SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
law. However, there are specific defences pro - vided for in the Trade Marks Act 194 of 1993 and the Copyright Act 98 of 1978, which are outlined in 9. Defences and Exceptions to Infringement . 7.2 Legal Claims for Infringement Lawsuits and Their Standards Legal Claims for Infringement Lawsuits Trade marks The proprietor of a registered trade mark may institute infringement proceedings on the basis that a third party is: • using the same or similar trade mark in rela - tion to identical goods/services; • using the same or similar trade mark in rela - tion to similar goods/services; and • using a similar mark that may result in a dilu - tion of the registered trade mark. In order to institute trade mark infringement pro - ceedings, the applicant must have a registered trade mark. As such, it is not possible to insti - tute infringement proceedings on the basis of a pending application. Copyright A copyright owner may institute infringement proceedings on the following bases: • another person does/performs one of the restricted acts forming part of the copyright owner’s monopoly (ie, reproducing or adapt - ing it) without the copyright owner’s permis - sion (direct infringement); and • a person deals in infringing articles or per - mits a place of public entertainment to be used for performance of a work that infringes the copyright in a protected work (indirect infringement).
Copyright cannot be registered, with the excep - tion of cinematograph films as discussed in 3.7 Copyright Registration and 3.8 Copyright Application Requirements . For infringement proceedings involving a cinematograph film that is registered, the plaintiff will not be required to prove that copyright subsists in that work and it is presumed that the infringer has performed the infringing act without the authority of the copy - right owner. Proving Trade Mark and Copyright See the factors discussed in “Legal Claims for Infringement Lawsuits”, as this outlines what constitutes trade mark infringement. The ele - ments that must be proven to establish infringe - ment are as follows: Infringement Trade marks • Section 34(1)(a) and (b) of the Trade Marks Act – the unauthorised use, in the course of trade, of a trade mark that is identical or confusingly similar to a registered trade mark in connection with the same (Section 34(1)(a)) or similar (Section 34(1)(b)) goods/services as those covered by the registered trade mark; and • Section 34(1)(c) of the Trade Marks Act – the unauthorised use, in the course of trade, in relation to any goods/services of a trade mark that is identical or confusingly similar to a registered trade mark (which is well-known in South Africa) in such a way that the use of the mark would take unfair advantage of or be detrimental to the distinctive character or repute of the registered trade mark notwith - standing the absence of deception or confu - sion. In addition to the above-mentioned factors, Section 35 of the Trade Marks Act 194 of 1993
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