South Africa Patent Law
* Patents Act No. 57 of 1978
* Patent Regulations, 1978
* South Africa is a member of the Paris Convention, the Budapest Treaty, the PCT and the WTO/TRIPS.
* Filing deadline for PCT is 31 months from priority date, extendable up to 34 months.
Language: English (Official language)
South Africa Requirements for filing a national application:
* Power of attorney by the applicant (simply signed).
* Assignment of invention by the inventor (simply signed), where the applicant is not the inventor.
* Certified copy of the basic application in the convention country (if convention priority is to be claimed).
In the case of urgency, a filing date can be obtained by filing a so-called informal application. This requires in the case of an application claiming priority –
* the name and address of the applicant
* the title of the basic application(s) in the convention country
* the country, number(s) and date(s) of the basic application(s).
Requirements for a national phase application under PCT in South Africa (in addition to the requirements for a national filing):
* Translation of the international application in English (if the international application is not in English; to be filed within six months).
* Assignment (simply signed) (if the applicant in the national phase is not the same as in the international application or the priority application; not required in certain circumstances).
South Africa Patent Registration Procedure
The patent application is filed at the Companies and Intellectual Property Commission CIPC of South Africa.
An application is subjected to formal examination only.
Once the Registrar is satisfied that all formal requirements have been complied with, a notice of acceptance is issued. It is possible, on request to the Registrar, to delay acceptance for up to 18 months for national applications, or 12 months for PCT applications (and for a period of three months thereafter upon payment of a fee). Any delay beyond 21 months for national applications, or 15 months for PCT applications, is at the discretion of the Registrar and on good cause shown.
If the documentary requirements have not been lodged within the above mentioned 18 months or 12 months period (or the three months extended period), the application lapses, unless an appeal has been lodged or the delay in accepting the application was not due to any act or omission on the part of the applicant.
The Act makes no provision for opposition to an application prior to grant.
Upon issuance of the notice of acceptance, the applicant must publish the acceptance in the Patent Journal within three months (or within such further period as the Registrar may allow on good cause shown and on payment of a fee). The patent is deemed to have been sealed and granted as from the date of such publication of acceptance.
The term of a patent is 20 years from the date of filing. Maintenance fees are payable annually as from the third anniversary of the filing date. A six month grace period may be obtained on payment of the prescribed fee.
For PCT-based national phase applications, if grant takes place 33 months or later after the international filing date, the due date for payment of maintenance fees is extended to a date six months after the date of grant. A further six month grace period is also available.
If the renewal fee is not paid by the end of the prescribed period, the patent lapses.
The following are not patentable in South Africa:
* inventions contrary to law or morality
* discoveries, scientific theories, mathematical methods
* literary, dramatic, musical or artistic work or any other aesthetic creation
* a scheme, rule, or method for performing a mental act, playing a game or doing business
* a program for a computer
* the presentation of information
* varieties of plants or animals or essentially biological processes for producing them, which are not microbiological in nature
* therapeutic or surgical methods of treating humans or animals, or diagnostic methods practised on either
* anything obviously contrary to well-established natural laws
* any invention the use of which would encourage illegal or immoral behaviour.
Any person who has filed a patent application in a convention country (at present Paris Convention countries) is entitled to claim priority from such earlier application, provided such earlier application was the first application for the invention as claimed in any convention country, and the application in South Africa is filed within 12 months from the filing date of such earlier application.
A certified copy of the earlier application has to be lodged, and an assignment of priority rights if the applicant is not the same as in the earlier application.
Priority rights may also be claimed in the following cases:
* where the application was preceded by a provisional application in South Africa and the subsequent complete application is filed within 12 months of the provisional application (a three-month extension is
available upon payment of a fee)
* where the application was preceded by an earlier complete application in South Africa (without a claim to priority) and a subsequent complete application is filed within 12 months of the earlier application (a three month extension is available upon payment of a fee).
South Africa Trademark Law
The Legal basis in South Africa are the Trade Marks Act No. 194 of 1993, in force since May 1st, 1995, and the Intellectual Property Laws Amendment Act No. 38 of 1997, in force since January 1st, 1998.
South Africa is not a member of the Madrid Agreement or the Madrid Protocol.
Trade mark protection is obtained by registration. It can also be acquired by sufficient public recognition in terms of common law.
The principles of ʻcommon lawʼ apply, i. e. official and judicial decisions are rendered on the basis of prior decisions and judgements on similar cases.
Nice classification, 11th edition. A separate application has to be filed for each class.
Power of Attorney (POA) Simply signed.
South Africa Trademark Registration Procedure
The application is filed at the “Companies and Intellectual Property Commission” (CIPC).
* The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
* The application is examined to determine inherent registrability and/or conflict with prior applications and/or registrations. The examination report is issued from 9 to 12 months after filing date.
The period to respond to a examination report is 3 months.
* Approval and acceptance of the trademark application is from 15 to 20 months after filing date.
Six (6) months after acceptance date, the trademark application is published in the monthly Patent Journal.
National Opposition Period
The opposition period is 3 months from publication of acceptance of the trade mark application, extendable for further periods of 3 months each.
The Certificate of registration is issued from 6 to 8 months after acceptance date.
The processing time from first filing to registration is approx. 2 years, provided the process is smooth.
The first office action is taken after approx. 9 months of filing date.
A trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.
Cancellation for removal of a trade mark
Any interested person may apply in the prescribed manner to the Registrar or to the court for the desired relief for –
* the non-insertion in or omission from the register of any entry
* an entry wrongly made in or wrongly remaining on the register
* any error or defect in any entry in the register.
Proceedings for the cancellation/removal of a trade mark are brought on notice of rectification supported by an affidavit setting out the facts on which the applicant relies. It is possible to institute rectification proceedings either before the Registrar or in the High Court. Proceedings before the Registrar are essentially the same as application proceedings in the High Court.
Grounds for cancellation for removal of a trade mark
A trade mark registration may be cancelled and the trade mark removed from the register on any of the grounds on which the trade mark application could have been opposed., in addition to the following –
* that the trade mark was registered without any bona fide intention of the applicant that it would be used, and that there in fact has been no bona fide use up to the date three months prior to the application
* that up to three months before the application for cancellation, there has been no use of the trade mark for a continuous period of five years or more from the date of issue of the registration certificate.
Use requirement and cancellation
Use of the trade mark prior to the application is not required; only the bona fide intention to use the trade mark. Registration may be cancelled if the trade mark was registered without any bona fide intention to use the mark and there has, in fact, been no use of the mark.
Failure to use the trade mark for a continuous period of five years after date of issuance of the registration certificate will render the registration vulnerable to removal from the register.
Trademark Grounds of opposition in South Africa
Both absolute and relative grounds of opposition are available; some of the many grounds listed in the Act are set out below:
* that the mark does not constitute a trade mark, or is not capable of distinguishing the goods or services.
* that the mark consists exclusively of a sign which may serve in trade to designate kind, quality, intended purpose, value, geographical origin, etc.
* that the mark is inherently deceptive, or the use of the mark is likely to deceive or cause confusion, or will be contra bonos mores.
* that the mark is identical to the registered trade mark of another party, or identical to the mark which is the subject of an earlier application by another party, or so similar that use thereof on the intended goods or services would be likely to deceive or cause confusion.
* that the mark is identical or similar to a trade mark already registered and which is well known in South Africa, if the use of the mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known registered mark.
* that the mark is one to which the applicant has no bona fide claim to proprietorship, or no bona fide intention of using as a trade mark.
* that the mark consists of a sign or an indication which has become customary in the current language or the established practices of the trade.
* that the mark consists of the national flag or armorial bearings of the Republic or another state or an international organisation.
* that the mark was filed in bad faith.