SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
In both action and motion proceedings, there is an opportunity to introduce new evidence through the filing of further pleas or affidavits (respectfully) before pleadings close. After pleadings have closed, but before judgment, new evidence or arguments may be introduced with leave of the court. This mostly occurs when new evidence has come to light after the plead- ing is closed and will have a material bearing on the outcome of the matter. 2.12 Representative or Collective Action The South African legal system permits repre- sentative or collective actions (such as class actions). The right to bring a class action is derived from Section 38(c) of the Constitution of South Africa, which allows individuals or groups to approach the courts on behalf of a class when rights are allegedly infringed. Class actions in intellectual property law typi- cally arise in cases involving the infringement of intellectual property rights that affect a group of people. The plaintiffs must define the group (class) clearly, and the members of the class should have a common legal or factual issue concerning the intellectual property matter. There must be common questions of law or fact that predominate over individual issues, and the proposed class action must be certified by the court before proceeding. Certification requires: • demonstrating the existence of a class; • demonstrating the commonality of legal or factual issues; • demonstrating that a class action is the most appropriate means to resolve the dispute; • the representative(s) of the class to adequate- ly and fairly represent the interests of all class members, and to have a direct interest in the
matter and sufficient resources to conduct the litigation effectively; and • the court to be satisfied that instituting a col- lective action is in the interests of justice. Factors considered include the significance of the rights involved, the scale of the harm and the practicality of individual litigation. The mat- ter must be within the jurisdiction of the court in which the action is brought. Procedural rules, including the filing of a class action notice and the provision of sufficient information about the class and the claims, must be followed, and the relief sought must be capable of addressing the harm suffered by the class as a whole (eg, dam- ages, declaratory relief or injunctions). 2.13 Restrictions on Assertion of an Intellectual Property Right There are several restrictions on the assertion of intellectual property rights by the owner. These mainly include exhaustion of rights, Bolar pro- visions, the nine-month moratorium on institut- ing patent infringement proceedings and the abuse of the intellectual property rights. Except for copyright, the abuse of intellectual property rights may lead to the granting of a compul- sory licence. Typical abuse conditions include, amongst others, the refusal to grant a licence on reasonable terms or, if the invention is not being worked in the Republic, the lack of an adequate supply thereof. There are also restrictions on enforcing design and patent rights if the regis- tered design number or patent number has not been communicated on request. Furthermore, there is a restriction on copyright and designs for the creation of spare parts that primarily have a utilitarian function. With patents, a further provision is given in the relevant Act preventing certain contractual agreements from occurring, such as – but not limited to – prevent-
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