SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
1. Trade Mark and Copyright Law 1.1 Governing Law Trade marks and copyright are governed by stat - ute – namely, the Trade Marks Act 194 of 1993 and the Copyright Act 98 of 1978. Common law trade marks are recognised. An individual/entity obtains common law rights by virtue of their/its use of a mark in trade. 1.2 Conventions and Treaties/Rights of Foreign IP Holders South Africa is a member state of the Paris Con - vention and the Berne Convention, as well as a signatory to the Nice Agreement, the Trade Mark Law Treaty 1994, and the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agree - ment – all of which are self-executing. The Paris Convention and the Berne Convention govern the rights of foreign trade mark and copyright holders in South Africa. The Trade Marks Act 194 of 1993 broadly defines what qualifies as a “mark”, which includes a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour, or container for goods (or any combi - nation of the aforementioned). The overarching principle is that the subject mark must be capa - ble of being represented graphically. As such, it is clear that there are a number of different types of trade marks in South Africa. Colours, three-dimensional shapes and configu - rations, sounds, and motion trade marks are all 2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks
registrable, provided that they are distinctive and capable of graphic representation. South Africa follows the Nice Classification and it is thus possible to secure protection for service marks. It is also possible to secure protection for “device” marks. This includes any visual repre - sentation of a design, container, shape or col - our. Securing protection for trade dress, prod - uct design, and packaging is largely the same. A trade mark application for the aforementioned types of marks will typically exclude the name of the product and any descriptive matter so as to ensure design elements incorporated on the product packaging/design or trade dress are protected. The Trade Marks Act 194 of 1993 makes provi - sions both for certification marks and collective marks. The standard rules and principles relat - ing to distinctiveness and graphic representation applicable to ordinary trade marks apply to certi - fication and collective marks. However, there are additional rules applicable to these trade marks, as follows. • Certification marks – the applicant may not offer the goods/services covered by the cer - tification mark. The applicant must submit a set of rules governing the use of the mark and a sworn statement that it does not offer the goods/services covered by the certification mark. • Collective marks – the applicant may offer the goods/services covered by the trade mark applications. The applicant must submit a set of rules governing the use of the mark. Notably, geographical names or other indica - tors of geographical origin may be registered as collective trade marks.
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