Protecting ideas: A review of the major intellectual property laws

South Africa has a well-developed system of intellectual property (IP) laws. Developments in Europe are of significance here, and our legislation and case law follow the European position in many respects. IP rights are enforced by the civil courts, and, except for patents, we do not have a system of specialised courts. The highest body in terms of normal law is the Supreme Court of Appeal, whose judgments create precedent and are binding on all lower courts. It is possible to appeal on constitutional issues to the Constitutional Court. IP rights may thus be limited by the Constitution. The Trade Marks Act and the common law together form the basis of the law relating to trade marks in South Africa. The common law recognises a general delict of unlawful competition, which has a variety of forms, one being passing-off. It also protects trade secrets and know-how. In contrast to some other countries, domain name disputes are dealt with in terms of legislation, not contractual dispute systems.

TRADE MARKS: With respect to trade marks, South Africa follows the Nice Classification of Goods and Services. There is no provision for filing multi-class trade mark applications, therefore a trade mark must be registered separately in each class of interest. South Africa is a signatory to the Paris Convention, and it is therefore possible to claim priority for applications filed in South Africa, provided that they are filed within six months of the filing date of a prior application for the same trade mark in any other convention country.

COPYRIGHT: The Copyright Act provides for the protection of various categories of works, including literary works, musical works, artistic works and computer programs, and copyright will subsist in such works automatically, provided that certain requirements are met. These are that the work must be original, it must exist in material form and the author must be a qualified person (i.e., a South African national or resident, or a national or resident of a country to which the operation of the Copyright Act has been extended, primarily the countries of the Berne Convention).

PATENTS: Protection may be obtained for inventions that are new and non-obvious, and which are capable of use in the fields of trade, industry or agriculture. South Africa is a member of the Paris Convention and is also a signatory to the Patent Cooperation Treaty, which means that the South African Patent Office is fully integrated into conventional international patent registration systems and procedures. South African patents can therefore be used as a basis for extending protection to other territories and, similarly, foreign patents can be extended to South Africa. The law also protects registered designs and plant breeders’ rights.

The IP Rights from Publicly Financed Research and Development Act can affect patents developed through, in particular, joint research with universities. The act deals with the ownership and licensing (termed commercialisation) of IP created with the support of public funding. The act and regulations deal with the state’s powers in relation to the non-commercialisation of IP, sometimes called “walk-in” rights.

LICENSING: Licensing of all types of IP is permitted and is regulated either by statute or by the common law. IP may be licensed on an exclusive, sole or non-exclusive basis. In certain instances, such as in the case of copyright, to be valid, an exclusive licence must be in writing and signed by, or on behalf of, the licensor.

In instances where South African IP is exported and the then foreign-owned IP is licensed back to a South African entity or person in return for payment of a royalty, such an arrangement would be subject to prior approval by the South African Reserve Bank in so far it is regarded as an export of capital and reduces the South African tax base.

Lastly, recent legislation has been promulgated in South Africa to protect traditional knowledge. Specific provision is made for the protection of copyright, designs and trade marks in an indigenous context. The legislation has very wide definitions, and its meaning is still unclear. The adoption of this legislation has also been the cause of much controversy and debate.