SOUTH AFRICA Law and Practice Contributed by: Daniel Pekar, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
through further litigation to recover the actual dam - ages, unless the parties enter into a reasonable settle - ment agreement relating to damages that satisfies the aggrieved party. As regards special damages, these normally have to be proven (by way of documentary evidence) during litigation in order to persuade the court to grant them. With regard to trade marks, damages can be calcu - lated by assessing what monies authorised licensees have paid to the trade mark proprietor for use of the mark for a certain duration. The authorised licensees can then claim the equivalent of that amount from the offending party. South Africa’s trade mark law and copyright law do In South Africa, costs normally follow the outcome of the matter. Both parties to litigation are responsible for all the litigation costs that are incurred on their part. However, they are both permitted to request the court for costs in their founding papers (as part of their relief) in order to be able to recover a portion of their legal fees upon finalisation of the order. Once a court order in favour of one of the litigants is issued, the prevailing party is then placed in a posi - tion where a bill of costs can be drawn by a costs consultant (which will include attorneys’ fees, counsel fees and disbursements) in order to have the costs taxed before a taxing master. The taxing master will assess the bill of costs and make a final decision on how much the losing party should pay towards the other party’s fees. Having said this, it is possible for the unsuccessful litigant to make a reasonable offer to the successful party to pay for “untaxed” costs in order to avoid the process of formal taxation as the latter involves more costs for both parties. 10.4 Ex Parte Relief The South African law follows the principle of audi alteram partem – meaning “let both parties be heard”. For this reason, where a proprietor seeks relief in respect of their trade marks or copyright, notice of such proceedings must be given to the opposing par - ty in order for them to exercise their right of whether to not provide for statutory damages. 10.3 Attorneys’ Fees and Costs
defend the matter or not. Where the defendant elects not to defend the matter, then the plaintiff can proceed to obtain the desired relief on an unopposed basis. 10.5 Customs Seizures of Counterfeits or Parallel Imports Parallel imports in South Africa are permitted and therefore customs seizure is not applicable. As regards counterfeits, there are measures in place (eg, customs seizure) to combat counterfeit products. To succeed in this approach, one needs to have a reg - istered and valid trade mark with customs. Once this is done, the relevant authorities can be alerted (upon obtaining a court order), so as to conduct a search and seizure of the infringing goods or to detail goods coming in at customs. Trade mark infringement proceedings can be appealed to a full bench of the High Court of the Supreme Court of Appeal. A statement requesting a leave to appeal needs to be filed. If leave is granted, then a notice of appeal must be served on all relevant parties within 20 days. Any party may then file a notice of cross-appeal within ten days of the notice of appeal being served. Copyright infringement proceedings are also appealed to the Supreme Court of Appeal. 11.2 Timeframes for Appealing Trial Court Decisions A trade mark infringement decision can be appealed in the High Court within three months following receipt of written reasons from the Registrar. The decision may be handed down between 18 and 24 months after filing an appeal, depending on where the roll at court is. A party must file a notice of appeal with the Registrar of the Supreme Court of Appeal within one month following the granting of the judgment in copyright infringement proceedings. A decision may be hand - ed down between 12 and 18 months after filing and appeal. 11. Appeal 11.1 Appellate Procedure
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