SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
• Company name dispute – if a third party has registered a company name that incorporates an individual’s trade mark, a company name dispute may be lodged with the Companies Tribunal. This is done under the terms of the
Furthermore, the proprietor must give notice in writing of their intention to institute infringe - ment proceedings to every registered user recorded on the register. • Copyright – the main prerequisite for institut - ing copyright infringement proceedings is that the applicant must be the holder of copyright in the work in question and be able to prove such ownership. It is standard practice that a formal letter of demand is sent to the infringer before proceedings are commenced, but there is no technical requirement to do so. There are no statutory restrictions on trade mark owners or copyright owners asserting their rights against others. However, any issues relating to the proceedings can be dealt with in the pro - ceedings themselves. 7.5 Lawsuit Procedure Trade mark or copyright infringement proceed - ings can be instituted in any High Court in South Africa that has jurisdiction. In the event that a party elects to use legal rep - resentation in any trade mark or copyright pro - ceedings, then the usual attorneys costs will fol - low. However, parties in trade mark or copyright litigation do not need to be represented by a lawyer. Foreign trade mark and copyright owners may bring infringement claims in South Africa. For trade marks, the proprietor of the mark will need to have a registered trade mark in South Africa – the only exception being famous/well-known trade marks. As far as copyright is concerned, as long as the requirements for the subsistence of copyright are met (see 3.2 Essential Elements of Copy- right Protection ) – in particular, that the work
Companies Act 71 of 2008. Alternative Copyright Claims
The following alternative claims can be brought by a copyright owner or by a person performing a literary or artistic work. • Authors’ moral rights – see discussion in 3.4 Copyright Rights . • Performers’ protection – this applies to the performances or renditions of literary or other works that are protected. A performer’s right in the rendition of a work is infringed when a person broadcasts or reproduces the perfor - mance without consent of the performer. This is provided for by the Performers’ Protection Act 11 of 1967. Copyright management information is not included in the Copyright Act 98 of 1978. 7.3 Factors in Determining Infringement Please refer to the discussion in 7.2 Legal Claims for Infringement Lawsuits and Their Standards . 7.4 Prerequisites and Restrictions to Filing a Lawsuit The prerequisites for filing trade mark or copy - right lawsuits are as follows. • Trade marks – the main prerequisite for insti - tuting trade mark infringement proceedings is that the applicant must have a registered trade mark. It is standard practice that a formal letter of demand is sent to the infringer before proceedings are commenced, but there is no technical requirement to do so.
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