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Africa Update 2020 – South Africa

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Published Date: October 29, 2020

Trade marks: Classification of goods and services

Version 2020 of the 11th Edition of the NICE Classification of Goods and Services will apply to all trade mark specifications, effective 1 January 2020.

Trade marks: Examination

Version 3 of the Guidelines on the Examination of Trade Mark Applications came into effect as of 20 March 2019, and an updated version (Version 3A) came into force on 6 August 2019.

Madrid Protocol

Cabinet has approved the submission of the Madrid Agreement on the International Registration of Marks (1989) to Parliament for ratification. The enabling legislation now has to be finalised and approved. It is expected to take some months.

Performers Protection Amendment Bill and the Copyright Amendment Bill

President Cyril Ramaphosa is yet to sign the highly controversial Performers Protection Amendment Bill and Copyright Amendment Bill. Various interest groups have raised concerns regarding the two Bills, particularly the provisions relating to fair use.

There has also been added pressure from the US government as a result of these Bills and it is scheduled to hold public hearings to determine South Africa’s eligibility to participate in its Generalised System of Preferences (GSP), the largest and oldest American programme that provides nonreciprocal, duty-free tariff treatment to specific products imported from designated beneficiary developing countries (BDCs).

If South Africa’s eligibility to participate in the GSP is revoked, it could result in significant economic losses for the country. President Ramaphosa is said to be applying his mind to the Bills and studying the submissions he received from the Ministers of Trade and Industry and Arts and Culture.

Protection, Promotion, Development and Management of Indigenous Knowledge Act 6 of 2019

The Protection, Promotion, Development and Management of Indigenous Knowledge Act 6 of 2019 has been promulgated but is yet to come into operation. The commencement date will be determined by the President in the Government Gazette by proclamation.

The purpose of the Act is to provide for the protection, promotion, development, and management of indigenous knowledge; the establishment and functions of the National Indigenous Knowledge Systems Office; the management of rights of indigenous knowledge communities; the establishment and functions of the Advisory Panel on indigenous knowledge; access and conditions of access to knowledge of indigenous communities; the recognition of prior learning as well as the facilitation and coordination of indigenous knowledge-based innovation.

Indigenous Knowledge Bill

On the 1st of November 2019, the Khoisan community, represented by the National Khoisan Council (NKC) and the South African San Council (SASC) signed a benefit sharing agreement with the Rooibos industry, represented by the South African Rooibos Council (SARC), which will see the Khoi and San community finally benefiting from the commercialisation of the indigenous tea. This has been widely acclaimed as an extraordinary step in the protection of traditional knowledge in South Africa.

The Supreme Court of Appeal Affirms the Test for Inventiveness

This case involved two companies in the mining industry, and more specifically, in relation to the steel conveyor belts used in the sintering process of metals.

Briefly, sintering is partly described as heating a mixture of metal powders having different melting points. In order to heat the metal powder mixture, an endothermic gas can be used.

Outotec registered a patent at the South African Patent Office, which described a steel conveyor with one of the integers being that a portion of the belt is perforated, interspersed with regions that are non-perforated, with the areas of perforation being about 20-60% of the total area of the conveyor belt. It was argued that the perforation allows for the gas to infiltrate the metal powder mixture, and thus the range of perforation can find the ‘sweet spot’ for sintering.

This case was an appeal from a decision made by the Commissioner of Patents in which the Commissioner dismissed an application for the revocation of the patent held by Outotec on the basis that the patent was both novel and inventive. This appeal was brought primarily on the challenge that the patent did not involve an inventive step.

The Supreme Court of Appeal (SCA) reiterated the South African legal test for determining if a patent includes an inventive step (i.e., is non-obvious), as described in the Ensign-Bickford case, namely,
• What is the inventive step,
• What was the state of the art of the relevant step at the earliest priority date,
• In what respect does the step go beyond, or differ, from the state of the art, and
• Having regard to such development or differences, would the step be obvious to the skilled man?

The Court considered the prior art and noted the primary difference was the range of perforation (20-60%), which was not included in the prior art. The Court then considered evidence of the expert witnesses and agreed with the appellant’s expert witness, who concluded that the range is too broad to convey any advantage, preference, or importance related to the percentages, and thus would have been obvious. Accordingly, the Court concluded that the patent lacked an inventive step and upheld the appeal and revoked the patent.

TELLYTRACK v MARSHALLS WORLD OF SPORT (PTY) LTD & OTHERS – Copyright Infringement in Cinematographic Films

On 25 November 2019, the Supreme Court of Appeal delivered an interesting decision dealing with copyright infringement in cinematographic films. This case was an appeal from the KwaZulu-Natal Division of the High Court, Durban. What makes the decision particularly noteworthy is the detail the court went into in analysing what constitutes a cinematographic film and determining the elements that make up a cinematographic film.

In order to understand the intricacies of the case, it will be important to identify what the court of first instance had decided and the reason behind the appeal.

Brief summary on the facts and decision of Court a quo:

Tellytrack, a partnership consisting of three different companies which are racetrack operators, was seeking an interdict against the respondents, restraining them from showing national and international horse racing events at their business premises which are shown on Tellytrack Television which is a cable television channel, DSTV channel 239, available in South Africa.

Tellytrack stated that the Respondents were infringing various works by screening events shown on DSTV channel 239 to the public at its premises, without paying the subscription for the services. Tellytrack claimed copyright infringement in literary works, sound recordings, cinematographic films as well as computer programs and claimed for both an interdict and damages calculated on the basis of a reasonable royalty which would have been paid by a licensee in respect of the use of the works.

Tellytrack provided extensive evidence about the way in which its race feeds were created which came down to raw race feeds, slightly enhanced by computer software, essentially being transmitted within seconds of the live events.

The court took note of the definition of ‘fixation’ – that a work has to be fixed or reduced to some or material form before it can be eligible for copyright and the definition of cinematographic films as stated in Golden China TV Game Centre & Others v Nintendo Co. Ltd. The Court came to the conclusion that the Plaintiff’s case must fail because there was no copying of work which was ‘fixated’ or stored (as required by the Copyright Act) when the Defendants showed the Tellytrack channel on their screens. As such, the Defendants were actually showing a broadcast and not a cinematographic film, given that the recording of the events happened concurrently with the transmission of the live event. In respect of the other works, the Court stated that the literary work, sound recording and computer generated works do not have existence other than as part of the cinematographic film. Given that the Plaintiff claimed for copyright infringement in a cinematographic film and not a broadcast, the application failed.

Supreme Court of Appeal

The Court of Appeal reviewed the decision and came to a different conclusion. The main question in the Court of Appeal was whether Tellytrack was entitled to claim copyright in relation to the cinematographic films. In answering this question, the Court stated:

“There can be no doubt that what the public is allowed to see at the respondents’ business locations are a sequence of images seen as a moving picture constituting in the main horse racing events. Those images and others, including those of studio interviews and the overlay of all the items imposed by way of the computer program, have indisputably been reduced to material form by way of the recordings on the aforesaid occasions. First, in relation to domestic races, two recordings were made at the OB van, second at the Tellytrack control room. In respect of international races, the recording is made of the complete product, including enhancements, at the Tellytrack control room. What is seen on channel 239 is what has already been recorded and stored at the OB van and the Tellytrack control room. At the time that a race event is seen on channel 239 it has already been recorded and stored, as described above.”

It was on this basis that the Court found that what was seen on DSTV was a cinematographic film and not a broadcast. As such, Tellytrack was entitled to the interdict.

This case is welcomed considering there are not many cases on copyright coming out of our Courts.

Functional Design Registrations – The Definitive Statement is King

A decision concerning a functional design registration highlights the importance of a well-drafted definitive statement and explanatory statement, particularly where the definitive statement does not take the form of the often used omnibus-type format.

The applicant brought an urgent design infringement application against the respondent’s floater based on its functional design registration. The dispute concerned whether or not the respondent’s floater fell within the scope of the design registration as the respondent identified a number of features depicted in the drawings lodged in support of the design registration that were not taken by the respondent’s floater. A feature that was taken by the respondent’s floater was, however, described in the definitive and explanatory statements.

The court found that with regards to the definitive and explanatory statements, it was neither contemplated nor intended by the applicant that the general design, shape or form of the floater or the specific graphic rendering thereof was intended to be indivisible from the feature isolated in the definitive statement. Accordingly, the feature described in the definitive statement taken alone was found to be sufficient to infringe the design registration.

SANParks Mapungubwe

South African National Parks (“SANParks”) opposed trade mark applications which all incorporate the mark MAPUNGUBWE, such as MAPUNGUBWE SPIRITUAL SITES & elephant device in classes 41 and 45 in the name of Mapungubwe Game Reserve (Pty) Ltd, a company with a Swedish national as the sole director. SANParks is the proprietor of the mark MAPUNGUBWE NATIONAL PARK, registered in respect of a wide range of goods and services. The Applicant’s marks all incorporated the dominant and distinctive element of the Opponent’s registered MAPUNGUBWE NATIONAL PARK trade mark and the services covered by its applications overlap directly with the Opponent’s registrations or are similar thereto. These applications were filed 3 years after SANParks registered its marks. The Opponent has made extensive use of its mark in relation to services covered by its registrations. It operates the MAPUNGUBWE NATIONAL PARK which was previously known as Vhembe Dongola and in 2004 it changed the name to the current one. SANParks offers a variety of goods and services, game viewing, walks, night drives, guided walks to the MAPUNGUBWE Cultural Landscape. It offers accommodation at its various rest camps. The Opponent was also of the view that the Applicant cannot claim to be the bona fide proprietor of a mark incorporating MAPUNGUBWE.

The Applicant in turn contended that MAPUNGUBWE is the name of a place and a geographical location and as such no one party could claim exclusive rights in it. It was contended by the Opponent that the mark MAPUNGUBWE NATIONAL PARK retained its exclusivity as a trade mark in respect of the goods and services of interest and is not a geographical designation. No disclaimer was entered against the Opponent’s trade mark registrations.

The High Court found that, due to SANParks’ extensive use of its trade mark, it has gained distinctiveness and become synonymous with its proprietor. The use by the trade mark Applicant of marks incorporating MAPUNGUBWE in relation to the same or similar services would be prejudicial and/or harmful to SANParks. Consequently, its trade mark applications, all incorporating the mark MAPUNGUBWE, in classes 41 and 45 were dismissed with costs. The Trade Mark Applicant’s application for leave to appeal was dismissed.

KEY OPPORTUNITIES & CONCERNS

Opportunities

  • As illustrated by the success of President Ramaphosa’s 2019 Investors Summit, international investors are drawn to the country’s multi-sectored, diverse economy
  • South Africa’s businesses and government embrace technological advances and lead Africa in ICT
  • The export-driven economy will benefit from the new African Continental Free Trade Area

Concerns

  • Under the last president the ruling party saw a reign of corruption that undermined national institutions and will take years to correct
  • Unemployment, especially youth unemployment, is high and represents the economy’s biggest challenge
  • Tension over economic and social inequities is high and is manifested in a potential government “land seizure without compensation” policy

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