RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/ZAF/1
30 April 1999
(99-1768)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
SOUTH AFRICA1
The present document reproduces the introductory statement made by the delegation of
South Africa, the questions put to it and the responses given in the review of its legislation on
enforcement at the Council's meetings of 24 February 1998 and 12 May 1998.2
_______________
I. INTRODUCTORY STATEMENT
South Africa's response to the enforcement of Articles 41 to 61 of the TRIPS Agreement
has, it is submitted, been such as to establish the requisite compliance with the above-mentionedArticles.
South Africa's intellectual property statutes provide numerous remedies for the infringement
of intellectual property rights, primarily in the civil context.  The relevant Acts are the following:
- Patents Act No. 57 of 1978 (as amended);- Copyright Act No. 98 of 1978 (as amended);- Trade Marks Act No. 194 of 1993 (as amended);- Designs Act No. 195 of 1993 (as amended).The aforesaid Acts make provision for restraining orders (interdicts), damages or, in lieu of
damages, payment of a reasonable royalty in instances of infringement, and also delivery-up ofinfringing goods.  Furthermore, Section 27 of the Copyright Act of 1978 provides criminalsanctions against acts of copyright infringement in certain instances.
Procedurally, effective enforcement of the civil provisions of the aforesaid intellectual
property laws is readily available through the Provincial Divisions of the High Court of SouthAfrica for purposes of obtaining, inter alia :
- temporary relief, particularly interim interdicts, by way of urgent application;
                                                     
1 As regards laws and regulations relevant to the area under review and notified by South Africa under
Article 63.2 of the Agreement, reference is made to document IP/N/6/ZAF/1.
2 The minutes of these meetings have been circulated as documents IP/C/M/17 and IP/C/M/18
respectively.IP/Q4/ZAF/1
Page 2
- final interdicts by way of application or action;
- damages and delivery-up orders;- ex parte  relief for purposes of pressing evidence where there is a likelihood that a
defendant may hide or destroy it (i.e. Anton Piller relief).
In the criminal context, Section 27 of the Copyright Act of 1978, and the provisions of the
Merchandise Marks Act 1941, have allowed the South African Police Services to take steps againstmanufacturers and importers/sellers of goods (including seizure and detention) where either piracyor counterfeiting is involved.
The South African Customs Authorities have also been empowered, in terms of the
Customs and Excise Act, to seize and detain goods at ports of entry in cases of copyrightinfringement.
Recognizing certain procedural and related shortcomings in the existing statutory
enforcement provisions in the criminal context, the South African parliament passed the CounterfeitGoods Act, No. 37 of 1997.  This Act, which entered into force on 1 January 1998, significantlyimproves the ability of the owners of intellectual property rights to enforce their rights in cases ofcopyright piracy and trademark counterfeiting.
The procedures for seizure and detention by inspectors have been clarified.  In addition to
the South African Police Services and the South African Customs Authorities, the power to takesteps under the Act has been extended to special inspectors who may be appointed by the Ministerof Trade and Industry.  Penalties for offences have been considerably increased and, generally, thenew Act renders South Africa compliant with the TRIPS Agreement's enforcement provisions.
Furthermore, the Counterfeit Goods Act of 1997 now gives specific statutory recognition to
ex parte  relief providing a clear procedural remedy which parallels the relief that has, hitherto, been
available (Anton Piller relief).
As to the pace of enforcement proceedings, it is believe that the South African Police
Services, through their Commercial Crime Units, are in a position to give assistance at short notice,and regularly do so, particularly in the main metropolitan areas.  In cases of urgency, the HighCourts are also responsive at short notice to applications for temporary relief.
II. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND 
THEIR MEMBER STATES
1. In terms of Article 41 of the TRIPS Agreement, Members are obliged to ensure:
(a) that enforcement procedures are available under their laws so as to permit effective
action against any act of infringement of intellectual property rights;  and
(b) that such procedures include expeditious remedies;  but provided
(c) that such procedures provide safeguards against abuse.
Thus, in relation to (c) in particular, safeguards are built into the procedural obligations
specified in the TRIPS Agreement. For example, Article 41.4 provides that parties toproceedings shall have an opportunity for review by a judicial authority of at least the legalIP/Q4/ZAF/1
Page 3
aspects of initial judicial decisions on the merits of a case.  It is the understanding of the
European Communities and their Member States that an interlocutory injunction (or, as it isknown in South African law, a temporary interdict) ordered by the High Court is neitherreviewable nor appealable.
- Is our understanding of the current legal position in South Africa correct?  Please
explain.
- If so, and in the absence then of the opportunity of a review or an appeal, what
safeguards are built into the procedures available against the abuse by an applicant ofproceedings for a temporary interdict?
Article 41 of the TRIPS Agreement requires, in Article 41.4, that there shall be an opportunity
for review, inter alia,  in respect of at least the legal aspects of initial judicial decisions on the merits
of a case.  In reply to the specific question as formulated, it is confirmed that the current legal positionin South Africa is that an interlocutory injunction (temporary interdict) is not subject to review nor to
appeal.  It is submitted that this position is not in conflict with Article 41.4, inasmuch as the decision
in regard to an interlocutory injunction is not a decision on the merits of a case.  An interlocutory
injunction is based on a balance of convenience, and the merits of the case are specifically not
decided.  To succeed with a temporary interdict, the claimant merely has to show prima facie, that
there is a right which is or is about to be infringed, and that the balance of convenience favours the
granting of a temporary interdict pending the finalization of the main proceedings.
Furthermore, an interlocutory injunction is exactly that, namely a temporary order pending
further court action;  if such further court action does not follow within a reasonable period, the
interlocutory injunction can be discharged.  The order normally specifies a return date by which cause
must be shown as to why the temporary interdict should not be made permanent, thus creating an
opportunity for the respondent to state his case.
The system is safeguarded against abuse in that the Court  requires to be satisfied that the
balance of convenience is in favour of the granting of such an interdict, and in considering this aspect
The Court will consider, inter alia,  the status and financial position of both parties, and will make the
decision on the basis of the least measure of interference with the activities of a party.
2. It is the understanding of the European Communities and their Member States that a
number of decisions by the Registrar of Trade Marks are currently outstanding for more thana year since they were argued before the Registrar.  How does this comply with Article 41.3 ofthe TRIPS Agreement?
There is, at the present time, a small backlog of decisions by the Registrar of Trade Marks,
namely seven outstanding, only one of which has been outstanding for a substantial period of time.
This is due to a shortage of staff, and an unexpected escalation in the number of trademark cases filed,
giving rise to a considerable increase in the number of trademark hearings before the Registrar of
Trade Marks.
However, it should be borne in mind that the Trade Marks Act provides (e.g. in
Sections 24(1), 26 and 27) that the applicant has an option to elect whether to bring the proceedings
before the Registrar, or before the Court.  This means that, in many cases, the delay currently
experienced in regard to matters being heard by the Registrar, can in fact be avoided by the applicantby bringing the proceedings before the Court (i.e. the High Court).
In terms of Section 59 of the Trade Marks Act, where proceedings in terms of certain
specified sections are pending before the Registrar, the Registrar may in his discretion refer theIP/Q4/ZAF/1
Page 4
proceedings to the Court, he must refer to the proceedings to the Court on written application of all
the parties concerned.  This provision creates a mechanism whereby parties who require expeditious
decisions could approach the High Court rather than the Registrar.
3. Article 45 of the TRIPS Agreement provides that judicial authorities have the
authority to order the infringer to pay the right holder’s expenses.  By the same token, but inopposite circumstances, Article 48 of the TRIPS Agreement provides that the judicialauthorities shall have the authority to order the applicant to pay the defendant’s expenses.  Inboth cases these expenses may include "appropriate attorney’s fees".
Could the Government of South Africa please clarify whether "expenses" would
comprise the actual expenses of the victorious party (such as counsel’s and expert’s fees, travel,
accommodation and the like)?  Please explain.
Courts in South Africa have an inherent jurisdiction to grant an order as to costs in favour of a
successful litigant, and such costs would normally include attorneys' fees and disbursements or
expenses.
The expenses, payment of which may be ordered by the Court, would be taxed expenses,
i.e. expenses permitted in terms of the tariff applicable in the High Court.  The sum so ordered to bepaid will be based on what is allowed by the relevant High Court tariff;  this may not include all
actual expenses, but rather those which are reasonable and are permitted in the circumstances.
Generally speaking, experts' fees will be recovered;  however, travel and accommodation expenses
will generally not.
4. We are given to understand that, in an action for the infringement of a South African
intellectual property right, the discovery of documents by the opposing parties is limited to"documents and tape recordings relating to any matter in question in such action".
Does this mean that a judicial authority presiding in the action would not, in the usual
case, have the authority to order the infringer to inform the right holder of the identity ofthird parties involved in the production and distribution of the infringing goods or servicesand their channels of distribution (Article 47 of the TRIPS Agreement)?
Your understanding of the legal position in South Africa in regard to discovery of documents
is correct.  Discovery and production of documents and tape recordings in the High Court of
South Africa, and in the Court of the Commissioner of Patents, is dealt with in Rule 35 of the Uniform
Rules of Court.
3  Discovery will only be ordered after the institution of proceedings and generally
only after the close of pleadings.
In special cases, (such as the "Anton Piller" situation), the Court may order, on an ex parte
basis, that certain evidence be taken into the possession of a sheriff for its preservation pending theinstitution of civil proceedings.  Statutory provisions for Anton Piller-type orders have been enacted
in the Counterfeit Goods Act No. 37 of 1997, Section 11.
4
The provisions of Article 47 are not peremptory;  Members may provide that judicial
authorities will have the authority to order the in fringer to provide information regarding the identity
of third persons involved.  In terms of South African law, a right holder who has a reasonable
suspicion that an infringer has information, such as  information pertaining to the identity of third
parties, which may be relevant to the proceedings in question, could proceed on the basis of an
                                                     
3 Rule 35 is set out (in English only) in Annex 1 to document IP/N/6/ZAF/1.
4 Section 11 of the Counterfeit Goods Act is set out (in English only) in Annex 2 below.IP/Q4/ZAF/1
Page 5
Anton Piller order, either on the basis of our common law or on the basis of Section 11 of the
Counterfeit Goods Act, when that is appropriate, to achieve disclosure of the information concerned.
5. The Appellate Division of the Supreme Court of South Africa (now the Supreme Court
of Appeal) recently laid down, in clear and succinct terms, what an applicant for an Anton
Piller order has to establish.  This may fairly be referred to as "a common law Anton Pillerorder".  In the Counterfeit Goods Bill, which is currently passing through the South Africanparliamentary process, relatively elaborate provisions are made for the grant of an AntonPiller order.  This, in turn, may fairly be termed "a statutory Anton Piller order".
Could the Government of South Africa clarify the following points:- In the light of the availability of a common law Anton Piller order what is the need for
a statutory Anton Piller order?
- Since the requirements to obtain a common law Anton Piller order appear to be less
stringent than a statutory Anton Piller order, would not an applicant in the usual casemake an application for a common law Anton Piller order (and not a statutory AntonPiller order)?
- Do the requirements of a common law Anton Piller order and the statutory
Anton Piller Order comply with Article 50 of the TRIPS Agreement?  Please explain.
The South African Courts have traditionally been conservative in their approach to common
law Anton Piller orders, and until the recent decision by the Supreme Court of Appeal, differences
existed between the approaches followed in the different provincial divisions.
The provision of the statutory Anton Piller order within the parameters of the Counterfeit
Goods Act brings about certainty in regard to this  proceeding in the context of an anti-counterfeiting
action, to ensure effective measures to combat the escalating level of counterfeiting activity.
In cases which do not fall within the parameters of the Counterfeit Goods Act, an applicant
will have to make use of a common law Anton Piller order.  In circumstances falling within the
parameters of the Counterfeit Goods Act, the applicant can elect to use either the common law or the
statutory Anton Piller order.
Both the common law and the statutory Anton Piller orders comply substantially with
Article 50 of the TRIPS Agreement.
6. With regard to cases that involve the infringement of intellectual property, could the
Government of South Africa provide data on the number of:
- law suits that have been filed including their respective outcome and the average length
from the filing of a complaint until the final judgement;
- injunctions that have been issued (as defined in Article 44 of the TRIPS Agreement)
and explain how such injunctions are being enforced;
- provisional measures (as defined in Article 50 of the TRIPS Agreement) that have been
granted and the average length to obtain such measures (from the request);IP/Q4/ZAF/1
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- suspensions at the border of counterfeit trademark/pirated copyright goods or in
relation to goods where other intellectual property rights are infringed;
- criminal cases including the sentences that have been applied;  whether they have been
executed;  and please also explain what kind of infringement of an intellectual propertyright would be regarded as a violation of criminal law;
- seizures and/or destruction of counterfeit trademark and pirated copyright goods.
 The data requested in the first part of question 6 is not available in readily accessible form.
To assemble the necessary facts and figures would entail the application of resources not available at
present.
Furthermore, could the Government of South Africa explain and give practical
examples of:
- how the compensation for damages of the infringement of intellectual property rights
is calculated (Article 45.1 of the TRIPS Agreement);
- what would be regarded as "expenses of the right holder" which have to be reimbursed
pursuant to Article 45.2, first half of the first sentence, of the TRIPS Agreement andhow they would be calculated;
- whether attorney’s fees can be reimbursed and how such fees would be calculated;
- whether Article 45.2, second sentence, of th e TRIPS Agreement has been implemented
in South Africa and how such "damages" would be calculated?
As regards the second part of question 6, the position is as follows:
- Damages for infringement will be either actual loss proved to have been sustained, or, at the
option of the plaintiff, an amount calculated on the basis of reasonable royalty which would
have been payable by a licensee.
See Patents Act - Section 65;
Copyright Act - Section 24;Trade Marks Act - Section 34;Designs Act - Section 35.
- The "expenses of the right holder" would be the actual costs incurred in the course of the legal
proceedings on the basis of infringement, being appropriate attorneys' fees and actual
disbursements such as the making of copies, payment of counsel's fees, etc.
- Attorneys' fees can thus be reimbursed;  the amount payable would be based on the applicable
High Court tariff.
- Article 45.2 is not peremptory.  Generally speaking, "profits" or "pre-established damages" in
cases of innocent infringement (i.e. where the infringer did not know or had no reasonable
ground to know), will not be awarded.IP/Q4/ZAF/1
Page 7
See Patents Act - Section 66(1);
Copyright Act - Section 24(2);Designs Act - Section 35(6).
III. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please indicate the "competent authorities" stipulated in Article 51 of the TRIPS
Agreement.
The new Counterfeit Goods Act No. 37 of 1997, which came into force on 1 January 1998, is
special legislation to deal with counterfeit goods, bearing counterfeit trademarks or copyright works
or marks prohibited under the Merchandise Marks Act, 1941.
In terms of the Counterfeit Goods Act an inspectorate is created, inspectors being:
- Police officials holding the rank of sergeant or a higher rank;
- the Commissioner of Customs and Excise and designated officials in terms of the
Customs and Excise Act, 1964;
- inspectors appointed by the Minister of Trade and Industry (Sections 1(1) and 22).
Inspectors will generally exercise their powers on the basis of a warrant issued by a judge of
the High Court or by a magistrate, i.e. a judicial authority (Sections 4 and 6).
Section 15 of the Counterfeit Goods Act deals specifically with the detention of counterfeit
goods which are being imported into South Africa.
5  The competent authority who must consider and
deal with applications in terms of this section, is the Commissioner for Customs and Excise.
2. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
The proceedings are judicial proceedings, being either criminal or civil proceedings
(Section 9).
3. Are there any ways other than the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder torequest the competent authorities to suspend the release of the goods which infringeintellectual property rights or which are suspected to infringe intellectual property rights?
(a) Section 28 of the Copyright Act No. 98 of 1978 provides a mechanism whereby a
copyright owner may request the Commissioner for Customs and Excise to treat
certain specified goods (being infringing goods) as prohibited goods.
6
(b) Section 113(1)(g) of the Customs and Excise Act No. 91 of 1964 prohibits the
importation of reproductions of copyright works which are unlawful under copyright
                                                     
5 Section 15 of the Counterfeit Goods Act is set out (in English only) in Annex 3 below.
6 Section 28 of the Copyright Act is set out (in English only) in Annex 6 below.IP/Q4/ZAF/1
Page 8
laws.  Sections 23(2) and 27(1) of the Copyright Act, 1978 are relevant in this
regard.7
4. Please explain what term your country regards as "a reasonable period within which
the competent authorities shall inform the applicant whether or not they have accepted theApplication" stipulated in Article 52 of the TRIPS Agreement.
The Counterfeit Goods Act does not stipulate a time-period within which an inspector must
inform an applicant that the complaint has been accepted and will be acted upon.
Section 15(3) provides that the Commissioner of Customs and Excise must consider and deal
with an application "without delay".
5. Please explain the term during which the Application is effective.
In terms of Section 15(1) the applicant has to specify a period during which detention of the
relevant imported goods is to take place.  This period may not exceed the period for which the
intellectual property right relied upon subsists.
6. Please explain whether a right holder is obliged to pay any fees to lodge the
Application.
No payment of fees is stipulated in the Act, and regulations to deal with practical
implementation have not yet been promulgated.
7. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPSAgreement. And please summarize their contents.
The procedure described below relates to the provisions of the Counterfeit Goods Act.
Responsibility for the border enforcement of intellectual property rights is borne by theCommissioner of Customs and Excise.  An applicant needs to supply the Commissioner of Customsand Excise with either a specimen of the protected goods bearing the intellectual property rightssought to be protected, or sufficient information from which the essential physical and otherdistinctive features may be ascertained;  sufficient information and particulars as to the subsistenceand extent of the intellectual property right as well as the title to the right in question.  However,the Commissioner may only confiscate such goods for a period not extending beyond the last day ofthe period for which the intellectual property right in question subsists.  The Commissioner is notobliged to confiscate offending goods unless he is furnished with the necessary security in a mannerand amount he may require to indemnify the customs authorities and their members against anyliability that may be incurred pursuant to the seizure and detention of goods.
No specific indemnification is conferred upon the importer and owner of goods which have
been suspended.  However, where such suspension takes place at the instigation of a complainantany person suffering injury or prejudice because of the suspension of goods alleged to be counterfeitgoods, or any action taken by an inspector in effe cting this seizure is en titled to claim compensation
from the complainant.  Compensation may only be claimed from the Commissioner if he or hisofficials have been grossly negligent in the seizure of the goods or in their detention or storage, orwhere such person acted in bad faith in performing his duties.
                                                     
7 Section 113(1)(g) of the Customs and Excise Act, and Sections 23(2) and 27(1) of the Copyright Act
are set out (in English only) in Annex 5 below.IP/Q4/ZAF/1
Page 9
The complainant is entitled to a copy of any statement taken down or any other document
for evidence procured by a customs inspector in the exercise of his powers of search, seizure anddetention.  A complainant or suspect is entitled to inspect any goods seized by the Commissioner.
8. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPSAgreement.
Seized goods have to be returned to a suspect if criminal charges are not laid by the
complainant or civil proceedings are not instituted by a complainant within three days of beingnotified of such seizure.  If the criminal charge is laid, the goods will be returned to the suspect ifthe state does not inform the suspect by written notice of its intention to institute a criminalprosecution against him for having committed an offence of dealing in counterfeit goods, within ten
days of notice of seizure of goods from the inspector.
9. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulationof goods which infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
No specific indemnification provisions exist.  However, if a defendant (including a public
authority or official) is wrongfully sued or joined in civil proceedings in the Courts, it will be ableto set the proceedings aside and will be awarded its  legal costs (on the punitiv e scale if appropriate)
and any damages which it might have suffered as a result.  Furthermore, in certain instances, theCourt may require a plaintiff to furnish security for costs and/or damages.
10. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectualproperty rights and nevertheless release them into free circulation with regard to thesuspension based on the Application or the Ex Officio Action stipulated in Article 58 of theTRIPS Agreement.
Please see the reply to question 9 above.
11. Please explain the responsibility that the competent authorities and other related
authorities take to the importers when they suspend the release into free circulation of goodswhich do not infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Please see the reply to question 9 above.IP/Q4/ZAF/1
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12. Is the right holder informed of identities of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights orwhich are suspected to infringe intellectual property rights, as well as the case where the rightholder is informed of identities of the importers and consignors stipulated in Article 57 of theTRIPS Agreement?
Section 10(1)(d) of the Counterfeit Goods Act provides:
that the accused or the defendant or respondent (as the case may be) discloses the source
from which those goods, if found to be counterfeit goods, have been obtained, as well as theidentity of the persons involved  or ostensibly involved in the importation, exportation,
manufacture, production or making and distribution of the counterfeit goods and in thechannels of distribution of those goods.
13. Please explain the measures to protect confidential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions oflaws and ordinances which prescribe such measures.
When during a search by an inspector a person claims that any goods, documents, article or
item, present contains privileged information and refuses the inspection or removal thereof, theinspector must act in a circumscribed manner. If he is of the opinion that the goods, document,articles or item may be relevant to, and necessary for, the investigation of any complaint or anyalleged or suspected act of dealing in counterfeit goods, he must request the Registrar or DeputyRegistrar of the High Court having jurisdiction to seize and remove the contentious material for safecustody until the Court has made a ruling on the question of whether or not the information inquestion is privileged (Section 6(8) of the Counterfeit Goods Act).
14. Please explain the procedures of detentions and seizures to be ordered by the
competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
Articles 51 and 55 of the TRIPS Agreement require Members to provide procedures for the
suspension by the customs authorities of the release of goods into circulation, where a right holder hasvalid grounds to suspect that the importation of counterfeit trademark or pirated copyright goods is
involved.
In South Africa, the Counterfeit Goods Act No. 37 of 1997 provides such procedures.
In terms of Section 15 of the Counterfeit Goods  Act, the owner of an intellectual property
right (defined in Section 1 to include trademark ri ghts and copyright) may apply to the Commissioner
(for Customs and Excise) to seize and detain goods which are counterfeit goods featuring the
subject-matter of that intellectual property right and which are being imported into the Republic (of
South Africa).
The applicant may furnish the Commissioner with a specimen of the goods that are protected,
and sufficient information regarding the subsistence of the intellectual property right and his/her title
to that right.
The Commissioner must deal with the applic ation without delay, and must grant the
application if satisfied on reasonable grounds that the intellectual property right prima facie subsists,that the applicant prima facie is the owner, and that the goods are prima facie protected goods.
8
                                                     
8 Section 15 of the Counterfeit Goods Act is set out (in English only) in Annex 3 below.IP/Q4/ZAF/1
Page 11
The Merchandise Marks Act No. 17 of 1941 (as recently amended) also provides certain
procedures which are relevant.
In Section 1 of the Merchandise Marks Act No. 17 of 1941, the concept "inspector" is defined
to include the Commissioner of Customs and Excise and certain of his officials.  Inspectors are giventhe power, when they suspect that an offence in terms of that Act has been committed or is likely to be
committed (e.g. a false trade description has been applied to goods;  such goods will be sold or let or
offered for sale or hire;  imported goods will be sold or distributed, which bear the name of a South
African manufacturer or trader but which were not produced in South Africa and which do not have
an indication of origin),  inter alia,  to seize articles which have a bearing on the offence.
The Customs and Excise Act No. 91 of 1941 also has relevant provisions.  Section 113(1)(g)
prohibits the importation of unlawful reproductions of copyright works.
9
15. Please explain the procedures to appeal against any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Decisions by the Commissioner in terms of Section 15 of the Counterfeit Goods Act will be
administrative decisions subject to review in accordance with the principles of administrative law.
Furthermore, Section 15(6) provides that, when any member of the customs authorities acts in
terms of Section 15(4) to seize and detain the stipulated goods, he/she will be acting as if he/she is
exercising the powers of an inspector subject to th e provisions of the Counterfeit Goods Act.  This
includes the requirement that the powers of seizure and detention of goods must (except in certain
circumstances) be exercised on the authority of a warrant issued in terms of Section 6 of the
Counterfeit Goods Act, namely by any judge of the High Court or by a magistrate.  This means that
proceedings can be brought by the defending party for such a warrant to be set aside.
16. Please explain the basis for calculating the security or equivalent assurance stipulated
in Article 53 of the TRIPS Agreement that the competent authorities may require an applicantwhen they suspend the release into free circulation.
In terms of Section 15(7) of the Counterfeit G oods Act, the owner of the intellectual property
right may be required to furnish security to th e Commissioner in the manner and the amount that the
Commissioner may require to indemnify the customs authorities against any liability that may be
incurred as a consequence of the seizure and detention,  and to cover expenses incurred in effecting the
seizure and detention.
The legislation is of recent origin and this section has not yet been interpreted by a court.  The
Commissioner of Customs and Excise is expected to issue policy guidelines as to the basis on which
the security will be quantified within the near future.
17. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The Counterfeit Goods Act provides, in Section 8, that counterfeit goods seized by an
inspector must be stored and kept in safe custody in a counterfeit goods depot.  Section 23 provides
that the Minister (of Trade and Industry) may by notice in the Gazette,  designate any place to be a
counterfeit goods depot, while Section 24 empowers the Minister to make regulations that may be
                                                     
9 Section 113(1)(g) of the Customs and Excise Act is set out (in English only) in Annex 5 below.IP/Q4/ZAF/1
Page 12
necessary for the proper and effective control, management and administration of a counterfeit goods
depot.
No such notices or regulations have as yet been published.Where counterfeit goods are to be seized by the Commissioner of Customs and Excise upon
entering the country in terms of Section 15 of the Counterfeit Goods Act, this will take place by the
customs authorities in performing their functions under the Customs and Excise Act No. 91 of 1964.
This later Act provides for the establishment of warehouses, and in Section 23 specifically provides
that the Commissioner may allow the storage in such a warehouse of goods the importation or
disposal of which is prohibited or restricted under any law.  The Customs and Excise Act has
extensive provisions dealing with management and administration of such warehouses and the goods
stored therein.
18. Please explain what kind of cases are regarded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goodsstipulated in Article 59 of the TRIPS Agreement.
Section 10 of the Counterfeit Goods Act has a provision giving effect to the principle of
Article 59 of the TRIPS Agreement in regard to re-exportation of counterfeit trademark goods.
Section 10(2) places a prohibition, inter alia,  on the exportation of imported goods in an unaltered
state where the goods, inter alia,  bear a trademark or a colourable imitation thereof so as to be
calculated to be confused with or taken as being protected goods, unless a court, on goods causeshown, orders otherwise.
The Courts have not yet given an interpretation of this section, to indicate what will be
regarded as constituting good cause.
Section 4 of the Merchandise Marks Act No. 17 of 1941 also has a provision giving effect to
the principle regarding re-exportation of counterfeit trademark goods contained in Article 59 of theTRIPS Agreement.  Section 14(15) provides that where imported goods, which are destined for
exportation, were seized and held by a court to be the subject of a contravention under the Act (e.g. by
reason of the application of a false trade description), the Court shall not allow the goods to be
exported in an unaltered state, except if it thinks it fit to allow exportation after due regard to the
circumstances regarding the offence.
This provision was inserted into the Merchandise Marks Act by the Intellectual Property
Laws Amendment Act No. 38 of 1997, and has not yet been interpreted by our courts.
19. Please indicate names of laws and ordinances and their provisions in which the
suspension of the release of goods which infringe intellectual property rights or which aresuspected to infringe intellectual property rights is prescribed, as stipulated in Article 51 of theTRIPS Agreement.
The Counterfeit Goods Act No. 37 of 1997 (e.g. Section 15).
The Customs and Excise Act No. 91 of 1964 (e.g. Section 23).
The Merchandise Marks Act No. 17 of 1941 (e.g. Section 4).IP/Q4/ZAF/1
Page 13
20. Please indicate which intellectual property rights are protected based on the
Application by a right holder.
The Counterfeit Goods Act relates to trademark rights, copyright, and rights conferred in
terms of Section 15 of the Merchandise Marks Act, for example in regard to any mark, word, letter,
etc. to be used in connection with any trade, business, profession, occupation or event or inconnection with a trademark or trade description for goods.
The Merchandise Marks Act relates to:
- false trade description applied to goods themselves or to any covering, label or reel in
or with which the goods are sold;
- the sale or offering for sale or letting of goods to which a false trade description has
been applied;
- alterations (such as effacement) of trademarks;
- rights conferred in terms of Section 15 of the Act, which rights may for example
relate to a mark, word, letter or figure or combinations thereof to be used in
connection with any trade, business, profession, occupation or event;
- the sale or distribution of imported goods not produced in South Africa but bearing
the name of a South African manufacturer or trader without an indication of origin, or
bearing a trademark or trade description in an official language of South Africawithout an indication of origin;
- the unauthorized use of certain emblems, including the coat of arms of South Africa,
the title, name, portrait or effigy of the President or Deputy President or a Minister,
the reproduction of any monument or relic;
- the purchase or sale of any container or closure therefore marked with the owner's
name, or any goods contained in such container.
The Customs and Excise Act No. 91 of 1964 prohibits (in Section 113(1)(g)) the importation
of unlawful reproductions of copyright works.
10
21. Please explain kinds and contents of documents which shall be provided by the
applicant to lodge the Application.
The information to be supplied by the owner of the intellectual property rights in terms of the
Counterfeit Goods Act for the seizure and detention of counterfeit goods being imported, is set out in
section 15(2).11
22. Please explain the remedies which the judicial authorities order regarding a copyright
and other related rights, patents, industrial designs, trademarks and layout-designs(topographies) of integrated circuits, including injunctions, damages, expenses, destruction orother disposal of infringing goods and materials/implements for their production.
In terms of the Patents Act, 1978 (as amended), the Trade Marks Act, 1993 (as amended),
the Copyright Act, 1978 (as amended) and the Designs Act, 1993 (as amended), and the Rules
                                                     
10 Section 113(1)(g) of the Customs and Excise Act is set out (in English only) in Annex 5 below.
11 Section 15 of the Counterfeit Goods Act is set out (in English only) in Annex 3 below.IP/Q4/ZAF/1
Page 14
governing procedure in the High Court and the Court of the Commissioner of Patents, various
remedies may be ordered in proceedings instituted either by way of action or by way of application:
- injunctions (interdicts):  these can be awarded on an interim basis on application or finally
(by way of application or action);
- damages:  all the Acts aforesaid make provision for the award of damages (the normal basis
being the actual patrimonial loss suffered) or, in lieu of damages, the payment of areasonable royalty which would have been payable by a licensee for the use of theintellectual property right concerned.  The Copyright Act also contains provision for theaward of punitive damages.  These may only be recovered by way of action;
- attorneys' fees and costs:  these are invariably awarded, in terms of the Rules governing
procedure of the Courts, to the successful litigant on a scale prescribed by tariff.  In certaincases, to express its displeasure at the manner in which a litigant has conducted itself, theCourt may award punitive legal costs on a higher scale;
- the aforesaid Acts also make provision for delivery-up of infringing material/goods;- none of the Acts referred to above exclusively sets out the remedies which may be awarded.
The Courts have inherent power to grant other or alternative relief, depending upon the
circumstances of each matter.
23. Please explain whether the amount of damages which judicial authorities order the
person who infringes intellectual property rights to pay the right holder is adequatecompensation for the injury the right holder has suffered, and what criteria and the way forcalculation to decide the amount for compensation.
The basis of the damages awarded is the patrimonial loss suffered by the right holder.  In
deciding the quantum of damages the Court takes into consideration delictual principles as set inSouth African jurisprudence.  The right holder may also claim in lieu of damages, the payment of a
reasonable royalty which would have been payable by a voluntary licensee.
24. Please explain whether the amount of damages which judicial authorities order the
person who infringes intellectual property rights to pay the right holder includes investigationsexpense and appropriate attorney's fees.
The Courts have inherent jurisdiction to grant an order as to costs which is separate from the
amount of damages awarded;  this would include the attorneys' fees as well as actual disbursements
and expenses, such as investigative expenses.  A bill of costs has to be taxed (assessed) by the Taxing
Master unless the parties agree otherwise.
25. Please describe to what extent the amount of damages have been estimated by courts
since 1 January 1996.  Please explain whether the amount of damages is adequatecompensation for the injury the right holder has suffered, and how such civil procedures areconsistent with Article 45 of the TRIPS Agreement.
As set out above in regard to question 23, the amount of damages awarded is based on the
actual loss suffered by the right holder;  the right holder has to prove the quantum of the loss suffered.
Further, the amount of damages to be awarded is within the discretion of the Court taking into account
the principles mentioned in question 23.IP/Q4/ZAF/1
Page 15
26. Please explain the kinds and amounts of penalties (imprisonment or fines) in criminal
cases.  Please also explain whether these penalties are consistent with Article 61 of the TRIPSAgreement which requires provisions for a sufficient deterrent, consistently with the level ofpenalties applied for crimes of a corresponding gravity.
Section 19 of the Counterfeit Goods Act provides:
"(1) Any person convicted of an offence referr ed to in Section 2(2), will be punishable:
(a) in the case of a first conviction, with a fine, in respect of each article or
item involved in the particular act of dealing in counterfeit goods to whichthe offence relates, that may not exceed R 5,000.00 per article or item, orwith imprisonment for a period that may not exceed three years, or withboth such a fine and such term of imprisonment;
(b) in the case of a second or any subsequent conviction, with a fine, in respect
of each such article or item, that may not exceed R 10,000.00 per article oritem, or with imprisonment for a period that may not exceed five years, orwith both such a fine and such term of imprisonment.
"(2) Any person convicted of an offence refe rred to in Section 18, will be punishable
with a fine or imprisonment for a period that may not exceed six months.
"(3)(a) A court that has convicted a person of an offence contemplated in
Section 2(2) must, when considering which penalty to impose, amongstothers take into account any risk to human or animal life, health or safety ordanger to property (whether movable or immovable) that may arise fromthe presence or use of the counterfeit goods in question.
(b) Without detracting from the discretion that a court in criminal proceedings
has with regard to sentencing, a court that has convicted any person of anoffence referred to in Section 2(2) may take into account, in mitigation ofsentence, any evidence to the effect that such person, fully, truthfully and tothe best of his or her ability had disclosed to an inspector who acted againsthim or her in terms of Section 4(1) or to a member of the South AfricanPolice Service who investigated that offence, all information and particularsavailable to that person in relation to any one or more or all of the followingmatters (whichever may have been applicable in the circumstances):
(i) The source from which the counterfeit goods involved in the
commission of the offence, were obtained;
(ii) the identity of the persons involved in the importation, exportation,
manufacture, production or making of those counterfeit goods;
(iii) the identity and if reasonably demanded, the addresses or
whereabouts of the persons involved in the distribution of those
goods;
(iv) the channels for the distribution of those goods.IP/Q4/ZAF/1
Page 16
"(4)(a) The Minister may from time to time by notice in the Gazette  increase the
amounts of the fines mentioned in paragraphs (a) and (b) of subsection (1).
(b) That notice must be laid on the table in the National Assembly, for its
consideration and approval, within 14 days after the date on which it ispublished in the Gazette  if the National Assembly is then in session or if it is
not then in session within 14 days of the commencement of its next session."
IV. REPLIES TO QUESTIONS POSED BY SWITZERLAND
1. Please explain whether international treaties which contain detailed provisions
addressed to the (judicial) authorities and not to the State itself are considered as self-executing
in your system?  If not, when there is a divergence between the intellectual property
legislation/practices and the international agreement in your country, does the latter
automatically prevail?  If not, please explai n the means allowing your country to fulfil the
international obligations?  Please ci te the relevant texts or jurisprudence .
Section 231 of the Constitution of the Republic of South Africa, provides:
"(1) The negotiating and signing of all international agreements is the responsibility of
the national executive.
"(2) An international agreement binds the Republic only after it has been approved by
resolution in both the National Assembly and the National Council of Provinces,unless it is an agreement referred to in subsection (3).
"(3) An international agreement of a technical, administrative or executive nature, or an
agreement which does not require either ratification or accession, entered into bythe national executive, binds the Republic without approval by the NationalAssembly and the National Council of Provinces, but must be tabled in theAssembly and the Council within a reasonable time.
"(4) Any international agreement becomes law in the Republic when it is enacted into
law by national legislation; but a self-executing provision of an agreement that hasbeen approved by Parliament is law in the Republic unless it is inconsistent with theConstitution or an Act of Parliament.
"(5) The Republic is bound by international agreements which were binding on the
Republic when this Constitution took effect."
2. Article 55 of the TRIPS Agreement provides th at “... in appropriate cases, this time limit
[of ten days] may be extended by another ten working days”.  Is such time extension foreseen in
your laws?  If yes, please cite the relevant provisions.  If not, please explain how an applicantcan avail himself of this possibility as provided by the TRIPS Agreement?
Currently no provision exists which addresses this issue.IP/Q4/ZAF/1
Page 17
V. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General obligations
1. Articles 41.1 and 42 of the TRIPS Agreement require that procedures be available for
the effective enforcement of the intellectual property rights covered by the Agreement.  Please
describe the structure of the judicial and administrative12 procedures in South Africa in which
parties can enforce their intellectual property rights, at local, provincial and national levels,
indicating the jurisdiction of each type of court or administrative body and explaining theinterrelationships, if any, of the various types of courts and administrative bodies.  Cite thelaws or other authorities establishing the structure, including each type of court and
administrative body.
Intellectual property rights can be enforced in South Africa by way of infringement
proceedings in a court of law having jurisdiction.
The relevant courts having jurisdiction in intellectual property infringement cases are:(a) The various provincial and local divisions of the High Court of South Africa have
jurisdiction in cases of trademark, copyright and design infringement.  Proceedings in
the High Courts are regulated by the Supreme Court Act No. 59 of 1959 and the
Rules of the Supreme Court.
(b) The Court of the Commissioner of Patents has jurisdiction in cases of patent
infringement (Section 8 of Patents Act No. 57 of 1978, Regulations 76-100 of the
Patent Regulations).
(c) The local and regional Magistrates' Courts of South Africa have jurisdiction in cases
of copyright infringement where the quantum of the claim is below R 100,000.
However, these "lower" courts are seldom, if ever, used in civil intellectual property
cases.  The proceedings in the Magistrates' Courts are regulated by the Magistrates'Courts Act No. 32 of 1944.
(d) There are no administrative bodies having jurisdiction to enforce intellectual property
rights in South Africa.
2. Please describe briefly the procedure that must be followed by a foreign party to
initiate an enforcement procedure in each of the Courts and administrative bodies identified inresponse to question 1 and cite the legal authorities establishing those procedures.
Procedures in infringement actions
NB: Please note that the superior courts in South Africa were previously known as the Supreme
Court;  they have now been named High Courts .  The appeal court is known as the Supreme
Court of Appeal.
The procedure in infringement proceedings is in accordance with the law and Rules governing
procedure in civil cases in the High Court.
                                                     
12 These questions apply to both judicial and administrative enforcement of intellectual property rights
because of Article 49 of the TRIPS Agreement.IP/Q4/ZAF/1
Page 18
(a) The procedural steps for copyright and design infringement actions under the relevant
High Court Rules are as follows:
(1) The action is commenced by the issue of a combined Summons supported by
a Power of Attorney and a Resolution (if the Plaintiff is a company).  If the
Power of Attorney is executed outside the Republic of South Africa it mustbe legalized.  The combined Summons must be in the prescribed form and
shall have annexed to it a statement of the material facts relied on by the
Plaintiff in support of his claim.
(2) Within ten Court days (which excludes Saturdays, Sundays and Public
Holidays) from the service of the combined Summons on the Defendant, or
within 21 days if the Defendant resides more than 80 kilometres from thenearest railway station, the Defendant must deliver a Notice of Intention to
defend.
(3) Within 20 Court days after the delivery of the Defendant's Notice of Intention
to defend the Defendant must deliver his Plea setting out his defences plusany claim in reconvention.  Failure by the Defendant to deliver such Plea
and/or claim in reconvention within the prescribed time entitles the Plaintiff
thereafter to serve notice on the Defendant requiring the Defendant to Plead
within five Court days, failing which the Defendant is barred from pleading.
(4) Within 15 Court days after delivery of the Defendant's Plea and/or Claim in
Reconvention the Plaintiff must deliver his Replication and/or Plea to the
Claim in Reconvention.
(5) Within ten Court days from the delivery of the Plaintiff's Replication and/or
Plea to the Claim in Reconvention the Defendant must file his Replication in
Reconvention.
(6) Any further pleadings must be delivered within ten Court days of any
preceding pleadings.
(7) Provision is made in the Rule for obtaining an interim interdict (i.e. a
preliminary injunction) in appropriate cases, applying to have portions
thereof struck out where appropriate, or excepting to pleadings.
(8) After the close of pleadings there are certain interlocutory proceedings,
e.g. Discovery Affidavits in which the parties must disclose all books anddocuments that may be relevant to the issues involved, inspection of the
documents so disclosed, inspection of premises or processes where required,
commissions to take evidence abroad, etc.  In terms of the Rules of the
Supreme Court it is essential that before a Plaintiff's attorney can set the
action down for hearing he must arrange a pre-trial conference with theDefendant's attorney with a view to securing curtailment of the duration of
the hearing by, e.g. appropriate admissions, disclosure of documents, etc.
Before the trial each party must deliver to the other a summary of the
opinions of each expert witness he intends to rely on and the reasons for such
opinions as well as copies of any plans, diagrams, models, photographs, etc.,on which it is proposed to rely in the action.IP/Q4/ZAF/1
Page 19
(9) Finally, the matter is brought to trial before the Court at which oral evidence
is given by witnesses who are subject to examination, cross-examination and
re-examination.
The time-limits referred to above can be, and in practice usually are, extended by consent of
the parties or, failing such consent, the Court has power, in an appropriate case, to extend the
time-limits.
The relevant provisions are set out in Rule 6 of the Uniform Rules of Court (for applications),
and in Rules 17, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29 of the Rules for actions.13
(b) The procedure in patent infringement proceedings is in accordance with the law
governing procedure in civil cases in the Transvaal Provincial Division of the HighCourt or in default thereof and where there is no relevant provision under the Patents
Act No. 57 of 1978, in accordance with a direction given by the Commissioner of
Patents.
The procedural steps for patent infringement actions under the relevant High Court
Rules are as follows:
(1) The action is commenced by the issue of a combined Summons supported by
a Power of Attorney and a Resolution (if the Plaintiff is a company).  If the
Power of Attorney is executed outside the Republic of South Africa it must belegalized.  The combined summons must be in the prescribed form and shall
have annexed to it a statement of the material facts relied on by the Plaintiff in
support of his claim.
(2) Within ten Court days (which excludes Saturdays, Sundays and Public
Holidays) from the service of the combined Summons on the Defendant, or
within 20 days if the Defendant resides more than 80 kilometres from the
nearest railway station, the Defendant must deliver a Notice of Intention to
Defend.
(3) Within 20 Court days after the delivery of the Defendant's Notice of Intention
to defend the Defendant must deliver his Plea setting out his defences, e.g.
non-infringement and invalidity of the patent plus any claim in reconvention
e.g. for revocation of the patent.  Failure by the Defendant to deliver such
Pleas and/or claim in reconvention within the prescribed time entitles the
Plaintiff thereafter to serve notice on the Defendant requiring the Defendant
to Plead within five court days, failing which the Defendant is barred frompleading.
(4) Within 15 Court days after delivery of the Defendant's Plea and/or Claim in
Reconvention the Plaintiff must deliver his Replication and/or Plea to the
Claim in Reconvention.
(5) Within ten days from the delivery of the Plaintiff's Replication and/or Plea to
the Claim in Reconvention the Defendant must file his Replication in
Reconvention.
(6) Any further pleadings must be delivered within ten Court days of any
preceding pleadings.
                                                     
13 These Rules are set out (in English only) in Annex 3 to document IP/N/6/ZAF/1.IP/Q4/ZAF/1
Page 20
(7) Provision is made in the Rules for obtaining an interim interdict (i.e. an
interlocutory injunction) in appropriate cases, applying to have portions
thereof struck out where appropriate, or excepting to pleadings.
(8) After the close of pleadings there are certain interlocutory proceedings,
e.g. Discovery Affidavits in which the parties must disclose all books and
documents that may be relevant to the issues involved, inspection of the
documents so disclosed, inspection of premises or processes where required,
commissions to take evidence abroad, etc.  In terms of the Rules of the High
Court it is essential that before a Plaintiff's attorney can set the action down
for hearing he must arrange a pre-trial conference with the Defendant's
attorney with a view to securing curtailment of the duration of the hearing by,e.g. appropriate admissions, disclosure of documents, etc.  Before the trial
each party must deliver to the other a summary of the opinions of each expert
witness he intends to rely on and the reasons for such opinions as well as
copies of any plans, diagrams, models, photographs, etc., on which it is
proposed to rely in the action.
(9) Finally, the matter is brought to trial before the Commissioner of Patents at
which oral evidence is given by witnesses who are subject to examination,
cross-examination and re-examination.
The time-limits referred to above can be, and in practice usually are, extended by consent of
the parties or, failing such consent, the Court has power, in an appropriate case, to extend the
time-limits.
(c) There are generally two types of proceedings that may be instituted in trademark
matters before the Court, namely, applications (motion proceedings) and actions (trial
proceedings).
(1) Applications (motion proceedings)
- An application for relief is brought on notice of motion supported by affidavit
evidence.
- Copies of the notice and all annexes are served on every respondent.- If the respondent does not give timeous notice of any intention to oppose, the
applicant may place the matter on the roll for hearing and seek the order onthe specified date.
- If the respondent intends opposing the application, he or she must file a notice
of intention to oppose and then deliver an answering affidavit, if any, together
with any supporting documents.
- Once the answering affidavit is filed, the applicant may deliver a replying
affidavit.
- Application is then made for a hearing date and the matter is set down for
argument.IP/Q4/ZAF/1
Page 21
- If the application cannot properly be decided on affidavit, the Court may
dismiss the application or make any appropriate order with a view to ensuring
a just and expeditious decision.
(2) Actions (trial proceedings)
- An action is commenced by the issuing out of a summons and is normally
accompanied by particulars of claim which comprise a statement of the
material facts relied on by the plaintiff in support of his or her claim.
- If the defendant intends to defend the action, he or she must deliver a notice
of intention to defend within the prescribed time.
- If a foreign defendant is involved, the plaintiff may first find it necessary to
attach property in South Africa to found or confirm jurisdiction.  The Act
makes specific provision for the attachment of registered trademarks for this
purpose.
- If no notice of intention to defend is delivered, the plaintiff may apply for an
order to be granted on an unopposed basis.
- After the delivery of a notice of intention to defend, the defendant must
deliver a plea setting out its defences and any counter-claim.
- Failure by the defendant to deliver a plea within the prescribed time entitles
the plaintiff to serve notice on the defendant requiring the defendant to plead
within a certain time (notice of bar), failing which the defendant is barred
from pleading.
- After delivery of the defendant's plea and/or counter-claim the plaintiff may
deliver a replication and plea to any counter-claim.
- After the delivery of the plaintiff's replication and/or plea to the counter-claim
the defendant must file a replication in reconvention.
- After the close of pleadings, there are certain procedures, including discovery
(in which the parties must disclose all documents and tapes which may be
relevant to the issues involved), inspection of the documents so disclosed,
inspection of premises or process where required, requests of particulars for
trial and commissions to take evidence abroad.
- Before the matter is set down for hearing, the plaintiff's attorney must arrange
a pre-trial conference with the defendant with a view to securing curtailment
of the duration of the hearing.
- Before the trial, each party must deliver to the other a summary of the
opinions of any expert witnesses on whom it intends to rely and the reasons
for such opinions as well as copies of any plans, diagrams, models,
photographs, etc. on which it is proposed to rely in the action.
- Finally, the matter is brought to trial at which oral evidence is given by
witnesses who are subject to ex amination, cross-examination and
re-examination.  Both parties are then given an opportunity to argue theirIP/Q4/ZAF/1
Page 22
cases and, having heard the argument, the Court will in due course hand down
its judgement.
3. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the Courts and administrative bodies identified in answer to question 1 that is not requiredof a national or resident of South Africa and cite the legal authorities providing for thosedifferences.
A foreign party is not required to meet any requirement not applicable to a national or
resident of South Africa in order to institute proceedings for enforcement, except that the local party is
entitled to ask for a (bank) guarantee that costs will  be paid in the event of a cost order against the
foreign party.
4. Articles 41.1 and 48 of the TRIPS Agreement require establishment of safeguards
against abuse of judicial and administrative enforcement procedures, including provision foradequate compensation for injury suffered because of such abuse.  Please describe the meansavailable under the law of South Africa to prevent abuse of judicial and administrativeprocedures or to remedy damages suffered as a result of such abuse and cite the legalauthorities for those means.
No specific indemnification provisions against abuse of enforcement procedures exist.
However, if a defendant is wrongfully sued or joined in civil proceedings in the Courts, it will be able
to set the proceedings aside and will be awarded its legal costs (on the punitive scale if appropriate)
and any damages which it might have suffered as a result.  Furthermore, in certain instances, the
Court may require a plaintiff to furnish security for costs and/or damages.
5. Article 41.2 addresses, among other things, the cost of judicial and administrative
enforcement proceedings.  Please describe any fees charged by judicial or administrativeofficials for filing legal actions involving intellectual property or for pursuing such actions onceinitiated, cite the legal authorities for such fees, and provide copies of the documents used toinform the public of such fees.
No fees are charged by judicial officials to file or prosecute legal actions involving
intellectual property rights, except for the stamp duty payable on the issue of summons (which is the
same for all matters, also those other than intellectual property).
6. Article 41.2 also addresses the timeliness of judicial and administrative enforcement
proceedings.  Please cite to the legal authorities establishing any time limits for judicial andadministrative proceedings and, if it has not already been done, provide copies of the laws orregulations in question.
(a) No specific legal provisions exist governing the length or cost of legal proceedings.
The Rules of Court set out clear time-limits for the various stages of civilproceedings.  Extensions may be agreed to inter partes  or the Court might grant
extensions or condone late service in appropriate circumstances which will lengthen
the duration of the proceedings.
(b) The essential time-periods are set out in Rule 6 of the Uniform Rules of Court (for
applications) and Rules 17, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29 of the RulesIP/Q4/ZAF/1
Page 23
for actions.14  No statistical data is available on the actual duration of proceedings or
their cost.
7. Please explain any provisions in the enforcement system in South Africa that ensure
expeditious remedies.  In addition, please explain what provisions are available to preventdeliberate delays by the parties to a proceeding and indicate the circumstances in which suchprovisions will be applied.
Please see the reply to question 6 above.
8. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determine the reasoning on which the decision is based.Please state, with regard to each type of court and administrative body identified inquestion 1, whether judges or administrative officials must render their decisions in writingand cite the legal authorities requiring such written opinions.
Proceedings in the High Courts are recorded electronically, and litigants may apply for
transcriptions of the recordings.  Judgements are generally given in writing.
9. Article 41.3 also requires that decisions on the merits of a case be based only on
evidence in respect of which parties had an opportunity to be heard.  Please state, with regardto each type of court and administrative body identified in question 1, what factors may beconsidered by a judge or administrative official in rendering a decision and cite the legalauthorities establishing the basis on which judges and administrative officials may reachdecisions.
As indicated in the answer to question 2 above, evidence in motion proceedings is generally
by affidavit unless the Court directs otherwise.  In actions, evidence is given orally.  The evidence of
expert witnesses as well as copies of plans, diagrams, etc. have to be made available to the other party
before trial.  Witnesses who give oral evidence are subject to cross-examination.
In coming to a decision, a judge in the first place evaluates the evidence tendered in court, but
he may take cognisance of other laws of the country, e.g. the provisions of the Constitution of South
Africa.
10. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial
and administrative decisions in intellectual property enforcement proceedings.  Please describewhat legal limitations, if any, are placed upon the ability of a party to an intellectual propertyenforcement proceeding to have both procedural rulings and final decisions reviewed by a
separate judicial authority, and cite the legal authorities providing for such reviews.
All procedural rulings and final decisions on the merits of South African courts are subject to
review and/or appeal, with the exception of temporary interdicts (interlocutory injunctions).
The current legal position in South Africa is that an interlocutory injunction (temporary
interdict) is not subject to review nor to appeal.  It is submitted that this position is not in conflict withArticle 41.4, inasmuch as the decision in regard to an interlocutory injunction is not a decision on the
merits of a case.  An interlocutory injunction is based on a balance of convenience, and the merits of
the case are specifically not decided.  To succeed with a temporary interdict, the claimant merely has
to show, prima facie, that there is a right which is or is about to be infringed, and that the balance of
                                                     
14 These Rules are set out (in English only) in Annex 3 to document IP/N/6/ZAF/1.IP/Q4/ZAF/1
Page 24
convenience favours the granting of a temporary interdict pending the finalization of the main
proceedings.
Furthermore, an interlocutory injunction is exactly that, namely a temporary order pending
further court action; if such further court action does not follow within a reasonable period, the
interlocutory injunction can be discharged.  The order normally specifies a return date by which causemust be shown as to why the temporary interdict should not be made permanent, thus creating an
opportunity for the respondent to state his case.
The system is safeguarded against abuse in that the Court requires to be satisfied that the
balance of convenience is in favour of the granting of such an interdict, and in considering this aspect
the Court will consider the status and financial position of both parties, and will make the decision on
the basis of the least measure of interference with the activities of a party.
Civil and administrative procedures and remedies
11. Article 42 requires that defendants be notified of judicial and administrative
intellectual property enforcement proceedings brought against them.  Please describe theprocedures followed by each type of court and administrative body identified in question 1 fornotifying defending parties regarding proceedings that have been initiated against them,indicate the information provided regarding the proceeding and cite the legal authoritiesestablishing these procedures.
In the case of infringement proceedings, whether by way of application or action, the notice
of motion or the combined summons has to be served on every respondent by the applicant/plaintiff.
The Court has to be satisfied that proper service took place.  Receipt of service is usually endorsed on
the original notice of motion/summons under the sign ature of the respondent or his authorized agent.
12. Article 42 also requires that parties to intellectual property enforcement proceedings
must be able to be represented by counsel and must not be subject to overly burdensomerequirements to appear personally.  Please describe any limitations under South Africa’s lawson the ability of a party in such a proceeding to be represented by independent legal counseland any requirements imposed on the party to appear personally in a proceeding.  Please citethe legal authorities providing such limitations and imposing such requirements.
Parties may personally represent themselves in the High Court or may be represented by an
attorney (having the right of appearance) or an advocate of the High Court of South Africa.
There is no requirement for mandatory personal appearance.  If the right holder needs to give
essential evidence in a trial action, a personal appearance in that sense is necessary.
See also: Section 19(3) Patents Act No. 57 of 1978;
Section 13 Designs Act No. 195 of 1993.
13. Under Article 42, parties are to be entitled to substantiate claims and present relevant
evidence.  Please describe any limitations under the law of South Africa on a party’s ability tosubstantiate a claim or to present relevant evidence and cite the legal authority providing suchlimitations.
There are no limitations as envisaged in this question in the field of intellectual property law.
There are, however, certain protective provisions such as Section 67(3) of Patents Act No. 57 of 1978
providing that a person need not disclose secret process information, if it appears to the CommissionerIP/Q4/ZAF/1
Page 25
that it would be unreasonable to do so, in cases of an alleged infringing product made by a process for
obtaining a new product.15
14. Article 42 requires, with one narrow exception, that there be a means to identify and
protect confidential information during judicial and administrative intellectual propertyenforcement proceedings.  Please describe the means provided under the law of South Africafor parties to identify and have protected confidential information required to be presented inorder to prove their claims and cite the legal authorities providing for such identification andprotection.
The protection of confidential information brought forward as evidence may be ordered by
the High Court or the Court and the Commissioner of Patents in terms of their inherent powers.
The litigant wishing to protect such information may make application to the Court (if
agreement with the opposing party is not possible) for appropriate directions.  Experience indicates
that the Courts are generally sympathetic to such approaches in appropriate circumstances.
Section 67 of the Patents Act, 1978, also contains certain provisions regarding non-disclosure
of secret processes.
15
15. Article 43.1 of the TRIPS Agreement requires that judicial and administrative officials
be able to order a party to an intellectual property enforcement proceeding to produce
relevant evidence in that party’s control identified by the opposing party when the latter party
has presented reasonably available evidence in support of its claims.  Please describe how andin what circumstances judges and administrative officials may order production of relevantevidence in intellectual property enforcement proceedings and cite the legal authoritiesproviding for such orders.
Discovery and production of documents and tape recordings in the High Court of
South Africa, and in the Court of the Commissioner of Patents, is dealt with in Rule 35 of the Uniform
Rules of Court.
16
Discovery will only be ordered after the institution of proceedings and generally only after the
close of pleadings.
In special cases, (such as the "Anton Piller" situation), the Court may order, on an ex parte
basis, that certain evidence be taken into the possession of a sheriff for its preservation pending the
institution of civil proceedings.
Statutory provisions for Anton Piller-type orders have been enacted in the Counterfeit Goods
Act No. 37 of 1997, in Section 11.17
16. Information ordered to be produced, referred to in question 15, must be protected if it
is confidential.  Please describe the means provided under the law of South Africa forprotecting such information and cite the legal authority providing for such protection, if thosemeans differ from those described in answer to question 14.
Please see the reply to question 14 above.
                                                     
15 Section 67 of the Patents Act is set out (in English only) in Annex 2 to document IP/N/6/ZAF/1.
16 Rule 35 is set out (in English only) in Annex 1 to document IP/N/6/ZAF/1.
17 Section 11 of the Counterfeit Goods Act is set out (in English only) in Annex 2 below.IP/Q4/ZAF/1
Page 26
17. Article 43.2 provides that, in the event a party refuses to provide information ordered
by the judicial or administrative officials, those officials may be authorized to makepreliminary and final determinations adverse to that party.  Please describe what sanctionsmay be imposed on a party that refused to provide ordered information and under whatcircumstances those sanctions are imposed, citing the legal authority for those sanctions.
South African judicial authorities are very hesitant to order persons to disclose, verbally or by
way of a written statement, particular information (as opposed to making available, through discoveryor in special ex parte  situations, specific documents and evidence).  Such a practice in civil
proceedings is generally unconstitutional in terms of the Constitution of South Africa.  In the criminal
context, the Counterfeit Goods Act, 1997, contains certain provisions regarding disclosure of
information by a defendant.
18. Article 44.1 requires that judicial and administrative officials be able to enjoin or
otherwise prevent infringing activity by a party, including by preventing the entry ofinfringing goods into the channels of commerce in their jurisdiction.  Please describe authorityof the judges and administrative officials identified in question 1 to order parties to stopinfringements and to prevent infringing goods from entering the channels of commerce in theirjurisdiction immediately after clearance of such goods through customs.  In addition, pleasecite the legal authorities authorizing such actions.
The relevant South African Courts are empowered to give relief in the form of an interdict
(injunction) to stop infringement and to prevent infringing products to enter the market and the
channels of commerce generally, by prohibiting the sale and/or offering for sale of such products.
The Courts can also order the delivery up of infringing products; and in the case of trademark
infringement, the removal of the infringing mark from all products, or where this is not possible, the
delivery up of such products.
See, e.g.: Section 65(3) Patents Act No. 57 of 1978;
Section 34(3) Trade Marks Act No. 194 of 1993;
Section 24(1) Copyright Act No. 98 of 1978;
Section 35(3) Designs Act No. 195 of 1993.
19. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy forinfringement to payment of adequate remuneration as provided in Article 31(h).  Pleasedescribe any such limitations on remedies in the laws of South Africa and cite the legalauthorities providing for those limitations.
The following provisions in South African intellectual property legislation are relevant to the
subject-matter of this question:
Patents Act No. 57 of 1978:
- Section 4 Use by a Minister of State for public purposes (this Section has not to
date been invoked).
- Section 55 Compulsory licence in the case of a dependent patent (no record
could be found of a successful application under this section).IP/Q4/ZAF/1
Page 27
- Section 56 Compulsory licence in case of an abuse of patent rights (no record of
successful application).
- Section 78 The Minister (of Trade and Industry) may acquire an invention or a
patent on behalf of the State (not yet invoked).
- Section 79 The Minister of Defence may acquire, on behalf of the State, an
invention or patent relating to armaments or defined in the
Armaments Development and Production Act, 1968 (not yet
invoked).
- Section 15C of the Medicines and Related Substances Control Act 101 of 1965:  the
Minister of Health may determine that certain patent rights shall not apply to certainspecified medicines (Act passed but not yet in force).
Designs Act No. 195 of 1993:
- Section 21 Compulsory licence in the case of an abuse of design rights (not yet
invoked).
Copyright Act No. 98 of 1978:
- Section 45 The Minister (of Trade and Industry) may make regulations to
prohibit or authorize the circulation, presentation or exhibition of
certain works (not yet invoked).
- Section 45A The Minister may make regulations regarding the reproduction or
adaptation of certain artistic works (this section is not yet in
operation).
20. Article 45.1 requires that judicial and administrative officials be able to order an
infringer to pay the right holder damages adequate to compensate for the injury caused by theinfringement.  Please describe the authority of the judges and administrative officialsidentified in question 1 to order a party found to be infringing to pay the right holder damagesadequate to compensate for the injury caused by the infringement.  Please explain the factorsconsidered in establishing the amount of the compensation and cite the legal authoritiesauthorizing such compensation orders.
In terms of the Patents Act, 1978 (as amended), the Trade Marks Act, 1993 (as amended), the
Copyright Act, 1978 (as amended) and the Designs Act, 1993 (as amended), and the Rules governing
procedure in the High Court and the Court of the Commissioner of Patents, these Courts areempowered, in cases of infringement, to order damages to be paid by the infringing party.  All four of
the Acts make provision for the award of damages (the normal basis being the actual patrimonial loss
suffered) or, in lieu of damages, the payment of a reasonable royalty which would have been payable
by a licensee for the use of the intellectual property right concerned.  The Copyright Act also contains
provisions (Section 24(3)) for the award of punitive damages.  Damages may only be recovered byway of action.
The Courts are also authorized to direct that an enquiry into damages is to be held for
purposes of determining the amount of any damages or reasonable royalty to be paid.IP/Q4/ZAF/1
Page 28
21. Article 45.2 requires that judges and administrative officials be authorized to order
payment of a right holder's expenses, including legal fees.  Please describe the authority of thejudges and administrative officials identified in question 1 to order payment of right holders’expenses, the circumstances under which such an order will be given, the factors considered inestablishing the expenses, and cite the legal authorities authorizing such payments.
The Courts have inherent power to grant an order as to costs in favour of the successful
litigant such costs generally, being attorneys' fees and disbursements or expenses.  These areinvariably awarded, in terms of the Rules governing procedure in the Courts, to the successful litigant
on a scale prescribed by tariff.  In certain cases, to express its displeasure at the manner in which a
litigant has conducted itself, the Court may award punitive legal costs on a higher scale.
22. Article 46 requires that judges and administrative officials be authorized to order, in
certain circumstances, other remedies, including disposal of goods outside commercialchannels or destruction of goods and destruction of materials and implements the predominantuse of which is the creation of infringing goods.  Please describe the additional remediesavailable under the laws of South Africa, the circumstances in which such authority will beexercised, the factors considered in determining the nature of the remedies provided, and citethe legal authorities providing for such remedies.
The South African Patents Act, Trade Marks Act, Designs Act and Copyright Act provide for
the following remedies to be ordered in proceedings for infringement, namely:
- interdicts (injunctions);- damages (see the reply to question 20);
- delivery-up of infringing products (see the reply to question 18 above).
The aforesaid four intellectual property statutes do not expressly provide that the purpose of
the order for delivery-up of infringing goods is for the goods to be destroyed.
23. Article 47 provides that WTO Members may authorize judges and administrative
officials to order infringers to identify for right holders third parties involved in theproduction and distribution of infringing goods or services and their channels of distribution.Please describe any authority judges and administrative officials have under the laws of SouthAfrica to order infringers to identify for right holders third parties involved in the productionand distribution of infringing goods or services and their channels of distribution and describethe circumstances in which this authority would be exercised.  Please cite the legal authoritiesproviding for such remedies.
South African Courts held that they have inherent jurisdiction, in special ex parte  situations,
to grant Anton Piller order for specific documents and evidence to be disclosed.  In the criminal
context, the Counterfeit Goods Act No. 37 of 1997 contains certain provisions regarding disclosure of
information by a defendant, including information regarding the identity of the supplier or source of
the counterfeit goods in question.  This latter Act prescribes certain safeguards to prevent abuse of
powers.  See in this regard the provisions  of Section 5 of the Counterfeit Goods Act.
18
The Counterfeit Goods Act also provides for the granting of an Anton Piller-type order
authorizing the search for an attachment of evidence, pending institution of civil proceedings.  Such
                                                     
18 Section 5 of the Counterfeit Goods Act is set out (in English only) in Annex 1 below.IP/Q4/ZAF/1
Page 29
an order may be granted on an ex parte  basis.  See in this regard Section 11 of the Counterfeit Goods
Act.19
24. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith incarrying out their responsibilities under the law.  Please explain any exemption providedpublic authorities and officials from liability for abuse of enforcement procedures, describe thecircumstances in which such limitations would not apply, and cite the legal authoritiesgranting such exemptions.
The Counterfeit Goods Act No. 37 of 1997 contains  provisions granting certain exemptions to
inspectors (as defined).  Such an inspector or the St ate will be liable only in cases of gross negligence
or bad faith.  See in this regard Section 17.
20
Provisional measures
25. Articles 50.1 and 50.8 require that judicial and administrative authorities have the
authority to order prompt and effective provisional remedies to prevent an infringement ofany intellectual property right.  With respect to each intellectual property right identified inArticle 1.2 of the TRIPS Agreement, please identify the provisional measures available toprotect intellectual property rights.  Please cite the relevant legal authority establishing thoseprovisional remedies.
No administrative provisional measures nor administrative procedures on the merits are
available in South Africa in cases of infringement of intellectual property rights.
The following provisional judicial measures are available in respect of all intellectual
property rights identified in Article 1.2 of the TRIPS Agreement:
(a) the granting of urgent, interim, injunctive relief in cases of intellectual property
rights infringement where urgency exists.  The authority to grant such relief stemsfrom the inherent powers of the High Court and the Court of the Commissioner ofPatents;
(b) the search for and attachment of evidence, pending institution of civil proceedings,
to preserve such evidence relating to infringement of intellectual property rights.This may be granted on an ex parte  basis as provided for by Section 11 of the
Counterfeit Goods Act, 1997.
19 Similarly, in terms of the common law and the
inherent powers and jurisdiction of the Courts, similar relief may be granted;
(c) discovery of documents and tape recordings before the close of pleadings on good
cause shown with the leave of the Court.
                                                     
19 Section 11 of the Counterfeit Goods Act is set out (in English only) in Annex 2 below.
20 Section 17 of the Counterfeit Goods Act is set out (in English only) in Annex 4 below.IP/Q4/ZAF/1
Page 30
26. Articles 50.1 and 50.8 require that judicial and administrative authorities have the
authority to order prompt and effective provisional remedies to preserve relevant evidence inregard to an alleged infringement.  Please identify the provisional measures available topreserve relevant evidence in regard to an alleged infringement and cite the relevant legalauthority.
Again there is no provision for administrative authorities to grant remedies to preserve
evidence in the case of infringement of intellectual property rights.
(a) Discovery and production of documents and tape recordings in the High Court of
South Africa, and in the Court of the Commissioner of Patents, is dealt with inRule 35 of the Uniform Rules of Court.
21  Discovery will only be ordered after the
institution of proceedings and generally only after the close of pleadings.
(b) In special cases, (such as the 'Anton Piller' situation), the Court may order, on an
ex parte  basis, that certain evidence be taken into the possession of a sheriff for its
preservation pending the institution of civil proceedings.  The Court has thisauthority on the basis of its inherent powers and jurisdiction.
(c) In cases of counterfeit goods involving copyright and trademark rights, the
Counterfeit Goods Act, 1997 in Section 11
22 provides statutory powers in Anton
Piller-type situations.
27. Articles 50.2 and 50.8 require Members to authorize judicial and administrative
authorities to adopt provisional measures inaudita altera parte .  With respect to each
intellectual property right identified in Article 1.2 of the TRIPS Agreement, please describebriefly the circumstances in which the judicial and administrative authorities are empoweredto adopt provisional measures inaudita altera parte  and cite the relevant legal authority.
Provisional measures inaudita altera parte  are provided for by statute in Section 11 of the
Counterfeit Goods Act, 1997 (the so-ca lled "Statutory An ton Piller order");
22 or may be granted by
a court in terms of its inherent powers and jurisdiction (the so-called "common law Anton Pillerorders").  The statutory measures in terms of the Counterfeit Goods Act are available in caseswhere acts of dealing in counterfeit goods are taking place;  the common law procedures are notlimited to intellectual property rights and can be used generally where there is an apprehension thatevidence may be hidden or destroyed.
These orders (both statutory and on the basis of the common law) are described in detail in
a section from an article by a South African intellectual property lawyer.
23
                                                     
21 Rule 35 is set out (in English only) in Annex 1 to document IP/N/6/ZAF/1.
22 Section 11 of the Counterfeit Goods Act is set out (in English only) in Annex 2 below.
23 The article is reproduced (in English only) in Annex 5 to document IP/N/6/ZAF/1.IP/Q4/ZAF/1
Page 31
28. Articles 50.2 and 50.8 require that judicial authorities and administrative bodies be
authorized to grant provisional remedies when a delay is likely to cause "irreparable harm" tothe right holder.  Please describe briefly what is required by the authorities identified inanswers to questions 25, 26 and 27 to establish "irreparable harm" to the right holder.
In South African law, a clear distinction is drawn between interlocutory and final
interdicts/injunctions.  The following requirements are generally accepted to apply in order toobtain an interlocutory or interim interdict:
(a) a right that is prima facie established although open to some doubt;(b) a well-grounded apprehension of irreparable harm if the interlocutory relief is not
granted and the ultimate relief is eventually granted;
(c) the balance of convenience must favour the granting of interlocutory relief; and(d) the absence of any other satisfactory remedy.In intellectual property cases, the irrepa rable harm will generally be economic.  The
apprehension of irreparable harm must be objectively reasonable.
29. Articles 50.2 and 50.8 also require that judicial authorities and administrative bodies
be authorized to grant provisional remedies when there is a "demonstrable risk of evidencebeing destroyed".  Please describe briefly what factors are considered by the competentauthorities in determining when there is a "demonstrable risk of evidence being destroyed".
In the context of the granting of a statutory Anton Piller order in terms of Section 11 of the
Counterfeit Goods Act, the Court must be satisfied that;
(a) the applicant's right to discovery of documents in conventional proceedings is likely
to be frustrated, either by reason of the nature of the counterfeit goods or throughother circumstances;  or
(b) should conventional court procedures be followed, the relevant goods or evidence
relating to transactions or dealings with the goods is likely to be destroyed or soaltered or placed or disposed of as to effectively preclude the applicant of havingaccess thereto.
In the context of the granting of a common law Anton Piller order, the applicant must show
that there is a real and well-founded apprehension that the relevant evidence will be hidden ordestroyed or in some manner spirited away by the time that the matter comes to the stage ofdiscovery in conventional proceedings.
See Shoba v OC, Temporary Police Camp, Wagindrift Dam  1995 (4) SA 1(A) at 15, where
judgment was given by Chief Justice Corbett.IP/Q4/ZAF/1
Page 32
30. Articles 50.3 and 50.8 require that judicial and administrative authorities be
authorized to require an applicant to provide evidence to establish with a sufficient degree ofcertainty that the applicant is the right holder and that infringement has occurred or isimminent.  With respect to each intellectual property right defined in Article 1.2 of the TRIPSAgreement, please describe the evidence required by right holders to establish ownership.
For temporary or interim injunctive relief, our courts require the applicant to make out a
prima facie case, namely that a prima facie right must be shown to exist and that there is a prospectof success in the claim for principal relief even though such prospect may be considered to be weak.See Ferreira v Levin NO  1995 (2) SA 813 (W) at 832.
31. Articles 50.3 and 50.8 require that judicial and administrative authorities be
authorized to provide a security or equivalent assurance to protect the defendant.  Withrespect to each intellectual property right identified in Article 1.2 of the TRIPS Agreement,please cite the legal authority establishing a security or equivalent assurance.
Safeguards to protect the legitimate interests of the defendant in such situations include the
generally applied requirement that an applicant for interim relief furnish security for costs and/ordamages.  Furthermore, in the case of proceedings in terms of Section 11 of the Counterfeit GoodsAct, 1997 (and the equivalent common law proceedings) a defendant (respondent) is entitled toanticipate the return day of any order granted by the Court on 24 hours notice to have the order setaside.
32. Article 50.4 requires that parties be notified when provisional measures have been
adopted inaudita altera parte .  Please describe briefly the procedures followed by each
authority able to adopt such measures for notifying affected parties and state the time withinwhich such notice must take place.
Where provisional relief is obtained ex parte /inaudita altera parte  on the basis of the
common law (for example by way of an Anton Piller order or in the case of urgency), the Courtwill prescribe, as part of the order, the manner in which the defendant is to be notified.  Forexample, the order may be in the form of a rule nisi calling on the defendant to show cause on the
return day why an interim interdict should not remain in force pending the outcome of the principalaction.  The return day of an ex parte  order may be anticipated on 24 hours notice.
In the Shoba  case ( supra ), the Court included in its order the following paragraphs:
(a) that the applicant's attorney file with this Court an affidavit setting forth the manner
in which this order was executed, the portion of the premises inspected and theobservations made by the applicant's attorney in the course of such inspection;  andthat a copy of such affidavit, together with the documents filed in these proceedingsand the Court's order be served upon the respondents;
(b) that any interested party is given leave to apply to this Court, on not less than
24 hours written notice, for the variation or setting aside of this order or for anyother appropriate relief;  and to file such affidavits as may be necessary inconnection therewith.
As regards the statutory Anton Piller order, these aspects are dealt with in Section 11(5) of
the Counterfeit Goods Act.
24
                                                     
24 Section 11 of the Counterfeit Goods Act is set out (in English only) in Annex 2 below.IP/Q4/ZAF/1
Page 33
33. Article 50.4 also requires that defendants be afforded a review process to determine
whether provisional measures should be modified, confirmed, or revoked.  Please describebriefly the procedures a defendant must follow to initiate review proceedings in each of theauthorities able to adopt such measures and identify the period within which such proceedingsmust be initiated.
Please see the reply to question 32 above.
34. Article 50.5 requires that competent authorities be authorized to require applicants to
supply other information necessary for the identification of goods concerned by the authoritythat will execute the provisional measures.  Please describe briefly what other information maybe required by the authorities and cite the legal authority establishing the basis for thissupplemental information.
Where interlocutory relief is granted, the Courts will usually include in the order that
summons in the principal action be issued within a prescribed order.
The Courts have the power to impose reasonable conditions when exercising their discretion
in granting interim relief, such as a condition that, if the principal action is not instituted or if theapplicant fails to prove its allegations in the principal action, it agrees to be liable to the respondentfor damages suffered.
See Hillman Bros (West Rand) Pty Ltd v Van den Heuvel  1937 WLD 41; Chopra v Sparks Linemas
(Pty) Ltd  1973 (4) SA 372 (D); and Stellenbosch Wine Trust Ltd v Oude Meester Group Ltd  1977
(2) SA 221 (C).
35. Articles 50.6 and 50.8 provide that if proceedings leading to a decision on the merits
are not initiated within a reasonable time, provisional remedies granted by competentauthorities shall be revoked or otherwise cease to have effect, at the request of the defendant.Please identify the relevant provisions in the law of South Africa authorizing the revocation orcessation of provisional measures if review proceedings are not initiated within a reasonabletime and specify what constitutes a "reasonable time period" to initiate proceedings.
Please see the reply to question 34 above.
36. Articles 50.7 and 50.8 provide that judicial and administrative authorities shall have
the authority to order the applicant to provide the defendant appropriate compensation forany injury caused by the adoption of provisional measures when said measures are revoked,have lapsed, or when it has been determined that there has been no infringement or threat ofinfringement.  Please describe how the competent authorities determine "appropriatecompensation".
Please see the reply to question 34 above.IP/Q4/ZAF/1
Page 34
Special requirements related to border measures25
37. Article 51 of the TRIPS Agreement requires that countries adopt procedures that
enable right holders to request suspension of the importation of counterfeit trademarked goodsand pirated copyrighted works.  Please identify the competent authority in South Africaauthorized to accept applications for a request to suspend release of suspected infringing goodsand cite the relevant law or regulation governing such authority.
The procedure described below relates to the provisions of the Counterfeit Goods Act.  The
responsibility of the border enforcement of intellectual property rights is borne by theCommissioner of Customs and Excise.  An applicant needs to supply the Commissioner of Customsand Excise with either a specimen of the protected goods bearing the intellectual property rightssought to be protected or sufficient information from which the essential physical and otherdistinctive features may be ascertained;  sufficient information and particulars as to the subsistenceand extent of the intellectual property right as well as the title to the right in question.  However theCommissioner may only confiscate such goods for a period not extending beyond the last day of theperiod for which the intellectual property right in question subsists.  The Commissioner is notobliged to confiscate offending goods unless he is furnished with the necessary security in a mannerand amount he may require to indemnify the customs authorities and their members against anyliability that may be incurred pursuant to the seizure and detention of goods.
No specific indemnification is conferred upon the importer and owner of goods which have
been suspended.  However, where such suspension takes place at the instigation of a complainantany person suffering injury or prejudice because of the suspension of goods alleged to be counterfeitgoods, or any action taken by an inspector in effe cting this seizure is en titled to claim compensation
from the complainant.  Compensation may only be claimed from the Commissioner if he or hisofficials have been grossly negligent in the seizure of the goods or in their detention or storage, orwhere such person acted in bad faith in performing his duties.
The complainant is entitled to a copy of any statement taken down or any other document
for evidence procured by a customs inspector in the exercise of his powers of search, seizure anddetention.  A complainant or suspect is entitled to inspect any goods seized by the Commissioner.
Further information in regard to the provisions of the new Counterfeit Goods Act can be
obtained from the text of an article by a South African intellectual property lawyer, shortly to bepublished in a South African legal journal.
26
38. Please describe the procedures a right holder must follow to obtain border protectionby the competent authorities, e.g., if there is a formal application that must be submitted tothe competent authority, judicial or administrative, and the information required in therequest for suspension and cite the law or regulations providing such procedures.
In terms of the Counterfeit Goods Act, an application for the seizure of offending goods by
an Inspector/Commissioner is a simple and short administrative procedure.  The Counterfeit GoodsAct only came into effect on 1 January 1998 and there is accordingly no data that is available whichwould provide further information regarding the implementation of such proceedings.
                                                     
25 Note concerning replies to questions 37 to 54:  the Counterfeit Goods Act No. 37 of 1997 came into
force in South Africa on 1 January 1998.  This Act contains extensive provisions regarding anti-counterfeiting
measures, dealing also with import/export of counterfeit goods.
26 The article is reproduced (in English only) in Annex 5 to document IP/N/6/ZAF/1.IP/Q4/ZAF/1
Page 35
Seized goods have to be returned to a suspect if criminal charges are not laid by the
complainant or civil proceedings not instituted by a complainant within three days of being notifiedof such seizure.  If the criminal charge is laid, the goods will be returned to the suspect if the state
does not inform the suspect by written notice of its intention to institute a criminal prosecutionagainst him for having committed an offence of dealing in counterfeit goods, within ten days ofnotice of seizure of goods from the inspector.
The Commissioner is empowered to act on his own initiative in relation to any act or
conduct believed or suspected to be an act of dealing in counterfeit goods.
When the Commissioner or one of his officials has acted on his own initiative, he must,
however, procure a complainant who has some interest in the goods, failing which the goods mustbe released.
An inspector has the authority to enter upon any premises, to search for and confiscate any
counterfeit goods.  Before exercising such powers, the inspector has to satisfy himself that thecomplainant or person laying the charge is prima facie entitled to do so, and that the goods claimedto be "protected goods" are prima facie protected goods and that the intellectual property rights thesubject of which is alleged to have been applied to the offending goods, prima facie subsists;  andthat the suspicion on which the complaint is based appears to be reasonable in the circumstances.
In response to specific questions as indicated below, reference is made to specific provisions
in the Counterfeit Goods Act.
39. Please explain whether procedures, permissible under Article 51 of the TRIPS
Agreement, are available to stop the export of goods suspected of infringing copyrights and/ortrademarks.
(a) There is no specific prohibition or exclusion in respect of goods emanating from
another member of a customs union or goods in transit or de minimis  imports.
In respect of goods which embody works of copyright, it is possible that such goods
although placed on the market in another country by or with the consent of the rightholder, may be subject to confiscation where such right holder has ceded hiscopyright to the goods or the packaging thereof to a South African companylicensee/distributor.  In other words, so-called grey goods may in certaincircumstances be suspended by the customs authorities.  Our Copyright Actprovides a mechanism whereby a local licensee or distributor could take cession ofthe copyright in a work/goods which embody copyright, and thereby prohibit theimportation into South Africa of such goods, even though emanating from the truemanufacturer thereof.  The legal question in such instances is whether themanufacture of these goods in South Africa would have constituted an infringementof the copyright therein.
The border provisions are specifically designed to curb the importation into South
Africa of counterfeit goods, however, these provisions are equally applicable inrespect of exports in the sense that if same are located they could be confiscated aswell.
 (b) Section 15 of the Counterfeit Goods Act provides as set out in Annex 3 below.
27
                                                     
27 In English only.IP/Q4/ZAF/1
Page 36
40. Article 52 of the TRIPS Agreement requires that rights holders wishing to stop
importation of counterfeit trademarked goods or pirated copyrighted works present evidenceto the competent authorities that there is prima facie infringement of their trademark orcopyright.  Please explain what evidence will constitute prima facie infringement in SouthAfrica.
Please see the reply to question 39 above.
41. Article 52 also requires that the right holder provide a "sufficiently detailed description
of the goods" to be stopped.  Please explain what is required of the right holder in SouthAfrica for a description to be "sufficiently detailed".
Please see the reply to question 38 above.
42. Article 52 requires that the competent authorities notify the right holder that his
application is accepted within a reasonable time.  Please explain within what period of time thecompetent authority responds to a request for suspension of release of goods and, if theapplication is accepted, the length of time during which enforcement action will be taken.
The relevant provision of Section 15 of the Counterfeit Goods Act provides of the owner of
an intellectual property right to apply to the Commissioner for Customs and Excise to seize anddetain counterfeit goods.  The Commi ssioner is obliged by this sectio n to give written notification to
the applicant within a reasonable period of time, indicating whether the application has been grantedor refused.  The remarks concerning the determination of a reasonable period as set out in theanswer to question 45 below have reference.
43. Article 53.1 requires that the competent authorities have the authority to secure from
an applicant a security or equivalent assurance sufficient to protect a defendant and to preventabuse.  Please verify that the competent authorities identified above are empowered to requiresecurity or equivalent assurance and provide citations to the provisions of law or regulationthat grant them that authority.
Section 7(4) of the Counterfeit Goods Act provides:"(a) Any person prejudiced by a seizure of goods in terms of Section 4(1), may at any
time apply to the Court on notice of motion for a determination that the seizedgoods are not counterfeit goods and for an order that they be returned to him or her.
"(b) The Court may grant or refuse the relief applied for and make such order as it
deems just and appropriate in the circumstances, including an order as to thepayment of damages and costs, if applicable.
"(c) If deemed just and appropriate in the circumstances by a court that has refused the
order sought, it may order, where those goods have been seized pursuant to acomplaint laid in terms of Section 3(1) that the complainant furnishes security to theapplicant in respect of those goods in an amount and manner determined by theCourt."
Section 15(7) further provides:IP/Q4/ZAF/1
Page 37
"The customs authorities will not be obliged to act in terms of subsection (4) unless the
owner of the intellectual property rights, the subject-matter of which is alleged to be goods,furnishes to the Commissioner security in the manner and amount that the Commissionermay require to indemnify the customs authorities and their members against any liabilitythat may be incurred pursuant to the seizure and detention of goods or anything done inrelation to goods when acting or purportedly acting under this section and to cover anyexpenses that may be incurred in effecting the seizure and detention of the goods."
44. Article 53.2 provides that the owner, importer, or consignee of goods involving
industrial designs, patents, layout-designs or undisclosed information that have beensuspended by customs authorities should be able, in certain circumstances, to have such goodsreleased on payment of security sufficient to protect the right holder from infringement.Please identify what forms of intellectual property, if any, are subject to provisions ofArticle 53.2 and cite to the relevant provisions of law or regulations.
The term "intellectual property right", to which reference is made above, means the rights
in respect of a trademark conferred by the Trade Marks Act, 1993, the copyright in any work interms of the Copyright Act, 1978, or an exclusive right of use in relation to goods conferred by anotice published in terms of Section 15 of the Merchandise Marks Act.  This meaning of the term"intellectual property" is narrower than the normal meaning given to the term.  "Intellectualproperty" normally embraces in addition patents and designs.  For the purposes of the Act,however, these two forms of intellectual property are not in contention.
45. Article 54 requires that the importer and the applicant be notified promptly of the
suspension or release of goods.  Please specify the period within which the competent authorityto issue a notice that the release of goods has been suspended.
There are no legislative time-limits other than that written notice must be given by an
inspector to the person from whom counterfeit goods are seized, informing such person of the actiontaken by the inspector and of the address of the counterfeit goods depot where the goods are kept
Section 7(1)(d) of the Counterfeit Goods Act 1997 (A ct No. 37 of 1997) provides.  In terms of South
African common law notice must be given within a reasonable period of time and it is within the
discretion of a court before which a matter is heard, upon consideration of the facts and circumstances
of each case to determine whether or not the compliance with such time-periods is reasonable or not.
"7(1) An inspector who, in exercising his or he r powers in terms of Section 4(1) has seized
any suspect counterfeit goods, must:
(d) by written notice inform the following persons of the action taken by the inspector in
terms of Section 4(1) and of the address of the counterfeit goods depot where theseized goods are kept:
(i) The person whom those goods were seized;  and
(ii) also:
(aa) the complainant, where the inspector exercised his or her powers in 
terms of Section 4(1) pursuant to a complaint laid in terms of 
Section 3(1); orIP/Q4/ZAF/1
Page 38
(bb) any person who, in relation to those goods, qualifies in terms of 
Section 3(1) to be a complainant, but who had not yet so laid a 
complaint at the time when the inspector exercised those powers on 
his or her own initiative as contemplated in Section 3(4)."
46. Article 55 makes it clear that the right holder applying for suspension of infringing
goods must initiate a proceeding on the merits in an appropriate forum within a reasonableperiod of time or the goods will be released .  Please identify the fora in which an
applicant/party may initiate proceedings on the merits that will allow customs authorities tohold the goods beyond ten working days.
The Courts which would have jurisdiction would be the High Court and the Magistrates
Courts.  The value of the goods forming the subject-matter of any action before such Court wouldgenerally determine which Court would have jurisdiction to hear the matter.
47. Article 55 provides that a review is to take place within a reasonable time at the
request of the defending party to determine if the suspension measures should be modified,
revoked or confirmed pending the outcome of the proceeding on the merits.  Please identify
the forum that is authorized to conduct such a review and describe the procedure and cite theapplicable law or regulations.
Where Court action is not taken within the prescribed 3 or 10-day period, counterfeit goods
which have been seized by an inspector must be released.  Where infringement proceedings havebeen instituted by an applicant, and the applicants claim has been dismissed by the Court, the Court,on the application of the erstwhile respondent or any other interested person claiming to be entitledto the goods, may order that such goods be released, respectively, to the erstwhile respondent orsuch interested person who has proved his or her entitlement thereto.  The normal process of theCourts may be utilized to review or modify an order.  Section 4 of the Counterfeit Goods Act, 1997refers in this regard.
48. Article 56 requires that the authorities be able to require the applicant to compensate
the defending party for any injury caused if the detention of goods was unfounded.  Pleaseidentify the authorities that can order the applicant to pay the importer, consignee or ownercompensation for injury caused by wrongful detention or through the detention of goodsreleased pursuant to Article 55 and cite to the applicable law or regulations.
Section 17(1) of the Counterfeit Goods Act provides:"Any person suffering damage or loss caused by the wrongful seizure, removal or detention
of goods alleged to be counterfeit goods, or by any action contemplated in section 7(1)(a),(b) or (c) or (2) wrongfully taken by an inspector with reliance on that section read withsection 4(a), or caused during or pursuant to the seizure, removal or detention of suchgoods in terms of this Act, w ill be entitled to claim compensa tion for that damage or loss
which claim, subject to subsection (2), will be against the complainant and not against theState, the inspector or the person in charge of the counterfeit goods depot where thosegoods are or were detained."IP/Q4/ZAF/1
Page 39
49. Article 57 requires that the competent authorities be able to authorize the right holder
to inspect the detained goods in order to substantiate the claims.  Please explain how rightholders are provided an opportunity to inspect suspect goods that have been detained bycustoms authorities.
Section 8 of the Counterfeit Goods Act provides:"(1) Goods that have been seized in terms of Section 4(1) must be stored and kept in safe
custody at a counterfeit goods depot until the person in charge of the depot:
(a) is ordered by a competent Court in terms of this Act to return, release,
destroy or otherwise dispose of those goods as specified in the order; or
(b) is directed by the inspector concerned, in the circumstances provided for in
subsections (1)(b) or (2)(a),(b) or (c) of Section 9, to release those goods tothe suspect.
"(2) Goods seized in terms of Section 4(1) will be available for inspection by the
complainant, or as the case may be prospective complainant (if any) the suspect andany other interested person at the counterfeit goods depot on any working dayduring normal office hours.
"(3) The person in charge of the counterfeit goods depot, on the request of the
complainant or prospective complainant (as the case may be) or the suspect, mustmake the relevant seized goods available for testing or analysis by or on behalf ofany such complainant or the suspect if the person so in charge, having taken intoaccount the nature of such seized goods, the nature of the tests or analyses to beconducted, and the competence and suitability of the person by whom the tests oranalyses are to be conducted, is satisfied that a request in that regard is reasonable.
"(4) The person in charge of a counterfeit good s depot who is not willing to allow seized
goods under his or her custody to be made available to the suspect for testing oranalysis by any person or by a particular person, must forthwith refer the matter tothe complainant or prospective complainant (as the case may be) who must eitherconfirm or reverse that decision within 48 hours.
"(5)(a) Where any such complainant has confirmed the decision not to allow the
seized goods to be made available to the suspect for testing or analysis, thatdecision must be conveyed in writing to the suspect who may apply to theCourt for an order rescinding the decision and allowing those goods to bemade so available
(b) The Court will grant the application if it finds the decision to be
unreasonable in the circumstances."
Seized goods to be released if criminal investigation or criminal or civil proceedings not
contemplated against suspect.IP/Q4/ZAF/1
Page 40
50. Article 57 also requires that, where the decision on the merits favours the right holder,
the competent authorities also may be given authority to give the right holder informationregarding the importer, consignee or consignor.  If competent authorities in South Africa canprovide information regarding the importer, consignee or consignor to the right holder, pleaseexplain how information regarding names and addresses of consignors, importers andconsignees and quantities of goods are provided to the applicant after a positive decision ofinfringement is made, e.g., authorities automatically providing information or by submissionof a written request from the right holder, etc.  Please cite to the law or regulations providingsuch authority.
Section 10(1)(d) of the Counterfeit Goods Act provides:"… that the accused or the defendant or respondent (as the case may be) discloses the source
from which those goods, if found to be counterfeit goods, have been obtained, as well asthe identity of the persons involved or ostensibly involved in the importation, exportation,manufacture, production or making and distribution of the counterfeit goods and in thechannels of distribution of those goods."
51. Article 58 specifies procedures to be followed where the competent authorities can act
ex officio.  Please explain whether the competent authorities in South Africa are empowered toact ex officio and, if so, please identify the intellectual property areas subject to ex officioaction.
Section 3(4) of the Counterfeit Goods Act provides:"The preceding provisions of this section do not preclude an inspector from taking any
appropriate steps in terms of Section 4(1) on his or her own initiative in relation to any actor conduct believed or suspected to be an act of dealing in counterfeit goods, provided therequirements of that section are met."
The affected areas of intellectual property are trademarks and copyright.
52. Article 59 identifies the remedies that are to be available, including destruction or
disposal of infringing goods outside the stream of commerce.  Please explain what the law inSouth Africa permits regarding the disposition of infringing goods, i.e., does the law allow fordestruction, disposal or both.  Please cite to the law or regulations providing such authority.
Section 20(1) of the Counterfeit Goods Act provides:
"Subject to Section 10, the Court having convicted a person of an offence contemplated in
Section 2(2) may declare the counterfeit goods in question to be forfeited to the State ororder that those goods and their packaging, and where applicable any tools that were usedby or on behalf of the convicted person for the manufacturing, production or making ofthose or any other counterfeit goods or for the unlawful application to goods of thesubject-matter of any intellectual property right, be destroyed."IP/Q4/ZAF/1
Page 41
53. Please identify:
(a) the competent authority that decides the disposition of the goods, i.e., whether
the goods will be destroyed or disposed of outside the stream of commerce; and
(b) the competent authority that carries out the destruction or disposal of the
goods.
(a) Section 20(1) of the Counterfeit Goods Act provides for the Court to order the
destruction or disposal of the goods outside the stream of commerce.
(b) The destruction or disposal of the goods is usually left to the discretion of the
successful applicant.
54. Article 60 permits Members to exclude from the provisions for border enforcement
small quantities of goods of a non-commercial nature carried by passengers or sent in smallconsignments.  Please describe what constitutes a de minimis  import that is excluded from the
border measures under the law of South Africa.
The South African courts do recognize the de minimis  principle.  The legislature has left it
to the Courts to determine what constitutes a small quantity which is negligible.
Criminal procedures
55. Article 61 of the TRIPS Agreement requires that Members have criminal procedures
and penalties, including imprisonment and/or monetary fines sufficient to act as a deterrent,at least for cases of wilful trademark counterfeiting and copyright infringement on acommercial scale.  Please describe the provisions in the law of South Africa that fulfill thatobligation and provide legal citations.
The lower/Magistrate Courts and the High Court have jurisdiction in respect of criminal
acts involving infringement of intellectual property rights.
Criminal procedures and penalties are available in the case of copyright infringement.
Section 27 of the Copyright Act reads as follows:
"27(1) Any person who at a time when copyright subsists in a work, without the authority
of the owner of the copyright:
(a) makes for sale or hire;
(b) sells or lets for hire or by way of trade offers or exposes for sale or hire;(c) by way of trade exhibits in public;(d) imports into the Republic otherwise than for his private or domestic use;(e) distributes for purposes of trade;  or(f) distributes for any other purposes to such an extent that the owner of the
copyright is prejudicially affected,
articles which he knows to be infringed copies of the work, shall be guilty of an
offence.IP/Q4/ZAF/1
Page 42
"(2) Any person who at a time when copyright subsists in a work makes or has in his
possession a plate knowing that it is to be used for making infringing copies of thework, shall be guilty of an offence.
"(3) Any person who causes a literary or musical work to be performed in public
knowing that copyright subsists in the work and that perf ormance constitutes an
infringement of the copyright, shall be guilty of an offence.
"(4) Any person who causes a broadcast to be rebroadcast or transmitted in a diffusion
service knowing that copyright subsists in the broadcast and that such broadcast ortransmission constitutes an infringement of the copyright, shall be guilty of anoffence.
"(5) Any person who causes programme-carrying signals to be distributed by a
distributor for whom they were not intended knowing that copyright subsists in thesignals and that such distribution constitutes an infringement of the copyright, shallbe guilty of an offence.
"(6) A person convicted of an offence under this section shall be liable:
(a) in the case of a first conviction, to a fine not exceeding five thousand rand
or to imprisonment for a period not exceeding three years or to both suchfine and such imprisonment, for each article to which the offence relates;
(b) in any other case, to a fine not exceeding ten thousand rand or to
imprisonment for a period not exceeding five years or to both such fine andsuch imprisonment, for each article to which the offence relates."
Any inspector, i.e. any person so appointed in terms of the Counterfeit Goods Act;  a police
official;  Commissioner of Customs and Excise may initiate criminal proceedings.  Any of theseofficers may act on their own initiative as well as in response to a complaint from a person entitledto lay such a complaint.
However, where an officer has acted of his own initiative, he must procure a complainant
otherwise the goods must be released.
In terms of the Counterfeit Goods Act, private persons do have standi ng to initiate criminal
proceedings.  The Act grants such right to any person having an interest in the protected goods,either as an owner/licensee of the intellectual property rights;  importer;  exporter/distributor andany authorized agent or attorney of such person.
Conviction on a charge of crim inal copyright infr ingement can lead to the imposition of
both imprisonment and monetary fines.  In the case of a first offence, the Copyright Act imposes amaximum prison sentence of three years or a penalty of R 5,000.00, or both for each infringingarticle; in the case of a subsequent conviction these maxima are increased to five yearsimprisonment and R 10,000.00 per infringing article.IP/Q4/ZAF/1
Page 43
56. Article 61 also requires that remedies in appropriate cases include the seizure,
forfeiture and destruction of infringing goods and any materials and implements thepredominant use of which has been the commission of the offence.  Please explain theprovisions in the law of South Africa that provide for such remedies, describe thecircumstances in which those remedies would be imposed and provide legal citations.
Please see the reply to question 55 above.
57. Article 61 also indicates that Members may provide for criminal procedures and
penalties in cases of wilful infringement of other forms of intellectual property.  Pleasedescribe any provisions in the law of South Africa that provide for such procedures andremedies and provide legal citations.
Please see the reply to question 55 above.
58. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least for
wilful trademark counterfeiting and copyright piracy.  Please explain how the penalties
provided under the laws of South Africa comply with that obligation.
Please see the reply to question 55 above.
[Follow-up questions from the US]
1. Please provide statistical information related  to civil copyright, trademark, geographical
indication, industrial design, patent, inte grated circuit layout-design and trade secret
enforcement for each of the years 1996 and 1997, including the number of cases filed;
injunctions issued; infringing products seized; infringing equipment seized; cases resolved
(including settlement); and the amount of damages awarded.
Statistical data on the aspects requested is not available in collated format.
2. Please provide statistical information relat ed to criminal enforcement in the area of
copyright piracy and trademark infringement fo r each of the years 1996 and 1997, including the
number of raids, prosecutions, convictions and the amount of fines and/or jail terms (includingwhether the fines were paid and whether the jail term was actu ally served or was suspended)
and any other information establishing that your criminal system operates effectively to deter
copyright piracy and trademark counterfeiting.
Statistical data on the aspects requested is not available in collated format.
3. With respect to each form of intellectual property covered in Part II of the TRIPS
Agreement, please describe any provision in South Africa's laws authorizing any limitation ona right holder's ability to enforce its rights against unauthorized imports.
Section 15c of the Medicines and Related Substances Control Amendment Act empowers
the Minister of Health to authorize the parallel importation of patented medicines under certaincircumstances.  This is an enabling provision and it must be noted that a holder's right to enforce itsrights against unauthorized imports of a patented product will only be affected in those instanceswhere this provision is invoked.IP/Q4/ZAF/1
Page 44
ANNEX 1
(Counterfeit Goods Act)
Extent of inspector's powers in  relation to counterfeit goods
5.(1) An inspector acting on the authority of and in accordance with a warrant issued under
Section 6, may at any reasonable time:
(a) Enter upon or enter, and inspect, any place, premises or vehicle at, on or in which
goods that are reasonably suspected of being counterfeit goods, are to be found or on
reasonable grounds are suspected to be or to be manufactured, produced or made, and
search such place, premises or vehicle and any person thereat, thereon or therein, for
such goods and for any other evidence of the alleged or suspected act of dealing incounterfeit goods.  For the purposes of entering, inspecting and searching such a
vehicle, an inspector who is a police official or who is assisted by a police official
may stop the vehicle, if necessary by fo rce, wherever found, including on any public
road or at any other public place;
(b) take the steps that may be reasonably necessary to terminate the manufacturing,
production or making of counterfeit goods, or any other act of dealing in counterfeit
goods being performed, at, on or in such place, premises or vehicle, and to prevent
the recurrence of any such act in future.  Those steps may include any of the steps
contemplated in paragraphs (c), (d) and (e) but do not include the destruction or
alienation of the relevant goods unless authorized by the Court  in terms of this Act;
(c) seize and detain, and, where applicable, remove for detention, all the goods in
question found at, on or in such place, premises or vehicle;
(d) seal or seal off any place, premises or vehicle at, on or in which:
(i) the goods in question are found, or are manufactured, produced or made,
either wholly or in part;
(ii) any trademark , or any exclusive mark contemplated in paragraph (c) of the
definition of "counterfeiting" in Section 1(1), or any work which is the
subject matter of copyright, is applied to those goods;
(iii) the packaging for those goods is prepared;  or
(iv) the packaging of those goods is undertaken;
(e) seize and detain, and, where applicable, remove for detention, any tools which may
be used in the manufacturing, production, making or packaging of those goods or
applying a trademark  or that exclusive mark or such a work to them;  and
(f) if he or she reasonably suspects that a person at, on or in such place, premises or
vehicle may furnish any information with  reference to any act of dealing in
counterfeit goods:
(i) question that person and take down a statement from him or her;IP/Q4/ZAF/1
Page 45
(ii) demand and procure from that person any book, document, article, item or
object which in any way may be relevant to the nature, quantity, location,
source or destination of the goods in question, or the identity and address of
anyone involved or ostensibly involved as a supplier, manufacturer, producer,
maker, distributor, wholesaler, retailer, importer, exporter or forwarding
agent of, or other dealer in, the goods in question.
(2) Subject to subsection (3), an inspector may, during the day, without a warrant enter upon or
enter any place, premises or vehicle after having identified himself or herself, and, in
accordance with paragraphs (a) to (f) of subsection (1), exercise the powers of seizure,
removal, detention, collecting evidence and sear ch contemplated in Section 4(1)(a), (b) and
(c) (except the power to search any person), as well as the power to take the steps
contemplated in Section 4(1)(d), if:
(a) The person who is competent to consent to the entry and to such search, seizure,
removal and detention, gives that consent;  or
(b) the inspector on reasonable ground believes that:
(i) the require warrant will be issued to him or her in terms of Section 6 if he or
she were to apply for the warrant;  and
(ii) the delay that would ensue by first obtaining the warrant would defeat the
object or purpose of the entry, search, seizure, removal, detention, collection
of evidence and other steps.
(3) Subsection (2)(b) does not serve as authority for, and may not be applied for the purposes of,
entering and searching any private dwelling, nor  for conducting such seizure and removal, the
collection of evidence and the taking of the said other steps therein.
(4) Notwithstanding the provisions of subsections (1) and (2):
(a) Any steps taken by an inspector in accordance with paragraph (a), (b), (c) or (d) of
subsection (1), or like steps taken by him or her by virtue of subsection (2), will cease
to have any legal effect whatsoever unless the Court  confirms such steps, either
finally or pendente lite , on the application of the inspector or the relevant complainant
(where applicable) brought within ten court days of the day on which those steps had
been taken;
(b) no answer given or statement made by any person to an inspector exercising his or
her powers in terms of paragraph (f)(i) of subsection (1) or given or made to anyinspector exercising like powers by virtue of subsection (2), will, if
self-incriminating, be admissible as evidence against that person in criminal
proceedings instituted in any court against him or her, except in criminal proceedings
where that person is tried for an offence contemplated in Section 18(d)(ii), and then
only to the extent that such answer or statement is relevant to prove the offencecharged.
(5) The provisions of Section 6(4) regarding the manner in which a search must be conducted,
and Section 6(5)(b), (6), (7), (8) and (9), will apply mutatis mutandis  to an inspector acting by
virtue of subsection (2) of this section.IP/Q4/ZAF/1
Page 46
ANNEX 2
(Counterfeit Goods Act)
Court may authorise search and attachment, pending institution of civil proceedings, to preserve
evidence relevant to infringement of intellectual property right, etc.
11.(1) The owner of an intellectual property right who is aware or has reasonable grounds to
believe that an act of dealing in counterfeit goods has taken or is taking place or is likely totake place, may, without prejudice of any other remedy that he or she may have in law,apply ex parte  to a judge in chambers for an order-
(a) directing the sheriff or another person designated by the Court (hereafter referred to
as a designated person) to enter upon or enter any specified place or premisesaccompanied by such other persons as the Court may specify (if any) and there tosearch for, and, if found, seize and remove, such documents, records or othermaterial as the Court may specify and any such goods, alleged to be counterfeitgoods, as may be so specified (hereafter referred to as subject goods), that are at,on or in such place or premises, and to attach such documents, records, materialand goods;
(b) directing the respondent to point out to the sheriff or designated person all subject
goods and to disclose and make available to him or her all documents and materialthat are relevant in order to determine whether the subject goods in question arecounterfeit goods or are relevant to any transactions or dealings in counterfeit goodsat, on or in the relevant place or premises or elsewhere, and to permit the sheriff ordesignated person to attach such subject goods, as well as such documents andmaterial (hereinafter jointly referred to as ancillary materials) and remove them fordetention in safe custody;
(c) restraining the respondent from-
(i) interfering with the state of the subject goods or ancillary materials during
the search, seizure, attachment or removal;
(ii) carrying out or continuing with the act of dealing in counterfeit goods that
gave rise to the application;
(d) granting such further or alternative relief as the Court considers appropriate.
(2) An application in terms of subsection (1) will be heard in camera  unless the Court is
satisfied that the attendance of the proceedings by members of the public or any class orgroup of such members will not cause the applicant to suffer any prejudice or to beprejudiced when seeking to protect or enforce his or her relevant intellectual property right,and that such attendance, should the Court order the relief sought, will not impair or detractfrom the efficacy of the order or the execution thereof.
(3) The Court will not grant an application brought in terms of subsection (1) unless it
considers that the applicant has a prima facie claim against the respondent for theinfringement of an intellectual property right and that-IP/Q4/ZAF/1
Page 47
(a) the applicant's right to discovery of documents in any proceedings to be instituted
by him or her is likely to be frustrated, either by reason of the nature of thesuspected counterfeit goods in relation to which the application is made or due toother circumstances;  or
(b) should the normal court procedure be followed or implemented, the goods relevant
to the issues in those proceedings, or evidence in connection with transactions ordealings with the latter goods, are likely to be destroyed or to be so altered orplaced or be otherwise disposed of in such manner as to effectively preclude theapplicant from having access to the relevant goods.
(4) A court hearing an application so brought, may order that the relied applied for, be granted,
subject to the terms and conditions specified in the order, or that relief be refused, or maymake any other order that it deems just and appropriate in the circumstances.
(5) For the purposes of subsection (4), the Court may-
(a) order that the sheriff or designated person may rely upon the assistance of
knowledgeable persons, specified in the order, in identifying the subject goods andancillary materials:
(b) order the applicant to furnish security to the respondent in an appropriate amount
equal to a specified percentage of the value of the goods attached;
(c) issue an order restraining the respondent pendente lite  from infringing the
applicant's intellectual property right;
(d) issue a rule nisi calling upon the respondent to show cause before or on a specified
day (which must fall on a date within 20 court days of the granting of the rule nisi)
why an interdict retraining the respondent from infringing the applicant'sintellectual property right and any order granting the applicant further relief,including an order directing the delivery of the subject goods up to the applicant,should not be granted or confirmed;
(e) order that the applicant, should he or sh e wish to institute proceedings against the
respondent for the infringement of the applicant's intellectual property right, mustdo so not later than the date specified in the order.
(6) If the Court has not made an order in terms of subsection (5)(e), an applicant who wishes to
institute the proceedings contemplated in that subsection must do so within 20 court days ofthe date of the order made in terms of subsection (4) and whereby his or her application wasgranted.IP/Q4/ZAF/1
Page 48
ANNEX 3
(Counterfeit Goods Act)
Customs authorities' powers in relation to counterfeit goods being imported into Republic
15.(1) The owner of an intellectual property right may apply to the Commissioner for Customs and
Excise (hereafter called the Commissioner), to seize and detain all goods:
(a) Which are counterfeit goods featuring, bearing, embodying or incorporating the
subject matter of that intellectual property right or to which the subject matter of that
right has been applied;
(b) and which are imported into or enter the Republic during the period specified in the
application.  However, that period may not extend beyond the last day of the period
for which that intellectual property right subsists.
(2) For the purposes of subsection (1), the applicant may furnish to the Commissioner a specimen
of the goods that are protected goods of the nature contemplated in paragraph (a) of thedefinition of "protected goods" in Section 1(1) (if any) and to which the subject matter of his
or her relevant intellectual property right relates, and sufficient information and particulars as
to the subsistence and extent of that intellectual property right and as to his or her title to that
right.
(3) The Commissioner must consider and deal with an application in terms of subsection (1)
without delay, and must grant the application if satisfied on reasonable grounds:
(a) That the goods claimed to be protected goods, are prima facie protected goods;
(b) that the intellectual property right, the subject matter of which relates to the protected
goods, prima facie subsists;  and
(c) that the applicant prima facie is the owner of that intellectual property right.
(4) When an application made in terms of subsection (1) has been granted and notice thereof
given in terms of subsection (5), all goods that are counterfeit goods of the type withreference to which that application was made (hereafter called the stipulated goods), or
suspected on reasonable grounds to be stipulated goods, and imported into or entering the
Republic from time to time during the period de termined by the Commissioner (which may
be shorter than the period applied for), may be seized and detained by the customs authorities
in performing their functions under the Customs and Excise Act, 1964 (Act 91 of 1964),subject to the provisions of subsections (6) and (7) of this section.
(5) The Commissioner, by written notice (issued within a reasonable time after having decided
the application) must notify the applicant whether the application has been granted or refused,
and:
(a) It granted, state the period during which any stipulated goods being imported into or
entering the Republic will be made subject to seizure and become subject to detention
under subsection (4);
(b) if refused, state the reasons for the refusal.IP/Q4/ZAF/1
Page 49
(6) For the purposes of acting under subsection (4) in relation to goods that are stipulated goods
or suspected on reasonable grounds to be stipulated goods:
(a) Any member of the customs authorities will act mutatis mutandis  as if he or she were
an inspector who, in connection with counterfeit goods or alleged or suspectedcounterfeit goods, were exercising the pow ers contemplated in Section 4(1) on own
initiative in terms of Section 3(4);
(b) the following provisions of this Act will apply mutatis mutandis  in relation to any
member of the customs authorities, namely:
(i) the provisions in accordance with or subject to which the powers
contemplated in Section 4(1) may be exercised by an inspector so acting on
own initiative;
(ii) the provisions by which any other power or any right, function, duty,
obligation, exemption, indemnity or liability is conferred or imposed on aninspector so acting.
However, the Minister, at the request of the Minister of Finance acting on the
recommendation of the Commissioner, may by notice in the Gazette  exempt the members of
the customs authorities from any of the provisions made applicable by this paragraph ifsatisfied that there are suitable and appropriate alternative arrangements made by or under the
Customs and Excise Act, 1964, that cover the purpose of the provision from which exemption
is sought.
(7) The customs authorities will not be obliged to act in terms of subsection (4) unless the owner
of the intellectual property right, the subject matter of which is alleged to be featured or borne
by or incorporated or embodied in or to have been applied to stipulated goods, furnishes to the
Commissioner security in the manner and amount that the Commissioner may require to
indemnify the customs authorities and their members against any liability that may be
incurred pursuant to the seizure and detention of goods or anything done in relation to goodswhen acting or purportedly acting under this section, and to cover any expenses that may be
incurred in effecting the seizure and detention of the goods.
(8) The provisions of this Act will not be construe d so as to render the customs authorities or any
of their members liable for:
(a) Any failure to detect or seize stipulated goods;(b) the inadvertent release of any such goods;  or(c) any action taken in good faith in respect of such goods.
(9) For the purposes of this section, "Customs authorities" means the South African Revenue
Service in its Division: Customs and Excise, th e members of which are the Commissioner and
those officials who are "officers" within the contemplation of the definition of "officer" in
Section 1(1) of the Cust oms and Excise Act, 1964.IP/Q4/ZAF/1
Page 50
ANNEX 4
(Counterfeit Goods Act)
Liability for damage or loss arising pursuant to application of Act
17.(1) Any person suffering damage or loss caused by the wrongful seizure, removal or detention of
goods alleged to be counterfeit goods, or by any action contemplated in Section 7(1) (a), (b)
or (c) or (2) wrongfully taken by an inspector with reliance on that section read with Section
4(1), or caused during or pursuant to the seizure, removal or detention of such goods in terms
of this Act, will be entitled to claim compensation for that damage or loss which claim,
subject to subsection (2), will be against the complainant and not against the State, the
inspector or the person in charge of the counterfeit goods depot where those goods are or
were detained.
(2) The State or such inspector or the person in charge of the relevant counterfeit goods depot, as
the case may be, will be liable in respect of a claim contemplated in subsection (1) only if:
(a) In the seizure or removal of the alleged counterfeit goods, the inspector, or, in the
detention and storage of those goods, that person so in charge or the inspector
(depending on the circumstances), has been grossly negligent;  or
(b) the inspector or that person so in charge (as the case may be), in the seizure, removal,
detention or storage of those goods, acted in bad faith.
(3) Any reference in paragraphs (a) and (b) of subsection (2) to an inspector or to a person in
charge of a counterfeit goods depot (however expressed) will be construed so as to include
any person acting on the instruction or under the supervision of the inspector or the person so
in charge, as the case may be.IP/Q4/ZAF/1
Page 51
ANNEX 5
(Customs and Excise Act)
Prohibitions and restrictions
113.(1) The importation of the following goods is hereby prohibited, namely:
(g) Unlawful reproductions of any works if such reproductions are prohibited from
importation under any law relating to copyright;
(Copyright Act)
Infringement
23.(2) Without derogating from the generality of subsection (1), copyright shall be infringed by any
person who, without the licence of the owner of the copyright and at a time when copyright
subsists in a work:
(a) Imports an article into the Republic for a purpose other than for his private or
domestic use;
(b) sells, lets, or by way of trade offers or exposes for sale or hire in the Republic any
article;
(c) distributes in the Republic any article for the purposes of trade, or for any other
purpose, to such an extent that the owner of the copyright in question is prejudicially
affected;
(d) acquires an article relating to a computer program in the Republic;  and
if to his knowledge the making of that article constituted an infringement of that copyright or would
have constituted such an infringement if the article had been made in the Republic.
Penalties and proceedings in respect of dealings which infringe copyright
27.(1) Any person who at a time when copyright subsists in a work, without the authority of the
owner of the copyright:
(a) Makes for sale or hire;(b) sells or lets for hire or by way of trade offers or exposes for sale or hire;(c) by way of trade exhibits in public;(d) imports into the Republic otherwise than for his private or domestic use;
(e) distributes for purposes of trade;  or
(f) distributes for any other purposes to such an extent that the owner of the copyright is
prejudicially affected;
articles which he knows to be infringed copies of the work, shall be guilty of an offence.IP/Q4/ZAF/1
Page 52
ANNEX 6
(Copyright Act)
Provisions for restricting importation of copies
28.(1) The owner of the copyright in any published work may give notice in writing to the
Commissioner for Customs and Excise (in this section referred to as "the Commissioner"):
(a) That he is the owner of the copyright in the work;  and
(b) that he requests the Commissioner to treat as prohibited goods, during a period
specified in the notice, copies of the work to which this section applies;
Provided that the period specified in a notice under this subsection shall not extend beyond
the end of the period for which the copyright is to subsist:  Provided further that the
Commissioner shall not be bound to act in term s of any such notice unless the owner of the
copyright furnishes him with security in such form and for such amount as he may require to
secure the fulfilment of any liability and the payment of any expense which he may incur byreason of the detention by him of any copy of the work to which the notice relates or as a
result of anything done by him in relation to a copy so detained.
(2) This section shall apply to any copy of the work in question made outside the Republic which
if it had been made in the Republic would be an infringing copy of the work.
(3) Where a notice has been given under this section in respect of a work and has not been
withdrawn, the importation into the Republic at a time before the end of the period specified
in the notice of any copy of the work to which this section applies shall not be prohibited.
(4) Notwithstanding anything contained in the Customs and Excise Act, 1964 (Act No. 91 of
1964), a person shall not be liable to any penalty under that Act (other than forfeiture of the
goods) by reason of the fact that any goods are treated as prohibited goods by virtue of this
section.
(5) This section shall mutatis mutandis  apply with reference to an exclusive licensee who has the
right to import into the Republic any work published elsewhere.
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