Anti-counterfeiting

What is counterfeiting?

In terms of the Counterfeit Goods Act, counterfeiting is:-

• the manufacturing, producing or making of goods (whether inside South Africa or outside) in such manner and to such a degree that those goods are substantially identical copies of goods that are protected by an intellectual property right; or

• the manufacturing, producing, making or applying to goods the subject matter of an intellectual property right, or a colourable imitation of an intellectual property right (whether inside South Africa or outside), so that goods are calculated to be confused with or to be taken as being the protected goods of the owner of the intellectual property right or goods manufactured, produced or made under the owner’s licence.

What intellectual property rights are protected against counterfeiting?

In terms of the Counterfeit Goods Act, an “intellectual property right” includes:-

• a trade mark registered in terms of the Trade Marks Act 194 of 1993;

• copyright in any work in terms of the Copyright Act, 1978;

• a right conferred in terms of a notice in terms of Section 15 of the Merchandise Marks Act  in terms of which the use of a particular mark may be prohibited without the authority of a particular person.

Identifying counterfeit goods

The first step in combating counterfeit goods is to identify them. We recommend that owners of trade marks in industries where counterfeiting is a problem (especially clothing, textiles and consumer goods) consider recording their registered trade marks with South African customs officials. If a trade mark is recorded with South African customs officials, the officials will conduct random inspections of containers at South African ports and harbours and stop any goods that are suspected to be counterfeit goods.

Lodging a complaint

If suspected counterfeit goods are identified, any person interested may request a counterfeit goods inspector to investigate whether or not there is a reasonable suspicion of dealing in counterfeit goods and lodge a complaint. Persons with an interest in lodging a complaint may include:-

• an owner of an intellectual property right in respect of the protected goods;

• a licensee of an intellectual property right in respect of the protected goods;

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

• an authorised agent or representative or the attorney of any of those persons.

If the inspector is satisfied that there is a reasonable suspicion that the goods are counterfeit, he or she may obtain the necessary warrant to enter the premises where the suspected counterfeit goods are stored and seize the goods in terms of the prescribed procedure in the Counterfeit Goods Act.

After the date of seizure, there are specific time periods within which a criminal complaint may be lodged and notice of intention to institute civil proceedings given. In many cases, a complainant may choose to lodge both a criminal complaint and civil proceedings.

Other strategic considerations

In addition to enforcement strategies to combat counterfeit goods, it is our experience that a solid anti-counterfeiting strategy may often include marketing strategies and packaging of products that educate the public about counterfeit goods and the associated dangers. A dynamic approach to the problem is often necessary to reduce counterfeiting of a particular brand.