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.
