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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.

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Page 675 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 United States of America 9. Article 41.3 also requires that decisions on the merits of a case be based only on evidence in respect of which parties had an opportunity to be heard. Please state, with regard to each type of court and administrative body identified in question 1, what factors may be considered by a judge or administrative official in rendering a decision and cite the legal authorities establishing the basis on which judges and administrative officials may reach decisions.
As indicated in the answer to question 2 above, evidence in motion proceedings is generally by affidavit unless the Court directs otherwise. In actions, evidence is given orally. The evidence of expert witnesses as well as copies of plans, diagrams, etc. have to be made available to the other party before trial. Witnesses who give oral evidence are subject to cross-examination. In coming to a decision, a judge in the first place evaluates the evidence tendered in court, but he may take cognisance of other laws of the country, e.g. the provisions of the Constitution of South Africa.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 10. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial and administrative decisions in intellectual property enforcement proceedings. Please describe what legal limitations, if any, are placed upon the ability of a party to an intellectual property enforcement proceeding to have both procedural rulings and final decisions reviewed by a separate judicial authority, and cite the legal authorities providing for such reviews.
All procedural rulings and final decisions on the merits of South African courts are subject to review and/or appeal, with the exception of temporary interdicts (interlocutory injunctions). The current legal position in South Africa is that an interlocutory injunction (temporary interdict) is not subject to review nor to appeal. It is submitted that this position is not in conflict with Article 41.4, inasmuch as the decision in regard to an interlocutory injunction is not a decision on the merits of a case. An interlocutory injunction is based on a balance of convenience, and the merits of the case are specifically not decided. To succeed with a temporary interdict, the claimant merely has to show, prima facie, that there is a right which is or is about to be infringed, and that the balance of convenience favours the granting of a temporary interdict pending the finalization of the main proceedings. Furthermore, an interlocutory injunction is exactly that, namely a temporary order pending further court action; if such further court action does not follow within a reasonable period, the interlocutory injunction can be discharged. The order normally specifies a return date by which cause must be shown as to why the temporary interdict should not be made permanent, thus creating an opportunity for the respondent to state his case. The system is safeguarded against abuse in that the Court requires to be satisfied that the balance of convenience is in favour of the granting of such an interdict, and in considering this aspect the Court will consider the status and financial position of both parties, and will make the decision on the basis of the least measure of interference with the activities of a party.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 11. Article 42 requires that defendants be notified of judicial and administrative intellectual property enforcement proceedings brought against them. Please describe the procedures followed by each type of court and administrative body identified in question 1 for notifying defending parties regarding proceedings that have been initiated against them, indicate the information provided regarding the proceeding and cite the legal authorities establishing these procedures.
In the case of infringement proceedings, whether by way of application or action, the notice of motion or the combined summons has to be served on every respondent by the applicant/plaintiff. The Court has to be satisfied that proper service took place. Receipt of service is usually endorsed on the original notice of motion/summons under the signature of the respondent or his authorized agent.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 12. Article 42 also requires that parties to intellectual property enforcement proceedings must be able to be represented by counsel and must not be subject to overly burdensome requirements to appear personally. Please describe any limitations under South Africa’s laws on the ability of a party in such a proceeding to be represented by independent legal counsel and any requirements imposed on the party to appear personally in a proceeding. Please cite the legal authorities providing such limitations and imposing such requirements.
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. 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. See also: Section 19(3) Patents Act No. 57 of 1978; Section 13 Designs Act No. 195 of 1993.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 13. Under Article 42, parties are to be entitled to substantiate claims and present relevant evidence. Please describe any limitations under the law of South Africa on a party’s ability to substantiate a claim or to present relevant evidence and cite the legal authority providing such limitations.
There are no limitations as envisaged in this question in the field of intellectual property law. There are, however, certain protective provisions such as Section 67(3) of Patents Act No. 57 of 1978 providing that a person need not disclose secret process information, if it appears to the Commissioner that it would be unreasonable to do so, in cases of an alleged infringing product made by a process for obtaining a new product.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 14. Article 42 requires, with one narrow exception, that there be a means to identify and protect confidential information during judicial and administrative intellectual property enforcement proceedings. Please describe the means provided under the law of South Africa for parties to identify and have protected confidential information required to be presented in order to prove their claims and cite the legal authorities providing for such identification and protection.
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. 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. Section 67 of the Patents Act, 1978, also contains certain provisions regarding non-disclosure of secret processes.15
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 15. Article 43.1 of the TRIPS Agreement requires that judicial and administrative officials be able to order a party to an intellectual property enforcement proceeding to produce relevant evidence in that party’s control identified by the opposing party when the latter party has presented reasonably available evidence in support of its claims. Please describe how and in what circumstances judges and administrative officials may order production of relevant evidence in intellectual property enforcement proceedings and cite the legal authorities providing for such orders.
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, in Section 11.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 16. Information ordered to be produced, referred to in question 15, must be protected if it is confidential. Please describe the means provided under the law of South Africa for protecting such information and cite the legal authority providing for such protection, if those means differ from those described in answer to question 14.
Please see the reply to question 14 above.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 17. Article 43.2 provides that, in the event a party refuses to provide information ordered by the judicial or administrative officials, those officials may be authorized to make preliminary and final determinations adverse to that party. Please describe what sanctions may be imposed on a party that refused to provide ordered information and under what circumstances those sanctions are imposed, citing the legal authority for those sanctions.
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.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 18. Article 44.1 requires that judicial and administrative officials be able to enjoin or otherwise prevent infringing activity by a party, including by preventing the entry of infringing goods into the channels of commerce in their jurisdiction. Please describe authority of the judges and administrative officials identified in question 1 to order parties to stop infringements and to prevent infringing goods from entering the channels of commerce in their jurisdiction immediately after clearance of such goods through customs. In addition, please cite the legal authorities authorizing such actions.
The relevant South African Courts are empowered to give relief in the form of an interdict (injunction) to stop infringement and to prevent infringing products to enter the market and the channels of commerce generally, by prohibiting the sale and/or offering for sale of such products. The Courts can also order the delivery up of infringing products; and in the case of trademark infringement, the removal of the infringing mark from all products, or where this is not possible, the delivery up of such products. See, e.g.: Section 65(3) Patents Act No. 57 of 1978; Section 34(3) Trade Marks Act No. 194 of 1993; Section 24(1) Copyright Act No. 98 of 1978; Section 35(3) Designs Act No. 195 of 1993.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 19. Article 44.2 provides an exception to the requirement in paragraph 1 for government use or use by third parties authorized by the government, limiting the remedy for infringement to payment of adequate remuneration as provided in Article 31(h). Please describe any such limitations on remedies in the laws of South Africa and cite the legal authorities providing for those limitations.
The following provisions in South African intellectual property legislation are relevant to the subject-matter of this question: Patents Act No. 57 of 1978: - Section 4 Use by a Minister of State for public purposes (this Section has not to date been invoked). - Section 55 Compulsory licence in the case of a dependent patent (no record could be found of a successful application under this section). - Section 56 Compulsory licence in case of an abuse of patent rights (no record of successful application). - Section 78 The Minister (of Trade and Industry) may acquire an invention or a patent on behalf of the State (not yet invoked). - Section 79 The Minister of Defence may acquire, on behalf of the State, an invention or patent relating to armaments or defined in the Armaments Development and Production Act, 1968 (not yet invoked). - Section 15C of the Medicines and Related Substances Control Act 101 of 1965: the Minister of Health may determine that certain patent rights shall not apply to certain specified medicines (Act passed but not yet in force). Designs Act No. 195 of 1993: - Section 21 Compulsory licence in the case of an abuse of design rights (not yet invoked). Copyright Act No. 98 of 1978: - Section 45 The Minister (of Trade and Industry) may make regulations to prohibit or authorize the circulation, presentation or exhibition of certain works (not yet invoked). - Section 45A The Minister may make regulations regarding the reproduction or adaptation of certain artistic works (this section is not yet in operation).
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 20. Article 45.1 requires that judicial and administrative officials be able to order an infringer to pay the right holder damages adequate to compensate for the injury caused by the infringement. Please describe the authority of the judges and administrative officials identified in question 1 to order a party found to be infringing to pay the right holder damages adequate to compensate for the injury caused by the infringement. Please explain the factors considered in establishing the amount of the compensation and cite the legal authorities authorizing such compensation orders.
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, these Courts are empowered, in cases of infringement, to order damages to be paid by the infringing party. All four of the Acts 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 provisions (Section 24(3)) for the award of punitive damages. Damages may only be recovered by way of action. The Courts are also authorized to direct that an enquiry into damages is to be held for purposes of determining the amount of any damages or reasonable royalty to be paid.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 21. Article 45.2 requires that judges and administrative officials be authorized to order payment of a right holder's expenses, including legal fees. Please describe the authority of the judges and administrative officials identified in question 1 to order payment of right holders’ expenses, the circumstances under which such an order will be given, the factors considered in establishing the expenses, and cite the legal authorities authorizing such payments.
The Courts have inherent power to grant an order as to costs in favour of the successful litigant such costs generally, being attorneys' fees and disbursements or expenses. These are invariably awarded, in terms of the Rules governing procedure in 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.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 22. Article 46 requires that judges and administrative officials be authorized to order, in certain circumstances, other remedies, including disposal of goods outside commercial channels or destruction of goods and destruction of materials and implements the predominant use of which is the creation of infringing goods. Please describe the additional remedies available under the laws of South Africa, the circumstances in which such authority will be exercised, the factors considered in determining the nature of the remedies provided, and cite the legal authorities providing for such remedies.
The South African Patents Act, Trade Marks Act, Designs Act and Copyright Act provide for the following remedies to be ordered in proceedings for infringement, namely: - interdicts (injunctions); - damages (see the reply to question 20); - delivery-up of infringing products (see the reply to question 18 above). The aforesaid four intellectual property statutes do not expressly provide that the purpose of the order for delivery-up of infringing goods is for the goods to be destroyed.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 23. Article 47 provides that WTO Members may authorize judges and administrative officials to order infringers to identify for right holders third parties involved in the production and distribution of infringing goods or services and their channels of distribution. Please describe any authority judges and administrative officials have under the laws of South Africa to order infringers to identify for right holders third parties involved in the production and distribution of infringing goods or services and their channels of distribution and describe the circumstances in which this authority would be exercised. Please cite the legal authorities providing for such remedies.
South African Courts held that they have inherent jurisdiction, in special ex parte situations, to grant Anton Piller order for specific documents and evidence to be disclosed. In the criminal context, the Counterfeit Goods Act No. 37 of 1997 contains certain provisions regarding disclosure of information by a defendant, including information regarding the identity of the supplier or source of the counterfeit goods in question. This latter Act prescribes certain safeguards to prevent abuse of powers. See in this regard the provisions of Section 5 of the Counterfeit Goods Act. The Counterfeit Goods Act also provides for the granting of an Anton Piller-type order authorizing the search for an attachment of evidence, pending institution of civil proceedings. Such an order may be granted on an ex parte basis. See in this regard Section 11 of the Counterfeit Goods Act.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 24. Article 48.2 permits WTO Members to exempt public authorities and officials from liability from remedies only where their actions were taken or intended in good faith in carrying out their responsibilities under the law. Please explain any exemption provided public authorities and officials from liability for abuse of enforcement procedures, describe the circumstances in which such limitations would not apply, and cite the legal authorities granting such exemptions.
The Counterfeit Goods Act No. 37 of 1997 contains provisions granting certain exemptions to inspectors (as defined). Such an inspector or the State will be liable only in cases of gross negligence or bad faith. See in this regard Section 17.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 25. Articles 50.1 and 50.8 require that judicial and administrative authorities have the authority to order prompt and effective provisional remedies to prevent an infringement of any intellectual property right. With respect to each intellectual property right identified in Article 1.2 of the TRIPS Agreement, please identify the provisional measures available to protect intellectual property rights. Please cite the relevant legal authority establishing those provisional remedies.
No administrative provisional measures nor administrative procedures on the merits are available in South Africa in cases of infringement of intellectual property rights. The following provisional judicial measures are available in respect of all intellectual property rights identified in Article 1.2 of the TRIPS Agreement: (a) the granting of urgent, interim, injunctive relief in cases of intellectual property rights 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; (b) the search for and attachment of evidence, pending institution of civil proceedings, to preserve such evidence relating to infringement of intellectual property rights. This may be granted on an ex parte basis as provided for by Section 11 of the Counterfeit Goods Act, 1997.19 Similarly, in terms of the common law and the inherent powers and jurisdiction of the Courts, similar relief may be granted; (c) discovery of documents and tape recordings before the close of pleadings on good cause shown with the leave of the Court.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 26. Articles 50.1 and 50.8 require that judicial and administrative authorities have the authority to order prompt and effective provisional remedies to preserve relevant evidence in regard to an alleged infringement. Please identify the provisional measures available to preserve relevant evidence in regard to an alleged infringement and cite the relevant legal authority.
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.
30/04/1999
IP/Q4/ZAF/1 South Africa United States of America 27. Articles 50.2 and 50.8 require Members to authorize judicial and administrative authorities to adopt provisional measures inaudita altera parte. With respect to each intellectual property right identified in Article 1.2 of the TRIPS Agreement, please describe briefly the circumstances in which the judicial and administrative authorities are empowered to adopt provisional measures inaudita altera parte and cite the relevant legal authority.
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.
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IP/Q4/ZAF/1 South Africa United States of America 28. Articles 50.2 and 50.8 require that judicial authorities and administrative bodies be authorized to grant provisional remedies when a delay is likely to cause "irreparable harm" to the right holder. Please describe briefly what is required by the authorities identified in answers to questions 25, 26 and 27 to establish "irreparable harm" to the right holder.
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.
30/04/1999

Page 675 of 677   |   Number of documents : 13533

 
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