Latest updates

Patentability of living things – a South African approach
KISCH IP
  • Intellectual Property
  • South Africa
  • 30 September 2019

Patent protection of living organisms – and the substances derived therefrom – has long been an area of confusion and controversy in South Africa. However, there has been a recent move towards clearer boundaries regarding what constitutes patentable subject matter in relation to living things.

Who should you institute infringement proceedings against?
KISCH IP
  • Intellectual Property
  • South Africa
  • 23 September 2019

What should a company do when its distributor terminates their supply and distribution contract stating that it is more economical for it to acquire the products from another company? If the first company has a registered patent for the products that the other company is manufacturing, it can institute infringement proceedings. However, the question then becomes against whom should it institute these proceedings: the distributor or the company infringing its patent?

Who takes the cake? Copyright over baked goods
KISCH IP
  • Intellectual Property
  • South Africa
  • 16 September 2019

Professional and amateur bakers are often inspired by the extravagant and intricately designed cakes shown on TV shows. However, this begs the question of whether bakers can reproduce these cakes (or at least try to) without getting into trouble. Perhaps surprisingly, the answer is probably no, as these creations may be subject to copyright protection. Therefore, as with all copyright infringement, it is important to be cautious when taking inspiration from other people's creations.

Copyright conundrum: what you need to know when rebranding
KISCH IP
  • Intellectual Property
  • South Africa
  • 09 September 2019

Many corporates and start-ups that enlist third-party graphic designers to create logos or corporate identities during a rebrand are unaware of the legal implications of contracting third parties and thus often find themselves in costly and time-consuming litigation. This is because, under South African law, a third-party graphic designer commissioned to design a corporate's logo will own the copyright in said work. To avoid this situation, a logo must be assigned from a third-party graphic designer to the corporation or start-up immediately.

Nedbank and IT entrepreneurs in developing patent saga
KISCH IP
  • Intellectual Property
  • South Africa
  • 02 September 2019

Two IT entrepreneurs recently applied for an interdict to prevent an asset management company from using (ie, infringing) their invention. The case has raised many questions regarding the validity of certain patents, including what protections are afforded to entrepreneurs. Young entrepreneurs in particular are encouraged to follow this case earnestly to ensure that they are well acquainted with South African patent law and thus able to protect their inventions.

Bolar provisions for generic and biosimilar medicines
ENSafrica
  • Healthcare & Life Sciences
  • South Africa
  • 14 August 2019

South Africa is in the process of reviewing all existing IP laws, particularly in the context of access to medicines. It appears that the type of changes to be made in respect of the Bolar exception will relate to whether the narrow exception should be extended and, if so, to what. In particular, it is likely that an early experimental research exclusion will be included, such as for pre-clinical research. It remains to be seen whether South Africa's laws may change to allow stockpiling of generic medicines.

Interplay between company name reservations, trademark registrations and defensive registrations
KISCH IP
  • Intellectual Property
  • South Africa
  • 05 August 2019

Business owners often fail to conduct trademark availability searches before they register their company name at the Companies and Intellectual Property Commission (CIPC). The CIPC considers only identical or confusingly similar company names that are contained on the company names register (and not those that are contained on the trademarks register) to be potential blocks to registration. Therefore, company names that proceed to registration may infringe on trademark rights as set out in the Companies Act.

Domain name disputes – are they worth it?
KISCH IP
  • Intellectual Property
  • South Africa
  • 29 July 2019

In an age where business is conducted online, trademarks are commercialised through websites and social media pages and consumers want to deal with businesses online instead of face to face, a business' virtual address is of the utmost importance if it wants to drive traffic to its website and conclude commercial transactions online. So, what happens if a third party registers a domain name that incorporates an existing trademark? How can trademark owners begin to take action and enforce their rights?

Is my work original enough?
KISCH IP
  • Intellectual Property
  • South Africa
  • 22 July 2019

According to the Copyright Act, for copyright to subsist in a work, the work must be original and reduced to material form. However, if ideas and innovation are the result of the shared lived experience of the common person, how can it be determined whether a work is 'original' as defined in, for example, the Copyright Act? In order to be original, a work need not be innovative or new, but rather the result of the author's own skill, time and effort expended in creating the work.

What to do when your product is copied
KISCH IP
  • Intellectual Property
  • South Africa
  • 15 July 2019

South Africa has seen a dramatic rise in entrepreneurial activity, with many seeking to launch new products in the marketplace. However, with the success of a product comes the risk of the idea being copied and advantage being taken of the already established route to market, thereby affecting the original product's sales and brand. Therefore, any party that creates or legitimately distributes a product that they believe will be well received must take the appropriate steps to protect it.

Ship arrests: revisiting 'genuine and reasonable' need for security
Bowmans
  • Shipping & Transport
  • South Africa
  • 26 June 2019

The Supreme Court of Appeal recently took a hard line regarding an arresting party and delivered a salutary message to pay close attention to establishing a plausible link between the factors justifying a 'genuine and reasonable' need for security and the particular facts and circumstances of the party against which an arrest order is sought. The judgment is a cautionary tale for arresting parties that seek to rely on generalised allegations.

Who can apply for a patent? Applicant versus inventor
KISCH IP
  • Intellectual Property
  • South Africa
  • 10 June 2019

A granted patent is a highly lucrative commercial tool in the hands of the patent applicant. However, inventors are not necessarily entitled to apply for a patent, especially in employment contexts. Inventors are therefore advised to consult with a patent attorney when they are uncertain whether an invention falls within the scope and course of their employment. It is further advisable to enter into negotiations with employers regarding compensation for the invention.

Patenting strategy: when to patent?
KISCH IP
  • Intellectual Property
  • South Africa
  • 03 June 2019

Patenting inventions is notoriously expensive; however, the benefits of having exclusive rights over an invention far exceed any initial patenting costs. The problem remains that a decision on whether to patent an invention must often be made long before the invention's commercial potential can be judged. As such, it is often difficult to know what to patent.

Timing of tax on gift cards
  • Corporate Tax
  • South Africa
  • 31 May 2019

The Cape Town Tax Court recently addressed the timing of income tax in relation to retailer gift cards. The court found that a taxpayer had been correct to have included its receipts for unredeemed gift cards as part of its gross income before the Consumer Protection Act came into force. During the case, the counsel for the commissioner of the South African Revenue Service raised an interesting argument – namely, that the act was introduced to protect consumers' rights and not to change the incidence of tax.

Overview of registered designs: what you need to know
KISCH IP
  • Intellectual Property
  • South Africa
  • 27 May 2019

The Designs Act (195/1993) gives the proprietor of a registered design control over it for a limited period. This control is not aimed at protecting an underlying concept, but rather at the appearance of a product embodying the design. This article discusses (among other things) proprietor rights, the difference between aesthetic and functional designs and the costs involved in registering a design.

Further amendments to VAT e-services regulations enter into force
  • Corporate Tax
  • South Africa
  • 24 May 2019

Revised regulations clarifying the e-services supplied by foreign suppliers to South African consumers which are subject to value added tax were proposed in 2018, which significantly broadened the scope of e-services. In the 2019 Budget Review, the minister of finance announced that further amendments would be made to the e-services regulations to address certain oversights. The regulations came into effect on 1 April 2019.

How a 'House of Bonang' can house its intellectual property
KISCH IP
  • Intellectual Property
  • South Africa
  • 20 May 2019

Many celebrities extend their brands by venturing into various industries, such as Bonang Matheba who recently launched her own range of sparkling wine. While these endeavours can work well, they also create opportunities for individuals to infringe on the IP rights embedded in celebrities' respective ventures. As such, there are a number of IP rights that celebrities can use to maintain control over their brands and regulate how they are used by others.

Preference share funding structures: overview of Companies Act and Income Tax Act provisions
  • Corporate Tax
  • South Africa
  • 17 May 2019

Preference share funding structures are often preferred by banks and other financial institutions because dividends received by certain holders – including banks and other juristic persons – are exempt from income tax. As such, the provisions of the Companies Act and the Income Tax Act must be considered in the context of the outcome which a company wishes to achieve before it settles the terms of a preference share funding structure.

New breeding techniques and regulation of genetically modified organisms
ENSafrica
  • Healthcare & Life Sciences
  • South Africa
  • 15 May 2019

A recent European Court of Justice ruling on the status of organisms obtained by new breeding techniques as genetically modified organisms (GMOs) has again brought the scope of the South African GMOs Act into question. The difficulty with regulating organisms created through such techniques is that these organisms may be indistinguishable from organisms which have naturally evolved.

How to protect new plant varieties
KISCH IP
  • Intellectual Property
  • South Africa
  • 13 May 2019

South Africa has no plant patent system, as the Patents Act states that a patent will not be granted for any variety of plant. Therefore, new plant varieties are protected exclusively under the Plant Breeders' Rights Act. However, genetically modified plants could be patentable subject matter under the Patents Act, as they are not strictly classed as new varieties of plant.