SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
98 of 1978, which are outlined in 9. Defences and Exceptions to Infringement . 7.2 Legal Claims for Infringement Lawsuits and Their Standards Legal Claims for Infringement Lawsuits Trade marks The proprietor of a registered trade mark may insti - tute infringement proceedings on the basis that a third party is: • using the same or similar trade mark in relation to identical goods/services; • using the same or similar trade mark in relation to similar goods/services; or • using a similar mark that may result in a dilution of the registered trade mark. In order to institute trade mark infringement proceed - ings, the applicant must have a registered trade mark. As such, it is not possible to institute infringement proceedings on the basis of a pending application. Copyright A copyright owner may institute infringement pro - ceedings on the following bases: • another person does/performs one of the restricted acts forming part of the copyright owner’s monop - oly (ie, reproducing or adapting it) without the copyright owner’s permission (direct infringement); and • a person deals in infringing articles or permits a place of public entertainment to be used for per - formance of a work that infringes the copyright in a protected work (indirect infringement). Copyright cannot be registered, with the exception of cinematograph films as discussed in 3.7 Copyright Registration and 3.8 Copyright Application Require- ments . For infringement proceedings involving a cin - ematograph film that is registered, the plaintiff will not be required to prove that copyright subsists in that work and it is presumed that the infringer has per - formed the infringing act without the authority of the copyright owner.
Proving Trade Mark and Copyright Infringement Trade marks See the factors discussed in “Legal Claims for Infringe - ment Lawsuits” above, as this outlines what consti - tutes trade mark infringement. The elements that must be proven to establish infringement are as follows: • Section 34 (1)(a) and (b) of the Trade Marks Act – the unauthorised use, in the course of trade, of a trade mark that is identical or confusingly similar to a registered trade mark in connection with the same (Section 34 (1)(a)) or similar (Section 34 (1)(b)) goods/services as those covered by the registered trade mark; or • Section 34 (1)(c) of the Trade Marks Act – the unau - thorised use, in the course of trade, in relation to any goods/services of a trade mark that is identical or confusingly similar to a registered trade mark (which is well known in South Africa) in such a way that the use of the mark would take unfair advan- tage of or be detrimental to the distinctive charac - ter or repute of the registered trade mark notwith - standing the absence of deception or confusion. In addition to the above-mentioned factors, Section 35 of the Trade Marks Act 194 of 1993 makes provi - sion for the infringement of famous trade marks even if they are not registered or used in South Africa, pro - vided that: • the mark is well known in South Africa; • the owner of the mark is a national or is domiciled in a Paris Convention country; • the offending mark is a reproduction, imitation, reproduction or translation of the well-known mark; and • it is being used in relation to goods/services that are identical/similar to the goods/services and such use is likely to cause deception or confusion. Copyright See the discussion in “Legal Claims for Infringement Lawsuits” above, as this outlines what constitutes copyright infringement. The elements that must be proven to establish infringement are as follows: • Direct infringement – the copyright owner needs to prove that there has been copying of a substantial
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