Checklist of Issues on Enforcement under TRIPS Art. 63.2 - View details of the document

South Africa

(a) Civil judicial procedures and remedies

The relevant courts having jurisdiction over IPR infringement cases are: 1.1 the various provincial and local divisions of the High Court of South Africa (in cases of trademark, copyright and design infringement); 1.2 the Court of the Commissioner of Patents (in cases of patent infringement); 1.3 the local and regional Magistrates Courts of South Africa (seldom, if ever, used in civil IPR cases).
2.1 Generally, the proprietor or owner of the IPR has locus standi to assert IPRs. In certain instances, cessionaries, exclusive licensees and registered users have locus standi. 2.2 Parties may personally represent themselves in the High Court or may be represented by an attorney (having the right of appearance) or an advocate of the High Court of South Africa. 2.3 There is no requirement for mandatory personal appearance. If the right holder needs to give essential evidence in a trial action, a personal appearance in that sense is necessary.
3.1 Discovery and production of documents and tape recordings in the High Court of South Africa, and in the Court of the Commissioner of Patents, is dealt with in Rule 35 of the Uniform Rules of Court (see Annex 1). Discovery will only be ordered after the institution of proceedings and generally only after the close of pleadings. 3.2 In special cases, (such as the "Anton Piller" situation), the court may order, on an ex parte basis, that certain evidence be taken into the possession of a sheriff for its preservation pending the institution of civil proceedings.
4.1 The protection of confidential information brought forward as evidence may be ordered by the High Court or the Court and the Commissioner of Patents in terms of their inherent powers. 4.2 The litigant wishing to protect such information may make application to the court (if agreement with the opposing party is not possible) for appropriate directions. Experience indicates that the courts are generally sympathetic to such approaches in appropriate circumstances. 4.3 Section 67 of the Patents Act, 1978, also contains certain provisions regarding non-disclosure of secret process (see Annex 2).
In terms of the Patents Act, 1978 (as amended), the Trade Marks Act, 1993 (as amended), the Copyright Act, 1978 (as amended) and the Designs Act, 1993 (as amended), and the Rules governing procedure in the High Court and the Court of the Commissioner of Patents, various remedies may be ordered in proceedings instituted either by way of action or by way of application: - injunctions (interdicts) : these can be awarded on an interim basis on application or finally (by way of application or action); - damages: all the Acts aforesaid make provision for the award of damages (the normal basis being the actual patrimonial loss suffered) or, in lieu of damages, the payment of a reasonable royalty which would have been payable by a licensee for the use of the IPR concerned. The Copyright Act also contains provision for the award of punitive damages. These may only be recovered by way of action; - attorneys fees and costs: these are invariably awarded, in terms of the Rules governing procedure the Courts, to the successful litigant on a scale prescribed by tariff. In certain cases, to express its displeasure at the manner in which a litigant has conducted itself, the Court may award punitive legal costs on a higher scale; - the aforesaid Acts also make provision for delivery-up of infringing material/goods; - none of the Acts referred to above exclusively sets out the remedies which may be awarded. The Courts have inherent power to grant other or alternative relief, depending upon the circumstances of each matter.
South African judicial authorities are very hesitant to order persons to disclose, verbally or by way of a written statement, particular information (as opposed to making available, through discovery or in special ex parte situations, specific documents and evidence). Such a practice in civil proceedings is generally unconstitutional in terms of the Constitution of South Africa. In the criminal context, the Counterfeit Goods Act, 1997, contains certain provisions regarding disclosure of information by a defendant.
No specific indemnification provisions exist. However, if a defendant (including a public authority or official) is wrongfully sued or joined in civil proceedings in the Courts, it will be able to set the proceedings aside and will be awarded its legal costs (on the punitive scale if appropriate) and any damages which it might have suffered as a result. Furthermore, in certain instances, the Court may require a plaintiff to furnish security for costs and/or damages.
8.1 No specific legal provisions exist governing the length or cost of legal proceedings. The Rules of Court set out clear time limits for the various stages of civil proceedings. Extensions may be agreed to, inter partes, or the Court might grant extensions or condone late service in appropriate circumstances which will lengthen the duration of the proceedings. 8.2 The essential time periods are set out in Rule 6 of the Uniform Rules of Court (for applications) and Rules 17, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29 of the Rules for actions (see Annex 3). No statistical data is available on the actual duration of proceedings or their cost.

(b) Administrative procedures and remedies

No specific administrative procedures on the merits are available in IPR situations in South Africa.

(a) Judicial measures

Provisional measures include the following: 10.1 the granting of urgent, interim, injunctive relief in cases of IPR infringement where urgency exists. The authority to grant such relief stems from the inherent powers of the High Court and the Court of the Commissioner of Patents; 10.2 the search for and attachment of evidence, pending institution of civil proceedings, to preserve such evidence relating to infringement of IPR. This may be granted on an ex parte basis as provided for by Section 11 of the Counterfeit Goods Act, 1997 (see Annex 4). Similarly, in terms of the common law and the inherent powers and jurisdiction of the Courts, similar relief may be granted; 10.3 discovery of documents and tape recording before the close of pleadings on good cause shown with the leave of the Court.
The circumstances as set out in Section 11(3) of the Counterfeit Goods Act, 1997 referred to above.
12.1 In the case of interim injunctive relief, the procedure is an urgent or ordinary application to Court, supported by affidavit evidence, which is served on the Respondent. In the case of the "Anton Piller" type relief, application is also made to Court, without service on the Respondent. 12.2 Provided the court is satisfied that the matter is urgent and that the "balance of convenience" favours the applicant, urgent interim relief will be ordered. 12.3 No particular time limits are prescribed for urgent matters, the Courts' willingness or otherwise to grant urgent relief depending on the level of urgency involved. 12.4 The maintenance in force of provisional measures will be ensured by the Court as breach of any order will be regarded as criminal contempt of court and can result in imprisonment. 12.5 Safeguards to protect the legitimate interests of the defendant in such situations include the generally applied requirement that an applicant for such relief furnish security for costs and/or damages. Furthermore, in the case of proceedings in terms of Section 11 of the Counterfeit Goods Act, 1997 (and the equivalent common law proceedings) a defendant (respondent) is entitled to anticipate the return day of any order granted by the Court on 24 hours notice to have the order set aside.
See answer to question 8 above.

(b) Administrative measures

No administrative provisional measures exist.
Goods which are infringing copies in terms of a registered trademark or copyright can be suspended by the customs authorities. Apart from goods which involve infringements of intellectual property rights other than counterfeit trademark or pirated copyright goods, it is possible to apply to the Commissioner of Customs and Excise for the confiscation of goods which embody a mark, the making or application to goods of which has been declared prohibited in terms of section 15 of the Merchandise Marks Act, 17, 1941. This section provides for the prohibition of the use and/or application to goods of a mark which has been declared prohibited by the Minister of Trade and Industry following an application by the proprietor of such mark. There is no specific prohibition or exclusion in respect of goods emanating from another member of a customs union or goods in transit or de minimis imports. In respect of goods which embody works of copyright, it is possible that such goods although placed on the market in another country by or with the consent of the right holder, may be subject to confiscation where such right holder has ceded his copyright to the goods or the packaging thereof to a South African company licensee/distributor. In other words, so-called grey goods may in certain circumstances be suspended by the customs authorities. Our Copyright Act provides a mechanism whereby a local licensee or distributor could take cession of the copyright in a work/goods which embody copyright, and thereby prohibit the importation into South Africa of such goods, even though emanating from the true manufacturer thereof. The legal question in such instances is whether the manufacture of these goods in South Africa would have constituted an infringement of the copyright therein. The border provisions are specifically designed to curb the importation into South Africa of counterfeit goods, however these provisions are equally applicable in respect of exports in the sense that if same are located they could be confiscated as well.
The procedure described below relates to the provisions of the Counterfeit Goods Act. The responsibility of the border enforcement of intellectual property rights is borne by the Commissioner of Customs and Excise. An applicant needs to supply the Commissioner of Customs and Excise with either a specimen of the protected goods bearing the intellectual property rights sought to be protected or sufficient information from which the essential physical and other distinctive features may be ascertained; sufficient information and particulars as to the subsistence and extent of the intellectual property right as well as the title to the right in question. However the Commissioner may only confiscate such goods for a period not extending beyond the last day of the period for which the intellectual property right in question subsists. The Commissioner is not obliged to confiscate offending goods unless he is furnished with the necessary security in a manner and amount he may require to indemnify the customs authorities and their members against any liability that may be incurred pursuant to the seizure and detention of goods. No specific indemnification is conferred upon the importer and owner of goods which have been suspended. However, where such suspension takes place at the instigation of a complainant any person suffering injury or prejudice because of the suspension of goods alleged to be counterfeit goods, or any action taken by an inspector in effecting this seizure is entitled to claim compensation from the complainant. Compensation may only be claimed from the Commissioner if he or his officials have been grossly negligent in the seizure of the goods or in their detention or storage, or where such person acted in bad faith in performing his duties. The complainant is entitled to a copy of any statement taken down or any other document for evidence procured by a customs inspector in the exercise of his powers of search, seizure and detention. A complainant or suspect is entitled to inspect any goods seized by the Commissioner. Further information in regard to the provisions of the new Counterfeit Goods Act can be obtained from the text of an article by a South African intellectual property lawyer, shortly to be published in a South African legal journal (see Annex 5).
In terms of the Counterfeit Goods Act, an application for the seizure of offending goods by an Inspector/Commissioner is a simple and short administrative procedure. The Counterfeit Goods Act only came into effect on 1 January 1998 and there is accordingly no data that is available which would provide an indication of the actual duration and cost of such proceedings. However given the fact that the entire procedure is essentially an administrative and simple one, it is not anticipated that the costs would be substantial. Seized goods have to be returned to a suspect if criminal charges are not laid by the complainant or civil proceedings not instituted by a complainant within three (3) days of being notified of such seizure. If the criminal charge is laid, the goods will be returned to the suspect if the state does not inform the suspect by written notice of its intention to institute a criminal prosecution against him for having committed an offence of dealing in counterfeit goods, within ten (10) days of notice of seizure of goods from the inspector.
The Commissioner is empowered to act on his own initiative in relation to any act or conduct believed or suspected to be an act of dealing in counterfeit goods. When the Commissioner or one of his officials has acted on his own initiative, he must, however, procure a complainant who has some interest in the goods, failing which the goods must be released.
An inspector has the authority to enter upon any premises, search for and confiscate any counterfeit goods. Before exercising such powers, the inspector has to satisfy himself that the complainant or person laying the charge is prima facie entitled to do so, and that the goods claimed to be "protected goods" are prima facie protected goods and that the intellectual property rights the subject of which is alleged to have been applied to the offending goods, prima facie subsists; and that the suspicion on which the complaint is based appears to be reasonable in the circumstances.
The lower/Magisitrate courts and the High Court have jurisdiction in respect of criminal acts involving infringement of intellectual property rights.
Criminal procedures and penalties are available in the case of copyright infringement. Section 27 of the Copyright Act reads as follows: "27. (1) Any person who at a time when copyright subsists in a work, without the authority of the owner of the copyright: (a) makes for sale or hire; (b) sells or lets for hire or by way of trade offers or exposes for sale or hire; (c) by way of trade exhibits in public; (d) imports into the Republic otherwise than for his private or domestic use; (e) distributes for purposes of trade; or (f) distributes for any other purposes to such an extent that the owner of the copyright is prejudicially affected, articles which he knows to be infringed copies of the work, shall be guilty of an offence. (2) Any person who at a time when copyright subsists in a work makes or has in his possession a plate knowing that it is to be used for making infringing copies of the work, shall be guilty of an offence. (3) Any person who causes a literary or musical work to be performed in public knowing that copyright subsists in the work and that performance constitutes an infringement of the copyright, shall be guilty of an offence. (4) Any person who causes a broadcast to be rebroadcast or transmitted in a diffusion service knowing that copyright subsists in the broadcast and that such broadcast or transmission constitutes an infringement of the copyright, shall be guilty of an offence. (5) Any person who causes programme-carrying signals to be distributed by a distributor for whom they were not intended knowing that copyright subsists in the signals and that such distribution constitutes an infringement of the copyright, shall be guilty of an offence. (6) A person convicted of an offence under this section shall be liable: (a) in the case of a first conviction, to a fine not exceeding five thousand rand or to imprisonment for a period not exceeding three years or to both such fine and such imprisonment, for each article to which the offence relates; (b) in any other case, to a fine not exceeding ten thousand rand or to imprisonment for a period not exceeding five years or to both such fine and such imprisonment, for each article to which the offence relates."
Any inspector, i.e. any person so appointed in terms of the Counterfeit Goods Act; a police official; Commissioner of Customs and Excise may initiate criminal proceedings. Any of these officers may act on their own initiative as well as in response to a complaint from a person entitled to lay such a complaint. However, where an officer has acted of his own initiative, he must procure a complainant otherwise the goods must be released.
In terms of the Counterfeit Goods Act, private persons do have standing to initiate criminal proceedings. The Act grants such right to any person having an interest in the protected goods, either as an owner/licensee of the intellectual property rights; importer; exporter/distributor and any authorised agent or attorney of such person.
Conviction on a charge of criminal copyright infringement can lead to the imposition of both imprisonment and monetary fines. In the case of a first offence, the Copyright Act imposes a maximum prison sentence of three years or a penalty of R 5000.00, or both for each infringing article; in the case of a subsequent conviction these maxima are increased to five years imprisonment and R 10 000.00 per infringing article.
It is difficult to provide an indication of the length and cost of criminal proceedings. However in the light of the fact that the criminal proceedings are conducted by the State, i.e. the prosecution and the investigation thereof, there should be minimal cost to the intellectual property owner beyond the simple lodging of a complaint and any attendance at court that may be necessary. The practice of accepting admission of guilt fines is also a means of curtailing any criminal proceedings that may ensue. As indicated above, our Counterfeit Goods Act only came into effect on 1 January 1998 and there is accordingly no available data on which to base an opinion regarding the actual duration of such proceedings and their cost. It is not believed, however, that such proceedings will be unduly protracted and costly.