Review of TRIPS Implementing Legislation - Search

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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 673 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q4/ZAF/1 South Africa European Union 4. We are given to understand that, in an action for the infringement of a South African intellectual property right, the discovery of documents by the opposing parties is limited to "documents and tape recordings relating to any matter in question in such action". Does this mean that a judicial authority presiding in the action would not, in the usual case, have the authority to order the infringer to inform the right holder of the identity of third parties involved in the production and distribution of the infringing goods or services and their channels of distribution (Article 47 of the TRIPS Agreement)?
Your understanding of the legal position in South Africa in regard to discovery of documents is correct. 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. 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. Statutory provisions for Anton Piller-type orders have been enacted in the Counterfeit Goods Act No. 37 of 1997, Section 11. The provisions of Article 47 are not peremptory; Members may provide that judicial authorities will have the authority to order the infringer to provide information regarding the identity of third persons involved. In terms of South African law, a right holder who has a reasonable suspicion that an infringer has information, such as information pertaining to the identity of third parties, which may be relevant to the proceedings in question, could proceed on the basis of an Anton Piller order, either on the basis of our common law or on the basis of Section 11 of the Counterfeit Goods Act, when that is appropriate, to achieve disclosure of the information concerned.
30/04/1999
IP/Q4/ZAF/1 South Africa European Union 5. The Appellate Division of the Supreme Court of South Africa (now the Supreme Court of Appeal) recently laid down, in clear and succinct terms, what an applicant for an Anton Piller order has to establish. This may fairly be referred to as "a common law Anton Piller order". In the Counterfeit Goods Bill, which is currently passing through the South African parliamentary process, relatively elaborate provisions are made for the grant of an Anton Piller order. This, in turn, may fairly be termed "a statutory Anton Piller order". Could the Government of South Africa clarify the following points: - In the light of the availability of a common law Anton Piller order what is the need for a statutory Anton Piller order? - Since the requirements to obtain a common law Anton Piller order appear to be less stringent than a statutory Anton Piller order, would not an applicant in the usual case make an application for a common law Anton Piller order (and not a statutory Anton Piller order)? - Do the requirements of a common law Anton Piller order and the statutory Anton Piller Order comply with Article 50 of the TRIPS Agreement? Please explain.
The South African Courts have traditionally been conservative in their approach to common law Anton Piller orders, and until the recent decision by the Supreme Court of Appeal, differences existed between the approaches followed in the different provincial divisions. The provision of the statutory Anton Piller order within the parameters of the Counterfeit Goods Act brings about certainty in regard to this proceeding in the context of an anti-counterfeiting action, to ensure effective measures to combat the escalating level of counterfeiting activity. In cases which do not fall within the parameters of the Counterfeit Goods Act, an applicant will have to make use of a common law Anton Piller order. In circumstances falling within the parameters of the Counterfeit Goods Act, the applicant can elect to use either the common law or the statutory Anton Piller order. Both the common law and the statutory Anton Piller orders comply substantially with Article 50 of the TRIPS Agreement.
30/04/1999
IP/Q4/ZAF/1 South Africa European Union 6. With regard to cases that involve the infringement of intellectual property, could the Government of South Africa provide data on the number of: - law suits that have been filed including their respective outcome and the average length from the filing of a complaint until the final judgement; - injunctions that have been issued (as defined in Article 44 of the TRIPS Agreement) and explain how such injunctions are being enforced; - provisional measures (as defined in Article 50 of the TRIPS Agreement) that have been granted and the average length to obtain such measures (from the request); - suspensions at the border of counterfeit trademark/pirated copyright goods or in relation to goods where other intellectual property rights are infringed; - criminal cases including the sentences that have been applied; whether they have been executed; and please also explain what kind of infringement of an intellectual property right would be regarded as a violation of criminal law; - seizures and/or destruction of counterfeit trademark and pirated copyright goods.
The data requested in the first part of question 6 is not available in readily accessible form. To assemble the necessary facts and figures would entail the application of resources not available at present.
30/04/1999
IP/Q4/ZAF/1 South Africa European Union Furthermore, could the Government of South Africa explain and give practical examples of: - how the compensation for damages of the infringement of intellectual property rights is calculated (Article 45.1 of the TRIPS Agreement); - what would be regarded as "expenses of the right holder" which have to be reimbursed pursuant to Article 45.2, first half of the first sentence, of the TRIPS Agreement and how they would be calculated; - whether attorney’s fees can be reimbursed and how such fees would be calculated; - whether Article 45.2, second sentence, of the TRIPS Agreement has been implemented in South Africa and how such "damages" would be calculated?
As regards the second part of question 6, the position is as follows: - Damages for infringement will be either actual loss proved to have been sustained, or, at the option of the plaintiff, an amount calculated on the basis of reasonable royalty which would have been payable by a licensee. See Patents Act - Section 65; Copyright Act - Section 24; Trade Marks Act - Section 34; Designs Act - Section 35. - The "expenses of the right holder" would be the actual costs incurred in the course of the legal proceedings on the basis of infringement, being appropriate attorneys' fees and actual disbursements such as the making of copies, payment of counsel's fees, etc. - Attorneys' fees can thus be reimbursed; the amount payable would be based on the applicable High Court tariff. - Article 45.2 is not peremptory. Generally speaking, "profits" or "pre-established damages" in cases of innocent infringement (i.e. where the infringer did not know or had no reasonable ground to know), will not be awarded. See Patents Act - Section 66(1); Copyright Act - Section 24(2); Designs Act - Section 35(6).
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 1. Please indicate the "competent authorities" stipulated in Article 51 of the TRIPS Agreement.
The new Counterfeit Goods Act No. 37 of 1997, which came into force on 1 January 1998, is special legislation to deal with counterfeit goods, bearing counterfeit trademarks or copyright works or marks prohibited under the Merchandise Marks Act, 1941. In terms of the Counterfeit Goods Act an inspectorate is created, inspectors being: - Police officials holding the rank of sergeant or a higher rank; - the Commissioner of Customs and Excise and designated officials in terms of the Customs and Excise Act, 1964; - inspectors appointed by the Minister of Trade and Industry (Sections 1(1) and 22). Inspectors will generally exercise their powers on the basis of a warrant issued by a judge of the High Court or by a magistrate, i.e. a judicial authority (Sections 4 and 6). Section 15 of the Counterfeit Goods Act deals specifically with the detention of counterfeit goods which are being imported into South Africa. The competent authority who must consider and deal with applications in terms of this section, is the Commissioner for Customs and Excise.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 2. Please explain whether "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
The proceedings are judicial proceedings, being either criminal or civil proceedings (Section 9).
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 3. Are there any ways other than the application stipulated in Articles 51 and 52 of the TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder to request the competent authorities to suspend the release of the goods which infringe intellectual property rights or which are suspected to infringe intellectual property rights?
(a) Section 28 of the Copyright Act No. 98 of 1978 provides a mechanism whereby a copyright owner may request the Commissioner for Customs and Excise to treat certain specified goods (being infringing goods) as prohibited goods. (b) Section 113(1)(g) of the Customs and Excise Act No. 91 of 1964 prohibits the importation of reproductions of copyright works which are unlawful under copyright laws. Sections 23(2) and 27(1) of the Copyright Act, 1978 are relevant in this regard.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 4. Please explain what term your country regards as "a reasonable period within which the competent authorities shall inform the applicant whether or not they have accepted the Application" stipulated in Article 52 of the TRIPS Agreement.
The Counterfeit Goods Act does not stipulate a time-period within which an inspector must inform an applicant that the complaint has been accepted and will be acted upon. Section 15(3) provides that the Commissioner of Customs and Excise must consider and deal with an application "without delay".
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 5. Please explain the term during which the Application is effective.
In terms of Section 15(1) the applicant has to specify a period during which detention of the relevant imported goods is to take place. This period may not exceed the period for which the intellectual property right relied upon subsists.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 6. Please explain whether a right holder is obliged to pay any fees to lodge the Application.
No payment of fees is stipulated in the Act, and regulations to deal with practical implementation have not yet been promulgated.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 7. Please indicate provisions of laws and ordinances which prescribe the "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement. And please summarize their contents.
The procedure described below relates to the provisions of the Counterfeit Goods Act. Responsibility for 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.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 8. Please explain the specific procedure, if any, to be applied to the goods which are not evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPS Agreement.
Seized goods have to be returned to a suspect if criminal charges are not laid by the complainant or civil proceedings are 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.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 9. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they fail to suspend the release into free circulation of goods which infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
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.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 10. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they examine goods which infringe intellectual property rights and nevertheless release them into free circulation with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Please see the reply to question 9 above.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 11. Please explain the responsibility that the competent authorities and other related authorities take to the importers when they suspend the release into free circulation of goods which do not infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Please see the reply to question 9 above.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 12. Is the right holder informed of identities of the importers and consignors when the competent authorities "suspend" the goods which infringe on intellectual property rights or which are suspected to infringe intellectual property rights, as well as the case where the right holder is informed of identities of the importers and consignors stipulated in Article 57 of the TRIPS Agreement?
Section 10(1)(d) of the Counterfeit Goods Act provides: that the accused or the defendant or respondent (as the case may be) discloses the source from which those goods, if found to be counterfeit goods, have been obtained, as well as the identity of the persons involved or ostensibly involved in the importation, exportation, manufacture, production or making and distribution of the counterfeit goods and in the channels of distribution of those goods.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 13. Please explain the measures to protect confidential information in the course of the inspection stipulated in Article 57 of the TRIPS Agreement. And please indicate provisions of laws and ordinances which prescribe such measures.
When during a search by an inspector a person claims that any goods, documents, article or item, present contains privileged information and refuses the inspection or removal thereof, the inspector must act in a circumscribed manner. If he is of the opinion that the goods, document, articles or item may be relevant to, and necessary for, the investigation of any complaint or any alleged or suspected act of dealing in counterfeit goods, he must request the Registrar or Deputy Registrar of the High Court having jurisdiction to seize and remove the contentious material for safe custody until the Court has made a ruling on the question of whether or not the information in question is privileged (Section 6(8) of the Counterfeit Goods Act).
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 14. Please explain the procedures of detentions and seizures to be ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
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.
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 15. Please explain the procedures to appeal against any decisions ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
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
30/04/1999
IP/Q4/ZAF/1 South Africa Japan 16. Please explain the basis for calculating the security or equivalent assurance stipulated in Article 53 of the TRIPS Agreement that the competent authorities may require an applicant when they suspend the release into free circulation.
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.
30/04/1999

Page 673 of 677   |   Number of documents : 13533

 
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