Circular No. 350; Anti-Counterfeiting
The enforcement of anti-counterfeiting measures is a growing field of intellectual property law and fast developing in South Africa and neighbouring countries. Many intellectual property owners, and trade mark proprietors in particular, regard counterfeiting of their products as most serious threat to their businesses in the 21st Century.
We feel that it is thus imperative for clients and ourselves to maintain an advanced level of knowledge in this field and of the developments in it to combat this scourge. A message must be projected that counterfeiting of brands and products will not be tolerated.
Brief Summary of the Developments in Anti-Counterfeiting in 2001
The enforcement of laws against counterfeiting has been one of the principal activities of the firm during the past year. Coherent anti-counterfeiting measures became possible by virtue of the fact that the Minister of Trade and Industry appointed several counterfeit goods depots around the country which made it possible for the provisions of the Counterfeit Goods Act to be implemented. Although this Act was passed in 1997, its effective and practical implementation was seriously impeded by the absence of counterfeit goods depots which made the valid seizure and detention of counterfeit goods impossible.
Several workshops and training programmes for police officials and inspectors of the Department of Trade and Industry were conducted during the course of the year and our firm played a leading role in this area.
Our active involvement in anti-counterfeiting measures was illustrated by the fact that more than three million counterfeit items were seized and destroyed through actions undertaken by our firm during the period of a year.
Amendments to the Counterfeit Goods Act
The Act has recently been amended to streamline certain of the administrative procedures, more particularly the need to bring applications to court to confirm raids conducted by inspectors. Whereas previously all raids, whether conducted with or without a warrant, required to be confirmed by the court, it is now only necessary for all raids conducted without warrants to be supplemented by this form of confirmation.
A further amendment to the Act makes provision for well known unregistered trade marks, and not only registered trade marks, to be the subject of a counterfeit claim. This amendment expands the ambit of the Counterfeit Goods Act and is of particular value to trade mark owners.
New Developments in the Year 2002
Customs On-Line Website
The Commissioner of Customs & Excise has set up a registration procedure in terms of Section 15 of the Counterfeit Goods Act. This procedure allows rights holders to register their IP rights with the Commissioner with a view to his department taking action to intercept goods which infringe the relevant IP rights. The entire process will be administered through a website on the Internet. This program will assist customs officials and border police in the detection and identification of suspected counterfeit goods and provide them with images and details of registered trade marks as well as the contact details of the rights holders and their attorneys in South Africa. The objective of the program is to make it possible for action to be taken expeditiously. The program is based on the program currently in operation in the countries of the European Union.
A registration and administration fee is payable and portion of it will be used to provide proper training for officials. The registration fee is R2,500 (+/- US $250) per rights holder. This is a once-off fee and thereafter a subscription and administration fee of R1,400 (+/- US $140) per annum is payable.
Appointment of Spoor & Fisher´s In-House Investigator
The need to use efficient and cost effective investigators to conduct more intensive investigations and surveillance in the market place has grown to the extent that we have decided to appoint in-house private investigators to service our clients. An effective anti-counterfeiting program cannot be conducted without proper investigations and we have concluded that the only way in which we can provide a proper investigation service to our clients is to conduct them under our own auspices. Consequently, we will henceforth offer this service.
We aim to entrench our position as one of the pre-eminent players in the anti-counterfeiting field. We believe that our duty to our clients to provide excellent services in the area of intellectual property requires that we cater fully for our clients´ anti-counterfeiting requirements. Further details of our anti-counterfeiting program can be obtained from our website at www.spoor.com.
We will be happy to provide interested clients with further information on our anti-counterfeiting program, in particular cost structures, as well as details of the customs facility for registration of intellectual property rights with the customs authorities, on request.
SPOOR & FISHER