It is important for business owners to understand that most of your products, goods, brands, technologies, logos and creative works are protected by one of the three types of Intellectual Property Law: copyright, trade mark or patent.

By knowing what type of intellectual property rights you own, you can take the necessary legal steps to protect these rights. Unlike tangible property, it is easy to forget about the existence of intellectual property rights and this can lead to financial losses and disputes for business owners.

Trade mark

A trade mark is usually registered over a name, logo, slogan or phrase which is used to distinguish your product or service from competitors in the market.  To protect your name, logo, etc., and to ensure no-one else can use it or a similar mark to it, you need to register it as a trade mark. Registered trade marks are protected under the Trade Marks Act 194 of 1993.

In South Africa, a trade mark can be registered with the Commission for Companies and Intellectual Property (CIPC). There is a fee payable for each trade mark registered and for each class in which a trade mark is registered.

You must submit a separate trade mark application for each class of goods or services for which the trade mark will be used. There is a complete list of classes on the CIPC website. For example, if you manufacture and sell cars, you must submit two trade mark applications:

  • One in class 12 for the manufacturing of motor vehicles; and
  • One in class 35 for the sale of motor vehicles.

Once the trade mark is registered, limited to the goods/services in which you trade, for example on a logo, no one else can use that logo or a mark like it in South Africa.

It is also important that you do a search of the trade mark register before embarking on an application to ensure that no other similar trademarks are already registered for the same or similar goods/services. If there is a similar trademark registered, the application will, in all likelihood, be unsuccessful.

Once a trade mark is registered, it will also be recorded in the trade marks register. Registered trade marks must be renewed with the CIPC every 10 years or they will lapse. Further, it is important to remember that if you do not use your registered trademark, your registration could be at risk from competitors who wish to use it. A competitor can bring an application to have your trade mark removed from the trade mark register.

If someone infringes your trade mark, you can apply for an interdict to force them to refrain from doing so, an order that they deliver up the products containing the mark or claim damages if their use of your trade mark has caused you financial harm.

Unlike infringements of registered trade marks, trade mark infringements of unregistered “trade marks” can only be defended by using the common law passing-off action, which provides limited protection.

Copyright

Copyright is a set of exclusive rights obtainable by the creator of an original work. Copyright includes, but is not limited to, the right to reproduce, publish, broadcast, make adaptions, or import the work.

In South Africa, copyright is regulated by the Copyright Act 98 of 1978. Works that may have copyright protection in South Africa include literary works, musical works, broadcasts, sound recordings, artworks, and computer programs. A copyright is granted for a period of around 50 years depending on what type of work it is. It cannot be renewed.

Unlike other types of intellectual property rights, copyright does not have to be physically registered. It is an automatic right that the creator of the work obtains once the requirements set out in the Copyright Act are met. These requirements include: sufficient effort or skill has been expended on making the work to give it a new and original character and the work has been written down, recorded or otherwise reduced to a material form.

A common misconception is that you can have copyright in ideas. Ideas cannot be protected by copyright. The idea must be expressed in a material form such as a book or painting for it to be protected.

If anyone imports an article (to which someone else has a copyright) into South Africa for a purpose other than private or domestic use, sells or lets the article, you can apply for an interdict, delivery up and claim damages.

Patents

A patent is an exclusive intellectual property right granted to the inventor of an innovative product, a new process or a new technical solution to a problem.

According to the Patents Act 57 of 1978, a patent can be granted for any invention that:

  1. is new or novel; and
  2. is non-obvious or contains an inventive step.

It must be capable of being used or applied in trade and industry or agriculture and must not be specifically excluded from protection as a patent.

The ‘patent’ refers specifically to the certificate given to the patent holder upon registration of the patent. It is worthwhile registering a patent to prevent other people from copying your invention and using, distributing, importing or selling it without the patentee’s permission. This registration is also done through the CIPC at a fee. It is a more complicated and expensive process than registering a trade mark and professional assistance from an intellectual property attorney should be obtained before embarking on this journey.

Protection for patents is only granted for a limited period of twenty years before it lapses. It cannot be renewed.

Patent holders can take legal action against individuals or juristic persons who use their invention without permission by bringing an application for an interdict and claiming damages.

Conclusion

Once you understand your intellectual property rights and how to protect them, you also need to ensure you carry the protection through to your supplier agreements, licensing agreements, nondisclosure agreements, employee contracts, and contracts for your consultants or contracted workers.

Contact us to ensure you understand your rights and take the necessary steps to protect your hard work!

This article should not be used or relied upon as professional advice and is for information and marketing purposes. Please consult with one of our attorneys should you need legal assistance relating to this area of law.