SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Both copyright in a work and trade marks can be assigned. The requirements for the assignment of these works are as follows. • Copyright – a written deed of assignment must be entered into and be signed by the assignor. This agreement must clearly outline the intention of the assignor to transfer the copyright and the assignee to receive own - ership thereof. The agreement must clearly identify the work that is being assigned. It is possible to partially assign copyright in a work – for instance, the owner of the copy - right may assign part of their rights to the assignee, thereby providing the assignee the right to conduct some but not all of the restricted acts in respect of the work. • Trade marks – a written deed of assignment must be entered into and signed by both the assignor and assignee. This agreement must include an effective date. Both pending appli - cations as well as registered trade marks may be assigned. It is possible to partially assign a trade mark in the sense that the assignor only assigns certain goods/services covered by the trade mark to the assignee. Importantly, a trade mark cannot be assigned if – as a result of the assignment – the use of the trade mark by different persons would give rise to a likeli - hood of deception or confusion. Moreover, all trade marks that are associated with each other must be assigned together. Transfer of Copyright and Trade Marks Upon Death Copyright and trade marks can be transferred to a third party upon death of the owner of the aforementioned IP. This occurs by way of
evidence/information upon which the Registrar’s decision was made. In appealing against a decision of the Registrar, no leave to appeal is necessary, the appeal must be noted within three months of the date of the decision/order by the Registrar, and the appeal must be prosecuted within six weeks from the date on which it was noted. 5.6 Amendment in Revocation/ Cancellation Proceedings Trade mark revocation/cancellation proceedings are based on the state of the register at the time at which the proceedings were instituted. How - ever, the trade mark may be amended should the parties reach an agreement to the effect during proceedings. 5.7 Combining Revocation/Cancellation and Infringement In the event that there are actions for revocation/ cancellation as well as trade mark infringement, the revocation/cancellation application will be heard first. The infringement application will be stayed pending the outcome of the revocation/ cancellation application. 5.8 Measures to Address Fraud There are no special procedures to revoke/cancel trade marks that were filed fraudulently. Should a mark be filed fraudulently, an interested third party may seek to oppose it once it is advertised in the Patent Journal. Alternatively, if the mark were to proceed to registration, an interested party may initiate cancellation proceedings on the basis that it is an entry wrongly made and wrongly remaining on the register. For both the opposition and cancellation proceedings, the underlying basis for the applications will be that the applicant/proprietor has no bona fide claim to proprietorship in respect of the mark.
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