Unión Europea
Observancia de los derechos de propiedad intelectual
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.