Again there is no provision for administrative authorities to grant remedies to preserve evidence in the case of infringement of intellectual property rights. (a) 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. Discovery will only be ordered after the institution of proceedings and generally only after the close of pleadings. (b) 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. The Court has this authority on the basis of its inherent powers and jurisdiction. (c) In cases of counterfeit goods involving copyright and trademark rights, the Counterfeit Goods Act, 1997 in Section 11 provides statutory powers in Anton Piller-type situations.

Provisional measures inaudita altera parte are provided for by statute in Section 11 of the Counterfeit Goods Act, 1997 (the so-called "Statutory Anton Piller order");22 or may be granted by a court in terms of its inherent powers and jurisdiction (the so-called "common law Anton Piller orders"). The statutory measures in terms of the Counterfeit Goods Act are available in cases where acts of dealing in counterfeit goods are taking place; the common law procedures are not limited to intellectual property rights and can be used generally where there is an apprehension that evidence may be hidden or destroyed. These orders (both statutory and on the basis of the common law) are described in detail in a section from an article by a South African intellectual property lawyer.

In South African law, a clear distinction is drawn between interlocutory and final interdicts/injunctions. The following requirements are generally accepted to apply in order to obtain an interlocutory or interim interdict: (a) a right that is prima facie established although open to some doubt; (b) a well-grounded apprehension of irreparable harm if the interlocutory relief is not granted and the ultimate relief is eventually granted; (c) the balance of convenience must favour the granting of interlocutory relief; and (d) the absence of any other satisfactory remedy. In intellectual property cases, the irreparable harm will generally be economic. The apprehension of irreparable harm must be objectively reasonable.

In the context of the granting of a statutory Anton Piller order in terms of Section 11 of the Counterfeit Goods Act, the Court must be satisfied that; (a) the applicant's right to discovery of documents in conventional proceedings is likely to be frustrated, either by reason of the nature of the counterfeit goods or through other circumstances; or (b) should conventional court procedures be followed, the relevant goods or evidence relating to transactions or dealings with the goods is likely to be destroyed or so altered or placed or disposed of as to effectively preclude the applicant of having access thereto. In the context of the granting of a common law Anton Piller order, the applicant must show that there is a real and well-founded apprehension that the relevant evidence will be hidden or destroyed or in some manner spirited away by the time that the matter comes to the stage of discovery in conventional proceedings. See Shoba v OC, Temporary Police Camp, Wagindrift Dam 1995 (4) SA 1(A) at 15, where judgment was given by Chief Justice Corbett.

For temporary or interim injunctive relief, our courts require the applicant to make out a prima facie case, namely that a prima facie right must be shown to exist and that there is a prospect of success in the claim for principal relief even though such prospect may be considered to be weak. See Ferreira v Levin NO 1995 (2) SA 813 (W) at 832.

Safeguards to protect the legitimate interests of the defendant in such situations include the generally applied requirement that an applicant for interim 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.

Where provisional relief is obtained ex parte/inaudita altera parte on the basis of the common law (for example by way of an Anton Piller order or in the case of urgency), the Court will prescribe, as part of the order, the manner in which the defendant is to be notified. For example, the order may be in the form of a rule nisi calling on the defendant to show cause on the return day why an interim interdict should not remain in force pending the outcome of the principal action. The return day of an ex parte order may be anticipated on 24 hours notice. In the Shoba case (supra), the Court included in its order the following paragraphs: (a) that the applicant's attorney file with this Court an affidavit setting forth the manner in which this order was executed, the portion of the premises inspected and the observations made by the applicant's attorney in the course of such inspection; and that a copy of such affidavit, together with the documents filed in these proceedings and the Court's order be served upon the respondents; (b) that any interested party is given leave to apply to this Court, on not less than 24 hours written notice, for the variation or setting aside of this order or for any other appropriate relief; and to file such affidavits as may be necessary in connection therewith. As regards the statutory Anton Piller order, these aspects are dealt with in Section 11(5) of the Counterfeit Goods Act.

Please see the reply to question 32 above.

Where interlocutory relief is granted, the Courts will usually include in the order that summons in the principal action be issued within a prescribed order. The Courts have the power to impose reasonable conditions when exercising their discretion in granting interim relief, such as a condition that, if the principal action is not instituted or if the applicant fails to prove its allegations in the principal action, it agrees to be liable to the respondent for damages suffered. See Hillman Bros (West Rand) Pty Ltd v Van den Heuvel 1937 WLD 41; Chopra v Sparks Linemas (Pty) Ltd 1973 (4) SA 372 (D); and Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd 1977 (2) SA 221 (C).

Please see the reply to question 34 above.

Please see the reply to question 34 above.

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.

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 further information regarding the implementation of such proceedings. 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 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 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, to 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. In response to specific questions as indicated below, reference is made to specific provisions in the Counterfeit Goods Act.

(a) 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. (b) Section 15 of the Counterfeit Goods Act provides as set out in Annex 3 below.

Please see the reply to question 39 above.

Please see the reply to question 38 above.

The relevant provision of Section 15 of the Counterfeit Goods Act provides of the owner of an intellectual property right to apply to the Commissioner for Customs and Excise to seize and detain counterfeit goods. The Commissioner is obliged by this section to give written notification to the applicant within a reasonable period of time, indicating whether the application has been granted or refused. The remarks concerning the determination of a reasonable period as set out in the answer to question 45 below have reference.

Section 7(4) of the Counterfeit Goods Act provides: "(a) Any person prejudiced by a seizure of goods in terms of Section 4(1), may at any time apply to the Court on notice of motion for a determination that the seized goods are not counterfeit goods and for an order that they be returned to him or her. "(b) The Court may grant or refuse the relief applied for and make such order as it deems just and appropriate in the circumstances, including an order as to the payment of damages and costs, if applicable. "(c) If deemed just and appropriate in the circumstances by a court that has refused the order sought, it may order, where those goods have been seized pursuant to a complaint laid in terms of Section 3(1) that the complainant furnishes security to the applicant in respect of those goods in an amount and manner determined by the Court." Section 15(7) further provides: "The customs authorities will not be obliged to act in terms of subsection (4) unless the owner of the intellectual property rights, the subject-matter of which is alleged to be goods, furnishes to the Commissioner security in the manner and amount that the Commissioner 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 or anything done in relation to goods when acting or purportedly acting under this section and to cover any expenses that may be incurred in effecting the seizure and detention of the goods."

The term "intellectual property right", to which reference is made above, means the rights in respect of a trademark conferred by the Trade Marks Act, 1993, the copyright in any work in terms of the Copyright Act, 1978, or an exclusive right of use in relation to goods conferred by a notice published in terms of Section 15 of the Merchandise Marks Act. This meaning of the term "intellectual property" is narrower than the normal meaning given to the term. "Intellectual property" normally embraces in addition patents and designs. For the purposes of the Act, however, these two forms of intellectual property are not in contention.

There are no legislative time-limits other than that written notice must be given by an inspector to the person from whom counterfeit goods are seized, informing such person of the action taken by the inspector and of the address of the counterfeit goods depot where the goods are kept Section 7(1)(d) of the Counterfeit Goods Act 1997 (Act No. 37 of 1997) provides. In terms of South African common law notice must be given within a reasonable period of time and it is within the discretion of a court before which a matter is heard, upon consideration of the facts and circumstances of each case to determine whether or not the compliance with such time-periods is reasonable or not. "7(1) An inspector who, in exercising his or her powers in terms of Section 4(1) has seized any suspect counterfeit goods, must: (d) by written notice inform the following persons of the action taken by the inspector in terms of Section 4(1) and of the address of the counterfeit goods depot where the seized goods are kept: (i) The person whom those goods were seized; and (ii) also: (aa) the complainant, where the inspector exercised his or her powers in terms of Section 4(1) pursuant to a complaint laid in terms of Section 3(1); or (bb) any person who, in relation to those goods, qualifies in terms of Section 3(1) to be a complainant, but who had not yet so laid a complaint at the time when the inspector exercised those powers on his or her own initiative as contemplated in Section 3(4)."