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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

On infringement of a registered trademark, any High Court having jurisdiction may grant the owner appropriate relief.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Trademark infringement proceedings generally take the form of civil application proceedings instituted by the owner of the registered trademark. These proceedings are instituted by way of a notice of motion supported by a founding affidavit and relevant evidence. In application proceedings, the court will make its judgment based on the affidavits and documentary evidence before it and will not generally require oral evidence.

Alternatively, infringement proceedings can be instituted by way of civil action proceedings, which involve filing a summons and particulars of claim. In action proceedings, a civil trial is held where oral evidence is presented by witnesses before a judgment is issued. There is no provision for criminal or administrative proceedings to be instituted in respect of trademark infringement; however, there is provision for criminal proceedings where the infringer is dealing in counterfeit products.

Who can file a trademark infringement action?

Infringement action can be filed by:

  • the owner of the registered trademark; or
  • a registered user of the registered mark, but only where it has asked on the owner of the trademark to institute infringement proceedings and the owner has refused or neglected to do so within two months of being so called upon.

What is the statute of limitations for filing infringement actions?

There is no statute of limitations for filing trademark infringement actions, but damages or reasonable royalties flowing from the infringement can be claimed for up to only three years before the institution of the proceedings.

What is the usual timeframe for infringement actions?

If unopposed and in the normal course (ie, not on an urgent basis), the timeframe for application proceedings is approximately two to three months. If opposed and in the normal course, the timeframe is usually six to 12 months. For action proceedings, these timeframes are considerably longer as oral evidence must be led in court.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

The rules and procedures governing the issuance of injunctions are part of the common law. The requirements to claim a final injunction are:

  • a clear right;
  • an injury actually committed or reasonably apprehended; or
  • the absence of similar protection by any other ordinary remedy.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The available remedies in civil proceedings include:

  • obtaining an injunction to restrain use of the infringing mark;
  • ordering for removal of the infringing mark from all material and, where the infringing mark is inseparable or incapable of being removed from the material, ordering that all such material is delivered up to the owner;
  • claiming damages; or
  • in lieu of damages, claiming a reasonable royalty which would have been payable by a licensee for use of the trademark concerned.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The Department of Customs and Excise is primarily responsible for monitoring the borders, including ports of entry. The Counterfeit Products Act makes provision for the recordal of registered trademarks with the commissioner of customs and excise. The main purpose of this recordal process is to prevent the release of counterfeit products into the channels of commerce. Customs profiling teams inspect incoming shipping containers with the view of identifying products that are suspected to be an infringement of any trademarks recorded on their database for purposes of verification by the respective trademark owners.

Defence

What defences are available to infringers?

Defences to trademark infringement include:

  • good-faith use of own name;
  • good-faith descriptive use;
  • good-faith use to indicate intended purposes;
  • use on genuine products;
  • good-faith use of utilitarian features;
  • use to which the registration does not extend; and
  • concurrent registration.

Acquiescence and estoppel can also form the basis of a defence to infringement claims.

Appeal

What is the appeal procedure for infringement decisions?

In general, leave to appeal against a single judge of the High Court’s decision may be obtained by filing a statement on the grounds of which leave to appeal is requested. Appeal can be sought to a full bench, being three judges in the same High Court where the appealed order was handed down. If leave to appeal is granted, the notice of appeal must be delivered to all parties within 20 days of the date on which leave to appeal was granted. A notice of cross-appeal may be filed by any party within 10 days of delivery of the notice of appeal. If leave to appeal to a full bench is refused, the appellant has the opportunity to petition the Supreme Court of Appeal for leave to appeal.

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