SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
The proprietor is merely required to prove that there has been bona fide use of a trade mark. It is not necessary to prove use on a substantial scale; the main consideration is that the use of the mark by the proprietor is to further its trade as opposed to frustrating the trade of others. In this regard, it is imperative that the use relied on is trade mark use and not descriptive use. 2.5 Notices and Symbols There are two symbols that are used with trade marks – namely, TM (in superscript) and ®. The owner of a mark may use the superscript TM symbol as soon as the trade mark is being used in trade and as a trade mark. Importantly, the ® symbol may only be used once the trade mark has proceeded to final registration. Using the ® symbol before the trade mark has proceeded to registration amounts to a criminal offence in terms of Section 62 of the Trade Marks Act 194 of 1993. There are no consequences for not providing notice of trade mark ownership. However, it is advisable to always use the superscript TM symbol or ®, as these serve as a deterrent to potential infringers. 2.6 Related Rights In the case of a device mark, there may be an overlap between trade mark law and copyright law as well as design law. Copyright vests in the artistic work in the case of a logo and there may be an aesthetic or functional design for a particular article. By way of example, in the case of a unique bottle with a logo on it that has a par - ticular function as a result of its shape, a trade mark application can be filed for the shape of the bottle, copyright may vest in the logo, and a functional design can be filed for the unique shape of the bottle.
If a surname is registered as a trade mark, the surname is protected as a source identifier in relation to the given goods/services. The trade marks registry will, however, require a so-called surname endorsement so that a person with the surname will not be debarred from the bone fide use of the surname in the course of trade. Mor - al rights in a copyright context will protect the author of a work’s right to integrity and paternity. As such, the respective rights simply co-exist. There are no limitations on the scope of trade mark laws in view of the related rights that may exist in a single trade mark. Each form of IP ulti - mately co-exists as a bundle of separate rights vested in the same device/article. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works In South Africa, there are nine types of works that are eligible for copyright protection – name - ly, literary works, musical works, artistic works, cinematograph films, sound recordings, broad - casts, programme-carrying signals, published editions, and computer programs. The afore - mentioned works are provided for in Section 1 of the Copyright Act 98 of 1978. Copyright Protection and Industrial Designs An industrial design is an artistic work and will qualify for copyright protection, provided the requirements for the subsistence of copyright have been met. It is important to note that copy - right will vest in the industrial design and may not extend to the actual product that is developed from the design if it falls within the “reverse engi - neering” exception. In this regard, in terms of Section 15(3A) of the Copyright Act 98 of 1978, protection will not extend to the reproduction of
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