protected in terms of commercial law, each with a clearly defined set of laws, except for technical know-how and trade secrets which form part of common law, and are best protected through contracts such as restraint of trade agreements and non-disclosure contracts as well as having the correct internal procedures in place in one’s organisation. There are also other intangible assets which are proprietary and capable of protection besides technical know-how and trade secrets, such as data-bases, advertising rights, reputation and goodwill.
”Before setting off on the path to intellectual property protection, there are certain actions that need to be taken. Kingsbury advises that before anything is registered, a due-diligence should be conducted. “A due-diligence is done beforehand to determine what needs to be protected and to identify the actual assets, as well as to ensure that clients don’t infringe on the rights of third persons. This prevents you from inadvertently opening yourself up to potential damages, infringement and legal transgressions, including criminal sanction.
”Once the due-diligence has been completed, and the outcome is positive, you can start looking at the different requirements to protect, register or licence the intellectual property. There are various requirements that are specific to different scenarios within the four broad categories of intellectual property which are too numerous for the purposes of this article to accurately annunciate on. Kingsbury does, however point out: “Trade marks have an unlimited lifespan, provided they are renewed every ten years, whereas a patent’s lifespan is up to 20 years provided the registration is renewed annually from the beginning of the fourth year from filing, but, as in the pharmaceutical industry, the research and development phase often forms part of those years as the patent is often registered before all clinical trials and testing is completed, and in many cases, only leave about ten years or less for those companies to recoup the massive expenses incurred in research and developing their products through commercial exploitation of the registered patent. Exposure of any invention before filing a patent application for such invention destroys novelty, which is a prerequisite for securing a valid and enforceable patent.”
Regarding the need for protection, Kingsbury notes that people hardly ever realise that in a number of companies, over half of the organisation’s share value is made up of their intellectual property. “It should be the first thing you get protection for!” Locally, there are well known international brands and technologies belonging to overseas entities that through failure to protect themselves in South Africa, have lost their valuable assets. Examples of such trade marks that have been “hijacked” by local companies are, Victoria’s Secret, and, Polo. Even the McDonalds trade mark was hijacked by a local company, albeit for a limited number of years, before the law changed through the threat of sanctions by the US trade commission in the late 1990s. Trade marks, designs and patents are geographic in nature – this means you need to register in the country(s) for which you require protection.”
Kingsbury says enforcing intellectual property in Africa is a challenge and that counterfeiting is a major problem. “The trade free zone agreement between Nigeria and China has opened the flood gates for counterfeit products including prescription drugs in which placebos are used instead of life saving medications.” Placebos consist of ineffectual basic sugars and starches, replacing the actual medication. Placebos have no medicinal value, which often has devastating and even fatal consequences for the end user. This has resulted in the richer factions of society in Nigeria coming to South Africa for medical treatment and medicines, whilst the poorer people have to make do with deadly counterfeits.
Kingsbury states that: “Counterfeit pharmaceuticals isn’t the only problem in Nigeria and any intellectual property enforcement is a challenge in this country, even for the likes of Coca Cola and Nike. Other countries in Africa, such as Kenya, have more efficient legal systems with limited administrative issues and hardly any corruption, meaning intellectual property related matters are taken care of fairly quickly and effectively. Fortunately South Africa is the leader in Africa for having legitimate legal systems and structures to enforce and protect intellectual property.”
So what does the registration of the different intellectual property categories in South Africa entail? “Trade marks take about 18 months to register here provided there are no objections from the Registrar or oppositions from third persons, such as existing trade marks that are confusingly similar or trade marks incapable of distinguishing the applicant’s goods and services from those of others. “Trade marks are class specific. There are 34 different classes for goods and 11 more for services. The cost of securing registration for a trade mark depends on, inter alia, the country in which protection is sought as well as the number of classes in which protection is required. Overseas agent costs also vary considerably.”
On the subject of copyright protection in South Africa, Kingsbury says: “Copyright is an unregistered right, except for cinematographic films for which registration of copyright can be secured. It takes about nine months to register the copyright in a cinematographic film. The lifespan of a copyright is 50 years either from the date the work has been made available to the public with the consent of the copyright owner or from the date of death of the author, depending on the category of copyright. The works eligible for copyright are musical works, artistic works, literary works, broadcasts, computer programs, published editions, programme carrying signals, cinematographic films and sound recordings.”
With regards to patents, Kingsbury adds the following: “A provisional patent in South Africa is recorded within a few days of filing. To register a final patent there is a six to eight month waiting period for examination, post filing. In South Africa, there is only examination as to formalities and not the merits. Once a final patent application has been advertised after acceptance by the Registrar, a registration certificate can be expected within two months post advertisement, making the process from start to finish at least a one year process. Bizarrely, patent applications cannot be opposed and only removed by revocation once registered. If it is an international patent application, as per the Patent Co-operation Treaty (PCT), that period becomes longer.”
That brings us to the last form of intellectual property to be registered, namely designs. “Designs can be split into two groups, aesthetic and functional. Aesthetic designs take roughly nine months to register and need to be renewed annually, the first renewal to be made before the third anniversary, and only lasts for 15 years. Functional designs also need to be renewed annually, before their third anniversary being the first renewal, and lasts for 10 years,” explains Kingsbury.
“Interestingly enough, South Africa is the only country in the world that provides for functional design registration. Functional design registrations provide protection for any design applied to an article (whether for configuration or shape) having features which necessitate the function.”
To conclude, intellectual property is a diverse and complex field as it relates to intangible assets and creations of the mind, with many different alleys for both criminals and the uninformed to infringe on the hard work and talents of others. The importance of an entity’s intellectual property cannot be emphasised enough, so I leave you with this question: if you had a Ferrari, would you service it yourself, or would you let the experts do it for you? My answer - the latter... and as soon as possible!
Intellectual Property - what you need to know
In South Africa, there have been numerous organisations and individuals alike that have profited from effective intellectual property management and control. Companies such as the Rembrandt Group (now divided into RemGro and Richemont) contain, within their portfolio, alluring trade marks such as Cartier and Dunhill, but behind the visually-masterful designs and the glossy veneer lies a myriad of legal procedures and underpinnings.
“Basically intellectual property can be divided into four broad categories. These are trade marks, copyrights, patents and designs,” says Jeremy Kingsbury, partner and director at Fluxmans Incorporated Attorneys, and a specialist in the intellectual property field. "All of the categories are
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