SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
(Note: The Registrar is entitled to refer any opposi - tion to the High Court to be heard and it has become customary for trade mark opposition to be referred to the High Court for hearing. The High Court’s rules, regulations and practice directive will become appli - cable once the opposition has been referred to the High Court for hearing.) Oppositions are resolved through motion proceed - ings. Cancellation/revocation proceedings may be brought before the Registrar or before a civil court. It is possible to partially cancel a trade mark registra - tion. This occurs where a registered trade mark has been used in relation to some of the goods/services covered in the specification but not in relation to oth - ers – in such an instance, only the goods/services in relation to which the mark is not being used will be removed from the specification. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Any person who is aggrieved by a decision or order of the Registrar may appeal to the Gauteng Division of the High Court, Pretoria for relief. This court will have the power to consider the merits of the given matter, to receive further evidence and to make any order it deems fit. If the appeal is by a party to opposition proceedings, no further evidence may be submitted to the court, as it is merely a rehearing on the merits limited to the evidence/information upon which the Registrar’s decision was made. In appealing against a decision of the Registrar, no leave to appeal is necessary, the appeal must be noted within three months of the date of the deci - sion/order by the Registrar, and the appeal must be prosecuted within six weeks from the date on which it was noted. 5.6 Amendment in Revocation/Cancellation Proceedings Trade mark revocation/cancellation proceedings are based on the state of the register at the time at which the proceedings were instituted. However, the trade
mark may be amended should the parties reach an agreement to that effect during proceedings. 5.7 Combining Revocation/Cancellation and Infringement In the event that there are actions for revocation/can - cellation as well as for trade mark infringement, the revocation/cancellation application will be heard first. The infringement application will be stayed pending the outcome of the revocation/cancellation applica - tion. 5.8 Measures to Address Fraud There are no special procedures to revoke/cancel trade marks that were filed fraudulently. Should a mark be filed fraudulently, an interested third party may seek to oppose it once it is advertised in the Patent Journal. Alternatively, should the mark proceed to registration, an interested party may initiate cancellation proceed - ings on the basis that it is an entry wrongly made and wrongly remaining on the register. For both the oppo - sition and cancellation proceedings, the underlying basis for the applications will be that the applicant/ proprietor has no bona fide claim to proprietorship in respect of the mark. Both copyright in a work and trade marks can be assigned. The requirements for the assignment of these works are as follows: • Copyright – a written deed of assignment must be entered into and signed by the assignor and the assignee. This agreement must clearly outline the intention of the assignor to transfer the copyright and the assignee to receive ownership thereof. The agreement must clearly identify the work that is being assigned. It is possible to partially assign copyright in a work – for instance, the owner of the copyright may assign part of their rights to the assignee, thereby providing the assignee the right 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
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