South Africa - New Counterfeit Goods Act

Newsletters and Bulletins / March 1999 / South Africa

The Republic of South Africa has enacted a new Counterfeit Goods Act, which went into effect on January 1, 1998, to meet the increasing problem of counterfeiting in that country. The principal features of the new law are summarized belo:

1. Counterfeiting is defined as manufacturing, producing or making any goods, whether in South Africa or elsewhere, without the authority of the owner of the intellectual property right in the protected goods, or applying to such goods the subject matter of that intellectual property right, or a colorable imitation thereof, so that the goods are calculated to be confused with or to be taken as being the protected goods of the owner of the right.

2. Dealing in counterfeit goods are prohibited and prohibited acts which are tantamount to dealing include:

the possession or control of such goods in the course of business;

the manufacture of such goods, except for private and domestic use;

the sale, hire, barter or exchange of such goods and the offer or exposure of such goods for sale;

the exhibition of such goods in public for purposes of trade;

the distribution of such goods for purposes of trade or for any other purpose, resulting in the owner of the intellectual property right suffering prejudice;

the importation or export of such goods, except for private and domestic use; and

the disposition of such goods in any other manner in the course of trade.

3. Any person who performs or engages in any of the acts set forth in 2) above commits an offense, if such person knows or has reason to suspect that the goods are counterfeit goods and does not take reasonable steps to avoid such prohibited acts.

4. All persons with an interest in "protected goods" (which are defined below) may institute proceedings under the Act and include:

the owner or licensee of a trademark or copyright in respect of the protected goods;

an importer, exporter or distributor of the protected goods; or

the duly authorized agent or representative or attorney of such person.

5. "Protected goods" are defined as goods featuring, bearing, embodying or incorporating the subject matter of an intellectual property right with the authority of the owner of that right; or goods which feature, bear, embody or incorporate the subject matter of an intellectual property right only with the authority of the owner of that right, but which have not yet been manufactured, produced or made.

6. The new law provides detailed procedures for an injured party to file a complaint with an inspector, for the inspector to obtain a warrant from a judge or magistrate and for the inspector to enter and search the premises or vehicle and seize, remove or detain the counterfeit goods. An inspector may be a police official, a Customs and Excise official or a person appointed by the Minister of Trade and Industry.

7. An injured party may bring civil or criminal proceedings. If criminal proceedings are to be instituted, these must be commenced within 3 days after receiving notice from the inspector that the suspected counterfeit goods have been seized. If such action is not taken within 3 days the seized goods must be released to the suspect.

8. Penalties provided for in the Act include substantial fines or imprisonment for a maximum period of 3 years or both.

9. The law also provides for the owner of an intellectual property right to submit an application to the Commissioner for Customs and Excise to seize and detain suspected counterfeit goods being imported.

March 1999 Index

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