SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
was published in a country that is a member of the Berne Convention – the owner of the copy - right will be able to bring an infringement claim in South Africa. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants The defendant in a trade mark infringement matter could potentially file an application for a declaratory order. The circumstances and the potential defence to such application will depend on the matter and the declaratory order sought. 7.7 Small Claims In South Africa, there are a number of small claims court, which are administered by the Department of Justice and Constitutional Development. Any civil dispute can be taken to a small claims court, provided that the amount in dispute does not exceed ZAR20,000 (rough - ly USD1,100). Although this does not relate to trade mark or copyright claims in particular, an individual may approach these courts for relief. 7.8 Effect of Trade Mark and Copyright Office Decisions A decision of the Registrar will have no bear - ing on an infringement action. Civil courts have the power to review any decision or ruling of the Registrar. 7.9 Counterfeiting and Bootlegging Counterfeiting Under the terms of the Counterfeit Goods Act 37 of 1997, in order for there to be a cause of action on the basis of counterfeit goods, the following factors need to be proved by the applicant: • the applicant is the owner of copyright or a trade mark incorporated in the opponent’s
goods and there has been an infringement of the applicant’s copyright or trade mark; • the goods in question are “protected goods” – ie, goods that bear the copyright or trade mark belonging to the applicant (with their permission); and • an act of counterfeiting has taken place by the opponent, which means that the infringing goods are counterfeit goods. A useful remedy for the owner of the copyright or trade mark that is incorporated in the coun - terfeit goods is to have the goods seized and destroyed. A party can be subject to both civil and criminal liability should the party contravene the provi - sions of the Counterfeit Goods Act 37 of 1997. Bootlegging Bootlegging refers to the illegal manufacture, distribution and sale of alcoholic products. There are no special statutes dealing specifically with bootlegging. The products produced and sold as a result of these activities will fall within the ambit of the Counterfeit Goods Act 37 of 1997. As such, a party may be subject to both civil and criminal liability as referred to in “Coun - terfeiting”. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions for trade mark or copyright proceedings. Moreo - ver, there are no specialised IP courts. Copy - right and trade mark cases are adjudicated by a legal judge, as South Africa does not follow the
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