Intellectual property (IP) is an umbrella term that covers copyright, patents, trademarks and designs. The type of IP depends on the subject matter, although there can be some overlap. ‘Ultimately, IP protection is a balance between what the company wants or can protect, versus other factors such as competitive edge, the nature and type of the IP, and financial constraints,’ says Mellissa Susan, attorney at Bouwers.

Herman Blignaut, trademark partner at Spoor & Fisher, says that when securing IP, the most important factor to consider is the subject matter that needs to be protected, which will determine the most appropriate form or forms of IP.

Trademarks, patents and designs need to be registered in order to be afforded statutory rights. Copyright, however, does not need to be registered – protection is automatically secured once certain requirements of the Copyright Act have been complied with. It should also be noted that rights are registered on a country-by-country basis, as there is currently no protection that applies worldwide.

Blignaut says it should also be considered whether the focus is on SA only or whether there are other countries that could be included in the protection programme. If so, these would be dealt with in parallel. While there is no cost to register a copyright, payment is required to register a patent or trademark, and this can be expensive, depending on how broadly they are registered. ‘If you are set on getting a worldwide protection, you could be looking at millions of rands,’ he says.

When registering a trademark, Nolwazi Gcaba, partner and trademark litigation attorney at Adams & Adams, advises that ‘you must ensure that what you wish to register is distinctive. It must not be suggestive of the goods or services for which protection is sought. Consider, for example, a trademark “Apple” for computers. It is not suggestive of such goods. It is distinctive for computers but it would not be so distinctive for fruit. Likewise with the trademark “Castle” for beer – very distinctive for alcohol but not so for houses’.

Susan agrees. ‘Clients often choose descriptive or generic terms as trademarks, which obviously aid in selling a product because consumers immediately know what the product entails. This is, however, not a good choice when one wants to enforce those rights. A coined term or phrase is easier to monopolise but a consumer will not necessarily have a notion of what the product is, forcing the proprietor to spend more on marketing to educate the consumer.’

Gcaba says a trademark availability search must be conducted to ensure that there are no prior trademarks on the register that might pose an obstacle to the use and registration of your proposed mark. ‘You should also conduct internet searches as there may be trademarks that are used but not registered by third parties,’ she adds. ‘The searches may reveal some obstacles but it is possible to find creative ways to bypass these, for example, by seeking consent from the proprietor of an earlier trademark or by offering to buy the trademark.’

According to Susan, when it comes to ensuring that others do not use your IP, unfortunately, in most cases it is not possible or it is extremely difficult to prevent infringement before it happens. ‘However, once infringement takes place, IP proprietors can, in terms of the legis-la-tion and, in some instances, the common law, take action to interdict further infringement and claim damages.’

Blignaut says that, in this regard, it is advisable for people to ‘stay abreast of their competitors’ product and service offerings as well as third-party conduct within the sphere of their trade generally’.

Gcaba concurs, adding that ‘this is why policing is so important’. With trademarks, it is important to object at sight when you see your mark being used without your consent, she says. ‘You could lose your trademark to others or it may become a generic word open for use by all if you allow it to be used incorrectly. For example, aspirin was once a registered trademark but, with incorrect use, everybody referred to painkillers as aspirin, so it is no longer a trademark today.’

If a company becomes aware of possible infringements, it is their prerogative to decide whether or not to take action to stop it. If the company chooses to pursue the matter, the first step is usually to address this with the infringer directly, to see if there is an amicable way to resolve it, or to address it through their attorney.

‘If it ends up with the attorneys, usually a cease-and-desist letter will be sent, informing them of the right holder’s rights and making their demands,’ says Blignaut. ‘They might be asked to remove the product or material from the market, for instance. After this, it’s in the hands of the alleged infringer. If they apologise and say they don’t want to litigate, they can back down and capitulate. Or, they might decide to take the matter on. In this case, the ball is in the hands of the rights holder. The next step is to consider approaching the High Court for an interdict for an infringement of rights. This starts legal proceedings.’

According to Susan, it’s of the utmost importance to formulate a proper enforcement strategy. ‘Companies can often not afford to take action against all infringers and it is frequently necessary to pick one’s battles, taking into consideration market share and financial implications,’ she says. Fortunately, SA has strong, diversified and effective IP laws. ‘South Africa’s IP laws are very relevant,’ says Blignaut. ‘The laws enable people to get registrations that are valid and enforceable, and that you can rely on for a good result.’ The country’s first consolidated IP law was passed in 1916 – the Patents, Designs, Trademarks and Copyright Act 9 of 1916. Since then, IP laws have been regularly revised and updated by the enactment of separate statutes on patents, designs, trademarks and copyright, as well as supplementary legislation.

Blignaut says that the nature of IP across the world is that countries have, through international treaties, sought to harmonise their IP laws. ‘To a large extent there is overlap in different coun-tries’ laws. The same or similar rules apply to trademarks, copyright and patents, for example, from one country to another,’ he says. ‘IP laws are generally pretty well harmonised across the world.’

However, most of SA’s laws have not seen proper updates to keep track of the times and of technological developments, Blignaut says. Therefore, some laws are due for an update. The copyright law, which is currently undergoing amendment, is a case in point. ‘We currently have the Copyright Amendment Bill tabled before Parliament – it hasn’t been officially promulgated yet. I don’t foresee that it will go through in its current form,’ says Blignaut.

Government has also looked at protecting what is referred to as indigenous or traditional knowledge, and there have been amendments to SA’s IP laws to include protection of indigenous knowledge as a form of IP, says Blignaut. ‘This is problematic because the nature of indigenous knowledge doesn’t fit well within IP laws – the subject matter at issue differs greatly.’ Moreover, government is looking to finalise the national IP policy, a guideline of where the country is heading with its IP and its general approach to it. In essence, this will be a tangible policy of what government procedure is on IP, he says.

As far as trademark laws are concerned, SA is in the final stages of joining the Madrid Protocol, an international treaty that enables people to secure international registration through the World Intellectual Property Organisation (WIPO). ‘As a South African company, you would need to register your trademark in South Africa and, once you have the national trademark, you can file another application through WIPO,’ says Blignaut.

‘With this single registration, you can then designate which countries that are also party to the treaty you may want your international mark to extend to.’

By Toni Muir
Image: Gallo/Gettyimages