SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
part of their work by either reproducing it or making adaptations of that work. • Indirect infringement – in the case of dealing in infringing copies, the copyright owner must prove that the articles in question are infringing copies in that they are unauthorised reproductions/adapta - tions of a work in which copyright subsists. Fur - thermore, the copyright owner must prove that the person committing the indirect infringement had “guilty knowledge” in that they were aware that they are infringing the copyright of another person. The biggest difference between direct and indirect infringement is the fact that the copyright owner must prove guilty knowledge in the case of indirect infringe - ment. Alternative Trade Mark Claims The following alternative claims can be brought by the proprietor of a trade mark: • Dilution – see discussion in “Proving Trade Mark and Copyright Infringement” above. • Passing-off – this is a common law claim and requires the applicant to prove that: (a) they have a reputation in respect of the par - ticular mark; (b) there is a misrepresentation by another trader that the goods/services are associated with the applicant; and (c) there is a likelihood that the misrepresentation will lead consumers to believe that the busi - nesses are related and damage the applicant’s goodwill. • Unlawful competition – this is a common law claim, and the applicant is required to establish that the opponent is carrying on their trade in a wrongful manner that unlawfully interferes with the appli - cant’s goodwill in the business. • Cybersquatting – this refers to the pre-emptive registration of a trade mark belonging to another person as a domain name. For.za domain names, a domain name dispute can be filed with the South African Institute of Intellectual Property Law (SAIIPL) to challenge the cybersquatters. This is done in terms of the Alternative Dispute Resolu - tion Regulations – GN R1166 of 2006, which were
enacted in terms of the Electronic Communications and Transactions Act 25 of 2002. • Advertising Regulatory Board – where an advertise - ment exploits the advertising goodwill of a trade name or is an imitation of an existing advertise - ment, they are in contravention of the Code of Advertising Practice. An applicant may submit a complaint to the Advertising Regulatory Board. • Company name dispute – if a third party has registered a company name that incorporates an individual’s trade mark, a company name dispute may be lodged with the Companies Tribunal. This is done under the terms of the Companies Act 71 of 2008. Alternative Copyright Claims The following alternative claims can be brought by a copyright owner or by a person performing a literary or artistic work: • Authors’ moral rights – see discussion in 3.4 Copy- right Rights . • Performers’ protection – this applies to the perfor - mances or renditions of literary or other works that are protected. A performer’s right in the rendition of a work is infringed when a person broadcasts or reproduces the performance without consent of the performer. This is provided for by the Performers’ Protection Act 11 of 1967. Copyright management information is not included in the Copyright Act 98 of 1978. 7.3 Factors in Determining Infringement Please refer to the discussion in 7.2 Legal Claims for Infringement Lawsuits and Their Standards . 7.4 Prerequisites and Restrictions to Filing a Lawsuit The prerequisites for filing trade mark or copyright lawsuits are as follows: • Trade marks – the main prerequisite for instituting trade mark infringement proceedings is that the applicant must have a registered trade mark. It is standard practice that a formal letter of demand is sent to the infringer before proceedings are com - menced, but there is no technical requirement to
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