SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
to conduct some but not all of the restricted acts in respect of the work. • Trade marks – a written deed of assignment must be entered into and signed by both the assignor and assignee. This agreement must include an effective date. Both pending applications as well as registered trade marks may be assigned. It is pos - sible to partially assign a trade mark in the sense that the assignor only assigns certain goods/ser - vices covered by the trade mark to the assignee. Importantly, a trade mark cannot be assigned if – as a result of the assignment – the use of the trade mark by different persons would give rise to a likeli - hood of deception or confusion. Moreover, all trade marks that are associated with each other must be assigned together. Transfer of Copyright and Trade Marks Upon Death Copyright and trade marks can be transferred to a third party upon death of the owner of the aforemen - tioned IP. This occurs by way of a transmission of rights. The trade marks and copyright form part of the deceased proprietor’s estate and, when the assets are transferred to the heirs, the trade marks and copyright will pass to the heirs by operation of law. 6.2 Licensing Requirements or Restrictions A licence agreement for trade marks and copyright may be spoken, in writing, tacit, or inferred from con - duct. The exception to this rule is an exclusive licence granted for copyright, which must be in writing and signed by or on behalf of the licensor under the terms of Section 22 of the Copyright Act 98 of 1978. Types of Licences The owner of a trade mark may grant a third party the following types of licences: • non-exclusive licence – the licensor retains the licensed rights without any restrictions but also provides the licensee with these rights; • sole licence – the licensor retains the licensed rights with certain restrictions and extends the rights to the licensee; and • exclusive licence – the licensor is prevented from exercising the licensed rights and the licensee is the only person authorised to exercise the licensed rights.
The duration of the licence is completely up to the licensor and licensee. As such, licences can be per - petual, provided the trade mark or copyright is valid. Trade mark applications cannot be licensed. 6.3 Registration or Recording of an Assignment or Licence Trade Marks An assignment of a trade mark must be recorded on the Trade Marks Register. If not, the trade mark may become vulnerable to expungement, as the person/ entity listed as the proprietor of the mark on the reg - ister is not the true owner of the mark. There are no particular risks that arise from the gap between an assignment taking place and its recordal on the register, provided the application to record the assignment has been submitted to the Trade Marks Office. Licences may be recorded on the register. However, it is not compulsory to do so. Copyright In South Africa, there is no copyright register as such, with the exception of the register of copyright in cin - ematograph films. The assignment or licence of a cinematograph film can be recorded on the register. It is not compulsory to record the assignment or licence. Failure to do so will not affect the validity of either agreement. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits There are no specific timeframes within which a trade mark or copyright infringement action can be insti - tuted. South African courts have held that the defence of laches does not form part of South African law. How - ever, there are specific defences provided for in the Trade Marks Act 194 of 1993 and the Copyright Act
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