All questions

Intellectual property

i Brand search

The Companies and Intellectual Property Commission (CIPC) provides online access to information in respect of patents and trademarks. .

More detailed information, can be obtained by a special search or, alternatively, through an online search, on payment of a prescribed fee.

ii Brand protection

South Africa provides statutory protection for four types of intellectual property – patents, designs, trademarks and copyright.

Patents

A patent is an exclusive right granted for any new invention or idea, which provides for a new way of doing something or offers a technical solution to a problem that has not already been used, or made known or available to the public anywhere.

An application must be made by the inventor or other person who has acquired the right from the inventor. Protection is usually granted for a period of about 20 years and is limited to the country in which it has been granted. Patent protection means that the invention cannot be commercially made, used, distributed, imported or sold without the consent of the patent holder.

Designs

South African law provides for the registration of two types of designs, namely aesthetic and functional designs. A registered design grants the proprietor the exclusive right to exploit the design for a specified period. To obtain protection, an application must be made to the CIPC.

Trademarks

Only a trademark that is registered in terms of the Trade Marks Act will enjoy the protection afforded under that Act. To be registered, the mark must be capable of distinguishing the proprietor's goods or services from those of other parties. The mark must also not mislead consumers or violate public order or morality, and may not be the same as, or confusingly similar to, any another registered trademark.

The applicant must file an application with the CIPC for the registration of a trademark in a specific class or classes.

Any person who has prior rights or who believes that he or she would be prejudiced by the registration of a trademark may oppose it. The opposing party must show how he or she would be prejudiced by the registration of the proposed trademark and the grounds for opposition.

An opposition can be filed on the grounds that the trademark is not descriptive or not distinctive, or that it is confusingly similar to an existing registered trademark or conflicts with existing common law rights.

Once a trademark is registered, the proprietor enjoys the exclusive right to use it throughout South Africa. The proprietor may restrain others from making use of any mark confusingly similar to his or her mark. A registration certificate constitutes prima facie proof of the proprietor's right.

The Act also provides protection to unregistered marks. To be protected, the mark must be 'well known', as envisaged in the Paris Convention. Protection may be afforded even where the owner does not carry on business in South Africa.

The common law principles of unlawful competition and passing off apply to unregistered trademarks.

Copyright

The Copyright Act confers automatic protection on all original works; no formal registration is required. Copyright can subsist in literary, artistic or musical works, sound recordings, films, computer programs, broadcasts, satellite transmissions and published editions of works.

To be protected, the work must be original, in a material form and created by a 'qualified person'. Qualified persons include South African citizens, residents and persons who are domiciled in South Africa, and citizens and residents of, and persons who are domiciled in, any country that is a signatory to the Berne Convention.

Protection is also afforded where the work is first published in South Africa or one of the other Convention countries. Where a work is created in the course and scope of the creator's employment, copyright will vest in his or her employer.

In a franchise relationship, the franchisor usually grants the franchisee a licence to use intellectual property, such as copyright material and trademarks. The licence need not be in writing; however, a franchisor must provide the franchisee with a description of any intellectual property owned by the franchisor, or licensed to the franchisor, which will be used in the franchise and the conditions under which it may be used.

Business ideas, methods, know-how and trade secrets are not protected by statute and must therefore be protected by contractual undertakings by the franchisee not to disclose or use the intellectual property for any purpose not authorised by the franchisor.

iii EnforcementRegistered Trademarks

A registered trademark will be infringed:

  1. if a mark identical to or so nearly resembling it as to be likely to deceive or cause confusion, is used in the course of trade, without the authority of the owner, in relation to the goods or services for which it is registered;
  2. if a mark identical or similar to it is used in the course of trade, without the authority of the owner, in relation to goods or services that are so similar to the goods or services in respect of which it is registered, that the likelihood of deception or confusion exists; and
  3. if unauthorised use is made of a mark, in relation to any goods or services, in the course of trade, that is identical or similar to a registered trademark that is well known in South Africa, and use of the mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark, even in the absence of deception or confusion.

Unauthorised use of a registered trademark can be prevented by way of an application to the High Court, which may grant the following relief:

  1. an interdict (injunction);
  2. an order for removal of the infringing mark, and the delivering up of all goods to which the trademark is attached;
  3. damages; and
  4. a reasonable royalty.
Copyright

Copyright is generally enforceable by way of an application for an interdict against continued infringement, and a claim may be made for damages or a reasonable royalty, as an alternative or addition to the interdict. The owner may also claim the delivering up of all infringing copies.

Unregistrable intellectual property such as confidential business information, know-how and trade secrets that are protected by contractual undertakings may be enforced pursuant to contract law.

iv Data protection, cybercrime, social media and e-commerce

E-commerce and cybercrimes are governed by the Electronic Communications and Transactions Act 2002 (ECTA), which applies to any electronic transaction or data message.

Data protection in South Africa is currently governed by disparate pieces of legislation, including the Constitution of South Africa 1996, common law, the Promotion of Access to Information Act 2000 and ECTA. The first, consolidated piece of data protection legislation, the Protection of Personal Information Act 2013 (POPIA), is only partially in effect and the provisions that are in effect do not create any substantive obligations. The Information Regulator has indicated that POPIA should be fully effective early in 2019, but the exact time frame is unclear. The Information Regulator has encouraged South African entities to begin to comply with POPIA. Once POPIA becomes fully effective, a 12-month grace period is provided for compliance.

POPIA applies to the processing of personal information by or for a 'responsible party', which is defined as 'a public or private body, or any other person which, alone or in conjunction with others, determines the purpose of and means for processing personal information'. Personal information, is, generally speaking, any information relating to an identifiable, living, natural person and, where applicable, an identifiable, existing juristic person. To the extent that any person processes personal information, whether in relation to its employees or any other party, POPIA will apply.

POPIA imposes the following conditions for the lawful processing of personal information:

  1. accountability;
  2. processing limitation;
  3. purpose specification;
  4. further processing limitation;
  5. information quality;
  6. f openness;
  7. security safeguards; and
  8. data subject participation.

POPIA prohibits the transfer of personal information to a foreign country, except in certain instances, such as where the data subject consents or the recipient of the information is subject to a law, binding agreement or binding corporate rules that provide a level of protection that is substantially similar to the conditions contained in POPIA.

As POPIA is not yet fully effective, data protection in South Africa is currently based on common law, which provides that the voluntary and informed consent of persons is required for the processing of their personal information.