The Counterfeit Goods Act relates to trademark rights, copyright, and rights conferred in terms of Section 15 of the Merchandise Marks Act, for example in regard to any mark, word, letter, etc. to be used in connection with any trade, business, profession, occupation or event or in connection with a trademark or trade description for goods. The Merchandise Marks Act relates to: - false trade description applied to goods themselves or to any covering, label or reel in or with which the goods are sold; - the sale or offering for sale or letting of goods to which a false trade description has been applied; - alterations (such as effacement) of trademarks; - rights conferred in terms of Section 15 of the Act, which rights may for example relate to a mark, word, letter or figure or combinations thereof to be used in connection with any trade, business, profession, occupation or event; - the sale or distribution of imported goods not produced in South Africa but bearing the name of a South African manufacturer or trader without an indication of origin, or bearing a trademark or trade description in an official language of South Africa without an indication of origin; - the unauthorized use of certain emblems, including the coat of arms of South Africa, the title, name, portrait or effigy of the President or Deputy President or a Minister, the reproduction of any monument or relic; - the purchase or sale of any container or closure therefore marked with the owner's name, or any goods contained in such container. The Customs and Excise Act No. 91 of 1964 prohibits (in Section 113(1)(g)) the importation of unlawful reproductions of copyright works.

The information to be supplied by the owner of the intellectual property rights in terms of the Counterfeit Goods Act for the seizure and detention of counterfeit goods being imported, is set out in section 15(2).

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, various remedies may be ordered in proceedings instituted either by way of action or by way of application: injunctions (interdicts): these can be awarded on an interim basis on application or finally (by way of application or action); damages: all the Acts aforesaid 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 provision for the award of punitive damages. These may only be recovered by way of action; attorneys' fees and costs: these are invariably awarded, in terms of the Rules governing procedure of 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 aforesaid Acts also make provision for delivery up of infringing material/goods; none of the Acts referred to above exclusively sets out the remedies which may be awarded. The Courts have inherent power to grant other or alternative relief, depending upon the circumstances of each matter.

The basis of the damages awarded is the patrimonial loss suffered by the right holder. In deciding the quantum of damages the Court takes into consideration delictual principles as set in South African jurisprudence. The right holder may also claim in lieu of damages, the payment of a reasonable royalty which would have been payable by a voluntary licensee.

The Courts have inherent jurisdiction to grant an order as to costs which is separate from the amount of damages awarded; this would include the attorneys' fees as well as actual disbursements and expenses, such as investigative expenses. A bill of costs has to be taxed (assessed) by the Taxing Master unless the parties agree otherwise.

As set out above in regard to question 23, the amount of damages awarded is based on the actual loss suffered by the right holder; the right holder has to prove the quantum of the loss suffered. Further, the amount of damages to be awarded is within the discretion of the Court taking into account the principles mentioned in question 23.

Section 19 of the Counterfeit Goods Act provides: "(1) Any person convicted of an offence referred to in Section 2(2), will be punishable: (a) in the case of a first conviction, with a fine, in respect of each article or item involved in the particular act of dealing in counterfeit goods to which the offence relates, that may not exceed R 5,000.00 per article or item, or with imprisonment for a period that may not exceed three years, or with both such a fine and such term of imprisonment; (b) in the case of a second or any subsequent conviction, with a fine, in respect of each such article or item, that may not exceed R 10,000.00 per article or item, or with imprisonment for a period that may not exceed five years, or with both such a fine and such term of imprisonment. "(2) Any person convicted of an offence referred to in Section 18, will be punishable with a fine or imprisonment for a period that may not exceed six months. "(3)(a) A court that has convicted a person of an offence contemplated in Section 2(2) must, when considering which penalty to impose, amongst others take into account any risk to human or animal life, health or safety or danger to property (whether movable or immovable) that may arise from the presence or use of the counterfeit goods in question. (b) Without detracting from the discretion that a court in criminal proceedings has with regard to sentencing, a court that has convicted any person of an offence referred to in Section 2(2) may take into account, in mitigation of sentence, any evidence to the effect that such person, fully, truthfully and to the best of his or her ability had disclosed to an inspector who acted against him or her in terms of Section 4(1) or to a member of the South African Police Service who investigated that offence, all information and particulars available to that person in relation to any one or more or all of the following matters (whichever may have been applicable in the circumstances): (i) The source from which the counterfeit goods involved in the commission of the offence, were obtained; (ii) the identity of the persons involved in the importation, exportation, manufacture, production or making of those counterfeit goods; (iii) the identity and if reasonably demanded, the addresses or whereabouts of the persons involved in the distribution of those goods; (iv) the channels for the distribution of those goods. "(4)(a) The Minister may from time to time by notice in the Gazette increase the amounts of the fines mentioned in paragraphs (a) and (b) of subsection (1). (b) That notice must be laid on the table in the National Assembly, for its consideration and approval, within 14 days after the date on which it is published in the Gazette if the National Assembly is then in session or if it is not then in session within 14 days of the commencement of its next session."

Section 231 of the Constitution of the Republic of South Africa, provides: "(1) The negotiating and signing of all international agreements is the responsibility of the national executive. "(2) An international agreement binds the Republic only after it has been approved by resolution in both the National Assembly and the National Council of Provinces, unless it is an agreement referred to in subsection (3). "(3) An international agreement of a technical, administrative or executive nature, or an agreement which does not require either ratification or accession, entered into by the national executive, binds the Republic without approval by the National Assembly and the National Council of Provinces, but must be tabled in the Assembly and the Council within a reasonable time. "(4) Any international agreement becomes law in the Republic when it is enacted into law by national legislation; but a self executing provision of an agreement that has been approved by Parliament is law in the Republic unless it is inconsistent with the Constitution or an Act of Parliament. "(5) The Republic is bound by international agreements which were binding on the Republic when this Constitution took effect."

Currently no provision exists which addresses this issue.

Article 41 of the TRIPS Agreement requires, in Article 41.4, that there shall be an opportunity for review, inter alia, in respect of at least the legal aspects of initial judicial decisions on the merits of a case. In reply to the specific question as formulated, it is confirmed that 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, inter alia, 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.

There is, at the present time, a small backlog of decisions by the Registrar of Trade Marks, namely seven outstanding, only one of which has been outstanding for a substantial period of time. This is due to a shortage of staff, and an unexpected escalation in the number of trademark cases filed, giving rise to a considerable increase in the number of trademark hearings before the Registrar of Trade Marks. However, it should be borne in mind that the Trade Marks Act provides (e.g. in Sections 24(1), 26 and 27) that the applicant has an option to elect whether to bring the proceedings before the Registrar, or before the Court. This means that, in many cases, the delay currently experienced in regard to matters being heard by the Registrar, can in fact be avoided by the applicant by bringing the proceedings before the Court (i.e. the High Court). In terms of Section 59 of the Trade Marks Act, where proceedings in terms of certain specified sections are pending before the Registrar, the Registrar may in his discretion refer the proceedings to the Court, he must refer to the proceedings to the Court on written application of all the parties concerned. This provision creates a mechanism whereby parties who require expeditious decisions could approach the High Court rather than the Registrar.

Courts in South Africa have an inherent jurisdiction to grant an order as to costs in favour of a successful litigant, and such costs would normally include attorneys' fees and disbursements or expenses. The expenses, payment of which may be ordered by the Court, would be taxed expenses, i.e. expenses permitted in terms of the tariff applicable in the High Court. The sum so ordered to be paid will be based on what is allowed by the relevant High Court tariff; this may not include all actual expenses, but rather those which are reasonable and are permitted in the circumstances. Generally speaking, experts' fees will be recovered; however, travel and accommodation expenses will generally not.

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.

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.

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.

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).

The following table indicates the stages at which cases in US Federal courts involving copyrights, patents, and trademarks were terminated for the twelve months ending 30 June 1997. [Part of the response is in Table format] The data indicate that the vast majority of cases are resolved through settlement before action begins or during the discovery phase. Discovery provides each side with information allowing it to evaluate its position and the likelihood of success if it pursues action on the merits of the case. Resolution in this manner is desirable and, since it comes about as a result of decisions of the parties themselves, justice is served.

There is no absolute obligation for a right owner to appear in court and testify to demonstrate the existence of a particular form of intellectual property or of its ownership. Other evidence, including documents, affidavits, the testimony of other parties etc., can often be substituted for personal appearances by the right owner. US law does contain some "proof facilitation provisions". Copyrights: See 17 U.S.C. § 410 under which a copyright certificate of registration made before or within five years after first publication constitutes prima facie evidence of the validity of the copyright and of the facts stated in the certificate, including the name of the copyright claimant. Trademarks: See 15 U.S.C. § 1057(b) under which a trademark certificate of registration on the principal register serves as prima facie evidence of validity of the registered mark and of the registrant’s ownership of the mark. Patents: See 35 U.S.C. § 282 under which patents are presumed to be valid. Integrated Circuit Layout-Designs: See 17 U.S.C. § 908(f) under which the certificate of registration of a mask work constitutes prima facie evidence of the facts stated in the certificate, including the name of the claimant. Trade Secrets: There is no presumption in relation to trade secrets since the existence of a trade secret is a matter of proof.

It is not completely clear what is meant by "a charge" being laid. We interpret it to mean a criminal charge or indictment has been made against the person whose property is being seized. Section 509 of the Copyright Act, 17 U.S.C. § 509, provides for the seizure and forfeiture of infringing copies and articles of infringement used in criminal copyright infringement. The seizures are performed by agents, officials or persons authorized by the US Attorney General. These procedures can be instituted upon the government's showing of probable cause; a criminal indictment or criminal conviction is not required.

The US Department of Justice enforces the criminal provisions of US intellectual property laws. It deals with all enforcement of federal criminal laws, not just those dealing with intellectual property, but it does have specialists within the Department who deal with violations involving intellectual property.