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23 November 2020
South Africa is peopled by passionate wine drinkers, consuming 4 million hectolitres (1.6% of the world's total) in 2019. As far as wine production is concerned, South Africa sits in eighth place globally, producing 3.3% of the world's total (or 9.7 million hectolitres) in 2019.
With regard to the IP rights that exist in viticulture and viniculture, winemaking provides a comprehensive case study when unpacking plant breeders' rights, registered designs, patents and trademarks.
At each step of the winemaking process, products of the human intellect or creations of the mind are at play. This is exciting but contains a worthwhile lesson for those developing or manufacturing a product: there are IP rights that come into existence and they may require legal protection.
Imagine the scenario in which a viticulturist develops a new grape variety by means of crossbreeding two known grape varieties or by some other form of genetic engineering.
In order to protect the new variety, an application for a plant breeders' right must be lodged, provided that the variety is new, distinct, uniform and stable. Plant breeders' rights exists to protect new varieties of plants that are produced by biological processes, such as crossbreeding, because these cannot be protected by a patent under the Patents Act.
A plant breeders' right application can be lodged only by or on behalf of:
Suppose that a winemaker designs a bottle to house the wine created from this new grape variety which is unlike any other bottle available. They might seek a registered design to protect it.
This form of monopoly right is granted on the outward appearance of the design applied to an article, protecting the way it looks rather than the underlying inventive concept. (The latter can be protected by a patent.)
In this case, South African law provides for both aesthetic and functional design registrations. The article (the bottle) encompassing the design can be registered as a design, provided that it is novel and original (ie, an aesthetic design) or new and not commonplace in the art (ie, functional design).
The application for a design must be lodged no more than six months after the bottle is first released, disclosed or sold, otherwise the design will not be considered novel.
If this same wine estate, for example, develops an improved process for the vinification of wine, an enhanced bottling system, or even a new mechanical device that is capable of pruning vines in a manner that prevents damage to them, a patent may be granted to protect the intellectual property.
Section 25(1) of the Patents Act states that a patent may be sought for an invention that:
This gives the patent holder an exclusive right to prevent others from exploiting the invention for a period, but the patentee must fully disclose the invention in the patent application documents. The owner of the patent can earn recognition or financial benefit from their invention, but its public disclosure may direct the progression of the technology.
Suppose that the winemaker designs a badge or symbol (eg, a branded label or logo) in relation to their new wine to inform the public that the estate is the source or provider of this wine.
This graphical representation is known as a trademark, a designation that can include:
Trademarks may be registered, in which case the registration remains in force for 10 years. Prior to the expiry of the 10-year duration, the registration can be renewed in subsequent 10-year periods in perpetuity.
However, unregistered trademarks also enjoy a limited form of protection under South African common law. Their owners may, in certain circumstances, be able to prevent the use of the marks by others, provided that the owner can show that the mark is well known and that the use of the contentious mark will cause the public to be misled or confused.
However, this requires that evidence be gathered establishing the trading record of the trademark and thereby establishing its reputation.
There is potential for IP rights in all manner of goods that are the products or creations of human intellect – including bottles of wine. For this reason, careful consideration should be given to the existence of intellectual property at each stage of producing a product, to ensure that the owner is afforded the maximum opportunity for its exploitation and protection.
For further information on this topic please contact Marco Vatta at Spoor & Fisher by telephone (+27 12 676 1111) or email (firstname.lastname@example.org). The Spoor & Fisher website can be accessed at www.spoor.com.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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