KISCH IP is a comprehensive specialist intellectual property firm whose services include advising on and assisting with registration and enforcement of patents, trade marks and copyright. Over the last 145 years, KISCH IP has developed extensive knowledge and experience of the various legal systems and structures throughout Africa. It safeguards the intellectual property rights of all clients, from start- up companies to multinationals, not only in South Africa, but throughout Africa and across the globe. KISCH IP prides itself on a highly personalised service and unique offering in a competitive industry, accomplished by a group of greatly skilled attorneys and support staff with exceptional knowledge and expertise.
As the COVID-19 pandemic spreads across the globe, companies are scrambling to find a cure and be the first to own patent rights to a vaccine against the virus. In South Africa, the Patents Act does not define an invention but rather lists a number of exclusions as to what could constitute a patentable invention. In particular, the act specifies that a scientific discovery is not an invention, which raises the question of whether the genetic sequence of COVID-19 could be patented in South Africa.
The Copyright Act defines a 'computer program' as a set of instructions fixed or stored in any manner and which, when used directly in a computer, directs its operation to bring about a result. From this definition, it is apparent that source code forms the subject matter of copyright protection as a computer program. However, the owner of the copyright in a computer program cannot object if a third party mimics the functionality of the computer program, provided that the third party had no access to its source code.
Trademark applications are examined by the Office of the Registrar of Trademarks approximately eight to 10 months after their date of application. This article discusses several possible conditions that examiners often prescribe for accepting trademark applications and which applicants must therefore consider before filing.
A trademark will not be registered, or can be removed from the register, if it is inherently deceptive or likely to deceive or cause confusion, contrary to law, against good morals or likely to offend anyone. This article provides insight into the contrary to law provision, particularly insofar as it relates to the controversial discussion regarding the partial legalisation of cannabis in South Africa and its impact on trademark law.
Copycat products imported into South Africa often replicate well-known brands. In such cases, an analysis must be undertaken to determine whether the owner of the legitimate well-known brand can sue based on various grounds. In this respect, although word marks are often seen as the most important because they are a brand's primary name, from an enforceability perspective, filing a part mark can help to avoid ambiguity.
Patent protection of living organisms – and the substances derived therefrom – has long been an area of confusion and controversy in South Africa. However, there has been a recent move towards clearer boundaries regarding what constitutes patentable subject matter in relation to living things.
What should a company do when its distributor terminates their supply and distribution contract stating that it is more economical for it to acquire the products from another company? If the first company has a registered patent for the products that the other company is manufacturing, it can institute infringement proceedings. However, the question then becomes against whom should it institute these proceedings: the distributor or the company infringing its patent?
Professional and amateur bakers are often inspired by the extravagant and intricately designed cakes shown on TV shows. However, this begs the question of whether bakers can reproduce these cakes (or at least try to) without getting into trouble. Perhaps surprisingly, the answer is probably no, as these creations may be subject to copyright protection. Therefore, as with all copyright infringement, it is important to be cautious when taking inspiration from other people's creations.
Many corporates and start-ups that enlist third-party graphic designers to create logos or corporate identities during a rebrand are unaware of the legal implications of contracting third parties and thus often find themselves in costly and time-consuming litigation. This is because, under South African law, a third-party graphic designer commissioned to design a corporate's logo will own the copyright in said work. To avoid this situation, a logo must be assigned from a third-party graphic designer to the corporation or start-up immediately.
Two IT entrepreneurs recently applied for an interdict to prevent an asset management company from using (ie, infringing) their invention. The case has raised many questions regarding the validity of certain patents, including what protections are afforded to entrepreneurs. Young entrepreneurs in particular are encouraged to follow this case earnestly to ensure that they are well acquainted with South African patent law and thus able to protect their inventions.
Business owners often fail to conduct trademark availability searches before they register their company name at the Companies and Intellectual Property Commission (CIPC). The CIPC considers only identical or confusingly similar company names that are contained on the company names register (and not those that are contained on the trademarks register) to be potential blocks to registration. Therefore, company names that proceed to registration may infringe on trademark rights as set out in the Companies Act.
In an age where business is conducted online, trademarks are commercialised through websites and social media pages and consumers want to deal with businesses online instead of face to face, a business' virtual address is of the utmost importance if it wants to drive traffic to its website and conclude commercial transactions online. So, what happens if a third party registers a domain name that incorporates an existing trademark? How can trademark owners begin to take action and enforce their rights?
According to the Copyright Act, for copyright to subsist in a work, the work must be original and reduced to material form. However, if ideas and innovation are the result of the shared lived experience of the common person, how can it be determined whether a work is 'original' as defined in, for example, the Copyright Act? In order to be original, a work need not be innovative or new, but rather the result of the author's own skill, time and effort expended in creating the work.
South Africa has seen a dramatic rise in entrepreneurial activity, with many seeking to launch new products in the marketplace. However, with the success of a product comes the risk of the idea being copied and advantage being taken of the already established route to market, thereby affecting the original product's sales and brand. Therefore, any party that creates or legitimately distributes a product that they believe will be well received must take the appropriate steps to protect it.
A granted patent is a highly lucrative commercial tool in the hands of the patent applicant. However, inventors are not necessarily entitled to apply for a patent, especially in employment contexts. Inventors are therefore advised to consult with a patent attorney when they are uncertain whether an invention falls within the scope and course of their employment. It is further advisable to enter into negotiations with employers regarding compensation for the invention.
Patenting inventions is notoriously expensive; however, the benefits of having exclusive rights over an invention far exceed any initial patenting costs. The problem remains that a decision on whether to patent an invention must often be made long before the invention's commercial potential can be judged. As such, it is often difficult to know what to patent.
The Designs Act (195/1993) gives the proprietor of a registered design control over it for a limited period. This control is not aimed at protecting an underlying concept, but rather at the appearance of a product embodying the design. This article discusses (among other things) proprietor rights, the difference between aesthetic and functional designs and the costs involved in registering a design.
Many celebrities extend their brands by venturing into various industries, such as Bonang Matheba who recently launched her own range of sparkling wine. While these endeavours can work well, they also create opportunities for individuals to infringe on the IP rights embedded in celebrities' respective ventures. As such, there are a number of IP rights that celebrities can use to maintain control over their brands and regulate how they are used by others.
South Africa has no plant patent system, as the Patents Act states that a patent will not be granted for any variety of plant. Therefore, new plant varieties are protected exclusively under the Plant Breeders' Rights Act. However, genetically modified plants could be patentable subject matter under the Patents Act, as they are not strictly classed as new varieties of plant.
An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention. However, when considering the patenting of a life sciences invention in South Africa, a number of questions should be addressed in relation to, among other things, the invention's novelty, inventiveness and usefulness.
The Counterfeit Goods Act was proclaimed to enforce and protect IP rights holders against counterfeiting. The act enables certain IP rights holders and other persons with an interest in protected goods – including licensees, importers, exporters, distributors and duly authorised attorneys and agents – to act speedily and efficiently against persons involved in counterfeiting on either a criminal or civil level.
South Africa has significant exchange control regulations in place that restrict and require approval for payments in international IP licensing relationships. Typically, if an IP right in issue has been commercialised or if its commercialisation is imminent, exchange control requires an appropriately motivated valuation substantiating the price to be furnished.
A patent grants the holder an exclusive right or monopoly to exclude third parties from exploiting the patented invention for a limited period in a specific territory. This article discusses the nuances of South African law in this regard, including with regard to patentable inventions, patent longevity and the requirements for patent specifications.
South Africa has no specific legislation governing trade secrets or know-how, although they can be effectively protected under common law. Parties will often enter into agreements when transferring trade secrets or know-how between each other for any purpose. These agreements expressly protect the use and handling of information and set out the indemnities in respect of its loss or misuse.
Trademarks are a company's most valuable asset. Over time, they can appreciate in value and as a company's reputation grows, so too will the value of its trademarks. This article provides an overview of South Africa's trademark legislation and serves as a useful guide on, among other things, the trademark application procedure, buying and selling trademarks and company or close corporation name protection.
Under South African statute, the owner of copyright in a work is given the exclusive right to perform certain specified acts in respect of that work or to authorise others to do so, thus preventing unauthorised persons from performing those acts. However, only certain specified categories of work defined in the Copyright Act are eligible for copyright protection.
Crowdsourcing can be an exciting and cost-effective way for businesses not only to keep up with the latest consumer trends and preferences, but also to maintain a competitive edge in their existing market and beyond. However, ideas crowdsourcing may also expose businesses to IP risks. An idea or concept that is not properly managed may cause more harm than good to product and services R&D efforts. Therefore, it is crucial to have proper IP protection in place before undertaking crowdsourcing activities.
The Constitutional Court's recent judgment decriminalising the private use of cannabis has garnered significant attention in South Africa. As predicted, the judgment has encouraged a number of existing and potential companies to create a brand for their business in order to grow and distribute cannabis in South Africa. Unfortunately, most of these businesses must delay their plans for their brand's trademark application – although possibly not for long.
South Africa is an attractive launch pad for many international companies when it comes to the protection and enforcement of intellectual property for their services or products that they wish to share with Africa. Even more attractive is South Africa's simple, quick and affordable patent system. There is no patent opposition in South Africa and the validity of a patent can be challenged only post-grant by way of the court system.
Proprietors that are interested in registering a shape or container mark should be aware of the kind of protection that a specific IP act affords them and ensure that they layer their rights in order to have the best protection as well as protection in perpetuity. The most important question for proprietors in this regard is whether they intend to use the shape for a short or prolonged period.
When a student is studying or planning to study at a university in South Africa, it is important that they understand their rights as an IP creator during that time. Many students, especially undergraduates, will argue that they do not participate in research and development in any manner and that intellectual property is merely a module for law students. However, all students may be IP creators without being aware of it.
Patent professionals often wonder whether to patent an invention or keep it confidential and hope that a third party does not copy it. As patents are a powerful commercial asset which may be licensed, sold, assigned or form the subject matter of a hypothec, the risk of having an invention reverse-engineered and freely copied must be carefully weighed against the controlled disclosure of the invention and the monopoly which issues from a granted patent.
In order to build a brand, one of the most important steps is to register a trademark. The first step is to conduct a search of the Trademarks Register to ensure that the trademark does not infringe registered rights. Provided that the results of this clearance search are favourable, the next step is to file an application for registration. However, this is not the final step, as action can be taken for trademark infringement only once the trademark has been registered.
Graffiti is generally no longer considered to be a work of vandalism or an act of destruction of public property. Instead, it has become a marketable commodity, with some fashion labels and major corporations even using it in their advertising campaigns. However, graffiti's legal status as art has not been established, which begs the question of whether it can be protected by copyright and has raised a number of issues concerning its commercial use.
Rights holders often threaten to enforce their rights against others as a scare tactic while knowing that actually enforcing them would not be that simple. A prime example of this is when rights holders threaten third parties with a patent or design infringement action despite knowing that their patent or design is not necessarily valid or that the third party has a valid excuse for the alleged infringement. Fortunately, in South Africa aggrieved parties can defend themselves against these so-called 'infringement bullies'.
The Copyright Act does not require registration in order to acquire copyright for a particular work. Instead, copyright subsists automatically once a work has been completed, provided that certain requirements have been met. For example, a work must be original and in writing or a material form. In addition, the author must have been a qualified person when the work or a substantial part thereof was created.
A business's intellectual capital, particularly its patent portfolio, is one of many factors which should be thoroughly evaluated prior to entering into a licensing agreement or undertaking a merger or acquisition. While every commercial transaction is unique, during such an evaluation, a number of matters should be considered in view of the Patents Act.
The so-called 'fourth industrial revolution' is in full swing. Fields such as artificial intelligence and additive manufacturing are no longer a thing of the future, but rather an increasing part of everyday life in the form of smart devices, driverless cars and automated assistants. However, it is unclear whether South African IP law is equipped to keep up with the rapid technological developments driving this revolution.
Patent applications may be filed in the names of multiple joint inventors or co-inventors. All cited inventors must have contributed to the invention, although not necessarily in equal parts. To date, the South African courts have not had to deal with the question of what such a contribution entails, but it is generally considered that each contribution must consist of an inventive step which is not merely imparting knowledge that is known in the art.
Tattoos are becoming increasingly common and tattoo parlours now offer customers a broad spectrum of designs to choose from or the option to request a custom design. One interesting question that arises in this context is whether a tattooed person owns the copyright in their tattoo. Unless the copyright in the tattoo was assigned in writing, the answer is no.
For musicians, securing the protection of and ownership in their work is as important as the work's conception. In order to avoid costly mistakes, musicians should consult a suitably skilled attorney from the inception of their musical works so that sufficient measures can be taken to ensure that any agreements into which they enter are fair and that the ownership of their works remains vested in them, as the author.
The cost of obtaining a patent may seem exorbitant for individual entrepreneurs or start-ups, but IP protection may be critical to their success. Patent attorneys' fees are often comparably higher than those of other attorneys – so why pay a patent attorney to file a patent application?
A saga spanning more than five years finally came to an end when all disputes between the Agricultural Research Council (ARC) and the South African and Animal Improvement Association were settled. Underpinning the conclusion of this saga is a healthy dose of respect for copyright – the unregistrable, often forgotten, yet mighty IP right. The ARC was vindicated in the settlement and its contribution to livestock improvement over many decades was finally given the recognition that it deserves.
IP attorneys frequently hear from clients that want to copyright their ideas. However, copyright protection extends only to the material expression of an idea and not the idea, concept, procedure or method itself. This distinction between ideas and expressions has been the cause of much debate and even confusion; some authors argue that an idea cannot exist independently of its material expression, while others insist that the two are distinct.
The increase of internet usage on mobile smartphones has resulted in more than two-thirds of South Africa's population having access to social media. While social media can be regarded as a vital tool for marketing goods and services, many brand owners fail to identify its use as an area of concern for the sale of counterfeit goods online. With much more anonymity and far less red tape, counterfeiters are exploiting social media platforms as a tool for reaching unsuspecting consumers.
In a recent appeal against a decision to uphold an opposition against the registration of the trademark PEPPAMATES in view of the registered trademark PEPPADEW, the Supreme Court of Appeal had to consider when a descriptive mark is not a descriptive mark. The Supreme Court of Appeal's judgment has confirmed that where the prefix or first element of a word is in common use, the suffix or last element can be the distinctive element for trademark purposes.
Apps have become increasingly popular owing to users' desire to stay in touch with rapidly developing technology-driven content and services dissemination. They have been created to satisfy just about any need, from gaming to fitness, transport to live updates and shopping to socialising – whatever you require is out there at the tap of a button. However, before releasing an app, IP considerations must be taken into account.
The Johannesburg High Court recently had to decide whether transacting parties shared joint ownership of the copyright subsisting in a database of donors for a charity event organised by one of the parties. This case should have IP owners questioning where the ownership in the copyright subsisting in any original and protectable work that has arisen in the course of a partnership or joint venture truly lies.
As online consumer confidence grows in South Africa, the online market is becoming an increasingly attractive space for counterfeiters and fraudsters. Counterfeiting not only affects consumers and brand owners, but can also weaken a country's economy and impact its ability to attract foreign investment. However, consumers have the antidote to counterfeiting and, as such, must make sure to use it.
In recent years, the South African craft beer industry has grown rapidly. Larger commercial beer companies have been heavily affected by this shift in the market and have thus started to acquire craft breweries. In order to prevent the term 'craft beer' from becoming diluted in the near future, many remaining craft breweries feel that the market should be completely transparent. As such, it is surely only a matter of time before South Africa adopts a certification process to protect the nature of 'true' craft beer.
In order to protect trade secrets, companies should, among other things, require that anyone exposed to trade secrets sign a non-disclosure agreement. Where this party is an employee, a restraint of trade agreement may also be used. However, the courts are reluctant to enforce excessively onerous restraint of trade agreements, as these restrict employees' rights to practise their trade and make a living.
South Africa has an abundance of natural resources and, as a result, a large proportion of patent applications are filed covering a process or apparatus used in the production of a product. In terms of patent law, there is no substantive difference between the patentability requirements for a patent for a product or a patent for a process. However, there are important differences between product and process patents when it comes to enforcement.
Micro-organisms are fast becoming a focus area in South African patent practice. The reason for this is not based on a resurgence of the amount of biological inventions relating to the use of micro-organisms, but rather the complex legislative framework that must be negotiated in order to ensure the validity of a South African patent based on micro-organisms indigenous to the country.
Registered trademarks have often been considered the only way to protect logos. However, since the inclusion of Class 32 in Schedule 3 of the Design Regulations, logos are increasingly being protected as both trademarks and registered designs. The protection afforded by each is different, but not contradicting, and registering a logo as a design right can have many advantages.
One of the downfalls of parallel importation is that owners and manufacturers do not have proper control over what the parallel importer does with the brand and product. This therefore raises the question of whether parallel importation is lawful in South Africa. Case law suggests that imports which have been altered could constitute trademark infringement and, by extension, counterfeit products.
The almost infinite nature of trademarks is the reason why iconic characters, such as Batman and Wonder Woman, will almost certainly never enter the public domain. A trademark registration gives the rights holder the exclusive right to use the trademark and prevents the unauthorised use by a third party of not only an identical or confusingly similar trademark, but also a company, close corporation, business, trading or domain name.
The Liquor Products Act, which governs and regulates the labelling of wine products, includes specific regulations and a labelling guide which prescribe what can be incorporated on a wine label. Trademarks constitute the name of a product and are therefore subject to Section 12 of the act. As such, the name of the wine or the trademark must not be misleading. How this is applied and enforced in practice may be tricky, as many wines have interesting names.
The Copyright Amendment Bill was first published for public comment in 2015 and was predominantly met with a large amount of criticism. Two years later, a revised bill has been tabled in Parliament. While a number of previous issues have been addressed, the bill's drafters have retained and even created a number of new problems, which must be addressed before the bill is suitable for adoption.
The manufacturer of a new craft beer may use an interesting name and a creative logo, but does this mean that its brand is protected? If the manufacturer does not protect its brand, another party will likely try to obtain the IP rights – especially if the brand increases in popularity. A clash will undoubtedly result, which could be avoided by the manufacturer securing trademark protection for its product name and logo in good time.
It is safe to assume that almost everyone in the world knows that Ivanka Trump is the name of US President Donald Trump's daughter. Following reports that a number of companies have filed applications to register the trademark IVANKA, the question has arisen as to whether there is any legal provision preventing such a registration. On the face of it, there is nothing to prevent a third party from doing so in South Africa, even though Trump herself is using and has registered the name elsewhere.
Patent attorneys are frequently confronted with inventors who believe that they have created a viable perpetual motion machine, none of which have thus far succeeded in disproving the laws of thermodynamics. Section 36 of the Patents Act (57/1978) provides for this eventuality, stating that the registrar will refuse any application that is frivolous on the basis of it claiming as an invention "anything obviously contrary to well established natural laws".
In order for a trademark to be registrable under the Trademark Act, it must be capable of distinguishing the goods or services of the party in respect of which it is registered or proposed to be registered from the goods or services of another. If it loses this ability or function, it can no longer act as a trademark. As such, trademark owners must strive to save their trademark from 'genericide' – that is, from becoming generic and losing all rights that may have been developed at great cost and effort.
Scientists and patent lawyers have long disagreed over whether DNA is a patentable invention or a mere discovery. The Patents Act states that a patent shall not be granted "for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process". However, there is no significant South African case law that facilitates an understanding of this provision or directly addresses DNA patenting.
Patent parasites beware! Supreme Court of Appeal finds that anti-parasitic treatment infringes patentSouth Africa | 23 January 2017
The Supreme Court of Appeal recently found that Cipla Vet (Pty) Ltd had infringed the patent for Frontline Plus – an anti-parasitic treatment for domestic animals. Cipla relied heavily on its expert witness, who professed that the effect of the interchangeable roles of the constituent elements of the claimed anti-parasitic formulation were confusing. However, the court disagreed and held that the dual functions of the constituent elements of the patent claim did not affect its clarity.
An individual may file a trademark in his or her own name, as opposed to in the name of a company. In such cases, the asset should – as is the case with immovable or movable property – be specified in the individual's will and appropriately bequeathed to a nominated third party. This will ensure streamlined succession planning, particularly where the trademark is a core asset of the business and its affiliated brand value.
While dealing with multiple infringers on social media may make rights holders feel hopeless or angry, a player that simply lies down or attacks without strategising will rarely win a game of dodgeball. The best tool for enforcing a trademark right on social media is a registration certificate or at least proof of a pending application. However, a registration certificate is not always enough and may even be unhelpful.
A licence under a patent may be defined as a negative covenant not to sue for infringement. A patent licence is thus one way of avoiding a suit for infringement. If a patent holder refuses to grant a licence to a generic company on reasonable terms, the generic company can apply for a compulsory licence according to the Patents Act, provided that certain prescribed provisions are met.
The protection and commercialisation of genetic resources, indigenous knowledge and indigenous cultural expressions have come to the fore internationally during the past 20 or so years. South Africa has responded by publishing the Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill 2016, which seeks to introduce a sui generis approach to the legislative protection and commercialisation of indigenous knowledge systems.
In the internet and digital media age, it is possible to find information on any topic at the click of a mouse, including recipes. Unlike in some jurisdictions, South African copyright law contains no specific provisions relating to whether recipes are copyrightable works, and the courts and IP governing authorities have established no principles or guidelines in this regard.
Patent strategies are vital for businesses and a balance must be found between cost-effectiveness and the highest possible level of protection. It is often advantageous to file a divisional patent application in order to pursue protection in a more targeted and comprehensive manner. To obtain a higher degree of protection, applicants must have a clear understanding of the optimal timeframe for filing a divisional application and claiming amendments to their parent application.
It is often assumed that aesthetic creations that also have a functional element and are to be manufactured using a so-called 'industrial process' cannot be protected under the Designs Act or the Copyright Act, the latter of which includes an exception for articles that have a primarily utilitarian purpose. However, according to jurisprudence, it is the purpose of the article and not the article itself which must have a primarily utilitarian purpose for the exception to apply.
From a South African law perspective, the person who can claim to be the good-faith owner of a trademark is the person who appropriated, originated or acquired the mark. In applying this principle in the context of a band name, in most cases it may be impossible to attribute ownership to a single band member, as the founding band members may be jointly responsible for conceiving the name, in which case they would jointly own the rights to the name.
The South African craft beer scene has exploded in recent times, but brewers often fail to protect the look, feel and overall brand identity of their products, to obtain the only statutory monopoly legally available to them and to trademark their new brands. Where brewers have taken the plunge and decided to create a crafted product, they should take efforts to protect it.
At present, the wildlife sector is concerned about the poaching of highly valuable species and fears that the number of species being poached is rapidly increasing. Increased activity in the field of exotic wild breeding and auctioning has created a new platform for new trademarks and, alongside that, the possibility of increased poaching or the abuse of trademarks.
The innovator and manufacturer of a new technical concept or innovation benefit sometimes not in monetary terms, but rather in terms of reputation. Unfortunately, on occasion an innovator struggles to obtain recognition and reward, and must turn to the courts for assistance. The Constitutional Court recently ruled in such a dispute.
South Africa has the largest pharmaceutical products market in Africa, with patentability being the economic driver for research and innovation. However, applicants are often unfamiliar with the position of second medical uses, method of treatment claims and Swiss-type claims in South Africa due to the significant differences in the applicable legislation compared to other jurisdictions such as Europe and the United States.
Social media has been buzzing over the tussle between Australian pop icon Kylie Minogue and US television personality Kylie Jenner regarding trademark rights in the name 'Kylie'. The dispute raises two interesting questions in the context of South African law: can a person's name be registered as a trademark, and what would happen if the KYLIE dispute came before the South African courts?
Copyright is an IP right which enjoys global recognition, but which is often overlooked by business owners in their hurry to register patents, designs and trademarks. Unlike other forms of intellectual property, generally copyright need not be registered in order to be enforceable, and in South Africa no procedure exists for its registration.
A recent Supreme Court of Appeal decision confirms that failure to assert rights as soon as third-party conduct impinges on them allows such third parties to acquire vested rights. It shows further that obtaining a trademark registration while simultaneously acquiescing in the establishment of competing third-party rights will be of no avail, and will be regarded by the courts as sharp practice.
In recent years there has been a staggering rise in the number of mobile applications ('apps') that are available for download in leading app stores, and this trend shows no sign of slowing down any time soon. The question that all developers face is whether it is possible to protect the underlying concept(s) of a newly developed app – or any other computer program – and if so, how.