South Africa: Intellectual Property

This country-specific Q&A provides an overview to Intellectual Property laws and regulations that may occur in South Africa.

  1. What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).

  2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?

  3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?

  4. Which of the intellectual property rights described above are registered rights?

  5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?

  6. How long does the registration procedure usually take?

  7. Do third parties have the right to take part in or comment on the registration process?

  8. What (if any) steps can the applicant take if registration is refused?

  9. What are the current application and renewal fees for each of these intellectual property rights?

  10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?

  11. What are the requirements to assign ownership of each of the intellectual property rights described above?

  12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?

  13. What are the requirements to licence a third party to use each of the intellectual property rights described above?

  14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?

  15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?

  16. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?

  17. What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

  18. What is the length and cost of such procedures?

  19. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

  20. What customs procedures are available to stop the import and/or export of infringing goods?

  21. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.

  22. What options are available to settle intellectual property disputes?

  23. What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?

  24. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

  25. How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?

  26. What defences to infringement are available?

  27. Who can challenge each of the intellectual property rights described above?

  28. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?

  29. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?

  30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?

  31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?

  32. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?