Intellectual property

Trade marks

  • Definition

Trade marks must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.  It is a brand name, a slogan or a logo.

  • Registration

Registered with the South African Registrar of Trade Marks.  A trade mark can only be protected as such and defended under the Trade Marks Act of 1993, if it is registered.  Unregistered marks can be defended in terms of the common law.  The registration procedure results in a registration certificate which has legal status, allowing the owner of the registered trade mark the exclusive right to use that mark.

  • Length of protection

Trade marks are registered for ten years but can, on application, and payment of a renewal fee, be renewed for an unlimited number of additional ten-year periods.

  • Rights of holder

The right holder is entitled to prevent unauthorised use of an identical or substantially similar mark used in the same type of industry as that in which the trademark has been registered.

  • Enforcement and remedies (Trade Marks Act 1993)

Where there has been an infringement, the High Court can:

  • grant interdicts
  • order the removal of the infringing mark or the delivery up of the products containing the mark
  • award damages

The Commission administers the Register of Trade Marks, which is the record of all the trade marks that have been formally applied for and registered in South Africa.

Patents

  • Definition

An invention is patentable when it is a product or process that is new, involves an inventive step, or a new way of doing something, or offers a new technical solution to a problem.  It must be capable of being used or applied in trade and industry or agriculture, and must not be specifically excluded from protection as a patent.

  • Registration

Registered with the South African Registrar of Patents.  South Africa is one of 142 countries that is a member of the Patent Co-operation Treaty (PCT).  This Treaty allows an individual to file an international application as well as a national application.  The international application will designate countries in which the applicant seeks protection.  Extra fees are payable for this type of registration.

  • Length of protection

A patent can last up to 20 years.  It is important to pay an annual renewal fee to keep it in force.  To maintain a patent in force a payment of a renewal fee is due every year starting from the expiring of the 3rd year from date of filing until the patent expires.  The patent expires after 20 years from the date of application.

  • Rights of holder

A holder of a patent has the right to exclude others from making, using, exercising, disposing or importing the invention.

  • Enforcement and remedies (Patents Act 1978)

The remedies available for infringement are: interdict, damages, delivery up of the infringing product.  The Commissioner of Patents or the High Court deal with disputes.

 Copyright

  • Definition

A copyright is an exclusive right granted by law for a limited period to an author, designer, etc. for his / her original work.  For a work to be eligible for copyright protection, it must be original and be reduced to material form.

  • Registration

Generally a person who has written, printed, published, performed, sculpted, painted, filmed or recorded a work, is automatically the owner of the copyright to that work.  Copyright is created by putting the words “copyright” or “copyright reserved” or “copyright ABC 2013” (i.e. copyright, followed by name and the year) or the copyright symbol, name and year e.g. (C) ABC 2013.  You can obtain copyright protection in South Africa, if you are a South African or if your work was produced in South Africa.  If you are not a South African, you can obtain copyright protection provided the country you are a national of is part of the Berne Convention.  The Berne Convention is an international agreement on copyright by which member countries grant each other copyright protection.  Copyright for films / videos made for commercial use needs to be applied for formally, by way of the following documentation, obtainable free of charge, from the Copyright Office.

  • Length of protection

The lifespan of copyright depends on the type of work protected:  The copyright of literacy works lasts for 50 years after death of the author.  The copyright of computer programs lasts for 50 years after the first copies were made available to the public.  For sound recordings, the copyright lasts for 50 years from the day the work was first broadcast.  For films, 50 years from the date the film was shown.

  • Rights of holder

Copyright affords the author the exclusive right to stop others from copying or using his work without his permission.  If somebody copies your work without your permission, this is called copyright infringement, which is a violation of author’s rights.  Author can also conclude license agreements with the users for his copyright works and enjoy royalties payment from the licensees.

  • Enforcement and remedies

Copyright Act 1978

If infringement occurs the author may sue the infringer.  it is the responsibility of the author to prove ownership and also to sue in case of infringement.

Designs

  • Definition

A registered design is generally used to protect the physical appearance of an article.  The design may be aesthetic or functional.  An aesthetic design must be new and original, and must be able to be produced by an industrial process.  Beauty is in its shape, configuration or ornamentation.  A functional design must be new and not commonplace in the art concerned.  The shape or configuration is necessitated by the function, must be able to be produced by an industrial process e.g. the design of a ring (jewellery) is generally dictated by aesthetic features.

  • Registration

Registered with the South African Registrar of Patents.  Designs for articles that are not intended to be produced in large quantities by industrial process cannot be registered.

  • Length of protection

Registered aesthetic designs are protected for 15 years.  Registered functional designs are protected for ten years.  Registered designs have to be renewed annually before the expiration of the third year, as from the date of lodgement.  To maintain a design in force a payment of a renewal fee is due every year starting from the expiring of the third year from the date of filing until the design expires.

  • Rights of holder

Registration of a design grants to the right holder the right to exclude other people from making, importing, using or disposing of any article included in the class in which the design is registered, so that the right holder enjoys all the benefits relating to the design.

  • Enforcement and remedies

Design Act 1993

If a design right is infringed, a right holder can seek an interdict, delivery up of the infringing product, damages or a reasonable royalty.