SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
6.3 Registration or Recording of an Assignment or Licence Trade Marks An assignment of a trade mark must be recorded on the Trade Marks Register. If not, the trade mark may become vulnerable to expungement, as the person/entity listed as the proprietor of the mark on the register is not the true owner of the mark. There are no particular risks that arise from the gap between an assignment taking place and its recordal on the register, provided the application to record the assignment has been submitted to the Trade Marks Office. Licences may be recorded on the Trade Marks Register. However, it is not compulsory to do so. Copyright In South Africa, there is no Copyright Register as such. The exception being registered cinemato - graph films. In this regard, the assignment or licence of a cinematograph film can be recorded on the register. It is not compulsory to record the assignment or licence. Failure to do so will not affect the validity of either agreement. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits There are no specific timeframes within which a trade mark or copyright infringement action can be instituted. South African courts have held that the defence of laches does not form part of South African
a transmission of rights. The trade marks and copyright form part of the deceased proprietor’s estate and, when the assets are transferred to the heirs, the trade marks and copyright will
pass to the heirs by operation of law. 6.2 Licensing Requirements or Restrictions
A licence agreement for trade marks and copy - right may be verbal, in writing, tacit, or inferred from conduct. The exception to this rule is an exclusive licence granted for copyright, which must be in writing and signed by or on behalf of the licensor under the terms of Section 22 of the Copyright Act 98 of 1978. Types of Licences The owner of a trade mark may grant a third party the following types of licences: • non-exclusive licence – the licensor retains the licensed rights without any restrictions but also provides the licensee with these rights; • sole licence – the licensor retains the licensed rights with certain restrictions and extends the rights to the licensee; and • exclusive licence – the licensor is prevented from exercising the licensed rights and the licensee is the only person authorised to exercise the licensed rights. The duration of the licence is completely up to the licensor and licensee respectively. As such, licences can be perpetual, provided the trade mark or copyright is valid. Trade mark applications cannot be licensed.
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