SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Section 43(2) of the Trade Marks Act 194 of 1993 set out the available defences to a claim of trade mark infringement, which are: • the bone fide use by a person of their own name, the name of their place of business, the name of any of their predecessors in busi - ness or the name of any such predecessor’s place of business; • the use by any person in a bona fide descrip - tive manner; • the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories and such services; • the importation into or the distribution, sale or offering for sale in the Republic of South Africa of goods to which the trade mark has been applied by or with the consent of the proprietor thereof; • the bona fide use by any person of any utilitarian features embodied in a container, shape, configuration, colour or pattern that is registered as a trade mark; • the use of the trade mark outside the limita- tions in respect of which it has been regis - tered; and • the use of any identical or confusingly similar trade mark that is registered. The above-mentioned defences are absolute defences to a claim of trade mark infringement. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The Copyright Act 98 of 1978 makes the statuto - ry provision that a copyright will not be infringed
jury system nor does it have “technical judges” – instead, expert witnesses may be called in to provide a judge with a better understanding of a highly technical aspect of a matter. Parties to a matter have no influence on who the judge for a particular matter will be. 8.2 Effect of Registration Please refer to 4.1 Trade Mark Registration for the benefits of a trade mark registration. If an infringer uses a mark in relation to the same goods/services as those included in the specifi - cation of the registered trade mark, it eases the evidentiary burden of the plaintiff as they do not need to prove that the goods/services are simi - lar. That said, if the infringer is using the mark in relation to goods/services that are not included in the specification, the plaintiff will still be able to institute infringement proceedings – provid - ed that the plaintiff can prove that the infringers goods/services are sufficiently similar to those of the plaintiff so as to result in confusion among consumers. 8.3 Costs of Litigating Infringement Actions Please refer to 4.1 Trade Mark Registration for the benefits of a trade mark registration. Costs are very difficult to estimate, as contentious mat - ters are charged on a professional time basis and will depend on the complexity of the matter, what steps are necessary, the amount of evi - dence involved in the matter, and how vigorously the other side pursues/defends the proceedings. Counsel (ie, barrister) costs are dependent upon the level/experience of legal counsel briefed on the matter and the stage of the proceedings when counsel is brought in, as well as how involved counsel will be in the matter.
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