, no
restricted act is performed in relation to that work – listening to a sound recording, viewing
a film or reading an eBook does not constitute a reproduction of the work. Upon the death of
the end-user the licence agreement for each of the digital works in his or her possession is
terminated, rendering all the works unauthorised reproductions or infringing copies of the
original. This is because the reproduction of the work implementing the licence agreement
was made subject to the restrictive condition that such reproduction could only be held and
utilised by the end-user; once the reproduction is no longer held by the end-user the
condition authorising the reproduction is no longer met and it becomes an unauthorised,
and thus infringing, reproduction. However, neither mere possession nor use of the digital
work per se, even if it is an infringing copy, constitutes an infringement of copyright in the
296 In effect the reproduction of the work on delivery to the user is a qualified authorisation to reproduce the work and
renders the copy legitimate and authorised only for as long as it is possessed by the user to whom it was first supplied.
297 The principle nemo plus juris ad alium transferre potest quam ipse haberet dictates that where a right is lawfully
transferred, the scope of the right vested in the recipient (transferee) will be the same as the scope of the right held by
the transferor. Therefore, the transferor cannot transfer more rights (or a wider right) than he himself held. Similarly,
the transferee can only exercise the right to the extent that the transferor could exercise that right. A testamentary
disposition relating to digital work is therefore void. Because the rights cease to exist at the moment of death, no rights
survive that may be transferred by operation of law. See further Dean Handbook of South African Copyright Law 1–141
para 12.2 and fn 4.

work.298 A copyright owner is entitled in principle to claim delivery-up of all infringing copies
of his works from third parties.299 In effect, the copyright owner could therefore claim deletion
of the data files representing the work or some other form of delivery up of such files.
PAUSE FOR Entitlement of heirs

REFLECTION The question arises whether the digital works are capable of lawful perpetual use by the
heirs of a deceased end-user if the copyright owner does not claim delivery-up. It is
submitted that the answer is probably no. The heir is not legally entitled to possess the
digital work and may therefore not use it because he holds no licence in that regard.
Although mere possession does not amount to copyright infringement in terms of the
Copyright Act, the common law of delict has residual application. Upon termination of the
copyright licence, the rights conferred therein revert to the copyright owners. By possessing
and using the work after the death of the licensed user, the heir is exercising a right which
adheres to the copyright owner and which has not been conferred on him/her. Such conduct
would amount to a delict if the common law requirements for delictual liability are met.300
This would depend on the facts of the matter.
10.3.3.4 Parallel importation

Parallel importation of a copy of a protected work (an article) for purposes of copyright
infringement is constituted by the unauthorised importation by a person ‘of an article into
the Republic for a purpose other than for his private or domestic use’301 in conflict with the
rights of a duly appointed South African distributor. In certain circumstances it could
constitute an indirect infringement of copyright in that work. More particularly, the imported
article must constitute an ‘infringing copy’ of the protected goods.302
Unlike in the case of direct copyright infringement (in respect of which the perpetrator’s
state of knowledge is irrelevant), parallel importation will only amount to infringement if
the person dealing with the work in this manner bears guilty knowledge of the fact that the
article in question is an infringing copy. Goods (infringing copies) imported by means of
unlawful parallel importation are commonly referred to as grey goods.
In the case of digital works, a dealing in grey goods303 occurs in principle with every
download of a work from a foreign location where the reproduction right in that work for
South Africa is held by a person other than the host of the downloaded reproduction. For
example, if the consumer downloads a legitimate copy of an eBook from Amazon in the
United States, and that title is the subject of an exclusive reproduction and distribution
298 As long as the work is used to the same extent as circumscribed by the original licence agreement, i.e. read, played,
viewed etc. and no act is performed in relation to the work that amounts to a reproduction of any substantial part of
the work.
299 S 24(1) of the Copyright Act.
300 See Dean Handbook of South African Copyright Law 1–88 para 8.22.
301 S 23(2)(a).
302 An infringing copy for purposes of parallel importation includes a legitimate copy of the work that would nevertheless
have been an infringing copy had it been made in the Republic by the person who actually made the reproduction in
the foreign location. This deeming provision depends on a fiction construed on the facts of the matter. It tests whether
the hypothetical reproduction so made would have been an infringing copy if it had been made within the geographical
area of South Africa. An example of such a case would be where an authorised copy of a cinematographic film was
lawfully obtained in the USA and then exposed for hire in South Africa by a party other than the exclusive licensee to
the rights of reproduction and distribution of that film in South Africa. See Mr Video (Pty) Ltd and Others v Nu Metro
Filmed Entertainment (Pty) Ltd and Others [2010] 2 All SA 34 (SCA); Frank & Hirsch (Pty) Ltd v Roopanand Brothers
(Pty) Ltd 1993 (4) SA 279 (A). See also Dean Handbook of South African Copyright Law 1–85 para 8.14.6. See also para
1.8.2.3 with regard to the requirement of guilty knowledge.
303 See Dean Handbook of South African Copyright Law 1–82 para 8.14.

licence held by Kalahari in South Africa, the download would be an infringing copy, and
thus grey goods, even though the reproduction was lawfully made and facilitated by Amazon
under rights held in the USA. However, the user’s conduct in this manner would not amount
to an infringement if the digital work was for his/her personal use only. This means that, in
the case of digital works, the copyright parallel importation provisions place a restriction
only on those parties who attempt to distribute or otherwise deal in grey goods. They would,
for example, restrain a distributor from selling eBooks of a particular title in South Africa
where the copyright owner had awarded that right to another distributor.
However, the Copyright Act treats computers as a special case in the context of parallel
imports. In the case of computer programs (including the applications for smart phones and
tablet computers), indirect infringement occurs through the mere acquisition by a person
of an infringing article regardless of the purpose for which it was obtained, provided the
necessary guilty knowledge is present.304 This provision goes beyond the scope of parallel
importation and applies to the acquisition of an infringing copy of a computer program in
any circumstances, including the purchase of such a copy from a local shop. It is akin to the
principle of receiving stolen property, which is a criminal offence in its own right.
This means that the various types of digital works are not all treated in the same way for
purposes of parallel importation, or indeed for indirect infringement generally. The reason
for this discrepancy is not clear.
PAUSE FOR Parallel imports

REFLECTION The use of copyright law to prevent parallel importation of goods in the South African context
has also been criticised as effectively awarding foreign nationals control over the extent to
which their works are protected by copyright law in South Africa, contrary to the principle of
national treatment.305 It is further argued that lifting the prohibition on the importation of
grey goods will stimulate competition in the relevant field, which will reduce costs and
stimulate innovation.306 The counterargument is that copyright owners should be free to
decide how and by whom they would like to have their products distributed in South Africa
and in what circumstances, and subject to what conditions. In particular, they should be
entitled to use the business model of utilising an exclusive distributor for their goods if they
should so choose. This is particularly pertinent where the goods embodying the copyright
work require back-up or maintenance services and a particular level of quality is desired.
The arguments both for and against the right to control parallel imports have merit, but on
balance it is felt that the benefits derived from preventing parallel importation, and the
safeguard this would create for the rights of the copyright owner, far outweigh the unlikely
benefits that may accrue to the public if the restrictions on trading in grey goods were lifted,
at least in so far as this applies to copyright works.
COUNTER Fair dealing

POINT It has been contended that the end-user/purchaser of a digital work does not obtain any
form of ownership of the copy, but is merely a non-exclusive licensee of the work.
Consequently, if an end-user in South Africa obtains a copy of a digital work from abroad,
can it be said that the user is in fact innocent of indirect infringement because
304 S 23(2)(d) of the Copyright Act.

305 KM Rippel and R de Villiers ‘Legalising parallel imports under intellectual property law’ (2004) 3 Stellenbosch Law
Review 550–571.
306 At 550.

he or she is in reality not dealing with a reproduction of the work but merely the rights in
relation to a reproduction of the work? Does the fact that the user is in possession of a
reproduction of the work necessarily mean that it was imported into the Republic merely
because it was downloaded by means of the Internet? If so, would the legal position change
if the downloaded files were stored online by means of a cloud storage facility and not on
the user’s computer in South Africa?
10.3.4 Digital rights management
Commonly referred to as DRM, digital rights management is a collective term for a wide
range of technological measures which may be applied to a digital work in order to verify
and control the lawful exploitation of the work, prevent reproduction or restrict the manner
in which a user can deal with a digital work.
DRM measures are intended to address the risk that digital works may be duplicated or
distributed without authorisation after the works have been made available to the
end-user.307 Therefore, DRM is a form of ex post facto enforcement of copyright law to the
extent that it enforces the limitations imposed by the copyright licence in relation to the work
through technological means that ensure that the work is not exploited in any other manner.
For this reason DRM measures are often described as anti-circumvention protection
mechanisms in so far as an act of unauthorised dealing with the DRM-protected work will
necessarily involve the bypassing or rendering ineffective of the technological measures
imposed on the digital version of the work. DRM could include non-restrictive measures
that merely monitor the way in which the work is used, or require that the user provide a
counter-performance in some form other than a royalty payment in exchange for access to
the work. In other cases, DRM measures are applied to entice the user to obtain a more
comprehensive licence for the use of the work.
10.3.4.2 Types of DRM

Foroughi et al308 list the typical features of DRM systems, or manifestations of digital rights
management tools, as follows:
• Encryption of content with built-in e-business cash registers.

• Plug-ins that end-users must download to have access to content.
• Keys to unlock encryption for which end-users must pay money or provide an
email address.
• Access in exchange for personal information from end-users.
• Watermarking video products.
• Pay-per-view formats.
• Discounts for regular customers.
• Free previews.
• Authorisation verification.
307 A Foroughi, M Albin & S Gillard ‘Digital rights management: A delicate balance between protection and accessibility’
(2002) 28 Journal of Information Science 389 at 389.
308 391 Table 1.

• Usage tracking.
• Subscription capabilities.
• Print and copy restrictions.
• Time limits on access.
• Control of content sharing.
• Tracking of use of content – is it viewed, printed, copied, or passed on.
• Digital clearinghouses that handle payment and distribution of content.309
From a copyright perspective, the relevant DRM measures refer to those that ‘operate by
restraining a work with some kind of technological lockbox’.310 Common examples include
password protection applied to digital literary works such as journal articles,311 encryption
of documents into a particular format312 and the embedding of computer code on storage
media313 or devices314 to limit the accessibility or reproduction of the work embodied therein.
In fact, DRM measures may protect or restrict the use of digital content ‘on a persistent basis
throughout its commercial lifecycle’.315
In all of these cases, the DRM measures operate to impose a fair use policy on the work
to the extent that the author or distributor of the work deems fit. DRM measures are therefore
aptly described as a gatekeeper to digital works or a ‘judge on a chip’316 to the extent that the
use of the work is not limited by the scope of copyright law but by the nature of the physical
embodiment of the work.
10.3.4.3 DRM legislation

DRM has become part of copyright law in the form of anti-circumvention legislation. The
model law in this regard is found in article 12 of the WIPO Copyright Treaty (WCT):
(1) Contracting Parties shall provide adequate and effective legal remedies against
any person knowingly performing any of the following acts knowing, or with respect
to civil remedies having reasonable grounds to know, that it will induce, enable,
309 Supra.
310 EW Felten ‘A skeptical view of DRM and fair use’ (2003) 46 Communications of the ACM 57 at 57.
311 For example, in the case of the Oxford Journal of Intellectual Property Law and Practice, the articles are digitally available
from the journal’s webpage, but may only be accessed in full text after the user has obtained a subscription, at a fee,
from the publisher and has been awarded a password to access the digital works. In many cases this type of DRM is not
applied by the publisher to each individual work but instead by the digital archiving service provider, such as JSTOR or
WestLaw, in relation to all of the works hosted by it. The fact that in these cases the DRM measure exists independently
of the digital work is irrelevant – the DRM measure, even if applied globally to a collection of works, still restricts the
usage of each individual work.
312 The most common format of DRM encryption is the portable document format (PDF). PDF encryption may, depending
on the level of protection selected by the person who creates the PDF version of the work, restrict general access to the
work by requiring a password to open the document, prevent the adaptation of the work, prohibit the printing of the
work, restrict the making of extracts from the work or limit access to the work to a specific time and/or place or introduce
any combination of these measures.
313 For example, the CSS software (or particular versions thereof ) installed on all optical discs (CDs, DVDs, Blu-ray Discs)
that prevents a computer from extracting the digital work from the disc or successfully copying the contents of the disc
onto similar blank media.
314 Device-specific DRM limitations include the compatibility test required by an eBook reader, such as a Kindle, that allows
the user to access only digital works encrypted to a specific format. In other cases the utility of a device is restricted by
operation of software to media of a specific type or origin. For example, some CD players will return an error if the user
attempts to play a home-made copy of an audio CD and most DVD players bought in South Africa will not be able to
show a cinematographic film recorded on a disc that was not intended for use in South Africa.
315 N Garnett ‘Digital rights management, copyright, and Napster’ (2001) 2 ACM SIGecom Exchanges 1 at 3. The author also
provides a succinct and comprehensive summary of all types of DRM measures.
316 Felten ‘A skeptical view of DRM and fair use’ at 58.

facilitate or conceal an infringement of any right covered by this Treaty or the Berne
Convention:
(i) to remove or alter any electronic rights management information without
authority;
(ii) to distribute, import for distribution, broadcast or communicate to the public,
without authority, works or copies of works knowing that electronic rights
management information has been removed or altered without authority.
(2) As used in this Article, ‘rights management information’ means information
which identifies the work, the author of the work, the owner of any right in the
work, or information about the terms and conditions of use of the work, and any
numbers or codes that represent such information, when any of these items of
information is attached to a copy of a work or appears in connection with the
communication of a work to the public.317
A similar provision applies to all member states of the European Union.318 The United States
of America319 and the United Kingdom320 have since introduced anti-circumvention
legislation as part of their national copyright law.
However, in South Africa the provisions of article 12 of the WCT were incorporated
into the Electronic Communications and Transactions Act (ECTA).321 Section 86 of ECTA
provides that:
(1) Subject to the Interception and Monitoring Prohibition Act, 1992 (Act No. 127 of
1992), a person who intentionally accesses or intercepts any data without
authority or permission to do so, is guilty of an offence.
(2) A person who intentionally and without authority to do so, interferes with data
in a way which causes such data to be modified, destroyed or otherwise rendered
ineffective, is guilty of an offence.
(3) A person who unlawfully produces, sells, offers to sell, procures for use, designs,
adapts for use, distributes or possesses any device, including a computer program
or a component, which is designed primarily to overcome security measures for
the protection of data, or performs any of those acts with regard to a password,
access code or any other similar kind of data with the intent to unlawfully utilise
such item to contravene this section, is guilty of an offence.
(4) A person who utilises any device or computer program mentioned in subsection
(3) in order to unlawfully overcome security measures designed to protect such
data or access thereto, is guilty of an offence.
(5) A person who commits any act described in this section with the intent to interfere
with access to an information system so as to constitute a denial, including a
partial denial, of service to legitimate users is guilty of an offence.322
317 Art 12 of the WIPO Copyright Treaty (WCT) . See also The Agreed Statements of the Diplomatic Conference that adopted
the Treaty (WIPO Diplomatic Conference on Certain Copyright and Neighboring Rights Questions) Concerning Certain
Provisions of the WCT 20 December 1996 Agreed Statement Concerning Article 12.
318 Ch 3 of the Directive of the European Parliament and of the Council of 22 May 2011 on the Harmonisation of Certain
Aspects of Copyright and Related Rights in The Information Society Directive 2001/29/EC.
319 Ch 12 of the Digital Millennium Copyright Act, §1201(a)(1)(B).
320 Ss 296–296ZF of the Copyright, Designs and Patents Act 1988.
321 25 of 2002.
322 Ch 13 s 86 (emphasis added).

The introduction of these measures into South African law brought with it effective and
comprehensive measures to combat cybercrime and created a range of new criminal
offences based on a contravention of section 86.323 However, the anti-circumvention
protection measures of ECTA are not subject to the Copyright Act and therefore they only
regulate DRM measures applicable to copyrighted work in an indirect manner.
PAUSE FOR Fair dealing and ECTA

REFLECTION An act of circumvention does not amount to copyright infringement. This raises the question:
what is the relationship between section 86 of ECTA and the fair dealing exemptions of the
Copyright Act?
10.3.4.4 DRM limitation

Mulligan et al identify three aspects of the exploitation of digital copyright works that are
influenced by DRM measures,324 namely excerpting, portability and engagement with the
copyright holder.
In all of these cases, DRM measures may operate to obstruct the fair dealing in a work.
For example, a user who desires to make a back-up copy of a computer program will be
prevented from doing so if the program is recorded on a disc that contains software to
prevent the reproduction of the disc or its content.
Mulligan’s study found that the ‘clash between these behaviors [the DRM measures] and
personal use as defined by law and individual expectations, however, was substantial’.325
It is therefore essential that the scope of DRM measures be limited in order to permit fair
dealing with a digital work to the same extent as non-physical works or at least non-DRM
protected digital works.
The British Copyright, Designs and Patents Act achieves a balance between anti-
circumvention protection measures and fair use of digital works, at least in relation to the
reverse engineering and decompilation of computer programs.326 However, similar
exemptions are not available in relation to an act of circumvention for purposes of fair
dealing with other types of work. MacQueen argues that a balance may yet be maintained
by interpreting the law in such a manner that an act of circumvention will only amount to
infringement if the manner in which the work is dealt with after circumvention also amounts
to a circumvention.327 In other words, circumvention of DRM measures would not amount
to an infringement if it is performed in relation to a work in order to deal with the work
pursuant to a fair-dealing exemption.
Such an interpretation is eminently sensible. Furthermore, fair dealing amounts to a
statutory defence to infringement and can therefore not be interpreted as a right to use the
work in a particular manner.328 If the author decides to restrict the use of his work in a
323 See s 89 of ECTA. See also Van der Merwe et al Information and Communications Technology Law 75–76 para 4.4.2.2,
273 para 8.4.2.3.
324 DK Mulligan, J Han & AJ Burstein ‘How DRM-based content delivery systems disrupt expectations of “personal use’’ ’
2003 DRM’03 Proceedings of the 3rd ACM Workshop On Digital Rights Management (2003) 77 at 79.
325 At 80 para 3.2 (explanation added).
326 See ss 50B(4) and 50BA(2), both of which contain the following proviso: ‘Where an act is permitted under this section,
it is irrelevant whether or not there exists any term or condition in an agreement which purports to prohibit or restrict
the act (such terms being, by virtue of section 296A, void).’
327 HL MacQueen ‘‘Appropriate for the digital age?’ Copyright and the Internet: 2: exceptions and licensing’ in L Edwards
and C Waelde (eds) Law and the Internet 3 ed (2009) at 219.
328 See Dean Handbook of South African Copyright Law (1987) at 1–92 para 9.1. See also Klopper et al Law of Intellectual
Property in South Africa at 211–212 for a contrary view.

particular manner by, for example, imposing DRM measures to prevent fair dealing in the
work, the user cannot rely on a right to circumvent such measures in order to deal with the
work – no such right exists in law. Therefore, unless circumvention for the purpose of fair
dealing is itself considered a form of fair dealing, the act of bypassing DRM measures will
constitute an infringement regardless of the motivation for circumvention.
In the United States, permitted circumvention for purposes of fair dealing extends even
further than British law to the extent that it creates a right to fair dealing. The relationship
between DRM and fair dealing (known as fair use) is regulated by §1201(a)(1)(B) of the
Copyright Act,329 which provides that the prohibition on circumvention shall not apply to
the extent that it adversely affects the user’s ability to make non-infringing use of the work.330
In stark contrast to this, the position in South Africa does not suggest a right to fair dealing
and does not permit any form of circumvention of DRM measures for any purpose.
Furthermore, an act of circumvention does not amount to copyright infringement but
constitutes a criminal offence. This creates the untenable situation whereby the end-user
will not be able to argue that the act of circumvention is not unlawful because it was
committed for a lawful purpose (i.e. fair dealing). In addition, section 88 of ECTA also
criminalises any attempt to circumvent and all forms of assistance in the commission of
these crimes.
Consequently, in South Africa digital versions of work protected by DRM measures are
afforded a greater measure of protection than their non-digital equivalents. The result is that
fair dealing in DRM-protected works is currently impossible. It has been pointed out that
South Africa did not introduce anti-circumvention provisions to the Copyright Act because
such provisions may have an adverse effect on the developmental objectives of South Africa
as a developing country.331 More recently, this sentiment has been repeated by the
Department of Trade and Industry.332 Unfortunately, by doing so government achieved the
exact opposite of what it set out to do. The net result is that fair dealing in DRM-protected
digital work is absolutely prohibited under South African law.
10.4 Trade marks in the digital environment

Online commerce has grown significantly in recent years, and is continuing to do so. For some
businesses most trading now takes place online, and even businesses that still do business
in the traditional manner unavoidably require some sort of Internet presence because of the
need to advertise, or provide information about, their products or services. It is therefore not
surprising that businesses should seek to enhance their presence and reach on the Internet.
However, such pursuit may infringe third parties’ rights. Traders have therefore also sought
to protect their rights in relation to activities on the Internet. Given the fact that the value of
some of the most well-known companies is largely attributable to their intangible assets, such
329 Digital Millenium Copyright Act 112 Stat 2860 of 1998.

330 §1201(a)(1)(B): ‘The prohibition contained in subparagraph (A) shall not apply to persons who are users of a copyrighted
work which is in a particular class of works, if such persons are, or are likely to be in the succeeding 3-year period,
adversely affected by virtue of such prohibition in their ability to make non-infringing uses of that particular class of
works under this title, as determined under subparagraph (C).’ However, this position is not without its troubles. See,
for example, Felten ‘A skeptical view of DRM and fair use’ at 58 et seq; CM Correa ‘Fair use in the digital era’ (2002) 33
International Review of Industrial Property and Copyright Law; Foroughi et al ‘Digital rights management: A delicate
balance between protection and accessibility’; Mulligan et al ‘How DRM-based content delivery systems disrupt
expectations of “personal use” ’.
331 See Van der Merwe et al Information and Communications Technology Law at 273.
332 Draft National Policy on Intellectual Property 2013, GN 918, GG 36816, 4 September 2013 at 17 and 29–30.

as trade marks, it is only to be expected that companies should take the misuse or
misappropriation of their trade marks seriously. However, issues of trade mark infringement
are not as straightforward in the digital environment. Until the emergence of the Web, the law
relating to infringing use of another’s trade mark focused on the overt, visible use of such
marks, not use that is invisible to consumers. Two areas where the issue of trade marks has
created particular problems in the digital environment relate to their use by search engines
and on secondary markets (namely, Internet marketplaces such as eBay). Whereas we will
focus on issues concerning registered trade marks, the types of conduct discussed below may
also impinge on the common-law rights of traders, such as business names or goodwill.
The trade mark-related topics that will be addressed will largely follow their chronological
emergence in the digital environment. There are a variety of trade mark issues, and those
dealt with in this chapter have been selected on the basis of their relative importance, or
legal significance. Other possible abuses of the domain-name registration process, which
do not directly concern trade mark issues, such as bulk domain name registration, domain
name tasting and the parking of domain names will not be considered.
10.4.1 Trade mark law

Pursuant to section 34(1)(a) and (b) of the Trade Marks Act, 1993, a registered trade mark
will be infringed if there has been unauthorised use in the course of trade of the same or
similar marks, in relation to the same or similar goods (or services), that is likely to cause
confusion. Similarly, pursuant to section 34(1)(c), a well-known registered trade mark will
be infringed if there has been unauthorised use in the course of trade of the same or similar
mark, if such use is likely to take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the registered trade mark. In regard to trade mark infringement,
the reader is referred to para 2.9. In relation to Internet-related trade mark issues, the crux
of the matter is almost invariably whether there has been use of the relevant trade mark (or
similar trade mark) in the course of trade.
10.4.2 Domain names

The diagram below illustrates how the domain name system is structured.
Domain names
Google.com
Generic top-level
domain
Second level (sub)
domain (lowest)
weathersa.co.za
Country code
top-level domain
Generic second-
level (sub) domain
Third-level (sub)
domain (lowest)

Following the birth of the Web, trade mark issues concerning the registration of domain
names were the first significant concern for trade mark owners, and the principal area of
interest in the related area of information technology law.333 What is particularly interesting
concerning the issues related to domain name registration is the alternative dispute
resolution mechanism which developed (and which will be discussed below) in a relatively
short period of time, to address the opportunistic or predatory practices which arose, and
which has been remarkably effective.
10.4.2.1 Domain name system

As mentioned above, the system which ensures that there is a unique matching of IP
addresses, which is essential for accurate data transmission, and the human-friendly domain
names we find convenient to use is the domain name system (DNS). Domain names are
hierarchical and have two or three levels, with the highest (or top) level appearing on the
right side of a domain name. The top-level domain is either a generic top-level domain
(gTLD) or a country code top-level domain (ccTLD). In the case of a ccTLD, it typically has
a second-level (or sublevel) domain, such as .co or .ac. An applicant’s desired domain name
has to be unique at the lowest domain level (the leftmost portion of the domain name): in
the case of a two-level gTLD, this would be the second level, and in the case of a three-level
ccTLD, this would be the third level (under one of the second-level domains). The discussion
of the issues surrounding domain names is largely confined to the lowest domain level,
which may be a trade mark or incorporate a trade mark.
10.4.2.2 Domain name system v trade marks

Although a trade mark may be registered as (or, more correctly, may be incorporated in) a
domain name, and a domain name may be registered as a trade mark, there are differences
– both functionally and legally – between trade marks and domain names, which introduces
a level of complexity. First, although the registration of a trade mark has to be periodically
renewed, a trade mark gives the registrant a proprietary right in the registered mark, whereas
a registrant of a domain name only has a contractual right to the domain name. Second, as
far as trade marks are concerned, subject to limited exceptions, the principle of territoriality
is strictly adhered to.334 Registration of the relevant trade mark is required in each jurisdiction
in which protection is sought, otherwise no protection will be afforded to the relevant trade
mark in that jurisdiction. In contrast, a domain name gives its registrant global rights.
While it is true that an identical domain name may be registered in various generic
top-level domains (gTLDs) or as a third-level domain under country-code top-level domains
(ccTLDs), the trade mark system potentially allows for more possible registrations.335 A trade
mark must be registered in respect of specified goods or services falling within a particular
class, which means that an identical trade mark may be registered by different persons in
the same jurisdiction (and, of course, in different jurisdictions). Third, another reason why
trade marks potentially allow for multiple registrations is that trade marks are not restricted
333 Edwards & Waelde Law and the Internet 312; E Hurter ‘Not the lesser evil: Amending the regulations for the resolution
of domain name disputes in the ‘.za’ domain to combat reverse domain name hijacking’ (2012) 24 SA Merc LJ 416.
334 The exceptions being well-known marks under article 6bis of the Paris Convention for the Protection of Industrial
Property 1883 (the Paris Convention) and the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS), which is Annexure 1C to the General Agreement on Tariffs and Trades (GATT). See para 2.9.2.4.
335 A trade mark proprietor has to decide whether it seeks to register domain names incorporating its trade mark in more
than one generic top-level domain (gTLD) or country-code top-level domain (ccTLD). This decision becomes even
more difficult if ICANN’s decision to expand the number of generic top-level domains (gTLDs), approved on 20 June
2011, is implemented. The expanded gTLDs may include characters used in other languages, such as Arabic or Cyrillic.

to the form of words, letters or numerals, which is the case with domain names. A trade mark
may comprise any sign capable of being represented graphically, including a device,
signature, shape, configuration, pattern, ornamentation, colour or container for goods or
any combination of the aforementioned.336 Thus, domain names cannot use the techniques
that are available to businesses to distinguish their trade marks.337 Fourth, as is clear from
the brief description above of the technical aspects of the Internet, the primary function of
a domain is to serve as an address for unambiguous communication, whereas a trade mark’s
primary function is to serve as a badge of origin.338 Fifth, the registration process for a trade
mark is subject to greater scrutiny, as it allows for opposition to the registration of the
proposed trade mark. In contrast, given the automated, first-come, first-served basis on
which domain names are registered, third parties are only able to object after the registration
of the domain name. As will be discussed below, the grounds for objecting to a domain name
registration are limited, and given the more limited opportunity for multiple registration of
identical marks, there is greater potential for conflict.
10.4.2.3 Split mark disputes

Although this chapter will focus on matters concerning domain names which may constitute
trade mark infringement, given the limited number of generic top-level domains (gTLDs)
and country-code top-level domains (ccTLDs), it is only to be expected that there may be
lawful competing claims for the same domain name.339 Gringras neatly sums up the scramble
for domain names, particularly in the most desirable generic top-level domains, such as
.com: ‘For every computer connected to the Internet from every country in the world there
is only ‘apple.com’. It is obvious that Apple Computers and Apple Records would both like
to use that name, but it is impossible for them to share that name.’340 There could even be an
apple farmer in the Western Cape with an independent and legitimate claim to the right to
register that domain name too!
In cases like this, where the same trade mark is registered by different persons, or
where persons have common-law rights to the same mark – sometimes referred to as
‘split mark’ disputes341 – the UK courts have determined that the entitlement to the
registration of a domain name incorporating such mark will be determined on the basis of
priority of registration.342
10.4.2.4 Cybersquatting
Cybersquatting involves the bad faith registration of domain names which conflict with third
parties’ rights, such as the trade mark rights.343 The registrant’s (commonly referred to as a
cybersquatter) motivation for acquiring such a registration is to profit from the sale of the
336 Ss 2(1) and 9 of the Trade Marks Act .

337 T Pistorius ‘Cyberbusters versus cybersquatters: Round II in the ZADNA ring’ (2009) 21 SA Merc LJ 661–662.
338 Beecham Group plc & Another v Triomed (Pty) Ltd 2003 (3) SA 639 (SCA) 646; Die Bergkelder Bpk v Vredendal Koöp
Wynmakery & Others 2006 (4) SA 275 (SCA) 281.
339 ICANN decided in June 2011 to permit new top-level domains, including both new ASCII (Latin-script based domains)
and internationalised domain name (non-Latin script based domain names), top-level domains (the New gTLD
Program). The New gTLD Program is likely to lead to an explosion in the number of top-level domains (TLDs), which
may lead to a new raft of domain name-disputes which will have to be addressed. See http://newgtlds.icann.org/en/
about/program (accessed 3 October 2013).
340 Gringras The Laws of the Internet 164.
341 Pistorius ‘Cyberbusters versus cybersquatters: Round II in the ZADNA ring’ 664.
342 Pitman Training Ltd v Nominet UK [1997] EWHC Ch 367; Prince plc v Prince Sportswear Group Inc [1998] FSR 21.
343 Although the bad faith registration of domain names may include the registration of business names or the names of
famous individuals, the treatment in this chapter will be confined to the abusive registration of trade marks.

relevant domain name to the relevant rights holder through extortion, or to derive revenue
from the substantial number of visitors (or traffic) a website pointed to such a domain name
is likely to have. For example, the cybersquatter could threaten to sell the domain name to
a competitor of the rights holder, use the domain name to divert potential customers to
competitors or host offensive content (or content which is critical of the rights holder) on
the website served by the domain name.344 During the 1990s there were some high-profile
incidents of cybersquatting; businesses have since become aware of the importance of a
Web presence, and the advantages of a domain name which is as close as possible to their
registered trade marks, and try to secure registration of the necessary domain names.345
Cybersquatters have, however, been innovative in continuing to attempt to exploit
situations from which they could profit, and we have seen the emergence of practices such
as typosquatting. Some cybersquatters – so-called robber barons – have increased the scale
of their operations through computer-assisted selection and registration of domain names,
allowing them to accumulate large portfolios of cybersquatted names.346 However, the ‘basic’
form of cybersquatting may be an issue affecting new businesses or businesses undergoing
a change, possibly following a merger, if they have been slow to secure the necessary domain
name registrations. In 1996 Glaxo intended to rename itself Glaxo-Wellcome as a
consequence of a merger, and a third party who anticipated this registered a company called
Glaxo-Wellcome Ltd.347 The situation could just as easily have involved a bad faith
registration of the glaxowellcome.com domain name.
It is important to note that there is nothing objectionable in holding a large portfolio of
domain names and in trading in those domain names per se.348 For example, holding
registrations for a large number of generic or descriptive domain names, hoping that
business will seek to buy them, should not be equated with cybersquatting.349 Additionally,
it is submitted that, given the limited number of generic top-level domains (gTLDs) and
country-code top-level domains (ccTLDs), merely because someone may claim the right to
a domain name in a particular gTLD or ccTLD should not entitle it to the equivalent domain
name in the other gTLDs or ccTLDs. For example, if a Western Cape apple farmer has
registered the domain name apple.co.za for business use, Apple Computers should not be
able to prevent such registration merely because it is the registrant of the domain name
apple.com.
Under South African law, cybersquatting may amount to trade mark infringement, or to
passing off, or form the basis for a delictual or unlawful competition claim.350
10.4.2.4.1 Trade mark infringement

Whether cybersquatting constitutes trade mark infringement, pursuant to section 34(1) of
the TMA 1993, depends primarily on whether such use of the domain name incorporating
the trade mark amounts to use in the course of trade, and whether such domain name is
344 Edwards & Waelde Law and the Internet (2009) 320–1; Z Muscovitch ‘Cybersquatting ain’t what it used to be’ (2012)
May Intellectual Property Magazine 36; Pistorius ‘Cyberbusters versus cybersquatters: Round II in the ZADNA ring’ 663.
345 For example, a third party had beaten the Music Television Network to the mtv.com domain name (MTV Networks v
Adam Curry 1994 867 F Supp 202 (SDNY)).
346 Muscovitch ‘Cybersquatting ain’t what it used to be’ 37.
347 Glaxo plc v Glaxo Wellcome Limited [1996] FSR 388.
348 Hurter ‘Not the lesser evil: Amending the regulations for the resolution of domain name disputes in the ‘.za’ domain to
combat reverse domain name hijacking’ 422.
350 Gringras The Laws of the Internet 173; Pistorius ‘Cyberbusters versus cybersquatters: Round II in the ZADNA ring’ 664.
English law does not have a general unlawful competition action, and such registrations may be actionable under the
tort of deliberate damage to goodwill.

found to be identical, or similar, to the registered trade mark.351 Whether use of a domain
name amounts to use in the course of trade is a factual matter.352 The courts have construed
‘use in the course of trade’ widely: even though the defendants may not have used the
domain names, the mere registration thereof in order to sell such domain names has been
held to constitute use of trade marks in the course of trade.353 In addition, given the fact that
websites are routinely accessed because they provide information about, or provide actual,
goods and services, it should not be difficult (because the courts have interpreted this
widely) to establish that any website utilising such a domain name is using the trade mark
in relation to goods or services.354 It is unclear, however, whether the mere registration of the
domain name, without offering to sell it, would constitute use in the course of trade.355
As to the second part of the enquiry: it is unlikely that a domain name will literally be
identical to a registered trade mark (that is, character for character) because it almost
invariably starts with www, and will end with the relevant top-level domain (e.g. .com or
.co.za), but it may be that the incorporation of the trade mark may still, for trade mark
purposes, mean that it is identical (or at least similar) to the registered trade mark.356
Ultimately, whether two marks are identical or similar must be assessed from the
perspective of the consumer, who, it is submitted, should be assumed in this context to be
a normally informed and reasonably attentive Internet user.357 On that basis, the consumer
will be likely to disregard the www prefix, and the generic top-level domains, and focus on
the dominant part of the domain name.358 Should the remaining, dominant, portion of a
domain name resemble a registered trade mark, a consumer is likely to expect that the
website to which it is directed by such a domain name belongs to, or is associated with, the
trade mark owner. Thus, a comparison of a domain name and registered trade mark should
be confined to the dominant portion of the domain name to determine if it is identical or
similar to a trade mark.359
PAUSE FOR Trade mark infringement relating to a domain name

REFLECTION To date, there has only been one reported South African case concerning trade mark
infringement relating to a domain name. In the New Media Publishing (Pty) Ltd v Eating Out
Web Services CC case,360 the court had to determine whether the domain names www.
eating-out.co.za and www.eatingout.co.za registered by the respondent infringed the
applicant’s registered trade mark, EAT OUT GUIDE, pursuant to section 34(1)(b) of the TMA
1993. The court held that, from the perspective of the average customer or potential
customer, the terms ‘eat out’ and ‘eating out’ were similar, as they would be
351 Gringras The Laws of the Internet 173. Gringas uses s 10(1) of the UK TMA for his analysis, which is substantially similar
to s 34(1)(a). The only difference is that s 10(1) does not expressly require that the plaintiff has to establish that such
use will result in a likelihood of confusion, as is the case with s 34(1)(a), but, if there is no likelihood of confusion, the
European courts are, in any event, unlikely to find that there has been use in the course of trade.
352 Gringras supra 174.
353 British Telecommunications plc and Another v One in a Million Ltd and Others [1999] 1 WLR 903.
354 British Telecommunications supra; Gringras 177–8.
355 British Telecommunications supra; Gringras 175. In general, see para 2.9.2.1.
356 Incidentally, the ‘www’ portion of a URL is just a convention for naming the particular host; it is not compulsory and
any other name could be used.
357 Google France SARL and Google Inc v Louis Vuitton Malletier SA, Google France and Google Inc v Viaticum SA and
Another, and Google France and Google Inc v CNRRH and Others 2010 Joined Cases C-236/08, C-237/08 and C-238/08
[84].
358 Gringras 177 and 188.
359 Gringras 177.
360 New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another 2005 (5) SA 388 (C).

used interchangeably.361 Also, the type of service the respondent’s website was providing
was similar to the type of good for which the applicant’s trade mark was registered, namely,
the provision of restaurant guides.362 Given the fact that the applicant adduced evidence
of a number of actual instances of deception or confusion,363 the court concluded that there
was a likelihood of deception or confusion between the respondent’s domain names and
the applicant’s registered trade mark.364 Accordingly, it was held that the applicant had
established an infringement of its registered trade mark by the respondent.365
For the sake of completeness, it should be noted that the registration of a domain name
incorporating a well-known trade mark, and used in the course of trade in respect of
unrelated goods or services for which the mark is registered, may result in infringement
of that mark pursuant to section 34(1)(c) of the TMA 1993, if such use is likely to take unfair
advantage of, or be detrimental to, the distinctive character or reputation of the registered
mark.366 However, it is unlikely that the mere registration of the domain name, without
any use (or threatened use), would amount to the dilution of the trade mark.367
10.4.2.4.2 Passing off

In order to proceed by way of a passing off action against a cybersquatter, it is necessary
to establish the requirements for such a cause of action. The plaintiff will have to
establish the ‘classical trinity’ of reputation (or goodwill), misrepresentation and
damage.368 Once a plaintiff has established the first two requirements, the South African
courts have presumed that the plaintiff has suffered, or will suffer, damage as a
consequence of the relevant conduct.369
A plaintiff can establish that the use of a domain name held by a cybersquatter
constitutes passing off if it can be shown that its customers would think that it is likely
to have used its name, or the name of one of its products, as a domain name. Since the
advent of the Web, consumers are likely to assume that a firm will promote its business or
products online, which would increase the likelihood – especially in the case of an
established enterprise – that such firm has a reputation that extends to a domain name
which features its name, or the name of one of its products, as the dominant portion of
the domain name.370
The second requirement will have been established if the plaintiff has shown that
the ordinary or average customer (or Internet user) is likely to be deceived or confused
by the defendant’s conduct. More specifically, the plaintiff will have to adduce evidence
to demonstrate that the average customer is likely to consider that the defendant’s
offering is indistinguishable from its offering or is connected with it. This is a factual
361 New Media Publishing v Eating Out Web Services CC 396.

362 398.
363 398.
364 399.
365 399–400.
367 665.
368 Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and Another 1998 (3) SA 938 (SCA) 947; New Media
Publishing 400. See para 2.10.
369 J Neethling Van Heerden-Neethling Unlawful Competition 2 ed (2008) 165.
370 Gringras The Laws of the Internet 180.

enquiry, and the court must have regard to the profile of the average customer, for example,
the age and educational level of the relevant customers. In addition, the type of offering
(goods or services) may also be relevant as to whether there is deception or confusion.371
With regard to a domain name, the enquiry is likely to focus on whether the domain name
creates the impression with the average customer that it belongs to, or is associated with,
the plaintiff. While it is true that the actual website served by the disputed domain name
may seek to clarify any confusion on the part of customers, by the inclusion of suitable
words, it may be the case that the misrepresentation attributable to the registration of the
domain name itself, or the initial confusion caused by its use carries the day and overrides
the clarification.372
In the New Media Publishing case, the applicant was unsuccessful in respect of its claim
based on passing off as it had failed to establish, on a balance of probabilities, that its name,
mark or get-up had become distinctive and that therefore it had a reputation to protect in
this connection.373
10.4.2.4.3 Unlawful competition

A cybersquatter’s conduct may form the basis for a delictual action, or an action for unlawful
competition. The type of conduct which could constitute unlawful competition, or be the
basis of a delictual action, is not a closed list, and new situations satisfying the requirements
for a claim, namely an act, wrongfulness, fault, harm, and factual and legal causation, may
continually arise.374
PAUSE FOR Fraud and unlawful competition

REFLECTION In the One In A Million case the court held that, depending on the circumstances of a
particular case, the registration of a domain name could amount to an instrument of
fraud.375 Where there is an instance of fraud, apart from there being liability on that account,
there would probably also be a cause of action for unlawful competition (the fraud
constituting the element of unlawfulness), provided the other requirements for the delict of
unlawful competition are met.
Factors which would be relevant include the similarity of the names, the intention of the
defendant, and the type of trade involved. If the intention of the registrant of the domain
name is to appropriate the goodwill of another or enable others to do so, the court may
prevent, or put an end to, such a situation.
10.4.2.5 ADR
Given the fact that the registrant of a domain name could be anywhere in the world, and
although it may be possible to identify the registrant of the disputed domain name, an
aggrieved party may be faced with the prospect of having to institute legal proceedings in
the registrant’s jurisdiction, which may be totally unfamiliar to it, not to mention the
associated costs of having to do so, and the possible vagaries of the relevant legal system.
The situation is compounded by the fact that the growth of e-commerce means that
thousands of domain disputes are possible at any one time.
371 Neethling Unlawful Competition 181–7.

372 British Telecommunications plc and Another v One in a Million Ltd and Others 924.
373 New Media Publishing v Eating Out Web Services 401.
374 Neethling supra 76–7. See para 3.1.
375 British Telecommunications supra 920.

On 24 August 1999 The Internet Corporation for Assigned Names and Numbers
(ICANN), a non-profit organisation that coordinates the Internet’s global domain name
system, introduced a novel alternative dispute resolution process for settling disputes
relating to bad faith domain name registrations (viz cybersquatting) in the generic
top-level domains (gTLDs, specifically the .com sub-domain): the Uniform Dispute
Resolution Policy (UDRP), which is an online ‘arbitration’ procedure. Submission to the
UDRP is part of the contract between the relevant domain-name registrar (through which
applications for domain names are made) and the registrant of the domain name. The
domain-name registrars are appointed by ICANN and are in turn contractually bound to
include adherence to the UDRP as part of their contracts with domain-name registrants.
Accordingly, the registrant of a domain name must submit to the UDRP procedure if a
complainant has lodged a dispute with one of the ICANN-approved dispute resolution
providers, such as the World Intellectual Property Organization (WIPO).376
Because the procedure essentially takes place online, parties must state their respective
cases by way of written submissions (oral submissions only being permitted in exceptional
cases). As a result this procedure has been effective in addressing the potentially thorny
jurisdictional problems which may arise. The other advantages of the alternative procedure
are that it is relatively inexpensive and expeditious, when compared to the alternative of
civil litigation. The single most significant reason for the effectiveness of the alternative
dispute resolution mechanism is that the domain name registrar concerned is able to give
effect to the decision of the adjudicator, such as transferring the registration of the disputed
domain name to a successful complainant. Although there have been changes in the types
of cybersquatting that have occurred since the introduction of the UDRP, it has been
versatile enough to deal with these new forms of bad faith registrations as well in a
satisfactory manner.377
Given the success of the UDRP, some of the administrators of country code top-level
domains (ccTLDs) have introduced similar alternative dispute resolution mechanisms.
For example, the South African Alternative Dispute Resolution (ADR) Regulations
were promulgated in 2006,378 pursuant to sections 69 and 94 of ECTA, for the resolution
of disputes over domain names registered under the .co.za sub-domain. The .za Domain
Name Authority (ZADNA),379 which is responsible for administering and managing the .za
domain name space, has accredited the South African Institute of Intellectual Property Law
and the Arbitration Foundation of South Africa as dispute resolution providers pursuant
to the ADR Regulations.
As described above, while the registration of a domain name may constitute trade mark
infringement, passing off, or unlawful competition, it is important to note that the basis on
which a domain registration may be terminated through the alternative resolution
procedures is not restricted to those grounds, particularly under the South African ADR
Regulations. For example, the South African ADR Regulations permit complaints on the
basis that the complainant has rights in respect of a name or mark which is identical or
similar to the domain name and that the registration is abusive, or that the domain name
is offensive.380
376 The registrant or the complainant may choose to reject the UDRP-specified dispute resolution mechanism, and submit
the dispute to a court of competent jurisdiction for independent resolution (para 4(k), UDRP).
378 GN R1166, GG 29405, 22 November 2006.
379 A not-for-profit company established in terms of s 59 of ECTA.
380 Reg 3(1).

PAUSE FOR South African ADR Regulations

REFLECTION Pursuant to regulation 3(1), a complainant may object to a domain name registration if:
a) it has rights in respect of a name or mark which is identical or similar to the domain
name and is an abusive registration; or
b) it is offensive.
Pursuant to regulation 4, the following factors may be indicative of an abusive domain name
registration:
a) If the purpose of the registration was primarily to –
i) sell, rent or otherwise transfer the domain name to another person for an
amount in excess of the registrant’s reasonable out-of-pocket expenses relating
to acquisition of the domain name;
ii) block the complainant from obtaining the registration;
iii) unfairly disrupt the business of the complainant; or
iv) prevent the complainant from exercising his, her or its rights.
b) The registrant’s use or registration is causing confusion as to a connection with the
complainant.
c) The registrant has engaged in a pattern of making abusive registrations.
d) The registrant provided false or incomplete registration contact details.
e) The domain name was registered on behalf of, and paid for by, the complainant.
The registration of a domain name may be an offensive registration if it advocates hatred

that is based on race, ethnicity, gender or religion or constitutes incitement to cause harm.
10.4.2.6 Other forms of abuse related to domain name registrations

As mentioned previously, another form of abusive domain registration is that of
typosquatting, also referred to as domain mimicry. 381 Typosquatting, a type of
cybersquatting, involves the registration of domain names which incorporate, as
the dominant portion of the domain name, variations of existing domain names,
particularly those which incorporate registered trade marks. These variations are
common misspellings of domain names, or likely typing errors which Internet users
may make as a result of the layout of the widely used QWERTY keyboard. While
these registrations do not deprive the trade mark owner of the ability to register a
domain name incorporating its mark, they may be regarded as being similar to the
registered domain name and as such abusive. By registering the similar domain name, the
typosquatter hopes to profit from the unwitting visitors to the website served by the
domain name it has registered. The website may, for example, offer advertising space for
a fee to third parties, including competitors of the registered trade mark owner, whose
website Internet users were hoping to access, and so harm the trade mark owner by
diverting potential custom.382 In consequence, the typosquatter’s domain name may dilute
the registered trade mark.
381 T Pistorius ‘.za alternative dispute resolution regulations: The first few SAIIPL decisions’ (2008) 2 Journal of Information,
Law and Technology 1 at 12.
382 Muscovitch supra 37.

PAUSE FOR Typosquatting examples

REFLECTION The following are typosquatting variations of the cocacola.com domain name:
• cokacola.com
• xocacola.com
• cocacolas.com.
What is potentially a thornier issue for registered trade mark owners (and well-known
persons) is the incorporation of their marks in domain names to which websites are
directed that may be critical of the trade mark owner (known as gripe sites) or may be
appreciative of the owner (known as fan sites). Usually, the dominant parts of the domain
names are not identical to the relevant trade marks, and contain additional material
indicating their nature. For example, the dominant part of the domain names of gripe sites
may have prefixes or suffixes, such as ihateryanair.co.uk, telkomsucks.co.za, mac-sucks, or
opticalexpressruinedmylife.co.uk. However, where the dominant part of such a domain
name does consist exclusively of a trade mark, it may amount to being an abusive
registration.383 In other cases, where the domain name also contains material additional to
the trade mark, whether the incorporation of the trade mark constitutes an infringement
thereof will depend on whether such use is justified on the basis of the available defences,384
or on the basis of freedom of expression.385 A crucial factor in the assessment of whether the
domain name is an abusive registration is whether the registrant profits from its activities
(that is, whether they amount to commercial use) by, for example, the inclusion of
commercial links to third-party websites.386
Techno-jacking is a type of abusive domain name registration which, proportionately,
has been more prevalent in South Africa than the above forms of dispute.387 It involves
the registration of a domain name by a person, typically an Internet service provider (ISP)
or website developer, which incorporates a trade mark belonging to another party,
with whom the ISP or developer is in dispute. The dispute may, for example, have arisen
from a contractual relationship that existed between the registrant and the trade
mark owner. Registration of the domain name therefore amounts to the use of a kind of
self-help remedy by the registrant, as it potentially coerces the trade mark owner to settle
the dispute on terms which may be unfavourable to it, in order to secure the desired
domain name. Such registrations have been found to be abusive registrations pursuant to
regulation 4(1)(a)(iv): registrations aimed primarily at preventing the complainant from
exercising its rights.388
The last type of abuse related to domain name registrations concerns bad faith attempts
to deprive a registrant of its domain name.389 This form of behaviour, known as reverse
domain name hijacking (RDNH), is more an abuse of the alternative dispute resolution
384 S 34(2) Trade Marks Act. These defences would be equivalent to fair use exemptions under US law. See para 2.9.3.
385 See, for example, Wachovia Corporation v Alton Flanders D2003 – 0596 (WIPO); Laugh It Off Promotions CC v South
African Breweries International (Finance) BV t/a Sabmark International (Freedom of Expression Institute as Amicus
Curiae) 2006 (1) SA 144 (CC).
386 See, for example, Ryanair Ltd v Robert Tyler, D00008527, 7 October 2010 (UK’s Nominet Dispute Resolution Service)
which concerned the ihateryanair.co.uk domain name; DCM (Optical Holdings) Ltd v Sasha Rodoy, D0001127, 3 August
2012 (UK’s Nominet Dispute Resolution Service) which concerned the opticalexpressruinedmylife.co.uk domain name.
388 S Papadopoulos & S Snail Cyberlaw@SA III: The Law of the Internet in South Africa 3 ed (2012) 212; Pistorius
‘Cyberbusters versus cybersquatters: Round II in the ZADNA ring’ 673.
389 Pistorius ‘.za alternative dispute resolution regulations: The first few SAIIPL decisions’ 17.

mechanism – which was deliberately designed to make the resolution of disputes cheaper
and quicker – rather than abusive registration of the relevant domain name. Obviously, a
case of RDNH has to be distinguished from an unsuccessful, but honest, complaint which
was lodged. While an adjudicator may make a finding of RDNH even if not requested to
do so by the registrant in a dispute,390 such a finding should only be made if a complaint
had, on a fair interpretation of the facts, no real prospect of success.391 This will be the case
if the complainant has been ‘guilty of bad faith, recklessness, dishonesty, malicious intent
or disregard for the possible ‘rights’ of the registrant’.392
10.4.3 Metatags
Metatags are words or text which are embedded in the hypertext mark-up language
(HTML) code used to generate web pages, or camouflaged text inserted in a web page,
and, thus, invisible to the average Internet user. 393 Their function is to describe the
contents of a website, usually by means of words that Internet users are likely to use in
order to search for the website, which can then be picked up by Internet search engines.
Along with a web page’s visible text, metatags are searched by search engines to locate,
rank, and list, websites of interest to users. Because of this, website owners insert trade
marks (both their own and those of competitors) as metatags so that their sites can appear
when consumers use those trade marks as search terms. This has led to the practice of
so-called wordstuffing, which involves the same word being inserted multiple times as a
metatag to improve the ranking of the web page on search engines.394 The placing of
spurious metatags is also known as spamdexing.395 The legal issue that has arisen is
whether the use of third-party trade marks as metatags constitutes trade mark
infringement.396 Based on the case law from the US and the UK, as a general rule, provided
that a website owner’s use of another’s trade mark as a metatag does not cause confusion
among Internet users as to the source of the website, which would include initial
interest confusion, and fairly describes the contents of its website, it does not amount to
trade mark infringement.
Requiring the consent of trade mark owners to use their trade marks as metatags may
prevent lawful uses of those trade marks, such as: where the marks provide a fair description
of the website owner or its services (for example, Amazon sells a wide range of products, and
would, lawfully, wish to attract potential customers to its website by including the trade
390 Hurter ‘Not the lesser evil: Amending the regulations for the resolution of domain name disputes in the ‘.za’ domain to
combat reverse domain name hijacking’ 419.
391 417.
392 420.
393 G Ebersöhn ‘Internet law: Metatags and trade mark infringement (part 1)’ (2003) 4 TSAR 622; Gringras The Laws of the
Internet 204–5; Papadopoulos & Snail Cyberlaw@SA III: The Law of the Internet in South Africa 205. Technically, there
are two types of metatags: keyword and description metatags. The description metatags contain the text of the
description fragment which is displayed beneath search engines’ listing of the search results. In the present context,
keyword metatags, namely those terms by which search engines will select websites to display based on Internet users’
searches, are generally at issue.
394 Ebersöhn 622.
395 Papadopoulos & Snail Cyberlaw@SA III: The Law of the Internet in South Africa 205.
396 Search engines have, for some time now, been aware of attempts to improve the ranking of web pages by these means,
and constantly improve their search algorithms to avoid such manipulation. It is therefore unclear to what extent
wordstuffing and spamdexing achieve their objectives.

marks of products it sells as metadata),397 or promote an individual’s constitutionally

protected right to freedom of expression about products or services (for example, a gripe
site may use the trade mark of the products or services which are the subject of criticism as
a metatag, otherwise criticism may be stifled).398 Internet users have an interest in being able
to locate relevant information, and these uses simply serve to describe the contents of the
websites.399 Thus, although the metatag may be identical to a trade mark, and used in relation
to the identical goods or services, for the purposes of section 34(1),400 such use may not be
use in the course of trade, or may amount to bona fide descriptive use thereof.401 Even the
use by a competitor in the context of comparative advertising may be regarded as bona fide
descriptive use.402
However, the unauthorised use of trade marks as metatags could constitute trade mark
infringement where such use: causes confusion on the part of the public as to the source of
the website to which they are directed,403 or diverts business to competitors of the relevant
trade mark owner.404 The basis for such use of trade marks as metatags constituting trade
mark infringement, particularly by competitors, is that such use creates initial confusion on
the part of consumers, or may result in trade mark dilution.405 Following the ECJ’s Interflora
decision, it can probably be accepted that now the use of a well-known registered trade mark
in the metadata, resulting in diversion of custom, could amount to taking unfair advantage
of the mark, particularly if the unauthorised use of the mark is in relation to imitation
goods.406 As discussed below, the court in the Interflora case suggested that the use of a
competitor’s trade mark to attract custom, by offering alternative goods or services, may be
lawful, but this may not be the case where such use relates simply to the offering of mere
imitations, causing tarnishment or dilution, or affecting the functions of the mark.407 The
fact that a trade mark enjoys a reputation makes it likely that a large number of Internet users
will use the name of that mark as a search term when carrying out an Internet search to find
information or offers relating to the goods or services covered by that trade mark,408 resulting
397 See, for example, Playboy Enterprises Inc v Welles 162 F 3d 1169 (9th Cir) (CA Cal 2002), where Ms Welles – as a former
Playboy Playmate of the Year – was allowed to use the trade marks ‘Playboy’ and ‘Playmate of the Year’ in relation to
her personal erotica website because it described who she was; and, Bernina of America Inc v Fashion Fabrics
International Inc 57 USPQ 2d 1881 (ND111 2001), where a distributor of Bernina sewing machines was permitted to
use the ‘Bernina’ trade mark as a metatag because it described the nature of its business.
398 See, for example, Bally Total Fitness Holding Co v Faber 1998 29 F Supp 2d 1161 (CD Cal).
399 Ebersöhn ‘Internet law: Metatags and trade mark infringement (part 1)’ 628–30.
401 Ebersöhn supra 627–8 and 633–4; Gringras The Laws of the Internet 206. In the UK, in Reed Executive Plc v Reed Business
Information Ltd [2004] RPC 40, although the matter was not properly argued, the Court of Appeal, held, rather
questionably, that metatags cannot amount to trade mark use, as metatags are not intended to be perceptible to humans.
However, it is submitted that Gringras is correct in suggesting that trade mark legislation does not require that trade
marks need to be displayed to humans, and the fact that information is displayed to humans on the basis of their use
must be significant from a trade mark perspective. The Court of Appeal held that, in any event, if metatag use counts as
use of a trade mark, there was simply a question of confusion in that case. In an earlier UK case, in summary judgment
proceedings, the defendant admitted that its use of the plaintiff’s trade mark as a metatag constituted trade mark
infringement, which was accepted by the court (Roadtech Computer Systems v Mandata Ltd [2000] ETMR 970).
402 Ebersöhn supra 633.
403 See, for example, Brookfield Communications Inc v West Coast Entertainment Corp 174 F 3d 1036 (CAq (Cal), 1999); Eli
Lilly and Co v Natural Answers Inc 86 F Supp 2d 834 (SD Ind 2000); North American Medical Corporation v Axiom
Worldwide Inc 2008 US App LEXIS 7370 (11th Cir).
404 Bihari v Gross 119 F Supp 2d 309 (SDNY 2000).
405 See, for example, Playboy Enterprises Inc v AsiaFocus International Inc US Dist LEXIS 10359 (ED Va 1998).
406 Interflora Inc & Another v Marks & Spencer plc & Another 2011 C-323/09.
407 [86]–[91].
408 [85].

in the diversion of custom.409 In addition, the use of a competitor’s trade mark may,
depending on the facts, also constitute passing off or unlawful competition.410
10.4.4 Keyword advertising

Recently, the most contentious trade mark issue has concerned keyword advertising on the
Internet. Internet search engines, most notably Google, with its AdWords service, offer
advertisers the right to have their advertisements displayed in response to specified search
terms (also known as keywords) which Internet users are likely to use, and on related web
pages. These advertisements, sometimes called ‘sponsored’ links or advertisements, are
generally distinguishable from, and are displayed separately from, the so-called ‘natural’
results of search queries. What has made this practice, known generically as keyword
advertising, so contentious is that Google sells advertisers the right to display their
advertisements in response to keywords which are third parties’ registered trade marks.411
Through such practices – referred to as ‘click and bait’ or ‘bait and switch’ – an advertiser
seeks to divert traffic away from the competitor who may own the particular trade mark
which was used as a keyword. Trade mark proprietors have therefore questioned the
lawfulness of this practice and have claimed that it constitutes trade mark infringement or
unfair competition (or passing off ). Strategically, trade mark proprietors initially sought to
hold the search engine operators liable as there are far fewer of them than the advertisers
who make use of keyword advertising, and if this were to succeed it would put an immediate
end to the practice. Another reason for pursuing the search engine operators is that they
have managed to earn handsome profits from offering keyword advertising. For example,
keyword advertising is Google’s main source of revenue, and in 2008 earned it $21 bn.412
There have been two important European Court of Justice (ECJ) decisions concerning
keyword advertising, which have brought some certainty to possible liability in relation
thereto. The first decision was pursuant to a referral from the French courts as a consequence
of three cases brought by trade mark proprietors against Google. This was followed by a
referral to the ECJ by the English High Court. For purposes of the discussion below, it can
be assumed that the keyword was identical to a third party’s trade mark, and that the
sponsored advertisement was in relation to identical goods and services to those for which
the trade mark was registered. Furthermore, the trade mark did not appear on the sponsored
advertisement which was triggered by it, or on the website to which the sponsored
advertisement was linked.
In the Google France case,413 one of the parties, Louis Vuitton Malletier, instituted trade
mark infringement proceedings against Google as a consequence of the use of its trade mark
as a keyword by third parties who were selling imitations or counterfeit versions of its
products. In the other cases, the advertisements promoted similar or competing products
to those of the trade mark proprietor whose trade mark was used as a keyword. The question
which arose in the Google France case was whether Google’s AdWords service relating to the
409 Interflora v Marks & Spencer [87] and [88].

410 Ebersöhn supra 633; Gringras supra 207.
411 Google plays an active role in suggesting keywords to advertisers as it has statistical tools indicating the frequency with
which search terms are used by Internet users. More than one advertiser can use the same keyword, in which case the
order in which their advertisements are displayed depends on which advertiser is prepared to pay the highest price, as
well as on other factors. See Google France SARL and Google Inc v Louis Vuitton Malletier SA, Google France and Google
Inc v Viaticum SA and Another, and Google France and Google Inc v CNRRH and Others [94].
412 C Webster & A Castleman ‘Google’s AdWords programme gets the go-ahead’ (2010) May Without Prejudice 18.
Another, and Google France and Google Inc v CNRRH and Others 2010 Joined Cases C-236/08, C-237/08 and C-238/08.

selling of keywords corresponding to third parties’ registered trade marks amounted to trade
mark infringement, by Google or its customers (that is, the advertisers).
The ECJ held that Google was not infringing trade mark proprietors’ rights in respect
of the use of their trade marks as keywords in Google’s paid referencing service AdWords.
Although Google, as a referencing service provider, allowed its customers to use signs
identical to trade marks, Google was not liable for infringement under article 5 of the TM
Directive because Google itself was not using third party trade marks in the course of trade;
it was merely creating the technical conditions necessary for advertisers to use the
marks.414
As far as the advertisers are concerned, the selection of a keyword which is identical to
a third party’s trade mark was use of that mark in relation to goods or services for which the
trade mark was registered, within the meaning of article 5(1)(a) of the TM Directive.415 The
advertiser selected the trade mark as a keyword with the aim of offering Internet users, who
may have perceived such offer to be in respect of the desired goods, an alternative to the
goods or services of the trade mark proprietor.416 A trade mark may be infringed even if it
does not appear in the advertisement seen by the Internet user; the use of the keyword to
generate the advert may still constitute use in relation to the goods or services.417 The only
other question that had to be established, in order to determine whether such use by the
advertisers constituted trade mark infringement, was whether such use affected any of the
functions of a trade mark. These are to indicate the origin of the product, which is the
essential (traditional or primary) function, as well as other functions, which include the
indication of quality, communication and the advertising function of the trade mark.418
Whether the primary function of a trade mark is adversely affected depends on the manner
in which the sponsored advertisement is presented.419 The advertiser would be liable for
infringement if the advertisement did not enable an average and reasonably attentive
Internet user to ascertain, or only to do so with difficulty, whether the goods or services
referred to originated from the owner of the trade mark or an undertaking economically
connected to it.420 In addition, such use of keyword advertising may also amount to unlawful
competition by the advertiser.421
Because of the way Google displayed the search results, it was unlikely that the advertising
function (namely, to inform and persuade consumers) of the trade mark used as a keyword
would be affected. Google appeared to have reduced possible allegations of confusion by
generally ensuring that the trade mark proprietor’s web page was at the top of the ‘natural’
results of a search, which were displayed alongside the keyword advertisements.422 This was
indeed the case, despite the fact that if the trade mark proprietor wanted its own sponsored
advertisement to appear, it may have had to pay a higher price per click in order to ensure
that its advertisement appeared above that of a competitor who was also using the mark as
a keyword.423
Another, and Google France and Google Inc v CNRRH and Others [55]–[57].
415 [73].
416 [67] and [69].
417 [65] and [66].
418 [75]–[79].
419 [83].
420 [84].
421 [87].
422 [96]–[98].
423 [94].

Although the court did not consider the possibility that Google might be liable as a joint
tortfeasor424 with an advertiser for trade mark infringement, it did consider whether Google
could rely on the article 14 exemption in the E-Commerce Directive, as an information
society service provider,425 acting as a mere host of information, and, therefore, with no
liability prior to its being informed of the unlawful conduct of an advertiser.426 Google was
considered to be an information society service provider because it simply stored the
relevant trade mark keyword and organised the display of advertisements on the basis of
that keyword and was therefore entitled to rely on the exemption in article 14.427 The fact
that Google received payment for its keywords service did not preclude it from relying on
article 14.428 Google could only rely on the exemption if its role in relation to the keyword
advertising was neutral, in the sense that its conduct was merely technical, automatic and
passive, pointing to a lack of knowledge or control of the data which it stored.429 Whether
Google was neutral in a particular situation was a factual matter, to be determined by the
national courts, depending on its role in drafting the contents of advertisements and in the
selection of keywords.430 Once Google has knowledge of the infringing nature of the stored
data or the advertiser’s activities it must act expeditiously to remove advertisements that
infringe third-party trade marks.431
PAUSE FOR Discussion point

REFLECTION Was the court in Google France correct in its finding that by providing its AdWords service,
Google was a mere host of information, and played a passive role in relation to the keyword
advertising? Can it really be said that Google’s involvement was merely technical, automatic
and passive?
In the subsequent case of Interflora Inc v Marks & Spencer plc,432 the ECJ provided more
guidelines as to when an advertiser who bought a keyword that was identical, or similar, to
a third-party’s trade mark could be liable for trade mark infringement. Marks & Spencer
(M&S), a UK retailer, bought several keywords containing the mark INTERFLORA, belonging
to Interflora Inc (Interflora), the creator of the world’s largest flower delivery network, and
close variations of that mark. Searching against these keywords generated a sponsored link
to M&S’s online flower-delivery service. Interflora brought proceedings against M&S alleging
infringement under article 5(1)(a) of the TM Directive (primary infringement) and article
5(2) (taking unfair advantage of, or causing detriment to, a well-known trade mark).
In so far as infringement under article 5(1)(a) (so-called ‘double-identity’ cases) was
concerned, the ECJ again stated that infringement will only be found to occur if there was
an adverse effect on one of the functions of the trade mark. It was not only trade marks with
a reputation (that is, well-known marks), which were capable of having functions other than
424 A joint tortfeasor is a joint wrongdoer, whose actions have contributed to the harm because it acted in concert with the
other wrongdoer(s).
425 Which is similar to a ‘service provider’ under the Electronic Communications and Transactions Act 25 of 2002.
426 [106] and [109].
427 [111].
428 [116].
429 [114].
430 [118] and [119].
431 [120].
432 Interflora Inc & Another v Marks & Spencer plc & Another [2013] EWHC 1291 (Ch).

that of indicating origin.433 As far as the origin function is concerned, there may be
infringement not only if the sponsored advertisement suggested a link between the
advertiser and the trade mark proprietor, but also if the advertisement was so vague as to
the origin of the goods or services that a reasonably well-informed and reasonably observant
Internet user was unable to determine whether the advertiser was the trade mark proprietor,
or was linked to that proprietor.434
In making the factual determination of whether such confusion exists one has to
determine firstly whether Internet users were generally aware that M&S’s flower delivery
service was not part of the Interflora network and, secondly, if this was not generally known,
whether the sponsored M&S advertisements enabled Internet users to tell that the M&S
service did not belong to the Interflora network. A relevant factor was that a large number
and variety of retailers formed part of that network, which might make it more difficult for
Internet users to tell whether M&S was part of the Interflora network.435
A trade mark’s advertising function is not affected simply because the use thereof as a
keyword may mean that the trade mark proprietor might have to pay a higher price per click
in order to ensure that its sponsored advertisement appeared above that of a competitor
who was also using the mark as a keyword, and that it might also have to intensify its
advertising efforts in order to maintain or enhance its profile with consumers.436 The use of
third-party trade marks as keywords was generally to offer consumers alternatives to the
goods or services of the relevant trade mark proprietors, which was acceptable competitive
commercial behaviour.437 This did not deny the trade mark proprietor the opportunity of
using its mark effectively to inform, and win over, consumers.438
The investment function of a trade mark, although overlapping with the advertising
function, is a separate function, which allows the proprietor to acquire or preserve a
reputation capable of attracting consumers and retaining their loyalty.439 If a third party’s
use of a trade mark substantially interferes with the proprietor’s use of the mark to acquire,
or preserve, a reputation, that use would adversely affect that mark’s investment function.440
However, the fact that the keyword use prompted some consumers to switch to a
competitor’s goods or services was not itself a basis for finding that the investment function
was adversely affected.441
The court then considered whether, pursuant to article 5(2), a proprietor of a trade mark
with a reputation is entitled to prevent a competitor from using its trade mark as a keyword,
without the proprietor’s consent. Any of the three types of damage could be sufficient to
support a finding of infringement under article 5(2): first, detriment to the distinctive
character of the trade mark (dilution), second, detriment to the repute of that mark
(tarnishment), and, third, taking unfair advantage of the distinctive character or the repute
of the mark (free riding).442 Only possible dilution or free riding was considered.443
433 Interflora Inc & Another v Marks & Spencer plc & Another [40].
434 [45].
435 [51].
436 [56] and [57].
437 [57] and [58].
438 [59].
439 [60] and [61].
440 [62] and [63].
441 [64].
442 [72].
443 [75].

A diluted mark would become incapable of creating an immediate association, in the

minds of consumers, with a specific commercial origin.444 Dilution will have occurred if the
conduct complained of contributed to turning the trade mark into a generic term.445 The use
of a trade mark as a keyword does not necessarily contribute to such a development.446 There
would be no dilution of the distinctiveness of the registered trade mark if an Internet user
could tell that the sponsored advertisement was not an Interflora advertisement, but was
that of a competitor, offering an alternative product or service.447
It is undoubtedly the case that competitors select trade marks with a reputation with the
purpose of taking advantage of their distinctive character and reputation, and divert custom
from which they derive a real advantage, which prima facie amounts to free riding.448
However, such use is not ‘without due cause’ if competitors are merely doing so to put
forward alternative goods or services, rather than offering mere imitations of the proprietors’
goods or services, causing tarnishment or dilution, or affecting the functions of the mark.449
The English High Court450 held that M&S’s use of the keyword INTERFLORA amounted
to trade mark infringement pursuant to article 5(1)(a) because a significant proportion of
reasonably well-informed and reasonably attentive Internet users were misled into
believing that M&S’s flower delivery service was part of the Interflora network, so that the
mark’s origin function was adversely affected.451 However, there was no effect on the
investment function of the mark since there was no evidence that M&S’s keyword
advertising had an adverse effect on the reputation of the INTERFLORA mark. 452
Furthermore, there was no dilution or taking of unfair advantage without due cause in
contravention of article 5(2).453
10.4.5 Secondary markets

In the US, France and the UK trade mark proprietors have brought a number of lawsuits
against eBay, which is an operator of an online marketplace for sellers of goods. These trade
mark proprietors have sought to hold eBay, rather than the relevant eBay sellers of goods,
liable for trade mark infringement as a result of the sale of counterfeit goods on its website.
While proprietors of luxury brands have been quite successful against eBay with claims
brought in France (which is also the home of many of these brands, and is, therefore, said
to be protective of them), they have been less successful in the US. For example, in France
eBay was found to have harmed the trade marks in question by not monitoring the sale of
counterfeit goods on its site; had been responsible for, or supported, the sale of counterfeit
goods; and supported the unauthorised sale of genuine goods. The main reasons for holding
eBay liable were the fact that it had knowledge of the counterfeit trade, and that it advertised
the availability of these items on its website, because it benefited from this fact.454 In contrast,
in the US, the luxury jeweller Tiffany was unsuccessful in its action for trade mark dilution
against eBay as the court found that Tiffany had not established that the selling of fake Tiffany
444 Interflora Inc & Another v Marks & Spencer plc & Another [76].
445 [79].
446 [80].
447 [81].
448 [86]–[89].
449 [91].
450 The national court which referred an issue to the ECJ has to apply the rulings of the ECJ to the facts in giving judgment
in the case referred to the ECJ.
451 Interflora Inc & Another v Marks and Spencer plc & Another [318].
452 [319].
453 [321]–[323].
454 Murray Information Technology Law: The Law and Society 317–8.

jewellery was so widespread on eBay that it could be said to have the intention to deceive
customers. It was not sufficient that eBay was aware that some fake products were being sold
via its website.455 However, where an owner of an online marketplace had direct control of,
and monitored, the instruments used by third-party sellers of counterfeit goods, a US court
has recently held the operator liable for contributory trademark infringement and
contributory counterfeiting.456 In that case, the principal purpose of the website appears to
have been to actively promote, and facilitate, the sale of counterfeit goods.
PAUSE FOR Participating in sale of unlawful goods

REFLECTION In L’Oréal v eBay,457 the ECJ dealt with some issues referred to it by the English High Court
concerning eBay’s possible liability for trade mark infringement as a joint tortfeasor for sales
by individual eBay sellers of counterfeit, parallel-traded and other ‘not for sale’ L’Oréal
branded products on eBay’s UK website. One of the issues concerned the fact that, in
addition to eBay being a platform for sellers, eBay assisted sellers to enhance their offerings,
and also advertised some of the products which were on offer on its website, by purchasing
keyword advertising from search engines to trigger the display of advertisements. These
advertisements allowed an Internet user to click on the link and be sent to eBay’s site where
the goods with the requested trade mark were displayed.
Consistent with the ECJ’s Google France decision, the court held that simply allowing the
sale of trade-marked goods by reference to those trade marks on an online marketplace, like
eBay, does not involve ‘use’ of the relevant trade marks by the online marketplace operator.
That use is made by its customers.458 As for the purchase of keywords (to display links to
advertisements) corresponding to third parties’ trade marks by the marketplace operator to
promote its own business, this did not amount to use, pursuant to article 5(1) of the 1989
TM Directive, in relation to identical goods or services for which the trade marks were
registered.459 However, the use of those keywords to promote the business of its customers
(that is, the eBay sellers) to sell goods bearing those marks, did amount to potentially
infringing use by the marketplace operator in relation to identical goods or services for which
those marks are registered. There can be infringing use by a person in relation to goods or
services even if those goods or services are not from (owned by) that person.460 Whether
such use amounts to trade mark infringement depends on whether it adversely affects one
of the functions of the trade mark. There would be such an adverse result if the
advertisements to which Internet users were directed did not enable a reasonably well-
informed and reasonably observant Internet user to ascertain whether the goods originated
from the trade mark proprietor or an undertaking economically linked with it, or only
enabled the user to do so with difficulty.461 Furthermore, such purchase of keywords by the
marketplace operator may constitute use of the trade marks in the case of trade marks with
a reputation (that is, well-known trade marks) pursuant to article 5(2) of the 1989 TM
455 ‘Tiffany loses out in e-Bay lawsuit’ Reuters in: ITWeb Business, 14 September 2010, www.itweb.co.za/index.
php?option=com_content&view=article&id=36814 (accessed 18 September 2014).
456 Chloe SAS & Others v. Sawabeh Information Services Co CV 11–4147 GAF (MANx), 8 October 2013.
457 L’Oréal SA & Others v eBay International AG & Others 2011 C-324/09, 12 July 2011.
458 [102].
459 [89]. The equivalent provision in the Trade Marks Act is s 34(1)(a).
460 [91].
461 [94].

Directive, as there may be infringing use of such trade marks in relation to goods or services
which are not similar to the goods or services for which those marks are registered.462
The marketplace operator could rely on the exemption from liability under article 14(1)
of the E-Commerce Directive provided it was an intermediary service.463 The operator of an
online marketplace may still be an intermediary provider if it stores offers for sale on its
server, sets the terms of its service, is remunerated for that service and provides general
information to its customers.464 However, where the marketplace operator has provided
assistance to optimise the presentation of the offers for sale in question or promote those
offers, it is no longer in a neutral position between the seller concerned and potential buyers,
and plays an active role of such a kind as to give it knowledge of, or control over, those offers
for sale.465 Even if the marketplace operator did not take an active part in the trade mark
infringement, it may not rely on the exemption if it was aware of facts or circumstances which
should have led a diligent operator to identify such infringement, and take the steps required
of it under article 14(1) of the E-Commerce Directive.466
To date there have been no reported South African cases dealing with these issues. If
such a case should come before our court it is likely that the court will be guided by the
approaches described above, taking due cognisance of differences in detail between the
European legislation and our own law, in particular of specific defences offered by European
legislation which have not been incorporated into our law.
10.4.6 Social networks

The most recent development in the area of trade marks in the digital environment has been
the use of trade marks on social networks. For example, a profile or username may be created
using, or incorporating, a trade mark in Facebook or Twitter without authorisation from the
trade mark proprietor. Although there have been no cases concerning whether such use
constitutes trade mark infringement, we could attempt to draw some conclusions by analogy
with the aforementioned uses of trade marks in the digital environment.
To the extent that the creator of the profile is not a competitor of the trade mark owner,
or is not using the profile for any economic advantage, it is unlikely that the use of the trade
mark can be said to be in the course of trade for purposes of section 34 of the Trade Marks
Act. The use of the trade mark in such profiles will probably be for the purpose of criticism,
or appreciation, of the trade mark owner. Accordingly, the legal situation pertaining to gripe
sites or fan sites should be applicable. While such use would probably be protected by the
constitutionally protected right to freedom of expression, rather surprisingly, it appears that
if the profile consists exclusively of the trade mark, without any additional material indicating
its nature, such as suffixes or prefixes, Facebook’s and Twitter’s terms of use allow the trade
mark proprietor to lodge a complaint and reclaim, or terminate, such profile.467 In other
cases, where the username also contains material additional to the trade mark, although the
trade mark owner may also attempt to lodge a complaint, such use should be protected by
the right to freedom of expression.
If the creator of the profile is a competitor of the trade mark owner, besides also having
the ability to lodge a complaint with the operator of the social network, such use will be in
462 [90]. The equivalent provision in the Trade Marks Act is s 34(1)(c).
463 [112].
464 [115].
465 [116].
466 [120].
467 R Sikwane ‘Don’t tweet my brand!’ (2011) May Without Prejudice 34–35.

the course of trade and should amount to trade mark infringement because a reasonably
well-informed and reasonably observant Internet user would not easily be able to determine
whether the profile was that of the trade mark proprietor, or was linked to that proprietor.
Furthermore, as there is the likelihood of confusion on the part of the Internet user, or
possible misrepresentation by the creator of the profile, the use of the profile could amount
to passing off or unlawful competition. However, it is unlikely that the social networks, as
mere hosts, could be said to have used the trade marks in the course of trade.
10.5 Conclusion
As will be apparent from the above, the Internet has opened up a whole new world of
opportunities, challenges and pitfalls relating to the utilisation of trade marks. This has
unavoidably opened up a dynamic area of trade mark law which is steadily evolving and
may well see future development in new directions. Jurists engaged in trade mark law will
therefore have to keep on their toes in order to cope with new developments.

Chapter 11 Intellectual property rights
and the Constitution
MIKHALIEN DU BOIS

11.2 Intellectual property rights under section 25 (the constitutional property clause) 467
11.2.1 The First Certification case and background to section 25 and intellectual
property rights 467
11.2.2 The Laugh It Off case 468
11.2.3 Deprivation and expropriation of intellectual property rights 472
11.3 Intellectual property rights and constitutional rights in foreign law 475
11.3.2 Irish law 476
11.3.3 German law 476
11.3.4 Australian law 479
11.3.5 United States of America 483
11.4 International human rights law and intellectual property: a human rights framework for
intellectual property 485
11.5 Conclusion 491
11.1 Introduction
The rights covered by existing intellectual property statutes and common law will be
considered for purposes of constitutional property protection. These are copyright and
related rights, patent rights, trade-mark rights, registered design rights, plant breeders’ rights
and the right to attract custom. See the relevant chapters of this book for an exposition of
the property rule-type protection enjoyed by these categories of intellectual property.
Intellectual property rights are afforded property rule-type protection by legislation and
common law, and private law honours this position; therefore intellectual property rights
are recognised as sui generis categories of property in private law. In constitutional property
law it is generally accepted that at least interests recognised and protected as property in
private law will also be recognised and protected as property in constitutional law, although
the constitutional property concept is wider than the corresponding concept in private law
and interests other than property rights in private law may be recognised and protected as
constitutional property as well if they require such protection.
At the outset it must be stressed that the purpose of private law property protection
differs greatly from the purpose of constitutional property protection. While the purpose of
property rule-type protection in private law is to protect property rights against infringements
by third parties, constitutional protection ensures that the state does not interfere with
property unduly.
Section 25 of the Constitution, the constitutional property clause, lays down strict
requirements that the state must adhere to before a deprivation or expropriation of property
would be constitutionally valid. The content and effect of this clause are discussed in
paragraph 11.2.3 below. In essences it lays down the parameters within which the state may

interfere with property rights, including intellectual property rights. The constitutional
property clause can also potentially provide protection where a particular property right
comes into conflict with other constitutional or private rights of other persons, at least in
principle. However, where another right is regarded as more valuable than the particular
property right, the other fundamental right may still outweigh the property right and
consequently be protected more stringently than the property right. The purpose of this
chapter is not only to determine which particular intangible property rights may enjoy
recognition and protection as constitutional property, but also to identify some preliminary
guidelines for South African courts to utilise where rights may come into conflict, as for
example the right to property, the right to health, the right to education and the right to
freedom of expression.
At the outset it is necessary to identify which intellectual property rights recognised in
private law interact with the provisions of the Constitution relating to property. These are
set out below, with references to the corresponding chapters of this book which deal with
the respective intellectual property rights.
Intellectual property: sui generis forms of property in private law:
Copyright and Patents Designs Trade Marks Other rights

Related Rights Competition Law •• Trade Secrets
•• Confidential
Information
•• Geographical
Indications
•• Traditional
Knowledge
Copyright Act 98 of Patents Act 57 of Designs Act Trade Marks Act Common Law
1978 1978 195 of 1993 194 of 1993 New Legislation
Performers’ Protection Plant Breeders’ Rights Common Law
Act 11 of 1967 Act 15 of 1976
chapter 1 chapter 5 chapter 7 chapter 2 chapter 8

chapter 6 chapter 3
11.2 Intellectual property rights under section 25

(the constitutional property clause)
11.2.1 The First Certification case and background to section 25 and

intellectual property rights
In the First Certification case,1 when the Constitutional Court decided on the validity of
the Constitution, an objection was raised that the Constitution did not provide for the
protection of intellectual property or mineral rights. According to the court it was not a
universally accepted norm to include a right to intellectual property in a separate
constitutional clause. It was held that the ‘property’ concept used in a generic property
1 Ex parte Chairperson of the Constitutional Assembly: In re Certification of the Constitution of the Republic of South Africa,
1996 1996 (4) SA 744 (CC) para 75.

clause is wide enough to include rights and interests that require protection according to
international human rights standards; therefore there is no need for a separate intellectual
property clause.2
The fact that ‘no universally recognised formulation of the constitutional guarantee of
property’3 exists does not mean that a specific class of property such as intellectual property
is excluded simply because it is not explicitly mentioned. It is unusual for a property clause
to specify all the types of property that are generally accepted under the constitutional
property concept. The failure to mention the rights explicitly in the property clause does
not mean that they are excluded from the property clause, since many other property rights
recognised in private law (such as tangible movables) are not mentioned but are
nonetheless recognised and protected under the property clause.4 As long as the law
recognises a particular interest as property, it would probably be included under the
constitutional property concept. Since intellectual property rights are recognised as
property in private law, albeit on a sui generis basis, they should be included under the
constitutional property clause5 as a matter of course, at least in principle. The requirement
for inclusion is usually simply that ‘the right should be established and vested according
to the applicable statutory prescriptions’.6
11.2.2 The Laugh It Off case

Intellectual property rights are not entrenched in a separate constitutional clause, but may
be recognised and protected adequately under the constitutional property clause. In SAB
International t/a Sabmark International v Laugh It Off Promotions7 the Cape High Court
considered the constitutionally protected right to freedom of expression and the property
right in a trade mark. South African Breweries (SAB) brought an action in terms of section
34(1)(c) of the Trade Marks Act 194 of 1993. The court found that Laugh It Off had infringed
the trade-mark rights of SAB. Laugh It Off lodged an appeal against the court’s finding of
trade-mark infringement. Although the Constitutional Court overruled the outcome of the
2 See T Roux & D Davis ‘Property’ in MH Cheadle, DM Davis & NRL Haysom (eds) South African Constitutional Law: The
Bill of Rights 2 ed (2005) (revision service 14 2013) 20-1–20-28 at 20-17– 20-18; T Roux ‘Property’ in S Woolman, T Roux
& M Bishop (eds) Constitutional Law of South Africa 2 ed (2006) 46-1–46-37 at 46-15; GS Alexander The Global Debate
over Constitutional Property: Lessons for American Takings Jurisprudence (2006) 163; AJ van der Walt Constitutional
Property Law 3 ed (2011) 124–125, 145; M du Bois ‘Intellectual property as a constitutional property right: The South
African approach’ (2012) 24 SA Merc LJ 174–190 at 178–185; M Kellerman The Constitutional Property Clause and
Immaterial Property Interests (LLD Thesis University of Stellenbosch (2010)) chs 5, 6. Cf Lebowa Mineral Trust
Beneficiaries Forum v President of the Republic of South Africa and Others 2002 (1) BCLR 23 (T) at 29G–H where the
High Court interpreted the First Certification case wrongly and decided that mineral rights are excluded from the
constitutional property concept because they are not specifically mentioned, and that the right to mineral rights is not
a universally accepted fundamental right. On this case, see also Van der Walt Constitutional Property Law (2011) 125–126
and AJ van der Walt ‘Resisting orthodoxy – again: Thoughts on the development of post-apartheid South African law’
(2002) 17 SA Public Law 258 at 260–265.
3 Van der Walt Constitutional Property Law (2011) 124. See also Van der Walt ‘Resisting orthodoxy – again: Thoughts on
the development of post-apartheid South African law’ 258–279 at 261 fn 11.
4 Van der Walt Constitutional Property Law (2011) 124–125.
5 S 25 of the Constitution of the Republic of South Africa, 1996.
6 Van der Walt Constitutional Property Law (2011) 144. See also AJ van der Walt Constitutional Property Clauses: A
Comparative Analysis (1999) 324. Alexander The Global Debate over Constitutional Property: Lessons for American
Takings Jurisprudence 163 agrees.
7 [2003] 2 All SA 454 (C) at para 16. See A Smith ‘Trade-mark dilution: You can’t Laugh It Off’ (2004) 12 Juta’s
Business Law 196 at 196–200; W Alberts ‘A case of Black Label: More than just free speech’ (2003) July De Rebus 32–35
at 32–33.

case after the Supreme Court of Appeal’s decision, valuable dicta remain intact.8 Harms JA’s
judgment incorporated comparative law from American, European and Canadian cases,
textbooks and academic writing.9
Although the Supreme Court of Appeal10 noted that the Trade Marks Act should not
infringe freedom of expression unduly, it dismissed the appeal after weighing up the right
to freedom of expression and the right to property. Harms JA held:
trademarks are property, albeit intangible or incorporeal. The fact that property is
intangible does not make it of a lower order. Our law has always recognised
incorporeals as a class of things in spite of theoretical objections thereto ... But then
again, intellectual property rights have no special status. The Constitution ... does not
accord them special protection and they are not immune to constitutional challenge.
Even if constitutional, their enforcement must be constitutionally justifiable.11 [our
emphasis]
The court explicitly affirmed that intangible property is property in private law, which means
that it should be accepted as constitutional property as well.12 The court also noted that
intellectual property has no special status, and consequently rejected the idea that
intellectual property rights should be insulated by extra constitutional protection above that
provided by the constitutional property clause. This provided confirmation that intellectual
property rights are not absolute, but may be limited like other property rights.
It is important for the recognition of intellectual property rights as constitutional property
to note the statement by Sachs J on balancing the right to freedom of expression and the
property right of the trade-mark owner:
The question to be asked is whether, looking at the facts as a whole, and analysing
them in their specific context, an independent observer who is sensitive to both
thefree speech values of the Constitution and the property protection objectives of
trademark law, would say that the harm done by the parody to the property interests
of the trademark owner outweighs the free speech interests involved … It seems to
me that what is in issue is not the limitation of a right, but the balancing of
competing rights … [I]t would appear once all the relevant facts are established, it
should not make any difference in principle whether the case is seen as a property
rights limitation on free speech, or a free speech limitation on property rights. At
the end of the day this will be an area where nuanced and proportionate
8 Laugh it Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International 2005 (2)
SA 46 (SCA). See P Ginsburg ‘Intellectual property law’ (2005) Annual Survey of South African Law 572–583 at 573–575;
Smith ‘Trade-mark dilution: You can’t Laugh It Off’ 196–200 at 199–200.
9 Ginsburg ‘Intellectual property law’ 572–583 at 573; Smith ‘Trade-mark dilution: You can’t Laugh It Off’ 196–200
at 197.
10 Laugh it Off Promotions v South African Breweries at paras 29–34. See J Neethling & JM Potgieter ‘Disparagement of a
business, its product or its services: Freedom of expression of consumers and the public’ (2005) 26 Obiter 389–397 at
395–6; Smith ‘Trade-mark dilution: You can’t Laugh It Off’ 196–200 at 197–199; Ginsburg ‘Intellectual property law’
572–583 at 573; See T Pistorius ‘Trade-mark tarnishment: Should we Laugh It Off all the way to Telcomsucks and
Hellcom?’ (2004) 16 SA Merc LJ 727–740 at 729.
11 Laugh it Off Promotions v South African Breweries paras 10–11. See Pistorius ‘Trade-mark tarnishment: Should we
Laugh It Off all the way to Telcomsucks and Hellcom?’ 727–740 at 731.
12 Smith ‘Trade-mark dilution: You can’t Laugh It Off’ 196–200 at 198–199.

balancing in a context-specific and fact-sensitive character will be decisive, and not

formal classification based on bright lines.13 [our emphasis]
The court noted that statutes should be construed in a manner consistent with the
Constitution, so section 34(1)(c) of the Trade Marks Act had to be interpreted in line with
the right to freedom of expression protected under section 16 of the Constitution.
The judgment of Moseneke J14 as well as the separate concurring judgment by Sachs J15
departed from the point of view that the right to freedom of expression and the right to
intellectual property enjoy constitutional protection. Moseneke J noted that freedom of
expression is not limitless, unqualified or a right ranking above all others. Under the right
circumstances, a law of general application such as the Trade Marks Act may limit the right
to freedom of expression.16 These judgments do not suggest that freedom of expression
should be seen as generally superior to the right to intellectual property. This judgment may
be viewed as the ‘unequivocal recognition of the right to hold intellectual property as a
fundamental right having equal status to the specified fundamental rights in the Bills of
Rights’.17 However, this is not a truly new recognition of intellectual property: the court simply
implicitly affirmed the position that intellectual property may be recognised and protected
under the property clause where required.18
Since the court did go so far as to say that the holder of a trade mark has a property
right, one may ask why no reference was made to the constitutional property clause. The
subsidiarity principles are important in this regard. In terms of this principle, a party
cannot rely directly on a provision in the Bill of Rights if there is legislation that regulates
the issue. If the legislation in question does not accommodate the right adequately, it
could be open to a direct challenge of constitutionality. However, the court was able to
read the right to freedom of expression into the relevant provision of the Trade Marks Act
and implicitly accepted that trade-mark rights qualify as property for constitutional
purposes, thereby negating the need to invoke section 25 as would be necessary if a direct
challenge were raised against the Act.19 The court did offer some form of recognition and
protection for intellectual property (at least in principle), and this must have been in terms
of the property clause.
13 Laugh it Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International (Freedom
of Expression Institute as Amicus Curiae) 2006 (1) SA 144 (CC) paras 82–83. OH Dean ‘Trade mark dilution laughed off’
(2005) Oct De Rebus 18–22 at 19 views this statement as important for the recognition and protection of intellectual
property rights.
14 Laugh it Off Promotions v South African Breweries paras 1–3.
15 Laugh it Off Promotions v South African Breweries paras 80, 102–106.
16 Laugh it Off Promotions v South African Breweries para 47. Dean ‘Trade mark dilution laughed off’ 18–22 at 19 views
this statement as important.
17 OH Dean ‘Trade mark dilution laughed off’ 18–22 at 21.
18 See OH Dean ‘The case for the recognition of intellectual property in the Bill of Rights’ (1997) 60 THRHR 105–119 at
105–119. Compare Van der Walt Constitutional Property Law (2005) 82; Van der Walt Constitutional Property Law (2011)
123; Alexander The Global Debate over Constitutional Property 163; Roux & Davis ‘Property’ in Cheadle, Davis & Haysom
South African Constitutional Law: The Bill of Rights 20-1–20-28 at 20-17; Roux ‘Property’ in Woolman, Roux & Bishop
Constitutional Law of South Africa 46-1–46-37 at 46-15; Du Bois ‘Intellectual property as a constitutional property right:
The South African approach’ 174–190 at 188–191.
19 See AJ van der Walt Property and Constitution (2012) 19–112; AJ van der Walt ‘Normative pluralism and anarchy:
Reflections on the 2007 term’ (2008) 1 Constitutional Court Review 77–128. See also AJ van der Walt & RM Shay ‘Parody
as a means to advance the objectives of copyright law’ (2013) 25 SA Merc L J 1–12; AJ van der Walt & RM Shay
‘Constitutional analysis of intellectual property’ (2014) 17 PER 52–85.

PAUSE FOR What Laugh it Off says about intellectual property

REFLECTION Application of the Laugh it Off Promotions CC v South African Breweries International
(Finance) BV t/a Sabmark International (Freedom of Expression Institute as Amicus Curiae)
2006 (1) SA 144 (CC) decision to intellectual property:
• Trade-mark rights: The Constitutional Court implicitly accepted that trade-marks rights
at least should be recognised as constitutional property and protected where required.
The existing trade-mark legislation, specifically section 34(1)(c), had to be weighed
against the right to freedom of expression, for which no legislation exists. On the facts
the right to freedom of expression weighed more heavily and was protected more
stringently than the trade-mark right.
• Copyright: An example from copyright law would be the possibility of incorporating
a specific exception to infringement in the case of a parody of a work. The
Copyright Act 98 of 1978 does not currently explicitly provide for this, but a need
has been identified. 20 If a parody of a copyright work is made in exercising the
right to freedom of expression, a court would be required to weigh up the
constitutional right of freedom of expression against the copyright owner’s
right to restrict reproduction and adaptation in terms of section 23(1) of the
Copyright Act 98 of 1978. Following the approach of the Constitutional Court in
the Laugh It Off decision, a court would have to interpret the Copyright Act through
the prism of the Constitution. In lieu of a provision in the Copyright Act for a
parody defence, direct reliance would be placed on the right to freedom of
expression. In such a case, the court would then weigh up the right to freedom of
expression against the copyright owner’s right to restrict reproduction and
adaptation of his/her work. In other words the court would interpret the copyright
owner’s right through the prism of the Constitution, as in the Laugh It Off decision,
where the court had to give a constitutional interpretation of section 34(1)(c) of
the Trade Marks Act.
However, if the legislator were to amend the Copyright Act by introducing a specific
section providing for the exception to infringement in terms of parody (giving effect to
the right to freedom of expression) then this particular section could be subject to a
constitutional challenge based on copyright owners’ constitutional right to property. In
this case, what the court would have to weigh up would be the right to parody a work as
provided for in the Copyright amendment (based on freedom of expression) and the
copyright owners’ property right.
• Patent rights: An example from patent law is provided by the case of Cipla Medpro
(Pty) Ltd v Aventis Pharma; Aventis Pharma SA and Others v Cipla Life Sciences
(Pty) Ltd and Others 2013 (4) SA 579 (SCA), where the Treatment Action Campaign
(TAC) was added as amicus curiae. The TAC founded their arguments on section
27(1) of the Constitution, which guarantees everyone the right of access to health
care, including a right of access to affordable medicines.21 They submitted that the
Patents Act must be interpreted ‘through the prism of the Constitution’. On
20 Van der Walt & Shay ‘Parody as a means to advance the objectives of copyright law’ 1–12 at 4–6.
21 Minister of Health and Another NO v New Clicks South Africa (Pty) Ltd and Others (Treatment Action Campaign and
Another as Amici Curiae) 2006 (2) SA 311 (CC) para 514 (Ngcobo J).

the facts, however, there was no constitutional challenge as the relevant

sections of the Patents Act and their clear meaning were not in conflict with the
Constitution.22
11.2.3 Deprivation and expropriation of intellectual property rights

Property does not enjoy absolute protection from state interference, but there are certain
requirements, provided in section 25 of the Constitution, that the state must meet for
interference with any property rights to be lawful.
COUNTER Constitutional limitation of intellectual property rights

POINT The parameters within which intellectual property rights, as property rights, can be limited
are governed by section 25 of the Constitution, the property clause, which provides as
follows:
25. Property
(1) No one may be deprived of property except in terms of law of general application,
and no law may permit arbitrary deprivation of property.
(2) Property may be expropriated only in terms of law of general application –
(a) for a public purpose or in the public interest; and
(b) subject to compensation, the amount of which and the time and manner of
payment of which have either been agreed to by those affected or decided
or approved by court.
(3) The amount of the compensation and the time and manner of payment must be
just and equitable, reflecting an equitable balance between the public interest
and the interests of those affected, having regard to all relevant circumstances,
including –
(a) the current use of the property;
(b) the history of the acquisition and use of the property;
(c) the market value of the property;
(d) the extent of direct state investment and subsidy in the acquisition and
beneficial capital improvement of the property; and
(e) the purpose of the expropriation.
(4) For the purposes of this section –
(a) the public interest includes the nation’s commitment to land reform, and to
reforms to bring about equitable access to all South Africa’s natural resources;
and
(b) property is not limited to land [emphasis supplied] ...
There remain concerns as to whether this section was designed with mainly immovable
property in mind, with the inclusion of intellectual property and movable property as an
afterthought.23
22 Cipla Medpro (Pty) Ltd v Aventis Pharma; Aventis Pharma SA and Others v Cipla Life Sciences (Pty) Ltd and Others 2013 (4)
SA 579 (SCA) paras 44–45. On this case see CJ Visser ‘Of liablity for patent infringement, public interest, and effective
patent terms: Cipla Medpro v Aventis Pharma; Aventis Pharma SA v Cipla Life Sciences’ (2013) 24 SA Merc LJ 456–466
at 460.
23 See Dean ‘The case for the recognition of intellectual property in the Bill of Rights’ 105–119.

Section 25(4)(b) expressly states that property is not limited to land; and this may be
interpreted to include intangibles such as intellectual property.24 If intellectual property is
included under section 25, as it should be, then any state action that interferes with
intellectual property would either be a valid and constitutionally legitimate deprivation or
expropriation; or it would be unconstitutional. For example, a legislative amendment could
take away the right to refuse permission to have one’s copyright work included in a
compilation for specific uses such as educational purposes.25 It becomes clear that the
constitutional property clause does recognise and protect intellectual property;
constitutional protection is merely not unlimited. Only existing property rights can benefit
from constitutional protection.
Section 25(1) provides for the police power principle, which confirms that property is
not absolute: state interferences are permitted as long as they comply with the requirements
of this section. It also lays down the requirements that prohibit unfair or arbitrary state
interferences with property. Furthermore, it must be interpreted in such a way that individual
rights are balanced against social responsibilities. Section 25(2) provides the requirements
for a legitimate expropriation and section 25(3) provides guidelines on just and equitable
compensation.26
The case of First National Bank of SA Ltd t/a Wesbank v Commissioner, South African
Revenue Service; First National Bank of SA Ltd t/a Wesbank v Minister of Finance27 (the FNB
case) is important for intellectual property because the court implied that intellectual
property could be considered to be constitutional property in future.28
COUNTER An appropriate methodology for application to intellectual property

POINT In First National Bank of SA Ltd t/a Wesbank v Commissioner, South African Revenue
Service; First National Bank of SA Ltd t/a Wesbank v Minister of Finance 2002 (4) SA 768
(CC), the Constitutional Court set down the steps to be followed in a constitutional property
dispute. The court stated that a valid (constitutional) expropriation must comply with the
requirements for deprivation in section 25(1) as well as those for expropriation in section
25(2). The court set out the methodology for a constitutional property dispute as follows:
• First, it must be determined whether a particular interest qualifies as constitutional
property.
24 Van der Walt Constitutional Property Law (2005) 15; Van der Walt Constitutional Property Law (2011) 20. See AM Louw
Ambush Marketing and the Mega-Event Monopoly: How Laws are Abused to Protect Commercial Rights to Major Sporting
Events (2012) 542–548 on the restrictions that s 15A(2) of the Merchandise Marks Act 17 of 1941 placed on existing
intellectual property rights and the possibility that these may be constitutionally impermissible restrictions on property
rights.
25 This example is from German law: see BVerfGE 31, 229 [1971] (Urheberrecht case) (the Schoolbook case).
26 Van der Walt Constitutional Property Law (2011) 17–21. See also Du Bois ‘Intellectual property as a constitutional
property right: The South African approach’ 174–190 at 185–188. See also Van der Walt & Shay ‘Constitutional analysis
of intellectual property’ 52–85.
27 2002 (4) SA 768 (CC).
28 First National Bank of SA Ltd t/a Wesbank v Commissioner, South African Revenue Service; First National Bank of SA
Ltd t/a Wesbank v Minister of Finance 2002 (4) SA 768 (CC) paras 51, 100. See Roux ‘Property’ in Woolman, Roux &
Bishop Constitutional Law of South Africa 46-1–46-37 at 46–10.

• If so, then it must be determined whether the deprivation is arbitrary.29 According to the
court deprivation of property is ‘arbitrary’ as contemplated in section 25 when the ‘law’
referred to in section 25(1) does not provide sufficient reason for the particular
deprivation in question or is procedurally unfair.’30
• If the deprivation was arbitrary, section 36(1) may still justify such a deprivation. If not,
the enquiry ends here, since the limitation is unconstitutional.
• However, if the deprivation complies with the requirements of section 25(1), it is
necessary to determine whether the deprivation is also an expropriation.
• If the deprivation conflicts with section 25(1) but can be justified under section 36(1),
it is still necessary to determine whether the deprivation is also an expropriation.
• If so, the expropriation must also meet the requirements as set out in section 25(2) and
(3).
• Where these requirements are met, the expropriation is constitutional and that is the
end of the enquiry.
• If the deprivation did amount to an expropriation but the requirements of section 25(2)
and (3) have not been met, then it could still be justified under section 36(1), at least
in principle;
• However, if it cannot be justified under section 36(1) either, the expropriation is
unconstitutional and invalid.31
As with any other category of property, this process is applicable to constitutional property
enquiries regarding intellectual property rights. However, special considerations arise in
connection with intellectual property. For instance, would state prevention of the use of a
registered trade mark (which would cause it to lose some of its essential attributes) amount
to a deprivation of that trade mark as a form of property as contemplated in section 25?
A final issue regarding constitutional protection of intellectual property is section 8(4) of the
Constitution which entitles juristic persons to the protection of the rights as protected by
the Bill of Rights ‘to the extent required by the nature of that juristic person’. The FNB case
confirmed this principle that juristic persons may be the beneficiaries of section 25
29 The questions whether the applicant qualifies as a beneficiary; whether the interest affected is in fact property for
purposes of s 25; and whether the property interest was actually infringed upon, appear to be ‘sucked into’ the
arbitrariness test according to Roux ‘Property’ in Woolman, Roux & Bishop (eds) Constitutional Law of South Africa
46-1–46-37 at 46-2–46-5, 46-21–46-25. He termed this aspect the ‘arbitrariness vortex’. He argues that the court’s test for
arbitrariness would be the focus of basically any property clause enquiry, since the test would apply to all deprivations,
including expropriations. See also Van der Walt Constitutional Property Law (2005) 54; Van der Walt Constitutional
Property Law (2011) 74–78.
30 First National Bank t/a Wesbank v Commissioner, South African Revenue Service; First National Bank t/a Wesbank v
Minister of Finance para 100.
31 Van der Walt Constitutional Property Law (2005) 54–55 notes two important reasons why it is not likely that an enquiry
into constitutional validity would advance through all the stages as set out by the court. The first is that non-compliance
with the requirements for a valid expropriation would already become apparent during the test for arbitrariness as set
out in s 25(1). The second is that logically a deprivation cannot be justified under s 36(1) if it has failed the
non-arbitrariness test. It would be only in the most unusual cases that s 36(1) would play any role in a constitutional
property dispute. It is thus unlikely that the enquiry would proceed beyond the non-arbitrariness test. See Roux
‘Property’ in Woolman, Roux & Bishop Constitutional Law of South Africa 46-1–46-37 at 46-2–46-5, 46-21–46-25.

protection.32 This brief discussion shows that the constitutional property clause may indeed
offer recognition and protection to intellectual property where required. The constitutional
property clause may also allow restrictions on intellectual property, just like any other form
of property.33
11.3 Intellectual property rights and constitutional rights

in foreign law
11.3.1 Introduction
According to section 39(1)(c) of the Constitution ‘a court, tribunal or forum may
consider foreign law when interpreting the Bill of Rights’. Although the phraseology
and structure of a specific property clause are not so very important in the interpretation
of a property clause, it is necessary to consider the different social and political contexts
that determine the role that property is expected to play in a society; and the formulation
and interpretation of its constitution.34 A comparative approach may be useful in enabling
us to learn from the interpretational problems encountered in foreign cases and avoid
their mistakes.35
There are certain features that are common to most property clauses, although not in an
identical form. They provide for the state to ‘expropriate’ or ‘take’ property under specified,
restricted circumstances. The two restrictions are generally that the expropriations may only
be permitted for a ‘public purpose’ or ‘public use’; and that some degree of compensation
must be paid for an expropriation.36 The South African property clause and the German
property clause refer to expropriation. In American constitutional law this is referred to as
a taking, while Australian law calls it an acquisition. The Irish property clause does not
distinguish clearly between regulation (what is referred to as a deprivation in South African
law) and expropriation. The German Basic Law37 includes a social-obligation provision and
this is even more emphatically stated in the South African Constitution, but this feature is
absent in the American Constitution.38
The purpose of this comparison is to analyse and discuss the constitutional property
concept in jurisdictions that have considered the recognition and protection of intangible
property rights, in order to see whether any of their approaches may be useful to South
African law.
32 First National Bank v Commissioner, South African Revenue Service; First National Bank v Minister of Finance at paras
41–45; Van der Walt Constitutional Property Law (2005) 49; Roux ‘Property’ in Woolman, Roux & Bishop (eds)
Constitutional Law of South Africa 46-1–46-37 at 46-9.
33 SAB International t/a Sabmark International v Laugh It Off Promotions [2003] 2 All SA 454 (C); Laugh it Off Promotions
CC v South African Breweries International (Finance) BV t/a Sabmark International 2005 (2) SA 46 (SCA); Laugh it Off
Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International (Freedom of Expression
Institute as Amicus Curiae) 2006 (1) SA 144 (CC).
34 Van der Walt Constitutional Property Law (2011) 23–24, 26–27; Alexander The Global Debate over Constitutional Property
(2006) 17.
35 Van der Walt Constitutional Property Law (2011) 27–28. See also Kellerman The Constitutional Property Clause and
Immaterial Property Interests ch 5.
36 Alexander The Global Debate over Constitutional Property 6–7.
37 Basic Law of the Federal Republic of Germany (Grundgezetz für die Bundesrepublik Deutschland) 1949.
38 Alexander supra 17.

11.3.2 Irish law
A comparative study of the Irish constitutional property clause (articles 40.3.2 and 43 of the
1937 Constitution)39 must be undertaken cautiously.40 Some confusion is caused by the
courts’ interpretation and application of the clause. It is simply assumed that the property
concept includes a wide range of rights relating to tangible as well as intangible assets. Land,
rights arising from land ownership, moveable property, money and intangible rights created
by legislation as well as contract are included.41 Of particular importance to South African
law is the Irish case that explicitly accepts copyright as a constitutionally protected property
right42 and the view that this case serves as general authority that other intangible rights are
also accepted as constitutional property.43
PAUSE FOR Authority for intellectual property as property

REFLECTION Irish law accepts the case of Phonographic Performance (Ireland) Ltd v Cody [1998] 2
ILRM 241 as authority that other intellectual property rights should also be included under
the constitutional property concept. In South African law the case of Laugh it Off
Promotions CC v South African Breweries International (Finance) BV t/a Sabmark
International (Freedom of Expression Institute as Amicus Curiae) 2006 (1) SA 144 (CC)
which implicitly accepts trade-mark rights as constitutional property could similarly be
viewed as authority that other categories of intellectual property rights could be recognised
and protected under the constitutional property clause (section 25).
11.3.3 German law

The German Civil Code44 restricts the property concept (Eigentum) to tangible, corporeal
things. This concept (Eigentum) is also used in Article 14 (the property clause) of the Basic
39 40.3.2 The State shall, in particular, by its laws protect as best it may from unjust attack and, in the case of
injustice done, vindicate the life, person, good name, and property rights of every citizen.
43.1.1 The State acknowledges that man, in virtue of his rational being, has the natural right, antecedent
to positive law, to the private ownership of external goods.
43.1.2 The State accordingly guarantees to pass no law attempting to abolish the right of private ownership
or the general right to transfer, bequeath, and inherit property.
43.2.1 The State recognises, however, that the exercise of the rights mentioned in the foregoing provision
of this Article ought, in civil society, to be regulated by the principles of social justice.
43.2.2 The State, accordingly, may as occasion requires delimit by law the exercise of the said rights with
a view to reconciling their exercise with the exigencies of the common good.
40 Van der Walt Constitutional Property Clauses: A Comparative Analysis 230. See also AJ van der Walt ‘The protection of
private property under the Irish Constitution: A comparative and theoretical perspective’ in E Carolan & O Doyle (eds)
The Irish Constitution: Governance and Values (2008) 398–411 and D O’Donnel ‘Property rights in the Irish Constitution:
Rights for rich people, or a pillar of free society?’ in E Carolan & O Doyle (eds) The Irish Constitution: Governance and
Values (2008) 412–430.
41 Van der Walt Constitutional Property Clauses: A Comparative Analysis 231, 241; G Hogan & G Whyte JM Kelly: The Irish
Constitution 4 ed (2003) 1971–1972.
42 Phonographic Performance (Ireland) Ltd v Cody [1998] 2 ILRM 241 at 511, [1994] 2 ILRM 241 at 247: ‘The right
of the creator of a literary, dramatic, musical or artistic work not to have his or her creation stolen or plagiarised is
a right of private property within the meaning of Article 40.3.2 and Article 43.1 of the Constitution, as is the
similar right of a person who has applied his or her technical skills and/or capital in the sound recording of a musical
work.’
43 Hogan & Whyte JM Kelly: The Irish Constitution 1971.
44 Bürgerliches Gezetzbuch – BGB § 903.

Law.45 However, the Federal Constitutional Court gives little weight to the text of the
constitution itself, relying instead on the ‘fundamental purpose’ of property as a
constitutional right for interpretational purposes. All private law property rights are accepted
as property under Article 14, but the constitutional property concept is not limited to these
interests.46 In addition, private-law rights in incorporeal property also fall under the
guarantee; these include shares, patent rights,47 trade-mark rights,48 copyright,49 the rights
of performing artists, contractual money claims50 and debts.51
There is no specific article in the Basic Law52 that provides constitutional protection for
these interests and the Federal Constitutional Court is willing to treat them as property in
constitutional law since they share certain characteristics with property recognised in private
law. These interests serve the same purpose as property, namely to secure a sphere of
personal liberty for the individual, and also only acquire protection if they are vested and
acquired in terms of normal law.53
PAUSE FOR Intangible property as ‘property’

REFLECTION South African courts may use this approach to determine under which circumstances
intangible property interests that are not accepted as property in private law may be
recognised and protected as constitutional property under section 25 of the Constitution.
Since intellectual property is accepted as a sui generis form of property in South African
private law, intellectual property should be even more readily included as property for
purposes of the South African constitutional property clause than in German law. The true
value of the German approach for South African law is in determining how intellectual
property rights can align with the social obligations that the South African Constitution
envisages. In other words, how intellectual property rights may be balanced with other
constitutional rights.
Whether patrimonial interests are included under the property guarantee depends
on whether their protection by Article 14 serves to secure a measure of personal liberty
45 The official translation (translated by Professor Christian Tomuschat and Professor David P Currie, and revised by
Professor Christian Tomuschat and Professor Donald P Kommers in co-operation with the Language Service of the
German Bundestag) of Article 14 of the Basic Law of the Federal Republic of Germany (Grundgeszetz für die
Bundesrepublik Deutschland) 1949 reads as follows:
Article 14
[Property – Inheritance – Expropriation]
(1) Property and the right of inheritance shall be guaranteed. Their content and limits shall be defined by
the laws.
(2) Property entails obligations. Its use shall also serve the public good.
(3) Expropriation shall only be permissible for the public good. It may only be ordered by or pursuant to
a law that determines the nature and extent of compensation. Such compensation shall be determined
by establishing an equitable balance between the public interest and the interests of those affected.
In case of dispute concerning the amount of compensation, recourse may be had to the ordinary
courts.
46 BVerfGE 51, 193 [1979] (Warenzeichen case) 218; Van der Walt Constitutional Property Clauses: A Comparative Analysis
151–152; Alexander The Global Debate over Constitutional Property 124–125.
47 BVerfGE 36, 281 [1974] (patent rights).
48 BVerfGE 51, 193 [1979] (Warenzeichen case) (trademarks).
49 BVerfGE 31, 229 [1971] (Urheberrecht case) (copyright).
50 BVerfGE 42, 263 [1976] (Contergan case) (contractual money claims).
51 BVerfGE 68, 193 [1984] (debts).
52 Basic Law of the Federal Republic of Germany (Grundgesetz für die Bundesrepublik Deutschland) 1949.
53 Van der Walt Constitutional Property Clauses: A Comparative Analysis 153; GS Alexander ‘Property as a fundamental
constitutional right? The German example’ (2003) 88 Cornell Law Review 733–778 at 765.

that allows the individual to achieve independence in the patrimonial field and also
helps to meet the social obligations attached to property. 54 The legislature is granted
considerable latitude in regulating property in the public interest, but ‘may not infringe
on the essence of ownership’.55 The public interest would be subject to property rights that
are based in personhood. The social limitations entail that an equitable balance should
be found ‘between individual property interests and the social or public interest in the use
of the property’.56
There were six controversial cases in which it was decided that artistic and other
intellectual creations are accepted as constitutional property for the purposes of Article 14.57
These cases make it clear that the nature and extent of the right to intellectual property have
to be determined by the legislature in the public interest. The Federal Constitutional Court
has struck down regulations that deny authors and composers fees for the reproduction and
distribution of their works, but upheld statutory provisions for the use of protected material
without permission from the creator in specific educational and cultural contexts. The court
treats the right to intellectual property in close proximity with the rights of personality and
artistic freedom, and treats the social character of intellectual property as the prime
consideration.58
The Schoolbook case59 is the leading opinion and provides clarity about intellectual
property and the standards and principles that inform the Constitutional Court’s
construction of Article 14’s content and limits.60 In this case the Federal Constitutional Court
stated that the link between personal-artistic creation and its economic utilisation should
be considered in the constitutional assessment as well as the special nature of the property
rights. The court held that the legislature must ensure the preservation of the core of the
property right and ensure that all constitutional provisions are preserved in determining the
property right’s content. The court also noted the legislature’s obligation to secure the public
good when it circumscribes individual rights. The court held that a fair balance must be
established between the interests of the public and individual rights, an approach that is
shared by the South African Constitution.61 The court held that it would not be in the public
interest to allow an author to bar the use of his or her work in an educational collection, but
compensation was still required. Compensation can only be denied if there are very
compelling reasons why it is in the public interest to do so.
54 Van der Walt Constitutional Property Clauses: A Comparative Analysis 151; DP Kommers The Constitutional Jurisprudence
of the Federal Republic of Germany 2 ed (1997) 252–254; Alexander ‘Property as a fundamental constitutional right? The
German example’ 733–778 at 748.
55 Kommers The Constitutional Jurisprudence of the Federal Republic of Germany 253. See also Alexander ‘Property as a
fundamental constitutional right? The German example’ 733–778 at 748.
56 Van der Walt Constitutional Property Clauses: A Comparative Analysis 133. See the Besitzrecht des Mieters case (BVerfGE
89, 1 [1993]) on the weighing up of the different interests.
57 BVerfGE 31, 229 [1971] (the Schoolbook case); BVerfGE 31, 248 [1971] (the Broadcasting Lending case); BVerfGE 31, 270
[1971] (the School Broadcast case); BVerfGE 31, 255 [1971] (the Tape Recording I case); BVerfGE 31, 275 [1971] (the
Phonograph Record case); and BVerfGE 49, 415 [1978] (the Church Music case) where the Federal Constitutional Court
weighed up all interests (private and public interests) in order to decide whether the copyright should be protected.
See Kommers The Constitutional Jurisprudence of the Federal Republic of Germany 261–266 for a discussion of these
cases; and Van der Walt Constitutional Property Clauses: A Comparative Analysis 151–157.
58 Kommers The Constitutional Jurisprudence of the Federal Republic of Germany 261; Van der Walt Constitutional Property
Clauses: A Comparative Analysis 151–157.
59 BVerfGE 31, 229 [1971] (Urheberrecht case).
60 Kommers The Constitutional Jurisprudence of the Federal Republic of Germany 261–262.
61 Van der Walt Constitutional Property Clauses: A Comparative Analysis 133.

PAUSE FOR Precedence for human interests

REFLECTION The German Federal Constitutional Court uses a scaling approach in terms of which
constitutional rights receive more stringent protection if they are closely related to human
interests, and less stringent protection if the interest is purely economic. In other words,
human or personal rights such as the rights to liberty and dignity would receive more
stringent protection than economic interests such as property rights.62 For example, my right
to the house in which I live receives more stringent protection than my right to the house
that I am letting for profit. The South African courts may also utilise this approach, since the
balancing of rights principle is explicitly endorsed.
11.3.4 Australian law
Section 51(xxxi) of the Commonwealth Constitution 199063 regulates Australian

constitutional property law. The Commonwealth Constitution does not contain a ‘classic
bill of rights’ so section 51(xxxi) is not a typical property guarantee, but courts treat and
recognise this provision as a property guarantee; therefore there is important case law on
the constitutional protection of property, particularly intellectual property rights.64 Since
section 51(xxxi) enjoys the status of ‘a constitutional guarantee of just terms’ the Australian
courts interpret the constitutional property concept widely.65
In the case of Smith-Kline & French Laboratories (Australia) Ltd and Others v Secretary,
Department of Community Services and Health66 Gummow J noted that knowledge per
se is not proprietary in character: ‘[B]efore a right or interest can be admitted into the
category of property, it must be definable, identifiable by third parties, have some
degree of permanence or stability, and be capable in its nature of assumption by
third parties.’ 67 Gummow J noted that for purposes of the constitutional property
guarantee ‘one should lean towards a wider rather than a narrower concept of property,
and look beyond legal forms to the substance of the matter’.68 South African courts could
utilise this approach in deciding when a particular incorporeal property interest not
recognised as property in private law may be recognised and protected as property in
constitutional law.
62 See Van der Walt Constitutional Property Clauses: A Comparative Analysis 124–125. See also H Mostert The Constitutional
Protection and Regulation of Property and its Influence on the Reform of Private Law and Landownership in South Africa
and Germany (2002) 293–294 where she explains the theory of Güterabwägung or ‘abstract ranking’ of rights and values;
and Alexander The Global Debate over Constitutional Property 139.
63 S 51(xxxi) of the Commonwealth Constitution 1990 provides that ‘[t]he Parliament shall, subject to this Constitution,
have power to make laws for the peace, order and good government of the Commonwealth with respect to: … The
acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has
the power to make laws …’
65 Van der Walt supra 39, 62; T Blackshield, G Williams & BF Fitzgerald Australian Constitutional Law and Theory:
Commentary and Materials (1996) 743–744; Minister of the State for the Army v Dalziel (1944) 68 CLR 261 at 290.
66 (1990) 95 ALR 87 (FC). See Van der Walt Constitutional Property Clauses: A Comparative Analysis 61. Also see T Allen
‘Commonwealth constitutions and the right not to be deprived of property’ (1993) 42 Int & Comp LQ 523–552 at 531–532,
540.
67 Smith-Kline & French Laboratories (Australia) Ltd and Others v Secretary, Department of Community Services and Health
(1990) 95 ALR 87 (FC) at 135 per Gummow J quoting National Provincial Bank Ltd v Ainsworth [1965] AC 1175. See Van
der Walt Constitutional Property Clauses: A Comparative Analysis (1999) 61.
68 Smith-Kline & French Laboratories v Secretary, Department of Community Services and Health at 136. See Van der Walt
supra 61.

Some cases strongly reaffirmed the notion that some forms of acquisition do not fall
within the scope of section 51(xxxi) because they are not acquisitions of property.69 In
Nintendo Co Ltd v Centronics Systems Pty Ltd70 the court denied that there was an acquisition
of property requiring just terms because the legislature received the power to make laws that
create, confer and enforce intellectual property rights from section 51(xviii) of the Australian
Commonwealth Constitution, pertaining to ‘[c]opyrights, patents of inventions and designs,
and trademarks’:
It is of the nature of such laws that they confer such rights on authors, inventors and
designers, other originators and assignees and that they conversely limit and detract
from the proprietary rights which would otherwise be enjoyed by the owners of
affected property. Inevitably, such laws may, at their commencement, impact upon
existing proprietary rights. To the extent that such laws involve an acquisition of
property from those adversely affected by the intellectual property rights that they
create and confer, the grant of legislative power contained in s 51(xviii) manifests a
contrary intention which precludes the operation of s 51(xxxi).71
There is some uncertainty as to whether these decisions72 mean that the scope of
section 51(xxxi) is becoming more limited, which would support the hypothesis that the
court is moving towards a more extensive protection for civil and political rights and away
from economic rights.73 Even so, these cases must also be viewed in the light of the function
of section 51(xxxi), which is to regulate federal powers. These decisions merely explain the
existing exclusions from section 51(xxxi) protection. Section 51(xxxi) does not cover all
interferences with property. Where a specific law or action of the Commonwealth affects
property, it is still necessary to determine whether there has been an acquisition of property
for purposes of section 51(xxxi).74 The decision in Mutual Pools & Staff Pty Ltd v The
Commonwealth of Australia75 indicated that section 51(xxxi) does not apply in cases where
the state is exercising its regulatory or police power, but it would be applicable where just
compensation was required in terms of section 51(xxxi) but not afforded.76 This is also true
of the Nintendo Co Ltd v Centronics Systems Pty Ltd77 decision.
A particularly good example of conflicting constitutional rights arose from the
Australian Tobacco Plain Packaging Act 148 of 2011 (the TPP Act), which restricts trade
mark rights and certain other rights of tobacco trade-mark holders in order to reduce the
69 Blackshield, Williams & Fitzgerald Australian Constitutional Law and Theory Commentary and Materials 748, 755–756.
For example, Mutual Pools & Staff Pty Ltd v The Commonwealth of Australia (1994) 179 CLR 155; Health Insurance
Commission v Peverill (1994) 179 CLR 226; Georgiadis v Australian and Overseas Telecommunications Corporation
(1994) 179 CLR 297; Nintendo Co Ltd v Centronics Systems Pty Ltd (1994) 181 CLR 134.
70 (1994) 181 CLR 134. See Blackshield, Williams & Fitzgerald Australian Constitutional Law and Theory Commentary and
Materials 755–756 for a discussion of the case.
71 Nintendo v Centronics Systems Pty Ltd 134.
72 Mutual Pools & Staff v The Commonwealth of Australia 155; Health Insurance Commission v Peverill 226; Georgiadis v
Australian and Overseas Telecommunications Corporation 297; Nintendo v Centronics Systems 134.
73 Blackshield, Williams & Fitzgerald Australian Constitutional Law and Theory Commentary and Materials 756.
74 Van der Walt Constitutional Property Clauses: A Comparative Analysis 41–48.
75 (1994) 179 CLR 155.
77 (1994) 181 CLR 134. See Blackshield, Williams & Fitzgerald Australian Constitutional Law and Theory Commentary and
Materials 755–756 for a discussion of the case.

appeal of tobacco products, in the furtherance of public health.78 Section 15 of the TPP
Act relates to acquisition of property79 and states that the Act ‘does not apply to the extent
(if any) that its operation would result in an acquisition of property from a person
otherwise than on just terms’. Section 16 states that ‘[t]his Act does not apply to the extent
(if any) that it would infringe any constitutional doctrine of implied freedom of political
communication’. Furthermore, section 28 of the TPP Act prevents tobacco trade marks
from being refused registration or being revoked owing to the operation of the Act. These
sections indicate that the legislators have attempted to structure the legislation in such a
way that it does not infringe the two constitutional rights, and that its impact on the
affected trade-mark rights would be as small as possible, while still achieving the objectives
of the TPP Act.80 The Court’s majority decisions in the JT International case81 indicate that
these objectives were successful.
This decision considered whether all or some of the provisions of the TPP Act
have resulted in an acquisition of property of a kind to which section 51(xxxi) of
the Constitution applies, 82 otherwise than on just terms, and if so, what property
was acquired. French CJ, Gummow J, Hayne and Bell JJ, Heydon J, Crennan J, and
Kiefel J provided six separate decisions, although all but Heydon J agreed that there had
been no acquisition.
Quoting Mason J in The Commonwealth of Australia and Another v The State of Tasmania
and Others83 (the Tasmanian Dam case), French CJ stated that
[t]o bring the constitutional provision into play it is not enough that legislation
adversely affects or terminates a pre-existing right that an owner enjoys in relation
to his property; there must be an acquisition whereby the Commonwealth or another
acquires an interest in property, however slight or insubstantial it may be.84
There must be a benefit of proprietary nature accruing to the Commonwealth and French
CJ decided that the TPP does not accomplish this (all the judges except Heydon J agreed
with this statement).
Heydon J’s minority opinion was that avoiding the cost of providing just terms was the
fundamental concern of the legislator, rather than public health as stated by the Act; and
that there is no provision for just terms in the TPP Act.85 Relying on the contested minority
statement of Deane J in the Tasmanian Dam case86 that the acquisition of the right to exclude
78 On the possible effects that similar legislation could have on South African law if it were to be promulgated in South
Africa, see LTC Harms ‘Plain packaging and its impact on trademark law’ (2013) 46 De Jure 387–400; OH Dean
‘Deprivation of trade marks through state interference in their usage’ (2013) 35 European Intellectual Property Review
576–589; M du Bois ‘Trade marks for tobacco products as constitutional property: Australian plain packaging legislation’
(2013) 25 SA Merc LJ 197–222.
79 S 4 of the Australian Tobacco Plain Packaging Act 148 of 2011 defines ‘acquisition of property’ as having the same
meaning as in s 51(xxxi) of the Commonwealth of Australia Constitution Act 1900.
80 On this legislation, see Dean ‘Deprivation of trade marks through state interference in their usage’ 576–589 at 576–577;
Du Bois ‘Trade marks for tobacco products as constitutional property: Australian plain packaging legislation’ 197–222
at 203–208.
81 JT International SA v Commonwealth of Australia; British American Tobacco Australasia Limited & Ors v The
Commonwealth of Australia [2012] HCA 43. On this decision, see Dean ‘Deprivation of trade marks’; Du Bois ‘Trade
marks for tobacco products’ at 208–218.
82 Commonwealth of Australia Constitution Act 1900 (UK), s 9; Part V: Powers of Parliament, s 51(xxxi).
83 The Commonwealth of Australia and Another v The State of Tasmania and Others (1983) 158 CLR 1 at 145; [1983] HCA 21.
84 JT International v Commonwealth of Australia in para [42] per French CJ.
85 [193] per Heydon J.
86 (1983) 158 CLR 1 at 282–283, 287.

others from the property and some economic benefit or right of enjoyment by the state was
sufficient to constitute an acquisition of property for constitutional purposes, Heydon J
claimed that ‘[i]t is only necessary to show that the Commonwealth or some other person
has obtained some identifiable benefit or advantage relating to the ownership or use of
property’.87 Control may be sufficient to establish the required benefit. It does not matter that
what a property owner has lost does not correspond precisely to what the Commonwealth
or another person has gained.88 In this respect Heydon J’s minority opinion departed
radically from the other decisions.
The majority decisions agree that there was property for the purposes of section 51(xxxi)
since intellectual property is not disqualified because it is a statutory creation; no compulsory
acquisition of this property was effected by the TPP Act; a mere extinguishment of property
is not sufficient for an acquisition; that which is acquired must be of a proprietary nature; a
taking is not the same thing as an acquisition; and section 51(xxxi) does not provide
protection to the value of a commercial business.
The Australian approach is of particular importance to South African law, especially in
the light of the Agri SA decision by the Constitutional Court89 where Mogoeng CJ for the
majority explicitly stated:
To prove expropriation, a claimant must establish that the state has acquired the
substance or core content of what it was deprived of. In other words, the rights
acquired by the state do not have to be exactly the same as the rights that were lost.
There would, however, have to be sufficient congruence or substantial similarity
between what was lost and what was acquired ... There can be no expropriation in
circumstances where deprivation does not result in property being acquired by
the state.90
Therefore, according to this decision, the acquisition of a property right by the state is also
required in South African law before one can refer to an expropriation. This does not apply,
however, when what is being determined is whether a deprivation of a property right has
taken place.
PAUSE FOR Plain packaging legislation

REFLECTION There are a number of different opinions regarding the effect of possible
plain packaging legislation for tobacco products in South African law. Harms
submits that any possible South African plain packaging legislation would not be prevented
in terms of the property clause, ‘because a plain packaging law does not deprive the trade-
mark owner of any trade-mark right, but only regulates or limits
that right’.91 Dean is of a different opinion and submits that ‘South African legislation that
prevents or prohibits the use of trade marks on tobacco products infringes
87 JT International v Commonwealth of Australia [200] per Heydon J.

88 Georgiadis v Australian and Overseas Telecommunications Corporation (1994) 179 CLR 297 at 304–305; Newcrest Mining
(WA) Ltd v The Commonwealth (1997) 190 CLR 513 at 634.
89 Agri South Africa v Minister for Minerals and Energy (Afriforum, Afrisake, Centre for Applied Legal Studies and Floris
Johannes Pool as Amicus Curiae) [2013] ZACC 9.
90 [58]–[59]. See also British American Tobacco South Africa (Pty) Ltd v Minister of Health (National Council against
Smoking as Amicus Curiae) [2012] 3 All SA 593 (SCA) where the court indicated that the right to health and legislation
promoting this right may sometimes outweigh other constitutional rights.
91 Harms ‘Plain packaging and its impact on trademark law’ 387–400 at 397.

both sections 25(1) and (2) of the Constitution in that such legislation will bring
about an arbitrary deprivation of property, and indeed an expropriation of
such property, at least as a manifestation of constructive expropriation.’ 92
Ultimately, whether such plain packaging legislation would be constitutionally permissible
would depend on how the particular legislation is structured, so it
would only be possible to finally determine its constitutionality once it is actually drafted.93
It is also submitted that ‘[i]f similar legislation in South Africa is
structured to constitute a constitutionally permissible deprivation, provision may
still have to be made for payment of compensation where the effect could be
disproportionate, but this would have to be structured not as compensation for
expropriation, but rather as damages for loss that would need to be proved’.94
This would be ‘something like equalisation payment to save an important and legitimate
regulatory scheme’.95
11.3.5 United States of America
The property concept for the purposes of the Fifth96 and Fourteenth97 Amendments is
interpreted widely in American case law.98 The American Constitution has a clause
pertaining specifically to intellectual property,99 a feature which the South African
Constitution does not have. The South African Constitutional Court100 decided that the
property clause provides adequate protection and there is no need for a separate clause
pertaining to intellectual property. The American intellectual property clause has been
described as a grant of power as well as a limitation. It is generally used by American courts
as authority that patents and copyright are not protected under the Takings Clause.101
92 Dean ‘Deprivation of trade marks through state interference in their usage’ 576–589 at 581.
93 Du Bois ‘Trade marks for tobacco products as constitutional property: Australian plain packaging legislation’ 197–222
at 218–222.
94 Du Bois 197–222 at 219.
95 Van der Walt Constitutional Property Law (2011) 77; Van der Walt Constitutional Property Clauses 150–151.
96 The Fifth Amendment 1791 of the Constitution of the United States of America 1787 provides as follows:
No person shall be held to answer for a capital, or otherwise infamous crime, unless on a presentment or
indictment of a Grand Jury … nor be deprived of life, liberty, or property, without due process of law; nor
shall private property be taken for private use without just compensation.
97 The Fourteenth Amendment 1868 of the Constitution of the United States of America 1787 provides as follows:
No State shall make or enforce any law which shall abridge the privileges or immunities of citizens of the
United States; nor shall any State deprive any person of life, liberty, or property, without due process of
law; nor deny to any person within its jurisdiction the equal protection of the laws.’
99 Article I Section 8 Clause 8 of the Constitution of the United States of America 1787 consigns to Congress the express
powers ‘[t]o promote the progress of science and the useful arts, by securing for limited times, to authors and inventors,
the exclusive right to their writings and discoveries’.
100 Ex Parte Chairperson of the Constitutional Assembly: In Re Certification of the Constitution of the Republic of South Africa,
1996 1996 (4) SA 744 (CC) para 75.
101 Constitution of the United States of America 1787 Fifth Amendment 1791 Section 1. See A Mossoff ‘Patents as
constitutional private property: The historical protection of patents under the Takings Clause’ (2007) 87 Boston ULR
689–724 at 690–691; DL Lange & HJ Powell No Law: Intellectual Property in the Image of an Absolute First Amendment
(2009) 34–35.

Mossoff102 sets out the history of patent protection under constitutional law by referring to
certain nineteenth century cases that accepted patents as private property for the purposes
of the Takings Clause103 to argue that patents are included.104
Arguments that patents should be included under the Takings Clause are usually
made by extending the 1984 Supreme Court decision of Ruckelshaus v Monsanto Co 105
to patents. 106 According to this decision, trade secrets are private property that
may be secured under the Takings Clause. The logic behind such an extension is that
both trade secrets and patents are forms of intellectual property, hence both must be
protected by the Takings Clause if either one is protected. The reason for the cautious
approach to the inclusion of patents under the Takings Clause is the criticism of the
expansive protections for copyright, patents and other forms of intellectual property and
the fear that such inclusion may be used to argue for further expansions of intellectual
property rights.107
Ghosh108 views the inclusion of intellectual property (copyright, patents, trade marks,
trade secrets and unfair competition in American law) under the Takings Clause as the
best way of protecting intellectual property against state infringements. Determining
infringement of intellectual property rights under the Takings Clause may be explained in
three steps:
First, there must be a governmental use. … There also must be a use of a protected
intellectual property right. It is necessary to look to the relevant positive law to
determine whether the owner has a protected interest that was used by the
government. This inquiry hinges upon which rights are granted by the relevant
intellectual property statute. Therefore, a case-by-case analysis of the intellectual
property is appropriate here. Finally, there must be a reduction in the licensing value
of the intellectual property.109
102 Mossoff ‘Patents as constitutional private property: The historical protection of patents under the Takings Clause’
689–724 at 694, 696, 700–711. See McClurg v Kingsland 42 US (1 How) 202 (1843), which laid the foundation for the
application of the Takings Clause to property rights in patents by doctrinally linking patents and traditional property.
In Cammeyer v Newton 94 US 225 (1876) the Supreme Court stated that ‘private property, the Constitution provides,
shall not be taken for public use without just compensation’ and applied it to patents. McKeever v United States 14 Ct
Cl 396 (1878) directly stated that patents are included as property for purposes of the Takings Clause. Campbell v James
4 F Cas 1168 (CCSDNY 1879) (No 2, 361) at 1172 noted that patents were the same as any other form of property. The
more recent cases of Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co 535 US 722 (2002) at 723 and Zoltek Corp v
United States 442 F3d 1345 (Fed Cir 2006) at 1352 indicate that the courts do consider patent rights as property, but
there is still some uncertainty regarding their inclusion under the Takings Clause.
103 Constitution of the United States of America 1787 Fourteenth Amendment 1868 Article [XIV], Section 1.
689–724 at 694.
105 467 US 986 (1984).
689–724 at 698. S Ghosh ‘Toward a regulatory takings doctrine for intellectual property: The path left open after College
Savings v. Florida Prepaid’ (2000) 37 San Diego LR 637–709 at 698.
107 For example, see MA Lemley ‘Property, intellectual property, and free riding’ (2005) 83 Texas LR 1031–1076 at 1033;
MA Carrier ‘Cabining intellectual property through a property paradigm’ (2004) 54 Duke LJ 1–146 at 1; MA Lemley
‘Romantic authorship and the rhetoric of property’ (1997) 75 Texas LR 873–906 at 902; P Samuelson ‘Information as
property: Do Ruckelshaus and Carpenter signal a changing direction in intellectual property law?’ (1989) 38 Cath ULR
365–400 at 398.
108 Ghosh ‘Toward a regulatory takings doctrine for intellectual property: The path left open after College Savings v. Florida
Prepaid’ 637–709.
109 Ghosh 637–709 at 687–688, 691, 693–694.

PAUSE FOR Intellectual property and freedom of expression

REFLECTION The opinions on the recognition and protection of intellectual property as constitutional
property in American law are not final and that makes it difficult to extract useful approaches
for South African law. There are, however, cases that deal with the interaction between
intellectual property and freedom of expression in American constitutional law,110 which may
prove more useful. The argument that if one form of intellectual property receives
constitutional protection, then all forms should, could also be useful for South African law.
11.4 International human rights law and intellectual property:

a human rights framework for intellectual property
This section indicates the most important international law sources that may aid South
African courts in dealing with conflicting constitutional rights. Section 39(1)(c) of the
Constitution compels South African courts, tribunals and forums to consider international
law in the interpretation of the Bill of Rights. The courts must also interpret legislation in
the light of international law norms. The courts are obligated to take international law
into account when interpreting the Bill of Rights, even if South Africa is not a party to
the particular international convention or treaty in question.111 Therefore South African
courts have to consider the Universal Declaration of Human Rights112 (UDHR) and
the International Covenant on Economic, Social and Cultural Rights 113 (ICESCR) in
interpreting the Bill of Rights, even though the ICESCR has been signed but not yet ratified.
More specifically, the courts have to consider article 27(2) of the UDHR and article 15(1)(c)
of the ICESCR in considering whether a specific intellectual property right may be protected
as a human right under the property clause and in finding the correct approach to balance
conflicting rights.
The right to property and intellectual property are both protected under the UDHR, but
only the right to intellectual property was made binding in the ICESCR. The right to property
was not made binding in the ICESCR or the International Covenant on Civil and Political
Rights114 (ICCPR). The UDHR and ICESCR accept the right to intellectual property as a
fundamental human right and require all states to provide adequate protection for
intellectual property rights. Article 27(2) of the UDHR states: ‘Everyone has the right to the
protection of the moral and material interests resulting from any scientific, literary or artistic
production of which he [or she] is the author.’ Article 15(1)(c) of the ICESCR recognises the
rights identified in the UDHR in the same terms.
It is necessary to develop a human rights framework for intellectual property, and
some preliminary guidelines may be extracted from selected international human
rights instruments, comments and the opinions of international law scholars. This
could provide guidance to South African courts in determining how intellectual property
110 For example see AF Jaroff ‘Big Boi, Barbie, Dr Seuss, and the King: Expanding the constitutional protections for the
satirical use of famous trademarks’ (2008) 57 American ULR 641–681 and Lange & Powell No Law: Intellectual Property
in the Image of an Absolute First Amendment.
111 See J Dugard, M du Plessis, A Katz & A Pronto International Law: A South African Perspective 4 ed (2011) 62–63.
112 United Nations Universal Declaration of Human Rights (1948) GA Res 217 A (III), UN Doc A/810 at 71 (1948).
113 United Nations International Covenant on Economic, Social and Cultural Rights (1966) 993 UNTS 3 (1976).
114 United Nations International Covenant on Civil and Political Rights (Dec 16, 1966) 999 UNTS 171 (1976), entered into
force Mar 23, 1976.

interests may be protected as constitutional property without losing sight of other

constitutional rights.115
There are two broad approaches to describe the interaction between human rights and
intellectual property: the ‘conflict approach’, which holds that the two sets of rights are
fundamentally in conflict; and the ‘coexistence approach’, which views the two sets of rights
as essentially compatible.116 The conflict approach holds that strong intellectual property
rights undermine human rights and prescribes the normative primacy of human rights over
intellectual property law in instances where rights protected in treaties may be in conflict.117
The coexistence approach views intellectual property law and human rights law as essentially
compatible, since both are concerned with determining the correct balance between private
and public rights.118
PAUSE FOR Balancing approach

REFLECTION In South Africa, it should be possible to apply the coexistence approach, since the courts
make use of the balancing approach in instances where two constitutional rights come into
conflict. For example, in Laugh It Off v SAB International119 the right to freedom of expression
ultimately outweighed the right to property in the trademark and received more stringent
constitutional protection. The South African Constitutional Court correctly did not apply the
conflict approach, which would have meant that the right to property always undermines the
right to freedom of expression.
In adjudicating constitutional property cases relating to intellectual property, it is important for

courts to distinguish the human rights attributes of intellectual property (for example, the moral
rights connected to copyright) from the aspects of intellectual property protection that have no
human rights attributes (for example, the economic rights associated with copyright).120 Where
the non-human rights attributes of intellectual property conflict with a fundamental right, it is
self-evident that the fundamental right will outweigh the intellectual property right in terms of
the principle of human rights primacy, which entails protecting human rights attributes above
rights that have no human rights basis.121 States would still have to decide whether the built-in
flexibilities of their intellectual property system allow them to balance their human rights
115 See Kellerman The Constitutional Property Clause and Immaterial Property Interests ch 6.
116 See LR Helfer ‘Human rights and intellectual property: Conflict or coexistence?’ (2003) 5 Minn Intell Prop R 47–61. Also
see PK Yu ‘Ten common questions about intellectual property and human rights’ (2007) 23 Ga St ULR 709–753 at 709.
117 See Yu ‘Ten common questions about intellectual property and human rights’ 709–753 at 709; Helfer ‘Human rights
and intellectual property: Conflict or coexistence?’ 47–61. Grosheide suggests that intellectual property rights should
be considered economic rights which would always be trumped by fundamental human rights, which should be
considered practically non-derogable: W Grosheide ‘General introduction’ in Grosheide W (ed) Intellectual Property
and Human Rights: A Paradox (2010) 3–33.
118 Helfer ‘Human rights and intellectual property: Conflict or coexistence?’ 47–61 at 48–49; PLC Torremans ‘Symposium:
The international intellectual property regime complex: Is copyright a human right?’ (2007) Mich St LR 271–291 at
272–274.
of Expression Institute as Amicus Curiae) 2006 (1) SA 144 (CC).
120 Yu ‘Ten common questions about intellectual property and human rights’ (2007) 23 Ga St ULR 709–753 at 711. Also see
PK Yu ‘International rights approaches to intellectual property: Reconceptualising intellectual propertyInterests in a
human rights framework’ (2007) 40 UC Davis LR 1029–1149 at 1078. For an explanation of the moral rights and the
economic rights provided by copyright, see ch 1, paragraph 1.10.
121 Yu ‘Ten common questions about intellectual property and human rights’ 709–753 at 710–711. Also see Yu ‘International
rights approaches to intellectual property: Reconceptualising intellectual property interests in a human rights
framework’ 1029–1149 at 1092.

obligations with the non-human rights attributes of intellectual property and whether
adequate protection may be afforded to the human rights attributes of intellectual property.122
Where the human rights attributes of intellectual property conflict with another
fundamental right, a more nuanced balancing approach is necessary.123 Here the just
remuneration approach, the core minimum approach and the progressive realisation
approach have been identified for use separately or in conjunction in order to resolve
conflicts between other fundamental rights such as freedom of expression, the right to
education and the right to health on the one hand, and human rights attributes of intellectual
property which could be recognised and protected by the South African constitutional
property clause on the other.124
The just remuneration approach gives authors and inventors a right to remuneration
rather than exclusive control. A human rights-based compulsory licence125 instead of a free
licence would be provided for use of the intellectual work.126 The German Federal
Constitutional Court has utilised this approach.127 The core minimum approach provides
authors with a minimum level of protection even where other human rights require the
resources of the state.128
PAUSE FOR Preferred South African approach

REFLECTION The South African Constitutional Court does not seem to endorse the core minimum
approach.129 The progressive realisation approach focuses on realising rights systematically
as resources become available. This is closer to the approach that the South African
Constitutional Court is prepared to use (Government of the Republic of South Africa and
Others v Grootboom and Others 2001 (1) SA 46 (CC)).
122 Yu ‘International rights approaches to intellectual property: Reconceptualising intellectual property interests in a human
rights framework’ 1029–1149 at 1093–1094. Also see Yu ‘Ten common questions about intellectual property and human
rights’ 709–753 at 712 and his caution against abusing the principle of human rights primacy where a particular human
right is not well defined.
123 Yu ‘Ten common questions about intellectual property and human rights’ 709–753 at 712; Torremans ‘Symposium: The
international intellectual property regime complex: Is copyright a human right?’ 271–291 at 287–289 explores the
relationship between the human rights aspects of copyright and other human rights and states that the aim of balancing
the different rights should be to respect both rights. He submits that the human rights protection for copyright should
be more stringent in cases where the input level of creativity was higher.
124 See Yu ‘International rights approaches to intellectual property: Reconceptualising intellectual property interests in a
human rights framework’ 1029–1149 at 1095–1105 for a full discussion of the just remuneration approach; 1106–1113
for a full discussion of the core minimum approach; and 1113–1123 for a full discussion of the progressive realisation
approach. See Kellerman The Constitutional Property Clause and Immaterial Property Interests ch 6 sec 6.4.3.
rights framework’ 1029–1149 at 1100–1101.
126 Van der Walt Constitutional Property Clauses: A Comparative Analysis 158–163. In accordance with the court’s
implementation of the just remuneration approach, the legislature is allowed to remove the exclusivity of copyright
under certain circumstances where there is a compelling reason as long as authors receive adequate remuneration for
the exempted use: BVerfGE 31, 248 [1971] (Broadcast Lending case); BVerfGE 31, 270 [1971] (School Broadcast case);
BVerfGE 31, 255 [1971] (Tape Recording I case); BVerfGE 31, 275 [1971] (Phonograph Record case); BVerfGE 49, 415 [1978]
(Church Music case).
129 Government of the Republic of South Africa v Grootboom 2001 (1) SA 46 (CC) para 33; D Bilchitz Poverty and Fundamental
Rights: The Justification and Enforcement of Socio-Economic Rights (2007) 140–141; S Liebenberg ‘The interpretation of
socio-economic rights’ in S Woolman, T Roux & M Bishop (eds) Constitutional Law of South Africa 2 ed (2003)
33-1–33-66; S Liebenberg Socio-Economic Rights Adjudication Under a Transformative Constitution (2010) 148–151;
Soobramoney v Minister of Health, KwaZulu-Natal 1998 (1) SA 765 (CC) and Minister of Health and Others v Treatment
Action Campaign and Others 2002 (5) SA 721 (CC); D Bilchitz ‘Towards a reasonable approach to the minimum core:
Laying the foundations for future socio-economic rights jurisprudence’ (2003) 19 SAJHR 1–26.

Two comments may form the basis for the development of a human rights framework for
intellectual property.130 In these passages, the United Nations Committee on Economic,
Social, and Cultural Rights (CESCR) identified several important features that distinguish
the human rights protection of creators’ rights from intellectual property rights.
In contrast to human rights, intellectual property rights are generally of a temporary
nature, and can be revoked, licensed or assigned to someone else. While under
most intellectual property systems, intellectual property rights, often with the exception
of moral rights, may be allocated, limited in time and scope, traded, amended and
even forfeited, human rights are timeless expressions of fundamental entitlements of the
human person.131
The human rights protection of moral and material interests in intellectual creations may
also be distinguished from intellectual property protection on the grounds that the human
rights protection ‘safeguards the personal link between authors and their creations’ and the
basic material interest guaranteeing their adequate standard of living;132 whereas intellectual
property generally protects the investments and interests of corporations and other juristic
persons.133 There are also arguments that the moral and material interests in intellectual
property (identified by the CESCR) constitute the minimum levels of protection that must
be afforded by states and that material interests encompass only the narrow economic right
to just remuneration.134
The CESCR specifically cautioned against equating the human rights protection of article
15(1)(c) of the ICESCR135 with intellectual property protection.136 There are also certain
arguments137 derived from General Comment Number 17138 (which is considered to be the
authoritative interpretation of article 15(1)(c) of the ICESCR) which hold that trademarks,
trade secrets, confidential information and other rights that protect the economic investment
of institutional authors and inventors should not be protected as human rights.
Protecting intellectual property rights as fundamental rights means that governments
would possibly only be allowed to regulate the moral and material rights of authors to
protect other human rights or to attain social objectives.139 The CESCR has developed a
stringent test to determine whether restrictions that a state imposes on social and
130 United Nations Economic and Social Council [ECOSOC] Commission on Economic, Social & Cultural Rights Substantive
Issues Arising in the Implementation of the International Covenant on Economic, Social and Cultural Rights (Dec 14,
2001) UN Doc E/C12/2001/15 and the United Nations Committee on Economic, Social, and Cultural Rights Comment
on Economic, Social & Cultural Rights, General Comment No 17: The right of everyone to benefit from the protection of
the moral and material interests resulting from any scientific, literary or artistic production of which he is the author
(article 15, paragraph 1(c) of the Covenant) (Jan 12, 2006) UN Doc E/C12/GC/17.
See Helfer ‘International rights approaches to intellectual property: Towards a human rights framework for intellectual
property’ 971–1020 at 989–990.
131 United Nations Committee on Economic, Social, and Cultural Rights Comment on Economic, Social & Cultural Rights,
General Comment No 17 para 2.
General Comment No 17: para 2.
133 Yu ‘Ten common questions about intellectual property and human rights’ 709–753 at 731.
rights framework’ 1029–1149 at 1083, 1089.
135 United Nations International Covenant on Economic, Social and Cultural Rights (1966) 993 UNTS 3 (1976).
137 Yu ‘Ten common questions about intellectual property and human rights’ 709–753 at 726–727.
138 United Nations Economic and Social Council Comment on Economic, Social & Cultural Rights [CESCR], General
Comment No 17.
139 LR Helfer ‘International rights approaches to intellectual property: Towards a human rights framework for intellectual
property’ 971–1020 at 994.

economic rights are legally acceptable and this standard is reaffirmed in the Comment.140
Although the CESCR states that the moral and material interests are ‘subject to limitations
and must be balanced with the other rights recognised in the Covenant’, such limitations
must ‘be determined by law in a manner compatible with the nature of these rights, must
pursue a legitimate aim, and must be strictly necessary for the promotion of the general
welfare in a democratic society … [and] must therefore be proportionate, meaning that
the least restrictive measures must be adopted when several types of limitations may be
imposed’. 141 Compensatory measures may also be required for the imposition of
limitations.142
PAUSE FOR Compelling public interest

REFLECTION South African law already seems to be in line with these recommendations from
the Comments. Expropriation and deprivation of property in South African law are also
only allowed under the strict requirements set out in the constitutional
property clause. This may facilitate protection of the moral and material interests in line
with the guiding principles from international human rights law, in other words, there would
have to be a compelling public interest reason in order to deprive intellectual property
owners of any particular rights. For example in the Laugh It Off case, freedom of expression
was a more compelling public interest than the comparatively less important property
interest. The infringement of the property interest was not as severe as the infringement
of freedom of expression would have been if the property right had been upheld. The
hypothetical tobacco plain packaging legislation is another example. If the legislation is
found to be effective in promoting public health by discouraging smoking, then quite
possibly the right to public health will be a more compelling public interest and will
therefore be upheld against the right to property in trade-mark rights. However, the
infringement of the relevant property rights by such legislation would not be as small as
the infringement in the Laugh It Off case. An example from patent law would be where the
state acquires a compulsory license on a particular medicine patent in order to promote
the right to health or life.
The CESCR suggests a twofold purpose for the human rights framework for authors’ rights:
to protect the ‘personal link between authors and their creations’ and to protect ‘basic
material interests which are necessary to enable authors to enjoy an adequate standard of
living.’143 There are certain ‘irreducible core rights – a zone of personal autonomy in which
authors can achieve their creative potential, control their productive output, and lead
independent, intellectual lives, all of which are essential prerequisites for any free society’
and only the protection of these rights would be subject to the stringent test.144 This approach
General Comment No 17 paras 22–23.
General Comment No 17 para 2. See Helfer ‘International Rights Approaches to Intellectual Property: Towards a Human
Rights Framework for Intellectual Property’ 971–1020 at 994–995.
144 Helfer ‘International rights approaches to intellectual property: Towards a human rights framework for intellectual
property’ 971–1020 at 996.

is close to the principle that the German Federal Court applies in balancing property rights
with conflicting rights and the public interest, namely by asking whether an individual’s
particular right may ‘serve the fundamental constitutional purpose of securing a sphere of
personal liberty for the individual to take responsibility for her own affairs in the patrimonial
field’ and protecting or limiting the right accordingly.145 South African law may also benefit
from this approach.
Rights that do not fall within this core would be subject to other economic, social and
cultural rights as well as the interest of the public in access to knowledge. The German
Federal Constitutional Court would also afford such rights less protection in terms of the
scaling approach because they are commercial interests and rather remote from the core
principle of human flourishing, which determines whether Article 14 affords constitutional
protection to a particular property interest.
Human rights may be used to expand intellectual property or to impose external limits
on intellectual property. Alternatively, human rights ends may be achieved through
intellectual property means.146
PAUSE FOR Using human rights to limit intellectual property rights

REFLECTION An example of using human rights law to impose limits on intellectual property
would be limitation of intellectual property rights by protecting freedom of expression.147
In Laugh It Off v SAB International,148 the South African Constitutional Court limited
trademark rights in ter ms of the right to freedom of expression
by justifying a use outside those provided for in the Trade Marks Act 194 of
1993. The right to freedom of expression limited the trade-mark right after the two rights
were weighed up. An example of achieving human rights ends through intellectual property
means would be the example mentioned earlier, namely giving effect to the right to
freedom of expression by adding a parody exception in the Copyright Act.
Achieving human rights ends through intellectual property means moves beyond taking
the existing intellectual property system as is and merely adding human rights protection
to the existing system. Intellectual property laws should be protected in so far as they help
to achieve the goals of health, education, poverty alleviation and other human rights, but
where such protection hinders the process, intellectual property rules must be modified or
restricted. The goal is to provide minimum levels of human well-being through intellectual
property laws. South African courts should aim to achieve human rights through intellectual
property means, especially since this coincides with the German scaling approach
(protecting particular property interests more stringently where this serves to further other
human rights).
146 Helfer ‘International rights approaches to intellectual property: Towards a human rights framework for intellectual
property’ 971–1020 at 1014–1020.
147 See C Geiger ‘Fundamental rights, a safeguard for the coherence of intellectual property law?’ (2004) 35 IIC 268–280 at
277.

11.5 Conclusion
At least intellectual property rights should be recognised and protected as constitutional
property under the property clause.149 As a general rule, the inclusion of incorporeal
interests for constitutional property purposes should depend on the questions
whether particular interests can exist independently and whether the rights have vested
in or been acquired by the claimant according to normal law (common law or statute,
depending on the particular right).150 Intellectual property rights will qualify for
constitutional property protection once the particular intellectual property right has been
granted in terms of the particular statute governing this intellectual property right (for
example a trade-mark right) or in terms of common law (for example the right to a trade
secret). Once all the statutory or common law requirements have been met for the
subsistence of the intellectual property right, constitutional property protection may be
afforded (at least in principle).
The constitutional property clause is wide enough to protect rights and interests
that require protection according to international human rights standards. At the very
least, property interests accepted as property in private law should also be accepted as
property for constitutional purposes, which would provide protection against arbitrary
state interferences and the rights of third parties. The procedure to be followed in a
constitutional property enquiry was provided in the FNB case and this is equally applicable
to a constitutional property dispute where the property is intellectual property. The
Constitutional Court151 implicitly accepted trade-mark rights as constitutional property
by balancing the entrenched right to freedom of expression against the right of a trade-mark
owner. This recognition may also be extended to other categories of intellectual property
rights, in line with the Irish and American approaches. The German approach is of particular
value in determining whether particular intellectual property rights may serve to secure
a sphere of personal liberty in the patrimonial area; and protecting the rights more or
less stringently accordingly. For example, copyright may be viewed as closer to the
human personality than commercial trade-mark rights and should therefore be protected
more stringently.
International human rights law indicates that at least certain human rights aspects of
intellectual property law must be protected under human rights law and provides some
guidelines regarding the weighing-up of conflicting human rights. It cannot be determined
which kind of protection is necessary and whether the particular attribute of an intellectual
property interest should be protected more or less stringently until a particular case comes
before the courts. South African courts may use the guidelines from international
conventions and declarations for the interpretation of the Bill of Rights, especially since the
South African Bill of Rights was inspired by the UDHR. The South African Bill of Rights has
no separate right protecting the human rights attributes of intellectual property, so this
protection must fall under the property clause, which has the scope to protect strong human
rights such as the home as well as weaker economic rights such as commercial property.
149 Van der Walt Consitutional Property Law (2011) 126–7. See also Cooper v Boyes NO and Another 1994 (4) SA 521 (C)
where it was decided that shares are incorporeal movable property over which a usufruct may be established. See also
Du Bois ‘Intellectual property as a constitutional property right: The South African approach’ 174–190 at 191–193.
150 Van der Walt Constitutional Property Law (2011) 127.

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Table of cases
A
A Steiner Products Ltd v Willy Steiner Ltd [1964] RPC 356 159
A&M Records Inc & Others v Napster Inc & Others 2001 239 F 3d 1004 (9th Cir) 431, 432
Abdulhay (M) Mayet Group (Pty) Ltd v Renasa Insurance Company Limited 1999 (4) SA 1039 (T) 161
Accesso CC v Allforms (Pty) Ltd and Another 677 JOC (T); [1998] 4 All SA 655 (T) 8, 18
Action Bolt (Pty) Ltd v Tool Wholesale Holdings (Pty) Ltd 1988 (4) SA 752 (T) 84
Adcock Ingram Ltd v Suresh Patel t/a Dolly Lou 2008 BIP 127 (T) 183
Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd 1977 (4) SA 434 (W) 167, 175
Adcock-Ingram Intellectual Property (Pty) Ltd and Another v Cipla Medpro (Pty) Ltd and Another
2012 (4) SA 238 (SCA) 182
adidas AG and Another v Pepkor Retail Ltd (187/12) [2013] ZASCA 3 143, 147,166, 167, 172, 183
adidas AG v Marca Mode CV [2008] FSR 38 143, 161
Adonis Knitwear Holding Ltd v OK Bazaars (1929) Ltd and Others 335 JOC (W) 16
Afitra (Pty) Limited and Another v Carlton Paper of South Africa (Pty) Limited 1992
BP 331 (CP) 376, 377
Africa Sun Oil Refineries (Pty) Ltd v Unilever plc 2007 BIP 127 (N) 181
Agri South Africa v Minister for Minerals and Energy (Afriforum, Afrisake, Centre for Applied
Legal Studies and Floris Johannes Pool as Amicus Curiae) [2013] ZACC 9 482
Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd 1981 (4) SA 873 (C) 174
Alex Pirie & Sons Ltd’s Application [1933] 50 RPC 147 139
Algemeen Dagblad BV & Others v Eureka Internetdiensten [2002] ECDR 1 423
American Chewing Products Corporation v American Chicle Co 1948 (2) SA 736 (A) 179
AM Moolla Group Limited and Others v The Gap Inc and Others 2005 (6) SA 568 (SCA) 99, 136, 159
AM Moolla Group Ltd and Others v The Gap Inc and Others 2005 (2) SA 412 (SCA); (123/2004)
[2005] ZASCA 72; [2005] 4 All SA 245 (SCA) 213, 214, 215
Amod v Multilateral Motor Vehicle Accidents Fund 1999 (4) SA 1319 (SCA) 189
Amp Inc v Utilux Pty Ltd [1972] RPC 103 (HL) 296
ANIMAL trade mark [2004] FSR 383 (ChD) 137
Apple Computer Inc v Design Registry [2002] FSR 602 303
Apple Computer v Rosy t/a SA Commodity Brokers (Pty) Ltd and Another 134 JOC (D) 407
Appleton and Another v Harnischfeger Corporation and Another 1995 (2) SA 247 (A) 16
Arjo Wiggins Ltd v Idem (Pty) Ltd 2002 (1) SA 591 (SCA) 137
Aruba Construction (Pty) Ltd and Others v Aruba Holdings (Pty) Ltd and Others 2003 (2)
SA 155 (C) 186
Assessment Technologies v Wiredata Inc 2003 350 F 3d 640 (7th Cir) 425
Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others 1981 (2)
SA 173 (T) 187, 188, 190, 191, 199
Atomic Energy Corporation of South Africa Limited v The Du Pont Merck Pharmaceutical Company
plc 1997 BIP 90 (CP) 377
Auergesellschaft GmbH v African Oxygen Limited 2001 BIP 53 (CP) 261, 264
Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others 2011 BIP 12 (SCA) 249, 250, 264, 272
B
B Braun Melsungen AG and Another v Specialised Systems Electro Medical (Pty) Ltd and
Others 2005 BIP 22 (CP) 261

Bally Total Fitness Holding Co v Faber 1998 29 F Supp 2d 1161 (CD Cal) 457
Barker & Nelson (Pty) Ltd v Procast Holdings (Pty) Ltd and Another 195 JOC (C) 16
Bata Ltd v Face Fashions CC and Another 2001 (1) SA 844 (SCA) 152, 180
Bateman Equipment Ltd and Another v The Wren Group (Pty) Ltd 1999 BIP 413 (SCA) 262
Bayer Pharma AG (Formerly Bayer Schering Pharma AG) and Another v Pharma Dynamics (Pty) Ltd
(No 1) 2013 BIP 1 (CP) 269
Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another
[2012] ZAGPPHC 139 321
Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd and Another
(722/12) [2013] ZASCA 114 306, 312
Beacon Sweets & Chocolates (Pty) Ltd v Trebor Bassett Ltd and the Registrar of Trade Marks
1997 BIP 12 (T) 373
Beecham Group Limited v Bristol-Myers Company 1979 BP 91 (CP) 262
Beecham Group Ltd v The B-M Group (Pty) Ltd 1977 BP 14 (CP) 278
Beecham Group plc v Southern Transvaal Pharmaceutical Pricing Bureau (Pty) Ltd and Another
1993 (1) SA 546 (A) 142
Beecham Group plc v Triomed (Pty) Ltd [2002] 4 All SA 193 (SCA); 2003 (3) SA 639 (SCA);
[2003] FSR 475 104, 109, 111, 448
Bendz Ltd and Another v South African Lead Works Ltd 1963 BP 409 (A) 270
Berman Brothers (Pty) Ltd v Sodastream Ltd and Another 1986 (3) SA 209 (A) 141, 201
Bernina of America Inc v Fashion Fabrics International Inc 57 USPQ 2d 1881 (ND Ill 2001) 457
Bernstein Manufacturing Co (1961) (Pvt) Ltd v Shepherdson 1968 (4) SA 386 (T) 92
Bihari v Gross 119 F Supp 2d 309 (SDNY 2000) 457
Biotech Laboratories (Pty) Ltd v Beecham Group plc and Another 2002 (4) SA 249 (SCA) 28, 29
Black and Decker Inc v Verimark Holdings (Pty) Ltd and Others 1996 BP 521 (CP) 274
Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2001 (3) SA 884 (SCA) 174
Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd 2005 (1) SA 346 (T) 158
BMW v Verimark 2007 (6) SA 263 (SCA) 194
Bollinger, J and Others v Costa Brava Wine Co (i) [1960] RPC 16 and (ii) [1961] RPC 116 195
Bosal Afrika (Pty) Ltd v Grapnel (Pty) Ltd and Another 1985 (4) SA 882 (C) 9, 37, 38
Boswell-Wilkie Circus (Pty) Ltd v Brian Boswell Circus (Pty) Ltd 1984 (1) SA 734 (N) 170
Botha v Lindeque 1955 BP 127 (CP) 267, 319
Bress Designs (Pty) Ltd and Another v GY Lounge Suite Manufacturers (Pty) Ltd and Another
1991 (2) SA 455 (W) 11, 16, 50, 175, 311
Bristol-Myers Company v Beecham Group Limited 1980 BP 434 (T) 263
British American Tobacco South Africa (Pty) Ltd v Minister of Health (National Council against
Smoking as Amicus Curiae) [2012] 3 All SA 593 (SCA) 482
British Sugar plc v James Robertsons & Sons Ltd [1996] RPC 281 149
British Technology Group Ltd v Sanachem (Pty) Ltd 1993 BP 415 (CP) 293
British Telecommunications plc and Another v One in a Million Ltd and Others [1999] 1
WLR 903 450, 452
Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd 2006 BIP 25 (CP) 250, 251
Brookfield Communications Inc v West Coast Entertainment Corp 174 F 3d 1036
(CA9 (Cal), 1999) 457
Brownie Wireless Co Limited’s Applications [1929] 46 RPC 457 377
Burnkloof Caterers (Pty) Ltd v Horseshoe Caterers (Green Point) (Pty) Ltd 1974 (2) SA 125 (C) 164
Button v Jenni Button (Pty) Ltd 2008 BIP 242 (C) 160, 170, 171
Buzbee (Pty) Ltd v Registrar of Patents 2010 BIP 42 (CP) 265

TABLE OF CASES 505
BVerfGE 31, 229 [1971] (Urheberrecht case) (copyright) 473, 477, 478
BVerfGE 31, 248 [1971] (the Broadcasting Lending case) 478, 487
BVerfGE 31, 255 [1971] (the Tape Recording I case) 478, 487
BVerfGE 31, 270 [1971] (the School Broadcast case) 478, 487
BVerfGE 31, 275 [1971] (the Phonograph Record case) 478, 487
BVerfGE 36, 281 [1974] (patent rights) 477
BVerfGE 42, 263 [1976] (Contergan case) (contractual money claims) 477
BVerfGE 49, 415 [1978] (the Church Music case) 478, 487
BVerfGE 51, 193 [1979] (Warenzeichen case) (trademarks) 477
BVerfGE 68, 193 [1984] (debts) 477
BVerfGE 89, 1 [1993] (Besitzrecht des Mieters case) 478
Byk Gulden SA (Pty) Ltd v AB Hässle and Others 1995 BP 332 (CP) 261
C
Cadac (Pty) Ltd v Weber-Stephen Products Co and Others (530/09) [2010] ZASCA 105;
[2011] 1 All SA 343 (SCA); 2011 (3) SA 570 (SCA) 214, 221
Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd [2000] 2 All SA 1 (A); 2000 (2) SA 771
(SCA) 104, 108
Cambridge Plan AG v Moore 1987 (4) SA 821 (D) 181
Cammeyer v Newton 94 US 225 (1876) 484
Campbell v James 4 F Cas 1168 (CCSDNY 1879) (No 2, 361) 484
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc [1999] RPC 117 (ECJ) 98
Capital Estate & General Agencies (Pty) Limited and Others v Holiday Inns Inc and Others
1977 (2) SA 916 (A) 166, 176, 193
Carmichele v Minister of Safety and Security 2001 (4) SA 938 (CC) 189
Caterham Car Sales & Coach Works Ltd v Birkin Cars (Pty) Ltd [1998] 3 All SA 175 (A);
1998 (3) SA 938 (SCA) 167, 169, 170, 177, 451
Catgraphics CC v Africon Engineering International (Pty) Ltd 2003 JDR 0514 (T) 11, 32
Catgraphics CC v Africon Engineering International (Pty) Ltd 2005 BIP 343 (T) 374
Catnic Components Ltd and Another v Hill & Smith Ltd [1982] RPC 183 275, 277
Century City Apartments Property Services CC and Another v Century City Property Owners’ Association
2010 (3) SA 1 (SCA); [2010] 2 All SA 409 (SCA) 109, 160, 161, 178, 393
CHEETAH trade mark [1993] FSR 263 145
Chloe SAS & Others v Sawabeh Information Services Co CV 11-4147 GAF (MANx), 8 October 2013 463
Cipla Medpro (Pty) Ltd v Aventis Pharma; Aventis Pharma SA and Others v Cipla Life Sciences (Pty) Ltd
and Others 2013 (4) SA 579 (SCA) 471, 472
Clipsal Australia (Pty) Ltd v Trust Electrical Wholesalers [2007] SCA 24 (RSA) 304, 309, 310, 311, 315,
322, 323, 324
Coflexip SA v Schlumberger Logelco Incorporated 2001 BIP 1 (CP) 276
Cointreau et Cie SA v Pagan International 1991 (4) SA 706 (A) 94, 181
Colgate-Palmolive Company v Unilever Limited 1981 BP 121 (CP) 269
Columbia Pictures Industries Incorporated v Video Rent Parkmore 1982 (1) SA 49 (W) 41
Combrinck v de Kock (1887) 5 SC 405 187, 196
Commercial Auto Glass (Pty) Ltd v BMW AG [2007] ZASCA 96; 2007 (6) SA 637 (SCA) 162
Cooper v Boyes NO and Another 1994 (4) SA 521 (C) 491
Coronation Brick (Pty) Ltd v Strachan Construction Co (Pty) Ltd 1982 (4) SA 371 (D) 186
Couve and Another v Reddot International (Pty) Ltd and Others 2004 (6) SA 425 (W) 386

Cow (P.B.) & Co. Ltd v Cannon Rubber Manufacturers Ltd [1959] RPC 347 305
Cowbell AG v ICS Holdings Ltd 2001 (3) SA 941 (SCA) 98,180
D
Da Gama Textile Co Ltd v Vision Creations CC 1995 (1) SA 398 (D) 11
Daimler Chrysler Aktiengesellschaft v Afinta Motor Corporation (Pty) Ltd [2001] 2 All SA 219 (T) 175
Dana Corporation v Rhobrake (Pty) Limited 1992 BP 297 (CP) 273, 322
Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another
1991 (4) SA 850 (A) 126, 127, 131, 149
Danske Dagblades Forening v Newsbooster [2003] ECDR 5 423
Dantex Explosives (Pty) Ltd v Sasol Chemical Industries (Pty) Ltd 1992 BP 265 (CP) 261
Darwin Ltd’s Appn [1946] 63 RPC 1 179
DCM (Optical Holdings) Ltd v Sasha Rodoy, D0001127, 3 August 2012 455
Dean’s Rag Book Co. Ltd v Pomeranz & Sons [1930] RPC 485 303
Deciduous Fruit Board, SA Plant Improvement Association and Unifruco Ltd v The Registrar of Plant
Breeders’ Rights and Sunworld Inc 1997 BIP 1 (RPBR) 287
Delta G Scientific (Pty) Limited v Janssen Pharmaceutica N.V. 1996 BIP 455 (CP) 377
Deton Engineering (Pty) Ltd and Another v JP McKelvey and Others 1997 BIP 113 (CP) 264
Dexion Europe Ltd v Universal Storage Systems (Pty) Ltd 2003 (1) SA 31 (SCA) 36, 50
Die Bergkelder Bpk v Vredendal Koöp Wynmakery and others 2006 (4) SA 275 (SCA) 145, 448
Disney Enterprises Inc. v Griesel NO 2006 BIP 299 (T); 895 JOC (T) 5, 384, 385
Distilleerderij voorheen Simon Rijnbende en Zonen v Rolfes, Nebel & Co 1913 WLD 3 172
Distillers Corporation (SA) Ltd v SA Breweries Ltd and Another; Oude Meester Groep Bpk v
SA Breweries Ltd and Another 1976 (3) SA 514 (A) 137
Dramatico Entertainment Ltd and Others v British Sky Broadcasting Ltd and Others [2012]
EWHC 268 (Ch) 436
Dramatico Entertainment Ltd and others v British Sky Broadcasting Ltd and others [2012]
EWHC 1152 (Ch) 437
Ducker’s Trade Mark [1928] 45 RPC 397 134
Dun and Bradstreet (Pty) Ltd v SA Merchants Combined Credit Bureau (Cape) (Pty) Ltd
1968 (1) SA 209 (C) 187, 191, 195, 200
Dynamic Fluid Control (Pty) Ltd v LW Tank Systems CC 2011 BIP 79 (CP) 280
E
eBay v Bidder’s Edge 100 F Supp 2d 1058 (ND Cal 2000) 425
Ebrahim v Twala and Others 1951 (2) SA 490 (W) 200
Ehrenberg Engineering (Pty) Ltd v Topka t/a Topring Manufacturing and Engineering 40 JOC (T) 34
Elan Transdermal Ltd v Ciba Geigy (Pty) Ltd 1994 BP 1 (CP) 244
Eli Lilly and Co v Natural Answers Inc 86 F Supp 2d 834 (SD Ind 2000) 457
Elida Gibbs (Pty) Ltd v Colgate-Palmolive (Pty) Ltd 1988 (2) SA 350 (W) 186, 192, 198
Elrick and Another v Registrar of Patents and Another 2007 BIP 28 (CP) 256
EMI Records Ltd & Others v British Sky Broadcasting Ltd & Others [2013] EWHC 379 (Ch) 437
Enoch’s Appn [1947] 64 RPC 119 179
Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives & Chemicals Ltd 1998
BIP 271 (SCA) 249, 250, 273
Erven Warnick BV v J Townend & Sons (Hull) Ltd [1980] RPC 31 196
Estee Lauder Cosmetics Ltd v Registrar of Trade Marks 1993 (3) SA 43 (T) 105

TABLE OF CASES 507
Ex parte Chairperson of the Constitutional Assembly: In re Certification of the Constitution of the

Republic of South Africa, 1996 1996 (4) SA 744 (CC) 467, 468, 483
Ex parte Chemisch-Pharmazeutische Aktiengesellschaft 1934 TPD 166 139
F
Farmers Build Ltd v Carier Bulk Materials Handling Ltd [1999] RPC 461 310
Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D) 36, 37
FCUK trade mark [2007] RPC 1 126
Federation Internationale de Football and Others v Bartlett 1994 (4) SA 722 (T) 170
Federation Internationale de Football Association (FIFA) v Executive African Trading CC and
Registrar of Designs 2011 (GNP) (unreported case no. 52308/07, 9-11-2007) 321
Federation Internationale de Football Association v Metcash Trading Africa (Pty) Ltd (53304/07)
[2009] ZAGPPHC 123 (1 October 2009) 206
Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Co 535 US 722 (2002) 484
Fichtel & Sachs Aktiengesellschaft v Road Runner Services Ltd and Another 174 JOC (T) 55
First National Bank of SA Ltd t/a Wesbank v Commissioner, South African Revenue Service
and Another; First National Bank of SA Ltd t/a Wesbank v Minister of Finance 2002 (4)
SA 768 (CC) 473, 474, 475
Foschini Retail Group (Pty) Ltd and 9 (Nine) Others v South African Music Performance Rights
Association (003/2009) [2013] ZAGPPHC 304 (25 October 2013); 2013 JDR 2439 (GNP) 53
Foschini Retail Group (Pty) Ltd v Coetzee 2013 JDR 0001 GNP 151
Francis Day & Hunter Ltd v 20th Century Fox Corporation Ltd and Others [1940] AC 112 (PC) 8
Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger Aktiengesellschaft 1960 BP 162 (A) 276, 277
Frank & Hirsch (Pty) Ltd v Roopanand Bros (Pty) Ltd 1987 (3) SA 165 (D) 140, 383
Frank & Hirsch (Pty) Ltd v A Roopanand Brothers (Pty) Ltd 1993 (4) SA 279 (A) 29, 40, 42, 439
Freefall Trading 211 (Pty) Ltd t/a Property Trader v Proplink Publishing (Pty) Ltd and Others Case
No. 10491/05 in the Cape Provincial Division (unreported) 27
Fundstrust (Pty) Ltd (In Liquidation) v Van Deventer 1997 (1) SA 710 (A) 302
Futuredontics Inc v Applied Annagramics Inc 45 USPQ 2d 2005 (CD Cal 1998) 424
G
Galago Publishers (Pty) Ltd and Another v Erasmus 1989 (1) SA 276 (A) 29, 36, 365, 428
Galison Manufacturing (Pty) Ltd v Set Point Industrial Technology (Pty) Ltd and Another 2009
BIP 5 (CP) 252
Gallagher Group Limited and Another v IO Tech Manufacturers (Pty) Ltd and Others 2013 BIP
45 (CP) 271
Geary and Son (Pty) Ltd v Gove 1964 (1) SA 434 (A) 186, 187,191, 196, 198
Gentiruco A.G. v Firestone South Africa (Pty) Ltd 1971 BP 58 (A); 1972 (1) SA 589 (A) 247, 269
Georgiadis v Australian and Overseas Telecommunications Corporation (1994) 179 CLR 297 480, 482
Gillette Co v L A Laboratories Ltd OY [2005] FSR 37 163
Gillette Safety Razor Co v Diamond Edge Ltd [1926] 43 RPC 310 196
Gillette Safety Razor Co v Franks [1924] 41 RPC 499 196
Gillette Safety Razor Company v Anglo-American Trading Company Ltd [1913] 30 RPC 465 278
Glaverbel SA v British Coal Corporation [1994] RPC 443 270
Glaxo Group Ltd v Cipla Medpro (Pty) Ltd and Others 2007 BIP 91 (CP) 261
Glaxo Group v Dowelhurst Ltd (No 2) [2000] FSR 529 (ChD) 98
Glaxo plc v Glaxo Wellcome Limited [1996] FSR 388 449

Golden China TV Game Centre v Nintendo Co Ltd 1997 (1) SA 405 (A); [1996] 4 All SA 667
(SCA) 12, 399
Golden Eye (International) Ltd and Others v Telefonica UK Ltd [2012] EWHC 723 (Ch) 436
Google France SARL and Google Inc v Louis Vuitton Malletier SA, Google France and Google Inc v
Viaticum SA and Another, and Google France and Google Inc v CNRRH and Others 2010
Joined Cases C-236/08, C-237/08 and C-238/08 [84] 450, 458, 459, 460, 463
Google Inc v Copiepresse SCRL [2007] ECDR 5 423
Gous v De Kock (1887) 5 SC 405 187
Government of the Republic of South Africa and Others v Grootboom and Others 2001 (1)
SA 46 (CC) 487
Grande Paroisse SA v Sasol Ltd and Another 2003 BIP 11 (CP) 279
Grobbelaar v Du Toit 1917 TPD 433 198
Grossberg v Central Cabinet Works (Pty) Ltd 1955 (2) SA 346 (T) 324
Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd & Another [2011] ZASCA 4 160
H
H Lundbeck A/S v Cipla Medpro (Pty) Ltd (No 2) 2008 BIP 107 (T) 264
H Lundbeck A/S v Cipla Medpro (Pty) Ltd 2008 BIP 79 (CP) 264, 265
Haggar Co v SA Tailorscraft (Pty) Ltd and Another 1985 (4) SA 569 (T) 195
Hampo Systems (Pty) Ltd v Audiolens (Cape) (Pty) Ltd 1985 (4) SA 257 (C) 140
Harvey Tiling Co (Pty) Ltd v Rodomac (Pty) Ltd and Another 1977 (1) SA 316 (T) 195
Hasbro Inc v 123 Nahrmittel GmbH [2011] FSR 539 (ChD) 108
Haupt t/a Soft Copy v Brewers Law Marketing Intelligence (Pty) Ltd and Others 2006 (4)
SA 458 (SCA); 908 JOC (A) 9, 14, 20, 34, 397, 398, 403
Health Insurance Commission v Peverill (1994) 179 CLR 226 480
Hermes Trade Mark [1982] RPC 425 (Ch) 135
Hoechst Pharmaceuticals (Pty) Ltd v The Beauty Box (Pty) Ltd (In Liquidation) and Another 1987
(2) SA 600 (A) 175
Hokuriku Pharmaceutical Co Ltd v Cipla-Medpro (Pty) Ltd 1999 BIP 384 (CP) 260, 325
Hollywood Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd (1) 1989 (1) SA 236 (A) 181
Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd and Another 1984 (3)
SA 681 (A) 313, 322, 323
Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd [2010] RPC 485 (CA) 123
I
Imperial Group plc v Philip Morris Ltd [1984] RPC 293 (Ch) 169
In re Owens-Corning Fibreglass Corp 774 F 2d 1116 (1985) 110
In re Slavin’s Packaging (Pty) Ltd v Space Case Products (Pty) Ltd and Another (683/94)
[1996] ZASCA 64 181
Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20 422
Integrated Mining Systems (Pty) Ltd v Chamber of Mines of South Africa 1974 BP 281 (CP) 252
Intel Corp v Hamidi 2003 71 P 3d 296 425
Intel Corporation Inc v CPM United Kingdom Ltd [2009] RPC 15 155
Interflora Inc & Another v Marks & Spencer plc & Another 2011 C-323/09 457,458, 460, 461, 462
Interflora Inc & Another v Marks & Spencer plc & Another, [2013] EWHC 1291 (Ch) 462

TABLE OF CASES 509
J
Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (SCA) 11, 35, 36
Janse van Rensburg NO and Another v Minister of Trade and Industry and Another NNO [2000]
ZACC18; 2001 (1) SA 29 (CC) 220
JB Williams Company v H Bronnley & Co Ltd [1909] 26 RPC 765 172
JL & JE Walter Enterprises (Pvt) Ltd v Kearns 1990 (1) SA 612 (ZH) 11
John Craig (Pty) Ltd v Dupa Clothing Industries (Pty) Ltd 1977 (3) SA 144 (T) 167
John Hay Chapman Drummond-Hay v DI Fram & Company Limited 1963 BP 380 (A) 248, 251
John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] RPC 489 195
JT International SA v Commonwealth of Australia; British American Tobacco Australasia
Limited & Ors v The Commonwealth of Australia [2012] HCA 43 481, 482
Juta & Company Ltd and Others v De Koker and Others 415 JOC (T) 34, 422
K
Kalamazoo Division (Pty) Ltd v Gay and Others 1978 (2) SA 184 (C) 9, 18
Kamborian’s Patent [1961] 78 RPC 403 377
Kambrook Distributing v Haz Products and Others 243 JOC (W) 19
Kean v McGivan [1982] FSR 119 169
Kellogg Co and Another v Bokomo Co-operative Ltd 1997 (2) SA 725 (C) 168, 191
Kelly et al v Arriba Soft Corp et al 280 F 3d 934 (9th Cir 2002) 424
Kerr-McGee Chemical Corporation v Tioxide Group Services Ltd 1999 BIP 83 (CP) 250
Kestos Ltd v Kempat Ltd and Kemp [1936] 53 RPC 139 304
Kimberly-Clark of South Africa (Pty) Ltd v Procter & Gamble SA (Pty) Ltd 1998 BIP 228 (SCA) 264
King v SA Weather Service 2009 (3) SA 13 (SCA); [2009] 2 All SA 31 (SCA) 15, 27, 33, 407
Kinnor (Pty) Ltd v Finkel 352 JOC (W) 8
Klep Valves (Pty) Ltd v Saunders Valve Co Ltd 1987 (2) SA 1 (A) 11, 16, 17, 18, 36, 313
Kraft Foods Inc v All Joy Foods (Pty) Ltd unreported judgment TPD 19 April 1999 Case
No. 26539/98 180
L
L’Oréal SA & Others v eBay International AG & Others 2011 C-324/09, 12 July 2011 463
L’Oreal S.A. v Bellure NV [2010] RPC 23 (CA) 155
La Chemise Lacoste v Rong Tai Trading CC 2007 BIP 175 (T) 180
LA Group Ltd and Another v B & J Meltz (Pty) Limited and Others (2672/04) [2005]
ZAPHC 23 215, 216, 217, 221
Lancer Trade Mark [1987] RPC 303 (CA) 181
Laubscher v Vos and Others 3 JOC (W) 35, 36
Laugh It Off Promotions CC v SAB International (Finance) BV t/a Sabmark International
(Freedom of Expression Institute as Amicus Curiae) 2006 (1) SA 144 (CC); [2005] 8
BCLR 743 (CC) 153, 154, 455, 470, 471, 475, 486, 490, 491
Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark
International 2005 (2) SA 46 (SCA) xxv, 469, 475
Lebowa Mineral Trust Beneficiaries Forum v President of the Republic of South Africa and Others 2002
(1) BCLR 23 (T) 468
Lego M Lemelstreich Limited v Hydro-Plan Engineering Limited 1981 BP 1 (CP) 269
Lennon Ltd v Sachs 1906 TS 331 175
Letraset Limited v Helios Limited 1972 BP 243 (A) 273

Lever Bros Port Sunlight Ltd v Sunniwite Products Ltd [1949] 66 RPC 84 148
Long John International Ltd v Stellenbosch Wine Trust (Pty) Ltd and Others 1990 (4) SA 136 (D) 195
Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd 1981 (3)
SA 1129 (T) 168, 176, 184, 185, 188
M
Mallinckrodt, Inc v Medipart, Inc 976 F. 2d 700 (Fed Cir. 1992) 383
Marais v Bezuidenhout 1999 (3) SA 988 (W) 11
Marine 3 Technologies Holdings (Pty) Limited v Afri-Group Investments (Pty) Limited and Another
2013 BIP 67 (CP) 268
Marley (South Africa) (Pty) Ltd v Piping Innovations (Pty) Ltd and Another 1989 (2) SA 510 (T) 306
McCarthy Ltd v Hi-Fi Corporation (Pty) Ltd 1075 JOC (T) 41
McCauley Corporation Ltd v Brickor Precast (Pty) Ltd 1989 BP 314 (CP) 245, 246, 260, 325
McClurg v Kingsland 42 US (1 How) 202 (1843) 484
McDonald’s Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another; McDonald’s
Corporation v Dax Prop CC and Another; McDonald’s Corporation v Joburgers Drive-Inn
Restaurant (Pty) Ltd and Dax Prop CC 1997 (1) SA 1 (A); [1996] 4 All SA 1 (A)
123, 130, 152, 153,157, 158, 169
MCG Industries (Pty) Ltd v Chespak (Pty) Ltd 2011 BIP 284 (GNP) 305, 307, 313, 317
McKeever v United States 14 Ct Cl 396 (1878) 484
MCT Labels SA and Another v Gemelli CC 1991 (1) SA 53 (D) 142
Metal Box South Africa Ltd v Midpak Blow-Moulders (Pty) Ltd 1988 (2) SA 446 (T) 141
Metcash Trading Ltd v Rainbow Cash and Carry CC unreported decision TPD Case no. 4339/01 of
8 November 2001 179
Metro-Goldwyn-Mayer Studios Inc & Others v Grokster Ltd & Others 2005 545 US 913 432, 433
Mettenheimer and Another v Zonquasdrif Vineyards CC and others [2013] ZASCA 152 150
Mfundisi v Liston 2006-5-19 case no. 4191/06 (C) 191
Minister of Health and Another NO v New Clicks South Africa (Pty) Ltd and Others (Treatment
Action Campaign and Another as Amici Curiae) 2006 (2) SA 311 (CC) 471
Minister of Health and Others v Treatment Action Campaign and Others 2002 (5) SA 721 (CC) 487
Minister of the State for the Army v Dalziel (1944) 68 CLR 261 479
Moorgate Tobacco Co Ltd v Philip Morris Inc – unreported decision 21 May 1986 122
Moresport (Pty) Ltd v The Commissioner for the South African Revenue Service and Others unreported
decision case no. 36853/2006 (Gauteng Division of the High Court) of 27 March 2008 50, 51
Mr Video (Pty) Ltd and Others v Nu Metro Filmed Entertainment (Pty) Ltd and Others [2010] 2
All SA 34 (SCA) 439
MTV Networks v Adam Curry 1994 867 F Supp 202 (SDNY) 449
Multiknit 2000 (Pty) Ltd v Industrial Netting & Mining Products (Pty) Ltd 1995 BP 381 (CP) 261
Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd 1982
BP 421 (A) 277
Murray v Vodacom (Pty) Ltd and Another 2008 BIP 31 (CP) 277
Mutual Pools & Staff Pty Ltd v The Commonwealth of Australia (1994) 179 CLR 155 480
My Kinda Bones Ltd v Dr Peppers’ Stove Co Ltd [1984] FSR 289 168
N
National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) 147
National Provincial Bank Ltd v Ainsworth [1965] AC 1175 479
Netlon Limited and Van Leer South Africa (Pty) Ltd v Pacnet (Pty) Ltd 1977 BP 87 (A) 278, 279

TABLE OF CASES 511
Netlon South Africa Ltd and Another v Pacnet (Pty) Ltd 1974 BP 237 (CP) 278, 279
New Balance Athletic Shoe Inc v Dajee and Others NNO [2012] ZASCA 3 (2 March 2012) 136
New Media Publishing (Pty) Ltd v Eating Out Web Services CC and Another 2005 (5)
SA 388 (C) 150, 450, 451, 452, 453
Newcrest Mining (WA) Ltd v The Commonwealth (1997) 190 CLR 513 482
Newspaper Licensing Agency v Meltwater Holding [2011] EWCA Civ 890 422, 424
Nintendo Co Ltd v Centronics Systems Pty Ltd (1994) 181 CLR 134 480
Nintendo Co Ltd v Golden China TV Game Centre and Others 1995 (1) SA 229 (T) 12
No-Fume Ltd v Frank Pitchford & Co [1935] 52 RPC 231 274
North American Medical Corporation v Axiom Worldwide Inc 2008 US App LEXIS 7370 (11th Cir) 457
Northern Office Micro Computers (Pty) Ltd and Others v Rosenstein 1981 (4)
SA 123 (C) 394, 395, 398, 399
Nottage and Another v Jackson (1883) 11 QBD 627 314
O
O’Hara v Chief Constable of the Royal Ulster Constabulary [1997] All ER 129 (HL) 220
Ocular Sciences Ltd & Another v Aspect Vision Care Ltd and Others [1997] RPC 395 311
Oilwell (Pty) Ltd v Protec International Ltd and Others 2011 (4) SA 394 (SCA) 386, 387, 388
Old Apostolic Church of Africa v Non-White Old Apostolic Church of Africa 1975 (2) SA 684 (C) 168
Omega Africa Plastics (Pty) Ltd v Swisstool Manufacturing Co (Pty) Ltd 1978 (3) SA 465 (A) 281, 324
On-Line Lottery Services (Pty) Ltd and another v National Lotteries Board and Others [2009]
4 All SA 470 (SCA) 108, 171
Oude Meester Groep Bpk and Another v SA Breweries Limited; SA Breweries Ltd and Another v
Distillers Corporation (SA) Ltd and Another 1973 (4) SA 145 (W) 179
Oyster Software Inc v Forms Processing Inc & Others 2001 US Dist LEXIS 22520 425
P
PAG Ltd v Hawk-Woods Ltd [2002] FSR 46 (ChD) 141
Pan African Engineers (Pty) Ltd v Hydro Tube (Pty) Ltd and Another 1972 (1) SA 470 (W) 314
Paperboy [2005] ECDR 7 [37] 421
Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T) 41
Pasquali Cigarette Co Ltd v Diaconicolas & Capsopolus 1905 TS 472 175, 181
Pastel Software (Pty) Ltd v Pink Software (Pty) Ltd and Another 399 JOC (T) 19, 399, 404, 414, 428
Patz v Greene & Co 1907 TS 427 200, 201, 206
Payen Components SA Ltd v Bovic Gaskets CC and Others 1994 (2) SA 464 (W) 18, 185
Payen Components SA Ltd v Bovic Gaskets CC and Others 1995 (4) SA 441 (A) 9, 55,184, 186, 209,
Pfizer Ltd and Another v Cipla Medpro (Pty) Ltd and Others 2005 BIP 1 (CP) 260
Pfizer SA (Pty) Ltd v Robertsons (Pty) Ltd 1967 (3) SA 8 (T) 135
Phonographic Performance (Ireland) Ltd v Cody [1998] 2 ILRM 241 476
Phumelela Gaming and Leisure Ltd v Gründlingh and Others 2007 (6) SA 350 (CC) 185,188
Pianotist Co Ltd’s Appn [1906] 23 RPC 774 178
Pick ‘n Pay Retailers (Pty) Ltd v Commissioner of South African Revenue Services and Others
(13354/2007) [2008] ZAWCHC 24; 2008 BIP 187 (C) 220, 221, 222, 228, 233
Piquante Brands International (Pty) Ltd v OMC Marketing (Pty) Ltd and Another 2007 BIP
453 (RPBR) 288
Pitman Training Ltd v Nominet UK [1997] EWHC Ch 367 448
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) 146, 161, 178
Playboy Enterprises Inc v AsiaFocus International Inc US Dist LEXIS 10359 (ED Va 1998) 457

Playboy Enterprises Inc v Welles 162 F 3d 1169 (9th Cir) (CA Cal 2002) 457
Pleasure Foods (Pty) Ltd v TMI Foods CC t/a Megaburger 2000 (4) SA 181 (T) 133
Policansky Bros Ltd v L&H Policansky 1935 AD 89 170
Policansky Brothers v Hermann & Canard 1910 TPD 1265 164
Post Newspapers (Pty) Ltd v World Printing & Publishing Co Ltd 1970 (1) SA 454 (W) 198, 199
Premier Hangers CC v Polyoak (Pty) Ltd 1997 (1) SA 416 (A) 186, 190
Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd 2000 (3) SA 259 (SCA) 167
Prince plc v Prince Sportswear Group Inc [1998] FSR 21 448
PRLine SA v Communication & Sales SA & Another [2002] ECDR 2 426
Procter & Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and Another 1996
BP 470 (T) 261
Prok Africa (Pty) Ltd and Another v NTH (Pty) Ltd and Others 1980 (3) SA 687 (W) 187, 200, 206
Protective Mining & Industrial Equipment Systems (Pty) Ltd v Audiolens (Cape) (Pty) Ltd 1987
(2) SA 961 (A) 140, 383
Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd & Others
[2013] UKSC 18 423
Puma AG Rudolf Dassler Sport v Global Warming (Pty) Ltd 2010 (2) SA 600 (SCA) 147, 165
Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd and others 2011 (2) SA
463 (SCA) 143, 147, 213, 217
Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd [1955] 72 RPC 171
R
R v Ismail and Another 1958 (1) SA 206 (A) 220
R v Johnstone [2003] UKHL 28; [2003] 3 All ER 884 214
Rapid Phase Entertainment CC v South African Broadcasting Corporation 597 JOC (W) 18
Re Concrete Ltd’s Application [1940] 57 RPC 121 303
Re Littlewoods Pools Ltd Application [1949] 66 RPC 309 303
Re Spice Girls Ltd v Aprilla World Service BV [2002] EWCA Civ 15 [2000] ECDR 148 303
Reckitt & Colman SA (Pty) Ltd v SC Johnson & Son SA (Pty) Ltd 1993 (2) SA 307 (A) 181
Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40 457
Reeves Brothers Incorporated and Spunnyfoam Laminations (Pty) Ltd v Furpile (Pty) Ltd 1971
BP 21 (CP) 269
Registrar of Trade Marks v Wassenaar 1957 (4) SA 513 (A) 108,133
Richardson-Vick’s Patent [1995] RPC 568 262
Ritz Hotel Ltd v Charles of the Ritz and Another 1988 (3) SA 290 (A) 131
Roadtech Computer Systems v Mandata Ltd [2000] ETMR 970 457
Robinson v D. Cooper Corporation of South Africa (Pty) Ltd 1984 (3) SA 699 (A) 313, 314
Robinson v Rossi [1996] 2 All SA 349 (W) 221
Ruckelshaus v Monsanto Co 467 US 986 (1984) 484
Ryanair Ltd v Robert Tyler, D00008527, 7 October 2010 455
Rysta Ltd’s application [1943] 60 RPC 87 179
S
S v De Blom 1997 (3) SA 513 (A) 215
SAB International t/a Sabmark International v Laugh It Off Promotions [2003] 2 All
SA 454 (C) 468, 475
SAFA v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another 2003 (3) SA 313 (SCA) 123
Safari Surf Shop CC v Heavywater and Others [1996] 4 All SA 316 (D) 153, 180

TABLE OF CASES 513
Saltman Engineering Co Ltd v Campbell Engineering Co Ltd [1948] 65 RPC 203 (CA) 195
Salusa (Pty) Ltd v Eagle International Traders 1979 (4) SA 697 (C) 187
Sanachem (Pty) Limited v British Technology Group plc 1992 BP 276 (CP) 376
Sanofi Aventis and Others v Cipla Medpro (Pty) Ltd and Another 2009 BIP 1 (CP) 264
Saunders v Weil [1893] 10 RPC 29 303
Saunders Valve Co Ltd v Klep Valves (Pty) Ltd 1985 (1) SA 646 (T) 16
Schlesinger v Schlesinger 1979 (4) SA 342 (W) 221
Schultz v Butt 1986 (3) SA 667 (A) 184, 185, 186, 187, 188, 190, 191, 310
Scientific Chemicals (Pty) Ltd v Liqui-Seal (Pty) Ltd and Others 2002 BIP 85 (T) 137
Screentex (Pty) Ltd v J Lyons & Co (Pty) Ltd And Others 1967 (2) SA 375 (D) 310
Sea Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd 1985 (2) SA 355 (C) 171, 197
Sea Harvest Corporation (Pty) Ltd v Irvin & Johnson Ltd WCHC 17-03-2011 case no. 2966/11 198
Searles Industrials (Pty) Ltd v International Power Marketing (Pty) Ltd 1982 (4) SA 123 (T) 179, 181
Setlogelo v Setlogelo 1914 AD 221 58
Shetland Times Ltd v Wills [1997] FSR 604 422, 427
SHFL Entertainment Inc (formerly Shuffle Master Inc) v TCS John Huxley (Pty) Ltd and Another
2013 BIP 92 (CP) 262
Shoba v Officer Commanding, Temporary Police Camp, Wagendrift Dam, Maphanga v Officer
Commanding, South African Police Murder and Robbery Unit, Pietermaritzburg and Others
1995 (4) SA 1 (A) 165
Sieckmann v Deutsches Patent-und Markenamt [2003] RPC 685 (ECJ) 96
Slavepak Holdings (Pty) Ltd v Buddy Manufacturers CC 21/12/2001 Case No 21613/01
(T) (unreported) 306
Smith and Nephew Ltd v Mediplast Pharmaceutical Sales CC 1999 (2) SA 646 (D) 165, 177
Smith Kline & French Laboratories’ Application [1974] RPC 253 306
Smith-Kline & French Laboratories (Australia) Ltd and Others v Secretary, Department of
Community Services and Health (1990) 95 ALR 87 (FC) 479
SmithKline Beecham Consumer Brands (Pty) Ltd v Unilever plc 1995 (2) SA 903 (A) 182
Société des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch) (01 October 2012) 92
Société des Produits Nestlé S.A. v International Foodstuffs Co 2013 JDR 2699 (GNP); 2013
BIP 320 (GNP) 92, 110, 132 144, 155, 156, 181
Sodastream Limited v Berman Bros (Pty) Ltd 1984 (4) SA 425 (T) 140
Sodastream Limited v Berman Bros (Pty) Ltd 1985 (4) SA 257 (C) 383
Soobramoney v Minister of Health, KwaZulu-Natal 1998 (1) SA 765 (CC) 487
South Africa Football Association v Stanton Woodrush (Pty) Ltd 2002 (2) SA 236 (T) 131
South African Broadcasting Corporation v Pollecutt 1996 (1) SA 546 (A) 67
South African Druggists Ltd v Bayer Aktiengesellschaft 1989 BP 222 (A) 265
Spectravest Inc v Aperknit Limited [1988] FSR 161 35
Speedmark Holdings (Pty) Ltd v Roman Roller CC and Another 1993 BP 397 (CP) 251
Standard Bank of SA Ltd v United Bank Ltd 1991 (4) SA 780 (T) 161
Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15 (Ch) 253
Stauffer Chemical Co. v Agricura Limited 1979 BP 168 (CP) 278, 279, 381, 382, 383
Stauffer Chemical Company and Stauffer Chemical (South Africa) (Pty) Ltd and FBC Agrochemicals
(Pty) Ltd v Safsan Marketing and Distribution Company (Pty) Ltd and Chemtrade (Pty) Ltd and
Kempton Produce Supply (Pty) Ltd 1983 BP 209 (CP) 270, 277
Stauffer Chemicals Chemical Products Division of Chesebrough-Pond’s (Proprietary) Ltd v Monsanto
Company 1987 BP 37 (T) 274
Stellenbosch Farmers’ Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) 175

Stellenbosch Wine Trust Ltd and Another v Oude Meester Group Ltd; Oude Meester Group Ltd v
Stellenbosch Wine Trust Ltd and Another 1972 (3) SA 152 (C) 187, 194, 195, 197
Stellenbosch Wine Trust Ltd v Oude Meester Group Limited 1977 (2) SA 221 (C) 168, 187, 196
Stiff v Reid-Daly and Another 2004 BIP 240 (W) 27
Sunsmart Products (Pty) Ltd v Flag & Flagpole Industries (Pty) Ltd t/a National Flags 2007
BIP 44 (SCA) 305
Sure Travel Ltd v Excel Travel (Pty) Ltd and Others 2004 BIP 275 (W) 16
Svensson & Others v Retriever Sverige AB 2014 C-466/12[25] 421, 423, 424
Swisstool Manufacturing Co v Omega Africa Plastics 1975 (4) SA 379 (W) 306, 322
Syntheta (Pty) Limited (formerly Delta G Scientific (Pty) Limited) v Janssen Pharmaceutica NV
and Another 1999 (1) SA 85 (SCA) 377
T
Taylor & Horne (Pty) Ltd v Dentall (Pty) Ltd 1991 (1) SA 412 (A) 185, 186, 201
Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 (HL) 251
TeleAtlas Africa (Pty) Ltd and Another v AfriGis (Pty) Ltd unreported judgment under case
no. 14421/11 dated 13 May 2011, (North Gauteng High Court) 58
Television Radio Centre (Pty) Ltd v Sony Kabushika Kaisha t/a Sony Corporation 1987 (2)
SA 994 (A) 141
Terrapin Ltd v Builders’ Supply Co. (Hayes) Ltd [1960] RPC 128 194
The Commissioner for the South African Revenue Service and Another in re Bayerische Motoren Werke
and Others A 1796/04 [2005] ZAGPHC 108 233
The Commissioner for the South African Revenue Service and Others v Moresport (Pty) Ltd and
Others 2009 (6) SA 220 (SCA) 221
The Commonwealth of Australia and Another v The State of Tasmania and Others (1983) 158
CLR 1; [1983] HCA 21 481
The Gap, Inc v Salt of the Earth Creations (Pty) Ltd 2012 (5) SA 259 (SCA) 135, 136
The Minister of Trade and Industry and Another v EL Enterprises and Another [2010] ZASCA 149;
2011 (1) SA 581 (SCA) 224
Ticketmaster Corp et al v Tickets.com Inc 54 USPQ 2d 1344 (CD Cal 2000) 421
Ticketmaster Corp v Tickets.Com Inc 2003 US Dist LEXIS 6483 425, 429
Tie Rack plc v Tie Rack Stores (Pty) Ltd 1989 (4) SA 427 (T) 122, 124, 170
Tiger Food Brands Intellectual Property Holding Company Ltd v Sunnyfield Packaging Company
(Pty) Ltd 2008 BIP 158 (N) 183
Times Media Ltd v South African Broadcasting Corporation 1990 (4) SA 604 (W) 199
Topka t/a Topring Manufacturing and Engineering v Ehrenberg Engineering (Pty) Ltd 71 JOC (A) 4, 18
Townsend Productions (Pty) Ltd v Leech and Others 2001 (4) SA 33 (C) 186
Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd 1985 (1) SA 448 (A) 161, 179
Triomed (Pty) Ltd v Beecham Group plc [2001] 2 All SA 126 (T); 2001 (2) SA 522 (T); [2001]
FSR 34 98, 111,152, 182
Turbek Trading CC v A&D Spitz Limited [2010] 2 All SA 284 (SCA); [2010] FSR
16 (SCA) 128, 131, 164, 165, 177
Twentieth Century Fox Film Corporation & Others v Newzbin Ltd [2010] EWHC 608 (Ch) 436
Twentieth Century Fox Film Corporation and Another v Anthony Black Films (Pty) Ltd 1982 (3)
SA 582 (W) 42
Twentieth Century Fox Film Corporation and Others v British Telecommunications plc [2011] EWHC
1981 (Ch) 436

TABLE OF CASES 515
U
Unilever Limited v Colgate-Palmolive Company 1977 BP 200 (CP) 269
Uniloc USA, Inc. v Microsoft Corp 632 F. 3d 1292 (2011) 370
Universal Music Australia Pty Ltd & Others v Sharman License Holdings Ltd & Others [2005]
FCA 1242 433, 434
University of Pretoria v Registrar of Patents and Others 2011 BIP 41 (CP) 258, 259
V
Vagar (t/a Rajshree Release) v Transavalon (Pty) Ltd t/a Avalon Cinema 1977 (3) SA 766 (W) 54, 55
Valentino Globe BV v Phillips & Another 1998 (3) SA 775 (SCA) 131
Van der Merwe and Another v Els and Another 2008 BIP 404 (C) 189
Van der Westhuizen v Scholtz 1992 (4) SA 866 (O) 191
Vari-Deals 101 (Pty) Ltd t/a Vari-Deals and Others v Sunsmart Products (Pty) Ltd 2007 BIP
69 (SCA) 280
Veasey v Denver Rock Drill and Machinery Co Ltd 1930 AD 243 248
Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA); [2007] FSR 33 (SCA) 142, 143, 147, 153, 155
Victor Products (SA) (Pty) Ltd v Lateulere Manufacturing (Pty) Ltd 1975 (1) SA 961 (W) 196
Victoria’s Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A) 122
Video Rent (Pty) Ltd and Another v Flamingo Film Hire 1981 (3) SA 42 (C) 55
Vumba Intertrade CC v Geometric Intertrade CC 2001 (2) SA 1068 (W) 220
W
W R B Enterprises (Pty) Limited and Another v Plasbox Industrial Appliances (Pty) Limited and
Another 1975 (1) SA 801 (T) 322
Wachovia Corporation v Alton Flanders D2003 - 0596 (WIPO) 455
Water Renovation (Pty) Ltd v Gold Fields of South Africa Ltd 1993 BP 493 (A) 278, 279
Water Renovation (Pty) Ltd v Gold Fields of South Africa Ltd 1994 BP 73 (CP) 261 265
Waylite Diaries CC v First National Bank Ltd 1993 (2) SA 128 (W) 17, 18
Waylite Diary CC v First National Bank Ltd 1995 (1) SA 645 (A) 8, 18
Weber-Stephen Products Co v Alrite Engineering (Pty) Ltd 1992 (2) SA 489 (A) 110, 172, 174
Weltevrede Nursery (Pty) Ltd v Keith Kirsten’s (Pty) Ltd and Another 2004 (4) SA 110 (SCA) 286
William Grant and Sons Ltd and Another v Cape Wine and Distillers Ltd and Others 1990 (3)
SA 897 (C) 195
Wistyn Enterprises (Pty) Ltd v Levi Strauss & Co 1986 (4) SA 796 (T) 135
Wright Boag & Head Wrightson (Pty) Limited v Buffalo Brake Beam Company 1965
BP 222 (CP) 266, 318
X
Xactics (Pty) Ltd v Tailored Containers (Pty) Ltd 1971 (2) SA 562 (C) 313
Z
Zoltek Corp v United States 442 F3d 1345 (Fed Cir 2006) 484

Table of legislation
Australia Companies Act 71 of 2008 87

Commonwealth Constitution 1990 Section 185 86, 328, 379
Section 51(xviii) 480 Constitution of the Republic of South Africa 200
Section 51(xxxi) 479, 480, 481, 482 of 1993 (interim Constitution) 189
Commonwealth of Australia Constitution Act 1900 Constitution of the Republic of South Africa, 1996
Section 9 481 (final Constitution) xxiv, xxvi, 467, 469
Copyright Act of 1968 Chapter 2 189
Section 101 433 Section 2 xxv
Section 101(1A) 433 Section 8(4) 474
Tobacco Plain Packaging Act 148 of 2011 Section 16 470
(TPP Act) 480, 482 Section 22 185
Section 4 481 Section 25 xxiv, 466, 467, 468, 470, 472,
Section 15 481 473, 474, 476, 477
Section 16 481 Section 25(1) xxv, 473, 474, 483
Section 28 481 Section 25(2) 473, 474, 483
Section 25(3) 473, 474
Germany Section 25(4)(b) 473
Basic Law of the Federal Republic of Germany Section 27(1) 471
(Grundgesetz für die Bundesrepublik Section 36 185
Deutschland) 1949 475 Section 36(1) 474
Article 14 476, 477, 478, 490 Section 39(1)(c) 475, 485
Civil Code (Bürgerliches Gezetzbuch) Section 39(2) 189
Section 903 476 Consumer Protection Act 68 of 2008 369
Section 1 203
Ireland Section 24 203
Constitution of Ireland, 1937 Section 24(1) 203
Article 40.3.2 476 Section 24(2) 203
Article 43 476 Section 24(3) 203
Article 43.1 476 Section 25 201, 202, 203
Section 41(1) 205
Philippines Section 41(3) 205
The Indigenous Peoples Rights Act of 1997 Section 42(1)–(3) 207
(Republic Act No 8371) 358 Section 110(1) 203
Section 110(2) 203
Portugal Copyright Act 63 of 1965 4
Decree-Law No 118 of 2002 358 Copyright Act 98 of 1978 xxiv, 5, 15, 21, 45, 59,
61, 65, 66, 67, 209, 212, 214, 242, 243,
South Africa 314, 344, 347, 349, 385, 394, 401, 413,
Bills 414, 421, 444, 445, 467, 490
Intellectual Property Laws Amendment Chapter 2A 68, 69, 354
Bill 2008 347 Chapter 3 52, 53
Plant Breeders’ Rights Bill B–2013 292 Section 1 71, 328, 402
Section 1(1) 8, 9, 10, 11, 12, 13, 14, 20, 33,
Statutes 299, 396, 400, 405, 406, 407, 426
Arbitration Act 42 of 1965 32, 75 Section 1(2A) 34

Section 1(5) 19 Section 12(7) 48

Section 2 16, 68, 69, 395 Section 12(8)(a) 48
Section 2(1) 8 Section 12(12) 48, 409
Section 2(2) 8, 18, 70, 399, 400, 407, 418 Section 12(13) 48, 409
Section 2(2)(A) 18 Section 12–19B 73
Section 2(3) 16 Section 13 52, 367, 409, 410, 411,
Section 3 26 412, 415
Section 3(1) 19 Section 14 367, 378
Section 3(2)(a) 22 Section 14(1) 48
Section 3(2)(b) 22 Section 14(1)(a) 48
Section 3(2)(c) 22 Section 14(1)(b) 48
Section 3(2)(d) 22 Section 14(1)(c) 48
Section 3(2)(e) 22 Section 14(1)(d) 49
Section 3(2)(f) 22 Section 14(2) 49
Section 3(3)(a) 22 Section 14(2)(a) 49
Section 3(4) 22 Section 14(2)(b) 49
Section 4 26 Section 14(2)(c) 49
Section 5 23, 28 Section 15 367
Section 5(2) 27, 28 Section 15(1) 49
Section 6 23, 33, 367 Section 15(2) 49
Section 7 23, 33, 367 Section 15(3) 49
Section 8 24, 33, 367 Section 15(3A) 49, 50, 51, 190, 299, 311
Section 9 24, 33, 367 Section 15(4) 46, 47, 48
Section 9(a) 428 Section 16 367
Section 9(d) 32 Section 16(1) 46, 47, 48
Section 9(e) 32 Section 17 46, 47, 48, 367
Section 9A 32, 53, 374 Section 18 46, 47, 48, 367
Section 10 24, 33, 367 Section 19 367
Section 11 24, 33, 367 Section 19(1) 51
Section 11A 25, 33 Section 19(2) 51
Section 11B 25, 33 Section 19A 46, 47, 48
Section 11B(a) 403 Section 19B(1) 46, 47, 48, 409
Section 11B(c) 408 Section 19B(2) 51, 412
Section 11B(d) 408 Section 19B(2)(b) 412
Section 11B(e) 408 Section 19B(2)(c) 412
Section 11B(f) 407 Section 20 27
Section 11B(h) 399 Section 20(1) 54
Section 12 367, 409, 410, 411, 412 Section 20(2) 54
Section 12(1) 46, 409 Section 21 25, 71
Section 12(1)(b) 409 Section 21(1)(b) 26
Section12(1)(c) 409 Section 21(1)(c) 26
Section 12(2) 47, 409 Section 21(1)(d) 26, 402
Section 12(3) 47, 409 Section 21(1)(e) 27
Section 12(4) 47, 409 Section 21(2) 27
Section 12(5)(a) 47, 409 Section 22 29, 364
Section 12(5)(b) 47, 409 Section 22(1) 29, 364, 387
Section 12(6)(a) 48 Section 22(2) 29, 364
Section 12(6)(b) 48 Section 22(3) 30, 31, 364, 366, 373

TABLE OF LEGISLATION 519
Section 22(4) 31, 32, 374, 402 Section 28B(3)(a) 71

Section 22(5) 30, 364 Section 28B(3)(b) 71
Section 22(7) 374 Section 28B(4) 75
Section 23(1) 33, 38, 432, 433, 471 Section 28B(4)(b) 74
Section 23(2) 39, 40, 42 Section 28B(4)(c) 74, 380
Section 23(2)(a) 439 Section 28C(1) 351
Section 23(2)(d) 440 Section 28C(2) 351
Section 23(3) 39 Section 28C(3) 351
Section 24 216 Section 28C(7) 349
Section 24(1) 57, 439 Section 28C(8) 350
Section 25 58 Section 28D 348
Section 25(1) 31, 57, 374 Section 28D(1) 71
Section 25(2) 31, 374 Section 28D(2) 71
Section 26 55 Section 28D(3) 72
Section 26(1) 55 Section 28D(3)(a) 72
Section 26(2) 56 Section 28D(3)(b) 72
Section 26(3) 56 Section 28D(3)(c) 72
Section 26(4) 56 Section 28E 73
Section 26(5) 56 Section 28E(1)(a) 72
Section 26(6) 56 Section 28E(1)(b) 72
Section 26(7) 56 Section 28E(1)(c) 72
Section 26(7A) 56 Section 28E(1)(d) 72
Section 26(9) 57 Section 28E(1)(e) 72
Section 26(10) 57 Section 28E(1)(f) 73
Section 26(11) 57 Section 28E(1)(g) 73
Section 26(12) 218, 231, 234 Section 28E(1)(h) 73
Section 26(12)(a) 57, 218 Section 28E(1)(i) 73
Section 26(12)(b) 57, 218 Section 28E(1)(j) 73
Section 27 43, 370 Section 28E(1)(k) 73
Section 27(1)(a) 43 Section 28E(1)(l) 73
Section 27(1)(b) 43 Section 28E(1)(m) 73
Section 27(1)(c) 43 Section 28F 73
Section 27(1)(d) 43 Section 28F(1)(a) 72
Section 27(1)(e) 43 Section 28F(1)(b) 72
Section 27(1)(f) 43 Section 28F(2) 72, 380
Section 27(2) 43 Section 28G(1) 73
Section 27(4) 43 Section 28G(2)(a) 74
Section 27(5) 43 Section 28G(2)(b) 74
Section 27(6) 44 Section 28G(3) 74, 380
Section 28(1) 72 Section 28G(4) 75, 380
Section 28A–N 68 Section 28G(5) 75, 380
Section 28A 69 Section 28G(6) 75
Section 28A(1) 353 Section 28G(7)(a)–(g) 74
Section 28A(4) 350 Section 28H 73
Section 28B(1) 69 Section 28H(3) 75, 379
Section 28B(2) 70 Section 28H(3)(a) 356

Section 28H(4) 379 Section 4(2) 220, 221, 222

Section 28H(4)(b) 379 Section 5 233
Section 28I(1) 351 Section 5(1) 221, 222, 224
Section 28I(2)(a)–(c) 351 Section 5(1)(a)–(f) 223
Section 28I(6) 380 Section 5(1)(b) 225
Section 28J 75, 365 Section 5(1)(c) 225
Section 28J(1) 365 Section 5(1)(d) 225
Section 28J(2) 365 Section 5(1)(e) 225
Section 28J(2)(a) 74 Section 5(1)(f) 225
Section 28J(2)(b) 74 Section 5(2) 223, 224, 225
Section 28J(3) 74, 365 Section 5(2)(a) 223
Section 28J(1)(a) 75 Section 5(2)(b) 223
Section 28J(1)(b) 75 Section 5(3) 223
Section 28K 357 Section 5(4)(a) 224, 225, 234
Section 28K(1) 75 Section 5(4A) 225
Section 28L(1) 350 Section 6 220, 223, 224
Section 28M(1)(a) 351 Section 6(1) 220, 221, 222, 228, 233
Section 28M(1)(b) 351 Section 6(3) 222
Section 29 378 Section 6(4) 222
Section 29(1) 53 Section 6(5)(a) 222
Section 30 52 Section 6(5)(b) 222
Section 39A 68 Section 6(8) 223
Section 43(a) 4 Section 6(9) 223
Section 44 399 Section 7(1)(a) 226, 233, 234
Copyright Amendment Act 56 of 1980 394 Section 7(1)(b) 226
Copyright Amendment Act 125 of 1992 396, 406 Section 7(1)(c) 226
Counterfeit Goods Act 37 of 1997 212 Section 7(1)(d) 226, 227, 233
Section 1 214, 226 Section 7(1)(d)(i) 227
Section 1(1) 213, 218, 219 Section 7(1)(d)(ii) 227
Section 1(1)(x) 215 Section 7(2) 226, 227
Section 1(1)(xvi) 215 Section 7(4) 216, 224, 229
Section 2(1) 215 Section 7(4)(a) 228, 229
Section 2(2) 215, 216, 219, 227, 235, 236 Section 7(4)(c) 228
Section 3(2)(a) 216, 219 Section 8(3) 227
Section 3(2)(b) 217, 219 Section 8(4) 227
Section 3(2)(d) 217 Section 9 216, 233
Section 4(1) 219, 220, 225, 226, 227, Section 9(2) 226, 227
228, 233 Section 9(2)(a) 228
Section 4(1)(a) 223 Section 9(2)(a)(ii) 216
Section 4(1)(c) 223 Section 9(2)(c) 228
Section 4(1)(d) 223 Section 9(2)(d) 228

Section 10 230 Section 4(8A)(a) 231

Section 10(1)(b) 229 Section 88(1)(c) 232
Section 10(1)(c) 216, 229 Section 107(2)(a) 231, 232
Section 10(1)(d) 230 Section 107(2)(a)(i) 231
Section 10(2) 230 Section 113(8) 232
Section 10(2)(a) 230 Section 113A(1)(a) 232, 233
Section 10(2)(b) 230 Section 113A(1)(b) 232, 233
Section 15 230, 232 Section 113A(1)(b)(i) 231
Section 15(1) 230 Section 113A(1)(b)(ii) 231
Section 15(2) 231 Section 113A(1)(b)(iii) 231
Section 15(3) 231 Designs Act 57 of 1967 300, 313
Section 15(4) 231 Designs Act 195 of 1993 xxiv, 209, 300, 313,
Section 15(5) 231 347, 348, 349, 351, 355, 365, 371, 379,
Section 16(1) 233 380, 467
Section 16(2) 234 Section 1(1) 298, 301, 307, 314, 326,
Section 16(3) 234 327, 328
Section 16(4)(b) 234 Section 7(2) 371
Section 16(5)(a) 234 Section 14 311, 318, 319, 320, 329
Section 16(5)(b) 234 Section 14(1) 307, 314
Section 16(5)(c) 234 Section 14(2) 307, 308
Section 17(1) 235 Section 14(4) 311, 312
Section 18(d)(ii) 234 Section 15(1) 317
Section 19(1)(b) 235, 236 Section 16 320
Section 19(2) 235 Section 17 308
Section 19(3)(a) 235 Section 20 315, 328, 375
Section 19(3)(b) 236 Section 20(1) 302, 317, 367
Section 19(4)(a) 236 Section 20(2) 323, 381
Section 22 219, 222 Section 20(3) 323
Section 22(3) 222 Section 21 326, 376
Section 23 226 Section 21(1)(a) 378
Counterfeit Goods Amendment Act 25 Section 21(2)(a) 376
of 2001 212 Section 21(2)(b) 376
Criminal Procedure Act 51 of 1977 Section 21(2)(d) 377
Section 1(1) 219 Section 21(2)(e) 377
Currency and Exchanges Act 9 of 1933 385, 388 Section 21(4)(a) 378
Section 9(1)(c) 387 Section 21(7) 378
Customs and Excise Act 91 of 1964 Section 21(8) 378
Section 1(1) 219 Section 21(11) 321, 371

Section 21(13) 377 Section 53E(2) 329

Section 21(14) 376 Section 53E(3) 329
Section 21(14)(c) 378 Section 53F(1) 355, 380
Section 22(2) 325 Section 53F(2) 380
Section 23 325 Section 53F(3) 380
Section 25 314, 315 Section 53F(5) 350
Section 25(2)(b) 362 Section 53F(5)(a) 379
Section 26 324 Section 53F(5)(b) 379
Section 30(1)(a) 361 Section 53G(2) 380
Section 30(1)(b) 361 Section 53H 365
Section 30(1)(c) 362 Section 53H(1) 365
Section 30(2) 383 Section 53H(2) 365
Section 30(4) 384 Section 53I 357
Section 30(5) 383 Electronic Communications Act 36 of 2005
Section 30(6) 383, 384 Section 55(1) 194
Section 31 318, 329 Electronic Communications and Transactions Act
Section 31(1) 329 25 of 2002 429
Section 31(1)(a) 319 Section 1 418, 430
Section 31(1)(b) 319 Section 59 453
Section 33 319 Section 70 430
Section 35(2) 321, 372 Section 74 430
Section 35(3) 324 Section 86 443, 444
Section 39(3) 362, 372 Section 86(4) 423
Section 53A–L 355 Section 88 445
Section 53A(1) 328, 329 Section 94 453
Section 53B(1) 327, 328 Foodstuffs, Cosmetics and Disinfectants Act 54 of
Section 53B(2) 308, 327 1972 201
Section 53B(3) 328 Income Tax Act 58 of 1962 388
Section 53B(3)(c) 380 Intellectual Property Laws Amendment Act 38 of
Section 53B(5) 328 1997 157, 212, 240, 300
Section 53C(1) 351 Section 60 83
Section 53C(2) 351 Intellectual Property Laws Amendment Act
Section 53C(12) 328 28 of 2013 4, 64, 67, 70, 73, 74, 75, 76,
Section 53C(14) 329 100, 102, 157, 240, 300, 326, 327, 328,
Section 53C(15)–(18) 351 329, 330, 333, 343, 347, 365, 379, 380
Section 53C(18) 328 Section 1(a) 75
Section 53D 328 Section 1(c) 75
Section 53E(1)(a) 329 Section 1(d) 76
Section 53E(1)(b) 329 Section 1(e) 75

Section 1(g) 75 Section 14(2) 204

Section 1(h) 76 Section 15 213, 214, 218, 219, 234
Section 1(j) 75 Section 15(1) 114, 205
Section 3 71, 350, 351, 352, 354, 355, 357 Section 15(3) 205
Section 3(c) 348 Section 15A 206
Section 3(e) 68 Section 15A(2) 206, 473
Section 3(f) 68, 69, 348 Section 15A(3) 206
Section 3(j) 68 Section 15A(4) 206
Section 3(k) 68 Section 16(5)(b) 218
Section 4 69, 348, 354, 356 Section 16(5)(c) 218
Section 7 100 Merchandise Marks Amendment Act 61
Section 8 100, 101 of 2002 206
Section 9 100, 101, 103, 351, 353 National Environmental Management: Biodiversity
Section 10 100, 103 Act 10 of 2004 333, 336, 341
Section 12 351, 355 Chapter 6 337
Section 15 68, 359 Chapter 7 337, 339
Intellectual Property Rights from Publicly Financed Section 1(1) 334, 338
Research and Development Act 51 Section 80(2) 334
of 2008 253, 315, 388, 389 Section 81(1) 337
Section 11(1)(a) 389 Section 84 338
Section 11(1)(d) 389 National Regulator for Compulsory Specifications
Section 12 389 Act 5 of 2008 201
Section 15(2) 389 Patents Act 17 of 1860 239
Section 15(4) 389 Patents Act 37 of 1952 240
Interception and Monitoring Prohibition Act 127 of Patents Act 57 of 1978 xxiv, 239, 240, 336, 365,
1992 443 371, 378, 379, 467, 471, 472
Interpretation Act 33 of 1957 Section 2 253, 255
Section 6(b) 305 Section 8 53
Liquor Products Act 60 of 1989 201 Section 9(b) 256
Medicines and Related Substances Control Act Section 10(2) 371
101 of 1965 28 Section 25 266, 267
Merchandise Marks Act 12 of 1888 212 Section 25(1) 241, 251, 267, 268
Merchandise Marks Law 22 of 1888 212 Section 25(2) 241, 243, 267
Merchandise Marks Ordinance 47 of 1903 212 Section 25(2)(a) 241
Merchandise Marks Act 17 of 1941 212 Section 25(2)(b) 241
Section 14 204 Section 25(2)(d) 242
Section 14(1) 204 Section 25(2)(e) 242
Section 14(1A) 204 Section 25(2)(f) 242
Section 14(1B) 204 Section 25(2)(g) 243
Section 14(1C) 204 Section 25(3) 243
Section 14(1D) 204 Section 25(4)(a) 243, 268
Section 14(1E) 204 Section 25(4)(b) 243, 268

Section 25(5) 245, 267 Section 46(2) 281

Section 25(6) 245, 267 Section 47 281
Section 25(7) 246, 250, 267 Section 48 281
Section 25(8) 246, 250, 268 Section 48(2) 282
Section 25(10) 249, 267 Section 50 260
Section 25(11) 244, 268 Section 50(1)(a) 260
Section 25(12) 244 Section 51 261, 264
Section 26(a) 247 Section 51(1) 261
Section 26(b) 247 Section 51(5) 262
Section 27 266, 267 Section 51(6)(a) 262
Section 30(1) 254, 255 Section 51(10) 264
Section 30(2) 254 Section 53 371, 372
Section 30(3A) 266, 270 Section 53(1) 375
Section 31(1)(b) 255 Section 53(2)(d) 375
Section 31(1)(c)(i) 254, 255 Section 55 376
Section 32(2) 254 Section 55(b) 376
Section 32(3)(b) 255 Section 55(c) 376
Section 32(3)(c) 255 Section 56 282, 375, 376, 378
Section 32(6) 267, 271 Section 56(2)(c) 376
Section 33(3) 262 Section 56(2)(d) 377
Section 36 267, 271 Section 56(2)(e) 377
Section 36(1)(a) 244, 271 Section 56(4)(a) 378
Section 36(1)(b) 243, 271 Section 56(4)(c) 378
Section 36(3)(A) 339 Section 56(13) 377
Section 36(3)(B) 339 Section 57(1) 369
Section 43E 258 Section 60(2) 383
Section 43F(3)(h) 258 Section 60(3) 384
Section 44(2) 259 Section 60(6) 383, 384
Section 44(4) 259 Section 61 265, 266
Section 45 273, 317 Section 61(1) 265, 266, 273, 318
Section 45(2) 381, 382 Section 61(1)(b) 267, 319

Section 61(1)(d) 252, 268 Section 9(1)(c)(i)–(iii) 66

Section 61(1)(e) 266, 268 Section 10(b) 66
Section 61(1)(f) 269 Section 13 67
Section 61(1)(g) 266, 270 Plant Breeders’ Rights Act 15 of 1976 243,
Section 61(1)(h) 271 284, 467
Section 61(1)(i) 271 Section 1 285, 286
Section 65(1) 371 Section 2(2)(c) 287
Section 65(5) 273, 372 Section 2(2)(d) 287
Section 69A 274 Section 7(2) 285
Section 69A(1) 275 Section 8 289
Section 72(3) 362, 372 Section 14 290
Patents Amendment Act 20 of 2005 266, 270, Section 18 289
336, 338, 379 Section 20(1) 290
Patents, Designs, Trade Marks and Copyright Act 9 Section 20(2) 290
of 1916 xxiv, 4, 5 Section 20(3) 290
Performers’ Protection Act 11 of 1967 343, 347, Section 21 290
348, 350, 351, 355, 467 Section 22 290
Section4 65 Section 23(6)(a) 291
Section 5(1)(b) 32 Section 23(6)(c) 291
Section 5(2) 374 Section 23(6)(d) 291
Section 7 65 Section 23(6)(f) 292
Section 8(2)(b) 66 Section 26 294
Section 8(2)(d) 66 Section 27 294
Section 8(2)(e) 66 Section 29 293
Section 8(3)(a) 67 Section 33(2)(b) 293
Section 8A–D 354 Section 35(2) 294
Section 8A(1) 75 Section 42 287, 288, 289, 290, 293, 294
Section 8C(1) 351 Section 47(1) 292
Section 9(1)(b) 66 Plant Improvement Act 53 of 1976 294
Section 9(1)(c) 66

Registration of Copyright in Cinematograph Films Section 10(8) 112, 122, 156

Act 62 of 1977 60, 385 Section 10(9) 112, 113, 122
Section 6(1) 61 Section 10(10) 112, 113, 114, 122
Section 9 63 Section 10(11) 106, 110, 111, 112, 122
Section 10(1) 63 Section 10(12) 115, 124, 125, 126, 127,
Section 10(2) 63 128, 158, 182
Section 11(1) 63 Section 10(13) 106, 112, 119, 122, 364
Section 15 57 Section 10(14)91, 115, 116, 124, 125, 126,
Section 16 64 127, 138, 151, 182
Section 17 64 Section 10(15) 115, 116, 124, 125,
Section 18(1) 63 127, 138
Section 19 63 Section 10(16) 115, 116, 124, 127,
Section 30(1) 63 128, 131
Section 31 63 Section 10(17) 115, 116, 124, 125, 127,
Regulation of Interception of Communications and 128, 138
Provision of Communication-related Section 11 82, 83
Information Act 70 of 2002 430 Section 11(1) 82
Trade Marks Act 62 of 1963 79, 115, 120, 130, Section 11(2) 83
159, 392 Section 14 116, 127, 138
Section 18 105 Section 14(1) 116, 139
Trade Marks Act 194 of 1993 xxiv, 8, 63, 79, 85, Section 15 209
100, 118, 121, 194, 204, 207, 347, 348, Section 16(1) 88
349, 353, 354, 365, 372, 379, 380, 392, Section 16(2) 89
467, 469, 490 Section 16(4) 91
Part XIIA 353 Section 16(5)(a) 218
Section 1(1) 218 Section 24 130, 131, 218
Section 2 93, 97, 98, 100, 101, 363 Section 24(1) 132
Section 2(1) 89, 298, 448 Section 24(3) 131
Section 2(3) 106 Section 26 130, 131
Section 3 106 Section 27 119, 130, 131, 134, 363
Section 9 99, 103, 106, 107, 111, 112, Section 27(1)(a) 122, 134, 135, 373
122, 448 Section 27(1)(b) 122, 134, 135, 373
Section 9(2) 104, 105 Section 27(1)(c) 134, 137
Section 10 99, 103, 106, 121, 122, Section 27(2) 137
132, 133 Section 27(3) 134, 135
Section 10(1) 106, 107, 111, 112, 122 Section 27(5) 134
Section 10(2) 106, 107, 112, 113, 122, 163 Section 30 89
Section 10(2)(b) 107, 108 Section 31(1) 136
Section 10(2)(c) 109 Section 33 209
Section 10(3) 114, 122, 123, 127 Section 34 139, 140, 159, 194, 464
Section 10(4) 114, 122, 123 Section 34(1) 140, 182, 449, 457
Section 10(5) 106, 109, 110, 111, 112, Section 34(1)(a) 139, 140, 143, 144, 146,
122, 132 147, 148, 155, 158, 166, 173, 367,
Section 10(6) 115, 124, 125, 127, 138, 178 446, 450, 463
Section 10(7) 114, 115, 122, 123

Section 34(1)(b) 139, 146, 148, 150, 155, Section 43B(4) 354
158, 166, 367, 446, 450 Section 43B(5) 354
Section 34(1)(c) 140, 143, 151, 152, 153, Section 43B(6)–(8) 101
154, 155, 156, 367, 446, 451, 464, Section 43B(6) 102
468, 470, 471 Section 43B(8) 102
Section 34(2) 159, 455 Section 43B(8)(a) 354
Section 34(2)(a) 140, 159, 160 Section 43B(8)(b) 354
Section 34(2)(b) 160, 162 Section 43C 102
Section 34(2)(c) 162 Section 43D 102
Section 34(2)(d) 141, 163, 202 Section 43D(1) 351
Section 34(2)(e) 163 Section 43D(14)(a) 351
Section 34(2)(f) 163 Section 43D(14)(b) 351
Section 34(2)(g) 139, 164 Section 43E 102, 354
Section 34(3) 120, 164, 165, 216 Section 43F 102
Section 34(4) 165 Section 43F(1) 355, 380
Section 34(5) 373 Section 43F(2) 380
Section 35 124, 128, 130, 139, 140, 152, Section 43F(3) 380
156, 157, 158, 159, 170, 178, 194, 214 Section 43F(4) 379, 380
Section 35(1) 134 Section 43F(5)(a) 379
Section 35(1)(A) 157 Section 43F(5)(b) 379
Section 36 139, 140 Section 43F(6) 380
Section 36(2) 125, 158, 159 Section 43F(8) 102
Section 37 92, 354 Section 43G–K 103
Section 38(2) 373 Section 43H 365
Section 38(3) 120, 372 Section 43H(1) 365
Section 38(4) 373 Section 43H(2) 350, 365
Section 39(1) 362 Section 49 218, 231, 234
Section 39(2) 362 Section 50 218, 231, 234
Section 39(3) 384 Section 51 218, 231, 234
Section 39(6)(b) 373 Section 53 130, 138
Section 40 119, 363, 364 Section 62(1) 92
Section 41(3) 384 Trade Metrology Act 77 of 1973 201
Section 41(4) 384 Trade Practices Act 76 of 1976
Section 41(5) 384 Section 9(d) 205
Section 41(6) 384 Trespass Act 6 of 1959
Section 43 99
Section 43(2) 99 Regulations
Section 43B 101 Consumer Protection Act: Regulations
Section 43B(2) 101 Regulation 8 202
Section 43B(3) 101, 354 Regulation 8(1) 202

Regulation 8(2) 202 Regulation 89 272

Copyright Act: Regulations 1978 4, 5 Regulation 90(2) 272
Chapter 1 52 Regulation 90(3) 272
Regulation 2 410, 411 Regulation 91 272
Regulation 2(b) 410 Regulation 92 272
Regulation 3 52, 409 Regulation 94 272
Regulation 7 52, 409 Schedule 1 254
Regulation 8 52, 409 Schedule 4 240
Regulation 9 409 Schedule 5 259
Regulation 9A 52 Plant Breeders’ Rights Act: Regulations 1999 284
Regulation 10 379 Regulation 5 289
Regulation 14 379 Regulation 8 289, 294
Currency and Exchanges Act: Regulations Regulation 10 290
Regulation 3(1)(c) 388 Regulation 11(a) 294
Regulation 10(1)(c) 385, 386, 387, 388 Regulation 14 293
Regulation 10(4) 387, 388 Table 1 294
Designs Act: Regulations 1999 300, 303, 304, Registration of Copyright in Cinematograph Films
317, 324 Act: Regulations 1980 337
Regulation 15(4) 322 Regulation 9(1)(a) 61
Regulation 39(1) 371 Regulation 9(1)(b) 61
Electronic Communications and Transactions Regulation 9(1)(c) 61
Act 25 of 2002: Alternative Dispute Regulation 9(1)(d) 61
Regulations 2006 Regulation 9(1)(e) 61
Regulation 3(1) 453, 454 Regulation 9(1)(f) 61
Regulation 4 454 Regulation 9(2) 61
Regulation 4(1)(a)(iv) 455 Regulation 9(2)(a) 61
Intellectual Property from Publicly Financed Regulation 9(2)(b) 61
Research and Development Act: Regulations Regulation 9(2)(c) 62
Regulation 2 389 Regulation 9(2)(d) 62
Regulation 11 389 Regulation 9(2)(e) 62
Regulation 12 389 Regulation 9(2)(f) 62
Regulation 16 389 Regulation 9(2)(g) 62
Intellectual Property Laws Amendment Act 28 Regulation 9(2)(h) 62
of 2013: Regulations 67, 68, 359 Regulation 9(2)(i) 62
National Environmental Management: Biodiversity Regulation 9(2)(j) 62
Act: Regulations 337 Regulation 9(3) 62
Patents Act: Regulations 1978 240 Regulation 9(4) 62
Regulation 22(1)(b) 254 Regulation 13 62
Regulation 22(1)(c) 254 Regulation 13(1) 62
Regulation 22(1)(d) 254 Regulation 13(2) 62
Regulation 22(1)(e) 254, 255 Regulation 13(3) 62
Regulation 22(1)(g) 255 Regulation 13(4) 63
Regulation 46 258 Trade Marks Act: Regulations 1995 79, 86,
Regulation 62 371 113, 114

Regulation 1 88 Trade Mark Act of 1994 153, 392

Regulation 4 82 Section 10(1) 450
Regulation 19 128
Regulation 26 92 United States of America
Regulation 27 92 Computer Software Copyright Act 94 Stat
Regulation 39 372 3015 of 1980 394
Regulation 40 372 Constitution of the United States of America 1787
Regulation 52(1) 129 475, 483
Regulation 56(3) 99 Article I Section 8 Clause 8 483
Schedule 3 82 Fifth Amendment 483
Section 1 483
Regulatory texts Fourteenth Amendment 483
Advertising Standards Authority of South Africa: Section 1 484
Code of Advertising Practice and Procedural Copyright Act 90 Stat 2541 of 1976
Guide (ASA Code)156, 194, 199, 207, 208 Section 101 397
Clause 4.2.2 Section II 199 Digital Millennium Copyright Act 112 Stat
Clause 4.2.3 Section II 199 2860 of 1998
Advertising Standards Authority of South Africa: Chapter 12 443
Sponsorship Code 206 Section 1201(a)(1)(B) 443, 444
Clause 3.1 205 Section 1201(f)(1) 415
Clause 3.7 207
Clause 7 Section II 194 European Union Directives
Clause 13.6 207 Directive on Certain Legal Aspects of Electronic
Commerce in the Internal Market
Rules 2000/31/EC
Uniform Rules of Court 324, 348 Article 13 430
Article 14 460
United Kingdom Article 14(1) 464
Copyright Act of 1911 5 Directive on the Harmonisation of Certain Aspects
Copyright (Computer Software) Amendment of Copyright and Related Rights in the
Act of 1985 394 Information Society 2001/29/EC 392
Copyright, Designs and Patents Act of 1988 Chapter 3 443
Section 6 422 Article 3(1) 421, 422
Section 28A 429 Article 5 429
Section 50B 415 Article 5(1) 422
Section 50B(1) 415 Directive on the Legal Protection of Computer
Section 50B(2) 415 Programs 91/250/EEC 394
Section 50B(3)(b) 415 Directive on the Legal Protection of Computer
Section 50B(4) 444 Programs 2009/24/EC
Section 50BA 413 Article 1(1) 396
Section 50BA(2) 444 Directive on the Legal Protection of Databases
Section 97A(1) 436 96/9/EC
Section 296–296ZF 443 Article 3 426
Digital Economy Act of 2010 Article 7 426
Section 3 430 Directive to Approximate the Laws of the
Section 3–16 435 Member States relating to Trade Marks
Registered Designs Act of 1949 303 89/104/EEC; 2008/95/EC 392
Article 5 459

Article 5(1) 463 Budapest Treaty on the International Recognition

Article 5(1)(a) 460, 462 of the Deposit of Microorganisms for the
Article 5(2) 460, 461, 462, 463 Purposes of Patent Procedure 271
Convention on the Protection and Promotion of
International agreements, conventions and the Diversity of Cultural Expressions, 2005
treaties Article 43 342
Agreement on Trade-Related Aspects of International Classification of Goods and
Intellectual Property Rights (TRIPS Services for the Purposes of the
Agreement) xxiv, 6, 7, 76, 240, 300, 332, Registration of Marks (Nice
396, 447 Classification), 1957 82, 83
Article 1.1 212 International Classification of the Figurative
Article 1.3 65 Elements of Marks (Vienna
Article 10(1) 394 Classification) 85, 86
Article 13 411 International Convention for the Protection of
Article 14 65 Performers, Producers of Phonograms and
Article 27(3)(b) 284 Broadcasting Organizations, 1961 (Rome
Article 51 213 Convention) 65, 76
Convention on Biological Diversity (CBD) Hague Agreement Concerning the International
Article 15 335 Deposit of Industrial Designs 300
Article 19 335 Locarno Agreement Establishing an International
Article 19(1) 335 Classification for Industrial Designs 300,
Article 19(2) 335 302, 303, 304
General Agreement on Tariffs and Trade Model Provisions for National Laws on the
(GATT) 212, 332 Protection of Expressions of Folklore
International Covenant on Civil and Political Against Illicit Exploitation and other Forms
Rights (ICCPR) 485 of Prejudicial Action, 1982 (Model
International Covenant on Economic, Social and Provisions) 349
Cultural Rights (ICESCR) 485, 489 Section 2 342
Article 15(1)(c) 485, 488 Model Provisions on the Protection of Computer
International Convention for the Protection of Software 394, 395
New Varieties of Plants (UPOV Convention), Nice Agreement Concerning the International
1961 284, 285, 286, 287, 289 Classification of Goods and Services
International Treaty on Plant Genetic Resources for the Purposes of the Registration
for Food and Agriculture 334 of Marks, 1957 82
Nagoya Protocol on Access to Genetic Resources Paris Convention for the Protection of Industrial
and the Fair and Equitable Sharing of Property, 1883 (Paris Convention) xxiv, 7,
Benefits Arising from their Utilization 336 88, 89, 113, 115, 125, 156, 158, 240,
Universal Declaration of Human Rights 255, 257, 300, 308, 359
(UDHR) 485, 491 Article 6bis 124, 447
Article 27(2) 485 Patent Cooperation Treaty, 1999 (PCT) 240,
253, 257
Treaties administered by the World Intellectual Protocol Relating to the Madrid Agreement
Property Organization (WIPO) Concerning the International Registration of
Berne Convention for the Protection of Literary Marks (Madrid Protocol) 392
and Artistic Works, 1886 xxiv, 6, 7, 15, 16, WIPO Copyright Treaty, 1996 411
19, 59, 359, 394, 443 Article 2 396
Article 2 396 Article 4 394, 396
Article 9 411 Article 8 408
Article 12 442, 443

List of abbreviations
ADR: alternative dispute resolution 357 IP: intellectual property xxiii

ASA: Advertising Standards Authority of South IP: Internet Protocol 416
Africa 194 IPLAA: Intellectual Property Laws Amendment Act
CBD: Convention on Biological Diversity 335 28 of 2013 100
ccTLD: country code top-level domain 447 IPR-PFRD Act: Intellectual Property Rights from
CESCR: Committee on Economic, Social, and Publicly Financed Research and
Cultural Rights of the United Nations 488 Development Act 51 of 2008 388
CIPC: Companies and Intellectual Property ISA: International Searching Authority 257
Commission 86 ISMAH: Indian System of Medicine and
CNAs: Competent National Authorities 336 Homeopathy 352
CSIR: Council for Scientific and Industrial ISPs: Internet service providers 429
Research of South Africa 339 MCC: Medicines Control Council 28
DALRO: Dramatic, Artistic and Literary Rights NEMBA: National Environmental Management:
Organisation 356 Biodiversity Act 10 of 2004 333
DESAC: Department of Arts and Culture 347 NFPs: National Focal Points 336
DNS: Domain Name System 447 NIPMO: National Intellectual Property
DOH: Department of Health 347 Management Office 389
DRM: digital rights management 441 NISCOM: National Institute of Science
DST: Department of Science and Technology 347 Communication 352
DTI: Department of Trade and Industry 347 NRS: National Recordal System 352
ECJ: European Court of Justice 96 PCT: Patent Cooperation Treaty 240
ECOSOC: Economic and Social Council of the RDNH: reverse domain name hijacking 455
United Nations 488 SABC: South African Broadcasting Corporation 67
ECTA: Electronic Communications and SAMPRA: South African Music Performance Rights
Transactions Act 25 of 2002 423 Association 53
EIP law: intellectual property law in the digital SAMRO: Southern African Music Rights
environment 390 Organisation 356
EPO: European Patent Office 352 SARS: South African Revenue Service 51
FIFA: Fédération Internationale de Football TCE: traditional cultural expression 332
Association 218 TCP/IP: Transmission Control/Internet
GATT: General Agreement on Tariffs and Trade 212 Protocol 416
GI: geographical indication 101 TKDL: Traditional Knowledge Digital Library 352
gTLD: generic top-level domain 447 TK: traditional knowledge 333
HTTP: Hypertext Transfer Protocol 417 TM Directive: Trade Marks Directive 392
ICANN: Internet Corporation for Assigned Names TMA 1993: Trade Marks Act 194 of 1993 392
and Numbers 417 TPP Act: Tobacco Plain Packaging Act 148
ICCPR: International Covenant on Civil and of 2011 480
Political Rights 485 TRIPS Agreement: Agreement on Trade-Related
ICESCR: International Covenant on Economic, Aspects of Intellectual Property Rights xxiv
Social and Cultural Rights 485 UDHR: Universal Declaration of Human
IGC: Intergovernmental Committee on Intellectual Rights 485
Property and Genetic Resources, Traditional UDRP: Uniform Dispute Resolution Policy 453
Knowledge and Folklore 346 UK TMA: United Kingdom Trade Marks Act
IK: indigenous knowledge 343 of 1994 392
IKS: Indigenous Knowledge Systems 347

UNESCO: United Nations Educational, Scientific VPN: virtual private network 435
and Cultural Organisation 342 WCT: WIPO Copyright Treaty 1996 394
UPOV: International Union for the Protection of WIPO: World Intellectual Property
New Varieties of Plants 284 Organization xxiii
URLs: Uniform Resource Locators 417 WTO: World Trade Organization 332
USPTO: United States Patent and Trade Mark ZADNA: .za Domain Name Authority 453
Office 352

Index
A application in fraud of rights 267, 319

absolute nature of grounds for revocation of Aquilian action 166, 186
designs 318 arbitrariness test 474
patents 265–266 arbitrary deprivation 472, 483
abuse of patent and design rights 376–378 articles in the nature of spare parts 312
acquiescence 131, 140, 164, 177, 278–279, artistic works
324 copyright, duration of 21–22
acquisition 118, 380, 440, 454, 472, 475, copyright, effect or content of 23
479–482 not patentable 242
act of infringement 38, 240, 273–275, 321–322 protectable subject matter 10–11
adaptation 21, 23, 24–25, 33, 37–38, 48–50, reverse engineering 49–51
59, 73, 190, 251, 344, 358, 365, 378, specific exceptions 49
390, 393, 407–408, 410, 413–415, 438, assignee 29, 117–118, 138, 279, 361–363, 365,
442, 471 373–374, 382, 386, 480
ADR and trade marks in the digital environment assignment and licensing of
452–454 patents 361–362, 366, 375
ADR regulations 453–454 registered designs 361–362, 366–375
see also UDRP assignment of copyright 29–30
Advertising Standards Authority of South Africa assignments and licences, traditional works
(ASA) 156, 194, 205 74–75, 365, 379–381
aesthetic design 297, 299, 300–301, 305–309, assignor 29, 117, 361–364
312–313, 314, 316, 318, 319, 320 association 49, 53, 89–90, 99–100,
affidavit evidence 57 109,137,152–156, 161,182, 196, 203,
agent 61–62, 88–89, 123, 197, 215–216, 225, 205–207, 362, 462
279, 285, 288, 366, 377, 381–382 Australian law 475, 479
amanuensis 20–21 author a ‘qualified person’ as requirement for
ambiguity 269 subsistence of copyright 18–19
ambush marketing 194, 205–207, 473 authorship
ambush marketing and protected events 205–207 amaneurensis, vs 20–21
amendment 4, 7, 28, 62, 64, 67–70, 261–265, computer programs, protection as sui generis
324–325, 394–396, 404, 406, 411, 471, work 402–403
473, 483–485 copyright 19–21
anonymous 22, 56 ownership of traditional works, and 71
anticipation 247–248 author’s moral rights 53–54
Anton Piller Order 165
appeal to the eye 300, 306, 312, 326 B
applicant 74, 84–91, 96–99, 102, 105, 110, back-up copies 412–413
114–115, 117, 122–123, 125–127, balancing of rights 479
129–131, 134–136, 138–139, 146, basic law 475, 477
150–151, 153, 157, 165, 168, 179, 182, benefit sharing agreements 328, 330, 338–339,
189–190, 197–200, 221, 228–231, 240, 380
252–255, 257–259, 261–264, 266–268, Berne Convention xxiv, 6–7, 15–16, 19, 59, 359,
270–271 394, 396, 411, 443
applicant not entitled 267, 319 Bill of Rights 189, 470, 474–475, 479, 485, 491
application date 6, 89

biodiversity and traditional knowledge wrt patents claim 255–256, 282, 289, 293, 300–304,
case studies 339–341 307–308, 310, 315–320, 322, 324–325,
Convention on Biological Diversity 335–336 338–339, 344–345, 349–350
definitions 334–335 clarity 83, 93–94, 96, 179, 187, 226, 269, 332,
hoodia 339–340 342, 478
Nagoya Protocol 336 class 4, 8–9, 12, 15, 304, 322
NEMBA 336–338 class of goods 88, 146, 170
Patents Amendment Act 20 of 2005 338–339 classes of works in which copyright can subsist
Pelargonium sidoides and P. reniforme 341 8–9
rooibos/honeybush 340–341 classification
see also traditional knowledge of designs 304, 322
biopiracy 335, 340 of goods and services 82–85
bioprospecting 334 importance of 15
BitTorrents 434–435 clearly distinguishable 287, 289, 294
blocking access to websites 436–437 clerical error 260, 320, 324–325
boni mores 187–191, 193–194, 199, co-authorship 21, 30
207–208, 210 Code of Advertising Practice (ASA Code) 156, 194
border control and counterfeit goods 230–233 coexistence approach 486
boycotting of a business 199–200 collecting society 32, 355, 356, 357, 379
brands 80–81, 107, 182, 205, 207, 462 collective memory 70
breeder xxiii, 3, 243, 284–294, 466–467 collective trade marks 99–100
bred 285 colour 91, 93, 96–97, 109–110, 112., 122, 163,
broadcasts 164, 172, 175, 213, 217, 285, 287, 298,
copyright, duration of 22 306, 338, 448
copyright, effect or content of 24 commercial considerations for IP transactions
protectable subject matter, as 13 assignment 361–365
burden of proof 45, 54–55, 60, 124 compulsory licences 376–381
business methods 185, 242 copyright, assignment 364–365
business methods, not patentable 242 doctrine of exhaustion of rights 381–383
exchange control requirements 385–388
C exhaustion of rights 381–383
caching 428–430 expressly prohibited provisions in patent licence
capable of distinguishing 80, 99, 101, 103–107, agreements 375
111, 121, 133, 354 formalities and recordal of licences 371–374
capable of graphic representation 93, 96–97 fundamental terms of a licence 366–371
causal connection 30, 36–37 hypothecation and attachment 383–385
cease and desist letter 38 IP from publicly financed research &
certification trade marks 99 development 388–389
cinematographic films licences of right 375
copyright, duration of 22 licensing 366–371
copyright, effect or content of 24 other licence terms 366–371
copyright, grant, duration and effect of 63 patents and designs, assignment of 361–362
copyright, registration of 60–63 sublicensing 370–371
objection to registration 63 trade marks, assignment 362–364
protectable subject matter 11–12 traditional properties, assignment of rights 365,
citizen 5, 19, 61, 185, 285, 346, 385, 476, 483 licencing 379–381
Commissioner of Patents 53, 264, 272
commissions 26

INDEX 535
common law right 200, 209–210, 214, 446, 448, computers and IP themes
200, 209–210, 214, 446, 448 BitTorrents 434–435
common source 35 caching 428–430
commonplace 8, 18, 307, 311, 319, 327 contract 427–428
comparative advertising 143, 155, 156, 193–194, contributory infringement 432–434
208, 457 copyright in digital works 437–441
copending patent applications 246, design copyright in the digital environment 417–436
applications 308 database protection 426–427
compensation 58, 165, 210, 235, 282, 292, 326, digital rights management 441–445
336, 344, 472–473, 475, 477–478, 480, file sharing 430–437
483–484 framing 424
competition principle 191, 193–195, 198, 209 individual infringers, pursuing 435–436
complainant 226–230 internet 416–417
complainants, substantive requirements for joint wrongdoing 432–434
216–219 linking 418–423
complete patent application 253, 255, 258–259, new approach to infringement 435
263, 335, 338–339 parallel importation 439–441
complete specification 239, 251–252, 255, 262, passing off 427
266–271 peer-to-peer file sharing 431–432
composition of goods 196 spidering 424–426
compulsory acquisition 482 unlawful competition 427
compulsory licences 52, 282, 293–294, 321, websites, blocking access to 436–437
326, 369, 371, 376–379, 487 see also trade marks in the digital
compulsory royalty 32 environment
computer assisted 15, 449 concepts 14, 18, 44, 76, 189, 191, 214,
computer-generated 15, 20, 405, 407 241–242, 297, 299, 301, 348, 353, 396
computer programs confidential information 194–195, 197, 200,
effect or content of copyright 25 344, 352, 467, 488
patentability, and 242 configuration 88, 93, 109, 110, 111, 112, 122,
protectable subject matter 14–15 163, 298, 301, 304–306
protection as literary works 393–395 conflict approach 486
reverse engineering 413–414 consensus 332, 364, 392
specific exceptions 51 constitutional challenge 469, 471–472
computer programs, protection as sui generis work confusingly similar 85–86, 96, 115–116,
adaptation 407–408 125–127, 140, 146–147, 149, 159, 164,
authorship 402–403 177–180, 182–183, 205
back-up copies 412–413 Constitutional Court 471, 473, 477–479,
communication to the public 408 482–483, 486–487, 490–491
decompilation 414–415 constitutional interpretation 471
definition 396–397 constitutional IP rights, foreign countries
exclusive rights 403–408 Australian law 479–483
exemptions from infringement 409–415 German law 476–479
fair dealing 409–412 Irish law 476
preparatory materials 400–402 United States of America 483–485
reproduction 403–407 constitutional IP rights, South Africa
requirements for subsistence 397–400 deprivation and expropriation of IP rights
reverse engineering 413–414 472–475
scope of protection 403–415 First Certification case 467–468

introduction 466–467 legislative framework and international

IP rights under section 25 467–475 arrangements 4–7
Laugh It Off case 468–472 licences 30–32
sui generis forms of IP in private law 467 needletime licences 32
constitutional law 466, 475, 477, 479, 484–485 non-exclusive licences 31–32
constitutional limitation 472 ownership 25–29
constitutional property dispute 473–474, 491 performers’ protection 64–67
constitutional property law 466, 479 registered designs, and 299
constitutional property protection 466, 491 requirements for subsistence 15–19
constitutional protection 466, 469–470, sole licences 32
473–474, 477, 479, 485–486, 490 see also protectable subject matter;
constructive expropriation 483 traditional knowledge
Consumer Protection Act 201–203, 205, 207, copyright in digital works
369 disposition 438–439
contra bonos mores 115, 123, 125–126, distribution 437–438
192–193, 197 parallel importation 439–441
contract of service 25–27 copyright infringement
contributory infringement 279–280, 432–434 checklist in considering viability of a claim
control 12, 14, 20, 27 58–60
convention applications 88, 255, 307–308, 318, criminal infringement 43–45
320 dealing in infringing articles for purpose of trade
Convention on Biological Diversity 335–336 38–39
convention priority 88–89, 255, 316 direct 33–38
copy traps 36–37 grey goods 39–43
copying 3, 18, 28, 30, 33–34, 36–37, 44–46, indirect 38–43
49–50 onus of proof in proceedings 54–57
copyright parallel importation 39–43
assignment of 29–30, 364–365 performers’ right 64–65
authorship 19–21 plagiarism, vs 44–45
author’s moral rights 53–54 public performances 39
cinematographic films, registration 60–63 remedies 57–58
classification, importance 15 see also statutory defences to copyright
compulsory licensing 378–379 infringement
computer programs 393–415 copyright ownership
content, with reference to type of work 23–25 employer/employee 26–27
description 3 exceptions 25–29
digital environment, in the 417–436 specific works created for payment 26
duration, with reference to type of work 21–23 state and international organisations 27–29
effect, with reference to type of work 23–25 vesting of 27
exemptions 46–51 works intended for publication 26
see also computer programs as sui generis copyright, requirements for subsistence
works author a ‘qualified person’ 18–19
exclusive licences 31 material form 18–19
formalities and recordal of licences 373–374 no formalities prescribed 15–16
formalities for valid assignment 29–30 originality 16–18
hypothecation and attachment 385 work first published in a Berne Convention
IPLAA 354 country 18–19

INDEX 537
Copyright Tribunal 32, 52–53, 75, 378–379 definitive statement 309, 315–316, 321–322
core minimum approach 487 delict xxiii, 165–166, 168, 186–187, 191, 197,
correction 21, 260, 262, 324 199, 201, 206–208, 228, 279–280, 292,
costs 130, 216, 228, 229, 280, 324, 358, 372, 425, 432, 439, 449, 452
373, 377, 389, 432, 435, 440, 452 delivery up 57–58, 165, 177, 230, 280, 292,
counterfeit goods 324, 439,
border control 230–233 denomination 289, 294
Counterfeit Goods Act 37 of 1997 212–215 dependent patent licence 376
definitions 213–215 deposit of microorganism 271
detention of goods by customs authorities deprivation xxiv, 466, 472–475, 482–483, 489
231–233 derivative indigenous design 326–330, 355
evidence and presumptions 233–235 derivative work 16, 18, 35, 398, 401
liability for loss or damage 235 description of copyright 3
offence of dealing in 215 designs
penalties 235–236 assignment 361–362
post-detention procedure and seizure 233 formalities and recordal of licences 371–372
see also search and seizure operations hypothecation and attachment 383–384
Counterfeit Goods Act 37 of 1997 212–215 designs, registered
counterfeiting 212–214, 463 absolute nature of grounds for revocation 318
criminal infringement of copyright 43–45 additional requirements for registrability
Criminal Procedure Act 51 of 1977 219 311–314
cultural expressions 326–328, 330–334, 336, amendments 324–325
338, 340, 342, 344, 346, 348, 349, applicant 314–315
350–352, 354–356, 358 articles 301–304
custom 107, 109, 133, 145, 166, 185–186, articles in the nature of spare parts 312
189–191, 193, 195, 203, 219, 230–233, assignment 361–362
272, 344–346, 357–358, 454, 457, basic requirements for obtaining traditional
462, 466 designs 326–328
cybersquatting 448–452 basic requirements for registration 300–314
class 304, 322
D configuration 304–306
damages 31, 57–58, 66, 120–121, 131, copyright, and 299
164–165, 176–177, 209–210, 216, 225, corrections 324–325
228, 229, 280–281, 292, 293, 324, 370, defences to infringement 323–324
373–374, 429 defined 300–301
database protection 426–427 definitive statement 315–316, 321–323
databases 9, 350–351, 358, 423, 426 design not registrable under section 14 319
date of grant 259, 290, 317 false statement or the presentation 320
dealing in counterfeit goods 212–215, 219–221, forms of traditional designs 326–327
223, 225, 228, 234–235 functional features 313
dealing in infringing articles for purpose of trade grant, duration and effect 317–318
38–39 infringement 321–324
declaration xxiii, 6, 61–62, 131, 221, 254, 266, judged solely by the eye 306
270, 315, 319–320, 339, 341, 485, 491 legislative framework and international
decompilation 414–415 arrangements 300
defences 45, 52, 66, 159, 177, 277–279, 291, licencing of 366–375
323–324 locus standi in infringement proceedings 321

methods or principles of construction 314 distinctiveness 90, 100, 104–105, 120, 131,
multiplied by an industrial process 311–312 133, 153–154, 168, 173–174, 176, 285,
nature of 296–299 287, 345, 398, 462
necessitated by the function 307 distinguished features 287
not commonplace 311 doctrine of exhaustion of rights 381–383
novelty 307–310 domain name mimicry 454–455
originality 310–311 domain names 446–456
ornamentation 304–306 dramatic and dramatico-musical works 379
patents, and 297–298 dramatic works not patentable 242
pattern 304–306 duration of copyright, with reference to type of
procedure for obtaining 314–318 work 21–23
procedure for revocation 320
procedure for infringement claim 324 E
protectable features 301–307 economic interest 46, 479
release date 307–308, 315, 318 economic right 480, 486, 488–489, 491
remedies for infringement 324 education 74, 82, 102, 151, 329, 342, 352, 452,
requirements for registrability 307–311 467, 473, 478, 487, 490
restoration 325–326 eigentum 476
set of articles 303 EIP law
revocation 318–321 computer programs, protection as literary works
shape 304–306 393–395
spare parts 312 introduction 391–393
trade marks, and 298–299 see also computer programs, protection as
traditional designs 326–330 sui generis work; computers and IP
traditional designs, infringement 329–330 themes; international human rights law
traditional designs, requirements for and IP; trade marks in the digital
registrability 327–328 environment
traditional designs, revocation 329 election 278–279, 324, 372
unity of design 311 emergency or necessity as defence 208
diffusion service 19, 23–25, 43, 49, 65, 73, 75 employer/employee and copyright 26–27
digital rights management 441–445 evaluation 154, 257, 290, 323, 403
digital works exclusive control 487
copyright in 437–441 exclusive right 23–25, 29, 31, 33, 44, 48, 72, 80,
parallel importation 439–441 84, 90, 105–106, 108, 183, 214, 234,332,
passing off of 427 364, 374, 399, 403, 332, 364, 374, 399,
unlawful competition 427 403, 407–408, 428, 483
dilution 121, 128, 140, 151–153, 155–156, 451, expropriation 466, 472–475, 477, 482, 489
457, 461–462, 468–469 error in translation 260, 325
disclosure 245–248, 262–263 essential integers 248, 277
discovered and developed 285–286 essentially biological process 243, 268, 284
discoveries 241 estoppel 164, 279
discovery phase notification form 338 evidence and presumptions 233–235
disparagement 469 examination 9, 49,89, 106, 121, 257–258, 261,
disparaging 198 265, 288, 299, 317–318
disposing 215, 259, 273, 274, 302, 317, exceptional documentary character 47, 67
321–322, 326, 328, 329, 330, 367, 375 exchange control requirements for IP transactions
dispossessed person 224, 226 385–388

INDEX 539
licences granted to foreigners under SA-owned functional features 110, 163, 301, 305, 313
IP 388 functional necessity 174
regulation 10(1)(c) 385–386 fundamental purpose 477
regulation 10(4) 387 fundamental rights 470, 487–488
exclusive licences 31–32, 57, 366, 368,
373–374, 389 G
exclusive rights 23, 44, 84, 90, 105–106, 108, games, playing, not patentable 242
183, 332, 403 generic 28, 102–103, 108–109, 133–134, 152,
exhaustion of rights doctrine 140, 278–279,323, 178, 275, 349, 446–450, 453, 458, 462,
381–383 467
explanatory statements 315, 322 genetic resource 334
exporter 215, 216, 225 geographical origin 99, 101, 107–108, 125, 160,
exposes for sale or hire 39, 43 195–196, 204
exposing for hire 24–25, 73, 399 German Basic Law 475
expressions of folklore, definitions 64, 75–76, German Civil Code 476
342–343 German law 473, 476–477
German scaling approach 490
F get-up 41–43, 146, 166–168, 172–175, 183,
fair basis 264, 269–270, 325 196, 198
fair dealing 46–47 Gillette defence 278
computer programs 409–412 goods and services, classification 82–85
false representation 161, 177, 194, 198 goodwill 80, 117, 128, 131, 151, 156, 160–161,
false statement 266, 270, 319–320, 339 166–171, 174–176, 187, 189, 191–194,
false trade descriptions 203–204 196–198, 208, 298, 362, 371, 446, 449,
famous marks 125, 156, 178 451–452
fansites 455 grace period 281, 290, 325
fifty years xxv, 21–23, 56, 65, 72 grant 63
file sharing 430–437 grey goods 39–43, 140, 177, 201–203, 439–440
filing date 88, 89, 255, 259, 289, 308 grey goods and copyright infringement 39–43
First Certification case 467–468 gripe sites 455
first communicated 72 guilty-knowledge 38
first publication 6, 19, 59, 62, 418
first owner 20, 25 H
fixation 11–12, 33, 65–67, 75–76, 399, Hague Agreement 300
401–402, 404–405,407–408 harvested material 286, 291–292
foreign law 369, 475 honest concurrent use 138–139, 116, 127
formal examination 299 honeybush/rooibos 340–341
formalities 15, 27,29, 30–31, 79, 258, 361, 364, hoodia 339–340
371, 373, 380 human flourishing 490
framing 424 human interest 479
fraud of rights of applicant 266–267, 318–319 human rights 485–491
freedom of expression 422, 424, 455, 457, 464, human rights attributes 486–487, 491
467–471, 476, 485–487, 489–491 human rights-based compulsory license 487
freelance writers 26 human rights primacy 486–487
functional design 297, 300–302, 306, 307, 311, human rights protection 487–488, 490418
312–313, 314–315, 316, 318, 319–320, hyperlink 418–423, 427
321, 326, 327, 328 see websites

hypothecation and attachment 383–385 interdict 12, 37, 57,–58, 66, 131, 164–165, 168,
hypothesis 40–42, 480 174, 177, 189, 192, 198, 200, 210,
280–281, 292, 324, 422, 436,
I interested person 131–132
ICANN 417, 447–448, 453 intermediary 397, 428–429, 436, 464
idea 17–19, 44, 105, 178–180, 183, 185, 202, international arrangements 4, 140, 284, 300,
208, 241, 297, 299, 314, 388, 396, 404, 359
413–414, 428, 434, 469 International Covenant on Economic, Social and
illustration 30, 47, 94, 154, 400, 409, 437 Cultural Rights (ICESCR) 485, 488
immoral behavior, and patentability 243 international convention xxiv, 65, 447, 486, 491
importer 12, 40–41, 43, 202, 215–216, 228, international human rights law and IP 485–490
233 international law 6, 392, 485
incidental uses 74, 102, 330 international organisations 27, 113
independent contractor 26–27, 403 international patent application 257
independent skill and effort 16, 59 international phase 259, 261
indigenous biological resource 255, 334, 335, international preliminary examination 257
336, 337 international preliminary report on patentability
indigenous community, defined 348 (IPRP)
indigenous cultural expressions or knowledge, international search report 257
defined 348–349 International Searching Authority (ISA) 257
indigenous design 308, 326–330, 349, 355, 379 international treaty 257, 332, 334, 394
indigenous species 334 internet 416–417
indigenous works 68, 72, 349–350, 354 intrusion 205–207
indirect copyright infringement 38–43, 439–440 inutility 251–252, 268
individual rights 473, 478 invalidity 221, 261, 264, 272, 278–279, 291,
industrial process 50–51, 190, 274, 299, 312, 323
311–312, 319 inventions
inference 37, 126, 168, 270, 405, 434 contrary to natural laws, and patentability 244
infringement of copyright see copyright defined 241–244
infringement inventions which are contrary to law, and
infringement of intellectual property rights 484 patentability 244
infringing articles for purpose of trade 38–39 inventive step 241, 249–250, 267, 282
inherent registrability 112 inventiveness 248–251, 261
in lieu of damages 165, 280–281, 324 inventor 133, 241, 249, 252–254, 260, 262,
inspectors 215, 218, 219–220, 222, 224–225., 267, 269–270. 276, 296, 335, 480, 483,
226 487–488,
intangible property right 467, 475 IP from publicly financed research & development
integers 247–248, 275–277 388–389
integrated circuit topography 301, 308, 376, 378 IPLAA
integrity rights 54 administrative structures 350–352
Intellectual Property Laws Amendment Act, 2013 collecting societies, role of 355–357
67–76 community protocols 349–350
see also IPLAA copyright 354
intellectual property protection 241, 332, 379, designs 326–330, 355
486, 488 dispute resolution 357
intellectual property right 3, 7, 15, 201, 209 indigenous community, defined 348
indigenous cultural expressions or knowledge,
defined 348–349

INDEX 541
National Council for IK 350–351 licences, and copyright 30–32

National Database for IK 351–352 licences of right 375
National Trust for IK 351 licensing
performers’ protection 354–355 in commercial transactions 366–371
protection of traditional properties in host acts of registered trade marks, 120–121
353–357 and the unassignability of performer’s rights 67
saving of vested rights 355 likely consumer 306–307, 322
trade marks 100–103, 353–354 limitation of rights 106, 185
Irish constitutional property clause 476 linking 418–423
Irish law 476 literal infringement 275–277
literary nature 72, 406
J literary works
joint applicants 314 duration of copyright 21–22
joint authorship 19–20, 22, 56, 75–76 effect or content of copyright 23
joint wrongdoing 432–434 not patentable 242
judgment 8, 17–18, 306, 426 protectable subject matter 8–9
judicial proceedings 47, 409 Locarno Agreement 300, 304
jurisdiction 52, 88, 97, 201, 203, 220, 223–224, locus standi 41, 61, 131,273, 321,
234, 240,300, 304–305, 308, 317, 320, logo 11, 85–86, 88, 90, 94–95, 99, 113, 142,
350, 384–385, 392, 429, 435–436, 447, 153, 174, 179, 180, 190, 205, 298,
452–453, 475, 483 302–303, 414, 418, 422, 434, 437
juristic persons 19, 356, 474, 488
just compensation 480, 483–484 M
just remuneration approach 487 marketing approval 275
just terms 479 marking 294, 441
mask work 301, 308, 376, 378
K material form as requirement for subsistence of
keyword advertising 458–462 copyright 18–19
material interest xxiii, 485, 488–489
L material misrepresentation 270–271, 320
labour 16–18, 154, 195, 251, 282, 311, 326, material transfer agreements 337, 338, 339
393, 400, 404, 426 mathematical methods, not patentable 241
lapse 28, 87, 119, 259, 281, 290, 325–326, medical methods of treatment, and patentability
363, 413 244
law of general application xxiv, 470, 472 medical use 244
leaning on 193, 196 Medicines Control Council (MCC) 28, 275
legal proceedings 48, 66, 74, 102,132, 218, 229, mental acts, methods of performing, not
238, 261,263, 430, 452 patentable 242
legislative framework 4, 240, 300 Merchandise Marks Act 113, 204, 206, 212–214,
legislature 12, 76, 83–84, 125, 127, 161, 188, 218–219, 234
190, 220, 222, 224, 226, 305, 350, 355, metatags 456–458
358, 388, 396, 410–412, 478 methods of performing mental acts, not
letters patent 258 patentable 242
liability 38, 66, 75, 166, 173, 186,191, 201, method or principle of construction 314, 319
235, 408–409423–425, 429–430, microbiological process 243, 244, 267–268, 271
432–433, 439, 452, 458, 460, 463–464 misrepresentation of another trader’s goods as
See infringement own 196
licensee 293, 321, 324, 366–375

monopoly 8, 23, 30, 33, 80, 85, 94, 105, notional goods 219
110–11, 152, 171–172, 180, 183, 197, novelty 17, 59, 245–249, 254–255, 261, 267,
239, 245, 264, 269–270, 275, 277, 279, 278, 286, 293, 299, 305, 307–311, 315,
284, 314, 323, 361, 368, 376, 382, 388, 323, 341, 345, 353, 397
408–409, 414, 473 nuclear energy, and patentability 244
moral interest x, xxiii, 7, 27, 44, 53–54, 126,
188–189, 194, 199, 237–238, 243, 268, O
271, 485–486, 488–489 object code 398–400, 404, 406–407, 410, 412,
moral rights of author 53–54 414–415
mosaicing 251, 310 objective similarity 30, 35–36, 404
movies 4, 8, 11, 418 see computer programs
see digital works offensive behaviour, and patentability 243
multiplied by an industrial process 311, 319 offering 24–25, 73, 84, 136, 163, 202, 259,
musical or artistic nature 72 273–274, 317, 367, 399, 423, 429,
musical works 450–452,
duration of copyright 21–22 457–459, 462
effect or content of copyright 23 offering to dispose 259, 273–274, 317, 367
not patentable 242 online 427–428, 435–437, 441, 445, 451, 453,
protectable subject matter 9–10 460, 462–464
see websites
N onus of proof in copyright infringement
Nagoya Protocol 336 proceedings
National Environmental Management: Biodiversity affidavit evidence 57
Act 2004 336–338 essential averments 55
benefit-sharing agreement 338 presumptions 55–57
discovery phase notification form 338 operation of law 29, 74–75, 117, 253, 344, 361,
material transfer agreement 338 363–365, 387, 438
permit 337 opposition 121–128
national phase 246, 253, 257–259, 261 original xxiii, 8, 16–18, 23–25, 28, 33–36, 42, 45,
national phase patent application 253, 257–259, 49, 54–56, 59, 63, 65, 69–71, 73, 89, 92,
261 94, 110, 118, 170–171, 174, 202, 212,
national treatment 6–7, 19, 71, 240, 440 214, 217–218, 226, 233, 242, 258, 263,
National Trust 72, 74, 332, 350–351, 365, 285, 287–288, 307, 309–312, 319, 323,
379–380 327, 345, 353, 385, 394–395, 397–399,
needletime licences 32, 374 401–402, 404–405, 407–408, 412–414,
negative right 259, 366 418, 422–423, 425–426, 431, 438–439
new matter 262–264, 325 originality, as requirement for subsistence of
new use 247, 251 copyright 16–18
non-commercial cultural heritage safeguarding ornamentation 88, 93, 95, 107, 110, 123, 143,
purposes 74, 102, 330 298, 301–306, 315–316, 326–327, 448
non-examining 265, 317 owner xxiii, 3–6, 11, 15, 19–21
non-exclusive licences 31, 32, 368, 373–374 ownership and authorship of traditional works 71
not commonplace 307, 311, 327
normative primacy of human rights 486 P
notice of acceptance 91, 258–259 parallel importation
notice of registration 316 copyright infringement 39–43
notice 31, 42, 48, 57, 62–63, 80, 91, 113–114, digital works 439–441
119, 129, 138, 164–165 unlawful competition 201–203

INDEX 543
Paris Convention xxiv, 7, 88, 113, 115, 124–125, capable of being used in trade, industry or
156, 158, 240, 255, 257, 300, 308, 359, agriculture 251
447 complete applications 255–256
parody 199, 469–471, 490 construction of claims 275–277
partial expungements 137 contributory infringement 279–280
partially original 16 corrections 260–261
parts numbering system 37 defences to infringement claim 277–279
passing off exhaustion of rights 279
commercial activity 168–169 expert advice, role in infringement claims 277
comparison of marks 178–183 fair basis 268–269
defences 177 false statement or representation 270–271
of digital works 427 frivolous, immoral or illegal inventions 271
elements 166–167 Gillette defence 278
likelihood of confusion 175–176, 178–183 grant, duration and effect 259
misrepresentation 170–175 grounds of objection to amendment 264–265
procedure for instituting a claim 177 history 239
remedies 177 hypothecation and attachment 383–384
reputation 167–170 ignorance not a defence 279
see also unlawful competition infringement 273–281
patentability insufficiency 268–269
computer programs 242 inutility 251–252, 268
inventions, defined 241–244 invalidity 278
medical methods of treatment 244 invention, defined 241–244
nuclear energy 244 inventiveness 248–251
offensive behaviour 243 inventor 252–253
presentation of information 243 leave and licence 278–279
varieties of plants or animals or biological legislative framework and international
methods for production 243–244 arrangements 240
patent certificate 259 licensing of 366–375
patent office 239, 243, 246, 253–255, 257–259, literal infringement 275–276
265, 272, 315,339, 352, 361, 371, 383 locus standi in infringement proceedings 273
patent right 239, 244, 253, 255, 274, 279, 375, made available to the public 245–246
381–382, 466, 471, 477, 484 marketing approval 275
patent term 239, 259 microbiological requirements not met 271
patentee 239, 244, 247, 259, 261–268 monopoly 239
patents mosaicing 251
absolute nature of grounds for revocation national phase applications 258
265–266 nature of the right 239–240
acquiescence, election, waiver and estoppel new uses of known contrivances 251
279 novelty 245–248
acts of infringement 273–274 nuclear inventions 271
of addition 282 obviousness
ambiguity 268–269 see inventiveness
amendments 261–265 partial validity 272
applicant 252–253 PCT applications 240, 246, 253–254,
applications for 253–258 257–258
assignment 361–362 presumptions in relation to new substances
basic requirements for obtaining 241–244 275

procedure after filing 258–259 photographs, duration of copyright 22

procedure for infringement claims 281 pith and marrow doctrine 276–277
procedure for obtaining 252–259 plagiarism vs copyright infringement 44–45, 260
procedure for revocation 272 plant breeder’s rights
procedure on amendment 263–264 bred, discovered and developed 285–286
provisional applications 254 breeder/applicant 285
purposive construction 277–278 claiming priority when applying 289
and registered designs 297–298 compulsory licences 293–294
remedies for infringement 280–281 denomination 289
restoration of 281–282 distinct 287
revocation of 265–272 duration 290
state of the art 245–246 effect of 291
territorial nature of 239–240 essence of rights 284
Patents Amendment Act 20 of 2005 338–339 evaluation of application 290
paternity and integrity rights 54 exceptions to infringement 291–292
patrimonial interests 477 farmers’ privilege 292
pattern 11, 37, 88, 93, 95, 109–110, 112, 122, grant/refusal of application 290
163, 298, 301, 303–306, 312–313, 327, infringement 291–292
346, 448, 454 international arrangements 284
payment 26, 31–32, 58, 65, 75, 81, 102, 120, licensing 293–294
228–229, 239, 254–255, 259, 281, 288, marking of propagating material 294
290, 325, 329, 355–356, 361, 363, nature of rights 284–288
368–369, 371, 374, 388, 441–442, 460, new 286
472, 483 opposition to granting of 289
PCT applications for patents 240, 246, 253–254, plant varieties 284–285
257–258, 262 plant variety listing 294
peer-to-peer file sharing 431–432 provisional protection 290
Pelargonium sidoides and P. reniforme 341 publication of application 289
penalties 44, 203, 206, 235 registration procedure 288–289
performance 5, 19, 21, 23, 32, 34, 38–39, 43, remedies in respect of infringement 292
49, 53, 64–67, 69, 75–76, 78, 101, 191, requirements for registrability 285–288
193, 198–199, 208, 221, 234, 343, 349, research/breeder’s exception 291–292
351, 354, 368, 374, 379, 408, 411, restoration 290
424–426, 441 revocation 293
performer 7, 32, 63–67, 75–76, 334, 342–343, stable 287–288
347, 349–351, 353–356, 374 transfer 293
performers’ protection 64–67, 76, 333, 342, 354 uniform 287
Performers’ Protection Act of 1967 64–65, 75–76 playing games, methods of not patentable 242
period of sole rights 294 police power 473, 480
permission 30–31, 33, 39, 44–45, 59, 120, 164, power of attorney 89, 254, 288, 315, 320
201–202, 289, 309, 315, 335, 388, 402, pre-existing work 17–18, 55, 398
409–410, 434, 443, 473, 478 prejudicially affected 39, 42–43
permits a place of public entertainment 38–39 preparatory steps 41
personal or private use 45–46 presentation of information, not patentable 243
petty patent 249,314 presumptions 55, 233, 275
photograph 10, 20–24, 26, 30, 37, 72, 76, 94, prior art 45, 245–248, 250–251, 255, 261, 268,
136, 178, 190, 217, 289, 303, 315, 305, 309–310, 320, 323, 352
422, 437 priority application 254, 307–308

INDEX 545
priority claim 88–89 pseudonymous 22, 56

priority date 245–247, 249–250, 254, 257–259, public communication 65
264, 277, 308, 315, 318 public domain 14, 21, 34, 44, 111, 172, 190,
private law 466–469, 477, 479, 491 245–246, 345–346, 352
private or domestic use 42043, 439 public good 472, 475
private property 425, 476, 483–484 public inspection 246, 259, 263, 317, 371, 383
private study 45–46,66, 74, 102, 329, 410, public interest 130, 185, 194, 208, 294, 377,
private use 45–46, 66, 74, 102, 329, 483 410, 412, 472, 477–478, 489–490
professional criticism 74, 102, 329 public performances 5, 32, 39, 53, 374
programme-carrying signals public performances and copyright infringement
duration of copyright 22 39
effect or content of copyright 24 public policy 187–188, 200, 241
protectable subject matter 13 public use 248, 289, 475–484
specific exceptions 51 publication 6, 13, 19, 21, 25–27, 36, 47, 56, 59,
progressive realisation approach 487 62, 67, 82, 87, 125, 243, 245, 247–248,
prohibited emblems and marks 204–205 251, 259, 287, 289, 308, 392, 403, 409,
propagating material 286, 291–292, 294 412, 418, 429
property clause 466–470, 472–480, 482–483, published editions 22–23
485–487, 489–491 effect or content of copyright 25
property concept 466–468, 475–477, 479, 483 as protectable subject matter 13–14
property interest 185, 468–469, 474–475, punitive damages 58
477–479, 486–491 purposive construction 276–277
property right xxiii, 7, 53, 171, 437, 466–473,
475–479, 482, 484, 489–490 Q
proprietor 11, 25–26, 83–84, 95, 98, 102, 110, qualified person 6
113, 117–121, 125–127, 134, quality xxiii, 8–10, 17–18, 34, 80, 98–99, 101,
136,139,141–142, 146, 153–156, 299, 107–108, 121, 148, 160–162, 170,
302, 308–309, 312 193–196, 289, 294, 301, 306, 326–327,
proprietorial interest 267 343, 371, 394, 417, 426, 440, 459
protectable features of registered designs quantity 34, 58, 99, 107–108, 160, 203, 225,
301–307 235, 281, 338
protectable subject matter quotation 47, 350, 409–410
artistic works 10–11
broadcasts 13 R
cinematographic works 11–12 reasonable royalty 31, 52, 58, 120, 165,
computer programs 14–15 280–281, 324, 369–370, 374, 377
literary works 8–9 reconstruction 49
musical works 9–10 recorded licensee 372
programme-carrying signals 13 records of musical works and statutory defences
sound recordings 12–13 to copyright infringement 48–49
works, classes in which copyright can subsist rectification of the register 131, 177, 372–373
8–15 register sheet 254
works, what constitutes? 7–8 registered design right 296, 466
protected goods 213, 215, 216, 217, 219, registered proprietor 119–120, 127, 135, 139,
230–231, 234–235, 439 302, 312–314, 319–321, 325,
provisional patent application 253–254, 262–263 registered trade marks, licensing of 120–121
provisional protection 290 registered user 120–121, 159, 372–373
provisional specification 254, 262

registrability and infringement searches, trade right of priority 240, 255, 316
marks 83, 85 right to education 467, 487
Registrar of Copyright 60, 62 right to exclude 259, 273, 302, 481
Registrar of Plant Breeders’ Rights 287–288 right to freedom of expression 457, 464,
registrar of trade marks 86–87, 91, 105, 108, 467–471, 486, 490–491
121–122, 129–130, 134, 138, 351, 373 right to health 467, 482, 487, 487
registrability 83, 85, 89, 99, 101–103, 106, 112, right to property 467, 469, 471, 485–486, 489
122, 174, 285, 290, 299, 307–308, 311, right to remuneration 487
317, 319–320, 327, 343, 354 rights of paternity and of integrity 54
registration date 324–325 rooibos/honeybush 340–341
registration of copyright 15, 57, 60–63, 385 royalty 31–32, 52, 58, 65, 75, 81, 120, 165,
registration of trade marks 79, 82, 91, 103, 114, 280–281, 324, 329–330, 356, 369–370,
122, 448 374, 377, 379–380, 386, 398, 409,
registration procedure 86, 288 415, 441
regulations 4, 6, 52, 61, 63, 67–68, 79, 82, 86,
88, 92, 100, 113–114, 240, 254, 284, S
300, 303, 304, 317, 321, 324, 337, 359, schemes, not patentable 242
376, 385, 386, 387, 388, 410–411, 447, scientific research 66, 74, 102, 329, 389
449, 453, 454, 478 scientific theories, not patentable 241
reasonable royalty 31, 52, 58, 120, 165, 177, search and seizure operations and counterfeiting
202, 280–281, 324, 369–370, 374, 377 procedures
release date 307–308, 315, 318, 320, 327, 329 application for release by a dispossessed party
remedies 7, 31, 57, 131, 164, 177, 188, 200, 228–229
209–210, 220, 280, 292, 324, 374, 443 complaints, consideration of by inspectors,
renewal and restoration 92 219–220
renewal fee 239,259, 281–282,290, 315, 318 complaints, lodging with inspectors 219
325, 329, 375, complaints, substantive requirements 216–219
reporting on current events 66, 74, 102, 329 complaints, who may lodge 215–216
representations 91, 93, 96, 112, 198, 218, 271, court orders 229–230
305, 309, 315, 321–322, 333 criminal complaints, lodging 227
reproducing 14, 23–25, 47–48, 72, 367, 393, inspectors, consideration of complaints
404–405, 412–413 219–220
reproduction rights 40–41, 356 inspectors, defined 219
reproductive material 286, 290–291 inspectors, duties 225–226
resident 5–6, 19, 285, 385, 387–388 inspectors, powers to search, seize and collect
restoration 92, 281–282, 290, 325–326 evidence 225
restricted acts 3, 23, 29, 31, 33–34, 38, 45, 52, inventories of seized goods 225–226
55, 59–60, 72–73, 75, 364, 406, 408 notice of seizure 226
reverse domain name hijacking 455–456 obligations of state and complainant 227–228
reverse engineering post seizure 227–230
artistic works 49–51 storage of seized goods and access 227
computer programs 413–414 transportation of seized goods to depot 226
review 45–46, 66, 74, 82–83, 85, 102, 240, 242, warrants, applying for 220–222
293, 304, 311, 329, 409, 412–413 warrants, execution of 222–223
revocation 249, 252, 256, 265–272, 278, 293, warrants, initiating search and seizure without
304, 311, 318–321, 324, 329, 366 223–225
right of integrity 53–54 secondary markets 446, 462
right of paternity 53–54 secret use 246, 250

INDEX 547
self-defence 208 computer programs, specific exceptions 51,

sells, lets for hire by way of trade offers 39, 43 409–415
series of mask works 301, 308, 376, 378 Copyright Tribunal 52–53
set of articles 303–304 defences, other 52
shape 86, 88, 93–95, 109–112, 122, 132–133, exemptions 45–47
144–145, 163, 172, 174–175, 256, 287, fair dealing 45–47, 409–415
297–298, 301, 304–307, 310, 312, general exceptions, other 47–48, 409–415
315–316, 325–327, 448 programme-carrying signals, specific exceptions
sign 93–94, 96–98, 101, 107, 109, 112–113, 51
150, 153, 155, 162, 166–167 records of musical works 48–49
skill 9, 16–18, 59, 195, 248–250, 255, 262, 266, stringent protection 479
268–269, 311, 333, 393–395, 398, 400, substantial part 19, 34–36, 38, 45, 59, 68,
403–404, 426, 476 70–71, 101, 327, 422, 424, 426–428, 439
skilled in the art 248–249, 255, 266, 268–269 substantive examination 258, 265, 299, 317–318
signed 61–62, 204, 254, 256, 270, 288, 300, sufficient substance 8
335, 347, 359, 362, 364, 366, 373, 485 sui generis system 4, 9, 284, 343–345, 357–358,
social networks 464–465 394–396, 401, 406–407, 426, 466–468,
social-obligation provision 475 477
software 21, 242, 366, 394–399, 402–403, surrender 29, 267, 292, 324
412–415, 421, 426, 431–434, 437, Swiss-type claim format 244
442, 444 symbol 9, 14, 35, 56, 69, 79–80, 92–93, 101,
see computer programs 166–170, 176–177, 302–303, 343, 349,
sole licences 30, 32, 368 362
sound recordings
duration of copyright 22 T
effect or content of copyright 24 takings clause 483–484
as protectable subject matter 12–13 technical questionnaire 288, 290
source code 34, 242, 394, 399–407, 410, technical trial 247, 309
412–415, 418 techno-jacking 455
South African Constitutional Court 483, 486–487, territorial nature of patents 239–240
490 test for infringement 273, 321
spamdexing 456 test for novelty 247–248, 309–310
spare parts, articles in the nature of 312–313 test for obviousness 249–250
specification of goods and/or services 83–85, 92, testamentary disposition 29,74–75, 361–365,
112, 118, 137, 145, 363 438
sphere of personal liberty 477, 490–491 three-dimensional 10, 33, 37, 49–50, 88, 93–94,
spidering 424–426 96, 190, 299, 301, 304–305, 317
split-mark disputes 448 trade description 114, 197, 203–205
sponsorship code 194, 205–207 trade secrets xxiii, 7, 194, 344, 467, 484, 488
stable 285, 287–288, 290, 293 trade mark infringement
state interference xxv, 472–473, 481, 483, 491 procedure for lodging claims 164
state of the art 245–247, 249–251, 307–308, remedies 164–166
327 trade marks in the digital environment 449–451
statement of case 61, 117 see also passing off
statutory defences to copyright infringement trade mark infringement, defences
artistic works, reverse engineering 49–51 acquiescence 164
artistic works, specific exceptions for 49 bona fide descriptive use 160–162
bona fide of utilitarian features 163

bona fide to indicate intended purpose gripe sites 455

162–163 infringement of trademark 449–451
bona fide use of own name 159–160 keyword advertising 458–462
concurrent registration 164 metatags 456–458
estoppel 164 reverse domain name hijacking 455–456
use for which a registration does not extend secondary markets 462–464
163–164 social networks 464–465
use on genuine goods 163 split-mark disputes 448
trade mark infringement, grounds techno-jacking 455
dilution 151–156 trademark law 446
famous marks 156–159 typosquatting 454–455
identical goods/services 140 unlawful competition 452
similar goods/services 148–151 see also computers and IP themes
unauthorised use 140–142 trade marks, rectification
use in the course of trade 142–145 grounds for 132–138
use of registered trademark or similar 152 interested parties 131–132
well-known in the Republic 152–156, 157–159 procedure 138
trade marks purpose of proceedings 130–131
assignment 117–118, 119–120, 362–364 trade marks, registrability
certification trade marks 99 capable of distinguishing (section 9) 103–106
collective trade marks 99–100 disqualifications from registration (section 10)
defined 97–99 106–116
general introduction 79 lack of intrinsic registrability 106–112, 122
grounds of opposition 122–128 prohibited marks 112–114, 122
honest concurrent use 138–139 proprietorship and good faith 114–115,
hypothecation and attachment 384–385 122–123
Intellectual Property Laws Amendment Act 28 of third party rights 115–116, 123–128
2013 trade marks, registration and formalities
Indigenous Knowledge 100–103 acceptance, advertisement and registration
IPLAA 353–354 91–92
licensing of registered trade marks 120–121 admissions 90
mark, defined 93–97 amendments 92
nature and essence 93–100 authority to act 89
non-traditional marks 96–97 classification of goods and services 82–85
oppositions 121–130 conditions imposed by the Registrar, typical
recordal of assignment or transmission 89–91
119–120 convention applications 88–89
registered designs, and 298–299 disclaimers of rights 90
special 99–100 endorsements 88, 91
transfer of rights 117 examination by Registrar 89–91
transmission 118–119 priority claims 88–89
see also trade marks, registrability refusal, or provisional refusal, of applications
trade marks in the digital environment 91
ADR 452–454 registrability and conflict searches 85–86
counterfeiting 463 registration procedure 86–92
cybersquatting 448–452 renewals 92
domain name mimicry 454–455 specifications of goods/services 92
domain names 446–456 use and value in modern society 80–81

INDEX 549
trade mark rights 79–80, 92, 105–106, 133, 147, uniform 285–288, 290, 293, 359, 417
387, 448, 466, 468, 470–471, 476–477, unintentional 260, 281, 325–326
480–482, 489–491 unity of design 304, 311
trade secrets, misappropriation and misuse Universal Declaration of Human Rights (UDHR)
194–195 xxiii, 485
traditional character 100, 326–327, 355 unlawful competition 43, 123, 126, 166, 168,
traditional cultural expressions, defined 342–343 185
traditional knowledge adoption of trade description of competitor
defined 333, 334 197–198
see also biodiversity and traditional ambush marketing and protected events
knowledge wrt patents 205–207
traditional knowledge and cultural expressions Aquilian action 186
definitions 342–343 boycotting of a business 199–200
international response to protection challenges class or quality of goods, misrepresentation
346–347 196
modes of protection for 357–358 common law grounds 193–200
protection, challenges surrounding 344–347 competition principle 191
S African solution to protection challenges 347 defences 208–209
trade marks, copyright, performers’ protection & development of 186–190
designs 342–358 digital works 427
traditional origin 68, 100–101, 326–327, 354 dishonest adoption of sign or get-up of
traditional properties competitor 196–197
assignment of rights 365 disparaging comments regarding a competitor’s
licensing 379 business 198–199
traditional works, protection under copyright law emergency or necessity as defence 208
assignments and licences 74–75 false trade descriptions 203–204
authorship and ownership 71 geographic origin of goods, misrepresentation
defined 68–69 195
duration and effect 72–73 interference with contractual relationships 199
exemptions from infringement 73–74 introduction 184–186
Performers’ Protection Act, 1967 75–76 leaning on 193–194
requirements for subsistence of copyright misrepresentation of another trader’s goods as
69–71 own 196
restricted acts 72–73 nature/composition of goods,
transfer 116–118, 253, 256, 260, 287, 293, misrepresentation 196
335–339, 362–365, 374, 378, 386–388, parallel importation 201–203
416–417, 431, 437–438, 453–454, 476 passing off 193
transmissible 29–30, 74–75, 364, 387 physical or psychological pressure exerted on
TRIPS Agreement xxiv, 7, 65, 76, 212–213, 240, rival’s customers or employees 200
284, 300, 332, 394, 396, 411 prohibited emblems and marks 204–205
two-dimensional 33, 37, 50–51, 93–94, 305 public interest as defence 208–209
two-step test 36, 410–412 remedies 209–210
typosquatting 454–455 right to attract custom 190–191
rise of 187–190
U self-defence 208
unassignability of performer’s rights 67 sponsorship code 206–207
undue delay 264, 281, 326 statutory prohibitions 200–207
unfixed performance 65

Trade Marks Act and other IP statutes, vested 28–29, 42, 73–74, 158, 171, 220, 355,
relationship with 209 362, 380, 438, 468, 477, 491
trade secrets, misappropriation and misuse voluntary amendments 261
194–195
trading in contravention of the right of another W
200 waiver 278–279, 324, 388, 399
types of unlawful competition 191–200 warrant 8, 51, 155, 202, 204, 207, 216,
UDRP (Uniform Dispute Resolution Policy) 453 220–226, 228, 233, 343, 357, 381, 383,
UPOV Agreement 284–287, 289 384, 393, 432
unpatentable subject matter 242–243 websites
URL (Uniform Resource Locator) 417, 421, 450 blocking access 436–437
US law 455 protection 418, 427–428
utilitarian purpose 50–51, 190 well-known marks 156, 214, 447, 460
utility 241, 248, 251–252, 268, 300, 350, 442 WIPO see PCT applications for patents
work of joint ownership 19–20, 22, 75, 77
V World Intellectual Property Organization (WIPO)
value of trade marks 80 xxiii, 82, 85, 257, 332, 394, 396, 453
varieties of plants or animals or biological world wide web (www) 417
methods for production, and patentability written opinion 257
243 wrongful 185–189, 191–193, 198, 200, 203,
208, 235, 280, 425, 436, 452

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9780199045792_Dean_&_Dyer_Introduction_to_Intellectual_Property_Law.

indb 1 22/10/2014 11:32

OWEN DEAN (Editor)

9780199045792_Intellectual_property_law_titp.indd 2 2014/10/22 10:43 AM

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It is hoped that this book will come somewhere close to meeting

9780199045792_Dean_&_Dyer_Introduction_to_Intellectual_Property_Law.indb 9 22/10/2014 11:32

CHAPTER 2 TRADE MARKS 77

CHAPTER 3 UNLAWFUL COMPETITION 184

CHAPTER 4 COUNTERFEIT GOODS 211

CHAPTER 5 PATENTS 237

CHAPTER 6 PLANT BREEDERS’ RIGHTS 283

CHAPTER 7 DESIGNS 295

CHAPTER 8 TRADITIONAL KNOWLEDGE, TRADITIONAL CULTURAL EXPRESSIONS

CHAPTER 9 COMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING

CHAPTER 11 INTELLECTUAL PROPERTY RIGHTS AND THE CONSTITUTION 466

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CHAPTER 2 TRADE MARKS 77

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CHAPTER 3 UNLAWFUL COMPETITION 184

CHAPTER 4 COUNTERFEIT GOODS 211

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CHAPTER 5 PATENTS 237

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CHAPTER 6 PLANT BREEDERS’ RIGHTS 283

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CHAPTER 7 DESIGNS 295

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CHAPTER 9 C OMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING INTELLECTUAL

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CHAPTER 11 INTELLECTUAL PROPERTY RIGHTS AND THE CONSTITUTION 466

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WIPO substantiates the need for IP rights in the following manner:

1 WIPO ‘What is intellectual property’, www.wipo.int/about/ip/en.

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2 Development of South African IP law

3 IP and the Constitution

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4 Evolution of South African IP law

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Marco van der Merwe

Eben van Wyk

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1.14.2.3 Grant, duration and effect 63

1.1.1 Description of copyright

CHAPTER 9 COMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING

CHAPTER 11 INTELLECTUAL PROPERTY RIGHTS AND THE CONSTITUTION 466

CHAPTER 9 C OMMERCIAL CONSIDERATIONS FOR TRANSACTIONS INVOLVING INTELLECTUAL

CHAPTER 11 INTELLECTUAL PROPERTY RIGHTS AND THE CONSTITUTION 466

1.3.4 Author a ‘qualified person’/Work first published in Berne

1.5.2 Determination of ‘effect’ or ‘content’ of copyright with reference