INTELLECTUAL PROPERTY LAW NOTES

UNIT 2 → COPYRIGHT ________________________________________________________________________ 2

2.1 → BASICS OF COPYRIGHT PROTECTION _________________________________________________________ 2
INTRODUCTION ___________________________________________________________________________________________ 2
DESCRIPTION OF COPYRIGHT ___________________________________________________________________________ 2
LEGISLATIVE FRAMEWORK ______________________________________________________________________________ 2
PROTECTABLE SUBJECT MATTER ____________________________________________________________________________ 4
REQUIREMENTS FOR SUBSITENCE OF COPYRIGHT___________________________________________________________ 9
COPYRIGHT IN COMPUTER PROGRAMS ____________________________________________________________________ 14
2.2 → MAIN RIGHTS GRANTED BY COPYRIGHT ______________________________________________________ 21
2.3 → COPYRIGHT ACQUISITION AND TRANSFER ___________________________________________________ 29
2.4 → COPYRIGHT INFRINGEMENT, REMEDIES AND DEFENCE ______________________________________ 38
2.6 → BASICS OF COPYRIGHT PROTECTION ________________________________________________________ 56
UNIT 4 → TRADE MARKS _____________________________________________________________________ 57
4.1 → INTRODUCTION TO TRADE MARK LAW _______________________________________________________ 57
NATURE AND ESSENCE OF A TRADE MARK _________________________________________________________________ 69
4.2 → REQUIREMENTS FOR TRADEMARK PROTECTION AND REGISTRABILITY ________________________ 82
4.3 → GROUNDS FOR REFUSAL AND OPPOSITION OF TRADE MARK REGISTRATION __________________ 98
1.4 → TRADE MARKS: RIGHTS, INFRINGEMENT AND REMEDIES _________________________________ 100
4.5 → DEFENCES TO TRADE MARK INFRINGEMENT ________________________________________________ 120
4.6 → TRADE MARKS IN THE DIGITAL ENVIRONMENT ______________________________________________ 125
PASSING OFF ___________________________________________________________________________________ 126
ANTI-COUNTERFEITING _________________________________________________________________________ 133
UNLAWFUL COMPETITION _______________________________________________________________________ 142
UNIT 2 → COPYRIGHT
2.1 → BASICS OF COPYRIGHT PROTECTION
INTRODUCTION
DESCRIPTION OF COPYRIGHT
• ‘Intellectual property’ → umbrella term = encompasses all types of products of human intellect
• IP protected by various forms of rights → copyright is one
• Copyright = only form of IP right provided for by statute which is unregistrable
o Doesn’t have registration as requirement for subsistence
• Copyright subsists automatically in specified categories of works, provided certain conditions
met
‘Copyright’ • Species of the genus of IP
→ grants owner of right exclusive statutory rights, limited in duration, in the
rendering or performance of certain dealings or acts in relation to specified
work
o And the right to prevent others from performing those acts
A bundle of exclusive rights over specified categories of works which meet
specified perquisites.
• The rights are granted in exclusivity which means that no one outside the
rights holder may exercise such rights unless otherwise authorized by the
rights holder. Exclusivity leads to exploitation for revenue.
• Rights are also limited in duration meaning that at expiration...
• No formalities for protection but remember the Registration of Copyright in
Cinematograph Films Act 62 of 1977 and its eRect/purpose.
• But rights are not absolute and there are exceptions and limitations.
Rationale behind • ARord owner opportunity, during duration of right, to exploit & profit from
copyright protected work = providing motivation for further innovation or creativity
• Essence of copyright is the nature of the subject matter which subsists → works eligible for
copyright
• Works protected against unauthorised copying and dealings by 3rd parties
LEGISLATIVE FRAMEWORK
• Copyright = creature of statute
• Regulated by Copyright Act 98 of 1978 + regulations under the Act
o Came into force 1 Jan 1979
o Deals w/ all matters pertaining to copyright (conventional and digital formats)
o Applies to works created after commencement & enforcement of copyright in works
created before
• Copyright Act of 1916 → subsistence, duration and ownership of works before 1979
• Amended by Intellectual Property Laws Amendment (2013) → has not been brought into
operation
o Amendments
o Introduce protection for traditional works (species of immaterial property known as
traditional knowledge)
o Problematic bc nature of traditional knowledge = not compatible w/ basic principles of
copyright
o Creates new category of work eligible for copyright – governed by special provisions
o Create sui generis segment of law – have little bearing on main body of copyright law
• CRA applies to all works created/ came into existence after commencement and to enforcement of
CR in works made prior to 1979
• Subsistence, duration and ownership of CR in work made before 1979 = determined by the Act in
force at the time when the work was made but continued protection is provided for in 1978 Act
Hear the lion roar
• ‘The Lion Sleeps Tonight’
• Various versions performed by various artists
• Song as a musical work = litigation
• Heirs of writer claiming recompense for use and exploitation after his death
• Under 1911 British Copyright Act through the SA 1916 CR Act
• Ownership of the copyright in 'Mbube' would revert back to and vest in Linda's estate 25 years after
his death, namely in 1987.
• Since The Lion Sleeps Tonight' was derived or adapted from 'Mbube', the permission of the
copyright owner in 'Mbube' was necessary for lawful use to be made of it.
• The Executor of Linda's estate instituted copyright infringement proceedings against Disney
Enterprises in South Africa.
• Case demonstrated that provisions of the 1916 Copyright Act dealing with the ownership and
subsistence of copyright in a work made during its currency continued to operate under the 1978
Act notwithstanding the fact that the 1916 Act had long since been repealed and replaced by
subsequent legislation which did not contain the relevant provision
• Subsistence & enforcement of CR in SA by work made by SA citizen or resident is clear

SA CR owner becomes aware of unauthorised use in another country

Copyright law operates territorially

without the principle of ‘national treatment’, the Copyright Act does not apply outside SA

• ‘National treatment’ → rights of foreigners and local subjects treated equally under local law
o Promises foreign CR owners that their works enjoy the same treatment as the protecting
country gives to the works of its own nationals
o Treated as if local works
• Cannot invoke provisions of home country’s CR law in local environment
→ Granting of reciprocal rights btwn countries where each country aRords subjects of other countries
the same rights as it grants its own in exchange for other country’s granting its nationals and resident
the same protection enjoyed by its subjects

• National treatment regulated by Berne Convention

• Not addressed in detail in S 37 CRA but under Regulations
• CRA apply to works of foreign nationals of member countries of Berne Convention = render foreign
nationals from countries qualified persons (qualifying condition for an author for subsistence)
o 1st publication in Berne country = first publication in SA (condition for subsistence)
• SA = signatory to Berne Convention → SA nationals entitled to same protection as domestic works
in Berne Convention countries
• TRIPS Agreement → SA member = provisions to same eRect
• Also apply the principle of national treatment
• SA adheres to agreement automatically bc of membership of the WTO
International law • The Berne Convention
instruments • The WIPO Copyright Treaty (or WCT)
• The Agreement relating to trade-related aspects of intellectual property
(TRIPS agreement)
PROTECTABLE SUBJECT MATTER
WHAT CONSTITUTES WORK
‘work’
To be a ‘work’ → subject matter must be of su\icient substance to
reasonably justify being attributed a form of exclusivity

Be of such a nature that endowing the subject matter with a limited monopoly
will not unduly restrict others

CR law only grants exclusive rights with respect to certain specified types
of works

• Outside those specified categories, no other subject matter is eligible for

copyright protection.
• In seeking protection for any subject matter, one must be able to ‘fit’ such
subject matter into a specific protected category.
• No overlap btwn types of work
• Separate aspects may fall under diR types
o Song consists of words and music = literary work iro the lyrics and
musical work iro the melody
Can a single word or title constitute a work
• the title of a song called The Man Who Broke the Bank At Monte Carlo'
was too insubstantial to warrant copyright protection
• same is likely to apply to the titles of movies, books
• protection of a name may be achieved in certain circumstances by its
registration as a trade mark

Whether specific subject matter is of su\icient substance

Waylite
• ‘Field diaries’ diaries, which essentially set out the days of the week in both
Afrikaans and English with horizontal lines provided for making written
entries, are too commonplace to render them either an artistic or a literary
work

Whether certain subject matter = work is an objective test in which courts

exercise a value judgment on whether the material in which CR claimed is of a
su\icient substance or not too trivial to merit protection

Once established = work

→ determine whether so commonplace nature that it doesn’t attract CR

Specified subject matter that are works

• Not in category of protected works = not a work = no copyright protection/
copyright doesn’t subsist in that work
• If one of category = go to next step (original, fixed in material form,
authored)

S 2(2) CRA works must also exist in a material form

Categories of 1. Literary work – novel, textbook, journal article
protected works → combination of letters/numerals/symbols which embody result of eRort
S 2(1) CRA or skill emanating from creator of the work
→ CR can exist in includes, irrespective of literary quality or merit and in whatever mode
categories provided or form expressed ...
they are original & (a) Novels, stories, poetical works
comply w/ req (b) Treatises
(c) Dictionaries
(d) Letters, reports, memoranda
(e) Tables and compilations, including that of data stored or embodied in
computer or medium used in conjunction but shall not include a computer
program
o ‘includes’ = not a closed list
o Qualify irrespective of their literary quality or merits
o Mere mundane combinations of words conveying the outcome of
intellectual activity may thus qualify for this class.
o In whatever form expressed
o Expressed online/ in electronic formats = qualify for protection
o Includes dramatic works
o directions reduced to writing to be enacted on stage and so forth
o Tables & compilations → broad enough to include hard copy & electronic
databases
o Uncommon examples: compilation of business forms; parts numbering
code; catalogues, price lists, identifying code systems relating to gaskets;
database structures, questions compilations, rules of a game, formula
using symbols & numbers
o Databases, database structures, questions compilations → Haupt t/a Soft
Company

2. Artistic work – photograph

Means irrespective of the artistic quality thereof –
(a) paintings, sculptures, drawings, engravings and photographs;
(b) works of architecture, being either buildings or models of buildings;
(c) works of craftmanship not falling within either paragraph (a) or (b).
o Closed list
o Need not be a masterpiece or have any aesthetic appeal
o Mundane graphic or pictorial nature can be artistic work
o 'photograph' means any product of photography or of any process
analogous to photography, but does not include any part of a
cinematograph film
o Models of buildings → 3D works classifiable as artistic works
o Works of craftmanship → furniture, machinery, kitchen appliances
o Business logo could qualify as both an artistic work and a trade mark →
Catgraphics CC
o can give rise to an anomaly where, for instance, person X briefs
person Y (e.g. a graphic designer) to design a logo for him to use for
his commercial undertaking. X would generally be the proprietor of
any trade mark that is registered, while Y would probably be the
owner of the copyright in the artistic work
o Held to include: include architectural drawings; engineering drawings
(Klep Valves); furniture in the form of a lounge suite; a fabric pattern
 reproduced on fabric for sale; a map of the Kruger National Park including
roads and points of interest; and pottery

3. Cinematograph film – movie, music video

means any fixation or storage by any means whatsoever on film or any
other material of data, signals or a sequence of images capable, when
used in conjunction with any other mechanical, electronic or other
device, of being seen as a moving picture and of reproduction, and
includes the sounds embodied in a sound-track associated with the
film, but shall not include a computer program.
o encompasses recorded television programmes, computer games, filmed
advertisements, documentary films and even informal video sequences
recorded with a video camera or a smartphone.
o Includes video games → Nintendo Co Ltd
• Definitions are to be interpreted flexibly to cover new tech rather
than narrowly (legislature update Act continuously)
• Images are variable in video games
• There must be (1) sequence of images (2) fixed on film or another
material (3) visible as moving picture
o Music videos; documentary films; YouTube videos; TikTok videos; meme
videos etc.
o Soundtrack of movies is protected as part of the cinematograph film so that
if one were to use a sound recording as the soundtrack of a movie, the
sound recording within the film is protected as part of the film
o Medium on which image stored or fixed not limited to celluloid film =
includes tapes, discs, chips, digital storage
o cinematograph films can embody all/some the categories of protected
subject matter
o For example, the script or screenplay for a movie would be protected as a
literary work; the sound recording as distinct from the movie itself would
enjoy protection as a sound recording while the movie itself would be
protected as a cinematograph film.
o Not computer program = images to be seen or shown as a moving picture,
as distinct from the stored images that such programs process

4. Musical work – musical composition: music sheets and musical notation

means a work consisting of music, exclusive of any words or action
intended to be sung, spoken or performed with the music
o ‘means’ = exhaustive list
→ Actual music or melody capable of being fixed in some medium such as
music notation or in a recording
o Work must be capable of representing aurally perceptible music
o Lyrics are not a musical work or part of one = separate literary work
o the actual music or melody performed by means of music instruments is
protected
o authored by composers/songwriters
o diRerent from performing/recording artists
5. Sound recording – music soundtracks (ie songs)
→ actual recording made on tape or other recording medium of sounds, or
data representing sounds
means any fixation or storage of sounds, or data or signals representing
sounds, capable of being reproduced, but does not include a sound-
track associated with a cinematograph film
o Exhaustive list
o Not limited to music/songs on CDS or recordables tapes
o DiRer from musical works – can embody a musical work but they are 2
distinct works
o Spoken word/poem albums
o A musical work may feature as part of, or on, a sound recording, but the
musical work is an entirely separate work.
o A sound track associated with a cinematograph film is protected as part of
the film, rather than as a separate sound recording.
o Sound track: embodiment of sounds together w/ visual images on
the material of the film
o Tapes, discs on which music recorded for later embodiment in film =
sound recording
o Sound recordings include sounds stored on devices such as records,
CDs, DVDs, hard drives, flash drives capable of rendering sound
audibly
o Nature of physical medium stored and how reproduced is irrelevant

6. Broadcast – tv broadcast, radio broadcast

when used as a noun, means a telecommunication service of
transmissions consisting of sounds, images, signs or signals which-
(a) takes place by means of electromagnetic waves of frequencies of
lower than 3000 GHz transmitted in space without an artificial
conductor; and
(b) is intended for reception by the public or sections of the public, and
includes the emitting of programme-carrying signals to a satellite, and,
when used as a verb, shall be construed accordingly.
o Broadcast consists of the signals carrying visual and audio content so
includes both radio and television broadcast where the signals are issued
by a broadcaster’s transmitter
o Can embody musical works; sound recording or cinematograph film

7. Computer programs – distinct category in SA

means a set of instructions fixed or stored in any manner and which,
when used directly or indirectly in a computer, directs its operation to
bring about a result
o Expressed in programming languages – Java = communicate instructions to
a machine/ express algorithms
o The set of instructions that actually brings about a result when used in a
computer are the subject of protection
o programming language is used to create a text listing of commands to be
compiled or assembled into an executable computer program known as a
source code.
o The source code is the 'set of instructions' = subject matter in which
copyright subsists
o Only the final stage of the development process of a computer program
constitutes a 'computer program, that is when the work reaches the stage
where it can actually drive a computer.
o Works made during the development process giving rise to the source code,
such as literary or artistic works, may be protectable as such, separate and
distinct from the computer program in its final form.

Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd

• Various works consisting of codes containing sets of instructions which
directed operations of computers to bring about results were computer
programs
• Rejected that database structures used in conjunction w/ computer
programs are computer programs
• Database structures didn’t consist of sets of instructions but rather a table
w/ certain number of columns = literary works
• Distinguished btwn computer-generated and computer assisted works:
work only qualifies as computer generated if created by computer in
circumstances where no human author of the work
• If there is a human author = computer assisted and not computer
generated

8. Published edition – does not protect contents of book but typographical

layout (design, how its bound, photos)
→ edited and formatted version in which publishers have reorganised raw
literary or musical content in preparing it for publication.
means the first print by whatever process of a particular typographical
arrangement of a literary or musical work
o Only deals w/ literary or musical works
o Separate from the literary or musical contents
o Limited to the specific typographical arrangements in which the pre-existing
contents is organized
o Layouts that is protected instead of intellectual content embodied therein
o literary or musical works in which copyright no longer subsists (in the public
domain) may (to a limited degree) be the subject of copyright protection,
more particularly in the specific layout which a publisher has given to it.

9. Programme carrying signal

signal embodying program which is emitted and passes through a satellite
A programme-carrying signal consists essentially of the down-leg of a
transmission (e.g. a broadcast) which has been relayed by a satellite.

= if fall into one of these categories = you have a work that can be the subject of
CR protection

• DiR CR issues arise depending on category of subject matter

• DiR considerations apply to diR categories of predictable subject matter
• Duration is aRected by type of work
PlaintiR would need to show the exact work that has been infringed
REQUIREMENTS FOR SUBSITENCE OF COPYRIGHT
‘copyright’ Bundle of exclusive rights that law grants to author of a work
And has aspects of limitations and exceptions
NO FORMALITIES → no formalities prescribed for subsistence of copyright

• In line w/ Berne Convention

• CR is the only intellectual property provided for by statute that doesn’t
require some form of registration to come into being
• CR law doesn’t make provision for any process of registration of copyright
(except for cinematograph films)
• Some countries make provision for some form of registration but generally
not a formality for subsistence – facility for providing proof
CR comes into existence automatically upon compliance w/ certain
requirements/conditions stipulated in the Act
Subsistence of For copyright to exist there must be:
copyright 1. An original work
2. Fixed in material form
3. Authored by qualified person or be first published in SA/Berne Convention
Country
+
Exclusive rights (economic & moral rights)
Assuming that subject matter qualifies as a 'work, its creation must be tested against the requirement
of originality in order to determine whether it is eligible for copyright.
ORIGINALITY S 2(1) CRA
A work must be original in order to enjoy protection
• ‘Original’ – not defined in CRA

Refer to case law

Klep Valves- originality does not mean inventive or new rather the work must
have been made, created or brought about by the author’s own independent
skill and eRorts.
= should be the product of one's own endeavours and that it should not have
been copied from another source
• 'original skill or labour in execution', and further that the work in respect
of which copyright is claimed should emanate from the author himself
and not be copied
• drew a clear distinction between works that are truly original creations
and works that are not truly original because there were similar, pre-
existing works of which the author was aware
o pre-existing: do more than just claim their work is original; they
must show how it diRers from existing works and prove their own
contribution.

Waylite Diaries CC - a result which is not merely common place; have a

quality of individuality
• AD : While it is true that the actual time and eRort extended by the
author is a material factor to consider in determining originality, it
remains a value judgement whether that time and eRort produces
something original.
 Common element in case law defs: doesn’t have to new/never seen before
• works which are inventive or new would normally be deemed to be original

→ work must not have been taken or copied from a prior work of another
person, but rather it must have been made, created or brought about by the
author's own independent skill and eRort

• Author has put in independent skill and eRort (sweat of the brow)
• Not a high threshold
• Factual enquiry and evi to support this must be adduced = court decides
from facts placed before it
• Derived from, pre-existing material, but nevertheless include new material,
they can be partially original
• Author's labours and endeavours must firstly produce a work and be shown
that those labours actually produced something of some substance,
viewed objectively
• Then author's independent contribution (his own eRort) on a subjective
basis must be assessed
• If there has been suRicient own eRort, copyright will subsist in the work.
• In the case of a work that is partially original, the author's copyright will
reside in those parts of the work which he is able to show are his own
creation
• Existing material is relied on in the creation of a new work, the use of such
material must be authorised or else the author of the new work may himself
infringe the copyright in the existing work

• A work which embodies existing works (or parts thereof), but which itself
contains original matter, is referred to as a 'derivative work’
Klep Valves and Waylite Diaries
→ derivative work = 'original skill and labour expended should result in a work
with a quality of individuality suRicient to distinguish the new work from the
pre-existing work (or that which is merely commonplace)
• draughtsmen in Klep Valves 'modified an existing design' to achieve
'substantial diRerences' between the drawings there in issue and the
earlier versions of those drawings
• copyright in 'his' work resided in that which was new about the relevant
drawings when compared to the pre-existing drawings
Moneyweb (Pty) Limited
It was possible to achieve originality even where the author of a work made use
of existing material, provided that the time and eRort spent involved more than
a mechanical, or slavish, copying of the existing material.
There must be suRicient application of the author's mind to produce a work
that could be judged to be 'original'.
Dicta of courts in Topka v Ehrenberg Engineering (Pty) Ltd:
defining 'originality' • Originality in copyright law is challenging to define.
• Copyright protects the execution of a work, not the underlying idea.
• The focus is on the author's original skill & labour, not originality of thought.
• The work must originate from the author and not be copied.
 Accesso CC v Allforms (Pty) Ltd:
• A work can be original even if it draws on common knowledge or existing
material, as long as it isn't slavishly copied.
• The required standard of originality is low.
• A work doesn't need to be novel; it just needs to be created without directly
copying an existing work.
• If existing material is used, suRicient independent skill and labour must be
shown for copyright protection.
+ fixed in material form
= person can perceive it (this is the work we are referring to, not just concept in mind)
Section 2(2) of the Act provides that, a work except a broadcast or programme-carrying signal shall not
be eligible for copyright unless the work has been written down, recorded, represented in digital data
or signals or otherwise reduced to material form.
MATERIAL FORM → work must be reduced to a material form

Section 2(2) CRA

a work except a broadcast or programme-carrying signal shall not be eligible for
copyright unless the work has been written down, recorded, represented in
digital data or signals or otherwise reduced to material form.

• CR doesn’t subsist in thoughts, ideas or facts

• Doesn’t protect or vest in concepts

Subsists in physical or material manifestations/embodiment of such elements

once they are created/come into being
AUTHOR A → the author of a work, or in the case of a work of joint authorship any one of the
QUALIFIED PERSON authors, was a 'qualified person' at the time the work or a substantial part
OR thereof was made.
WORK FIRST
PUBLISHED IN • ‘qualified person’ → a natural person who is a SA citizen/ domiciled/
BERNE resident in SA or a juristic person incorporated under laws of SA
CONVENTION • 'qualified person' has been extended by regulation to include the nationals/
COUNTRY residents & juristic persons, of countries to which the operation of the Act
has been extended (Berne Convention countries)

S 1(5) CRA
→ instances when works deemed/ considered to have been published
1. Copies of such work issued to the public w/ consent of owner in
suRicient quantities to reasonably meet needs of public having regard to
nature of the work
2. Cinematograph films & sound recordings = publication upon sale,
letting, hire or oRer for sale/hire of copies

Occurrences which do not constitute publication:

1. the performance of a musical or dramatic work, cinematograph film or
sound recording
2. the public delivery of a literary work
3. a transmission in a diRusion service
4. the broadcasting of a work
5. the exhibition of a work of art
6. the construction of a work of architecture.
 First publication of a work in SA/ Berne Convention Country applies in the
alternative to the work having been authored by a qualified person and
provides a means of qualifying a work for copyright where it has not been
authored by a qualified person.

AUTHORSHIP
‘author’ Person who has created the work or made arrangements for work to be created
• Has to be a ‘qualified person’ = criteria
• Eg citizen, or work has been published in jurisdiction

Determining authorship = factual question which many be influenced

S 1(1) CRA
→ depends on the nature of the work
1. Literary, musical or artistic work = person who first makes or creates the
work.
2. Photograph = person responsible for the composition of the photograph
3. Sound recording = person by who made arrangements for the making of
the sound recording
4. Cinematography film = person by who made arrangements for the
making of the film
5. Broadcast = first broadcaster thereof.
6. Programme-carrying signal = first person emitting the signal to a
satellite.
7. Published editions = publisher of the edition.
8. Literary, dramatic, musical or artistic work or computer program which
is computer-generated = person by whom the arrangements necessary
for the creation of the work were undertaken.
9. Computer programs = person who exercised control over making of
computer program

For computer program, the author is the person who exercised control over the
making of the computer program → Haupt t/a Soft Copy v Brewers Marketing
Intelligence (Pty) Ltd
• What constitutes control: In this context, "control" refers to the authority
to direct the creation and development of a computer program. The
term "author" in the Act encompasses more than just control through
employment; it includes control by anyone who has the power to
oversee and influence the program's development, even if the developer
is an independent contractor. In the case described, Haupt had control
over the program's creation by providing instructions, overseeing the
process, and directing the outcome, despite Coetzee being the one who
performed the technical work.
Authorship is distinct from ownership
Author generally the owner but exceptions apply
Joint authorship S 1(1)
A work considered created through joint authorship when it is produced by the
collaboration of two or more authors in which the contribution of each author is
not separable from the contribution of the other authors
→ question of fact decided in each matter on its own merits
 • Class group project is a practical example of a work of joint authorship
because each group will produce a single work and each member of the
group will contribute to the work in such a manner that it would be diRicult
to separate each person’s contribution from that of the other.

Kogan v Martin → question of degree of contribution as it relates to share of

royalties vis-à-vis being mentioned and recognized as a co-author of an existing
work.

Is a typist an author
• ERect of amanuensis on authorship of work
• Literary or artistic assistant
• Usually scribes
• Generally not entitled to claim authorship
• Author if literary work = creates the work and responsible for the
physical embodiment
• Authorship attributed to person responsible for substance of work being
types or recorded
• Amanuensis simply carries out instructions performing a mechanical
function
• Thus a matter of degree and involvement of amanuensis
• Editing insignificant parts of work doesn’t entitle person to qualify as co-
author
Author must be a • To be a qualified person, the author must be a South African citizen or is
‘qualified person’ domiciled or resident in South Africa. In the case of a juristic person, it must
be a body incorporated on the laws of South Africa. See s3(1) of the Act.

Alternatively, a work would still be protected if it was published in South Africa

or a Berne Convention country.
Section 1(5) of the Act describes the circumstances under which works are
deemed or considered to have been published.
CR protection is for a limited duration which varies by work
50 years after death
Duration of S 3(2); (3) & 4
copyright • 50 years from the end of the year in which the author dies; the work is made
protection and available to the public with the consent of the owner of the copyright; the
e\ect work is first published; in which the broadcast first takes place; etc.
• Once the term of protection expires, the work enters into the public
domain meaning that anyone can use the work in any way and exercise
rights over it without incurring liability for infringement or needing to request
permission.
• E.g., Lion sleeps tonight was subject of a new musical arrangement
after copyright in the musical composition expired → Seeking justice
for Lion Sleeps Tonight composer
• The limited term of protection is another way that copyright balances the
rights of authors and owners with those of the public. Though that is
debatable because the term of protection is quite lengthy.
COPYRIGHT IN COMPUTER PROGRAMS
Protection as Literary Work
• Emergence of Computer Programs in Copyright Law:
o Computer programs are a relatively new type of copyrightable work.
o Early debates focused on the appropriate legal protection—whether through copyright or patents.
o The WIPO Model Provisions (1978) favored copyright protection, influencing global legal standards.
• International Legal Framework:
o The TRIPS Agreement (1994) and the WIPO Copyright Treaty (1996) solidified copyright as the chosen
protection for computer programs.
o Signatories of the Berne Convention, including South Africa, must provide copyright protection for
software.
• South African Development:
o South Africa adopted progressive intellectual property laws, guided by expert committees and case
law.
o The Cape High Court in Northern OCice Microcomputers (Pty) Ltd v Rosenstein (1981) recognized
computer programs as eligible for copyright protection as literary works.
• Key Judicial Findings:
o Literary Work Definition:
§ A literary work doesn’t require literary quality, allowing prosaic and non-linguistic works like
computer programs to qualify.
o Originality and Material Form:
§ Protection is granted if the program demonstrates suWicient eWort or skill and is reduced to
material form (e.g., source code written or printed).
§ The court extended "recording" to include digital storage, like floppy discs.
o ECort and Skill:
§ The programs in question met the originality requirement due to the significant time and eWort
invested by the creators.
Counterpoint: Originality of Computer Programs
• Northern OCice Decision:
o The court did not fully examine the programs' functions or the degree of originality.
o The decision may suggest a lower threshold for originality in computer programs compared to other
works.
o This raises questions about whether the same judgment would be rendered today, considering
modern copyright interpretations.
• Impact on South African Copyright Law:
o The Northern OWice decision and similar legislation in the US and UK helped align South African
copyright law with international standards.
o South African courts can now reference British and American judgments on software copyright.
Protection as Sui Generis Work: Key Points
Shift from Copyright as Literary Work to Sui Generis Protection
• Debate on Software Protection:
o Two schools of thought emerged regarding how copyright law should apply to software:
§ Traditional Approach: Advocated for software protection as a species of literary work,
supported by the WIPO Model Provisions of 1978 and 1990.
§ Alternative Approach: Argued that software might be better protected as a sui generis work,
not as literary work, citing that the WIPO Provisions hinted at this possibility.
• International and South African Legal Framework:
o Despite the debate, the WIPO Copyright Treaty (WCT) of 1996, eWective in 2002, confirmed that
computer programs are protected as literary works, excluding ideas, procedures, methods, and
mathematical concepts.
o The South African legislature, however, opted for sui generis protection in the Copyright Amendment
Act 125 of 1992, acknowledging that computer programs have unique characteristics that make
them unsuitable for prolonged protection as literary works.
Definition of Sui Generis Protection
• New Definition Introduced by the Amendment Act:
o Computer programs are defined as "a set of instructions fixed or stored in any manner which, when
used in a computer, directs its operation to bring about a result."
o Focus shifts from the manifestation of the work to the nature of the work, emphasizing the program’s
functionality over its literary elements.
 • Implications of the New Definition:
o A computer program qualifies for copyright protection if it produces any result, not necessarily the
correct or intended result.
o The definition includes programs that perform preparatory or intermediary functions, such as
accessing a database or translating commands, even if the result is not directly visible to the user.
Requirements for Subsistence of Sui Generis Copyright
• Originality:
o Originality in computer programs doesn’t require creativity but merely that the work embodies some
level of distinctiveness, identifying the author as the origin.
o The "sweat of the brow" approach in South African law means that even simple programs that
perform non-novel functions can meet the originality requirement.
o Complex programs, despite their intricacy, receive the same level of copyright protection as simpler
ones, with no protection extended to the function itself.
• Material Form:
o Copyright subsists in a computer program only when it has been reduced to material form, including
digital data or signals.
o A computer program is considered created when the instructions are recorded to the extent that they
can perform a function.
o The medium of recording is flexible, including handwritten or printed source code, digital storage, and
transient digital expressions.
Conclusion on Sui Generis Protection
• Material Form Requirement:
o The requirement has become largely irrelevant for computer programs since any form of notation
capable of producing a result suWices.
o A computer program is eligible for protection once the source code is written or entered into a digital
format, even before it is tested or compiled.
• Implications for Copyright Protection:
o Sui generis protection ensures that all conceivable forms of digital and transient expressions of
computer programs are covered, expanding the scope of copyright protection beyond traditional
literary work parameters.
Conceptual Planning:
• Extensive planning is required for the arrangement of functions and logical processes.
• Ensures eWicient, correct, and reliable operation of the program.
• Critical for interoperability with other systems.
Creative Process:
• Involves graphic illustrations, flow charts, mathematical calculations, algorithms, arrays, and raw data.
• Used to create source code, test, and adapt individual functions.
• Also used to design the visual appearance of the user interface and other outputs.
Preparatory Material:
• Includes all the creative elements used before writing the source code.
• Embodies a significant portion of human labor, skill, and judgment.
• Essential for writing the source code.
• Not included in the definition of a literary work under copyright law.
Copyright Protection:
• Limited to the source code and object code of the computer program.
• Preparatory material does not receive the same protection as the final program.
• Individual elements may qualify for copyright as literary, artistic, or other types of works.
Collaborative Development:
• Computer programs are often developed by teams with specialized roles.
• Constituent parts are coded separately, and not all may qualify for copyright protection.
• Individual elements may only produce results when combined with others.
Dual Copyright:
• Parts of the program may be protected as literary works while the entire program is protected as a sui generis
type of work.
• This creates practical diWiculties when the authors of the literary works and the computer program are not the
same individuals.
Authorship and Ownership:
• The author of the computer program is defined as the person who exercised control over its creation.
• Control can be exercised by someone who commissions the program, even if they are not the programmer.
 • The degree of control is a factual question, and the test is subjective.
Implied Licenses:
• Copyright licenses may be inferred from conduct, such as including literary works in a computer program.
• Implied licenses are diWicult to establish and may vary based on circumstances.
Employer Ownership:
• Section 21(1)(c) vests copyright in the employer if the program is created by employees.
• In cases where programmers are not employed by the program's author, ownership issues may arise.
Judicial Interpretation:
• Courts have interpreted control broadly to include scenarios where the author is not the programmer's
employer.
• The author does not need to give technical instructions but must have the power to direct the programming
process.
Scope of Protection:
• Computer programs are protected under the Copyright Act, covering all forms of reproduction.
• Exclusive rights to reproduction do not fully address unauthorized distribution via the internet.
Exclusive Rights - Reproduction:
• Software piracy is an infringement due to the necessity of reproducing files during data transmission
(uploading/downloading).
• Unauthorized reproduction during transmission is considered an infringement.
• Copying a program or parts of it, whether the entire function or parts, constitutes reproduction.
Case Law - Pastel Software v. Pink Software:
• Pink Software produced screen images resembling Pastel's without access to the source code.
• The court ruled that similar screen images could amount to copyright infringement if they are reproductions
of copyrighted material.
Court Findings:
• Screen images, due to their original layout, qualify as literary works and are protected by copyright.
• Loss of the original material form does not terminate copyright; ephemeral existence does not negate
protection.
• The court found Pink's reproduction of screen layouts amounted to an infringement of Pastel's copyright, as it
indirectly reproduced the source code.
Implications:
• The ruling extended copyright protection beyond literal code to include non-literal elements like screen
layouts.
• However, the ruling may not apply straightforwardly to computer programs classified as sui generis works
after the 1992 amendment.
Sui Generis Protection:
• The Pastel case may not fully apply to computer programs after 1992, as these programs are now seen as sui
generis works, diWerent from literary works.
• Protection under the new regime may not cover results produced by the program, only the instructions
(source code) itself.
Result vs. Reproduction:
• A second program producing the same result or function is not necessarily an infringing copy if it does not
reproduce the source code.
• The copyright infringement only occurs if there is a reproduction of the source code itself.
Bringing About a Result:
• The 1992 amendment limits protection to programs that bring about a result, but does not extend protection to the result
itself.
• This limitation suggests that only the source code is protected, not the functional outcome of the program.
Look-and-Feel Protection:
• The Pastel case highlighted issues related to protecting the look-and-feel of a program, which is not fully
addressed under current copyright law.
• The ruling on screen layouts suggested that computer-generated literary works might be protected if they are
reduced to material form.
Material Form Requirement:
• Literary works must be expressed in writing or as digital data/signals to qualify for copyright protection.
• The court might have avoided the program infringement issue by ruling on infringement of computer-
generated literary works instead.
10.2.2.5.1.2 Adaptation
 • Definition of Adaptation: Adapting a program includes transforming source code into object code (machine-
readable code).
• Encoding as Adaptation: Encoding from source to object code is an adaptation, treated as a translation,
requiring copyright owner’s consent.
• Legal Precedent: Supreme Court of Appeal confirms encoding source to object code is an adaptation for
computer programs, a sui generis work.
• Infringement: Unauthorized encoding or decoding (object code back to source code) infringes copyright.
• Protection Scope: Once encoded, both source and object codes are protected; unauthorized reproduction
of object code infringes both.
• Commercial Context: Most programs are distributed in object code; pirated copies are unauthorized
reproductions of this code.
• Digital Distribution: Unlawful digital distribution (e.g., Internet) may be an adaptation if it diWers from original
distribution medium (e.g., discs).
• Pirated Software: Modifying a program (e.g., adding/removing serial keys) before distribution counts as an
adaptation and reproduction.
10.2.2.5.1.3 Communication to the Public
• Exclusive Rights: Authors have exclusive rights to broadcast and transmit computer programs but not to
unauthorized Internet distribution.
• Public Performance: Defined as performing a program's function publicly; mere distribution isn’t considered
a public performance.
• WIPO Copyright Treaty (WCT): Prohibits unauthorized communication to the public, allowing public access
by any means.
• South Africa’s Status: South Africa hasn’t acceded to the WCT, making enforcement of public
communication rights less clear.
10.2.2.5.2 Exemptions from Infringement
10.2.2.5.2.1 Fair Dealing
• Purpose of Copyright: Balances authors’ commercial rights with public interest in using works for specific
purposes without permission.
• Fair Dealing: Specific statutory defenses exempt from copyright infringement, though not all exemptions
require fairness (Section 12).
• Exemptions for Computer Programs: Includes criticism, review, reporting events, judicial proceedings,
teaching, lawful broadcasting, and equipment demonstrations.
• Criticism and Review: Exemption allows criticism or review of the program’s operation, but not of object
code itself.
• Research/Private Study: Exemption for research or study doesn’t apply to computer programs, restricting
decompilation to study source code.
• Interoperability: Public interest supports using existing programs to ensure new ones are compatible, but
such use isn’t exempt under fair dealing.
• Section 13 Influence: Section 13’s fairness test can guide courts in determining if a use under Section 12 is
truly fair.
• Section 13 and Regulations: Section 13 limits Minister’s power to allow reproductions that harm normal
work exploitation or copyright owner’s interests.
• Two-Step Test: Courts may refuse a fair-dealing defense if it conflicts with the normal exploitation of the work
or prejudices the owner’s legitimate interest.
• International Agreements: South Africa’s copyright law aligns with the Berne Convention and TRIPS
Agreement, both requiring a three-step test for exemptions.
• Digital Exploitation: Fair dealing in digital media, especially for news reporting or aggregating content, can
conflict with copyright owners' interests.
• Limited Application to Programs: Fair dealing for computer programs is more restricted, primarily allowing
review of user experience, not the source code itself.
• Importance in Digital Media: Fair dealing in digital media involves stricter scrutiny, especially when the
copyright owner’s interests are at stake.
• Print vs. Digital Media:
o In print, reproducing work from one newspaper in another for reporting is generally acceptable under
fair dealing.
o In digital media, unauthorized distribution through news aggregation may prejudice the copyright
owner’s interests.
• Owner's Rights in Digital Media: Copyright owners may limit their works to specific platforms (e.g., own
websites), opposing unauthorized aggregation.
 • Computer Programs and News Reporting:
o Generally, computer programs are not suitable for use in news reporting.
o Reproducing a program to use as a tool for reporting events is contrary to fair dealing, unless legally
authorized.
• Limited Exemptions for Programs:
o The exemption allows reproducing screen layouts or interfaces for specific reporting but does not
extend to broader exploitation.
o Most programs are distributed in object code form, which is illegible, limiting fair dealing’s
applicability.
• Criticism and Review:
o Criticism or review is restricted to the user experience or operation of the program, not the source
code.
o Public interest may require decompiling a program to study its source code, though the current law
doesn’t broadly allow this.
10.2.2.5.2.2 Back-Up Copies
• Right to Back-Up: Users may legally make a back-up copy of a legitimate program.
• Limits on Back-Up Rights:
o This right is curtailed if reproduction is prevented by technical means.
o The back-up must be destroyed if the original or authorized copy is no longer lawfully held.
o If the original version is sold or a subscription lapses, the back-up cannot be retained.
• Pirate Copies: Back-up copies made from a pirate copy are not protected and must be destroyed.
10.2.2.5.2.3 Reverse Engineering
• Definition: Reverse engineering involves studying a program's function and results without accessing or
copying its source code.
• Legal Status in South Africa:
o South African law doesn’t expressly allow or prohibit reverse engineering.
o Producing a similar program through reverse engineering doesn’t infringe copyright if no actual
copying occurs.
• International Comparisons:
o The UK allows reverse engineering for lawful users to understand the program’s underlying ideas and
principles.
o U.S. law includes broader definitions of reverse engineering but still requires no direct copying.
• Function and Result Reproduction:
o Reproducing a program's function or result through reverse engineering isn’t copyright infringement.
o However, if the function or result is too similar to the original, it may lead to infringement under
specific conditions.
• Implications of Pastel Software Case:
o If applicable to post-1992 programs, reverse engineering might infringe copyright if it replicates the
function or result.
o Legal clarity is needed, possibly requiring an amendment to include a reverse engineering exemption.
10.2.2.5.2.4 Decompilation
• Definition: Decompilation involves converting object code back into a version of source code, often for
interoperability.
• Legal Considerations:
o Decompilation is seen as an adaptation and could be infringing if not authorized.
o The process doesn’t reveal the exact original source code but produces a similar set of instructions.
• Interoperability:
o Decompilation is justified to ensure new programs can operate with existing ones.
o It doesn’t allow for unauthorized reproduction or adaptation of the program.
• International Examples:
o The UK permits decompilation for interoperability but restricts it to what’s necessary for that purpose.
o The U.S. limits reverse engineering to specific portions required for interoperability under the Digital
Millennium Copyright Act.
• South African Context:
o South African law lacks a specific decompilation exemption, leading to potential legal uncertainties.
o A similar exemption to the British or American model could be beneficial for legal clarity and
compatibility with fair dealing.
PROBLEM 2-1
The oRicial South African company register is operated by the Companies and Intellectual Property
Commission (CIPC), an agency of the Department of Trade, Industry and Competition. The CIPC was
established by the Companies Act 71 of 2008 as a juristic person to function as an organ of state
within the public administration. The CIPC is partially funded by the South African government. All
South African companies are by law required to register with the CIPC.
Although generic information (e.g. the company name and address) is free to access within the
companies register, the more detailed extracts and records are only accessible after payment. In
2020, the CIPC updated its user terms and asserted copyright in the company register whereby the
CIPC’s prior consent would be required for reusing and commercially oRering information from the
register.
Tantatswa Pty Ltd is a company that provides reliable commercial information to the public for a fee.
In 2021, Tanatswa started oRering a ‘shadow register’, which oRer the same information as those on
the CIPC’s companies register but at a reduced price.

1. If you were a lawyer for CIPC, what justifications would serve your client’s interests in
preventing this kind of use of its companies register data?
• Infringement of database
• the arrangement and presentation of the data involve creative eRort, thus qualifying as
original work under the Copyright Act
2. And what might your arguments be if you were representing Tanatswa which made this
use of publicly accessible data?
3. If other people create similar tools such as Tanatswa has done, should Tanatswa be able
to obtain an interdict against them=[[[[[[[[[[[[[[lo0? Why? Are these arguments consistent
with those you made in answer to question (1)?
4. What if, instead of the contents of the companies register, it was photographs on CIPC’s
website instead? Would your answer to questions (1) and (2) be di\erent?

PROBLEM 2-2
Mrs Ronel Pillay is a qualified and experienced IT systems engineer and software writer employed as
such by Softsys Pty Ltd (a South African Company) under a contract of service.
Softsys is approached by SARS to develop and write a computer program (to be called EXCALC) for its
use at borders and ports of entry into the country to: monitor and record details of all importations of
goods into SA; calculate all customs and excise duties payable by importers; and generate the
relevant invoices.

SARS undertakes itself to create and populate the necessary accompanying databases to enable
EXCALC to perform its functions. Mrs Pillay is placed in charge of the project at Softsys and directs
and instruct a team of programmers, employed under contracts of service by Softsys to write the
EXCALC program. A part of the program writing, however, is outsourced to Outsoft CC (and later paid
for) whose sole shareholder/member is Mr John Ndlovu.

SARS and Softsys enter into a written agreement in relation to the project which has various terms and
schedules including a fairly detailed specification drafted by SARS setting out the manner in which the
program is to perform and function, its purpose and expected outcome. Writing commences and
Softsys has fairly regular report-back meetings with SARS to inform SARS of the progress and to
discuss drafting and functional issues that arise. Softsys also has regular working meetings with Mr
John Ndlovu of Outsoft CC and closely directs and supervises his software writing eRorts.
The program is duly completed and EXCALC is commissioned for service by Softsys on all SARS’
computers at its borders and ports.
Applying the provisions of the Copyright Act No. 98 of 1978, as interpreted by the courts, analyse
and advise on the issues of:
a) The subsistence, and
b) Authorship
of copyright in EXCALC based on the above facts.

PROBLEM 2-3
Mrs Ronel Pillay
The narration below is a continuation of the ‘story’ in Problem 2-2, above.
SARS experiences great diRiculties and delays in creating and populating the necessary
databases to enable EXCALC to function. As a result, unjustifiably, SARS does not make payment to
Softsys which is already under financial stress.

In her own time, Mrs Pillay decides herself to compile a multi-sectioned database comprising: all
relevant customs and excise statutes and regulations; the various tariRs of excise duties payable in
relation to all relevant categories of goods; court decisions; full contact details of all local customs
clearing agents; details of known custom oRenders; counterfeiting and suspected oRenders; and
other information.

She personally obtains all this data from SARS and other sources (e.g. SA Law Reports), most of which
is publicly available. This work takes her several weeks of intense eRorts to complete, primarily at
home, and she then supplies it to SARS. SARS then pays Softsys’ account.

Applying the provisions of the Copyright Act No. 98 of 1978 and related case law, analyse and
advise on the questions of:
a) The subsistence, and
b) authorship
of copyright in the database based on these and other possibly relevant potential facts.
2.2 → MAIN RIGHTS GRANTED BY COPYRIGHT

Work

Subsistence of
Moral rights
copyright

Exclusive rights

Economic rights

• Rights held in exclusivity

• Moral rights are personal and focus on authors personality (may only indirectly link to revenue)
• want name on movie credits so know you write screenplays
2 TYPES OF RIGHTS 1. Economic rights = Financial benefits
PROTECTED
2. Moral rights = Personal rights but are connected to economic rights
especially to the extent that they are promotional tools.

ECONOMIC RIGHTS
Sections • Section 6 - Nature of copyright in literary or musical works
• Section 7 - Nature of copyright in artistic works
• Section 8 - Nature of copyright in cinematograph films
• Section 9 - Nature of copyright in sound recordings
• Section 10 - Nature of copyright in broadcasts
• Section 11 - Nature of copyright in programme-carrying signals
• Section 11A - Nature of copyright in published editions
• Section 11B - Nature of copyright in computer programs
ECONOMIC RIGHTS Attached to the money
• Exploit to generate revenue
1. Right of reproduction → scan a work; photocopy a book; download books;
running computer program; upload to youtube; copy+paste = only CR
owner has exclusive right to do so
→ all categories except sound recording & programme-carrying signals
• Making copies of a protected work in the form of a book
• e.g. a publisher printing a manuscript into a book that is then
distributed and sold to the public;
• audio books; CD books;
• manufacturing and distributing CDs or MP3/MP4 files containing
recorded performances of musical works;
• copying and pasting text; downloading and uploading a file
containing a protected work to the internet; streaming; linking;
etc.

2. Right of adaptation → moving to another format (originality unlike

reproduction) = modifying an existing work to create a new work
→ all except sound recording, broadcasts, programme-carrying signals,
and published editions.
 o Eg: translation to another language (original bc some
interpretative exercise so that it makes sense/doesn’t lose
meaning)
o Eg: book to movie
o Eg: musical arrangement – arranging for another instruments
• Google v Oracle → transformative (computer code) use that will help
others create new products
o new def eviscerates CR
o movie studio that converts book to film without permission
creates new product and enables others to create products =
reviews, merchandise
o computer program once copies can be used to create new
products
o to be transformative a work must do something fundamentally
diRerent from the original
o simply serves same purpose = derivative not transformative

3. Right of public performance → displaying movie in cinema

→ only literary and musical works + computer programs
• On the basis of this right, authors and/or copyright owners
may undertake or authorise live performance of a work
• involves playing a work over an amplification equipment like
loud speakers
• (Live) streaming of sound recordings in Kenya: what is the
appropriate question?

4. Distribution
5. Rental
6. Control importation
7. Right of publication
→ All categories except cinematograph films, sound recording,
broadcasts, programme-carrying signals, published editions.
• does not apply to any category except literary, musical and
artistic works and computer programs.

Causing the work to be transmitted in a diRusion service – All categories except

programme-carrying signals and published editions

Broadcasting or rebroadcasting the work or including the work in a broadcast -

All except programme-carrying signals, and published editions

• Depending on work, all economic rights attach to their adaptation

• Movie adaptation of book = movie itself enjoys all economic rights in the
same way book enjoys
• Bridgerton series – novel enjoys CR protection; series also enjoys own CR
protection as cinematographic film

Authors and/or copyright owners can only restrict the exercise of these rights
and no more. Consequently, any use by third parties that do not fall within the
scope of these rights will not be infringing.
Published editions only enjoy the 1 right = the right of reproduction.
Programme- only enjoy 1 right = the right of distribution
carrying signals

MORAL RIGHTS
MORAL RIGHTS • Moral rights apply only to literary, musical or artistic works, cinematograph
film or computer program.
• They apply even after copyright (i.e. economic rights) is transferred.
• Moral rights attach to the author and cannot be transferred.
• They cease to exist upon the author’s death
• Moral rights can be waived

Apart from 'copyright, which can be considered to be an economic or property

right, the Act also provides for another type of right in respect of a work, vesting
in the author and referred to as a 'moral right’

There are two types of moral rights, which are commonly known as the
'right of paternity' and the 'right of integrity’
Notwithstanding the transfer of the copyright in a literary, musical or artistic
work, in cinematograph film or in a computer program, the author retains these
rights and is able to enforce them

attach to the author and are inalienable, irrespective of whether he may have
assigned his copyright to another.

cease to exist upon the author's death = infractions of the moral rights are
treated as though they are infringements of copyright
Linked to the author himself generally
1. Right of integrity → right to object to mutilation of work, distortion of work,
or other modification where such treatment of work is or would be in
prejudicial to his honour and reputation
• GraRiti over artistic work = distorted/mutilated
• Mashup songs = artist prejudiced
• Has exceptions
• Exceptions apply to computer programs and use of a work in a
cinematograph film or tv broadcast
• Exceptions apply if author authorised use or if author of a computer
program
o author in such circumstances cannot prevent or object to
modifications that are absolutely necessary on technical grounds
or for the purpose of commercial exploitation of the work
o Eg. the author of a novel that has authorised the adaptation of the
novel into a cinematograph film may not prevent the film producer
distorting the work in a manner necessary on technical grounds

2. Right of attribution → right to being identified as author

• Aka right of paternity = allows authors to claim authorship of
work
• Alternations are only objectionable if prejudicial to honour or
reputation of author
 • Author who authorises use of his work in cinematograph film, tv
broadcast/ author of computer program = may not prevent or
object to modifications absolutely necessary on technical
grounds or for the purpose of commercial exploitation of the
work

Applies without exceptions across the applicable rights

• Can a scriptwriter prevent a movie premiere because the
scriptwriter was not named as the author of the screenplay for the
movie?
Yes, if moral rights are invoked, a scriptwriter could potentially prevent a
movie premiere if they are not credited as the author of the screenplay.

• Moral rights attach to the author and cannot be transferred. They cease
to exist upon the author’s death. Does this mean the name of the
author of a work can be changed once the author dies? Does this
mean a work can be modified or distorted once the author dies?

DURATION AND EFFECT

DURATION OF • Subsistence of CR in a work is of limited duration
TYPES OF WORKS • Doesn’t exist indefinitely
• Ceases to exist at expiry of term of CR = falls into public domain and
restriction to use no longer enforceable
• Work may be copied or used in its entirety w/out prior approval from CR
owner
• Ensure that authorship is still acknowledged and not passed oR as
someone else’s work
• Term of protection determined by type of work
Literary works → lifetime of author + 50 years from end of year
Musical works author dies
Artistic works (other If none of the following happens before the author
than photographs) dies:
1. The work is published.
2. The work is performed in public.
3. The work is sold as records.
4. The work is broadcasted.
Then the copyright lasts for 50 years after the first of
these actions occurs. If none of these actions
happen, the copyright lasts forever.

Cinematograph films 50 years from end of year in which the work

Photographs 1. is made available to the public with the consent
Computer programs of the owner of the copyright; or
2. is first published
whichever term is the longer

If, however, no such event occurs within 50 years of

the making of the work, copyright will subsist for 50
years from the end of the year in which the work is
made.
 Sound recordings 50 years from the end of the year in which
the recording is first published

• term 'publish' must carry the meaning ascribed in

S 1(5) CRA
Broadcasts 50 years from the end of the year in which the
broadcast first takes place
Programme-carrying 50 years from the end of the year in which
signals the signals are emitted to a satellite.
Published editions 50 years from the end of the year in which the edition
is first published
• anonymous or pseudonymous work → CR subsists for 50 years from the end
of the year in which the
• work is made available to the public with the consent of the
owner of the copyright, or
• from the end of the year in which it is reasonable to presume that
the author died
whichever term is the shorter
• identity of the author becoming known before the expiration of the above
period, the term is calculated in accordance with the standard provisions
relating to the type of work
• joint authorship → term is calculated in accordance with the standard
provisions for the type of work in question but the reference to the death of
the author is taken to refer to the author who dies last, whether or not he is
a qualified person."
o Where authors A and B were joint authors of a literary work and
author A dies first, the term of 50 years will only commence from
the end of the vear in which author B dies
• Copyright subsists and vests in the state by virtue of the provisions of S 5
CRA duration of the term of the copyright:
o in a literary, artistic (save for a photograph), or musical work is 50
years after the end of the year in which the work is first published
o in photograph, cinematograph film, sound recording, broadcast,
programme- carrying signal, or computer program, the term of
the copyright is the same as that enjoyed by these types of work.
EFFECT & CONTENT eRect of copyright in a work → aRords the owner certain exclusive rights iro that
OF COPYRIGHT IN work
TYPES OF WORKS • sum of these exclusive rights = the content of the copyright in the
work
• rights translate into the owner having a monopoly in the rendering or
performance of certain specified acts
• acts are specified and determined wrt the type of work = known as
the 'restricted acts’
Literary & musical S6
works Copyright in a literary or musical work vests the
exclusive right to do or to authorise the doing of, any of
the following acts in the Republic:
(a) Reproducing the work in any manner or form;
(b) publishing the work if it was hitherto unpublished;
(c) performing the work in public;
(d) broadcasting the work;
 (e) causing the work to be transmitted in a diRusion
service, unless such service transmits a lawful
broadcast, including the work, and is operated by
the original broadcaster
(f) making an adaptation of the work;
(g) doing, in relation to an adaptation of the work, any
of the acts specified in relation to the work in
paragraphs (a) to (e) inclusive.
Artistic works S7
Copyright in an artistic work vests the exclusive right to
do or to authorise the doing of any of the following acts
in the Republic:
(a) Reproducing the work in any manner or form;
(b) publishing the work if it was hitherto unpublished;
(c) including the work in a cinematograph film or a
television broadcast;
(d) causing a television or other programme, which
includes the work, to be transmitted in a diRusion
service, unless such service transmits a lawful
television broadcast, including the work, and is
operated by the original broadcaster;
(e) making an adaptation of the work
(f) doing, in relation to an adaptation of the work, any
of the acts specified in relation to the work in
paragraphs (a) to (d) inclusive."
Cinematograph S8
films Copyright in a cinematograph film vests the exclusive
right to do or to authorise the doing of any of the
following acts in the Republic:
(a) Reproducing the film in any manner or form,
including making a still photograph therefrom;
(b) causing the film, in so far as it consists of images, to
be seen in public, or, in so far as it consists of
sounds, to be heard in public
(c) broadcasting the film;
(d) causing the film to be transmitted in a diRusion
service, unless such service transmits a lawful
television broadcast, including the film, and is
operated by the original broadcaster:
(e) making an adaptation of the film;
(f) doing, in relation to an adaptation of the film, any of
the acts specified in relation to the film in
paragraphs (a) to (d) inclusive;
(g) letting, or oRering or exposing for hire by way of
trade, directly or indirectly, a copy of the film
Sound recordings S9
Copyright in a sound recording vests the exclusive right
to do or to authorise the
doing of any of the following acts in the Republic:
(a) Making, directly or indirectly, a record embodying
the sound recording;
 (b) letting, or oRering or exposing for hire by way of
trade, directly or indirectly, a reproduction of the
sound recording;
(c) broadcasting the sound recording;
(d) causing the sound recording to be transmitted in a
diRusion service, unless that service transmits a
lawful broadcast, including the sound recording,
and is operated by the original broadcaster;
(e) communicating the sound recording to the public
Broadcasts S 10
Copyright in a broadcast vests the exclusive right to do
or to authorise the doing of any of the following acts in
the Republic:
(a) Reproducing, directly or indirectly, the broadcast in
any manner or form, including, in the case of a
television broadcast, making a still photograph
therefrom;
(b) rebroadcasting the broadcast;
(c) causing the broadcast to be transmitted in a
diRusion service, unless such service is operated by
the original broadcaster.
Programme- Copyright in programme-carrying signals vests the
carrying signals exclusive right to undertake, or to authorise, the direct
or indirect distribution of such signals by any distributor
the general public, or any section thereof in the
Republic, or from the Republic
Published editions Copyright in a published edition vests the exclusive
right to make or to authorise the making of a
reproduction of the edition in anv manner
Computer program Copyright in a computer program vests the exclusive
right to do or authorise the
doing of any of the following acts in the Republic:
(a) Reproducing the computer program in any manner
or form;
(b) publishing the computer program if it was hitherto
unpublished;
(c) performing the computer program in public;
(d) broadcasting the computer program;
(e) causing the computer program to be transmitted in
a diRusion service, unless such service transmits a
lawful broadcast, including the computer program,
and is operated by the original broadcaster;
(f) making an adaptation of the computer program;
(g) doing, in relation to an adaptation of the computer
program, any of the acts specified in relation to the
computer program in paragraphs (a) to (e) inclusive;
(h) letting, or oRering or exposing for hire by way of
trade, directly or indirectly, a copy of the computer
program
1.5 & 1.10
• Moneyweb (Pty) Limited v Media 24 Limited and Another (31575/2013) 2016 (4) SA 591 (GJ) (5
May 2016)
• Quad Africa Energy (Pty) Ltd v The Sugarless Company (Pty) Ltd and Another [2020] 2 All SA 687
(SCA)
• Blind SA v Minister for Trade, Industry and Competition [2022] ZACC 33
• Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (SCA)
2.3 → COPYRIGHT ACQUISITION AND TRANSFER

Rule: Author is owner Publication

Ownership
Commisioned works
Exceptions apply

Employment

Government

Author is the owner Eg person who took photograph

• Artistic work = person who created work
• Musical work = person who created work
• Literary work = person who created work – wrote book
• Computer program = person who made arrangement for the
making of the program / exercised control over making of work
• Sound recording = person who made arrangement for making of
sound recording
Authorship vs Authorship relates to the making of the work = factual issue
ownership
Ownership = person who gets to exercise moral & economic rights
• Resides in owner
4 exceptions to rule Author not owner
where author is the 1. Literary/musical work made for purposes of publication in a
owner journal/magazine/newspaper/periodical → proprietor of newspaper or
journal = owner for the publication itself
2. Commissioned work – relates to artistic work → person who commissioner
work = owner
3. Work created in course of employment in scope of employment →
employer = owner
4. Work created under direction/control of the state → government/state =
owner
Parties may contract out of statute
• May agree on who is owner = exception
ACQUISTITION & • CR can be transferred or acquired
TRANSFER OF CR Via
1. Assignment
2. Licences
3. Testamentary disposition
4. Operation of law
INTRODUCTION
• A bundle of exclusive rights over specified categories of works which meet specified
perquisites.
Copyrights like other intellectual property rights, are classified as movable property which may be
transferred or acquired in three main ways:
1. by assignments
2. by testamentary disposition, or
3. by operation of law.

• By extension, one may transfer copyright with respect to just one or more of the rights from
the bundle of exclusive rights.
OWNERSHIP
GENERAL RULE ON S 21(1)(a)
OWNERSHIP subject to the provisions of this section, the ownership of any copyright
conferred by section 3 or 4 on any work shall vest in the author or, in the case of
a work of joint authorship, in the co-authors of the work

→ author of the work is the first owner of any CR therein

• Exceptions to general rule :

1) Works intended for publication - s21(1)(b)
2) Works created for payment (a.k.a “commissioned works”) - s21(1)(c)
3) Works created in the course of employment - s21(1)(d)
4) Works created under the direction and control of the state - s21(2)
o Operation of exceptions can be modified or overruled by agreement
btwn author and designated first owner
o Where exception applies = ownership vests in designated person
from the outset
o Operation of exception doesn’t eRect transfer of ownership from
author to designated person – bypasses the author and never
initially vests in him

• Authorship is diRerent from ownership and both must be separately

established
WORKS INTENDED S 21(1)(b)
FOR PUBLICATION Where a literary or artistic work is made by an author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical
under a contract of service or apprenticeship, and is so made for the purpose
of publication in a newspaper, magazine or similar periodical, the said
proprietor shall be the owner of the copyright in the work in so far as the
copyright relates to publication of the work in any newspaper, magazine or
similar periodical or to reproduction of the work for the purpose of its being so
published, but in all other respects the author shall be the owner of any
copyright subsisting in the work by virtue of section 3 or 4.
• Only applies to literary and artistic works to extent created specifically for
publication
• Employee will be author and owner for other parts of CR eg
publication in collection of short stories or inclusion in
cinematograph film
• Work created by author in course of employment under contract of service
or apprenticeship
• Doesn’t apply to freelance writers or individual who is an independent
contractor
• Limited to employers who are media entities
 • Distinction btwn author and owner: maker or creator of the work (namely
the employee) remains the author of the work, but the proprietor of the
newspaper, magazine or similar periodical (in its capacity as employer) will
be the owner of the copyright in the work for the specified purposes

• Parties may contract out of this provision and have the author or an entirely
diRerent entity own copyright in such work.
• King v SA Weather Service
• Oloture saga - Assuming the movie, Oloture was actually copied from Ms
Tobore’s investigative report, who is the copyright owner in respect of
the report for purposes of obtaining permission for the movie
adaptation?

WORKS CREATED S 21(1)(c)

FOR PAYMENT Where a person commissions the taking of a photograph, the painting or
drawing of a portrait, the making of a gravure1, the making of a cinematograph
film or the making of a sound recording and pays or agrees to pay for it in
money or money's worth, and the work is made in pursuance of that
commission, such person shall, subject to the provisions of paragraph (b), be
the owner of any copyright subsisting therein by virtue of section 3 or 4.
• Limited application
• Does not apply to painting/drawing other than a portrait
• When a person is paid to create a work of a type not specified in the
provision, the author of the work remains the first copyright owner
WORKS CREATED S 21(1)(d)
IN THE COURSE OF Where in a case not falling within either paragraph (b) or (c) a work is made in
EMPLOYMENT the course of the author's employment by another person under a contract of
service or apprenticeship, that other person (employer) shall be the owner of
any copyright subsisting in the work by virtue of section 3 or 4.
• Blanket exception when an employer-employee rela involved
• Not an independent contractor
• Contract of service or apprenticeship must be established
• Contract may be oral, in writing or even inferred
• Whether created in the course of employment
• Created outside course/scope of employment = exception doesn’t apply

King v SA Weather Service

• Considered meaning of ‘in course of employment’
• Standard concept of employment law
• Practical and common-sense approach adopted in interpretation
• Largely a factual issue and depends on terms of contract
• Factor to consider: whether created at home/ after oRice hours
• Scope of employment may be determined – may change explicitly or by
implications
Statutory rule or principle applicable to all above-mentioned exceptions
S 21(1)(e)
Paragraphs (b –intended for publication), (c—commission) and (d—employment ) shall in any
particular case have e`ect subject to any agreement excluding the operation thereof and subject to the
provisions of section 20.

1
method of printing with etched plates or cylinders
• Parties may contract out of the exceptions and have the actual author or an entirely diRerent entity
own copyright in such work.
• negating or overruling the exceptions does not amount to a transfer of copyright, but rather
to cancelling out a provision determining the initial vesting of copyright in a particular person
• no formalities applicable to the agreement and the normal rules of the law of contract
prevail
• (unlike in the case of an assignment or transfer of copyright, where the Act requires a
written agreement)
• The vesting of ownership by virtue of the exceptions is subject to the provisions of s20 (moral
rights).

WORKS CREATED • CRA binds the state

UNDER THE S 5(2)
DIRECTION AND → CR conferred on every work eligible for CR and which is made by/under
CONTROL OF THE direction/control of state/international organisation as prescribed
STATE S 21(2)
Ownership of any copyright conferred by section 5 shall initially vest in the state
or the international organization concerned, and not in the author

Biotech Laboratories (Pty) Ltd

• Interpretation of ‘under the direction or control of the state’
• Beecham created Augmentin and package insert
• Biotech obtained registration for generic drug
• Package insert copied from Beecham
• Claim of copyright infringement denied by Biotech on ground that
Beecham failed to prove package insert = original work and it vested in
the state by virtue of S 5
• Held: original work
• State didn’t direct making of insert bc didn’t initiate its making nor
prescribe manner and means to be employed in making
• ‘Control’ → issue wasn’t if MCC had power to approve insert but whether
insert made under its control = factual issue
• Package insert prepared by Beecham’s employee in course of
employment
• MCC didn’t change substance nor did it co-author the end result
• Not created under control of state

v decision in the Ugandan National Anthem

Does the fact that the Ugandan government requested the entries mean
that the winning entry was made under its direction or control?
ACQUISITION AND TRANSFER OF COPYRIGHT
S 22 (1) Subject to the provisions of this section, copyright shall be transmissible as
movable property by assignment, testamentary disposition or operation of
law.

(2) An assignment or testamentary disposition of copyright may be limited so

as to apply to some only of the acts which the owner of the copyright has
the exclusive right to control, or to a part only of the term of the copyright, or
to a specified country or other geographical area.
 • assignment or testamentary disposition of copyright may be limited so as to apply to some, but
not all, of the acts which the owner of the copyright has the exclusive right to control (i.e the
restricted acts or part thereof), or to a part only of the term of the copyright, or to a specified
country or other geographical area.

ASSIGNMENT • Bundle of rights = CR divisible → may assign CR fir specific countries

while remaining owner in all other countries
• May assign copyright for a specific period of time, after which ownership
is to revert to him
• May assign a part of the rights, that is the right to perform certain, but
not all, of the restricted acts, to another.
• May be granted in respect of CR in a future work if transmissible as
movable property
E\ect of an assignment
→ that ownership of the rights so assigned passes to, and vests in, the assignee
• entitles him (the assignee) to sue for infringement of such copyright.

Once an assignment has been eRected the assignor divests himself of the
relevant rights, which become the property of the assignee.
Requirements of a valid assignment
S 22
1. in writing
2. signed by or on behalf of assignor
3. clearly indicate consensus of parties to transfer ownership
4. clearly identify subject of assignment
Galago Publishers (Pty) Ltd and Another v Erasmus
• Where author surrendered his copyright by assignment = placed in
same position as a 3rd party
• Any use by him of that work w/out author of new owner (assignee) must
be adjudged on that basis and may constitute infringement of CR
• Published book
• StiR assigned his CR to Erasmus
• Book published by Galago under license from CR owner
• Erasmus didn’t agree to a sequel
• Larger ‘coRee table’ format illustrated w/ photographs
• Erasmus contended copied 12 of 17 characters
• Whether there was objective similarity btwn 2 works and if so
whether there was a causal connection
• Held requisite degree of similarity = actual copying
• Co-authorship didn’t help in defending a claim
LICENSE • Doesn’t constitute any transfer of ownership
• Permission, authorisation or approval granted by the owner to another
person to perform an act falling with the monopoly aRorded to the owner
• Were it not for the permission granted = licensee’s conduct would be CR
infringement
• Enables licensee to lawfully perform certain action irt a protected work to
exclusion of others who don’t have such permission
• Eg publishing agreement ito author/owner grants a published permission to
reproduce and publish his work
• Licensee is generally entitled to authorise sublicensee to exercise rights
acquired from the licensor
• Sublicensee can grant further sublicenses
• May be iro the whole or part of the bundle of rights
• Person transferring or granting rights cannot pass on more rights than he
holds
Exclusive licence
→ licence whereby licensee to exclusion of owner and all others may perform
all/certain restrict acts irt a protected work as agreed
• Owner not allowed to perform the acts which have been licensed
• Formalities: in writing and signed by/ on behalf of licensor
• Non-compliance = non-exclusive license

Assignment vs exclusive license

• Assignment = ownership transferred
• Licensor retains ownership

• Advantage → gives licensee right to sure for CR infringement

• Same rights of action and remedies as assignment
• Exist concurrently w/ rights and remedies of owner
• Licensee must first give notice in writing to owner of intention to institute
proceedings = owner given chance to recover damages /reasonable royalty
Non-exclusive licence
• No formal requirements
• May be granted orally, in writing, tacitly, inferred from conduct
• Licensor may grant many non-exclusive or ordinary licenses
• May be revoked at any time provided license granted by contract wont be
revoked except as the contract may provide

Catgraphics CC
‘contract’ not limited to written contract = includes tacit/implied contracts
Sole licence
→ aRords licensee to exclusion of all others, besides licensor, the right to
perform acts as agreed upon irt the subject work
• Same principles as non-exclusive license
• Licensor free to exercise right despite license
Needletime licence
S 9(d) & (e)
→ owner of sound recording CR has right to authorise or control use of sound
recording in broadcasts, public performance and material carried by record

S 9A → licensing of needletime
= creates license in favour of payer and deemed to grant license in that persons
favour under the corresponding right of the performed
• Person who exercises neeletime right = pay royalty to owner unless agreed
to contrary
• Amount of compulsory royalty must be agreed btwn owner + performer and
user of the record
• No agreement = can refer to CR tribunal or arbitration
• Royalty paid to owner who must share it with performers
• Still need to obtain license for the public performance
• Administered by collecting societies
HYPOTHECATION & • This involves using intellectual property, in this case, copyright, as collateral
ATTACHMENT to secure a debt.
• In essence, a lender and borrower agree contractually to the terms upon
which copyright will be hypothecated in a deed of security.
• For example, Disney Enterprises Inc. v Griesel NO where an ex parte
application was brought to attach copyright to found jurisdiction.
SOLOMON LINDA’S Transfer of copyright
MBUBE

1939: SL & group release

Mbube

2006: SL's family

received 2007: As part of
compensation settlement, trust
(lump sum for set up to
1952: Copy of record
past royalities administer
wounds up w/ Pete
and cut of future funds
Seeger who changed
title to Wimoweh and revenue)
records it w/ The
Weavers

2004: Linda 2016: Disney

estate w/ help of announces remake,
SA lawyers sued the songs publisher
Disney for says it has
copyright negotiated a deal for
violation use of the song
1961: the Token wanted
to morph 'Wimoweh' into
a pop song and
commissions
songwriters to write new 1997:Stage 2020:Sony
words for what becomes production of Music works
'The Lion Sleeps Tonight' Lion King with the
undertaken Mahotella
Queen to remix
Mbube

1962: SL dies having

received no royalties 1994: First Lion
nor co-writing creditor King movie
on 'The Lion Sleeps released
Tonight'
1.6 & 1.7
• “The Lion Sleeps Tonight’: The Ongoing saga of pop’s most contentious song” by David Browne.
• “Netflix's 'Oloture' is a copy and paste of my life story - investigative journalist, Tobore Ovuorie”
[Exclusive]” by Precious ‘Mamazeus’ Nwogu.
• King v SA Weather Service 2009 (3) SA 13 (SCA).
• Biotech Laboratories (Pty) Ltd v Beecham Group plc and another 2002 (4) SA 249 (SCA)

PROBLEM 2-6
Transaction tracing: Add two more columns to the table you prepared in the previous chapter/study
unit. The two columns should identify the transaction(s) entered into in relation to the applicable
rights to each work and the statutory and case law basis for each transaction. You may create a
transaction tree as opposed to a table.

PROBLEM 2-7
You have now read the news story: Netflix's 'Oloture' is a copy and paste of my life story - investigative
journalist, Tobore Ovuorie” [Exclusive] by Precious ‘Mamazeus’ Nwogu:
https://www.pulse.ng/entertainment/movies/netflixs-oloture-is-a-copy-and-paste-of-my- life-story-
investigative-journalist-tobore/82ywpqg
Assuming the movie, Oloture was actually copied from Ms Tobore’s investigative report, who is
the copyright owner in respect of the report for purposes of obtaining permission for the movie
adaptation?

PROBLEM 2-8
Veteran journalist, Bongani Sinikiwe is employed by The Benevolent Newspapers since 2009.
In 2012, Bongani’s childhood friend was reportedly killed by a prostitution ring she joined a few years
back in Italy. Disturbed by the danger and ills of sex traRicking business, Bongani approached her
employers to conduct investigations and write a report on the dangerous sex traRicking business and
her proposal was approved. In 2013, Bongani went undercover for two years as Adaka, an aspiring sex
worker seeking greener pastures

Newspapers published Bongani’s journal as an investigate report titled “Drugs and TraRicking: A fight
that fights back” by Bongani Sinikiwe. The report drew comments and action from government
agencies, NGOs and the general public. Bongani resigned from the employment. In 2015, The
Benevolent
of The Benevolent Newspapers in 2017 to start an online newspaper. In 2019, Siviwe Productions
contacted The Benevolent Newspapers seeking to secure rights to make a movie based on the 2015
investigative report. After several weeks of negotiations, The Benevolent Newspaper granted an
exclusive licence to Siviwe Productions to make a movie based on the 2015 investigative report. The
movie based on the 2015 investigative report and titled “Olaedo” was released to critical acclaim in
January 2020. In the opening and
end credits respectively, the movie showed the following text:

Opening credit

“Story by Siviwe Africa and Nyichi Rie”

Dr CI Okorie 2023

End credits
“To Bongani Sinikiwe and all journalists who expose hidden events to bring light to our world”

Bongani Sinikiwe has now seen “Olaedo” and is incensed that Siviwe Productions did not approach
her for a licence to use what she believes to be her copyright-protected work.

Bongani has approached you for advice.

Advise Bongani fully.

PROBLEM 2-9
This question is based on Netflix’s Remastered: The Lion’s Share. How did Gallo become
copyright owner of Linda’s composition?

PROBLEM 2-10
In Biotech Laboratories (Pty) Ltd v Beecham Group plc and another 2002 (4) SA 249 (SCA), the
Supreme Court of Appeal provided an interpretation of the expression, ‘under the direction or control
of the state’. The package insert even though amended by the respondent sometimes upon the
suggestion of the Medicines Control Council, was not made under the latter’s direction or control.
This was because the MCC did not change the substance of the insert nor co-author the end result.
Contrast the Biotech decision with what happened with the Ugandan National Anthem as discussed
here. Does the fact that the Ugandan government requested the entries mean that the winning entry
was made under its direction or control?

PROBLEM 2-11
Does s21(2) contradict s12(8)(a) of the Copyright Act?

PROBLEM 2-12
The following questions are based on Netflix’s Remastered: The Lion’s Share.
1) You were the legal adviser/in-house counsel for Folkway Music Publishers Inc. and you are
preparing a handover note for new counsel. Relying on your knowledge of transfer and
acquisition of copyright, trace and explain how Folkway Music Publishers Inc. became
copyright owner of a song written by Solomon Linda in South Africa. In your explanation,
confirm with reason(s) if Folkway’s ownership is valid.
2) The music publishers record labels Paul Secular felt moral obligation and arranger and
lyricist was called and told what Mbube means, and he wrote the lion sleeps tonight. Lyrics is
the lyrics in literary work. An adaptation? Later suit between Folkways and Weiss, the
narrator says they were battling for his song that neither side had created. But is this legally
correct?
3) What of the arrangement by Weiss? Again, is it an adaptation?
4) Does it not satisfy the eligibility criteria? George Weiss won the suit. Is that legally feasible?
5) Is it contradictory of Dean to on one hand say there was an assignment and on the other
hand, say that the Lion sleeps tonight was from Mbube and therefore infringing since no
permission was granted.

PROBLEM 2-13
What type of licence was issued in PCCW Vuclip case?
2.4 → COPYRIGHT INFRINGEMENT, REMEDIES AND DEFENCE

Remedies
Infringements
Defences

A bundle of exclusive rights over specified categories of works which meet specified perquisites.
INFRINGMENET Style 1
Engages in activity that is within the scope of the exclusive rights w/out
authorisation of CR owner
= infringement has taken place
Style 2
Importation for purpose other than for private and domestic use
• Import or export CR works
• Selling, letting, trading, hiring
• Distribution for trading or for any other purpose to such extent that the
owner is prejudicially aRected
• If to doer’s knowledge the making of that article constituted an infringement
of that copyright or would have constituted such an infringement if the
article had been made in the specific jurisdiction
o Photocopying of work then imported
Criminal Infringement could attract criminal liability
infringement • Prosecuting authority decides to prosecute for style 2 infringment

In the event of an infringement, a copyright owner has recourse to remedies but there may be defences
available to the alleged infringer depending on the facts.

REMEDIES (a) Damages either damages or reasonable

(b) Reasonable royalties royalty and not both
account of profit
(c) Interdict or injunction against further or continued infringement
(d) Delivery of infringing copies or plates/machinery used for infringement
DEFENCES 1. No originality = work doesn’t enjoy CR protection
2. No work properly so called
3. No locus standi (plaintiR not CR owner or owner’s duly authorised
representative)
4. No substantial similarity btwn 2 works
5. Defendant’s activity is outside scope of exclusive rights framework
6. Copyright expiration
7. General and specific limitations and exception
INFRINGEMENT
• Can take various forms:
1. direct/primary
2. indirect/secondary
3. criminal infringements
DIRECT → person, without owners permission, does or performs irt a protected work,
INFRINGMENT acts comprised in owners monopoly (restricted acts applicable to type of work)
• mere use ≠ CR infringement
S 23(1)
Copyright shall be infringed by any person, not being the owner of the copyright,
who, without the licence of such owner, does or causes any other person to do,
in the Republic, any act which the owner has the exclusive right to do or to
authorize.
• Restricted acts define boundaries and provide content of monopoly
• Must be interpreted correctly
• Restricted act performed w/ permission ≠ infringement

Restricted acts:
1. Reproduction (suRiciently wide to cater for developments) → prohibited
to reproduce a work in any manner or form
2. Adaption of work
3. Publishing a work
4. Performing it in public
5. Broadcasting it
6. Dealing w/ a copy for purposes of trade (letting, hiring, selling)

Performance of restricted act prohibited

→ including performance of any ‘substantial part’ thereof
• Substantial part not defined
• Test is one at to the quality and not quantity of material that has been
taken from a work
• Question of degree considering facts of each case
• Haupt → copying 63 lines of source code that was thousands of lines
long = substantial part
o Infringer found it too diRicult to write them himself = valuable
ingredient of the program
• Comparison must be made btwn work and the infringing work
• Value judgement made on substantiality of the part
• If part with substance = degree of similarity must be assessed in
isolation
• Overall similarity is not appropriate criterion
• Comparison must take account of dissimilarities btwn respective parts
• Necessary to determine wherein the originality of the CR work lies
• Original aspects of work that are protected
• Derivative work may include portions to which owner cannot lay claim
bc not own contribution

Jacana Education
• Infringement btwn competing maps of Kruger National Park
• Incorporated referencing to various common places
• Neither maps were truly original works
• Both maps created with reference to pre-existing matter
• Essential for claimant to show what features were original
• In truly original artistic works mere comparison usually provides an
answer
 • Spectravest Inc: where reproduction of substantial part of work is
alleged → approach:
• identify part reproduced
• whether substantial part of work: qualitative test
• whether part reproduced → doesn’t mean exact replication, not
entitled to steal essential features and substance w/ minor
alterations
• whether degree of similarity btwn salient features =
reproduction
• attention paid to part said to have been reproduced

Galago Publishers
'reproduction' within the meaning of the Act involves a two-step test which
must be satisfied, namely that:
1. suRicient objective similarity between the alleged infringing work and
the original work, or a substantial part thereof, for the former to be
properlv described not necessarily as identical with, but as a
reproduction or copy of, the latter; and
2. original work was the source from which the alleged infringing work was
derived, namely that there is a causal connection between the original
work and the infringing work
o casual connection could be either direct or indirect
= must establish both to succeed in infringement based on reproduction →
show copied
• mere similarity doesn’t suRice
• similarities purely coincidental = not infringement bc no copying
• copying but not suRiciently objectively similar = no infringement
Fax Directories (Pty) Ltd
• whether CR in literary work (Pink Pages) was infringed by publication of
competing directory
• Pink Pages inserted fictitious entries in its directories which appeared in
competing directory
• Otherwise impossible to prove copying
• Copied directly or indirectly
• Inconceivable that respondent could only have selected those 28
• Must have been many more simply copied
• Amount copied was substantial

• Copy traps = way owners can ease burden of proving infringement

• Copying can be direct or indirect (not the actual work but another
reproduction eg photo of artwork)
• 3D version of 2D work = reproduction
• If there is a causal connection = copies
Bosal Afrika (Pty) Ltd
• CR subsistent in parts numbering system used irt vehicle exhaust
systems
• Each code consisted of 6 digits
• Defendant devised code by subtracting plaintiR number from 999 999
• Patter was substantially the same
• Numbering code not a direct copy
• Whether constituted an adaption
 • Adopting a numbering code which was linked to that of the plaintiR was
using plaintiRs numbering
• Customers could in future utilise them improperly
• Made an adaption without authority = infringement
• Claimant need not show infringer knew infringing activities were unlawful
• Acted in good faith in reproducing substantial part w/out authority =
infringement
• S 23(1) = de facto perpetrator liable: actually performing the restricted act
• Also impugns person who caused or instigated the restricted act
Another way in which copyright may be infringed is in a case where someone has caused another to
perform the acts that are exclusively reserved for the copyright owner. What does it mean to “cause
another to do”?

ESTABLISHING Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty)

INFRINGMENT copying any substantial part of a work would be an infringement.

“Substantial” is a question of quality and a value judgement is to be made to

determine if what has been copied relates to the original aspects of the
allegedly infringed work.
Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd

it is the original aspects of the alleged copied work that is relevant to assessing
infringement so that for works that have the same source, establishing
similarity may be di`icult.
Galago Publishers (Pty) Ltd and another v Erasmus

infringement by reproduction = objective similarity between the two works +

causal connection between the two works (i.e., original work was the source of
the allegedly infringing work). Both aspects must be established.
• The defendant’s knowledge or otherwise of the infringing nature of their act
is immaterial for the purposes of s23(1).
• YouTube views may be one way to establish that there was access to the
work as to create a causal connection.
• A person who caused another to perform an infringing act without the
consent of the copyright owner is also liable for infringement. Direct
instructions to engage in an infringing act when issued to a person over
whom the instructor has power or control would suRice.
• Remember that as infringement is tied to the exclusive rights, any alleged
act of infringement must identify the work said to have been infringed and
the specific right that has been infringed in relation to that work.
• Question: on a platform like YouTube where the owners of the platform
have provided a platform and terms of service that allow people to
upload copyright- protected works, would YouTube be said to be
causing the people uploading to infringe?

INDIRECT → occurs when person deals in infringing articles

INFRINGEMENT • Not reproduced work but secured it from another source and deals with
it for purposes of trade
• Or permits place of public entertainment to be used for performance of
a work that infringes work
 Requirement: infringer must know that his conduct are the results of CR
infringement (infringing copies)
→ guilty knowledge is a requirement
• Court must be satisfied that prior to institution of proceedings infringer
knew his conduct constituted infringement
• Requirement satisfied by addressing an appropriate cease & desist
before pursuing formal proceedings
• Undertaking not given and infringing conduct persists = has guilty
knowledge
Dealing in infringing S 23(2)
articles for Without derogating from the generality of subsection (1), copyright shall
purposes of trade be infringed by any person who, without the licence of the owner of the
copyright and at a time when copyright subsists in a work-

a. imports an article into the Republic for a purpose other than for his private
and domestic use;
b. sells, lets, or by way of trade oRers or exposes for sale or hire in the
Republic any article;
c. distributes in the Republic any article for the purposes of trade, or for any
other purpose, to such an extent that the owner of the copyright in question
is prejudicially aRected; or
d. acquires an article relating to a computer program in the Republic, if to his
knowledge the making of that article constituted an infringement of that
copyright or would have constituted such an infringement if the article had
been made in the Republic.
• Person who deals in infringing copies for own financial gain to infringe CR
• Where infringing copies imported into SA and intended for private &
domestic use → wont constitute secondary infringement
• Purpose of importation must be for some other objective relating to trading
in the articles
• Enquiry: whether articles if made in SA would have constituted
infringement
• Depends on rights of actual manufacturer (geographical scope of those
rights)
• If don’t extend to SA = acted w/out authority = infringement
Frank & Hirsch (Pty) Ltd v Roopanand Brothers (Pty) Ltd

Public S 23(3)
performances The copyright in a literary or musical work shall be infringed by any
person who permits a place of public entertainment to be used for
performance in public of the work, where the performance constitutes an
infringement of the copyright in the work: Provided that this subsection shall
not apply in a case where the person permitting the place of public
entertainment to be so used was not aware and had no reasonable ground: for
suspecting that the performance would be an infringement of the
copyright.

Knowledge is also a factor to be established for this kind of infringement.

Recall what we said in class and on the discussion board about blanket
licences and how they are procured to avoid this kind of infringement.
 • CR of literary or musical work infringed by person who permits a place of
public entertainment to use work in public performance where they
person permitting it knows that’s the case
• Places an onus on operators of theatres, cinemas etc to ensure they
control the performances and works performed
• Requirement: must have been aware or reasonable grounds for
suspecting that the performance would be infringement
Parallel • Genuine product made in another country with authorisation and imported
importation/ grey to diR country without permission
goods • Outside authorised importation channels
• Sourced abroad at cheaper prices and imported at low cost
• Foreign manufacturer appointed exclusive distribution in the country of
importation
• ‘Grey goods’ refers to products imported through unoRicial and
unauthorised channels

Frank & Hirsch Pty Ltd

• Importation of blank grey TDK audio and video cassette tapes
• Goods and packaging = literary and artistic works in which copyright
subsisted
• Frank & Hirsch was the exclusive importer and distributor
• Roopanand Brothers began importing genuine TDK tapes
• Obtained from authorised dealer in Singapore
• Imported legitimately
• Assigned copyright to Frank & Hirsch thus enabling them as SA CR owner to
sue Roopanand Borthers for secondary copyright infringement

• Can infringe copyright

• Grey goods must be or become infringing copies
• Where maker of goods (TDK Electronics) doesn’t hold reproduction rights in
SA
• Actual maker = worldwide CR owner = maker should divest itself of
reproduction rights for SA
• Once assigned = infringement
Criminal Section 27(1)(a) to (f) criminalizes the same acts as those under section 23(2).
infringement (S 27) 1. Any person who at a time when copyright subsists in a work, without the
authority of the owner of the copyright:
(a) makes for sale or hire
(b) sells or lets for hire or by way of trade o`ers or exposes for sale or hire
(c) by way of trade exhibits in public
(d) imports into South Africa otherwise than for his private or domestic use
(e) distributes for purposes of trade or
(f) distributes for any other purposes to such an extent that the owner of the
copyright is prejudicially a`ected;
articles which he knows to be infringing copies of the work, is guilty of an
o`ence
→ secondary civil CR infringement and require guilty knowledge

2. Any person who at a time when copyright subsists in a work makes or has in
his possession a plate knowing that it is to be used for making infringing
copies of the work, is guilty of an oRence
 3. Any person who causes a literary or musical work to be performed in public
knowing that copyright subsists in the work and that the performance
constitutes an infringement of the copyright, is guilty of an oRence.
4. Any person who causes a broadcast to be rebroadcast or transmitted in a
diRusion service knowing that copyright subsists in the broadcast and that
such rebroadcast or transmission constitutes an infringement of the
copyright, is guilty of an oRence
5. Any person who causes programme-carrying signals to be distributed by a
distributor for whom they were not intended knowing that copyright
subsists in the signals and that such distribution constitutes an
infringement of the copyright, is guilty of an oRence

The Act makes provision for the following penalties to be imposed :

1. in the case of a first conviction, a fine not exceeding R5 000 or
imprisonment for a period not exceeding three years, or to both a fine
and imprisonment for each article to which the oRence relates;
2. in the case of a further conviction, a fine not exceeding R10 000, or
imprisonment for period not exceeding five years, or both such fine and
such imprisonment, for each article to which the oRence relates

Plagiarism and • Plagiarism can be described as the practice of taking someone else's work
infringement or ideas and passing them oR as one's own.
• Copyright infringement on the other hand can only occur in relation to
works which are in a material form.
• Plagiarism can take place in respect of works which are out of copyright and
are in the public domain.
• The key thing to note between plagiarism and copyright infringement is that
the structure of learning, education and copyright allows students and
indeed any member of the public to use copyright protected works and
engage with them including citing and referring to them.
• What is not permissible from the perspective of plagiarism is outright
reproduction, substantial reproduction and/or quotation without
acknowledgment”.
• Copyright infringement breaches the exclusive rights of a copyright owner
when a protected work is, for example, reproduced without permission.
• The moral concept of plagiarism entails the unearned increment of the
plagiarist's reputation that is achieved through false claims of authorship
• Where a protected work (or a substantial part thereof) has been reproduced
without the copyright owner's permission in circumstances giving rise to
copyright infringement, such copying without acknowledgement of the
source of the material or the author thereof may also constitute plagiarism
MORAL RIGHTS • Moral rights in South Africa involves the right to claim authorship and the
INFRINGEMENT right to object to any distortion, mutilation or other modification of the work
where such action is or would be prejudicial to the honour or reputation of
the author.
• Important to note: Unlike copyright infringement, so-called moral rights
infringement is actually by virtue of s20, a right to claim or a right to object.
If an author claims or objects and the alleged or potential ‘infringer’ refuses
to adhere, it is then left for the courts (if the author approaches the court) to
uphold such claim or objection.
• Example: Artists who spoke out against Trump using their music in his
rallies
REMEDIES FOR COPYRIGHT INFRINGEMENT
REMEDIES 1. damages or
2. reasonable royalty;
3. interdict;
4. delivery of infringing copies or plates used for infringement.
NB: It’s either damages or reasonable royalty not both.

• For section 24(2), the relief of damages is not available if the defendant can
prove lack of knowledge and no reasonable grounds for suspecting
copyright subsistence. It is to checkmate this defence that authors indicate
the copyright symbol ©.
• The plaintiR has a discretion to choose the remedy that best suits the
infringement.
• Note s25 which requires the exclusive licensees and sub-licensees to notify
the copyright owner before instituting infringement proceedings.

Interdict To grant a final interdict, a court must be able to find on the evidence presented
that:
• the plaintiR/applicant has established the subsistence of a clear right of
copyright in respect of the work(s) relied upon;
• the defendant/respondent has infringed that right; and
• there is an absence of similar protection by any other remedy
Delivery The delivery-up relief available to a claimant may enable him to remove all
infringing copies from the possession or control of the infringer so that they can
be destroyed.
Damages or claim • The damages claim provided for by CRA → ordinary common-law
for reasonable patrimonial damages that the plaintiR has suRered as a result of the
royalty infringer's unlawful conduct
• A claim for payment of a reasonable royalty can only be pursued in the
alternative to a damages claim.
• Reasonable royalty will be the option of choice in view of the inherent
diRiculty in proving the amount of monetary loss actually suRered
• Expert evidence generally adduced to a court for what a reasonable royalty
might be, bearing in mind the diverse circumstances that apply in the
various spheres of trade
• Claimant is required to establish a reasonable royalty rate and show the
quantity of infringing copies dealt in by the infringer.
Special or punitive CRA makes provision for a form of special or punitive damages
damages When: infringement of copyright is proved or is admitted, the court, having
regard, in addition to all other material considerations, to:
• the flagrancy of the infringement
• any benefit shown to have accrued to the defendant by reason of the
infringement
is satisfied that eRective relief would not otherwise be available to the
plaintiR, it can, in assessing damages for the infringement, award such
additional damages as it may deem fit
• discretion granted to a court to award such further damages as it considers
appropriate

• a claim for damages → court will not grant damages where the infringer did
not have the requisite guilty knowledge
 o was not aware, and did not have reasonable grounds for suspecting,
that copyright subsisted in the relevant work
• guilty knowledge' requirement diRers from that required for an indirect or
secondary infringement of copyright, namely that the infringer should know
that he is dealing with infringing copies
• requirement of guilty knowledge does not apply to a claim for payment of a
reasonable royalty.
DEFENCES TO COPYRIGHT INFRINGEMENT LIABILITY
• Various defences an alleged infringer may rely on when faced with infringement proceedings
DEFENCES A defendant in an action for copyright infringement may escape liability if the
defendant can establish any of the following:
1. That the work alleged to have been infringed is not original or that the
alleged infringing work pertains to the unoriginal aspects of the plaintiR’s
work.
o Moneyweb (Pty) Limited v Media24 Limited = the court held
that 4 of the contested news articles did not enjoy copyright
protection because those articles failed the originality test – they
were verbatim report of the interview transcripts.
o Has not discharged burden of proving showing work is original
2. That the plaintiR is not the copyright owner or a person authorized to
institute the action on behalf of the copyright owner (locus standi)
3. That the similarity between their work and the portion of the plaintiR’s work
alleged to have been used is not substantial
4. That the defendant’s activity is outside the scope of the exclusive rights
framework.
5. That copyright in the work has expired.
6. That the activities involve reproduction by libraries or archive depots making
multiple copies for classroom use; copies for teachers or reproductions of
building plans by local authorities under the Copyright Regulations 1978.
7. That any of the general and specific limitations and exceptions under ss12-
19B(such as fair dealing; use in judicial proceedings; quotation; illustration;
lawful broadcasts; reverse engineering; etc.) apply.

Before these specific defences, or more correctly exemptions from copyright infringement, come into
contention, an act of copyright infringement must in principle have been perpetrated.
→ restricted act must be performed without authority of owner
• Less than a substantial part = no infringement = no specific defence arises
FAIR DEALING which applies in varying degrees to the following works:
1. literary works
2. musical works
3. artistic works
4. cinematograph films
5. sound recordings
6. broadcasts
7. published editions and
8. computer programs

• defence of fair dealing applies to a lesser extent in regard to cinematograph

films, sound recordings and computer programs
• fair dealing does not allow the use of a film, sound recording or computer
program for purposes of research or private study or for personal or private
use
3 circumstances when may rely on fair dealing
Use of work is
• for the purposes of research or private study by, or the personal or private
use of, the person using the work
• for the purposes of criticism or review of that work or of another work
• for the purpose of reporting current event
• in a newspaper, magazine or similar periodical; or
• by means of broadcasting or in a cinematograph film
Requirement: source of material must be mentioned as well as name of the
author if it appears on the work
Section 12(1)
Copyright shall not be infringed by any fair dealing with a literary or musical
work- for the purposes of research or private study by, or the personal or private
use of, the person using the work; for the purposes of criticism or review of that
work or of another work; or (c) for the purpose of reporting current events - (i) in
a newspaper, magazine or similar periodical; or (ii) by means of broadcasting or
in a cinematograph film;

• In terms of section 12(1), fair dealing with a work for the purposes of
research, private study, personal or private use, criticism or review,
reporting of current events in a newspaper or by means of broadcasting
or in a cinematograph film will not infringe a copyright work.
• These fair dealing purposes apply to literary, musical and artistic works,
broadcasts and published editions.
• The research, private study, personal or private use fair dealing
purposes do not apply to cinematograph film, sound recording and
computer program.

Factors for determining whether the use made of a work in any particular case
is a fair use:
1. whether the work can be obtained within a reasonable time at a normal
commercial price
2. the purpose and character of the use
3. the nature of the copyrighted work
4. the amount and substantiality of the portion used; and
5. the eRect upon the plaintiR's potential market.
The Act does not proRer a definition of what dealing is to be considered fair.

Decided cases provide an indication in that regard.

Moneyweb (Pty) Limited v Media24 Limited and Another, where the court
held that:
“In my view, the factors relevant to a consideration of fairness within the
meaning of section 12(1)(c)(i) include:
a. the nature of the medium in which the works have been
published;
b. whether the original work has already been published; the time
lapse between the publication of the two works;
 c. the amount (quality and quantity) of the work that has been
taken; and
d. the extent of the acknowledgement given to the original work.
One factor may be more or less important than another, given the context in
which publication occurs. The list of factors is not exhaustive”.

General exceptions Judicial Proceedings:

• Copyright in literary or musical works is not infringed if used for judicial
proceedings.
• Reproduction for the purpose of reporting judicial proceedings is also
exempted.
• This exception applies to:
o Artistic works
o Cinematograph films
o Sound recordings
o Broadcasts
o Published editions
o Computer programs
Quotations:
• Copyright is not infringed by quoting from a work lawfully available to
the public.
• This includes quotations from articles in newspapers or periodicals.
• Conditions:
o The quotation must be compatible with fair practice.
o The extent of the quotation must not exceed what is justified by
the purpose.
o The source and author (if mentioned) must be acknowledged.
• This exemption also extends to:
o Cinematograph films
o Sound recordings
o Broadcasts
o Computer programs
Illustrations for Teaching:
• Use of a literary or musical work for illustration in teaching materials
(publication, broadcast, or sound/visual records) does not infringe
copyright.
• Conditions:
o Use must be compatible with fair practice.
o The source and author (if mentioned) must be acknowledged.
• This exemption also applies to:
o Artistic works
o Cinematograph films
o Sound recordings
o Broadcasts
o Published editions
o Computer programs
Broadcasting by Broadcasters:
• A broadcaster can reproduce a literary or musical work using its own
facilities without infringing copyright.
• Conditions:
o Reproduction is for lawful broadcasts and must be destroyed
within six months (or a longer period if agreed).
 • Any exceptional documentary reproduction may be preserved in the
broadcaster’s archives.
• This exemption applies to:
o Artistic works
o Sound recordings
o Broadcasts
o Published editions
o Computer programs
Public Lectures and Addresses:
• Reproducing or broadcasting a public lecture or similar work for
informational purposes does not infringe copyright.
• The author retains the exclusive right to compile collections of their
works.
Articles on Current Topics:
• Reproducing or broadcasting an article on current economic, political,
or religious topics does not infringe copyright.
• Conditions:
o Reproduction or broadcast must not be expressly reserved by the
copyright owner.
o The source must be clearly mentioned.
O\icial Texts and Speeches:
• No copyright subsists in:
o ORicial texts of a legislative, administrative, or legal nature.
o ORicial translations of such texts.
o Political speeches or speeches in legal proceedings.
o News of the day as mere press information.
• This exemption declares these works free from copyright and available
for public use.
Demonstrations of Equipment:
• Copyright is not infringed by the use of a literary or musical work in a
bona fide demonstration of radio, television, or recording/playback
equipment to a client by a dealer.
• This exemption also applies to:
o Artistic works
o Cinematograph films
o Sound recordings
o Broadcasts
o Published editions
o Computer programs

Cinematograph Films:
• Authorization to use a literary work for making a cinematograph film
includes the right to broadcast the film unless otherwise agreed.
• This exemption extends to:
o Artistic works
o Cinematograph films
o Sound recordings
o Broadcasts
o Published editions
o Computer programs
Records of musical → CR in a musical work is not infringed by a person ('the manufacturer') who
works makes a record of the work, or of an adaptation thereof, in South Africa,
whether from an imported disc, tape, matrix or otherwise, if
1. records embodying the work or a similar adaptation of the work were
previously made in or imported into South Africa for the purposes of
retail sale and were so made or imported by, or with the licence of, the
owner of the copyright in the work
2. before making the record the manufacturer gave the prescribed notice
to the owner of the copyright of his intention to make it
3. the manufacturer intends to sell the record by retail or to supply it for
the purpose of resale by retail by another person or to use it for making
other records to be so sold or so supplied and
4. in the case of a record which is sold by retail or supplied for the purpose
of resale by retail, the manufacturer pays to the owner of the copyright,
in the prescribed manner and at the prescribed time, the prescribed
royalties

Where a record comprises, with or without other material, a performance of a

musical work or of an adaptation of a musical work in which words are sung or
are spoken that are incidental to, or in association with, the music, and no
copyright subsists in that musical work or, if copyright does subsist therein,
the stated conditions are fulfilled in relation to such copyright and
1. the words consist or form part of a literary work in which copyright subsists,
and
2. the relevant records were made or imported by or with the licence of the
owner of the copyright in that literary work and
3. the stated conditions are fulfilled in relation to the owner of that copyright,
the making of the record does not constitute an infringement of the
copyright in the literary work in question.
→ If a record includes a performance of a musical work with sung or spoken
words, and the words are part of a literary work that is copyrighted, the record
does not infringe on that copyright if it was made or imported with the
permission of the copyright owner and all required conditions are met for both
the music and the literary work.
Specific exceptions copyright in an artistic work is not infringed by its inclusion in a
for artistic works cinematograph film or a television broadcast or transmission in a diRusion
service
if such inclusion is merely by way of background, or incidental, to the principal
matters represented in the film, broadcast or transmission

copyright in a work of architecture, or in the relevant drawings, from which it

is derived, is not infringed by the reconstruction of that work on the same
site in the same style as the original

copyright in an artistic work is not infringed by its reproduction or inclusion in

a cinematograph film or a television broadcast or transmission in a diRusion
service, if such work is permanently situated in a street, square or a similar
public place

copyright in an artistic work is not infringed by indirectly copying authorised

three-dimensional reproductions of it in certain circumstances = 'reverse
engineering' exemption
Reverse S 15(3A) CRA
engineering it is permissible to 'reverse engineer' another person's three-dimensional
exception for product derived from an artistic work, subject to certain conditions
artistic works • this specific concession applies only to artistic works.
Reverse engineering → reproduction of another manufacturer's product
following detailed examination of the design of the product and its
components, where applicable

• person A obtains an actual sample of person B's product (e.g. a vehicle

spare part, item of furniture or shoe), takes it apart, studies it in detail
and then creates his or her own drawings or other reproductions of B's
product for the purposes of creating his or her own version of it
• Where B's product is derived from, and is a reproduction of, an artistic
work.
• A is therefore indirectly making a reproduction of B, artistic work
→ An exemption is provided which allows reverse engineering to take place even
though in principle infringement
• does not mean that this is true of other countries.
• relates only to the reproduction of a three-dimensional version of an
artistic work (as opposed to, for example, drawings, which are two-
dimensional)
• reproduction of a three-dimensional article which is a derivative of an
artistic work, whether that artistic work exists in a two-dimensional or
three-dimensional form
• the copyright in an artistic work of which three-dimensional
reproductions have been made available to the public, whether inside or
outside South Africa, by, or with the consent of, the copyright owner (
'authorised reproductions'), is not infringed if any person, without the
consent of the copyright owner, makes or makes available to the public,
three-dimensional reproductions or adaptations of the authorised
reproductions, provided the authorised reproductions primarily have a
utilitarian purpose and are made by an industrial process

Elements to this provision which are decisive as to whether or not the defence
will be available to an alleged infringer:
1. the alleged infringer must have copied an actual authorised three-
dimensional derivative version of an artistic work (and not a two-
dimensional drawing which served as a basis for creating the derivative
article)
• if an alleged infringer makes its own version of the relevant product from the
drawings of the protected work, such conduct will fall outside the ambit of
the exception.
2. the article so copied (i.e. the authorised reproduction) must have a
primarily utilitarian purpose (as opposed to, for example, a primarily
aesthetic purpose)
• if the derivative article (the authorised reproduction) does not have as its
primary purpose to be useful or practical, but rather to be primarily
ornamental or appealing to aesthetic tastes, the defence will not apply
3. the copyright owner's derivative three-dimensional product (the
authorised reproduction which serves as the basis for the contentious
copying process) must have been made by an industrial process
 • industrial process → a systematic series of mechanical or chemical
operations that produce or manufacture something

Example:
• Original Product: Imagine Person B creates a unique chair design. This chair is
based on an artistic drawing that Person B originally made. The chair is
produced in a factory (an industrial process) and is primarily meant to be used
as furniture (a utilitarian purpose).
• Reverse Engineering: Person A buys one of these chairs from a store. Person A
takes the chair apart to understand how it’s made, then uses that knowledge to
create their own version of the chair. Person A's version is based on the actual
chair they bought, not on the original artistic drawing.
Legal Explanation:
• Allowed Under Section 15(3A): Because Person A is copying a three-
dimensional product (the chair) that was made through an industrial process
and is primarily utilitarian (it’s a functional piece of furniture), this reverse
engineering is allowed under Section 15(3A).
• Conditions Met:
o Three-Dimensional Product: Person A is working with the actual chair,
not just the drawing.
o Utilitarian Purpose: The chair’s main purpose is to be used as furniture.
o Industrial Process: The chair was made in a factory, not handcrafted.
Conclusion:
In this scenario, Person A can legally create their own version of the chair based on
Person B’s design without infringing on copyright, as long as they followed the
conditions set out in Section 15(3A).

Moresport (Pty) Ltd

• CROCS beach model shoes produced and the importation for purposes of
trade of 'look-allike competing footwear by a local enterprise, Moresport
• Visually identical to the CROCS shoes, but did not feature the CROCS trade
mark in any manner
• Based on the CROCS product available in the market and its manufacture
entailed reverse-engineered reproductions of the CROCS designs which
were embodied in drawings.
• Moresport applied to the court for an order setting aside the detention of
the goods by SARS on the grounds that no copyright infringement had taken
place
• CROCS product primarily had a utilitarian purpose (i.e. it was first and
foremost useful and only aesthetic as a secondary consideration), and was
made by an industrial process.
• Moresport's versions were not derived directly from CROCS design
drawings (in their two-dimensional form), but rather had been reverse-
engineered from actual CROCS shoes which had been manufactured and
distributed with Crocs In's approval
• CROCS look-alikes were held to fall within the ambit of the reverse
engineering defence and as such their manufacture and subsequent
importation and distribution did not infringe the copyright of Crocs Inc.
• Set aside the initial search and seizure warrant obtained by Crocs Inc and
ordered the goods to be released to Moresport.
Specific exception Programme-carrying signals have their own version of a 'fair-dealing' defence.
for programme- → CR not infringed by the distribution of short excerpts of the programme so
carrying signals carried where:
 a) they consist of reports of current events
b) they are compatible with fair practice
and the extent of the excerpts is justified by their informatory purpose
defence does not apply to material carried by programme-carrying signals
representing a sporting event
Specific exception back-up copies of computer programs
for computer → CR not infringed by a person who is in lawful possession of that computer
programs program, or an authorised copy thereof, if:
a) he makes copies thereof to the extent reasonably necessary for back-up
purposes
b) a copy so made is intended exclusively for personal or private purposes
c) such copy is destroyed when the possession of the computer program in
question, or authorised copy thereof, ceases to be lawful
Quotation exception
Section 12(3)
The copyright in a literary or musical work which is lawfully available to the public shall not be infringed
by any quotation therefrom, including any quotation from articles in newspapers or periodicals that are
in the form of summaries of any such work: Provided that the quotation shall be compatible with fair
practice, that the extent thereof shall not exceed the extent justified by the purpose and that the source
shall be mentioned, as well as the name of the author if it appears on the work.
Illustration exception
Section 12(4)
The copyright in a literary or musical work shall not be infringed by using such work, to the extent
justified by the purpose, by way of illustration in any publication, broadcast or sound or visual record
for teaching: Provided that such use shall be compatible with fair practice and that the source shall be
mentioned, as well as the name of the author if it appears on the work.
Other defences • Beyond what is allowed by the Copyright Act, additional reproductions of
provided for by works may be permitted through Regulations that can be introduced over
regulation time.
• Conditions for Reproduction:
o Reproductions must not conflict with the normal exploitation of the
work.
o Reproductions must not unreasonably harm the legitimate interests of
the copyright owner.
• The Act allows for potential new exemptions or defenses against copyright
infringement through these Regulations.

Copyright Regulations, 1978:

• Chapter 1 (Reproduction Regulations):
o Provides additional exemptions specifically for reproduction activities,
not limited to any particular type of work.
o These exemptions apply to the reproduction of any type of work, as long
as it meets the specified conditions.
o Exemptions also cover the distribution of reproduced works.
Specific Exemptions in the Regulations:
1. Reproduction by libraries or archive depots.
2. Multiple copies for classroom use.
3. Copies for teachers.
4. Reproductions of building plans by local authorities.

1.8, 1.9, 1.12

• Haupt t/a Soft Copy v Brewers Marketing Intelligence (Pty) Ltd and Others 908 JOC (A)
 • Jacana Education (Pty) Ltd v Frandsen Publishers (Pty) Ltd 1998 (2) SA 965 (SCA)
• Galago Publishers (Pty) Ltd and another v Erasmus 1989 (1) SA 276 (A)

PROBLEM 6-1
Apply the test for substantial similarity to the following fact patterns:
1) Hallmark creates a romantic greeting card showing an original arrangement of a cute puppy
with a bouquet of flowers and balloons under a rainbow with the superimposed text “i wuv
you.” American Greetings creates a card with an almost identical arrangement of its own cute
puppy with flowers and balloons, and a generic rainbow that also reads “i wuv you.”
2) DJ Naked samples the catchy four-note hook from your song and includes it in the introduction
to her song, which is otherwise entirely diRerent from your work.
3) Afan develops a South Park trivia game that contains multiple-choice questions about the key
characters and events in all of the episodes to date, duplicating fragmentary details from the
series in an entirely diRerent (text-only) format.

PROBLEM 6-2
Apply the copyright infringement test to the following facts:
a) James visits a bookstore that sells both new and used books. One of its most expensive
oRerings is a prime condition, unopened, edition of Madonna’s Sex, a 1992 book that,
famously, has pictures of Madonna eating pizza naked, hitch hiking naked and so on and, less
famously, has an exploration of sexuality, power dynamics and S&M. James is a shallow guy
and just wants to look at the nudie photos. But he is also cheap and does not want to pay the
requisite price. The book is held closed by a sealed paper band so that readers cannot see the
images inside. The paper band clearly announces that it can only be broken by a purchaser,
that breaking the band without paying, since the contents are copyrighted, constitutes
copyright infringement. James waits until the shopkeeper is not looking and breaks the band.
He peeks inside, and—his curiosity satisfied and his mind teeming with prurient imagery—
replaces the broken band and takes his leave without buying anything. Has James infringed
copyright?

b) Jennifer has long been fascinated by the kind of business strategy and self-improvement books
sold in airport bookstores. She studies the people who buy The Seven Habits of Highly E`ective
People, Lean In and What Color is Your Parachute? Then she watches them as they flip through
their purchases in the waiting area and on the plane. She notes that while people buy these
books in large numbers, they rarely read them. She concludes that even these short oRerings
are too lengthy for the average traveller and comes up with a brilliant business idea. She
decides to write 10 page precise versions of each book. While she does not use the same
words as the originals, she meticulously lays out all of the concepts, arguments and
conclusions they contain. Jennifer’s versions contain no criticism or commentary on the
original, merely a condensed summary of their points. She thinks this will allow busy business
travellers to pretend to have read the books without going through the time and expense of
doing so. Her service is wildly popular and she sells it to the SkyMall catalog whose slightly
greasy, E. coli encrusted pages now contain “Jennifer’s ‘Fake It To Make It’ Bookshelf,”
summarizing business bestsellers. She is sued by the copyright owners. Has Jennifer violated
copyright?
c) Irritated by all the law suits, Jennifer searches for an alternative business idea. She notes that
the only books more popular than self-help and business improvement titles are diet books.
She decides to write her own. Called The Last Diet Book, it consists of two sentences printed in
48 point type. “Eat less. Exercise more.” The remaining 200 pages of the book are blank. The
book is a huge success. James sees it and decides to publish his own book. It is called The Last
Diet Book, Abridged Edition. It has the same two sentences, but only 100 blank pages following
them, to cut down on costs. Meanwhile Anthony starts up a blog called “Eat Less. Exercise
 More.” The blog makes fun of diet crazes. Anthony concludes each posting with the tag line
“Eat Less. Exercise More.” Has James or Anthony violated copyright?

d) Sergey is a computer programmer who discovers an apparently universal truth. In every serious
relationship, friendship or work partnership, one person will be a time-realist and one a time-
fantasist. One party will accurately predict when it is necessary to leave in order to get to the
airport on time, or when one needs to start the paper in order to finish it in a timely manner. The
other person in the relationship will have an expansive, optimistic sense of duration in which it
is always possible to clean the kitchen, do the taxes and learn Russian before packing for the
flight that departs in one and a half hours. Sergey writes an app called “Leave now!” that, once
you have put in your schedule and answered a number of questions, will tell you when you
need to leave, start writing or what have you. The app is wildly popular. Intrigued, Larry—who
was once a programmer but now installs cable for Time Warner—decides to write his own app
that does exactly what “Leave Now” does. He carefully studies the functions Sergey provided—
such as integrating data on traRic and airport delays into its answers—and oRers each of those
functions in his competing app, “It’s Later Than You Think.” Has Larry infringed Sergey’s
copyright?

e) Imagine that Shakespeare’s works have been taken out of the public domain. (Shakespeare’s
works were never actually under copyright so it is not technically a restoration.) The
Department of Arts and Culture has conveyed the new copyright over Shakespeare’s works to
the UP Merensky 2 for its tireless work to promote the Bard and because the Library “will be a
good conservator of his literary heritage.” James has long been a fan of Hamlet. He writes a
novel featuring a gloomy and indecisive Scandinavian prince who has strangely intense
feelings for his mother, a correspondingly poor relationship with his uncle/stepfather, and a
really flaky girlfriend who talks about flowers a lot. The prince is called Hamnet (the name of
Shakespeare’s son, who died young). Could UP sue James for copyright infringement?"
2.6 → BASICS OF COPYRIGHT PROTECTION
UNIT 4 → TRADE MARKS

4.1 → INTRODUCTION TO TRADE MARK LAW

•
‘Trade mark’ → badge or symbol that a producer of goods or supplier of services uses in relation
to his g/s to inform the public that he is the source/provider of those g/s

A Trade mark is a “Mark” or “Sign” which distinguishes one trader’s products or

services from those of others and identifies the source of a particular product or
service.
• Means by which a trader conveys that ‘this is my product/service’
• Eg APPLE for computer and MTN for cellphone facilities
• Nike swoosh = certain expectations
• Governed by the Trade Marks Act (TMA) + common law
• And law of passing o\
o Passing oR involves the misrepresentation by a trader that his goods or services are
associated with those of another trader who has reputation or who has developed goodwill
in a particular product or service and as a result of the misrepresentation, there is
likelihood of consumer confusion.
• Rooted in state unfair competition laws that prohibited competitors from passing oR other
producer’s goods as their own
• TMA establishes and regulates system of registration of TMs
• Law of passing oR deals with right iro unregistered TMs which fall outside the registration system
& beyond statutory law
o Operates in parallel with TMA
• The IP Laws Amendment places a number of restrictions and qualifications on the registrations
of traditional terms or expression as a trade marks, certification or collective marks or
geographical indication.
International The Following International Agreements are of interest from a South African trade
law marks law perspective :
• The Paris Convention for the Protection of Industrial Property, 1883.
• The WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS).
• The Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks or “Madrid Protocol” (1989)
o South Africa has not yet joined the Madrid Protocol.
Requirements A Trade mark is a “Mark” or “Sign” which distinguishes one trader’s products or
services from those of others.
• Before a sign or symbol can qualify as a trade mark, it must first constitute a
“Mark”.
o In general any sign can qualify as a mark as long as it can be represented
graphically.
• Once a sign qualifies as a Mark, we then determine if it can also qualify as a
Trade mark (distinguishing character)

SIGN → MARK (GR) → TRADE MARK (DC)

 An application to register a trade mark must satisfy 3 conditions:
1. There must be a sign (i.e. a mark).
2. It must be capable of graphical representation.
3. It must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings.
TRADE MARK • TM rights can be enforced against 3rd parties whether registered or not
REGISTRATION o If registered = TMA provisions relating to infringement can be applied
& o If not registered = law of passing oR can be applied to protect them
FORMALITIES • Statutory protection easier to apply = preferable to register trade mark

→ Registration process comprises two main elements:

1) Voluntary actions taken before applying for registration
• Conducting prior trade mark searches, use investigations, domain
name searches
2) Compulsory activities as prescribed in the TMA & Regulations for
registration
• Lodging the application, examination of marks, advertisement of
applications in the Patent Journal

Territorial nature
• TMs are territorial → registration only grants right in country where registered
• If TM owner wants to protect his TM in more than one country = apply for
registration in those countries
• Modern trade is global, which increases the opportunity and risk of trade marks
becoming well-known and being exploited beyond their countries of origin.
o Victoria Secret Inc v Edgars Stores Ltd
•
Use and value What does trade mark law protect?
of registered = Use in trade or commerce
trade marks in • not ownership of a word(s).
modern • Trade marks do not convey ownership of a word.
society • They confer the right to forbid a particular kind of use.
Di\erence btwn brand and trade mark
“Brand” and “trade mark” are related but not the same.
• However, diR in nuance which can be seen from the terms used in commerce
such as 'brand leader’
• ‘Brand image’ denotes assumed impression of the product in the mind of the
consumer
• Brand is a broader concept to include goodwill and other reputational aspects.
o It signifies the identity of the company in terms of what products and
services they oRer but also the essence of what the company stands for in
terms of service and other emotional, non-tangible consumer concerns.
• Brands are shorthand marketing messages creating emotional bonds.
o Primarily governed by the trade mark law (statutory and common).
o Also, copyright and design law.
• In commerce ‘brand’ encompasses more than just a TM = refers to the essential
image of the entire undertaking, its g/s and what it stands for
• TM is a sign capable of distinguishing the g/s of one trader from another = sign
distinguishing a particular product from another
• Brand denotes the inherent quality of the g/s under the predominant trademark
and represents the soul of the entire enterprise
 Benefits to obtaining registered TM rights:
1) Registered TM owner → obtains an exclusive right (legal monopoly) to use a TM in
relation to specified g/s
o right need not be proved through evidence of use of the trade mark
o mere production of the certificate of registration is evidence of the
existence and ownership of the trade mark.
2) Holding a TM registration is a form of 'insurance' against the possible abuse of
the goodwill which can attach to one's brand.
o Registration gives notice of the rights claimed by the TM owner throughout a
country
o allows TM owner or a licensee to use the words 'Registered Trade Mark' or
the symbol ® in conjunction with the trade mark
o Acts as a deterrent to potential infringers.
3) Accounting standards and best practice require registered trade marks to be
reflected at value on the balance sheet of individuals and companies
o gives recognition to the value of a trade mark, which was previously largely
ignored or only recognised as part of the general concept of goodwill.
4) Legal assets are created which may be sold (assigned), and used under licence.
The commercial value of trade marks often outweighs the 'insurance' function of a
trade mark.
5) As statutory protection is aRorded, a TM owner is in a better position to attract
licensees
o Owners free to allow others to exercise their rights against payment of a
licence fee.
o A licence is usually in the form of an agreement ito which a holder of a right
allows a 3rd party to exercise that right, in return for form of remuneration
o remuneration may take the form of a royalty or a lump sum payment.
o Registered trade marks can therefore generate income and establish a
revenue stream for years to come.
6) Like immovable property, trade marks may also be used to secure a debt.
Registered trade marks are becoming an increasingly popular asset to use in the
support of financing arrangements with banks.
Reasons / • Informational e\iciency: communication between consumers & traders
Justifications aimed at preventing consumer confusion.
for trade mark • Encourage traders to invest in consistent branding = beneficial to the consumer.
rights • Other justifications centre on the trader protecting investment in building up
and advertising the trade mark or to prevent competitors from leveraging on
another’s labour.
• To fulfil the rationale of e\ective communication with consumers and
preventing consumer confusion, trade marks are designed to or required to be
distinctive/capable of distinguishing.
o So, generic and descriptive terms or signs are not accorded trade mark
protection. Example using ‘snacks’ as a trade mark for biscuits, cakes, etc.

Functions of a In the commercial world, a trade mark may function as:

trade mark
1. A badge of origin (identification of provenance or source).
2. A badge of quality.
3. A badge of identification and distinction.
4. An advertising device.
Classification • TM used in connection with specific g/s
of goods and o Eg NIKE used for clothing; COCA-COLA used for beverages
services • When registered = registered only for specific g/s they will be used for
• Once registered, only protected for those g/s (or similar g/s) but not for g/s in
general

• For the purposes of TM law, all g/s have been classified internationally
• Put into 45 classes
o First 34 relates to goods → clothing, food, cosmetics, pharmaceuticals
o Remaining 11 relates to services → banking, construction, transport,
education
= easier to file applications for registration in particular classes
o Facilitates conducting searches to ascertain which marks registered for
which g/s

Classification dealt w/ in S 11 TMA + Reg 4

A TM shall be registered in respect of g/s falling in a
particular class(es) iaw the prescribed
classification: Provided that the rights arising from the registration of a trade
mark shall be determined iaw the prescribed classification
applicable at the date of registration thereof.
• SA follows International Classification → 10th edition of the Nice
Classification
• WIPO administer the Nice Classification
• Classification set out in Sched 3 SA TM Regulations
o Comprises the class headings of the 45 classes
o Class headings = summaries or indications of g/s falling w/in relevant
classes
o Actual determination of into which class g/s falls lies w/ the Registrar
§ But he is influences by the International Classification when making
determination
§ Follows the IC except in exceptional cases

• Main reason for classification → facilitate the conducting of trade mark

registrability and infringement searches
o TM search can be limited to relevant class
o In determining whether a mark is available for use & registration irt shoes
and clothing = review class 25 (clothing, footwear, headgear), class 9
(safety shoes) and relates classes like class 24 (textile goods) & class 26
(lace, ribbons and braid)

• Crucial that application is classified correctly and filed in correct class

o Otherwise TM may be invalid and removed from registered
o Scope of g/s covered by an application is limited by parameters of the class
§ If an application is filed under Class 25 (for clothing, footwear, headgear), the
protection only applies to products within that category. If the owner starts
selling accessories like bags (which fall under Class 18), the Class 25
registration won’t protect the brand from potential infringement claims
related to bags.
o G/s which are included in the specification of g/s of registered TM but which
don’t fall in class in which registered are not covered by registration,
despite listed in specification
 § For instance, if a trademark lists “health supplements” in its specification but
files in a class meant for pharmaceuticals (e.g., Class 5), health supplements
won’t be covered by the registration unless they’re reclassified appropriately,
since health supplements don't fall under pharmaceuticals in this context.
o Bc of how section 11 is worded = trade mark shall be registered in respect
of goods or services falling in a particular class or particular classes in
accordance with the prescribed classification

S 11(2)
→ if goods/ services were correctly classified when lodging an application, but the
classification subsequently changes (as it does from time to time), the proprietor
may at any time record such change.
• Ordinarily give may its normal significance = TM owner may, if so disposed,
change the classification
S 11(2) amended by S 60 IPLAA
• Before amendment 11(2) read as follows:
o the proprietor of the trade mark shall, when applying for the renewal of
the registration thereof in terms of Section 37, at the same time apply in
the prescribed manner for revision, in accordance with the revised or new
classification, of the class or classes in which the trade mark is registered
• The amendment’s intent appears to be to make reclassification possible at
any time, not just at renewal.
• However, reclassification remains important, and it’s essential to update the
classification by the next renewal to ensure clarity and accuracy.
• Example of importance of reclassification:
o Legal services used to be classified as belonging to the miscellaneous
services class (class 42), whereas they now fall into class 45.
o When conducting a search for legal services, both class 42 and class 45
should be searched to ensure that all relevant trade marks are revealed.
o If only class 45 is searched and a trade mark has not been reclassified, it
may be overlooked during a search.

• TMA makes provision for amendment of existing classification

o Incumbent upon Registrar to publish any amendments to classification in
the Patent Journal
o Unfortunately the Act does not make provision for the automatic
amendment of the classification whenever the Nice Classification
changes, as it does from time to time
§ This creates uncertainty and puts South Africa out of kilter with the
international situation.

• SA class heading for class 35 (the class which covers, inter alia, retail and
wholesale services) di\ers from the Nice Classification in that the services
are described in it as the 'oRering for sale and the sale of goods in the retail and
wholesale trade.
o This avoids the diRiculty experienced in the past where it was held by the
court that 'retail and wholesale trade was not a 'service and that
trademarks registered in respect of such services were not enforceable.
• SA trademark applications often use broad specifications of goods and
services, sometimes covering entire class headings, which may be unrealistic
(e.g., "cellular phones, safety clothing, and fire extinguishers" in class 9). Such
broad specifications can make trademarks vulnerable to removal for non-use or
 lack of intent to use. However, overly narrow descriptions may also limit the
trademark's protection and exclude goods the owner may wish to cover in the
future.
• Broad specifications, like "pharmaceutical preparations," cover a wider range of
products and adaptations compared to narrower terms like "injectable insulin
preparations."
• Broad terms provide flexibility for future product developments (e.g., a patch
instead of an injectable form).
• Narrow specifications may limit protection to specific product forms,
potentially excluding new delivery methods.
• Using genus terms (e.g., "pharmaceuticals") is generally preferable over species
terms (e.g., "injectable insulin").
• Courts apply a narrow interpretation to monopoly rights, so careful drafting is
essential.
Registrability → No obligation on TM owner ito TMA to conduct search of register to determine if
and conflict TM available for use and registration b4 decided to use it or the apply to register
searches • But advisable to do so else could find TM confusingly similar to someone else’s
and forced to discontinue use after expense in marketing and advertisements
• Damages could be incurred from infringing right of others
Factors taken into account when conducting registrability and infringement
searches
1) Determining correct classification of main and related classes
2) Translation of marks (especially into oRicial languages)
3) Review marks that are phonetically, visually and audibl confusingly similar
4) Replace letters phonetically similar (eg c & k; e & i)
5) Compare marks w/ same pre-fixes and suRixes in relevant class
6) Determine correct classification of visual elements of device/logo marks
according to Vienna classification system
• Classifies pictorial elements under categories, divisions and
sections
• Ascribes number to various categories to facilitate searching
• There are 29 categories → eg category 2 humans
• Each category further classified according to divisions → 2.1 denotes
men
• Each division broken down into sections → 2.1.8 Acrobats, athletes
• Numerical classification is 2.1.8 & 2.1.9
• All device/logo / related pictorial marks are classified as such on SA
register
• Search should be conducted for this classification
• Thus all potential pictorial marks disclosed

The • TMA & Regulations set out procedures and diR steps to be followed by person
registration apply to register TM (Applicant) as well as by Registrar of TMs
process The register and Registrar of TMs
S 185 Companies Act → establishes CIPC
⇉ ‘Registrar’ means the Commissioner appointed ito CA
• Commissioner exercised powers conferred on Registrar ito TMA
• TM ORice (seat of Registrar) situated in Pretoria and has an oRicial seal that is
judicially noted
• Registrar manages and controls the register of TMs (database of all TMs applied
for and/or registered in SA)
• Registrar manages a team of examiners who examine every TM application and
determine whether the application may be registered

The registration process

1) Filing •Application filed manually or electronically on Form TM1

(lodging)

2) •Registrar examines application 9-12m later and issues an 'official action' = notification that
Examination application accpted or refused

•3m extensions can be obtained to allow applicant to respond to official actions

•Registrar agrees to unconditional acceptance = advertisement in patent journal
3) Official •After official actions dealt w/ by making submissions at informal hearings = auto 3m
action extension
received •If provisionally regused & not possible to overcome objections = application refused & lapses
•Refusal to accept or imposition of conditions subject to appeal to HC

4) Official
action •After official actions complies with = formal acceptance follows w/in 2-3m
compliance

5) •After acceptance, Applicant must arrange for advertisment of acceptance

Acceptance •Published in Patent Journal w/in 1-2m
issue by
Registrar •Depends on next publication date of monthly journal

6) •3 months for noting of objections ito TMA

Advertiseme •No opposition = 6-9m will elapse b4 Registrar issues certificate of registration
nt in Patent •Held in abeyance if mark opposed by 3rd party
Journal

•If opposed by 3rd party = process held in abeyance after advertisement

7) Possible •If opposiiton fails = processs resumed
opposition
•Opposiiton upheld = application refused & proess aborted

8) Issue
certificate of •Then renewal every 10 years from date of application
registrar
Filing the • Lodging new application straightforward process
application • TMA requires application be made in prescribed manner
• TM Regulations deal with practical issues + prescribe forms to
be used
• Form TM1 must be used
o Form must contain:
§ Name + address of applicant
§ Address for service of docs
§ Class of g/s in which application being filed
§ Specification/description of g/s
§ Endorsements if any
§ Convention priority claimed
§ Representation of the mark
§ Signature of applicant or authorised agent
• TMA + Regulations make provision for submission of electronic
applications via CIPRO portal

Endorsements (when lodging application)

• Sometimes essential or prudent to endorse the application to
further describe essential feature of the subject mark
• Many diR kinds of signs or marks can qualify
• With unusual trade marks the application often contains an
endorsement to ensure the TM is adequately described
• When filing an application for a 'shape' mark, i.e. a three-
dimensional trade mark, the application should be endorsed
as follows:
o 'The mark consists of the three-dimensional shape
and/or configuration of the goods as depicted in the
representation accompanying the application’
• If the applicant wants to obtain rights in a' container' the
application should be endorsed as follows:
o The mark consists of a container for goods having the
appearance substantially as depicted in the
representation aRixed to the application.
• If the mark comprises more than one element (for instance a
container coupled with ornamentation) one could endorse it as
follows:
o 'The appearance of the container comprises its shape
and the ornamentation applied to its surface and both
these features separately and in combination are
essential features of the mark'
• When filing an application for a three-dimensional mark or
container mark, it is essential to provide a front, side and top
view/perspective of the container or three-dimensional mark.

Convention application (priority claim)

• TM application may be based on earlier application lodged
in a convention country
• Derives from the Paris Convention for Protection of
Industrial Property
o Virtually all countries in world are members
 o Provides system ito which member countries will
allocate filing date for TM application on basis of the
date on which earliest corresponding application filed in
convention country

• S 63 TMA
→ possible to claim priority from earlier TM application filed in
convention country provided SA application made w/in 6
months of 1st application
• When convention priority claimed = foreign filing date becomes
the eRective filing date in SA & the date of registration
• Confirmation of the details of the foreign application must be
lodged in support of priority claim → at same time or w/in 3
months of date of lodging in SA
o Else priority claim may expire and actual date of filing
will be date of application
• Local application must correspond in all respects w/ foreign
application
• SA application must cite the:
o Country
o Application number
o Application date
Of original foreign application

Example:
A South African company, Sapphire Beverages, creates a unique logo for its
product line and decides to first file a trademark application in the United
Kingdom on March 1, 2024. The UK is a member of the Paris Convention for
the Protection of Industrial Property. Sapphire Beverages also plans to expand
to South Africa and wants to protect its trademark there.
Applying Paris Convention Priority in South Africa
1. Filing Based on an Earlier Application in a Convention Country:
o The trademark application was originally filed in the UK (a Paris
Convention member country) on March 1, 2024.
o Because South Africa is also a Paris Convention member, Sapphire
Beverages can claim priority in South Africa based on the UK filing,
provided they file within the six-month priority window.
2. Using Section 63 of the South African Trademarks Act (TMA):
o Sapphire Beverages must file its South African application
by September 1, 2024 (six months from the UK filing date) to claim
convention priority under Section 63 of the TMA.
o Result: If the company files by this deadline, the UK filing date of
March 1, 2024, will be the eOective filing date in South Africa, even if
they file later within the six-month period. This backdated filing date can
help prevent others from registering similar marks in South Africa during
this period.
Outcome:
If Sapphire Beverages follows these steps correctly:
• Their South African application will be treated as if it was filed on
March 1, 2024.
• This priority filing date ensures that their trademark rights in South
Africa are protected from other competing applications after March 1,
2024.
If Sapphire Beverages misses the six-month window or fails to submit the
required supporting documents on time, the South African application will lose
priority status, and the e`ective filing date will become the actual date the
South African application was filed.
Examination • A TM should be allowed to go through registration if:
by registrar o TM is distinctive and can function as a TM (is registrable
as TM)
o No 3rd party rights in similar TM would be contravened
due to registration
• SA has an examination system for this → every application
must be examined for compliance w/ the 2 criteria b4 accepted
for registration
• After application lodged = registrar + team will examine it
o They may:
§ Accept it unconditionally
§ Accept it subject to amendment, modifications
or conditions
§ Provisionally refuse it
§ Outright refuse it
• If not accepted unconditionally = an oRicial action will be
issued
o Application won’t succeed till issued raised in OA have
been addressed & requirements of Registrar met
• Conditions imposed may qualify and limited the rights granted
by registration
o Generally aimed at protecting public interest or specific
3rd parties
• Applicant must respond to oRicial action w/in 3 months or
extended period as Registrar allows

Typical conditions imposed by registrar

1. Authority to Act
o An application lodged by an "authorised agent" must be
accompanied by:
§ A power of attorney authorizing the agent.
§ This must be submitted before the mark will be
accepted.
2. Association of Marks
o The Registrar may require trade marks in diRerent classes
to be associated w/ each other ito S 30 TMA:
§ If two or more marks are similar enough to cause
confusion.
§ Association ensures common ownership of linked
marks.
§ Associated marks cannot be transferred separately
unless association dissolved.
§ Proof of use of an associated mark can sometimes
substitute for the actual mark in dispute.
3. Disclaimer of Rights
o When a trade mark contains elements that are of a non-
distinctive character, which are common in the trade or
necessary for trade use, the Registrar may require a
disclaimer of exclusive rights to those elements.
§ Example: A mark like "THE INSTITUTE OF
PROFESSIONAL TENNIS" may require disclaimers for
the words "institute," "professional," and "tennis."
 °The applicant retains rights in the overall mark but
not in the individual disclaimed features.
o Types of Disclaimers
§ Disclaimer of Features Ordinarily Represented
° Disclaims exclusive use of common elements in
trade so that word or element cannot be
monopolised
° Example disclaimer: "Registration of this trade
mark shall give no right to the exclusive use of the
word... (or the word… -- if more than one
descriptive word) separately and apart from the
mark."
§ Disclaimer of Features Represented in a Special
Form
° Relates to non-distinctive words or logos in a
special format or non-distinctive logos (devices)
° Example disclaimer: “Registration of this trade
mark shall give no right to the exclusive use of the
word… (or letter or device) (but shall grant rights in
the representation thereof as depicted in the TM
accompanying the application)... separately and
apart from the mark."
° Registration of this trade mark shall give no right to
the exclusive use of the letter .... except in the
precise relation and association in which it is
represented hereon
§ Admissions
° Unique to South African practice; involves
endorsement on applications.
° Used by Registrar iro words or abbreviated
forms/misspelt versions of words which are
considered to be reasonably required for use in the
trade.
° Example: For a mark with "X-TRA," an admission
might state: "Registration shall not debar others
from using the word EXTRA."
° This allows for rights in the misspelled form while
preventing monopolization of the descriptive word.
° Surname admissions also exist, ensuring
surnames can be used in trade.
The applicants admit that the registration of
this trademark will be not debar persons
having the surname ‘SMITH' from the bona
use, in the course of trade, of 'SMITH' as a
surname.
4. Other Common Endorsements
o The Registrar may also require endorsements related to:
§ Color and geographical words.
§ Descriptive wording in a mark.
§ Marks in other languages.
§ Meaning and derivation of a mark.
 § Varietal plant names.
§ Limitations on the manner of use of the mark.
§ Blank spaces in a mark.
§ Consents to registration by third parties and use of
cross devices.
Refusal or • Registrar may also refuse registration
provisional • Can do so on absolute or relative grounds
refusal o Absolute grounds refer to inherent characteristic of the
mark (eg it is descriptive and doesn’t qualify as a mark
or it incorporates prohibited matter)
o Relative grounds refer to conflict w/ 3rd party rights
(clashes w/ prior mark)
• Various means of dealing w/ refusal
o Common approach is to take to informal hearing b4 the
Registrar where oral arguments aimed at overcoming
obstacle can be presented
• Where conflicting mark is cited, potential dispute w/ 3rd party
can be resolved and its consent to use and registration can be
lodged w/ Registrar
o If 3rd party consents = Registrar has no discretion to
refuse
• Many times possible to negotiate acceptance on mutually
satisfactory basis
o The application then proceeds to acceptance
o Where Registrar wont accept the application and finally
refuses it = can request written reasons for refusal
o Such written reasons can serve as pasis for bringing an
appeal before the HC
Acceptance, • Once application placed in line for acceptance (all conditions
advertisemen for acceptance met) = formal notice of acceptance will be
t and issued by Registrar
registration • Application will proceed to publication in Patent Journal
• Mark is advertised so that any interest party can object to the
registration
• If application advertised as having been accepted and no
objections can be read against it = certificate of registration will
be issued
• It is not required by law to use either TM or ® to denote a trade
mark but it is advisable to do so as, at the very least, it conveys
the information that the mark has e registered or that it is being
used as a trade mark.
o The TM symbol indicates owner claiming TM rights
§ can be an indication that the mark is pending
registration or it can even be used where no
application has been fled at al. It is commonly
used and widely accepted symbol.
o ® denotes that the trade mark is registered
§ Use of the ® symbol in conjunction with an
unregistered trade mark is an oRence under the
TMA
Amendment of S 25 TMA
trademarks → registered mark may be amended if amendment doesn’t substantially a\ect
and identity of original mark
specifications • Principle is generally also applied to amendment of marks subject to pending
of applications
goods/service • Has been interpreted diRerently but if the salient features remain intact =
s amendment should be allowed
• Discretion of Registrar to determine whether amendment should be allowed

• ‘Substantially aRecting the identity’ → Bernstein Manufacturing Co

o debated in the context of whether a mark in use was the registered mark
o the court applied the 'arresting features' test
o when the two marks (i.e. the mark as registered and the mark as used) are
considered side by side it should be clear that the mark as used has
retained the 'arresting features' of the registered mark.
o By parity of reasoning, similar considerations should apply to the degree to
which registered trade marks can be amended.

• Nestlé case
o the Registrar has an unfettered discretion in allowing a mark that is the
subject of a pending application to be amended as S 25 TMA does not apply
to pending applications
o It is submitted that the Registrar should nevertheless apply those principles
to the amendment of pending marks as a mark is assessed as of the date of
application (registration) and substantial changes to the initial form of the
mark or the specification of goods would be inappropriate.
• S 23
→ the Registrar is empowered of his own volition to correct errors made in the
register
o can also do so at the request of TM owner.
o Such powers include amendment of the specification of goods/services of
a registered trade mark.
o amendment of the specification should only be allowed if it does not
broaden the scope of the specification of goods or services of the
registered trade mark or prejudice the rights of third parties

Renewal ⇉ Registered TM is in force for 10 years from date of application

+ renewable for further 10 years
• TMA & Regs make provision for late renewal and restoration of registered TMs

NATURE AND ESSENCE OF A TRADE MARK

→ a mark which distinguishes one traders product/service from a similar product/service of another
What is a mark • TM law = creature of statute
S 2 TMA
→ ‘mark’ = 'any sign capable of being represented graphically, including a device,
name, signature, word, letter, numeral, shape, configuration, pattern,
ornamentation, colour or container for goods or any combination of the
aforementioned’
Essential elements of a mark
1) May be any sign which is capable of being represented graphicallyb
2) May include any of the following: (non-exhaustive)
o Device o Configuration
o Name o Pattern
o Signature o Ornamentation
o Word o Colour
o Letter o Container for goods
o Numeral o Or any combination
o Shape
• Any sign can qualify as a mark if it can be represented graphically.
• Applicants have attempted to register non-traditional marks like scents, colors,
and sounds.
Meaning of ‘sign’ and ‘represented graphically’
• ‘Sign’ nor ‘graphically’ defined in TMA
• Oxford dictionary:
o ‘sign’ → a mark, symbol, or device used to represent something or to
distinguish the thing on which it is put
= must serve a distinguishing function
o ‘Graphic’ →
2 Producing by words the eRect of a clear pictorial
representation; vividly descriptive, conveying all details, clear,
unequivocal.
3 Relating to or producing pictorial representations; of or
pertaining to drawing, painting, engraving, etching etc
• Graphically presupposes clarity (as regards what the mark is)
o Suggests that the mark may be described in words (for instance by an
endorsement in the register of trade marks), should a pictorial
representation not convey the entire ‘picture’

• Requirement for Graphical Representation

o Trade marks must be represented graphically in two dimensions due to the
limitations of the trade marks register, originally a physical book and now
an electronic database.
• Publication for Opposition
o Accepted trade mark applications are published in the Patent Journal,
allowing third parties to oppose them. Clear two-dimensional
representations are needed for accurate identification.
• Two-Dimensional Limitation
o For three-dimensional marks, like container shapes, the two-dimensional
representation should accurately depict all aspects of the mark.
• Cointreau Case Example
o A registration was nullified when a container mark was represented by an
angled photograph, obscuring its three-dimensional features. The court
could not determine the scope of protection from the two-dimensional
image.
o 3-D mark (container) must be represented in a way so that all dimensions
clearly visible
• Amendment Restriction
o Modifying a mark to include additional dimensions is generally disallowed,
as it would significantly alter the original application’s identity.
Illustration of Mark Naming Comment
‘signs’ convention
REVLON A word mark
Black cat When words are not displayed not normal
(special form) capital letters in the register and special
and cat device fonts are used = quote the wording and
indicate that the words have been written
in a special format. The word 'device' is
used to indicate pictorial matter (a logo).
BT (special
form) and
human figure
device
J (special form) It is preferable to describe the mark in
in circle and suRicient detail to make it easy to identify
flower device the main characteristics and to distinguish
to from other ‘J (special form)’ marks.

Lemon-shaped If a mark exclusively constitutes a

container container, it is preferable merely to
describe what it represents and to use the
word container in the naming convention.
Quiver The quiver used on all Parker pens
ornamentation constitutes ornamentation on the pen as
(the word the clip could have taken any form. The
arrow may also very distinctive format clearly
be used) on distinguishes Parker pens from the pens of
pen competitors.
Le Creuset This mark consists of two main elements,
(special form) namely the 'word mark' LE CREUSET
and pot shape coupled with the distinctive shape
features used in respect of this specific
style of cookware. The elements of the
shape that are distinctive could include
the grooves on the lid, the spout, the
suspension hook on the handle and the
combination of the aforementioned
elements.
Reebok logo or The word "logo' should be used sparingly
dissecting and it is preferable to reserve it for use in
arrows device connection with the main pictorial brand
representation, in this instance, the
REEBOK brand. Alternatively, one could
describe it as best possible, for instance
by stating what the logo represents.
Three stripes This mark shows the use of the adidas
on shoe 'three stripe' pattern as applied to shoes.
pattern The mark does not constitute the device of
a shoe but rather represents the way the
pattern is applied to shoes generally. To
fully describe the mark, one would have to
 enter an endorsement in the register to
describe it further, namely the mark is not
a picture or device but rather the pattern
applied to shoes generally.
Ankle boot Unlike the three stripe pattern illustrated
shape and above, this particular mark constitutes the
ornamentation shape of the entire shoe, coupled with
mark specific ornamentation which should be
described/ endorsed in the register.
Toyota logo or As stated above, it is best to reserve the
intersecting use of the word 'logo' to the main brand -
ellipses device that is, the device used on al (or most) of
the goods and services by the proprietor of
the trade mark.
Non-traditional marks
• Types of Non-Traditional Marks
o Include three-dimensional marks, color marks, holograms,
motion/multimedia marks, position marks, gesture marks, olfactory (scent)
marks, taste marks, and texture marks.
• Registrar’s Guidelines
o Issued in February 2009 to clarify requirements and endorsements for non-
traditional marks before they qualify for registration.
• Challenges in Graphic Representation
o DiRicult to represent non-traditional marks graphically.
o In Sieckmann v Deutsches Patent-und Markenamt, the European Court of
Justice ruled scent marks must be clear, precise, self-contained,
intelligible, durable, and objective.
• Sound Marks
o Easier to register if represented in musical notation on a stave.
o Requires additional written descriptions and audio recordings to prevent
confusion.
o Examples include the Joshua Doore jingle and Nokia ringtone.
o An interesting sound mark case that has come up involves the James Bond
theme music.
§ A company called Danjaq filed an EU trade mark application to
register 25 seconds of the music – the application is in classes 3,
9, 14, 16, 18, 25, 28, 32 and 34, and it covers diverse goods such
as comic strips, computer games, films, jewellery, watches,
clothing, toys and beverages.
• Color Marks
o Unique color combinations may qualify for registration, but single colors
are harder to register.
o Applications must specify Pantone codes in endorsements (e.g., lilac and
olive green with Pantone numbers).
• Example Endorsement for Sound Marks
o For a sequence like the "Blue Danube," an application would detail musical
notation, specific frequencies, and provide an audio file as a reference.
What is a trade • Once established that a mark qualifies as a sign capable of being represented
mark graphically = establish whether the mark also qualifies as a trade mark
S 2 TMA
→ ‘trade mark’ = other than a certification trade mark or a collective trade mark, a
trade mark is
a mark
used or proposed to be used by a person
in relation to goods or services
for the purpose of distinguishing the goods or services in relation to which the mark
is used or proposed to be used from the same kind of goods or services connected
in the course of trade with any other person.
Essential elements
• Mark used or proposed to be used
• In relation to goods or services
• To distinguishing them from the same kind of g/s which are connected in the
course of trade with another.
Mark used or proposed to be used
• Use of ‘mark’ = must be sign capable of graphic representation
• Must be used or proposed to be used
o Some jurisdiction = use prior to registration is required before mark can be
registered
o TMA indicates that as long as owner intends to use it, subject to other
conditions of definition’ = it can qualify as a trade mark even though not
already used
o But if at time of application there is no real intention = it may be invalid
• Act does not define use as such
• But does contain interpretation of ‘use’ of a mark
o S2
Use of a mark shall be construed as:
§ the use of a visual representation of the mark
§ in the case of a container, the use of such container
§ in the case of a mark which is capable of being audibly reproduced, the
use of an audible reproduction of the mark.
In relation to goods and services
• If it is not the intention of the applicant to use the mark upon goods or in
relation to services, but, for instance, if the mark merely constitutes the
creation of an independent work of graphic art or a work of craftsmanship, then
the work created may be protected in terms of copyright law and not the law of
trade marks.
For the purpose of distinguishing goods and services from the same kind of g/s
connected in the course of trade with another person
• Definition of Trade Mark and Distinguishing Function
o 1993 Trade Marks Act → a trade mark’s primary function is its
"distinguishing function"
§ enables it to set goods/services apart from similar goods or services
connected to a diRerent person in trade.
o This function is vital as it ensures that consumers can diRerentiate one
business’s products or services from those of another, preventing
confusion.
• Function as a Badge of Origin
o Case law since the 1993 Act highlights a trade mark’s role as a "badge of
origin."
§ This role serves to guarantee to consumers that a product originates
from a specific source.
o This badge of origin function confirms to consumers that the goods are
associated with the mark’s proprietor, oRering a clear indicator of the
product's origin.
• Glaxo Group v Dowelhurst Ltd (No 2)
o In this English case, the court emphasized that a trade mark serves as a
"badge" on goods to indicate their source.
o The court clarified that the mark implies the goods are from the proprietor
and that the proprietor stands behind the goods' quality.
o The mark is not just an indicator of origin but also a symbol of the
proprietor's responsibility for quality, creating consumer trust.
• Role of a Trade Mark in Ensuring Source and Quality Responsibility
o According to the Glaxo Group case, a trade mark implies that the goods
come from the proprietor and that the proprietor assures a certain quality.
o This quality assurance is seen as inseparable from the mark’s function,
as it represents both origin and responsibility.
• Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Inc
o This case further emphasizes the trade mark’s role in guaranteeing the
origin of a product or service to the consumer.
o The court ruled that a trade mark should allow consumers to distinguish
products without confusion, ensuring they can identify the correct source.
• Link Between Distinguishing and Origin Functions
o The distinguishing function (separating goods/services by source) and the
origin function (guaranteeing origin and quality) are fundamentally linked.
o Both functions are crucial, as they are core to what makes a trade mark
valid and recognizable in law.
• Requirements for a Mark to Qualify as a Trade Mark
o For a mark to legally qualify as a trade mark, it must eRectively distinguish
one person’s goods or services from similar goods or services provided by
others.
o This distinguishing ability is a legal requirement, ensuring that the mark
fulfills its purpose of clear product diRerentiation.
• Exclusion of Certification and Collective Trade Marks
o Certification and collective marks do not fall within the standard definition
of trade marks due to their unique nature.
o These types of marks serve diRerent purposes and are therefore excluded
from the traditional definition of a trade mark.
• Connection to Registrability Requirements under the Act
o The essential features of what defines a trade mark align closely with
registrability criteria in sections 9 and 10 of the Act.
o These sections detail the specific requirements for a trade mark’s
acceptance, which are further discussed in detail in the "Registrability of
trade marks" section.
Certification of trade marks
S 42 → provides for registration of certification marks

• Must be capable of distinguishing the g/s of that TM owner iro of certain

characteristics from goods not certified
 o Kind, quality, quantity, intended purpose, value, geographical origin
• Examples:
o PURE WOOL mark that certifies made from pure wool

o SABS logo
• Cannot be registered in the name of a person who actually trades in the goods
for which registration is sought.
o A clothing manufacturer would not be able to register the PURE WOOL
mark. The mark must be owned by an independent, certifying body.
• An application for registration of a certification mark must be accompanied by a
statement to the eRect that the trade mark applicant does not trade in the
goods covered by the application and by rules governing the use of the mark.
• The rules should set out:
o the conditions under which the mark may be used
o the circumstances in which the trade mark owner will certify the goods
o the characteristics which are to be certified
Collective trade marks
• A TM capable of distinguishing the goods of persons who are members of an
association from goods of persons who are not members thereof
o protected as a collective trade mark ito S 43 TMA
S 43(2)
→ geographical names or other indications of geographical origin may be registered
as collective trade marks
• Provided that there are no earlier barring applications or registrations it is
accordingly possible to register
o for instance, WILTSHIRE as a collective trade mark for cheese
manufactured by members of the Wiltshire Cheese Makers Association.
o STELLENBOSCH WINE ROUTE is a good example of the collective mark of
the relevant association of wine farmers.
• Unlike certification marks, collective marks are owned by associations which
do trade in the goods/services covered by the mark.
• The mark WILTSHIRE is owned by the Wiltshire Cheese Makers Association.
o Only members of this association who trade in Wiltshire cheese may use
this mark
• In general, the provisions of the Trade Marks Act apply to collective and
certification marks in the same way as they apply to conventional trade marks.
• This means that marks of this kind must also be distinctive
• However, because of their functions, special considerations do apply to these
kinds of marks.
• Marks which would not normally be registrable as trade marks, such as
geographical terms, could be registered normally be or collective marks.
• Consequently, owing to the functionality of these marks, the normal
distinctiveness test would be modified and diluted for the type of trade mark
concerned.
Transferring • Just like any other property, a trade mark can be transferred from one person to
and licensing another.
of Trade Marks • What is a licence?
o Refers to relationship between the proprietor of a trade mark and an entity
authorised by the proprietor to use the trade mark in relation to goods
manufactures and sold in respect of the services rendered.
 • Usually subject to the payment of a fee an owner of a trade mark may, without
relinquishing ownership of the trade mark, permit others to use the trade mark.
• This is also recognised by the Trade Marks Act.
• Section 39 of the Act makes provision for the transfer of a trade mark to take
place by assignment or transmission:
o Assignment (an assignment by act of parties concerned): an assignment
of a trade mark is similar to the sale of a movable property in terms of a sale
agreement known as a Deed of Assignment.
o Transmission (the right is transferred as a result of the operation of
law): a transmission of a trade mark can take place through the acquisition
of the assets of another company upon liquidation or through a merger;
inheritance or a regulation or government policy or decision.
• The transfer of a trade mark, by assignment or transmission, must be registered
with the registrar of trade marks.
CIPC 1. Purpose
Guidelines for o Amend existing oRice guidelines for examining trade marks to include
non- procedures for non-traditional trade marks.
traditional o Provide requirements for lodging applications for non-traditional trade
trade marks marks.
o Additional examination requirements, such as evidence of use, may be
established by the Registrar.
2. Discussion
o Three-Dimensional Marks
§ A single view representation accepted if it shows the three-dimensional
nature.
§ Mark in advertisement must match the application depiction.
o Colour Marks
§ Representation should include a sample of colours.
§ Must indicate recognized international colour codes and provide a
description of colour application.
o Holograms
§ Single or multiple views acceptable if the holographic nature is clear.
§ A description of the holographic eRect is required.
o Motion/Multimedia Marks
§ Series of still images required for representation.
§ Detailed description of the movement and chronological order of
images is needed.
§ Electronic file with description may be requested.
o Position Marks
§ Treated as figurative marks.
§ Clear description of the mark must accompany the application.
o Gesture Marks
§ Treated as another type of mark (motion or figurative).
§ Representation can be a single image or multiple frames; written
description of the gesture may be required.
o Sound Marks
§ Representation must be in musical notation.
§ A written description and audio recording of the mark are required.
o Olfactory (Smell/Scent) Marks
§ At least a written description is required.
§ Additional conditions may apply for examination.
§ Must meet the "Sieckmann criteria" for clarity and objectivity.
 o Taste Marks
§ Indication of the type of mark and a written description of its
characteristics are needed.
o Texture Marks
§ Indication or statement regarding the type of mark is required.
§ Detailed written description and a representation/sample of the
surface must accompany the application.
S Skosana • Common Usage of Trade Marks
Genericide: o Words like "Escalator," "Flip Phone," "Laundromat," and "Sellotape" were
Could you be once exclusive trade marks owned by specific companies.
at risk of o Over time, these terms became generic and are now used broadly to refer
losing your to similar products/services.
trade mark? • Definition of a Trade Mark
in De o A trade mark diRerentiates specific goods/services from others in trade.
Rebus 2022 o South Africa’s Trade Marks Act 194 of 1993 requires trade marks to be
(April) DR 7. distinctive to be registrable, either inherently or through prior use.
• Distinctiveness of Trade Marks
o Trade marks serve as source identifiers and must distinguish
products/services.
o Distinctiveness is categorized into several types:
§ Fanciful/Coined Marks: Invented words (e.g., Xerox).
§ Arbitrary Marks: Dictionary words used in unrelated contexts (e.g.,
Apple for computers).
§ Suggestive Marks: Hints at the product/service (e.g., PlayStation).
§ Descriptive Marks: Directly describe the goods/services (e.g.,
American Airlines).
§ Generic Marks: Commonly used terms that lose distinctiveness over
time (e.g., Escalator).
• Genericide Doctrine
o Refers to trade marks that lose their protectability and uniqueness over
time, becoming unprotectable.
o Helps prevent unfair monopolization of common words, promoting fair
competition.
o Examples include "Liquorice Allsorts," which courts found to be generic and
descriptive.
o Can be harsh for companies that invest in branding, risking their trade
marks becoming generic (e.g., "Trampoline").
• Factors Influencing Genericity
o Courts consider various factors, including usage by the owner, media,
competitors, dictionary definitions, and consumer usage.
o Reckless use by owners can lead to trade marks being used as
verbs/nouns, contributing to generic status.
• Preventing Generic Trade Marks
o Companies implement strict guidelines on trade mark usage, including:
§ Selecting unique, non-generic trade marks.
§ Using product names alongside trade marks (e.g., "Apple computers").
§ Avoiding use of trade marks as verbs/nouns.
§ Using capital letters or bold formatting for visibility.
§ Including trade mark notices (e.g., TM, R).
§ Avoiding abbreviations or variations.
• Conclusion
 o Companies must responsibly manage trade mark usage to prevent them
from becoming generic.
o Consultation with an attorney is recommended if issues arise with trade
marks becoming generic.
In the Courts - • Overview:
The o The article discusses the risks associated with trademarks losing their
Trademarked distinctiveness, particularly through genericide and becoming geographical
City within a identifiers.
City by WIPO • Century City Development:
Magazine. o Century City is a prominent 250-hectare mixed-use development in Cape
Town, featuring commercial and residential areas.
o The developers registered multiple trademarks, including "Century City"
and related device marks.
• Legal Proceedings:
o Cape High Court:
§ The Century City Property Owners’ Association sued Century City
Apartments Property Services for trademark infringement.
§ The court ruled in favor of the Association, asserting that "Century City"
was not exclusively geographical and maintained its distinctiveness.
o Supreme Court of Appeal:
§ The appeal highlighted trademark law principles regarding descriptive
use and infringement.
§ The SCA found the appellant’s use of "Century City" as a brand and
corporate name constituted trademark use and led to confusion.
§ The court emphasized the importance of distinctiveness and ruled that
"Century City" had become a geographical identifier, meriting the
revocation of certain trademarks.
• Geographical Names and Trademark Registration:
o The SCA clarified that:
§ A trademark can be deemed exclusively geographical if it consists
solely of a geographical name.
§ Public perception plays a significant role in determining whether a
name is associated with specific goods or services.
§ The distinction between a real estate development and a geographical
location was pivotal in the court's analysis.

• Criteria for Geographic Designation:

o Two criteria must be met for a mark to be considered exclusively
geographical:
a) The mark must consist solely of a geographical name.
b) There must be public association of the geographical name with the
services oRered.
• Conclusions from the Case:
o The decision established that trademarks may lose distinctiveness if
they become recognized as geographical names.
o Distinctiveness and the capacity to register trademarks are not solely
reliant on blameworthy conduct by the trademark owner.
o The ruling clarified that the prohibition against geographical names as
trademarks protects public interest by ensuring these names remain
available as indicators of origin for goods and services.
Golden Fried • Trading under the name “Chicken Licken”, the applicant owned all intellectual
Chicken (Pty) property rights created and used in respect of the Chicken Licken business and
Ltd v Soul had registered various marks under the Trade Marks Act. The respondent was a
Kitchen small bistro-type restaurant in Plettenberg Bay trading as “East Coast Soul
Restaurant Kitchen”. That name attracted the attention of the applicant, which considered
the use of the words “Soul Kitchen” as an infringement of its registered
trademarks, leading to it seeking interdictory relief.
• Held that this matter did not involve a claim of passing oR or unlawful
competition.
• The applicant sought relief based solely on trade mark infringement under
section 34 of the Act.
• It argued that the original description of the restaurant as “East Coast Soul
Kitchen” was a copy of an identical mark in the same class (i.e. class 43 for the
provision of food services) and the fact that the type face and colour of the
words was dissimilar and that it was qualified by the words “East Coast”, was
irrelevant in the circumstances.
• The court held that the point of departure in relation to the applicant’s
persistence in moving for an interdict under section 34(1)(a) in relation to the
use of its mark “SOUL KITCHEN” was whether the restaurant was presently
using an identical mark.
• It was manifestly not doing so – having changed its name to “Sol Kitchen” and it
had adduced more than suRicient evidence to demonstrate that. The new name
was suRiciently dissimilar not to cause confusion with the applicant’s
trademark.
• Interdicts are not granted to address past wrongs.
• In the circumstances, an interdict under section 34(3)(a) of the Act served no
purpose and was not warranted.
• The court took note of an isolated reference to the respondent’s old name on its
website, and accepted that as a mere oversight. The respondent was given an
opportunity to correct that. The court ordered the respondent to remove any
remaining references to “East Coast Soul Kitchen” from its webpage and/or
Facebook page. The application was otherwise dismissed.
Laugh It Od • Legal Basis: Section 34(1)(c) of the Trade Marks Act 194 of 1993 prohibits
Promotions unauthorized use of identical or similar marks that could take unfair advantage
CC v South of or harm the reputation of a well-known registered trademark.
African • Case Overview:
Breweries o Respondent owned registered trademarks used on beer labels.
International o Applicant created T-shirts mimicking Respondent’s trademarks with
(Finance) BV satirical substitutions.
t/a Sabmark o Respondent obtained an interdict from the Cape High Court against
International Applicant for trademark infringement.
• Applicant's Defense:
o Argued that its use was protected by freedom of expression (Section 16(1)
of the Constitution).
o Contended that no detriment to Respondent’s reputation was established.
• High Court's Finding:
o Applicant’s use was not mere parody; it was harmful and racially
insensitive.
o Interdict granted to Respondent based on trademark infringement.
• Supreme Court of Appeal (SCA):
 o Dismissed Applicant's appeal, aRirming that the T-shirts materially harmed
the trademarks' reputation.
o Parody could not serve as a blanket defense against trademark
infringement.
o Applicant abused freedom of expression; its use constituted unfair and
detrimental exploitation of the Respondent's trademarks.
• Constitutional Court's Review:
o Acknowledged the need for anti-dilution protection to preserve the
reputation of well-known trademarks.
o Distinguished between "blurring" and "tarnishment" of trademarks,
focusing on the latter in this case.
o Stressed the importance of balancing trademark protection with
constitutional rights to free expression.
• Court's Decision:
o Found that Section 34(1)(c) must consider fairness and substantial
detriment to the trademark's reputation.
o Determined that mere discomfort caused by the T-shirts did not indicate
substantial economic harm to Respondent's trademarks.
o Dismissed the Respondent's claim due to lack of evidence for economic
detriment.
• Outcome:
o Constitutional Court granted leave to appeal, overturned the SCA’s ruling,
and dismissed the Respondent's application.
o Respondent ordered to pay costs for the appeal process.
• Sachs J's Perspective:
o Agreed with the dismissal but emphasized the need to balance free speech
with trademark protection.
o Suggested the case should have been upheld on broader grounds relating
to constitutional values versus property rights in trademark law.

DISCUSSION POINTS/QUESTIONS

"Most of us use words such as Escalator, Flip Phone, Laundromat, and Sellotape as part of our daily
vocabulary. What may come as a bit of a shock is that these words were once trade marks that belonged
to, and were owned by, specific companies that had exclusive use over them and were used to identify
only their products and services. Evidently, as time went on, they lost their distinguishing
characteristics and found their way into our daily language. Today, most of us use Laundromat to refer
to a laundry washing service and Escalator to refer to the automated stairs we use when we are not
using elevators. These trade marks are termed generic trade marks.1"
Explain the concept of Genericide and how the Doctrine of Genericide aRects the registrability of trade
marks.
In your answer, analyse and address the following issues:
1. What is a generic trade mark?
2. How to prevent a word trade mark from becoming generic.
3. What entails the proper use of a trade mark?
4. List two problematic situations or examples of trade marks, other than those mentioned
above, that became generic.
PROBLEM 4-2
"Welcome to Elon Musk's Twitter (now X), where the rules are made up and the check marks don't
matter. The Tesla and SpaceX CEO first announced his bid to buy Twitter in April 2022, zealously driven
to rid the platform of spam bots and protect free speech. 'This is just my strong, intuitive sense that
having a public platform that is maximally trusted and broadly inclusive is extremely important to the
future of civilisation,' Musk said at a TED conference on the day he made his oRer. 'I don't care about the
economics at all.' Even for one of the richest men in the world, $44 billion is a lot of money to cough up
to buy a middling social platform. Despite his fervent declarations about expanding 'the scope and
scale of consciousness' through public discourse, the billionaire got cold feet. A month later, in May, he
tried to kill the deal, claiming that Twitter had more bots than its public filings let on. After a truly chaotic
legal discovery process, which even included some embarrassing texts, Musk was forced to seal the
deal. By October, the platform was his. Since Musk bought Twitter and took the company private, the
news around the microblogging platform has been a whirlwind, rife with verification chaos, API access
shakeups, ban reversals, staggering layoRs, and most notably, rebranding to X.2"

Elon Musk's (perhaps temporary) rebrand of Twitter to "X" may seem high-risk, amateurish, or even
capricious to non-moguls. Nevertheless, it is likely doing precisely what he intended: generating
enormous global interest, pushing Twitter closer to his other X brands (SpaceX, Tesla Model X, xAI), and
clearing the way for a profitable merging of technologies.
The new X Logo has garnered mixed reactions from users, and in response, Elon Musk wrote that the X
Logo will "keep evolving." Indeed, Twitter's rebranding journey will be one to follow closely.
Since Elon Musk announced his decision to remove the iconic bird logo and adopt "X" as Twitter's new
logo (the "X Logo"), the rebranding decision has been the talk of the town. The rollout has prompted a
barrage of reactions, and many question whether the change will attract legal hurdles.
Applying the provisions of the Trade Mark Act 194 of 1993, as interpreted by the courts, analyse
and advise on the issues of:
1. Can X function as a distinctive trade mark?
2. Are there any potential barriers to registration, and if so, what are they?
3. Can a single generic letter such as X qualify for trade mark registration?
4. Does abandoning the "Twitter" trade mark and its goodwill outweigh the benefits of
rebranding?
4.2 → REQUIREMENTS FOR TRADEMARK PROTECTION AND REGISTRABILITY
A Trade mark is a “Mark” or “Sign” which distinguishes one trader’s products or services from those of
others.
• Before a sign or symbol can qualify as a trade mark, it must first constitute a “Mark”.
• Once a sign qualifies as a Mark, we then determine if it can also qualify as a Trade mark.
• Key Distinguishing Elements of a Mark and Trade mark:
o Mark: graphic representation.
o Trade mark: distinguishing character.
• Only marks identified in the Act can be trade marks and be registered as such.
• What transforms a ”mark” to become a “trade mark”?
o The use or intention to use “in the course of trade to distinguish from all other forms of
intellectual property.
§ Verimark v Bayerische Motoren Werke
REQUIREMENTS There a four requirements for the registration of a trade mark:
FOR 1. Comply with the requirements of a ‘mark’;
REGISTRATION 2. Comply with the definition of a ‘trade mark’ in section 2;
3. Be distinctive within the meaning of section 9; and
4. Not be disqualified in terms of section 10.

An application to register a trade mark is centralised around the following 3

aspects:
• There must be a sign (i.e. a mark).
• It must be capable of graphical representation.
• It must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings.

Thus, there are two hurdles in terms of registration:

1. Registrability under the provisions of section 9 – marks that may be
registered.
2. So called “unregistrability” under the provisions of section 10 – marks
that may not be registered.

4 STEP APPROAH 1. Identify the mark.

2. Discuss whether the mark qualifies as a trade mark.
• Apply the definition and the 2 steps (graphic representation +
distinguishing).
3. Positive criteria (section 9) – either through inherent capability or prior use.
4. Negative criteria (section 10).

Registration = Mark + Trade Mark + Positive Criteria – Negative Requirement

1) The mark • Definition of Mark: Section 2(1): any ‘sign’ capable of being ‘represented
graphically’, ‘including’ a device, name, signature, word, letter, numeral,
shape, configuration, pattern, ornamentation, colour or container for goods
or any combination of the aforementioned.

• A ‘sign’
o A mark that is purely decorative or for warehouse purposes, will not
be considered a trade mark unless it can actually come to
distinguish the goods of the trader.
 • Capable of being ‘represented graphically’
o A mark must be something that can be represented visually and
present at the point of sale.
o The representation must be clear, precise, self-contained, easily
accessible, intelligible, durable and eRective.
o This is required in order to determine the precise subject of the
protection aRorded by the registered mark to its proprietor.
o However, it need not be perceived visually, but just graphically
presented i.e. a soundtrack.

• ‘Including’
o Refers to the fact that this is a non-exhaustive definition.
What will qualify for registration?
Valprē Bottle of water:
• TM 1: word mark = Valprē.
• TM 2: Special font = Valprē.
• TM 3: Logo.
• TM 4: Container.
• What about the recycle logo?
o The recycle logo cannot be used a trade mark.
2) Marks that Definition of a trade mark - Section 2(1): a mark used or proposed to be used
qualify as trade by a person in relation to their goods or services for the purpose of
marks distinguishing those goods or services form the same kind of goods or
services connected in the course of trade with any other person.

What transforms a ‘mark’ to become a ‘trade mark’?

• ‘Use or intention to use’ in the course of trade.
• Not a trade mark unless used or intended to be used in trade.
Use or Proposed to be Used
• Must be:
o Use as a trademark
i.e., for purposes of distinguishing (otherwise, it will not amount to
trademark use).
o Use in the course of trade.
o Use upon goods or services.
o With the object or intention of protecting, facilitating, or furthering
trade in those goods or services.

An applicant must at least have the intention to use its mark as a trademark at
the time of filing a trademark application.
• Actual use is not required; there must be a bona fide intention (not
substantial, just honest use) and not with ulterior purposes, such as
preventing someone else from registering it.

Use in Relation to Goods or Services

• Goods and services are classified into classes, and the use must be
regarding such classification.
o This classification system can be found in Schedule 3 of the
Regulations. Use in the course of trade must:
 § Simply put, it must fall within one of those 34 classes of
goods or 11 classes of services.

In Course of Trade
• Means in the context of commercial activity with a view to economic
advantage and not as a private matter.

For the Purpose of Distinguishing

• This is not only important for purposes of registration but also for
Section 34(1)(a) and (b):
o It acts as a badge of origin.
o There can only be trademark infringement under those
provisions if consumers are likely to interpret the mark, as it is
used by the ‘infringer’, as designating or tending to designate the
undertaking from which the ‘infringer’s goods or services
originate.

If step 1 and 2 are applied successfully then we know we are dealing with a trade mark. The next
step is to determine whether that trade mark can be registered as such.

3) Section 9 → the Section 9 of the Act sets out the ‘first hurdle’ of trademark registration.
positive
criteria The essential elements of a registrable trademark under Section 9 are:
• It must be capable of distinguishing goods or services of a person in
regard to which it is registered or proposed to be registered from the
goods or services of another person.
• This can be achieved as a result of (not mutually exclusive):
o An inherent capability to distinguish (e.g., Google, Apple, Kodak);
and/or
 o A capability to distinguish by reason of prior use thereof (at the
date of application for its registration, such as through
advertising).

Verimark v BMW
→ The purpose of a trademark is to distinguish “the goods or services... from
the same kind of goods or services connected in the course of trade with any
other person,” and this brings us to the essence of trademark law

4) Section 10 → Section 10 of the Act sets out the ‘second hurdle’ of trademark registration.
the negative This section provides for the ‘unregistrability’ through 17 convenient
criteria subsections.
• It provides that a mark which is not capable of distinguishing within the
meaning of Section 9 shall not be registered as a trademark; if
registered, it shall be liable to be removed from the register.
The following are of most importance:
• 10(2) - Deals with three situations:
o 10(2)(a) – Non-compliance with Section 9.
o 10(2)(b) – Descriptive marks.
o 10(2)(c) – Ordinary language (“generic marks”).
• 10(3) – No bona fide claim to partnership.
• 10(4) – No bona fide intention to use.
• 10(6) – Well-known trademarks.
• 10(7) – Mala fide application.
• 10(12) – Inherent deception or use likely to deceive.
• 10(13) – Marks which have been used deceptively.
• 10(14) – Conflict with prior trademark registration.
• 10(15) – Conflict with prior application.
• 10(16) – Contrary to existing rights.
• 10(17) – Dilution.

DECEPTION & Do not confuse registrability/registration (Section 10) and infringement/use

CONFUSION (Section 34).

The concept of deception and confusion between trademarks is at the heart of

trademark law.
• Deception: Means to cause someone to believe that something is false.
• Confusion: Means to cause bewilderment, doubt, or uncertainty.

This is a fundamental issue of equivalent importance to that of the capability of

a trademark to distinguish goods/services as to origin.

Arises in the following situations:

1. Applications for registration (examination by Registrar and/or in opposition)
potentially conflicting with prior trademarks (registered or common law)
under:
o Section 10(12): Grounds when someone has common law rights.
o Section 10(14): Prior registration.
o Section 10(15): Application.
o Section 10(16): Contrary to prior rights.
2. Applications for removal/cancellation of trademark registrations (same
subsections as above):
 o In such a case, it is for the applicant for removal to show the
likelihood of confusion or deception.
o A registered trademark will only be liable for removal by reason of
supervening likelihood of deception or confusion if that likelihood is
the result of some blameworthy conduct on the part of the
registered proprietor.
o Interested parties
3. Trademark infringement under:
o Section 34(1)(a), Section 34(1)(b), and Section 35.
o The trademark owner must satisfy the court of the likelihood of
confusion or deception between the registered trademark and the
allegedly infringing mark.

3 enquiries STEP 1: Determine what it is that is registered.

regarding • Confusion and deception arising from similarities between the
deception and respective goods or services of the plaintiR and defendant is first
confusion tested. If positive, move to Step 2.
o Are the goods identical or similar?
o Look at the sense, sound, and appearance.
• Clearly understand the precise scope of the specification of
goods/services and the scope of Section 10(14) and Section 34(1)(a)
and (b).
• CF Orangeworks Ltd v Account Works Software
o In the appeal concerning the trade mark application for
"ORANGEWORKS" by Account Works Software (Pty) Ltd, the key
issue was whether its registration would likely deceive or cause
confusion with the existing trade mark "ORANGE," owned by
Orange Brand Services Limited, particularly in relation to their
respective goods and services.
1. Comparison of Goods: The court emphasized that the
confusion must be assessed based on the notion of how the
marks could be used if both were registered, rather than
their actual usage. Since both marks pertained to "computer
software," including software for accounting, the potential
for confusion was substantial.
2. Legal Framework: The court applied Section 10(15) of the
Trade Marks Act, which prohibits registration of marks that
are so similar to existing marks that their use could deceive
or confuse consumers. The question was whether
consumers would likely be misled regarding the origin of the
goods.
3. Assessment of Similarities: The registrar and the previous
court erred by focusing on the diRerent industries—
telecommunications for ORANGE and accounting for
ORANGEWORKS—while neglecting the fact that both goods
fall within Class 9 and share commonalities in computer
software. The court highlighted that confusion does not
require identical goods but rather a reasonable likelihood of
confusion among the consuming public.
4. Overall Impression and Distinctiveness: The court found
that the dominant and distinctive element of "ORANGE"
would likely create an initial impression of connection or
 origin regarding the software associated with
"ORANGEWORKS." Despite the common usage of "orange"
as a color, its application in this context was seen as distinct
and likely to mislead consumers.
5. Conclusion: Ultimately, the court ruled that there was a
likelihood of initial confusion if both marks were used in the
market, and therefore, the application for "ORANGEWORKS"
was refused. The appeal was upheld, ordering the applicant
to bear the costs of opposition, confirming the importance
of assessing potential consumer confusion holistically
rather than narrowly by industry application.
STEP 2:
• Assess similarities between trademarks.
• British Sugar PLC v James Robertson & Sons – Set the test for similarity.
o It said that you need to consider the following factors:
§ the uses of the goods;
§ the users of the goods;
§ the physical nature of the goods;
§ the trade channels through which they’re sold;
§ the issue of whether the goods are found on same
shelves;
§ the issue of whether they’re competitive.

STEP 3:
• Perform a global assessment/appreciation.
• Combine the findings from Steps 1 and 2 and make a value judgment.
• Metterheimer v Zonquesdrif Vineyards – The closer the marks, the less
close the goods/services need to be, and vice versa.
o Held that wine and wine grapes are not goods that are so similar
that the use of the almost identical mark, Zonquasdrif and
Zonquasdrift, would cause consumer confusion.
o In a judgment that surprised everyone (with the possible
exception of Western Cape judge Dennis Davis, whose decision
had been taken on appeal), the SCA put much emphasis on the
physical nature of the goods (wine being an alcoholic beverage,
wine grapes a fruit), and the trade channels (wine being sold to
the public, wine grapes to the trade).

REGISTRATION A trademark, according to Section 2(1), is defined as: “a ‘trade mark,’ other
PROCEDURE AND than a certification trade mark or a collective trade mark, means a mark used
CLASSIFICATION or proposed to be used...”

The current Act provides for the registration of the following:

1. Ordinary Trade Marks
2. Certification Trade Marks: Section 42
o The trademark complies with the definition of an ordinary trademark
but includes an additional part.
o Indicates that the goods or services on which it is used are of a
particular standard, kind, or quality.
3. Collective Trade Marks: Section 43(1)
o Provides that geographical names or other indicators of
geographical origin may be registered.
 o Capable of distinguishing, in the course of trade, goods or services
of persons who are members of an association from goods or
services of persons who are not members.
o Thus, everyone in that region can use the trademark because it is a
collective trademark.
CERTIFICATION • Section 42
TRADE MARK • Trade mark complies with the definition of an ordinary trade mark, but it has
an extra part.
• Indicates that the goods or services on which it is used are of a particular
standard, kind or quality.

COLLECTIVE Section 43(1)

TRADE MARK • Provides that geographical names or other indicators of geographical origin
may be registered.
• Capable of distinguishing, in the course of trade, goods or services of
persons who are members of any association from goods or services of
persons who are not members thereof.
• Thus everyone in that region can use the trade mark because it is a
collective trade mark.
TRADE MARK •
REGISTRATION
PROCEDURE
REGISTRATION Section 37(1): In South Africa, a trademark is valid for a period of 10 years from
AND RENEWAL the date of filing and every 10 years thereafter, into perpetuity.

Section 37(2): The duration is calculated on the same basis, irrespective of

whether or not convention priority is claimed.

• A mark may be renewed 6 months prior to the renewal expiry date.

• A renewal application is submitted on a Form TM5.
• The Act provides for a 6-month grace period within which to file a late
renewal application. This will, however, attract payment of penalty fees.

Late renewal may

Renewal
be filed up to 6
application may
months after
be submitted 6
Filing Date: 12 Renewal Due: 12 expiry date – with
months prior to
May 2001 May 2011 payment of
expiry date: From
penalty fees: Up
12 November
to 12 November
2010
2011

RECTIFICATION There are three grounds for rectification/cancellation of trademarks under the
AND Act:
CANCELLATION 1. Section 24: An entry wrongly made or wrongly remaining in the register
o Refers to a trademark that should not have been registered in the
first place or one that has lost its distinctive character after
registration.
2. Section 26: Failure to comply with a registration condition
o Refers to cases where a condition was imposed when a
trademark was registered, and this condition is not complied
with.
3. Section 27: Non-use
 o Where a mark was registered with no bona fide intention to use
it, or where there has been no bona fide use of a mark, or where
a mark has not been used for five years.

Section 14: Honest Concurrent Use

• Where a trader in good faith has made use of a trademark concurrently
with another registered mark belonging to someone else, the registrar
may allow its registration or decline the application for its cancellation.
LICENSING What is a Licence?
A licence refers to the relationship between the proprietor of a trademark and
an entity authorised by the proprietor to use the trademark in relation to goods
manufactured and sold or services rendered. Usually subject to the payment
of a fee, a trademark owner may permit others to use the trademark without
relinquishing ownership. This arrangement is recognised by the Trade Marks
Act.

TYPES:
1. Sole Licence – Sole use
o A single user is entitled to the use of the trademark.
o Both the proprietor and the user are entitled to use the mark.
2. Exclusive Licence – Exclusive use granted to a person
o Allows the user greater exclusivity, as this use is to the exclusion
of all others, including the proprietor.
3. Non-Exclusive Licence – Non-exclusive use, such as in franchises
o The use of the trademark may be licensed to multiple users in
addition to the proprietor.
o Must be carefully monitored and controlled to ensure it does not
lead to dilution.

HYPOTHECATION If a trademark has been hypothecated, the Registrar will refuse to record the
AND ATTACHMENT transfer without the written consent of the person in whose favour the deed of
OF TRADE MARKS security has been granted.

Hypothecation: Creates a security interest

• Simply put, it means using a registered trademark as security, whereby
you cannot freely deal with that registered trademark without the bank's
consent.

Section 41: Deals with two situations in which a registered trademark can be
used as security.

1. The registered trademark may be hypothecated by deed of security –

Section 41(1)
o The registered trademark can be used as a guarantee.
§ i.e., the trademark can be sold at an auction.
o Section 41(3): This can be recorded (endorsed) on the register by the
Registrar and has the eRect of a pledge (movable property) per Section
41(4).
o Section 41(5): The Registrar will not record the transfer of a
hypothecated mark without consent.
o Section 41(6): The endorsement is removed upon discharge of the
debt.
 2. The registered trademark may be attached by deed of security
o The registered trademark may be attached to establish or confirm
jurisdiction for purposes of proceedings in the 'Transvaal Provincial
Division' only.
o Only a registered trademark can be assigned.
o For example, if someone owes you money, you may apply to the court
to attach the trademark (property).
o Steps:
§ Bring an application to court to show that the person owes you
money and that the trademark should be attached.
§ If the court approves, present the court order to the Registrar.
§ Applicable in the North Gauteng High Court or the Pretoria
Magistrate’s Court.
o A registered trademark may be attached and sold in execution pursuant
to a court order.

REGISTERED USER Section 38(1): Authorized use with the ‘license of the proprietor’ by an entity is
vs PERMITTED termed permitted use.
USER
Section 38(2): Permitted use is deemed to be use by the proprietor for all
purposes under the Act and common law.
• Note: For Section 27, only permitted use can be relied upon to defend
against claims of non-use.

Section 38(3): A registered user may be recorded in the register, and the use
can be for some or all of the goods for which the trademark is registered.
• Registered user (registered use agreements) is possible but not
mandatory.

Section 38(4): Provides a registered user with a right of action in infringement

proceedings, unless specifically excluded in the licensing agreements between
the parties.
• The registered user may sue for trademark infringement as if they were
the proprietor.
o They may call upon the proprietor to initiate actions, and if the
proprietor refuses or neglects to do so within two months, the
user may proceed with such actions in their own name, with the
proprietor listed as a co-defendant or co-respondent.
• The proprietor is only liable for costs if they enter an appearance and
actively participate.
• The registered user licensee does not possess ownership rights of the
trademark but is aRorded certain entitlements.

Section 38(5): Confirms that the registration of a user shall serve as prima
facie evidence that the user’s use of the registered trademark is permitted, as
contemplated in Section 38(1).
• The recorded use by a registered user is, prima facie, considered
permitted use.

Section 38(6): Outlines formal requirements for recordal.

TRADE MARK • In a nutshell, once a trade mark owner puts goods bearing its trade mark
EXHAUSTION into the marketplace, it cannot use its trade mark to prevent third parties
PRINCIPLE who acquire those goods from selling or otherwise dealing in them.
• The reason? The trade mark owner’s rights are said to be “exhausted” by the
initial sale.
Is South African 1. Introduction to Shape Marks in Trademark Law
trademark law out • Intellectual property law protects trademarks, including non-traditional
of shape? A marks like shapes, encouraging innovation.
comparative • Shape marks are a newer area of trademark law, making the
analysis of shape comparison of the South African approach with other jurisdictions
marks, in light of insightful.
the recent SCA • The Kit Kat trademark cases in South Africa, the UK, and the EU
and CJEU Kit Kat illustrate both similarities and diRerences in legislative approaches to
decisions by S shape marks.
Hobson-Jones and • Despite similar laws, judgments on the Kit Kat shape mark have varied
S Karjiker. significantly among South Africa, the UK, and the EU.
2. Background on Shape Marks
• Trademarks serve as a "badge of origin," distinguishing goods or services
from others.
• Shape marks can be challenging to register as they must clearly identify
the source and avoid creating monopolistic eRects.
• Successful examples include the Jeep grille and Coca-Cola bottle; the
Lindt Bunny was denied registration.
• Shape mark registration requires clear proof of fulfilling trademark
functions to prevent "eternal protection."
3. Territorial Nature of Trademark Law
• Trademark protection is regional and adheres to each territory's law.
• South Africa's trademark law aligns closely with international
standards, particularly those in the UK and EU.
• The relative ease of registering the Kit Kat shape mark in South Africa,
compared to its rejection by the CJEU and UK courts, raises questions
about South Africa's alignment with international standards.
4. South African Kit Kat Proceedings
• In 2014, the South African Supreme Court of Appeal upheld the Kit Kat
shape mark's validity.
• Nestlé and IRco, competitors in the chocolate market, were involved in
litigation over the shape mark's registration, revealing divergences in
legal interpretations compared to European and UK standards.
4.1 South African Shape Mark Legislation and Case Law
• A Shape as a Trademark: Prior to the Trade Marks Act of 1993, only
containers could be registered as trademarks. The Act now allows
shape marks if they distinguish goods or services and are graphically
representable, although other trademark requirements can pose
challenges.
• A Shape as a Badge of Origin: A shape must "distinguish" goods, a
requirement linked to its role as a source indicator. South African courts
apply rigorous tests, often viewing shapes as functional rather than
distinctive, limiting registrations.
• The Kit Kat Bar: Innovation or Technical Necessity?: Section 10(5)
prohibits trademarks on shapes essential for technical results. Nestlé’s
four-finger Kit Kat shape faced challenges from IRco, arguing it was
technically necessary for production.
5. Kit Kat Proceedings in South Africa: The Problem, Argument, and Verdict
• The Application for Expungement: IRco sought to expunge the Kit Kat
shape mark, citing its necessity for technical production, but Nestlé
countered with EU findings showing the shape had distinguishing
features.
• Legal Arguments and Reliance on International Decisions: South
African arguments mirrored UK and EU cases, focusing on expungement
rather than registration.
• Judgment: Kit Kat Shape Mark Confirmed: The court upheld Nestlé’s
shape mark as distinct and not solely technical, noting extensive use
supported consumer recognition.
6. Kit Kat Abroad: From the UK to the CJEU, and Back
6.1 Shape Mark Legislation in the UK and the EU
• Coexistence of Systems: The UK and EU trademark systems coexist,
making "European trademark law" an oversimplification.
• Goal of Harmonisation: The aim is to create a single common
marketplace within the EU.
• Legislation Overview: CTMR and TMD apply in the UK, which includes
"shape" in the definition of "trade marks." South African legislation has
similar provisions.
6.2 The UK Kit Kat Question
• Introduction of Kit Kat: Launched in 1935, the Kit Kat was acquired by
Nestlé in 1988.
• Trademark Application: Nestlé applied to register the four-finger shape
on July 8, 2010, but Cadbury opposed the application.
• IPO Decision (2013): The shape mark was found to lack distinctive
character, identifying essential features that included technical results.
6.3 Findings of the Advocate General and the CJEU
• The Second Question: The CJEU must determine if registration is
precluded by essential features, considering public interest.
• The Third Question: The Advocate General included manufacturing
processes in "technical result," while the CJEU focused solely on
product functionality.
• The First Question: The UK High Court questioned if exclusive shape
recognition suRices for trademark status.
7. Same Facts, Same Law, Di\erent Result: Implications for South African
Trademark Law
• The comparison of the Kit Kat application across jurisdictions highlights
the compatibility and growth of South African trademark law.
• Although South Africa, the EU, and the UK share similar legislative
provisions, diRering court interpretations raise questions, such as:
o Why was the shape registered more easily in South Africa?
o Why did the UK proceedings present significant legal challenges?
• Inconsistencies in judicial approaches to shape marks undermine
expectations for uniform treatment across jurisdictions.
7.1 The Scope of "Technical Result"
• The CJEU's approach to the "technical result" exception diRers from
South Africa's interpretation, with the Advocate General emphasizing
both manufacturing processes and end-use.
• The Beecham case, a landmark ruling, denied trademark registration
based on necessity for technical results, raising ambiguities regarding
manufacturing versus end-use definitions.
 7.2 Technical Result in One Jurisdiction, but Not the Other?
• All three jurisdictions prohibit registration of shapes essential for
technical results, but outcomes vary significantly.
• The SCA concluded that the Kit Kat shape was not "exclusively"
necessary, while the CJEU emphasized a strict application of the
"technical result" exclusion.
7.3 Is it Easier to Be Distinctive in South Africa?
• Nestlé's UK application faced rejection despite high consumer
recognition.
• The SCA recognized extensive use as evidence of distinctiveness,
raising questions about the application of the "average consumer" test
and highlighting the flawed assumption that "use equals
distinctiveness."
8. Conclusion
• Shape marks present complex challenges in trademark law across
South Africa, the UK, and the EU, revealing significant disparities in
judicial interpretations.
• The SCA accepted a lower threshold for distinctiveness based on
consumer recognition, contrasting with UK courts and the CJEU, which
require shapes to serve as definitive badges of origin.
• The SCA's ruling implies that obtaining shape mark registration in South
Africa is less rigorous, raising concerns about its long-term coherence
with established principles.
• The South African judiciary should aim for consistency with
international norms to uphold the integrity of trademark law.
Summary
• This article examines the litigation surrounding the Kit Kat chocolate
bar's shape across South Africa, Europe, and the UK, revealing
diRerences in legal positions regarding shape marks.
• Key Findings:
o Technical Result Exclusion:
§ South Africa: Exclusion applies if the shape is
"exclusively" a technical result.
§ UK/EU: Any application of the "technical result" grounds
leads to rejection.
o Distinctiveness:
§ South Africa: Average consumer recognition suRices for
distinctiveness.
§ UK/EU: Shapes must be relied upon as badges of origin to
be considered distinctive.

Dart Industries • Parties Involved:

Incorporated and o Appellants: Tupperware (part of the American-based Tupperware
Another v Botle group).
Buhle Brands (Pty) o Respondent: Buhle Brands (a South African company).
Ltd • Context:
o Tupperware held a registered trademark for “ECO BOTTLE” in class
21, covering various household and kitchen containers, including
water bottles.
o Buhle Brands began selling a similar water bottle in 2019, prompting
Tupperware to seek legal action for trademark infringement.
• Legal Actions:
 o Tupperware applied for a restraining order against Buhle Brands for
trademark infringement and passing oR.
o Buhle Brands countered with a request to cancel Tupperware's
trademark registration, citing:
§ Lack of distinctiveness.
§ Registration without intent to use.
§ Limitation on industry development.
§ No bona fide intention to use the mark.
• High Court's Decision:
o The court based its ruling on Section 10(2)(a), which lists
unregistrable marks.
o Determined that Tupperware's mark was not capable of distinguishing
goods, referring to Section 9.
o Discussed inherent vs. acquired distinctiveness:
§ Inherent distinctiveness: A mark must naturally identify
goods from a specific source.
§ Acquired distinctiveness: A mark can gain distinctiveness
through prior use.
• Findings:
o Tupperware's Eco bottle did not significantly diRer from industry
norms, lacking inherent distinctiveness.
o No evidence showed the average consumer recognized the bottle as a
trademark.
o The High Court upheld the cancellation of Tupperware's trademark.

Passing O\ Claim:
The court referred to the three requirements for passing oR:
§ Proof of relevant reputation.
§ Likelihood of public confusion regarding the source of
goods/services.
§ Evidence of damage.
o Tupperware demonstrated established goodwill since 2011, and
Buhle Brands’ bottle was found to be substantially similar, likely
leading to confusion.
• Conclusion:
o Buhle Brands succeeded in its trademark counter-application, while
Tupperware won its passing-oR claim.

Yuppiechef • Parties Involved:

Holdings (Pty) Ltd o Appellant: Yuppiechef (registered trademark holder).
v Yuppie Gadgets o Respondent: Business using the unregistered mark “Yuppie Gadgets.”
Holdings (Pty) Ltd • Context:
o Yuppiechef registered the name “Yuppiechef” under the Trade Marks
Act 194 of 1993 for kitchen equipment and household items (classes 8,
11, and 21).
o Yuppiechef alleged that the respondent was infringing its trademarks by
using “Yuppie Gadgets” for its online business selling quirky household
and oRice items.
• Legal Claims:
o Yuppiechef pursued claims of trademark infringement under Sections
34(1)(a), (b), and (c) of the Act.
o Also asserted a claim based on common law passing oR.
 • Respondent's Defense:
o Argued that there was no infringement as the appellant's mark
pertained to goods while its own mark related to services.
o Maintained that the two marks were not confusingly similar despite
both containing “yuppie.”
• Court's Findings:
o Agreed with the respondent that the marks served diRerent markets
(goods vs. services).
o Determined that the respondent’s mark was used to identify its own
business rather than in connection with the goods covered by
Yuppiechef's trademark.
o Found no evidence of blurring or tarnishing of the Yuppiechef mark in
relation to Section 34(1)(c).
• Conclusion:
o The appeal was dismissed with costs, aRirming the respondent's
position that there was no trademark infringement or passing oR.
Quad Africa • Parties Involved:
Energy (Pty) Ltd v o First Respondent: TSC (an Australian company) registered the S
The Sugarless SUGARLESS logo in South Africa for goods in class 30, including
Company (Pty) Ltd confectionery.
o Appellant: QAE (exclusive distributor of TSC’s confectionery products
in South Africa).
• Context:
o QAE notified TSC of its intention to terminate the distribution
agreement on 16 April 2018.
o After the notice, TSC discovered that QAE launched a competing brand
called SUGARLEAN confectionery, using packaging identical to TSC’s
but with the S SUGARLEAN logo replacing S SUGARLESS.
• TSC's Claims:
o Alleged QAE's conduct was unlawful for multiple reasons:
§ Trademark infringement.
§ Copyright infringement.
§ Passing oR its product as TSC's.
§ Unlawful competition.
• QAE's Counter-Application:
o Sought endorsement of its S SUGARLESS CONFECTIONERY logo to
clarify that registration did not grant exclusive use of the term
“sugarless” separately.
• High Court Ruling:
o Dismissed QAE's counter-application and ruled in favor of TSC.
o Allowed QAE to appeal the dismissal and various declarations
regarding copyright infringement, passing oR, and interdicts against
using the terms “SUGARLESS” and “SUGARLESS CONFECTIONERY.”
o TSC was granted leave to cross-appeal concerning the exclusion of the
SUGARLEAN logo from some reliefs.
• Court's Findings:
o Counter-Application: Section 15 of the Trade Marks Act allows for a
disclaimer if a mark is not capable of distinguishing. The term
"sugarless" was deemed descriptive and inherently incapable of
distinguishing goods, meaning QAE's counter-application should not
have been dismissed.
 o Copyright Infringement: TSC failed to demonstrate ownership of an
original work and that QAE's packaging was similar enough to
constitute infringement.
o Passing O\: The court found no objective similarity in the parties'
packaging and ruled against TSC's claims.
o Counterfeiting: The High Court's failure to consider counterfeiting
requirements was noted.
• Conclusion: The appeal was upheld in favor of QAE regarding the dismissal
of the counter-application and other claims against it, while TSC's claims
were largely rejected.

Verimark (Pty) Ltd • Parties Involved:

v Bayerische o Appellant: Entity specializing in direct response television marketing.
Motoren Werke o Respondent: Manufacturer of German vehicles seeking an interdict
AktienGesellschaf against the appellant.
t • Context:
o The respondent complained about the appellant's use of its logo in
advertisements for a car polish product.
o The respondent alleged that the appellant was exploiting its logo by
prominently featuring it in the advertising campaign.
• Appellant's Defense:
o Argued that the use of the logo was incidental and did not constitute
trademark infringement.
• Court's Findings:
o A trademark serves as a badge of origin; trademark law does not
provide copyright-like protection.
o The court examined the advertisement and concluded that customers
would recognize the logo as identifying the car itself, not the car polish.
o The use of the vehicle was intended to illustrate the properties of the
polish, rather than to invoke any trademark rights.
o The court found no material link between the respondent's vehicle and
the car polish, nor did the logo serve as a guarantee of origin for the
polish.
• Conclusion: The court ruled in favor of the appellant, determining that the
use of the logo did not amount to trademark infringement.

PROBLEM 4-3
You are an intellectual property attorney advising a client who wishes to register a "pose" as a non-
traditional trade mark in South Africa. The client, a prominent fashion model, has a unique and widely
recognised signature pose that has become synonymous with their brand. This pose is distinctive and
instantly recognisable to their fans and the fashion industry.

Applying the provisions of the Trade Mark Act 194 of 1993, as interpreted by the courts, analyse and
advise on the issues of:

1. Explaining the concept of non-traditional trade marks in South Africa, providing examples
of non-traditional trade marks.
2. Evaluate the feasibility of registering the client's signature pose as a non-traditional trade
mark. modelling
 3. Analyse whether the pose has the potential to distinguish the client's modelling and
fashion- related services from those of others.
4. Consider any potential challenges and advantages associated with registering a "pose."
5. Outline the critical steps and requirements involved in the trade mark registration
process
in South Africa, specifically for non-traditional trade marks like a "pose."
6. Offer practical advice and considerations that the client should keep in mind during the
application process.
In your response, refer to pertinent provisions of South Africa's trade mark law and any relevant case
law or precedents.

PROBLEM 4-4
John, a South African entrepreneur, has developed a unique and innovative line of organic skincare
products. He wishes to protect his brand name, "NaturaGlow," and seeks to understand if it qualifies
for trade mark registration. John is aware that trade mark registration can offer legal protection and
exclusive rights to his brand name, potentially enhancing his market position.
Advise John on whether "NaturaGlow" qualifies for trade mark registration under South African law,
addressing the following key points:

1. Explain the fundamental criteria that a brand, service, or product must meet to qualify for
trade mark registration in South Africa.
2. Discuss whether "NaturaGlow" satisfies these criteria based on its distinctiveness,
uniqueness, and potential for trade mark protection.
3. Outline the steps involved in the trade mark registration process in South Africa,
emphasising the requirements.
4. Provide guidance on how John should proceed to register "NaturaGlow" as a trade mark.
5. Discuss the advantages and benefits that John could enjoy by successfully registering
"NaturaGlow" as a trade mark.
6. Explain how trade mark registration can protect his brand and provide exclusive rights in the
marketplace.

Ensure your responses are grounded in South African trade mark law and provide relevant legal
references where applicable.

PROBLEM 4-5
You are a trade mark attorney advising a client who wishes to register a trade mark in South Africa.
Your client's proposed trade mark appears to be unique but has some characteristics that might raise
concerns about its eligibility for trade mark registration.

In the context of South Africa's trade mark law, discuss the distinctions between a mark that
qualifies for trade mark registration and an unregisterable trade mark. Include practical
examples and reference any relevant legal provisions or precedents to support your analysis.
4.3 → GROUNDS FOR REFUSAL AND OPPOSITION OF TRADE MARK
REGISTRATION
2.4-2.6
TRADE MARKS
UNDER IPLAA

REGISTRABILITY OF
TRADE MARKS
Capable of
distinguishing (S 9)
Disqualification
from registration (S
10)
Lack of intrinsic registrability
Prohibited marks
Proprietorship and good faith
Third party rights
TRANSFER OF
TRADE MARKS AND
LICENSING
Transfer of rights in
trade mark
Assignment
Transmission
Recordal of
assignment
transmission
1.4 → TRADE MARKS: RIGHTS, INFRINGEMENT AND REMEDIES
•
TRANSFER OF Transfer of rights in trade mark
TRADE MARKS & • Ownership of TM can be transferred from one person to another
LICENSING → S 39 provides for transfer through assignment or transmission

• Assignment of TM → formal act of transfer of ownership

o Can take place in regard to registered or pending trade mark
o Pending trade mark = ‘substitution of the applicant for registration’

• Transmission of TM → passing ownership by operation of law

o Not by means of a formal act related to or comprising a TM

• Assignment or transmission distinguished from change of name of trade

mark proprietor
o Change of name = identity of trade mark proprietor as a legal person
remains unchanged an no transfer of ownership takes place
o All that happens is trade mark proprietor acquires new name or
designation
o If "Tech Innovations Ltd." decides to rebrand and change its name to
"Tech Innovations Corp." but continues to own the trade mark
"InnovateX," the trade mark remains with the same legal entity. The
ownership does not change; only the name of the company has
changed.
Assignment
• Similar to sale of movable assets based on written agreement
• Agreement eRecting assignment = Deed of Assignment
o Bc TMs are incorporeal
• Can take place w/ or w/out goodwill of the busi of which the TM forms a
part of
• May be total or partial
o Total → full transfer of ownership of TM iro all g/s covered by TM
o Partial → splits g/s covered by the TM into separate portions =
transfers only one portion to assignee
• Can only take pace via written agreement
o Else assignment invalid
• ERective date of assignment cannot precede actual date of signature of
Deed of Assignment by the assignor
• Ownership of registered TM can be transferred in a written agreement ito
which all IP or all property is transferred from TM owner to another party
• For convenience or recording in register → execute a further pro forma Deed
of Assignment iro TM = eRective date would be the earlier general
agreement and not the date of Deed of Assignment
o Imagine "Company A" agrees to transfer its trade mark, "BrandPro,"
to "Company B" on March 1, 2023, through a general agreement.
However, to formally register the transfer with the trade mark oRice,
a pro forma Deed of Assignment is created and signed
on September 1, 2023.
o For legal and registration purposes:
 § The e\ective date of the transfer would still be March 1,
2023 (the date of the original agreement), even though the
Deed of Assignment was signed later on September 1.

• Partial Assignment Permissibility: The Trade Marks Act allows partial

assignment but requires:
o A statement of case.
o An aRidavit with key arguments and evidence showing that multiple
proprietors using the same mark for similar goods/services would not
confuse the public.
• Avoiding Confusion: The aRidavit should demonstrate that:
o Proprietors operate in diRerent goods/services within the same
classification.
o Proprietors are related or part of the same group, minimizing confusion
about the goods/services' origin.
• Registrar's Past Decisions: Partial assignments have been allowed where:
o Owners produced both motor vehicles and airplanes.
o Owners manufactured cigarettes and luxury smoking accessories.
o Owners produced both sweets and bakery products.
• Alternative Approach: If the Registrar denies partial assignment, similar
objectives can be achieved by:
o Amending the existing trademark specification to exclude
goods/services intended for the assignee.
o Filing a new trademark application in the assignee's name.
o Submitting a consent letter from the original proprietor, allowing the
Registrar to accept the new mark for registration.
Transmission
•

Can take the following forms:

1. Acquisition through Liquidation or Merger:
o When a company is liquidated or merges with another, its assets,
including trademarks, pass to the acquiring company along with all
other assets.
2. Inheritance of a Trademark:
o If the trademark proprietor (a natural person) dies, the trademark
becomes part of their estate.
o The trademark is transmitted to the heirs along with other inherited
assets.
3. Transmission via Foreign Legislation:
o Trademarks may transfer ownership under foreign law, as seen when
state-owned institutions are transformed into private companies
(civil law entities).
o For example, a South African trademark held by a former state
institution in Eastern Europe would pass to its successor company
upon the institution’s transformation.
o Upon transformation of state institution into a company = assets
pass to successor company
o Similarly, privatisation of a South African state enterprise can lead to
the transmission of trademarks to the new private entity.
o Also conversely by nationalisation of a private enterprise
 o Eg SA Wool Board (former state enterprise) was deregulated ito
legislation under the Marketing Act and transformed into a trust
Recordal of assignment or transmission
• Where transmission of ownership of registered/pending TM takes place (by
assignment or other means) = new proprietor should take steps to record
change of ownership in register
• Failure to do so = cause uncertainty, prejudice new proprietor, invalidate TM

Importance of Recording Trademark Ownership Changes

1. Potential Attack on Trademark Validity:
o If the assignment of a trademark is not recorded, the new owner may
face challenges, including potential grounds for removal from the
register.
o The register serves as public notice of ownership, and failure to update
may allow the former owner to retain usage rights until the assignment
is recorded.
2. Non-Use Grounds for Removal:
o Under Section 27, trademarks can be removed for non-use if:
§ Five years pass without bona fide use by the recorded
proprietor.
§ The assignment is not recorded, and the new owner uses
the mark, creating a basis for "attack" due to the formal
non-use.
3. Confusion or Deception Grounds for Removal:
o Section 10(13) allows removal if use of a mark causes public confusion
or deception regarding its origin.
o Non-recording of an assignment may lead to discrepancies between
actual use and the register, which can provide grounds for removal.
4. Mandatory Registration of New Ownership:
o Section 40 requires any new proprietor to apply for registration of their
title to the trademark.
o Non-compliance can be a basis for removal.
5. Enforcement Challenges:
o Only recorded proprietors (or in some cases registered licensees) can
take infringement action.
o Failure to record ownership changes may prevent the new owner from
enforcing rights until the assignment is updated.
6. Royalty Claims and Damages:
o Section 34(3) allows the proprietor to claim reasonable royalties as
damages from the first date of infringement.
o If ownership is unrecorded, the new owner may be unable to claim full-
term damages for infringement occurring before the assignment is
recorded.
7. Best Practice:
o Recording assignments promptly ensures the new owner can enforce
rights, avoid potential grounds for removal, and secure entitlement to
damages.
Licensing of registered trade marks
• TM proprietor may allow another party to use its TM
• Such permission to use = license
• Granting of license usually subject to payment of a fee
 o Various ways to calculate fee but most common is % of sale price of
g/s provided under mark by the licensee
• Proprietor should exercise control over use of mark by licensee
• Licensee should use mark in manner evident that he is a licensee and not
proprietor
• TM should retain its function as proprietors badge of origin
• If licensee uses mark in way that causes confusion = validity of TM could be
endangered
• 1993 Act → use of TM by licensee deemed to be use of mark by proprietor
o Safeguards distinctiveness of mark when used under license
o Valuable for immunising the registered TM on grounds of non-use
o Licensees use qualifies as use by proprietor
• 1963 Act → required licensee to be recorded as registered user for use of TM
to be deemed use by proprietor
o Unrecorded permitted use constituted use by licensee for his own
account
o Could have jeopardised validity
• Still possible to record licensee a registered user but no longer essential to
avoid attack based on non-use → ‘licensee may be recorded as registered
users’
• Mere permitted use is suRicient
• But advantageous to record licensee as registered user:
o A registered user can take infringement action on behalf of a
registered trade mark if the proprietor is unwilling or unable to do so.
§ The registered user has the right to seek the same legal relief
available to the trade mark proprietor.
o The registration of a licensee as a registered user serves as prima
facie evidence of a licensing relationship, allowing the licensee to
use the trade mark.
o In infringement proceedings, the registered user may co-join the
trade mark proprietor and claim damages for their own losses in
addition to those suRered by the proprietor.
• Although the Act does not mandate supervision over a licensee’s use,
uncontrolled licensing can dilute the trade mark’s distinctiveness and
potentially lead to public deception or confusion.
o Uncontrolled licensing risks making the trade mark vulnerable to
expungement as an invalid entry.
o To maintain trade mark validity, a prudent licensor should ensure
control over the licensee’s use, either through direct quality control
or indirect financial oversight.
TRADE MARK INFRINGEMENT
• Once TM registered = owner can take action against 3rd parties who use similar TMs ito S 34 & S
35
S 34
(1)(a) & (b) → registered TM can be infringed where another mark is used that is so similar to the
registered mark that use could result in confusion of customer where g/s used by both parties are
the same or similar

(1)(c) → dilution provision

o Registered TM can be infringed where use by another party of similar mark = dilution of
registered TM even if confusion not likely
S 35
→ infringement of well-known international trade mark even if not registered or used in SA

• S 34(2)(a) and S 36 provide for defences to infringement claim

GROUNDS FOR S 34(1)(a) → identical goods or services
INFRINGEMENT a registered trade mark shall be infringed through: 'the unauthorised use in
the course of trade in relation to goods or services in respect of which the
trade mark is registered, of an identical mark or of a mark so nearly
resembling it as to be likely to deceive or cause confusion'

Essential elements that must be proved:

1. unauthorised use
2. in the course of trade
3. of a trade mark which is identical or confusingly similar
4. to a registered trade mark
5. in connection with the same goods or services as those covered by the
registered trade

1) Unauthorised use
→ Owner must show that use by 3rd party not authorised by him
o Problematic where infringer claims implied authorisation or claims
estoppel/ acquiescence
o Q of authorised use can come up irt use of trade mark on genuine
goods
§ Once manufactured w/ authority and go into market = implied
authorization that may be resold under that TM
⇉ Doctrine of exhaustion of rights
• Even if sold w/out express authority = still genuine
goods = resale cannot amount to infringement
o Often want to restrict resale = appoint exclusive distributors
§ Purchased & resold for cheaper → parallel importation or grey
market goods
• Genuine goods = not infringement
o Altered so no longer genuine goods → could constitute unauthorised
use & TM infringement
§ Television Radio Centre:
• Sony sued Television Radio Centre for infringing its
SONY trade mark by importing SONY video cassette
recorders designed for the UK market into South
Africa.
• Television Radio Centre modified the recorders to
make them compatible with South African standards.
• The court ruled that these modifications altered the
technical nature of the video recorders, making them
no longer genuine goods.
• In assessing whether goods remain 'genuine,' the court
considered the nature of the goods, the extent of
alterations, and their purpose.
• The court noted that determining if goods are 'genuine'
is a practical matter, with each case evaluated on its
unique facts and reasonable buyer expectations.
 o Generally 2nd hand goods = genuine goods
§ Provided no misrepresentation by seller = no infringement
§ Same applies to reconditioned goods → likely fall w/in
ordinary business practice and reasonable expectation of
purchasers
o Each case determined on own facts
§ But depend on nature, purpose, extent of alteration
o PAG Ltd v Hawk-Woods Ltd
§ The court found that re-celled or re-cased batteries became
eRectively new products.
§ This change meant they were no longer genuine products of
the original manufacturer, leading to a finding of trade mark
infringement.
o Goods that are reconditioned with significant changes, such as
replacement parts, may be considered non-genuine and thus
infringe on the trade mark if they no longer represent the original
manufacturer’s product.
o Berman Bros (Pty) Ltd
§ Sodastream took action against Berman Bros for refilling its
branded cylinders with non-Sodastream gas, claiming the
goods were no longer genuine.
§ The court assessed whether the SODASTREAM trade mark
applied to the container alone (no infringement) or the gas
contents (infringement).
§ Infringement was found where wording on the cylinders
implied that the gas contents were guaranteed by
Sodastream, potentially misleading consumers.
o Unauthorized manufacturing occurs when a trade mark owner’s
licensed manufacturer produces and sells additional goods without
the owner’s consent.
o MCT Labels SA
§ Here, a manufacturer authorized to produce KAPPA goods
made additional, unauthorized products under the same
trade mark.
§ The court ruled these goods non-genuine due to lack of
consent from the trade mark owner, constituting trade mark
infringement.

2) Use in course of trade

o Beecham Group plc → doesn’t mean any trade
= means trade in g/s same or similar to g/s of registration
o Implies allegedly infringing trade mark used in trade in competition
w/ trade of infringed trade mark

o Must be used as a trade mark → as an indicator of orign or to create

impression that there is a material link btwn g/s and proprietor
§ Question of fact determined in light of circumstances of each
case
§ Test: how mark would be perceived by average customer of
type of goods
o Verimark (Pty) Ltd v BMW AG
§ Verimark used BMW’s logo in a TV advertisement and on
packaging for its car polish, which depicted the logo on a
BMW vehicle.
§ The court held that for primary trade mark infringement to
occur, it must be likely that consumers would interpret the
mark, as used by the third party, as indicating the origin of the
third party's goods.
§ Infringement depends on whether the use of the mark gives
consumers the impression of a material link between the
product and the trade mark owner.
§ Purely descriptive use of a mark does not imply such a link,
and the court found that the BMW logo was used solely to
identify the car, not as a designation of origin for Verimark’s
product.
§ The court concluded that consumers would see the BMW
logo as identifying the car itself, rather than indicating any
connection between BMW and Verimark's DIAMOND GUARD
polish.
§ Comparative Advertising:
• The Verimark case altered the approach to trade mark
infringement in comparative advertising.
• Previously, comparative advertising was almost always
considered trade mark infringement, but now it may or
may not be, depending on the context of trade mark
use and consumer interpretation.
• Under section 34(1)(a), infringement occurs only if
consumers would interpret the trade mark as linking
the advertised product to the trade mark owner.
• Comparative advertising could still constitute
infringement under section 34(1)(c), depending on its
nature
o Adidas AG v Pepkor Retail Ltd
§ Adidas claimed that Pepkor infringed on its three-stripe trade
mark by selling trainers and soccer boots with two and four
parallel stripes.
§ The court first needed to determine if Pepkor's use of the
stripes was for trade mark purposes, specifically if they were
used to distinguish Pepkor’s goods from those of other
traders.
§ The court noted that this is a factual question, judged by how
consumers perceive the stripes. Stripes applied for
"embellishment" or "decoration" may still be viewed by
consumers as identifiers of origin, and thus function as trade
marks.
§ The court stated that consumers may interpret stripes similar
to Adidas' registered three-stripe mark as an indicator of
origin, not mere decoration.
§ Pepkor argued that many manufacturers use stripes, but the
court found that this does not negate trade mark use if the
stripes are applied to identify the product.
 § The presence of other trade marks on Pepkor's footwear did
not aRect this perception or the legal interpretation.
§ The court concluded that some of Pepkor's shoes were
infringing, while others were not.
o Societe des Produits Nestle S.A
§ Nestlé owned trade mark registrations for its Finger Wafer
marks and claimed infringement by the Respondents through
the depiction and shape of their chocolate product.
§ The court determined that consumers would not perceive the
pictures of chocolate fingers on the Respondent's packaging
as indicative of a material link to Nestlé.
§ Instead, consumers viewed the images as descriptive of the
contents rather than an indication of origin.
§ The court also found that the shape of the Respondent's
chocolate product would not lead consumers to believe it
originated from Nestlé once the packaging was opened.
§ Consequently, the court ruled there was no use 'as a trade
mark' by the Respondent and no infringement under section
34(1)(a) regarding the Finger Wafer marks.
o Trade Mark Function of Shape and Container:
§ A trade mark can serve an origin function if the owner
eRectively 'socializes' consumers to associate the product
shape with the brand.
§ If Nestlé had extensively promoted the shape of its KITKAT
chocolate without relying on word marks or distinctive
packaging, it could have established that the shape serves as
a trade mark.
§ Die Bergkelder Bpk v. Vredendal Koöp Wynmakery Case:
• The court examined whether a specific container, a
bocksbeutel used in the wine industry, fulfilled a trade
mark function.
• It was held that containers are generally not perceived
as source indicators, so a container must significantly
diRer from industry norms to serve a trade mark
function.
• The court concluded that the bocksbeutel could not
function as a badge of origin because similar
containers were already in the market.
• To establish trade mark status for a container, the
owner must present evidence of industry norms and
demonstrate that the container is perceived by
consumers as serving a trade mark function.
• A narrower market sector enhances the chances for
the trade mark owner, suggesting that the
specification of goods for a container mark should be
as limited as possible.
o Not necessary to show use of infringing mark on product themselves
§ Use on sales documents (invoices and delivery notes) can be
infringement
3) In relation to goods and services in respect of which the trade mark is
registered
o S 34(1)(a) → requires goods in connection with oRending trade mark
is being used are the same as goods of registration
o If registered TM only used irt some goods of registration = can be
subject to counterclaim to cancel goods which have not been used
o Thus prudent to rely on (1)(b) as well
4) Of an identical mark or mark so nearly resembling it as to be likely to
deceive or cause confusion
⇉ PlaintiR must show on BOP that there is a likelihood of deception or
confusion as a result of the infringing mark
o If TMs identical = likelihood follows inevitably
o Not identical → court consider whether similar enough for confusion
of customer to result
o Q whether confusingly similar underpins most 3rd party TM
oppositions, infringement and passing oR claims
o Plasco-Evan Paints Ltd → test for comparison in infringement
§ Onus on Plainti\: In an infringement action, the burden is on
the plaintiR to demonstrate the likelihood of deception or
confusion.
§ No Requirement for Universal Confusion: The plaintiR does
not need to prove that every potential customer will be
deceived; it is suRicient to show that a substantial number
will likely be confused.
§ Broader Concept of Confusion: Deception or confusion
encompasses more than just mistaken belief about the
goods' origin; it includes any substantial confusion regarding
the connection between the defendant's goods and the
plaintiR's registered mark.
§ Focus on Substantial Number: The plaintiR must establish
that a significant number of individuals are likely to be misled
about the goods' origin or the existence of a connection with
the registered trademark.
o Comparison of marks limited to marks alone
§ No extraneous matter taken into account by the court
o Likelihood of deception must be determined irt the respective trade
marks
§ Not irt to the respective labels/ get-up/ other features of
which the trade marks form part
§ DiRerent from test under passing oR
o Adidas AG v Pepkor Retail Ltd
§ Court's Conclusion: The court determined that Pepkor's use
of four stripes on shoes infringed adidas' registered
trademark rights under section 34(1)(a).
§ Non-Infringement for Other Shoes: For other shoes, the
court found that the stripe marks were not similar to adidas'
three-stripe registration, leading to no infringement.
§ Fame of Trademark Argument: Pepkor argued that adidas'
trademarks being famous reduced the likelihood of
confusion, suggesting consumers would recognize the
diRerence.
 § Court's Rejection of Argument: The court countered that the
fame of the trademark actually increased the likelihood of
confusion, as consumers might mistakenly associate similar
marks with adidas due to imperfect perception or memory.
§ Market Separation Argument: Pepkor claimed that the
market for their footwear was entirely diRerent from that of
adidas shoes, aRecting the likelihood of confusion. The court
found insuRicient evidence to support this claim.
§ Su\icient Evidence of Confusion: The court ruled that a
likelihood of at least some deception or confusion had been
demonstrated, which was adequate for the claim.
§ Absence of Evidence: The court stated that the lack of
evidence showing deception or confusion was not significant,
as determining confusion is the court's responsibility and
related evidence can be diRicult to admit and weigh.
o Court will compare the notional use by the plaintiR of its registered
trade mark, within limitations, with the actual use that the defendant
can make of his trade mark when using it in a fair and normal
manner.
o Lever Bros Port Sunlight Ltd v Sunniwite Products Ltd
§ the court clarified that "the use by the defendant for trade
purposes" encompasses not only the specific use made of
the mark but also any fair use of it.
§ Irrelevance of Specifics: The quality, market, or price of the
goods on which the defendant uses the mark is largely
irrelevant to the case.
§ Comparison of Notional Use: The court compares the
normal and fair use of the plaintiR's registered trademark with
the defendant's use of the oRending mark in a fair manner.
§ Scope of Goods: If the defendant does not use the oRending
trademark on goods within the scope of the plaintiR's
registration, the notional use doctrine cannot extend the
infringement to those goods.
§ Condition for Notional Use: The court can only consider
notional use if the defendant has used their mark on goods
that are covered by the plaintiR's trademark registration.
S 34(1)(b) → similar goods or services
rights acquired by registration of a trade mark shall be infringed by: 'the
unauthorised use of a mark which is identical or similar to the trade mark
registered, in the course of trade in relation to goods or services which are so
similar to the goods or services in respect of which the trade mark is registered,
that in such use there exists the likelihood of deception or confusion.
• Only diRerence is it includes similar goods
• (1)(a) covers goods of registration only but (1)(b) covers goods similar to
goods of registration
• All factors above apply equally here
• Additionally → owner must show g/s being used under infringing mark are
similar enough to likely confuse the customer
• Danco Clothing (Pty) Ltd → factors taken into account
o Nature & composition of goods
o Respective use or function
 o Trade channels through which goods notionally retailed (or services
oRered)

• British Sugar plc v Jameson Robertson & Sons Ltd → factors

1. Uses of Goods/Services: The respective uses of the respective
goods or services.
2. Users of Goods/Services: The respective users of the respective
goods or services.
3. Nature of Goods/Services: The physical nature of the goods or acts
of service.
4. Trade Channels: The respective trade channels through which the
goods or services reach the market.
5. Location in Stores: In the case of self-serve consumer items, the
actual or likely locations in supermarkets, including whether they are
found on the same or diRerent shelves.
6. Competitiveness: The extent to which the respective goods or
services are competitive, including how trade classifications
categorize them.
o Independence of Similarity: The court emphasized that the
question of the similarity of goods should be considered
independently of the similarity of trademarks.
o Significance of Distinction: The court stated that conflating the two
questions could allow a "strong" mark to receive broader protection
than a "weak" mark, using the example of "Kodak" applied to
unrelated products like socks or bicycles.
o Case Finding: In this case, the court found that the defendant's
sweet spread was not similar to the dessert sauces and syrups
covered by the trademark owner's registration.
o Critique of British Sugar Case: Webster and Pagel argue that
determining similarity of goods should not be entirely independent
of other factors, citing Section 10(2) of the British Act, which
considers the likelihood of confusion arising from the combined
eRect of similarity between marks and goods.
• South African Trade Marks Act: The relevant section indicates that the use
of a mark in relation to similar goods or services should lead to confusion,
suggesting that the courts should assess the combined eRect of both the
relevant goods and marks.

• New Media Publishing (Pty) Ltd v Eating Out Web Services CC

o the court noted that the similarity between goods or services and the
resemblance between marks are interdependent:
§ The less similar the goods or services, the greater the
resemblance required between marks to establish a
likelihood of deception or confusion.
§ If the goods or services are so dissimilar that there’s no
likelihood of confusion, even an identical mark will not
constitute infringement.
§ Conversely, if the marks are suRiciently dissimilar, no
similarity between goods or services will lead to infringement
• Mettenheimer v Zonquasdrif Vineyards CC
o the SCA aRirmed the interdependence between trademark similarity
and goods similarity:
§ The court found that the target customers for wine grapes
(which are sold to winemakers) are distinct from those for
wines (sold to the general public).
§ As a result, there was no likelihood of confusion even with
nearly identical trademarks.
o Case Details: The appellant owned the trademark
"ZONQUASDRIFT" for wine, while the respondent used
"ZONQUASDRIFT VINEYARD" for wine grapes.
o Finding on Confusion: The court determined that wine grapes are
only sold to winemakers and cooperatives, meaning these buyers
would not confuse the origin of the respondent's grapes with the
appellant's wines.
o Observation on Table Grapes: The reasoning suggests that while
wine grapes are not similar to wine, table grapes could be
considered similar since they are sold in the same stores to the
same customers as wines.

• Argument for Similarity: It can be argued that when one type of goods
(e.g., wine grapes) is a significant component of another type (e.g., wine),
contributing to the latter's distinct character, the goods should be
considered similar.
o Potential for Override: This perspective might, in certain cases, take
precedence over the criteria established in the British Sugar case,
which serves as guidelines for comparing consumer goods but may
not apply universally across all types of goods
o Example of Similarity: The example of CHRISTIAN DIOR illustrates
this point:
§ Unprocessed leather used to manufacture leather garments
and CHRISTIAN DIOR leather coats, although sold to diRerent
customers, through diRerent channels, and diRering in
character, could still be regarded as similar goods.

• Foschini Retail Group (Pty) Ltd v Coetzee

o court addressed the issue of similarity of goods or services in an
opposition under section 10(14).
o Importance of Classification: The court emphasized the
significance of the classification system, noting that trademark
applicants should only seek protection in classes where they
genuinely intend to operate. This serves as a necessary limitation on
anti-competitive practices associated with trademark registration.
o Caution Against Easy Similarity Findings: The court asserted that
similarity of goods should not be too readily determined.
§ Example: The court questioned how items such as cooking
tools, kitchen utensils, containers, glassware, porcelain, and
earthenware could be considered similar to food, highlighting
a distinction between goods in classes 29 and 30 (food)
versus classes 8, 11, and 21.
o Further Comparison: When comparing goods in class 9 (teaching
apparatus and instruments) with services in class 41 (education and
 training), the court concluded that one cannot equate the
production and sale of articles used in an activity with the service
provided by using those goods.
o High Bar for Similarity: Overall, the courts have established a
stringent threshold for determining similarity between
goods/services across diRerent classes.

S 34(1)(c) → dilution
the unauthorised use in the course of trade in relation to any goods or
services of a mark which is identical or similar to a trade mark registered, if
such trade mark is well known in the Republic and the use of the said mark
would be likely to take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the registered trade mark,
notwithstanding the absence of confusion or deception: Provided that the
provisions of this paragraph shall not apply to a trade mark referred to in
section 70(2).

To be successful, the plaintiR needs to show the following:

1) unauthorised use of a trade mark
2) in the course of trade
3) in relation to any goods/services
4) of a mark which is identical or similar to a registered trade mark which is
well known in South Africa
5) in such a way that it is likely to take unfair advantage of, or be detrimental
to, the distinctive character or the repute of the registered trade

• TM can develop significant advertising value and selling power due to

extensive promotion and use
o Can erode or devalue if mark used by 3rd parties in connection w/
other products
• Prevents third parties from trading oR the goodwill attached to a well-known
brand to promote their own products
• (1)(c) protects the advertising value or selling power = not the TM itself
• TM dilution recognises an additional function of TMs = advertising

Forms of dilution
1) Dilution by erosion → reduces selling power by eroding its unique
identity
• Typically when same TM used for non-competing goods
• A famous brand like Coca-Cola is known for its soft drinks. If a
company starts selling Coca-Cola flavored ice cream, even
though the goods are not in direct competition, the association
may dilute the unique identity of the Coca-Cola trademark,
eroding its distinctiveness and selling power. Over time,
consumers may start to think of Coca-Cola as a flavor rather
than a beverage brand.
2) Dilution by blurring → generic use of TM where TM loses value
altogether as becoming known as the descriptive name of the product
• The trademark Kleenex is widely recognized for facial tissues. If
various companies begin to use the term "kleenex" generically to
refer to any facial tissue, regardless of the brand, the unique
 identity of the Kleenex trademark is blurred. This can lead to the
term becoming synonymous with facial tissues in general,
diminishing its value and trademark protection.
3) Dilution by tarnishment → registered TM tarnished by unfavourable
associations created btwn well-known TM and oRending mark
• Impairment of the well-known marks capacity to stimulate the
desire to buy
• If a well-known luxury brand like Gucci is associated with an
oRensive or degrading product (e.g., a low-quality or oRensive
parody product using the Gucci name), it can tarnish the brand's
reputation. This negative association impairs Gucci's trademark
by creating unfavorable perceptions, potentially reducing
consumer desire to purchase Gucci products in the future due to
the tarnished image.

Use of the registered mark or a mark similar thereto

• No confusion or deception needs to be shown
• TMs must be identical or similar
• Bata Ltd v Face Fashions CC
o addressed the interpretation of the term "similar" in the context of
trademark law.
o Limiting Interpretation of "Similar": The court ruled that the word
"similar" should not be interpreted too broadly. An extensive
interpretation could lead to:
§ The creation of an unacceptable monopoly for trademark
holders.
§ An undue restriction on freedom of trade for other
businesses.
o Market Behavior Insight: The court noted that it is unlikely that
parties intending to trade on the reputation of a well-known mark
would choose a mark that is less distinctive than a strong trademark.
• Definition of "Similar":
o Webster and Page suggest that "similar" should be understood in its
ordinary dictionary sense, meaning to "have a marked resemblance
or likeness."
o The oRending mark should evoke an immediate association with the
well-known trademark, emphasizing the importance of recognizable
resemblance in determining trademark similarity.

Well-known in the republic

• For a trademark to be protected under specific provisions, it must be well-
known within the Republic.
• McDonald's Case
o clarified that "well-known" is akin to the concept of reputation used
in passing oR cases.
o Reputation must extend to a substantial number of the public or
relevant trade members to qualify.
• Triomed (Pty) Ltd v Beecham Group plc
o aRirmed that the interpretation of "well-known" from
the McDonald's case is applicable for dilution claims under section
34(1)(c).
• Distinction Between Passing O\ and Dilution:
o Passing O\: Protects trademarks in competitive scenarios and does
not necessitate that a trademark be deemed "famous." It focuses on
the likelihood of confusion or deception among consumers.
o Dilution: Applies in non-competitive contexts, where confusion or
deception is not required, but the mark's reputation is at risk of being
diminished.
• Proposed Additional Factors for Dilution Reputation:
o Webster and Page suggest adopting factors used in the U.S. and U.K.
to assess a trademark's reputation for dilution cases:
1. The degree of inherent or acquired distinctiveness of the
mark.
2. The duration and extent of use of the mark in connection with
goods or services.
3. The duration and extent of advertising and publicity
associated with the mark.
4. The geographical extent of the trading area where the mark is
utilized.
5. The channels of trade for the goods or services linked to the
proprietor's mark.
6. The degree of recognition of the proprietor's mark in both its
and the defendant's trading areas and channels.
7. The nature and extent of similar signs used by third parties.

• Safari Surf Shop CC v Heavywater

o trademark SPIDER was deemed well-known despite its limited
geographical use along the coast.
o The court concluded that:
§ It is reasonable to recognize a trademark as well-known
within its specific area of operation.
§ The court stated, “It would be absurd to suggest that... it
cannot be said that the trade mark is well-known ‘in the
Republic’... if the trade mark is well-known in that part of the
Republic... then that... is suRicient.”
• Verimark (Pty) Ltd v BMW AG
o the court addressed whether Verimark took unfair advantage of the
BMW logo.
o The findings included:
§ The consumer's perception is critical; if the logo is viewed as
incidental, there may not be any detrimental eRect on the
trademark's advertising value.
§ The court stated, "A mental association does not necessarily
lead either to blurring or tarnishing."
• Laugh It Od Promotions CC v South African Breweries International
(Finance) BV
o the court examined the use of the slogan "BLACK LABOUR WHITE
GUILT" on T-shirts in relation to the trademark BLACK LABEL.
o The key points were:
§ The Constitutional Court held that section 34(1)(c) does not
restrict use that fairly takes advantage of the mark or does not
substantially harm the trademark's reputation.
 § The use of a trademark in a manner qualifying as free
expression is protected as fair use and does not constitute
tarnishment.
§ The court emphasized that the owner of the mark must
demonstrate a likelihood of substantial harm or detriment,
which must be proven within the case's context
• Evaluation of Detriment:
Webster and Page propose factors for assessing whether a defendant’s use
detrimentally aRects a registered trademark's distinctive character or
reputation:
o The inherent distinctiveness of the mark (e.g., an invented mark)
versus acquired distinctiveness through use.
o The extent and nature of similar mark usage by third parties.
o The degree of recognition of the proprietor's mark.
o The channels of trade for both parties involved

Use in the course of trade in relation to any goods or services

• Unlike sections 34(1)(a) and (b), which require the oRending trade mark to
relate to goods or services similar to the registered trade mark, section
34(1)(e) only requires use of the oRending mark in the course of any trade
• Non-trade mark use can be relevant for determining infringement under
section 34(1)(c).
• Nestlé case
o the court noted that section 34(1)(c) aims to protect not just the
source-denoting function of a mark, but also its reputation,
advertising value, and selling power.
o Non-trade mark use may still indicate whether unfair advantage has
been taken or if there is detriment to the mark.
o The court emphasized that for there to be infringement, unfair
advantage or detriment must be substantiated by evidence.
o the court found no infringement, as Nestlé failed to prove that the
Respondents' use would take unfair advantage of the Finger Wafer
trade marks despite years of side-by-side sales.
• Comparative advertising could violate section 34(1)(c) even if not infringing
under section 34(1)(a), as section 34(1)(c) does not require trade mark use.
• A trade mark owner should consider the ASA Code of Advertising Practice
when evaluating whether comparative advertising constitutes trade mark
dilution under section 34(1)(c).
S 35 → famous marks
(1) References in this Act to a trade mark entitled to protection under the Paris Convention
as a well-known trade mark refer to a mark that is well known in the Republic as being the
mark of—
(a) a person who is a national of a convention country; or
(b) a person who is domiciled in or has a real and eWective industrial or
commercial establishment in a convention country,
regardless of whether such person conducts business or has goodwill in the Republic.

(1A) In determining whether a trade mark is well-known in the Republic, due regard shall be
given to the trade mark's recognition in the relevant public sector, including recognition
gained from its promotion.

(2) A reference in this Act to the proprietor of such a mark shall be construed accordingly.
 (3) The proprietor of a trade mark entitled to protection under the Paris Convention as a
well-known trade mark may restrain the use in the Republic of a trade mark that
constitutes, or whose essential part constitutes, a reproduction, imitation, or translation of
the well-known trade mark concerning identical or similar goods or services, where the
use is likely to cause deception or confusion.

(4) Where, under section 10(8), the authorization of the competent authority of a
convention country or an international organization is required for registering a mark as a
trade mark, such authority or organization may restrain the use of that mark in the
Republic without authorization.

• S 35 provides protection to famous foreign TMs

o Despite not being registered or even used in SA

To be successful on this ground, the applicant must show

1. that his mark is well known in South Africa
2. that he is a national of or domiciled or established in a convention
country
3. that the o\ending mark is a reproduction, imitation or translation of his
well-known mark
4. that it is being used in relation to goods or services which are identical or
similar to his goods or services
5. that such use is likely to cause deception or confusion

• Although this section does not specifically provide that the use must be
unauthorised in the course of trade, will need to be proved for infringement
action to be sustained
Well-known in the republic
• McDonald's Case
o The court determined the meaning of "well-known in the Republic"
and the required level of public awareness.
o Protection granted is akin to common law passing-oR, prohibiting
mark use that could cause deception or confusion.
o A mark is "well-known" if recognized by the target market, not
necessarily the entire population.
• Section 35(1)(A) (Intellectual Property Laws Amendment Act)
o Emphasizes considering knowledge of the trademark in the relevant
public sector, including promotion eRects.
o Reinforced principles established in the McDonald's case.
• Level of Awareness Required
o Awareness is measured not by a few individuals but by a substantial
number within the target market.
o A "substantial number" varies by case; in specialized markets, a
small reputation may suRice.
• Target Market Division
o Potential Customers:
§ Includes anyone interested in fast food who can aRord it,
implying a broad group.
o Potential Franchisees:
§ Smaller group capable of financing and running a franchise;
nearly all should be aware of the MCDONALD'S mark.
o Awareness among potential customers expected to be lower than
among franchisees.
• Use of Market Survey Evidence
o Admissibility of market survey evidence discussed; it can establish
reputation.
o Caution required in marketing survey evidence application
• Foreign Trademark Owners
o If a foreign trademark has never been used in South Africa, owners
must provide worldwide sales and advertising evidence.
o For very famous trademarks (e.g., NUKE, MICROSOFT, APPLE),
courts may infer reputation based on international sales.
o In other cases, evidence of actual brand exposure in South Africa is
needed, including:
§ Internet exposure
§ Sales of international magazines
§ Sponsorship of events
§ Television advertisements
§ Exposure to South African tourists abroad

A national, domiciled in or established in a convention country

• Purpose of Section 35
o Protects foreign proprietors with well-known trademarks not
registered or used in South Africa.
o Aims to fulfill South Africa's obligations under the Paris Convention.
o Ensures protection is limited to nationals of convention countries,
excluding those from non-convention countries without similar
protections for South African nationals.
• Blue Lion Manufacturing (Pty) Ltd v National Brands Ltd
o Court confirmed that section 35 protection is exclusive to owners of
well-known foreign trademarks.
o Owners of well-known South African trademarks cannot rely on
section 35; they should use common law or relevant statutory
protections (e.g., section 10(12)).

Reproduction, Imitation, or Translation of the Well-Known Trademark

• The oRending trademark must be a "reproduction, imitation, or translation,"
requiring a higher similarity standard than sections 34(1)(a) and (b).
• Implies deliberate misappropriation and copying of the well-known
trademark.
• Saving of Vested Rights Provision (Section 36(2))
o Section 36(2) states that continuous and good faith use of a
trademark since before August 31, 1991, or before the well-known
mark gained recognition in South Africa, prevents infringement
claims under section 35.
• AM Moola Group (Pty) Ltd v The Gap Inc
o Background
§ The court had to determine whether a S 36(2) could be
defense raised by AM Moola to S 35 infringement claim by
Gap
o Court Findings
§ The court evaluated the defense against the relevant trade
mark laws.
§ Found that:
 § Continuous use of the trademark by AM Moola did not
meet the criteria as recorded users.
§ The defense was not substantiated by evidence; the
parties' claims were not on record as registered users.
§ There was no bona fide and continuous use that
could support a claim under Section 36(2).
o Infringement Decision
§ The court ultimately concluded there was no infringement
under Section 35.
§ Clarified that Section 35 protection could only be applied if
the foreign mark was well known at the time of imitation or
translation by the local enterprise.
§ Stated that local marks, once established, cannot lose value
or protection simply because another party's reputation
overtakes its business.
§ In this case, the GAP mark had been adopted locally as early
as 1973, but it was not well-known at that stage, meaning
Section 35 could not be applied.
REMEDIES Section 34(3) of the Act outlines the remedies available to the proprietor of a
registered trademark in infringement cases:
• Available Relief:
o Interdict: A court order to prevent further infringement.
o Removal or Delivery Up:
§ An order to remove the infringing mark from materials.
§ If removal is impractical, the court can order that all such
materials be delivered to the trademark proprietor.
o Damages:
§ Compensation for financial losses due to infringement,
including losses incurred after the trademark application
acceptance advertisement.
o Reasonable Royalty:
§ In lieu of damages, the trademark owner may opt for a
reasonable royalty that a licensee would pay for the use of
the trademark after the advertisement of the acceptance
of the application for registration.
• Damages Assessment:
o Courts may conduct an enquiry to determine the damages owed.
o Damages must reflect actual financial losses, including lost
profits due to the infringement.
o Claimants often prefer claiming a reasonable royalty over proving
actual damages due to the diRiculties in demonstrating precise
financial loss.
Interdict Principles
• General Principles:
o The principles applicable to interdicts for delict apply similarly to
trademark infringement cases.
o An interdict can be sought even if infringement has not occurred
yet, provided there is a reasonable fear of infringement.
• Delay in Action:
o An unreasonable delay in seeking an interdict may lead to denial
of the request.
• Stopping Conduct:
 o If the infringer ceases the oRending conduct or provides a
guarantee of cessation, the court will likely not grant an interdict.
Delivery Up of Infringing Materials
• Courts can order the removal of infringing marks from materials or the
delivery of those materials to the trademark owner, especially when
removal is not feasible.
Reasonable Royalty
• The reasonable royalty is based on the number of infringing articles and
the applicable royalty rate, as established in the case of Puma AG
Rudolf Dassler Sport v Global Warming (Pty) Ltd.
Anton Piller Orders
• Purpose:
o Anton Piller orders are designed to preserve evidence of
infringement when there is a risk that the infringer may destroy or
hide evidence if informed about the proceedings.
• Process:
o An Anton Piller order does not serve as a substantive claim; it is a
preliminary step to preserve evidence before a formal trademark
infringement action is initiated.
• Requirements:
o The applicant must establish the following prima facie:
1. A valid cause of action against the respondent.
2. The respondent possesses specific documents or items
crucial for supporting the applicant's claim but not
subject to personal or real right claims.
3. A real and well-founded fear that the respondent will
destroy or hide evidence once aware of the impending
claim.
Interested • Sections 24, 26 and 27 provide that any interested person can apply for
Party rectification of the register.
• The evidence must show that the applicant for rectification is an interested
person.
• An Interested Person → South Africa Football Association v Stanton
Woodrush (Pty) Ltd
o A person:
§ Who has a genuine intention to trade even if he has no actual
trade.
§ Who has applied for a trade mark and its registration is being
blocked by a registered trade mark.
§ A competitor whose potential field of business is narrowed as
a result of the registered trade mark.
§ A trader who is hampered in the legitimate exercise of his
aRairs as a result of the registration.
§ Where a trader uses the fact of his registration as a part of his
case against another trader in any legal proceedings, the
second trader is the interested person.
4.5 → DEFENCES TO TRADE MARK INFRINGEMENT
S 34 & S 36 TMA → provide defenses to infringement claims
• S 36 = saving vested rights provision
o Provides protection to parties who have rights in particular TM as a result of their use of that
mark
• S 34(2) = specific circumstances which qualify as a defence
o Cannot be applied to a S 35 claim bc specifically refers to registered trade marks
o Specific statutory defences = cannot be used in addition to general defences against
infringement
S 34(2) (a) Bona fide use of own name.
(b) Bona fide descriptive use.
(c) Bona fide use to indicate intended purpose.
(d) Use on genuine goods.
(e) Bona fide use of utilitarian features.
(f) Use to which the registration does not extend.
(g) Concurrent registration
S 34(2)(a) → bona • Provides that a registered trade mark will not be infringed by any bona fide
fide use of own name use by a person of his own name, the name of his place of business, the
name of any of his predecessors in business; or the name of any such
predecessor’s place of business.
• This sub-section will not apply to the name of any juristic person whose
name is registered after the date of registrate of the trade mark.
• In addition, the use must be consistent with fair practice for a valid defence
to be raised.
• Jenni Button
o The court held that the term ‘bona fide’ had been interpreted to
mean that honest use by a person of his or her own name within the
intention to deceive anybody and without the intention to make use
of the goodwill of another person could be excused under this
provision.
S 34(2)(b) → bona • A registered trade mark is not infringed by the use by any person of any bona
fide descriptive use fide description or indication of the kind, quality, quantity, intended
purpose, value, geographical origin or other characteristics of his goods or
services, or the mode or time of production of the goods or the rendering of
the services.
• Century City Apartments Property Services
o The Appellate Division found that section 34(2)(b) represents the
other side of the coin of the requirement that the infringing use has
to be trade mark use.
o If the use amounts to nothing more than bona fide descriptive use
then it cannot be trade mark use and further cannot be infringement.
Groupe LFE (SA) (Pty) Ltd v Swartland Winery Ltd
• Background
o Groupe LFE used the word "Swartland" on its wine labels.
o Swartland Winery objected, claiming the use was not bona fide.
• Court Findings
o The court ruled that Groupe LFE's use was not bona fide
descriptive use.
o Noted specifics about the labeling:
 § Black label with "Swartland" in prominent white capital
letters.
§ Indistinct gold medallion stating "Wine of Origin
Swartland."
o Concluded that the labels conveyed two key points to
purchasers:
§ The trademark is "SWARTLAND."
§ It is a wine of origin from Swartland.
• Implication
o The case highlights that the manner in which a word is presented
can elevate it from descriptive use to trademark use.
Abdulhay (M) Mayet GAR Ltd v Renasa Insurance Company Limited
• Background
o Respondent claimed a word constituted a bona fide description
due to association with Reliance Group Holdings.
• Court Findings
o The court determined that being part of a group was not
characteristic of the insurance services provided.
o Clarified that an entity's association with another does not
describe the characteristics of its services.
Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd
• Court Comment
o The legislature intended to protect the use of descriptive words
genuinely related to goods.
o Emphasized that such use should not be a mere device to exploit
another’s trademark goodwill.
Tri-ang Pedigree (SA) (Pty) Ltd v Prima Toys (Pty) Ltd
• Background
o Prima Toys owned the registered trademark "BABY LOVE."
o Tri-Ang used "BABY FIRST LOVE" and claimed "baby" was
descriptive.
• Court Findings
o Court accepted that "baby" is descriptive of dolls but concluded
it was part of the trademark.
o Questioned Tri-Ang's bona fides; rejected the defense of
descriptive use.
Standard Bank of SA Ltd v United Bank Ltd
• Court Statement
o Ordinary English words can be used to describe goods/services.
o However, if such words are used as a trademark, the defense of
bona fide descriptive use cannot be raised.
adidas AG v Marca Mode CV
• Background
o Marca Mode defended its use of a two-stripe design on shoes,
claiming it was decorative.
• Court Findings
o The court stated that descriptiveness applies only when words or
marks describe the goods' quality.
o Since Marca Mode argued the stripes were decorative, they could
not be considered descriptive.
o Therefore, the defense could not be upheld.
S 34(2)(c) → bona • General Provision
fide use to indicate o A registered trademark is not infringed by the bona fide use of the
intended purpose trademark concerning goods or services that reasonably indicate
the intended purpose of those goods (including spare parts and
accessories).
• Fair Practice Requirement
o The use must align with fair practice to constitute a valid defense
under this provision.
• Descriptive Use
o This provision clarifies that a registered trademark can be used
descriptively to indicate the intended purpose of goods or
services, especially for car repair services or spare parts.
o Example: A manufacturer can specify that its spare parts are
compatible with specific vehicle brands (e.g., BMW, Mercedes,
Toyota) without infringing trademark rights.
• Significance of Usage
o The manner in which the trademark is used is crucial; non-
descriptive use may negate this defense.
• Commercial Auto Glass (Pty) Ltd v BMW AG
• Facts
o Commercial Auto Glass fitted unauthorized windscreens for
BMW vehicles, advertising using phrases like "BMW E30 3
Series, 83-92."
o BMW claimed infringement of its trademark.
• Court Findings
o The use constituted trademark use and was not bona fide or
fair.
o The court emphasized that use is not bona fide if it fails to
clarify that the goods are not connected with the trademark
owner.
• Honest Use Defined
o Bona fide use means honest use without intent to deceive
while clearly indicating that the goods are not connected to
the trademark owner.
• Implications of Use
o Phrasing such as "XYZ spare parts" (where XYZ is the
registered trademark) is not protected under this section.
o Phrasing like "spare parts for XYZ goods" aligns with Section
34(2)(c).
European Court of Justice Considerations
• Criteria for Use
o Third-party use of a trademark is necessary to indicate a
product's intended purpose.
o Such use is permissible when it provides the public with clear
information about the product's intended purpose, supporting
fair competition.
• Criteria for Honest Use
o Use is not in line with honest practices if it:
§ Gives the impression of a commercial connection
between the third party and the trademark owner.
§ Unfairly advantages the trademark's distinctive character
or reputation.
 § Discredits or denigrates the trademark.
§ Presents the third party's product as an imitation or
replica of the trademarked product without ownership
S 34(2)(d) → use on • A registered trade mark shall not be infringed by the importation into or the
genuine goods distribution, sale or oRering for same in the Republic of goods to which the
trade mark has been applied by or with the consent of the proprietor
thereof.
S 34(2)(e) → bona • A registered trade mark shall not be infringed by the use of a trade mark in
fide use of utilitarian any manner in respect of or in relation to goods to be sold or otherwise
features traded in, or services to be performed, in any place, or in relation to goods
to be exported to any market, or in any other manner in relation to which,
having regard to any conditions or limitations entered in the register, the
registration does not extend.
S 34(2)(f) → use to • A registered trade mark shall not be infringed by the use of a trade mark in
which the any manner in respect of or in relation to goods to be sold or otherwise
registration does not traded in, or services to be performed, in any place, or in relation to goods
extend to be exported to any market, or in any other manner in relation to which,
having regard to any conditions or limitations entered in the register, the
registration does not extend.
S 34(2)(g) → • Provides that a registered trade mark shall not be infringed by the use of any
concurrent identical or confusingly or deceptively similar trade mark which is
registration registered.
• In simple terms, the use of a concurrent registered trade mark is an
absolute defence to an infringement claim.
SECTION 36 – • General Provision
SAVING OF VESTED o A trademark cannot be infringed by another party using an identical or
RIGHTS confusingly similar mark if that party proves continuous and bona fide
use prior to:
§ The registered proprietor's use of the trademark.
§ The date of registration of the mark (whichever is earlier).
• Purpose
o To protect common-law rights created through the use of a trademark,
regardless of registration status.
o Ensures ongoing use of the trademark is allowed despite lack of
registration.
• Important Clarification
o The "date of registration" refers to when the application was lodged, not
when the certificate was issued.
• Conditions for Use
o Use must be bona fide, substantial, and over a considerable period.
Etraction (Pty) Ltd v Tyrecor (Pty) Ltd
• Court Consideration
o Examined whether the party relying on section 36(1) must prove
use to the extent required for a passing-oR action.
o Suggested that it should be suRicient to show lawful,
continuous, and bona fide use without needing to establish a
significant reputation among potential customers.
Section 36(2) Overview
• Protection Provision
o Provides protection to parties using a well-known trademark in South
Africa if:
 § Use commenced before 31 August 1991 (the date of the first draft
of the Trade Marks Bill).
§ Use began before the trademark became well-known in South
Africa.
§ This provision ensures continued protection for those with
established usage prior to these dates
•
•
•
•
4.6 → TRADE MARKS IN THE DIGITAL ENVIRONMENT
PASSING OFF
• Passing oR is part of the delict of unlawful competition
• It predates the formal recognition of unlawful competition as a delict.
• Treated as a separate delict with specific essential elements.
Legal Foundations
• Derived from English law but recognized in South African law as a form of Aquilian liability.
Protection O\ered
• Protects a trader's business reputation, a component of business goodwill.
• Goodwill consists of intangible elements, with reputation being significant.
• Protection extends to reputation and associated symbols.
Misrepresentation Criteria
• Occurs when a trader misrepresents goods/services as being associated with another trader.
• The misrepresentation must likely confuse consumers, damaging the other trader's goodwill.
Challenges in Establishing a Claim
• Passing oR is not an easy cause of action to establish.
• Typically relied upon when a trademark owner lacks a registered trademark.
• Traders with registered trademarks use infringement proceedings, which are easier to establish.
Comparison with Trademark Infringement
• Trademark infringement requires no proof of reputation; registration is suRicient.
• Passing oR and trademark infringement claims are often used together.

ELEMENTS OF Capital Estate & General Agencies (Pty) Ltd

PASSING OFF • The wrong known as passing oR consists in a representation by one person
that his business (or merchandise, as the case may be) is that of another, or
that it is associated with that of another, and, in order to determine whether
a representation amounts to a passing-oR, one enquires whether there is a
reasonable likelihood that members of the public may be confused into
believing that the business of the one is, or is connected with, that of
another.

Elements must be proved for a successful passing oR action:

1) reputation in a particular mark or symbol
2) a misrepresentation of the trade that his goods or services are in some way
associated with those of the trader who holds the reputation
3) a likelihood that the misrepresentation will lead to consumers being
confused into believing that the business of the one is connected with that
of the other
4) resultant damage to the trader's goodwill.
Reputation • Premier Trading Company (Pty) Ltd and Another v Sportopia (Pty) Ltd
o Reputation is defined as the opinion held by the relevant community
about the PlaintiR or their product.
o The PlaintiR's reputation may be linked to a symbol under which the
product is marketed.
o The symbol distinguishes the product as associated with the PlaintiR.
o A false representation by the Defendant regarding the PlaintiR's symbol
can mislead potential customers, causing them to patronize the
Defendant instead.
o Key Element: Existence of a reputation associated with a symbol (e.g.,
trademark, get-up, trade dress) that is distinctive of the trader's
business, goods, or services.
 o Passing oR protects the reputation tied to a symbol, not the symbol
itself.
• Adcock Ingram Products Ltd v Beecham SA (Pty) Ltd
o The PlaintiR must demonstrate that the Defendant has used a name,
mark, sign, or get-up connected to their goods that has become
distinctive.
o The PlaintiR's name or mark must lead a substantial number of the
public or trade to perceive the goods as originating from a specific
source.
o The PlaintiR must establish that the relied-upon feature of their product
has acquired significance, indicating a single source for the goods
associated with that feature.
Extent of reputation required
• The extent or degree of reputation is essential; it depends on the number of
persons aware of the PlaintiR's reputation.
• The required reputation can be minimal in niche markets but must be
significant for mass-market products.
• The more distinctive the product, the greater the likelihood of public
confusion or deception.
• Evidence of Distinctiveness
o An aggrieved trader can establish distinctiveness through evidence of
how and on what scale the name, mark, or get-up has been used.
o This evidence should support the inference that the name, mark, or get-
up is recognized by a substantial section of the relevant public as
distinctive of the trader’s goods.
• Public Awareness
o It is not necessary for the public to know the identity of the trader
owning the reputation; awareness that the goods come from a single
source is suRicient.
o A symbol may be associated with multiple unrelated traders, allowing
each to maintain a reputation in that symbol.
• Use by Licensees
o If an unregistered symbol is used by a licensee under a licensor's
control, both parties should be involved in passing oR proceedings.
o The goodwill related to the use by the licensee may belong to either or
both the licensee and the licensor.

Reputation must exist at time when infringing conduct takes place

• Reputation must exist at the time of the infringing conduct.
• Long-term use is not necessary; a reputation established over a short
period can suRice for a passing oR action.
• A business can retain residual repute even after ceasing operations, but this
must be proven.
• My Kinda Bones Ltd v Dr Peppers' Stove Co Ltd: Pre-launch publicity
created enough reputation for passing oR, even without actual trading.
• Kellogg Co v Bokomo Co-operative Ltd: Introduction of a new product
through presentations and packaging mock-ups established reputation
despite no public sales.
• Alternative Actions
o If a reputation cannot be proven at the time of the infringing conduct,
the broader delict of unlawful competition may be a more appropriate
cause of action.
 o Example: In Tellenbosch Wine Trust Ltd v Oude Moteshow, the court
granted an interdict for copying a label before launch, recognizing
both competition and passing oR.
Commercial activity
• A reputation must be part of the goodwill in a business, which requires
some form of commercial activity.
• Courts interpret "commercial activity" broadly.
• Old Apostolic Church of Africa v Non-White Old Apostolic Church of
Africa: Goodwill could subsist in church activities.
• Kean v McGivan: The injured property is the goodwill from commercial
activity, and courts typically do not protect non-traders.
• Operating a political party is not considered commercial activity and cannot
support a passing oR action.
Proving a reputation
• Evidence for Proving Reputation
o Claimants typically provide evidence of extensive sales and
promotional eRorts.
o Market surveys may support reputation claims but must be well-
structured to demonstrate the existence of a reputation for a specific
symbol.
• Criteria for Market Surveys (Imperial Group plc v Philip Morris Ltd)
o Interviewees should represent a relevant cross-section of the public.
o Sample size must be statistically significant.
o The survey must be conducted fairly.
o All surveys conducted should be disclosed, including methodology and
participant totals.
o Complete answers must be disclosed to the defendant.
o Questions should not be leading or speculative.
o Exact responses must be recorded, not just summaries.
o Instructions given to interviewers must be disclosed.
o Coding instructions for computer input should be made available.
• Approval of Market Survey Evidence
o In McDonald's Corporation v Loburgers Drive-In Restaurant, the
court approved market survey evidence for infringement cases.
• Geographical Limitations of Reputation
o A reputation is limited to the geographical area where it is known, not
necessarily where business was conducted or goods sold.
o The Caterham Car Sales & Coach Works Ltd v Birkin Cars (P)
Ltd case established that a plaintiR can pursue a passing oR action
based on the area of proven reputation, even if they haven't conducted
business there.
• Legal Protection for Unregistered Foreign Trademarks
o Section 35 protects owners of unregistered foreign trademarks
recognized as well-known in South Africa, irrespective of business
operations in the country.
o Success in Section 35 proceedings does not depend on the plaintiR's
business presence or goodwill in South Africa.
Misrepresentation 1. Claimant's Burden of Proof
• The claimant must establish that the conduct of the defendant amounts
to misrepresentation.
• This misrepresentation must indicate a connection between the
defendant's goods or services and those of the claimant.
2. Definition of Misrepresentation
• Misrepresentation does not necessitate the claimant to demonstrate
fraudulent intent on the part of the defendant.
• However, if fraud is established, it is likely that the element of
misrepresentation will also be present.
3. Forms of Misrepresentation
• Use of Symbols:
o Well-known symbols resulting from character merchandising can
lead to passing oR claims.
o Federation Internationale de Football and Others v Bartlett
§ The court acknowledged character merchandising as a
well-known phenomenon in South Africa.
§ Traders using symbols associated with a particular source
may mislead consumers.
• Use of One’s Own Name:
o A person's name can become a valuable trade name through
advertisements and product quality, acquiring a secondary
meaning.
o Policansky Bros Ltd v L&H Policansky
§ The court stated that if a name has become distinctive of
the goods and the manufacturer, it cannot be used by
others in a similar class without clear distinction.
o Limitations:
§ A person has a prima facie right to use their own name,
but this right may be limited by prior agreements not to
use the name.
o Case Reference: Jenni Button Case
§ The appellant had sold her name and goodwill, thus her
continued use of the name infringed on the respondent’s
rights to the associated trademark.
• Use of Code Numbers and Catalog Descriptions:
o A code that has gained a reputation linked to specific products
can indicate trade origin, potentially leading to passing oR
claims.
o The code must be established as distinctive in relation to the
claimant's products.
• Use of a Trademark in a Domain Name:
o Utilizing a trademark in a domain name that has a reputation can
mislead consumers, constituting misrepresentation.
• Orally or Through Conduct:
o Misrepresentation can occur through verbal claims or conduct
(e.g., falsely asserting goods are those of the claimant).
o Example: A defendant telling a customer that their goods are
made by the plaintiR, or handing over their own goods when
asked for the plaintiR's products.
• Use of Descriptive Words or Devices:
o Courts are reluctant to grant monopolies on descriptive terms
unless they have acquired distinctiveness.
o Case Reference: On-Line Lottery Services v National Lotteries
Board
§ Many unsuccessful claims have been made regarding
passing oR based on descriptive names.
 § Courts will not grant monopolies in descriptive words at
the expense of other traders.
o If a term is purely descriptive, it cannot simultaneously denote a
specific trade source unless it has lost its descriptive meaning.
o Even if a prima facie descriptive term has acquired some degree
of secondary meaning, the protection scope is narrower than for
arbitrary terms.
• Imitation of Get-up/Trade Dress:
o The use of a similar appearance to another trader's goods can
amount to misrepresentation.
o Get-up includes ornamental aspects such as color, shape, or
packaging.
o Traders do not automatically obtain monopoly rights over a get-
up; they must clearly distinguish their products to avoid
misleading the public.
o Case Reference: Adidas AG v Pepkor Retail Ltd
§ Adidas claimed Pepkor was passing oR products as theirs
through imitation of their three-stripe mark.
§ The court held that passing oR requires comparison of
get-ups, not just trademarks, and must prove that the
similarity misleads consumers.
4. Distinctiveness and Reputation
• The distinctiveness of a name or get-up greatly influences the likelihood
of consumer confusion.
• The greater the reputation of the get-up or name, the higher the potential
for passing oR claims to succeed.
• If a trader’s get-up has become distinctive and recognizable as a badge
of origin, it could support a passing oR claim.
• Case Reference:
o The court found that even minor diRerences between similar get-
ups can be enough to avoid passing oR if they suRiciently
distinguish the products.
5. Functional vs. Non-Functional Elements
• Protection for passing oR primarily covers non-functional elements;
purely functional elements can be freely copied.
• Case Reference: Agriplas (Pty) Ltd v Andrag & Sons (Pty) Ltd
o The court indicated that reputation and goodwill protections
must relate to non-functional characteristics only.
• If the shape of a product has become distinctive, it may be protected,
but purely functional designs may not qualify.
• Case Reference: Weber Stephen Case
o The court recognized the unique shape of a kettle-type barbeque
grill as distinctive, allowing for protection against passing oR
claims.
6. Conclusion
• Misrepresentation in passing oR claims can manifest through various
forms, including symbols, names, descriptive terms, domain names,
and product appearances.
• Courts assess distinctiveness and potential consumer confusion to
determine the validity of passing oR claims, emphasizing that the
burden of proof lies with the claimant to show how the defendant’s
actions mislead consumers regarding the origin of goods or services.
Likelihood of 1. Essence of Likelihood of Confusion
confusion • The core principle of passing oR is that the misrepresentation by the
defendant must lead to deception or confusion among consumers.
• The confusion must directly result from the misrepresentation made by
the defendant regarding their goods or services.
2. Comparison with Trademark Infringement
• Unlike trademark infringement, where the focus is primarily on the
similarity of marks, passing oR requires a broader analysis of all relevant
extraneous factors.
• The entire get-up of the respective products is compared to assess the
likelihood of confusion, rather than solely the similarity of trademarks.
3. Judicial Precedents on Confusion
• Case Reference: Pasquali Cigarette Co. Ltd v Diaconicolas &
Capsopolus
o The court held that plaintiRs must demonstrate a suRicient
degree of copying and that the defendant's imitation is such that
an ordinary purchaser would be deceived by it.
• Case Reference: Adcock Ingram Products Ltd v Beecham SA (Pty)
Ltd
o This case reiterated that the plaintiR must prove that the
defendant's use of the feature in question was likely to deceive
and, therefore, cause confusion or injury to the plaintiR’s
goodwill.
4. Factors Considered by Courts
• The courts evaluate the likelihood of confusion from the perspective of
the likely target market for the goods or services involved.
• The average consumer in that market must be taken into account when
determining confusion.
• A substantial number of that target market must be likely to experience
confusion or deception.
5. Casual Observation Test
• Case Reference: Lennon Ltd v Sachs
o The court emphasized that the question of confusion should not
focus solely on specific diRerences, but rather whether the
general appearance of the marks would lead a casual observer to
be deceived.
6. Common Field of Activity
• Unlike trademark infringement, passing oR does not require that the
parties operate in the same field.
• Case Reference: Capital Estate & General Agencies (Pty) Ltd v
Holiday Inns Inc
o The court stated that the likelihood of confusion is a factual
question assessed based on the circumstances of each case,
even in the absence of a common field of activity.
o However, the absence of a common field often weighs
significantly against a finding of passing oR unless exceptional
circumstances exist.
7. Relevant Factors for Consideration
• Degree of Similarity: The similarity between the fields of activity of the
parties involved.
• Degree of Diversification: How much the fields of activity diverge.
 • Public Awareness: The extent to which the public is aware of the
diversification or overlap between the fields.
• Incidence of Cross-Activity: The occurrence of individual traders
operating in both fields of activity.
8. Evidence of Actual Confusion
• While evidence of actual confusion in the marketplace is not a
prerequisite for a passing oR claim, it can significantly impact the
determination of whether confusion or deception is likely.
9. Summary of Passing O\ Principles
• According to Webster and Page, passing oR protects the reputation
component of goodwill derived from business conduct.
• The plaintiR must show that their mark or symbol is distinctive of their
reputation and that the defendant's actions may cause actual or
potential damages.
• The misrepresentation must lead to confusion or deception among a
significant number of interested persons in the locality where it occurs.
• The reputation associated with the plaintiR’s symbol must extend to a
substantial portion of the target audience likely to be deceived or
confused by the defendant's conduct.
Damage or • The plaintiR must prove that they have suRered damage or are likely to
likelihood of suRer damage as a result of the misrepresentation
damage • Forms of damage
o Loss of sales
o Loss of profits
o Loss of goodwill
o Damage to reputation
PROCEDURE 1. Initiation of Passing O\ Proceedings
• Similar to trademark infringement, passing oR proceedings are typically
initiated in the High Court.
• The proceedings usually follow an application procedure, which is
initiated by filing a Notice of Motion along with a founding a\idavit.
This is because passing oR claims generally do not present disputes of
fact.
2. Nature of Proceedings
• The primary concern of the court in passing oR cases is to address
the legal question of whether the two symbols (the plaintiR’s and the
defendant’s) are confusingly similar.
• Since passing oR cases often hinge on the interpretation of law rather
than conflicting factual evidence, the application procedure is
preferred.
3. Disputes of Fact
• In instances where a dispute of fact does arise, the proceedings would
shift to an action procedure.
• This is commenced by filing a summons accompanied by particulars
of claim, allowing for a more detailed examination of the facts in a court
setting.
4. Comparison with Trademark Rectification Claims
• The procedural framework for passing oR claims mirrors that of claims
for the rectification of the register of trade marks.
• This alignment underscores the shared legal principles and procedural
requirements for cases involving trade marks and passing oR, facilitating
a cohesive approach within the judicial system.
REMEDIES • Delivery up of oRending goods and materials
o Basically consists of just handing over the oRending goods or
services as a form of confiscating it.
• Damages
o The claimant must show actual damages as a result of unlawful
conduct such as:
§ Loss of sales.
§ Injury to repute due to the sale of inferior goods.
§ Loss of sale due to reduction of prices.
§ Expenditure involved in seeking to meet competition resulting
from the defendant’s sales.
• Interdict
o This would prohibit any use which does not clearly distinguishing the
goods.
• Corrective Advertising
o The oRending party would have the advertise the clear up the
confusion and essentially apologise.
DEFENSES • A Registered Trade Mark
o The existence of a registered trade mark can constitute a defence to
a passing oR claim.
• Parallel Importation
o This would not usually amount to passing oR because the goods are
genuine and there is no misrepresentation.
• Unclean hands
o If there has been a false representation by the claimant (plaintiR) in
the form of fraud, dishonesty or mala fidesthe claimant cannot be
granted relief.
• Acquiescence of Estoppel
o As in the case of trade mark infringement, these defences can be
applied against a passing oR claim.
•
•
•
•
•
•

ANTI-COUNTERFEITING
Introduction to the Counterfeit Goods Act
• Enactment and Purpose
 o The Counterfeit Goods Act 37 of 1997 came into operation in January 1998.
o Aims to regulate the dealing in counterfeit goods and protect intellectual property
rights.
o The Act is designed to prevent counterfeit goods from entering commercial channels.
• Relationship with Other Legislation
o It complements the Merchandise Marks Act and the Copyright Act.
o Anti-counterfeiting provisions were updated through the Intellectual Property Laws
Amendment Act 38 of 1997.
o The Copyright Act retains penal provisions related to copyright infringement.
• International Context
o The Act is influenced by the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) under GATT.
o TRIPS aims to reduce trade distortions and promote adequate protection of intellectual
property rights.
o The Counterfeit Goods Act was enacted to align South African law with TRIPS
requirements.
• Scope of Protection
o TRIPS mandates minimum protection for intellectual property rights, but member states
can oRer more extensive protections.
o South Africa's adherence to TRIPS requires domestic incorporation through legislation,
achieved by the Counterfeit Goods Act.
• Recourse for Complainants
o The Act allows for swift legal recourse against counterfeit goods, subject to strict
conditions.
4.1.1 Definitions
• Counterfeit Goods
o Defined as goods made without the authority of the intellectual property rights owner,
imitating protected goods.
o The term includes:
§ (a) Goods that are substantially identical copies.
§ (b) Goods that imitate the subject matter of an intellectual property right,
causing confusion with the protected goods.
§ (c) Unauthorized use of marks prohibited by notice under the Merchandise
Marks Act.
o Importantly, the act of counterfeiting must also infringe the intellectual property right in
question.
• Distinction Between Counterfeiting and Piracy
o The Act does not clearly diRerentiate between trademark counterfeiting and copyright
piracy.
o Courts interpret the definition of counterfeiting broadly, encompassing both types of
infringement.
o Key cases:
§ AM Moolla Group Ltd v The Gap Inc: Discussed the indistinctness in definitions
of piracy and counterfeiting.
§ Puma AG Rudolf Dassler Sport v Rampar Trading: Clarified intent behind
paragraphs in the definition, relating (a) to copyright piracy and (b) to trademark
counterfeiting.
• Intellectual Property Rights
o Defined in Section 1 of the Counterfeit Goods Act to include:
§ Rights conferred by the Trade Marks Act, 1993 (including well-known marks).
§ Copyrights as per the Copyright Act, 1978.
 § Exclusive rights related to specific marks as per notices under the Merchandise
Marks Act.
o The Act does not provide protection for patents or designs and is limited in scope
compared to traditional definitions of intellectual property rights.
• Dealing in Counterfeit Goods
o Prohibits specific actions related to counterfeit goods, including:
§ Possession of counterfeit goods for business purposes.
§ Manufacturing or producing counterfeit goods (except for private use).
§ Selling, distributing, or importing/exporting counterfeit goods for trade.
§ Disposing of counterfeit goods in trade contexts.
4.1.2 O\ence of Dealing in Counterfeit Goods
• Section 2(2) Provisions
o Outlines the oRence of dealing in counterfeit goods.
o A person is guilty if they knew or suspected the goods were counterfeit or failed to take
reasonable steps to avoid dealing in such goods.
• Mens Rea Requirement
o Negligence or knowledge (mens rea) is necessary for conviction.
o Courts assess if the individual reasonably could have known about the counterfeit
nature of the goods or should have foreseen the possibility of committing an oRence.

4.2 Search and Seizure Operation

• Purpose of the Counterfeit Goods Act:
o Provides a mechanism for intellectual property rights holders to locate and eradicate
counterfeit goods.
o Facilitates formal procedures for the seizure of counterfeit goods.
o Actions are typically initiated by inspectors, often at the request of rights holders or
their agents.
4.2.1 Who May Lodge a Complaint?
• Eligible Complainants:
o Must have an interest in the protected goods (owner or licensee of an intellectual
property right).
o Includes importers, agents, or representatives acting on behalf of rights holders.
• Filing a Complaint:
o If an authorized agent suspects a violation as per section 2(1), they may lodge a
complaint with any inspector.
o Broad definition of complainants encourages participation but imposes responsibility.
• Consequences of Filing a Complaint:
o Complainants may be liable for damages and legal costs if the seizure is found invalid
or goods are declared not counterfeit.
o Highlights the importance of being a qualified complainant with suRicient facts and
evidence.
• Responsibility of the Complainant:
o Must ensure they are properly qualified to lodge a complaint, providing adequate
evidence to satisfy the requirements of the Counterfeit Goods Act.
o Failure to do so could invalidate subsequent actions taken by inspectors or magistrates,
leading to potential damages or adverse cost orders against the complainant.
• Common Practice:
o Intellectual property right owners usually act as formal complainants, with complaints
made on their behalf by authorized personnel or attorneys.
o If not the complainant, the filing party must keep the intellectual property rights holder
informed about the complaint and its progression.
4.2.2 What are the Substantive Requirements for a Complaint?
 • Information Requirements:
o Complainants must provide satisfactory information to inspectors demonstrating that
the goods are prima facie counterfeit.
o The criterion of proof is based on a prima facie standard, which is less rigorous than the
balance of probabilities.
• Evidence Presentation:
o Complainants must present suRicient information for the inspector to establish that the
goods are likely counterfeit.
o Involves providing a specimen of the alleged counterfeit goods or alternative evidence
to identify distinctive features.
• Practical Steps Before Filing:
o Complainants often conduct test purchases from the premises selling alleged
counterfeit goods.
o Accompanying evidence includes:
§ Color digital photographs of the purchased goods, showcasing essential
physical features.
§ Comparison images of trademarks and labels (e.g., wash care labels) between
alleged counterfeit goods and genuine products.
• Criteria for Evidence:
o Complainants do not need to prove the goods are cloned copies; however, they must
establish that the items can be perceived as counterfeit products associated with the
intellectual property rights owner.
• Legal Precedent:
o In Puma AG Rudolf Dassler Sport v Rampar Trading (Pty) Ltd, the court acknowledged
counterfeiting can occur without cloning.
o Demonstrating counterfeiting requires more than merely proving trademark or copyright
infringement; evidence must indicate that the goods are recognized as products of the
rights holder.
• Intellectual Property Rights Proof:
o Complainants must provide suRicient details about the subsistence and extent of their
intellectual property rights and their title or interest in that right.
o For registered trademarks, proof can be established through appropriate
documentation, such as notices published in accordance with trademark legislation.
Pause for Reflection
• World Cup Prohibited Marks:
o Certain marks may be enforced during major sporting events under section 15 of the
Merchandise Marks Act.
o Example: During the 2010 FIFA World Cup in South Africa, FIFA protected its marks
through the Minister of Trade and Industry, allowing it to address counterfeit goods
under the Counterfeit Goods Act.
• Specimen Submission:
o Under section 3(2)(b), a specimen of the protected goods is required when the
complaint involves claims of cloning and infringement of a relevant intellectual property
right.
o Specimens may not always be actual goods but could be notional goods as per the
defined context.
4.2.3 Lodging the Complaint with Inspectors
• Definition of Inspectors
o An inspector is appointed or designated for purposes of the Counterfeit Goods Act
according to section 22.
o Includes:
 § Police oRicials (rank of sergeant or higher) as defined by the Criminal Procedure
Act 51 of 1977.
§ Commissioner for Customs and Excise and customs oRicials classified as
'oRicers' under the Customs and Excise Act 91 of 1964.
o The Minister of Trade and Industry can appoint any fit and proper person as an
inspector per section 22.
§ Inspectors receive a certificate of appointment issued in a prescribed form
(Government Gazette 23136, dated 15 February 2002).
o A police oRicial employed by the Minister of Police is considered an inspector by virtue
of rank rather than appointment under section 22.
4.2.4 The Inspector's Consideration of the Complaint
• An inspector must take appropriate steps if:
o The complainant qualifies as per section 3(1)(a).
o The goods claimed are prima facie protected goods.
o The intellectual property right allegedly applied to the goods prima facie subsists.
o The suspicion underlying the complaint appears reasonable.
• Powers of an inspector include:
o Entering any premises, place, or vehicle to inspect and seize relevant goods.
o Conducting searches, including individuals, as necessary to stop acts of dealing in
counterfeit goods.
• Jurisdictional Requirement: Reasonable grounds for suspicion are required for obtaining a
warrant.
o Inspectors must confirm satisfaction of conditions based on evidence before applying
for a warrant.
4.2.5 Application for a Search and Seizure Warrant
• The lodged complaint is utilized to obtain a search and seizure warrant under section 6.
o Warrant can be issued by:
§ High Court judge in chambers.
§ Magistrate with jurisdiction in the relevant area.
• Conditions for issuing a warrant:
o Reasonable grounds for believing counterfeit goods are involved.
o Powers contemplated in section 4(1) can be specified and authorized by the warrant.
• The Act incorporates checks and balances to protect parties against potential unconstitutional
use of remedies.
o Use of the term "reasonable" establishes a threshold for complainants, inspectors, and
judicial oRicers.
• Judicial O\icer's Discretion: Must assess reasonable grounds based on information under
oath or aRirmation.
o Must have all relevant information to make a decision; failure to disclose pertinent
information can render decisions void.
o The uberrimae fides rule requires full disclosure of material facts during ex parte
applications.
4.2.6 Execution of a Warrant
• Warrants issued remain in force until executed, canceled, or expired (up to three months).
• Execution can only occur during reasonable daytime hours unless authorized for night
execution.
• Inspectors must:
o Identify themselves to the person in control of the area before executing the warrant.
o Provide a copy of the warrant if present, or aRix a copy in a visible location.
• Must ensure execution respects individual rights, including:
o Dignity and personal privacy.
o Freedom and security of the person.
 • Inspectors may enter and search the specified locations and individuals present.
o Reasonable force can be used to overcome resistance.
• If privileged information is claimed during execution, the inspector must seek a ruling from the
High Court registrar.
4.2.7 Initiating a Search and Seizure Without a Warrant
• Inspectors may conduct warrantless searches during the daytime under specific conditions:
o Consent from a competent individual.
o Reasonable grounds to believe a warrant would be issued and that delay would defeat
the purpose of the entry/search.
• No warrantless searches are permitted in private dwellings without proper authorization.
• Before conducting a warrantless search, inspectors must have evidence to justify reasonable
grounds for belief in counterfeit dealings.
o Powers are typically used when additional suspected counterfeit goods are found
during a warranted search.
• Limitation: Section 5(2)(b) prohibits warrantless searches in private dwellings without a
warrant under section 6.
4.2.8 Powers of Inspector to Search, Seize, and Collect Evidence
• Authority: Inspectors can act under a warrant issued per Section 6 to:
o Terminate the manufacturing, production, or distribution of counterfeit goods.
o Prevent future acts related to counterfeit goods.
• Actions Permitted:
o Seize, detain, and remove goods for detention.
o Seal oR premises, vehicles, or locations where counterfeit goods are found or
manufactured.
o Seize tools used for the manufacture or packaging of counterfeit goods.
• Information Gathering:
o Inspectors may question individuals present at the premises regarding counterfeit
activities.
o They can demand relevant documents or items related to the goods in question,
including:
§ Nature, quantity, location, source, and destination of counterfeit goods.
§ Identification of suppliers, manufacturers, distributors, and other involved
parties.
4.2.9 Duties of the Inspector
4.2.9.1 Preparation of Inventory of Seized Goods
• Inspectors must:
o Seal, clearly identify, and categorize seized goods.
o Prepare an inventory in quadruplicate.
o Have the individual from whom goods were seized verify the inventory.
o Provide a copy of the inventory as a receipt.
4.2.9.2 Transportation of Seized Goods
• If goods are transportable, inspectors must:
o Remove them to a designated counterfeit goods depot.
• If goods are not transportable, inspectors must:
o Seal and guard the goods at the location of seizure, which is then deemed a counterfeit
goods depot.
4.2.9.3 Notice of Seizure
• Inspectors must issue a written notice (seizure notice) to:
o The individual from whom goods were seized.
o The complainant, detailing actions taken and storage location of goods.
• The notice informs the complainant of the right to lay a criminal charge within three days.
 • Timing of notice issuance is typically on the same day as the seizure to avoid compliance
issues.
4.2.10 Storage of Seized Goods and Access
• Seized goods must be stored at a counterfeit goods depot until:
o A competent court orders their destruction or release.
• Access to seized goods for testing may be requested:
o The depot manager must assess testing requests.
o If testing is denied, the matter can be referred to the complainant for confirmation.
• If denied, the complainant's decision must be communicated to the suspect, who can appeal
to the court.
4.3 Post-Seizure
4.3.1 Lodging of Criminal Complaint
• Complainants must file a criminal charge within three days after the seizure notice.
• If no charge is laid within this period, seized goods must be returned to the suspect.
4.3.2 Obligations of State and Complainant
• If the state does not notify the suspect of intent to prosecute within ten working days:
o Seized goods must be released.
• If the complainant fails to notify of criminal proceedings within ten days, the goods must also
be released.
4.3.3 Application for Release by a Dispossessed Party
• Individuals prejudiced by seizure can apply to court to assert that the goods are not
counterfeit.
• The court may grant or refuse the application, allowing for payment of damages and costs if
appropriate.
• The burden of proof lies with the applicant, requiring evidence on a balance of probabilities.
4.3.4 Orders that a Court May Issue
• Courts can order delivery of seized goods to the intellectual property right owner or
complainant, even if criminal charges are not upheld.
• Goods found to be counterfeit must be destroyed, as implied by the provisions.
4.4 Border Control
4.4.1 Who May Lodge the Application?
• Only the owner of an intellectual property right can apply to the Commissioner for the seizure
and detention of counterfeit goods.
4.4.2 Substantive Requirements for the Application
• Applicants must prove ownership of intellectual property rights and provide evidence of the
counterfeit nature of goods.
• Submissions may include specimens of protected goods and necessary information for
assessment.
4.4.3 Response by the Commissioner
• The Commissioner must consider and deal with the application without delay.
• The application may be granted if:
o Goods claimed are prima facie protected goods.
o The intellectual property right related to the goods prima facie subsists.
o The applicant is the owner of the intellectual property right.
• The Commissioner must notify the applicant in writing within a reasonable time regarding the
decision on the application.
• If granted:
o The Commissioner states the period during which the stipulated goods will be subject
to seizure.
o Customs authorities may detain the stipulated goods under the Customs and Excise
Act.
• If refused, the Commissioner must provide reasons for the refusal.
4.4.4 Detention of Goods by the Customs Authorities
• The South African Revenue Service (SARS) has the authority to detain goods under:
o Section 15(4) of the Counterfeit Goods Act.
o Section 113(1)(b)(i) of the Customs and Excise Act.
• Goods can be detained until it's determined whether they are counterfeit.
• Customs and Excise Act provisions complement those of the Counterfeit Goods Act.
• Recourse should first be had to Customs and Excise Act before seizure under the Counterfeit
Goods Act.
• Under Section 4(8A)(a) of the Customs and Excise Act, oRicers may stop and detain goods for
examination.
• Section 107(2)(a) prohibits the passage of goods from customs control until compliance with
relevant laws is ensured.
• Customs oRicers can detain ships, vehicles, materials, or goods to establish if they are liable
to forfeiture under the Customs and Excise Act.
• Customs oRicers can also seize and detain goods under the Counterfeit Goods Act if they
suspect them to be counterfeit.
4.4.5 Post-Detention Procedure and Seizure
• After determining goods are prima facie counterfeit:
o Customs oRicer applies for a search and seizure warrant under Section 6(1).
o Seizes counterfeit goods as per Sections 4 and 5.
• The inspector must prepare an inventory (Section 7(1)(a)).
• Seized goods are transported to a designated counterfeit goods depot.
• Notice of seizure (Section 7(1)(d)) must be issued.
• It's the responsibility of the intellectual property rights owner/complainant to proceed further.
4.5 General
4.5.1 Evidence and Presumptions
• Statements and documentary evidence by inspectors may be made available to the
complainant.
• Complainant may copy or extract evidence and must return documents after use.
• Any person found in possession of protected goods is presumed to be dealing in counterfeit
goods unless proven otherwise.
• This presumption applies in criminal proceedings unless rebutted by evidence.
4.5.2 Liability for Loss or Damage
• Individuals suRering loss or damage due to wrongful seizure or detention may claim
compensation.
• Claims are against the complainant, not the state or customs inspectors.
• The state or customs oRicers are liable only if grossly negligent or acting in bad faith.
4.5.3 Penalties
• First oRence for dealing in counterfeit goods:
o Fine up to R5,000 per article/item or up to three years imprisonment, or both.
• Second/subsequent oRence:
o Fine up to R10,000 per article/item or up to five years imprisonment, or both.
• Miscellaneous oRences under Section 18:
o Punishable by fine or imprisonment not exceeding six months.
• Courts must consider any previous convictions when imposing penalties.
• Evidence from inspectors regarding counterfeit goods is admissible in court, provided it
complies with procedural requirements.
Conclusion
• The Customs and Excise Act and the Counterfeit Goods Act provide a framework for the
detention and seizure of counterfeit goods.
• Customs oRicers play a crucial role in investigating and determining the counterfeit status of
goods, ensuring due process is followed before any formal seizure.
• Legal proceedings concerning counterfeit goods involve various statutory frameworks,
evidentiary standards, and liability considerations for all parties involved.
UNLAWFUL COMPETITION