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.

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.

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.

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.

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.

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.