According to the Organisation for Economic Co-operation and Development (OECD), annual trade in counterfeit goods is worth approximately US$250 billion worldwide every year. For that reason, it is essential for brand owners to take steps to combat counterfeit goods.
The Counterfeit Goods Act of 1997 was enacted specifically to deal with the scourge of counterfeiting and dealing in counterfeit goods in South Africa. In addition to its general litigation capabilities, our team has specialised expertise in the area of combating counterfeit goods.
What is counterfeiting?
In terms of the Counterfeit Goods Act, counterfeiting is:-
What intellectual property rights are protected against counterfeiting?
In terms of the Counterfeit Goods Act, an “intellectual property right” includes:-
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:-
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.