SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
do so. Furthermore, the proprietor must give notice in writing of their intention to institute infringement proceedings to every registered user recorded on the register. • Copyright – the main prerequisite for instituting copyright infringement proceedings is that the applicant must be the holder of copyright in the work in question and be able to prove such owner - ship. It is standard practice that a formal letter of demand is sent to the infringer before proceedings are commenced, but there is no technical require - ment to do so. There are no statutory restrictions on trade mark own - ers or copyright owners asserting their rights against others. However, any issues relating to the proceed - ings can be dealt with in the proceedings themselves. 7.5 Lawsuit Procedure Trade mark or copyright infringement proceedings can be instituted in any High Court in South Africa that has jurisdiction. In the event that a party elects to use legal representa - tion in any trade mark or copyright proceedings, then the usual attorney costs will follow. However, parties in trade mark or copyright litigation do not need to be represented by a lawyer (though it is encouraged as it is a specialised field of law). Foreign trade mark and copyright owners may also bring infringement claims in South Africa. For trade marks, the proprietor of the mark will need to have a registered trade mark in South Africa – the only excep - tion being famous/well-known trade marks. As far as copyright is concerned, as long as the requirements for the subsistence of copyright are met (see 3.2 Essential Elements of Copyright Pro- tection ) – in particular, that the work was published in a country that is a member of the Berne Convention – the owner of the copyright will be able to bring an infringement claim in South Africa. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants The defendant in a trade mark infringement matter could potentially file an application for a declaratory
order. The circumstances and the potential defence to such application will depend on the matter and the declaratory order sought. 7.7 Small Claims In South Africa, there are a number of small claims courts, which are administered by the Department of Justice and Constitutional Development. Any civil dispute can be taken to a small claims court, pro - vided that the amount in dispute does not exceed ZAR20,000 (roughly USD1,250). Although this does not relate to trade mark or copyright claims in particu - lar, an individual may approach these courts for relief. 7.8 Effect of Trade Mark and Copyright Office Decisions A decision of the Registrar will have no bearing on an infringement action. Civil courts have the power to review any decision or ruling of the Registrar. 7.9 Counterfeiting and Bootlegging Counterfeiting Under the terms of the Counterfeit Goods Act 37 of 1997, in order for there to be a cause of action on the basis of counterfeit goods, the following factors need to be proved by the applicant: • the applicant is the owner of copyright or a trade mark incorporated in the opponent’s goods and there has been an infringement of the applicant’s copyright or trade mark; • the goods in question are “protected goods” – ie, goods that bear the copyright or trade mark belonging to the applicant (with their permission); and • an act of counterfeiting has taken place by the opponent, which means that the infringing goods are counterfeit goods. A useful remedy for the owner of the copyright or trade mark that is incorporated in the counterfeit goods is to have the goods seized and destroyed. A party can be subject to both civil and criminal liabil - ity should the party contravene the provisions of the Counterfeit Goods Act 37 of 1997.
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