SOUTH AFRICA Law and Practice Contributed by: Roberto Barreiro, André du Plessis, Sarah Suleman and Shaawn Phooko, KISCH IP
Grounds to Oppose Injunctions A trade mark or copyright defendant may oppose a preliminary injunction in the following ways: • trade mark – by proving consent, by pleading honest concurrent use, and/or proving the goods are parallel imports; and • copyright – by pleading the conceptualisa - tion of the offending work and how it was not sourced from the protected work. 10.2 Monetary Remedies In trade mark and copyright matters, a party can be awarded actual damages or special dam - ages. Where actual damages are awarded, the parties must embark on a damage-determining exercise, which is usually through further litiga - tion to recover the actual damages. As regards special damages, these normally have to be proven (by way of documentary evidence) dur - ing litigation in order to persuade the court to grant them. With regard to trade marks, damages can be calculated by assessing what monies authorised licensees have paid to the trade mark proprietor for use of the mark for a certain duration. The authorised licensees can then claim the equiva - lent of that amount from the offending party. South Africa’s trade mark law and copyright law do not provide for statutory damages. 10.3 Attorneys’ Fees and Costs In South Africa, costs normally follow the out - come of the matter. Both parties to litigation are responsible for all the litigation costs that are incurred on their part. However, they are both permitted to request the court for costs in their founding papers in order to be able to recover a portion of their legal fees upon finalisation of the order.
Once a court order in favour of one of the litigants is issued, the prevailing party is then placed in a position where a bill of costs can be drawn by a costs consultant (which will include attorney’s fees, counsel fees, and disbursements) in order to have the costs taxed before a taxing master. The taxing master will assess the bill of costs and make a final decision on how much the los - ing party should pay towards the other party’s fees. 10.4 Ex Parte Relief The South African law follows the principle of audi alteram partem – meaning “let both parties be heard”. For this reason, where a proprietor seeks relief in respect of their trade marks or vopyright, notice of such proceedings must be given to the opposing party in order for them to exercise their right of whether to defend the matter or not. Where the defendant elects not to defend the matter, then the plaintiff can pro - ceed to obtain the desired relief on an unop - posed basis. 10.5 Customs Seizures of Counterfeits or Parallel Imports Parallel imports in South Africa are permitted and therefore customs seizure is not applicable. As regards counterfeits, there are measures in places (ie, customs seizure) to combat coun - terfeit products. To succeed in this approach, one needs to have a registered and valid trade mark with customs. Once this is done, the rel - evant authorities can be alerted (upon obtaining a court order), so as to conduct a search and seizure of the infringing goods or detail goods coming in at customs.
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