Intellectual property in South Africa
Adams & Adams is an intellectual property heavyweight with genuine domestic and Africa-wide credibility. It has maintained a sizeable and steady flow of trade mark filing engagements and has achieved further growth in domain name objections and oppositions. On the patents side, the firm has gained a considerable flow of mandates from US-based clients. The firm also boasts a strong European and local client base. The South Africa-based team is frequently engaged in cross-border matters, including those in Nigeria, Kenya, Uganda, and Zambia. It has a presence throughout Africa with more than twenty associated offices around the continent. From an enforcement perspective, the firm has its own investigators, frequently employed in anti-counterfeiting engagements. Godfrey Budeli is a key figure in the anti-counterfeiting segment. Russell Bagnall leads the patent and design litigation group, and Darren Olivier heads the IP commercialisation team. Mariëtte du Plessis has an outstanding record in trade mark litigation and Simon Brown is chairman of the trade mark prosecution section. Chairman of the firm Gérard du Plessis manages the trade mark portfolios of a range of South African and multinational businesses.
Gérard Du Plessis; Simon Brown; Nishan Singh; Nolwazi Gcaba; Janice Galvad; Dario Tanziani; Nicky Garnett; Godfrey Budeli
Other key lawyers:
Russell Bagnall; Darren Olivier; Mariëtte du Plessis; Stephen Hollis; Vishen Pillay; Eugene Honey; Alicia Kabini
‘The team is very responsive and professional.’
‘Adams & Adams delivers a professional, informed and speedy service. Their practitioners are experts in their fields, yet accessible and friendly, rather than snobbish and distant.’
‘Their knowledge in their fields are beyond compare and how they manage to summarise the situation in a layman’s terms make them highly enjoyable to work with.’
‘Stephen Hollis is especially giving of his time to some of the most consequential developments in our trade.’
‘Vishen Pillay is technically strong and is able to quickly grasp the issue and provide a clear and articulated answer.’
‘Eugene Honey understands our culture and needs, and tailors his advice accordingly.
‘Alicia Kabini is an absolute joy to work with. She is responsive, quick and practical, always putting our interests first.’
Sun International (IP)
South African National Parks
AEL Mining Services
Puma Energy International
- Represented Liberty, the South African insurance giant, in proceedings against Discovery over allegations that Liberty was using its Vitality loyalty programme’s trade mark without authorisation from Discovery.
- Advising Copyright Coalition of SA on the proposed enactment of the Copyright Amendment Bill and the Performers Protection Amendment Bill, on the basis that the enactment of the Bills would result in breaches of international treaties to which South Africa is a member and to the Constitution and the Bill of Rights of South Africa.
- Acted for Maxe, the registered design proprietor against Artav Stainless Steel in respect of a number of South African registered designs for nudge and sports bars for motor vehicles.
Spoor & Fisher is solely focused on intellectual property and is one of two dominant firms in this area. It has a significant market share of trade mark and patent filings, and has committed itself to Africa-wide IP matters. In the patents field, the firm is strong across the board with a notable edge in the biotech segment. In trade marks, it has impressed in multi-jurisdictional litigious matters. The firm is also a recognised leader in domain name disputes and online enforcement of IP. In anti-counterfeiting, it has an especially large team of senior specialists led by Mohamed Khader. Hugh Moubray leads the highly rated patent litigation department and Charles Webster, Eben van Wyk and Carl van Rooyen are leading trade mark attorneys.
Marco van der Merwe; Shanaaz Mahomed; Mohamed Khader
Other key lawyers:
Stephen Goldberg; Hugh Moubray; Charles Webster; Carl van Rooyen; Eben van Wyk; Paul Ramara; Megan Reimers; Kay Rickelman
‘The team has good knowledge of counterfeit issues in South Africa, they are very responsive and nice to work with.’
‘The team excels in South Africa and other southern African countries with good connections to enforcement officials and other firms. Great knowledge and expertise throughout the firm.’
‘Significant depth of experience in IP.’
‘Industry appropriate experience.’
‘Spoor & Fisher’s depth of knowledge in Africa is unparalleled. They have worked hard to build relationships at every level in key territories that helps their clients achieve their goals.’
‘Paul Ramara is a star. Excellent advice, both commercial and strategic.’
‘Megan Reimers provides outstanding advice and service. She has that rare combination of expertise in her field and genuine concern for her clients. She provides a service-minded approach which is far above and beyond the norm.’
‘Kay Rickelman is outstanding and has been a valued partner for more than a decade. She provides me with regular updates both on legal issues and overall economic issues in the region. I know I can count on her for advice that is business focused.’
Accenture Global Services
Jaguar Land Rover
The United States Polo Association & Stable Brands
- Representing United States Polo Association and Stable Brands in litigation in multiple African jurisdictions concerning the non-use of trade mark, the misleading use of trade marks and the confusing similarity of trade marks.
- Represented Jaguar Land Rover in the opposition to the registration of three-dimensional shape and configuration of off-road vehicle as trade mark.
ENSafrica remains best known for commercial IP and has gained further recognition for its ability to serve clients across the continent. The firm is also building its presence in pharmaceuticals and life sciences, while cementing its foundations in trade marks and patents. It advises an impressive range of South African, regional and multinational businesses. Department head Gaelyn Scott is a force in trade mark infringements and oppositions. Stellenbosch executive Ilse du Plessis is an experienced figure in trade mark filing and prosecution, while Cape Town's Waldo Steyn leads the commercial IP team. Durban's Rowan Forster is noted for patent and design filing and prosecution. Cape Town executive Joanne van Harmelen specialises in patents in the biotechnology sector.
Other key lawyers:
Ilse du Plessis; Waldo Steyn; Joanne van Harmelen; Rowan Forster
‘The attention to detail and personal attention, no matter how small the issue, is what I find unique. Their interaction with our company is always friendly and professional.’
‘Always friendly, professional and thinking outside the box when dealing with us.’
‘Gaelyn Scott is very professional and friendly at the same time, with smooth and swift communication.’
‘Gaelyn Scott’s knowledge, energy, and enthusiasm is second to none. She is an adept communicator and leads her team by example. She always has a clear grasp of the issues and delivers exceptionally cogent advice in a precise, comprehensible, and affable manner.’
‘Rowan Forster has an excellent knowledge of IP in South Africa, and has a knack of quickly beating things down to the essential aspects.’’
‘Ilse du Plessis is extremely knowledgeable and service is super fast. She is always willing to go the extra mile. ’
Arysta Lifesciences South Africa
Cape Bio Pharms
Conde Nast / Advance Magazine Publishers
Core Computer Business
Cricket South Africa
DH Brothers Industries
Ferrero Rocher Group
Hilton Hotels Group
Hollard Insurance Group
Momentum Metropolitan Life
Ninety One Global
Pernod Ricard South Africa
Rand York Castings
South African Airways (SAA)
South African Reserve Bank
- Advised Pernod Ricard on its acquisition of a majority stake in Inverroche Distillery, including due diligence on the target with respect to the intellectual property assets and the holding of those assets.
- Advised Experian on its acquisition of Compuscan, including the intellectual property related aspects of the transaction, notably trademarks and domain names, and extending specifically to the ownership of software and the treatment and ownership of intellectual property in all commercial arrangements.
- Advised Ninety One, formerly Investec Asset Management, on its new brand being cleared and protected in more than 30 jurisdictions, an interim licence for the INVESTEC brand to be put in place and for an intra-group transfer pricing policy to be created.
KISCH IP is a long-standing leading specialist IP practice with extensive resources in trade marks and patents. It has an excellent record in the life sciences and medical devices sectors, along with electronics and mechanical engineering. Chairman of the firm Adelhart Krüger is a renowned patent attorney with deep experience in the electronic engineering, telecoms and IT sectors. At van Rooy is another strong patents specialist, noted for his record in life sciences, pharmaceuticals and other sectors. Derek Momberg is a hugely experienced trade marks expert.
Other key lawyers:
Adelhart Krüger; Nola Bond; Derek Momberg; At van Rooy; Julia Stephens; Andrew Papadopoulos; Jaco Theunissen
Von Seidels is a Cape Town-based intellectual property boutique and one of the leading firms in trade mark and patent filings. It is viewed as a 'market disruptor', challenging the dominance of the traditional leaders in the field. The firm has spread its continental influence with further offices in Namibia, Cameroon and Nigeria. It has long been praised for its eminence in patents and has gained significant market share in the trade marks field. Life sciences, electronic and electrical engineering, and mechanical engineering are key sectors for the firm. Erik van der Vyver is a leading figure in patent litigation and patent prosecution, while Bastiaan Koster, Rowan Joseph and Ralph van Niekerk are similarly highly reputed in the patents field. Simonne Moodie and Christine Strutt are key figures on the trade marks side.
Erik van der Vyver; Claire Brown
Other key lawyers:
Bastiaan Koster; Rowan Joseph; Ralph van Niekerk; Sandra Clelland; Christine Strutt
‘The team is excellent. We always receive the best service from the entire team from junior staff members to the senior members. Their biggest strength is their excellent communication skills.’
‘We receive personal attention from the attorneys. They go the extra mile in making sure we receive an excellent service.’
University of Cape Town
- Advised Entersekt on its global IP strategy, including handling patents, registered designs, licensing, contentious matters, and trade marks.
- Advises Stellenbosch University on comprehensive patent protection and patent strategy for new technologies.
- Filed patent applications for in the United Kingdom for University of Cape Town in the field of abalone production.
Webber Wentzel remains a leading player in commercial and transactional IP, including cross border and multi-jurisdictional engagements. It further expanded its offering to include patent litigation with the hire of consultant Tim Ball from Brian Bacon & Associates Inc in 2019. Cape Town partner Leanne Mostert leads the IP department and has a fine record in commercial matters, including IP exchange control issues. Bernadette Versfeld is a key figure in IP litigation.
Other key lawyers:
Bernadette Versfeld; Tim Ball
‘Webber Wentzel’s advice was decisive which I really appreciated. They guided us through South African IP law with ease.’
‘Bernadette Versfeld is fantastic. Not only did we get a good result against a business infringing our designs, but Bernadette also alerted us to some companies which infringed our trade marks. I really appreciated Bernadette’s proactive approach and advice. ’
‘Bernadette Versfeld proactively looks for potential uses of our marks without waiting for a trademark application to be published. Bernadette also makes the client feel that they are important. Bernadette has made a conscious effort to maintain contact and connect with her clients at trademark conferences. ’
‘Leanne Mostert is a game-changer in the IP field. She certainly knows how to advise beyond a client’s initial query. Her years of experience is clearly evidenced in the advice she provides which extends beyond legal knowledge.’
‘Leanne Mostert is very engaging and brings clarity to complicated matters.’
Leapfrog Investments Holdings
Silver Street Capital
Envisionit Capital Solutions
Envisionit Deep AI
Inverroche and Laurenskrik
Air Traffic and Navigation Services
Budweiser Budvar, National Corporation
Cibecs International / Datafox
Danone (Compagne Gervais Danone and Danone Southern Africa
Haribo and RiGO Trading
Naspers Group (including ShowMax)
Private equity companies such as Actis, Ethos and Carlyle
Froneri South Africa Proprietary Limited
- Advised Ringier in relation to formalising and structuring its cross-border and intra-group intellectual property arrangements in Africa.
- Acted for Innovative Water Care in an urgent application for an interdict preventing continued infringement of its functional design registration, covering a floater (chemical dispenser) design.
- Acted for Lixil in an amendment and sale of a revolving credit facility between Lixil Africa Holding and Grohe Four Luxembourg and advised Lixil Africa and its subsidiaries in relation to all aspects of its intellectual property in 47 territories across the globe.
Bouwers Inc is rated for trade mark litigation and referral work from larger firms. The firm has a broader-based practice covering patents, licensing and commercial IP matters. Deon Bouwer is an experienced figure in the trade mark field.
Moore Attorneys has an extensive record in trade marks and brand protection. The firm handles a high-volume of trade mark filings, despite have just two partners. It represents a range of South African, regional and multinational businesses. The firm frequently works on cross-border trade mark and brand protection engagements. Shane Moore is a hugely experienced intellectual property specialist and Tyrone Walker is a key figure for contentious matters.
Other key lawyers:
Sun Pharmaceutical Industries
Phumelela Gaming & Leisure
Parfums Christian Dior
KAP Industrial Holdings
- Represented the Sol Plaatje Educational Trust in protecting the identity and brand of its namesake, writer and politician Solomon Tshekisho Plaatje.
- Acted for VELCRO on the management of its entire African trade mark portfolio, including taking over as address for service for all extant South African trade marks.
- Represented Arena Holdings is one of Africa’s largest English-language news publishers in print, broadcast and radio, in a large scale assignment/transfer of trade marks from several of its subsidiaries to be consolidated under the name of a single entity.
Werksmans Attorneys has a highly-developed intellectual property practice that handles a steady pipeline of trade mark and brand protection engagements. It represents an impressive number of blue-chip South African and multinational businesses in local and Africa-wide matters. Janine Hollesen is a prominent name in trade mark registration, protection and enforcement, while Donvay Wegierski is an expert in multi-jurisdictional matters across the continent, especially trade mark filings and oppositions.
Janine Hollesen; Donvay Wegierski
‘Their responsiveness is second to none in the market.’
‘Donvay Wegierski and Janine Hollesen are just wonderful. They are very responsive and excellent attorneys. They are always friendly and considered.’
Pioneer Food Group
Professional Provident Society Insurance Company
SA Rugby Event services
South African Football Association
South African Rugby Union
State Information Technology Agency
Techtronic Power Tools Technology
Tekkie Town Proprietary
Tiso Blackstar Group
- Acted on behalf of Monster Energy in numerous trade mark oppositions throughout Africa.
- Represented Pepkor Speciality in trade mark infringement and passing off matters.
- Appointed as attorneys for the British and Irish Lions Tour in 2021, which includes drafting a strategic branding policy, which also addresses counterfeit goods and ticketing.