SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
1. Trade Mark and Copyright Law 1.1 Governing Law Trade marks and copyright are governed by statute – namely, the Trade Marks Act 194 of 1993 and the Copyright Act 98 of 1978. Common law trade marks are recognised. An indi - vidual/entity obtains common law rights by virtue of their/its use of a mark in trade. 1.2 Conventions and Treaties/Rights of Foreign IP Holders South Africa is a member state of the Paris Conven - tion and the Berne Convention, as well as a signatory to the Nice Agreement, the Trade Mark Law Treaty 1994 and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement – all of which are self-executing. The Paris Convention and the Berne Convention govern the rights of foreign trade mark and copyright holders in South Africa. 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks The Trade Marks Act 194 of 1993 broadly defines what qualifies as a “mark”, which includes a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, or container for goods (or any combination of the aforementioned). The over - arching principle is that the subject mark must be capable of being represented graphically. As such, it is clear that there are a number of different types of trade marks in South Africa. Colours, three-dimensional shapes and configura - tions, sounds and motion trade marks are all regis - trable, provided that they are distinctive and capable of graphic representation. South Africa follows the Nice Classification and it is thus possible to secure protection for service marks. It is also possible to secure protection for “device” marks. This includes any visual representation of a design, container, shape or colour. Securing protec -
tion for trade dress, product design and packaging is largely the same. A trade mark application for the aforementioned types of marks will typically exclude the name of the product and any descriptive matter so as to ensure design elements incorporated on the product packaging/design or trade dress are pro - tected. The Trade Marks Act 194 of 1993 makes provisions both for certification marks and collective marks. The standard rules and principles relating to distinctive - ness and graphic representation applicable to ordi - nary trade marks apply to certification and collective marks. However, there are additional rules applicable to these trade marks, as follows. • Certification marks – the applicant may not offer the goods/services covered by the certification mark. The applicant must submit a set of rules governing the use of the mark and a sworn state - ment that it does not offer the goods/services covered by the certification mark. • Collective marks – the applicant may offer the goods/services covered by the trade mark appli - cations. The applicant must submit a set of rules governing the use of the mark. Notably, geographi - cal names or other indicators of geographical origin may be registered as collective trade marks. Any mark that may serve in trade to indicate geo - graphical origin cannot be registered as a trade mark. Therefore, as a general rule, geographic indicators cannot be registered as trade marks unless it is a collective mark or the geographical location has no association with the goods/services covered by the trade mark. A surname can be registered as a trade mark in South Africa, provided it is distinctive in relation to the sub - ject goods/services. In order to qualify for trade mark protection, a mark must distinguish the goods/services in relation to which it is used from the same type of goods/services offered by a third party. As industrial designs typically detail/outline the function of a product, they cannot be protected as trade marks as they do not serve as a source identifier.
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