Intellectual property in South Africa

Adams & Adams

Adams & Adams' commitment to the intellectual property discipline and its efforts to build an Africa-wide practice (it has 22 associate offices across the continent) ensures it is a popular choice for an impressive list of clients for major engagements in the region. It advises a high proportion of the world's leading businesses. The firm also has a significant market share of trade mark, patent and design applications in South Africa. Gérard du Plessis is chairman of the firm and Russell Bagnall leads the patent and design litigation group. Simon Brown is a leader in trade mark prosecution and Mariëtte du Plessis is noted for trade mark litigation. Darren Olivier is recommended for commercial IP.

Practice head(s):

Gérard du Plessis

Key clients

Comair

National Brands

AB InBev

We Buy Cars

Absa Bank

DGB

Work highlights

  • Acted for Nova Papers in a trade mark infringement and unlawful competition case, concerning its registration for and use of the trade mark Nova.
  • Defended Primark against Truworths’ application to remove the client’s class 25 trade mark registration for its mark Primark on the basis of non-use.
  • Represented Liberty Group against an application in the Johannesburg High Court  for trade mark infringement and unfair competition.

Spoor & Fisher

Spoor & Fisher is a top intellectual property boutique, which has successfully built its practice beyond South Africa. Charl Potgieter recently joined the firm from Adams & Adams to further reinforce its anti-counterfeiting department, a practice that has attracted a number of multinational clients to the firm. Stephen Goldberg is a top trade mark attorney, Hugh Moubray is a leader in patent litigation and Charles Webster is a key name for trade mark litigation, while Carl van Rooyen is noted for trade mark and copyright litigation. Eben van Wyk is another formidable IP litigator.

Practice head(s):

Marco van der Merwe; Shanaaz Mahomed; Mohamed Khader

Testimonials

The team has been exceptional in terms of understanding our overall requirements.

Honesty, integrity and sound legal advice.

Key clients

The United States Polo Association

LGL France

La Senza

MAN Truck & Bus

Rand Merchant Bank

Work highlights

  • Acted for The United States Polo Association (USPA) in defending an opposition to the registration of various trade marks in the name of USPA, including proceedings in multiple African jurisdictions.
  • Defended La Senza in trade mark litigation.
  • Acted for MAN Truck & Bus in trade mark litigation.

ENSafrica

ENSafrica has outstanding credentials in commercial IP and has made significant progress in Africa-wide engagements. The team, which is now in excess of 50 professionals, advises a range of blue-chip corporates, including those in the financial services, media and pharmaceutical sectors. Gaelyn Scott leads the team, which includes Ilse du PlessisRowan Forster and Waldo Steyn.

Practice head(s):

Gaelyn Scott

Testimonials

The team has good coverage of trade mark and general IP issues not only for South Africa, but throughout continental Africa as well.

Gaelyn Scott is a very experienced trade mark expert who can advise on matters ranging from prosecution and transactional work to more contentious enforcement matters. She is tenacious in her pursuit of a win for clients.

Key clients

Hilton Hotels

MTN

Unilever

Bloomberg

Parmalat

Ferrero Rocher

Investec Bank

Work highlights

  • Advised South African Airways on its extensive worldwide trade mark portfolio.
  • Acted for Soremartec (Ferrero Rocher) on the management of its brands across the continent.
  • Advised Parmalat on its trade mark portfolios of both the local and the foreign companies, including registering, maintaining and enforcing its trade mark rights in multiple African jurisdictions.

KISCH IP

KISCH IP has a track record advising on trade marks and patents. The firm is widely recognised for its enforcement and disputes expertise. While being fully committed to its home jurisdiction, it has made inroads into cross-border and Africa-wide engagements. Derek Momberg and At van Rooy are leading trade mark and patent attorneys, respectively. Julia Stephens and Andrew Papadopoulos are also notable trade mark attorneys, while Jaco Theunissen is a key name for patent work in the medical devices field.

Von Seidels

Von Seidels has achieved considerable growth over the last decade, particularly in the patent field, but also through a significant portion of trade mark work; the firm is frequently noted for its prosecution expertise. The team has attracted a considerable number of foreign clients and is increasingly active in Africa-wide engagements. In South Africa, the group also advises a number of universities on patent applications. Erik van der Vyver leads the patent group and Christine Strutt heads the trade mark team. Bastiaan Koster, Rowan JosephRalph van Niekerk, Sandra Clelland and Simonne Moodie are also highly rated practitioners.

Practice head(s):

Erik van der Vyver; Christine Strutt

Key clients

Stellenbosch University

University of Cape Town

Webber Wentzel

Webber Wentzel remains noted for commercial and transactional work. Thanks to the firm's illustrious standing in South Africa and the solid reputation of the IP team, it has been able to attract a range of big-name clients and some illustrious engagements. Cape Town-based Leanne Mostert leads the team, which includes Bernadette Versfeld in Johannesburg.

Practice head(s):

Leanne Mostert

Testimonials

The IP team is very diverse with skill-sets ranging from technology to trade marks. They have traditionally upheld international standards of service delivery, but their association with Linklaters serves to further strengthen their international service delivery standards for clients.

In the field of trade marks, they have shown adeptness and the cool heads of experienced practitioners.

Bernadette Versfeld is proactive, very responsive, knowledgeable and clear in her communications. She is certainly my go to IP attorney in South Africa.

Key clients

Southern Pharma

The South African Institute of Architects

Skynamo

Autozone Holdings

Anglo American

Budweiser Budvar

Work highlights

  • Defended AJVH Holdings against claims of trade mark infringement and passing off.
  • Advised Old Mutual plc and Old Mutual Limited on the managed separation of the plc global group.
  • Assisted MTN with various IP structuring, exchange control, and intra-group licensing and services aspects connected to its acquisition of Simfy Africa.

Bouwers Inc

Bouwers Inc is a small intellectual property boutique. The firm's founder Deon Bouwer is a key name for trade mark litigation.

Moore Attorneys

Moore Attorneys is a boutique IP firm with a fine record in trade mark work, including for a number of big-name brands. The firm handles an impressive volume of trade mark applications. Shane Moore is the key name.

Practice head(s):

Shane Moore

Key clients

Cell C

SBV Services

Bridgestone South Africa

Capitalworks Private Equity Advisor

Diageo

Sappi

University of Johannesburg

Work highlights

  • Advised Bridgestone Corporation and Bridgestone South Africa on a major portfolio transfer exercise.
  • Acted for Steyn City on its trade mark filing strategy in South Africa.
  • Advised Hippo Comparative Services on its  trade mark filing strategy in South Africa.

Werksmans Attorneys

Werksmans Attorneys has an established IP practice in South Africa and has achieved further growth in Africa-wide matters. It advises a range of big-name brands and has the backing of the broader firm to offer a rounded service. Janine Hollesen leads the team, with Donvay Wegierski  heading the foreign IP practice.

Practice head(s):

Janine Hollesen

Key clients

Telkom

Pioneer Foods

South African Football Association

South African Rugby Union

Media24

Capitec Bank

Work highlights

  • Acted for Monster Energy in opposing the M Logo mark in the name of Merck in South Africa.
  • Represented Capitec Bank in a domain name complaint filed with the World Intellectual Property Organization under the uniform domain name dispute resolution policy against a third party.
  • Acted for Pepkor Speciality in trade mark infringement and a passing off case.