An Overview of Intellectual Property Protection in South Africa
Introduction
Intellectual property (“IP“) is a category of property that includes intangible creations of the human intellect. IP rights protect works or creations that are tangible i.e. only those ideas that are documented or executed are protected under the distinct categories of IP. Undocumented and/or unexecuted ideas or thoughts are not protected.
IP law confers and protects particular rights on the creators or owners of innovative and creative works. It protects the creations of the mind, such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce.
Practical use of IP
IP law is a means by which you own your business identity, technology, works of authorship, trademarks, slogans, trade secrets, and any other practical expression of the ideas that drives your business forward. IP is a means through which you build brand identity and protect it against unauthorised use by third parties. A valid legal protection is necessary to ensure that the creator (or his or her successors-in-title) will have the legal right to prevent others from making unauthorised use of the IP to the detriment of the true owner, so that the true owner and his or her successors will enjoy the commercial and other advantages arising from the IP.
Categories of IP
The categories of IP are copyrights, patents, trademarks, designs and/ or trade secrets. Each category has its unique set of requirements for the conferring of protection, which largely depends on the product or invention.
Copyright
Copyright may be described as those rights which vest in a qualified author of an original work. Legal copyright protection protects creative output such at literary works, musical, or artistic work, or sound recording, cinematograph film, computer program, broadcasts, programme-carrying signals, and published editions. A person owns the copyright the moment they create an original creative work that falls within the category of copyright, you do not have to register the copyright in order to enjoy protection, unless it is a cinematograph film which needs to be registered to be protected. The duration of copyright is limited and once the copyright expires the work falls into the public domain.The term of protection for copyright is 50 years from the end of the year in which the work was first made or in which the author dies or is presumed to have died.
Trademarks
The Trade Marks Act, 194 of 1993 defines “mark” as:
“Any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”.
A function of a trademark is to distinguish goods and services associated with the proprietor of the mark from similar goods and services not associated with the proprietor. Trademark laws protect symbols, company names, logos, and slogans as part of a business marketing strategy and identity. In general, trademark protection lasts as long as the protected material is used in commerce. A trademark that is in use and is well-known enjoys protection even prior to registration, however, all other trademarks must be registered in order to enjoy protection.
Trademarks enjoy protection against passing-off. Passing-off can be defined as a representation by one person that his business or product is that of another, or that it is associated with that of another. It is established when there is a reasonable likelihood that members of the public in the marketplace looking for that type of business, goods or services may be confused into believing that the business, goods or services of A are those of B or are associated with those of B even if they are not identical.
Trademarks may be registered for periods of 10 years. After the first period, that registration may be renewed for another 10 years, with unlimited renewals available afterward.
Patents
Patents are a set of rights or title to a particular invention that excludes others, for a set period, from the commercial use, making, distributing, or selling your invention without your permission. The Patents Act, 57 of 1978 defines an “invention” as an innovative creation which involves an inventive step, and which is capable of being used or applied in trade, industry or agriculture. Patent law rewards those who make some substantial invention which adds to our knowledge and provides a new way of doing something, or that offers a new technical solution to a problem.
Patented inventions include unique products, like machines and other equipment, and chemical compositions. An inventor who wishes to protect their new invention can do so by filing for a patent with the new online patent filing system GlobalIPCo. The protection is renewed annually for a limited period of 20 years.
Designs
Design protection in South Africa is awarded based on the article appearance and not the underlying invention of the article. Design protection is cheaper than patent protection and is often used in combination with trademarks, patents, and copyright to gain maximum protection for an article against infringement from another party. A registerable design is the creation of a pattern, shape, configuration and/or ornamentation, as applied to an article which gives rise to features of the article. There are two types of designs that one can register for: an aesthetic design and a functional design. An aesthetic design has a unique shape, configuration or ornamentation that appeals to the eye. A functional design has a shape or configuration that is necessitated by its function. It is necessary to apply for each separately.
A designer must register their designs to be given the monopoly in it for a fixed period, at the expiration of which, it passes into the public domain. An aesthetic design is legally protected for 15 years whilst a functional design is protected for 10 years from the date on which the application was lodged with GlobalIPCo online design filing system or, if claimed, from the convention priority date or from the release date, whichever date is earlier, subject to the payment of the prescribed renewal fees. No extension of either term is possible.
Although both patents and designs rights offer protection, they work to protect very different aspects of a new invention. Patent rights protect the function, method or the workings of a thing. Design protects the appearance of a thing. In other words, patents protect ideas and concepts, whereas registered designs protect the aesthetic qualities of a certain product or item. For example, a patent can be for the unique function of a fan and a design can be obtained regarding its shape and look. This way, the fan will be protected in its function as well as its design. You can register for both patent and design protection for the same product or item in order to acquire protection for different features of the same product or item.
Trade Secrets
Trade secrets are a type of IP that include formulas, practices, processes, designs, instruments, patterns, or compilations of the information that have economic value because they are not generally known or readily ascertainable by others and which the owner takes reasonable measures to keep secret. South Africa does not have specific legislation governing trade secrets. Unlike other forms of IP, trade secrets are often described as a do-it-yourself form of protection. There is no registration with a government or regulatory authority and the basis of protection relies on your ability to keep the information confidential. The protection of a trade secret only lasts for as long as the secret is kept confidential. Once it is made available to the public, the protection ends, and the business loses its legal recourse. One way of protecting trade secrets from misappropriation, is by incorporating confidentiality and restraint of trade clauses in all employment contracts and service contracts.
Conclusion
IP law and protecting your IP rights are crucial for protecting your brand identity against dilution and unauthorised use by third parties. At Mota Africa, we have a team of experts who will assist you to protect your IP rights.
by :
Precious Mothoa
A Candidate Legal Practitioner at Mota Africa
Your partner for Law, Tax and Intellectual Property.