Janine Hollesen | Head | Intellectual Property Law | Werksmans Attorneys | mail me |
South African intellectual property (IP) legislation includes the Trademarks Act, Patents Act, Designs Act, Copyright Act and Plant Breeder’s Rights Act. Each piece of legislation dealing with the particular IP right concerned, but is it all fit for purpose?
As these Acts follow the lead of international treaties to which South Africa is a signatory, the legislation is fit for purpose, save for the Copyright Act, which is outdated and, is in need of amendment also taking technological advancements into account. Further IP legislation is the Counterfeit Goods Act which has effective enforcement mechanisms to prevent the importation and sale of counterfeit goods.
In addition, the Border Management Authority Act, which is still being implemented, has been promulgated with the object of establishing an integrated and co-ordinated border management at ports of entry.
The latest on the Copyright Amendment Bill
Much has been written about the Bill with numerous stakeholders providing comment in the various rounds and iterations thereof.
Although the bill was passed by parliament, it was returned to parliament by President Ramaphosa for review with concerns with regards to its constitutionality and that the rights of creators and authors could be weakened.
The president’s reservations are inter alia that the proposed copyright exceptions could constitute arbitrary deprivation of property in that owners will share less, and it may be in conflict with the international treaty to which South Africa is a signatory. In December 2021, the Department of Trade and Industry called for comment in relation to specific clauses of the bill including existing and new sections which closed on 28 January 2022.
Seeing that the bill has been in consultation for nearly a decade and with new comments being called for and considering the President’s reservations, it might take some time for the bill to be passed.
There has been much criticism concerned with the actual drafting of the bill and commentary especially in respect to the introduction of the exception to copyright infringement based on fair use as opposed to fair dealing (which is currently provided for).
Fair dealing provides for clear instances as to what usage is permissible, whereas fair use will be determined by a court, which is to decide as to how must use is considered to be fair. The criticism is that this should not be left up to the courts to decide but should be specifically included in the legislation to make for certainty.
The amendment could therefore lead to more litigation and favour the party with the deeper pockets as opposed to the author or creator who is attempting to enforce works of copyright. It is no secret that litigation of whatever nature is notoriously costly.
It is crucially important for our Copyright Act to be aligned with the Treaties that we are party to and what is more important it must be an effective means and an incentive for creators and authors to create works. The weakening of rights can never incentivise creators to produce new works, which is essential for any economy. This is ever important today where innovative thinking and creativity is the future.
Is Africa making progress in recognising IP rights?
Although IP in Africa is receiving greater prominence and being recognised as a key economic driver with developments in IP law in various countries, enforcement remains onerous.
Although trademark protection is territorial and requires protection in each country there are 2 regional systems which are advantageous for trademark owners seeking cost effective protection in these regions which are the following:
- African Intellectual Property Organisation (OAPI / AIPO) includes all seventeen West African countries namely Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Congo, Comoros, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo. Recent and welcome changes that were introduced include the ability to cover both goods and services in one registration (Previously, it was necessary to file separate applications for goods and services), reducing the opposition term from six months to three months and counterfeit goods may now be detained by Customs officials on the basis of trademark registrations.
- ARIPO (African Regional Intellectual Property Organisation) differs from OAPI, requiring the designation of countries covered, with up to 12 member countries namely Botswana, Gambia, Lesotho, Liberia, Malawi, Mozambique, Namibia, Eswatini (previously Swaziland), São Tomé and Príncipe Tanzania, Uganda, and Zimbabwe. As the ARIPO office has streamlined its processes and offers digital online platforms for filing, searching, receiving, and sending notifications to its member states, time frames have improved. As the majority of African countries adopt a first-to-file rule and only allow for enforcement once registered, it is important to seek protection as soon as possible as there are frequently long delays in registration.
In addition, anti-counterfeiting measures have been introduced with customs recordation of IP rights only being available in a minority of the 54 African countries (apart from South Africa) namely Algeria, CoteD’Ivoire, Egypt, Kenya, Mauritius, Morocco and Tunisia.
In conclusion
Recently, Kenya introduced the Anti-Counterfeiting (Recordation) Regulations in a further attempt to deal with counterfeit goods that requires all IP owners who import goods into Kenya to record their rights with the Anti- Counterfeit Authority which is to be renewed annually.
This could assist with the importation and exportation of counterfeit goods. IP protection however remains crucially important for the protection of IP rights in the African territories.
