Articles 51 and 55 of the TRIPS Agreement require Members to provide procedures for the suspension by the customs authorities of the release of goods into circulation, where a right holder has valid grounds to suspect that the importation of counterfeit trademark or pirated copyright goods is involved. In South Africa, the Counterfeit Goods Act No. 37 of 1997 provides such procedures. In terms of Section 15 of the Counterfeit Goods Act, the owner of an intellectual property right (defined in Section 1 to include trademark rights and copyright) may apply to the Commissioner (for Customs and Excise) to seize and detain goods which are counterfeit goods featuring the subject matter of that intellectual property right and which are being imported into the Republic (of South Africa). The applicant may furnish the Commissioner with a specimen of the goods that are protected, and sufficient information regarding the subsistence of the intellectual property right and his/her title to that right. The Commissioner must deal with the application without delay, and must grant the application if satisfied on reasonable grounds that the intellectual property right prima facie subsists, that the applicant prima facie is the owner, and that the goods are prima facie protected goods. The Merchandise Marks Act No. 17 of 1941 (as recently amended) also provides certain procedures which are relevant. In Section 1 of the Merchandise Marks Act No. 17 of 1941, the concept "inspector" is defined to include the Commissioner of Customs and Excise and certain of his officials. Inspectors are given the power, when they suspect that an offence in terms of that Act has been committed or is likely to be committed (e.g. a false trade description has been applied to goods; such goods will be sold or let or offered for sale or hire; imported goods will be sold or distributed, which bear the name of a South African manufacturer or trader but which were not produced in South Africa and which do not have an indication of origin), inter alia, to seize articles which have a bearing on the offence. The Customs and Excise Act No. 91 of 1941 also has relevant provisions. Section 113(1)(g) prohibits the importation of unlawful reproductions of copyright works.

Decisions by the Commissioner in terms of Section 15 of the Counterfeit Goods Act will be administrative decisions subject to review in accordance with the principles of administrative law. Furthermore, Section 15(6) provides that, when any member of the customs authorities acts in terms of Section 15(4) to seize and detain the stipulated goods, he/she will be acting as if he/she is exercising the powers of an inspector subject to the provisions of the Counterfeit Goods Act. This includes the requirement that the powers of seizure and detention of goods must (except in certain circumstances) be exercised on the authority of a warrant issued in terms of Section 6 of the Counterfeit Goods Act, namely by any judge of the High Court or by a magistrate. This means that proceedings can be brought by the defending party for such a warrant to be set aside

In terms of Section 15(7) of the Counterfeit Goods Act, the owner of the intellectual property right may be required to furnish security to the Commissioner in the manner and the amount that the Commissioner may require to indemnify the customs authorities against any liability that may be incurred as a consequence of the seizure and detention, and to cover expenses incurred in effecting the seizure and detention.

The Counterfeit Goods Act provides, in Section 8, that counterfeit goods seized by an inspector must be stored and kept in safe custody in a counterfeit goods depot. Section 23 provides that the Minister (of Trade and Industry) may by notice in the Gazette, designate any place to be a counterfeit goods depot, while Section 24 empowers the Minister to make regulations that may be necessary for the proper and effective control, management and administration of a counterfeit goods depot. No such notices or regulations have as yet been published. Where counterfeit goods are to be seized by the Commissioner of Customs and Excise upon entering the country in terms of Section 15 of the Counterfeit Goods Act, this will take place by the customs authorities in performing their functions under the Customs and Excise Act No. 91 of 1964. This later Act provides for the establishment of warehouses, and in Section 23 specifically provides that the Commissioner may allow the storage in such a warehouse of goods the importation or disposal of which is prohibited or restricted under any law. The Customs and Excise Act has extensive provisions dealing with management and administration of such warehouses and the goods stored therein.

Section 10 of the Counterfeit Goods Act has a provision giving effect to the principle of Article 59 of the TRIPS Agreement in regard to re-exportation of counterfeit trademark goods. Section 10(2) places a prohibition, inter alia, on the exportation of imported goods in an unaltered state where the goods, inter alia, bear a trademark or a colourable imitation thereof so as to be calculated to be confused with or taken as being protected goods, unless a court, on goods cause shown, orders otherwise. The Courts have not yet given an interpretation of this section, to indicate what will be regarded as constituting good cause. Section 4 of the Merchandise Marks Act No. 17 of 1941 also has a provision giving effect to the principle regarding re-exportation of counterfeit trademark goods contained in Article 59 of the TRIPS Agreement. Section 14(15) provides that where imported goods, which are destined for exportation, were seized and held by a court to be the subject of a contravention under the Act (e.g. by reason of the application of a false trade description), the Court shall not allow the goods to be exported in an unaltered state, except if it thinks it fit to allow exportation after due regard to the circumstances regarding the offence. This provision was inserted into the Merchandise Marks Act by the Intellectual Property Laws Amendment Act No. 38 of 1997, and has not yet been interpreted by our courts.

The Counterfeit Goods Act No. 37 of 1997 (e.g. Section 15). The Customs and Excise Act No. 91 of 1964 (e.g. Section 23). The Merchandise Marks Act No. 17 of 1941 (e.g. Section 4).

The Counterfeit Goods Act relates to trademark rights, copyright, and rights conferred in terms of Section 15 of the Merchandise Marks Act, for example in regard to any mark, word, letter, etc. to be used in connection with any trade, business, profession, occupation or event or in connection with a trademark or trade description for goods. The Merchandise Marks Act relates to: - false trade description applied to goods themselves or to any covering, label or reel in or with which the goods are sold; - the sale or offering for sale or letting of goods to which a false trade description has been applied; - alterations (such as effacement) of trademarks; - rights conferred in terms of Section 15 of the Act, which rights may for example relate to a mark, word, letter or figure or combinations thereof to be used in connection with any trade, business, profession, occupation or event; - the sale or distribution of imported goods not produced in South Africa but bearing the name of a South African manufacturer or trader without an indication of origin, or bearing a trademark or trade description in an official language of South Africa without an indication of origin; - the unauthorized use of certain emblems, including the coat of arms of South Africa, the title, name, portrait or effigy of the President or Deputy President or a Minister, the reproduction of any monument or relic; - the purchase or sale of any container or closure therefore marked with the owner's name, or any goods contained in such container. The Customs and Excise Act No. 91 of 1964 prohibits (in Section 113(1)(g)) the importation of unlawful reproductions of copyright works.

The information to be supplied by the owner of the intellectual property rights in terms of the Counterfeit Goods Act for the seizure and detention of counterfeit goods being imported, is set out in section 15(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 intellectual property right 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 of 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.

The basis of the damages awarded is the patrimonial loss suffered by the right holder. In deciding the quantum of damages the Court takes into consideration delictual principles as set in South African jurisprudence. The right holder may also claim in lieu of damages, the payment of a reasonable royalty which would have been payable by a voluntary licensee.

The Courts have inherent jurisdiction to grant an order as to costs which is separate from the amount of damages awarded; this would include the attorneys' fees as well as actual disbursements and expenses, such as investigative expenses. A bill of costs has to be taxed (assessed) by the Taxing Master unless the parties agree otherwise.

As set out above in regard to question 23, the amount of damages awarded is based on the actual loss suffered by the right holder; the right holder has to prove the quantum of the loss suffered. Further, the amount of damages to be awarded is within the discretion of the Court taking into account the principles mentioned in question 23.

Section 19 of the Counterfeit Goods Act provides: "(1) Any person convicted of an offence referred to in Section 2(2), will be punishable: (a) in the case of a first conviction, with a fine, in respect of each article or item involved in the particular act of dealing in counterfeit goods to which the offence relates, that may not exceed R 5,000.00 per article or item, or with imprisonment for a period that may not exceed three years, or with both such a fine and such term of imprisonment; (b) in the case of a second or any subsequent conviction, with a fine, in respect of each such article or item, that may not exceed R 10,000.00 per article or item, or with imprisonment for a period that may not exceed five years, or with both such a fine and such term of imprisonment. "(2) Any person convicted of an offence referred to in Section 18, will be punishable with a fine or imprisonment for a period that may not exceed six months. "(3)(a) A court that has convicted a person of an offence contemplated in Section 2(2) must, when considering which penalty to impose, amongst others take into account any risk to human or animal life, health or safety or danger to property (whether movable or immovable) that may arise from the presence or use of the counterfeit goods in question. (b) Without detracting from the discretion that a court in criminal proceedings has with regard to sentencing, a court that has convicted any person of an offence referred to in Section 2(2) may take into account, in mitigation of sentence, any evidence to the effect that such person, fully, truthfully and to the best of his or her ability had disclosed to an inspector who acted against him or her in terms of Section 4(1) or to a member of the South African Police Service who investigated that offence, all information and particulars available to that person in relation to any one or more or all of the following matters (whichever may have been applicable in the circumstances): (i) The source from which the counterfeit goods involved in the commission of the offence, were obtained; (ii) the identity of the persons involved in the importation, exportation, manufacture, production or making of those counterfeit goods; (iii) the identity and if reasonably demanded, the addresses or whereabouts of the persons involved in the distribution of those goods; (iv) the channels for the distribution of those goods. "(4)(a) The Minister may from time to time by notice in the Gazette increase the amounts of the fines mentioned in paragraphs (a) and (b) of subsection (1). (b) That notice must be laid on the table in the National Assembly, for its consideration and approval, within 14 days after the date on which it is published in the Gazette if the National Assembly is then in session or if it is not then in session within 14 days of the commencement of its next session."

Section 231 of the Constitution of the Republic of South Africa, provides: "(1) The negotiating and signing of all international agreements is the responsibility of the national executive. "(2) An international agreement binds the Republic only after it has been approved by resolution in both the National Assembly and the National Council of Provinces, unless it is an agreement referred to in subsection (3). "(3) An international agreement of a technical, administrative or executive nature, or an agreement which does not require either ratification or accession, entered into by the national executive, binds the Republic without approval by the National Assembly and the National Council of Provinces, but must be tabled in the Assembly and the Council within a reasonable time. "(4) Any international agreement becomes law in the Republic when it is enacted into law by national legislation; but a self executing provision of an agreement that has been approved by Parliament is law in the Republic unless it is inconsistent with the Constitution or an Act of Parliament. "(5) The Republic is bound by international agreements which were binding on the Republic when this Constitution took effect."

Currently no provision exists which addresses this issue.

Intellectual property rights can be enforced in South Africa by way of infringement proceedings in a court of law having jurisdiction. The relevant courts having jurisdiction in intellectual property infringement cases are: (a) The various provincial and local divisions of the High Court of South Africa have jurisdiction in cases of trademark, copyright and design infringement. Proceedings in the High Courts are regulated by the Supreme Court Act No. 59 of 1959 and the Rules of the Supreme Court. (b) The Court of the Commissioner of Patents has jurisdiction in cases of patent infringement (Section 8 of Patents Act No. 57 of 1978, Regulations 76-100 of the Patent Regulations). (c) The local and regional Magistrates' Courts of South Africa have jurisdiction in cases of copyright infringement where the quantum of the claim is below R 100,000. However, these "lower" courts are seldom, if ever, used in civil intellectual property cases. The proceedings in the Magistrates' Courts are regulated by the Magistrates' Courts Act No. 32 of 1944. (d) There are no administrative bodies having jurisdiction to enforce intellectual property rights in South Africa.

Procedures in infringement actions NB: Please note that the superior courts in South Africa were previously known as the Supreme Court; they have now been named High Courts. The appeal court is known as the Supreme Court of Appeal. The procedure in infringement proceedings is in accordance with the law and Rules governing procedure in civil cases in the High Court. (a) The procedural steps for copyright and design infringement actions under the relevant High Court Rules are as follows: (1) The action is commenced by the issue of a combined Summons supported by a Power of Attorney and a Resolution (if the Plaintiff is a company). If the Power of Attorney is executed outside the Republic of South Africa it must be legalized. The combined Summons must be in the prescribed form and shall have annexed to it a statement of the material facts relied on by the Plaintiff in support of his claim. (2) Within ten Court days (which excludes Saturdays, Sundays and Public Holidays) from the service of the combined Summons on the Defendant, or within 21 days if the Defendant resides more than 80 kilometres from the nearest railway station, the Defendant must deliver a Notice of Intention to defend. (3) Within 20 Court days after the delivery of the Defendant's Notice of Intention to defend the Defendant must deliver his Plea setting out his defences plus any claim in reconvention. Failure by the Defendant to deliver such Plea and/or claim in reconvention within the prescribed time entitles the Plaintiff thereafter to serve notice on the Defendant requiring the Defendant to Plead within five Court days, failing which the Defendant is barred from pleading. (4) Within 15 Court days after delivery of the Defendant's Plea and/or Claim in Reconvention the Plaintiff must deliver his Replication and/or Plea to the Claim in Reconvention. (5) Within ten Court days from the delivery of the Plaintiff's Replication and/or Plea to the Claim in Reconvention the Defendant must file his Replication in Reconvention. (6) Any further pleadings must be delivered within ten Court days of any preceding pleadings. (7) Provision is made in the Rule for obtaining an interim interdict (i.e. a preliminary injunction) in appropriate cases, applying to have portions thereof struck out where appropriate, or excepting to pleadings. (8) After the close of pleadings there are certain interlocutory proceedings, e.g. Discovery Affidavits in which the parties must disclose all books and documents that may be relevant to the issues involved, inspection of the documents so disclosed, inspection of premises or processes where required, commissions to take evidence abroad, etc. In terms of the Rules of the Supreme Court it is essential that before a Plaintiff's attorney can set the action down for hearing he must arrange a pre-trial conference with the Defendant's attorney with a view to securing curtailment of the duration of the hearing by, e.g. appropriate admissions, disclosure of documents, etc. Before the trial each party must deliver to the other a summary of the opinions of each expert witness he intends to rely on and the reasons for such opinions as well as copies of any plans, diagrams, models, photographs, etc., on which it is proposed to rely in the action. (9) Finally, the matter is brought to trial before the Court at which oral evidence is given by witnesses who are subject to examination, cross-examination and re-examination. The time-limits referred to above can be, and in practice usually are, extended by consent of the parties or, failing such consent, the Court has power, in an appropriate case, to extend the time limits. The relevant provisions are set out in Rule 6 of the Uniform Rules of Court (for applications), and in Rules 17, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29 of the Rules for actions. (b) The procedure in patent infringement proceedings is in accordance with the law governing procedure in civil cases in the Transvaal Provincial Division of the High Court or in default thereof and where there is no relevant provision under the Patents Act No. 57 of 1978, in accordance with a direction given by the Commissioner of Patents. The procedural steps for patent infringement actions under the relevant High Court Rules are as follows: (1) The action is commenced by the issue of a combined Summons supported by a Power of Attorney and a Resolution (if the Plaintiff is a company). If the Power of Attorney is executed outside the Republic of South Africa it must be legalized. The combined summons must be in the prescribed form and shall have annexed to it a statement of the material facts relied on by the Plaintiff in support of his claim. (2) Within ten Court days (which excludes Saturdays, Sundays and Public Holidays) from the service of the combined Summons on the Defendant, or within 20 days if the Defendant resides more than 80 kilometres from the nearest railway station, the Defendant must deliver a Notice of Intention to Defend. (3) Within 20 Court days after the delivery of the Defendant's Notice of Intention to defend the Defendant must deliver his Plea setting out his defences, e.g. non-infringement and invalidity of the patent plus any claim in reconvention e.g. for revocation of the patent. Failure by the Defendant to deliver such Pleas and/or claim in reconvention within the prescribed time entitles the Plaintiff thereafter to serve notice on the Defendant requiring the Defendant to Plead within five court days, failing which the Defendant is barred from pleading. (4) Within 15 Court days after delivery of the Defendant's Plea and/or Claim in Reconvention the Plaintiff must deliver his Replication and/or Plea to the Claim in Reconvention. (5) Within ten days from the delivery of the Plaintiff's Replication and/or Plea to the Claim in Reconvention the Defendant must file his Replication in Reconvention. (6) Any further pleadings must be delivered within ten Court days of any preceding pleadings. (7) Provision is made in the Rules for obtaining an interim interdict (i.e. an interlocutory injunction) in appropriate cases, applying to have portions thereof struck out where appropriate, or excepting to pleadings. (8) After the close of pleadings there are certain interlocutory proceedings, e.g. Discovery Affidavits in which the parties must disclose all books and documents that may be relevant to the issues involved, inspection of the documents so disclosed, inspection of premises or processes where required, commissions to take evidence abroad, etc. In terms of the Rules of the High Court it is essential that before a Plaintiff's attorney can set the action down for hearing he must arrange a pre-trial conference with the Defendant's attorney with a view to securing curtailment of the duration of the hearing by, e.g. appropriate admissions, disclosure of documents, etc. Before the trial each party must deliver to the other a summary of the opinions of each expert witness he intends to rely on and the reasons for such opinions as well as copies of any plans, diagrams, models, photographs, etc., on which it is proposed to rely in the action. (9) Finally, the matter is brought to trial before the Commissioner of Patents at which oral evidence is given by witnesses who are subject to examination, cross examination and re-examination. The time-limits referred to above can be, and in practice usually are, extended by consent of the parties or, failing such consent, the Court has power, in an appropriate case, to extend the time limits. (c) There are generally two types of proceedings that may be instituted in trademark matters before the Court, namely, applications (motion proceedings) and actions (trial proceedings). (1) Applications (motion proceedings) - An application for relief is brought on notice of motion supported by affidavit evidence. - Copies of the notice and all annexes are served on every respondent. - If the respondent does not give timeous notice of any intention to oppose, the applicant may place the matter on the roll for hearing and seek the order on the specified date. - If the respondent intends opposing the application, he or she must file a notice of intention to oppose and then deliver an answering affidavit, if any, together with any supporting documents. - Once the answering affidavit is filed, the applicant may deliver a replying affidavit. - Application is then made for a hearing date and the matter is set down for argument. - If the application cannot properly be decided on affidavit, the Court may dismiss the application or make any appropriate order with a view to ensuring a just and expeditious decision. (2) Actions (trial proceedings) - An action is commenced by the issuing out of a summons and is normally accompanied by particulars of claim which comprise a statement of the material facts relied on by the plaintiff in support of his or her claim. - If the defendant intends to defend the action, he or she must deliver a notice of intention to defend within the prescribed time. - If a foreign defendant is involved, the plaintiff may first find it necessary to attach property in South Africa to found or confirm jurisdiction. The Act makes specific provision for the attachment of registered trademarks for this purpose. - If no notice of intention to defend is delivered, the plaintiff may apply for an order to be granted on an unopposed basis. - After the delivery of a notice of intention to defend, the defendant must deliver a plea setting out its defences and any counter-claim. - Failure by the defendant to deliver a plea within the prescribed time entitles the plaintiff to serve notice on the defendant requiring the defendant to plead within a certain time (notice of bar), failing which the defendant is barred from pleading. - After delivery of the defendant's plea and/or counter-claim the plaintiff may deliver a replication and plea to any counter-claim. - After the delivery of the plaintiff's replication and/or plea to the counter-claim the defendant must file a replication in reconvention. - After the close of pleadings, there are certain procedures, including discovery (in which the parties must disclose all documents and tapes which may be relevant to the issues involved), inspection of the documents so disclosed, inspection of premises or process where required, requests of particulars for trial and commissions to take evidence abroad. - Before the matter is set down for hearing, the plaintiff's attorney must arrange a pre-trial conference with the defendant with a view to securing curtailment of the duration of the hearing. - Before the trial, each party must deliver to the other a summary of the opinions of any expert witnesses on whom it intends to rely and the reasons for such opinions as well as copies of any plans, diagrams, models, photographs, etc. on which it is proposed to rely in the action. - Finally, the matter is brought to trial at which oral evidence is given by witnesses who are subject to examination, cross-examination and re examination. Both parties are then given an opportunity to argue their cases and, having heard the argument, the Court will in due course hand down its judgement.

A foreign party is not required to meet any requirement not applicable to a national or resident of South Africa in order to institute proceedings for enforcement, except that the local party is entitled to ask for a (bank) guarantee that costs will be paid in the event of a cost order against the foreign party.

No specific indemnification provisions against abuse of enforcement procedures exist. However, if a defendant 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.

No fees are charged by judicial officials to file or prosecute legal actions involving intellectual property rights, except for the stamp duty payable on the issue of summons (which is the same for all matters, also those other than intellectual property).