South Africa

As the regulations governing transfers of IP rights are under review, there was some concern that this might have a temporary impact on investment in start-ups. Fortunately, however, awareness is growing of the value of trademarks. On the contentious front, the Google AdWords case has been the talk of the country, with Cochrane Steel failing in its bid to overturn a high-profile High Court judgment. Lawyers observe that international companies continue to use South Africa as a springboard for their forays into the wider continent; in response, firms here have been expanding their regional footprint. This trend is only expected to continue.

Firms

1
Adams & Adams
Spoor & Fisher
2
Bouwers
ENSafrica
KISCH IP
Von Seidels
Webber Wentzel
Werksmans Attorneys
Adams & Adams
IP powerhouse Adams & Adams is “one of the most dominant firms in South Africa – anyone who doesn’t know that knows nothing about the country”. It sparkles on both sides of the contentious/non-contentious divide, and has lately been especially busy overseeing customs seizures and anti-counterfeiting strategies for clients. With 54 partners, it has not only some of the leading lights in the field on the bench, but also staggering strength in depth. “The team is always extremely impressive – whomever it is that you deal with.” Suzaan Laing “takes a very practical, businesslike approach and really looks after her clients’ interests. She won’t be unnecessarily aggressive. She is a very impressive litigator, but she won’t necessarily litigate if other options are available. She will handle matters in the best possible way”. Jenny Pienaar and Kelly Thompson are both hailed as “really strong practitioners” by impressed peers. Domain name dynamo Pienaar knows how to cope with the heat of a courtroom inferno. Chairing the firm’s trademark litigation department, Thompson is another enforcement specialist, with complementary expertise in ambush marketing and advertising law. Dale Healey comes into his own on complex passing-off and unfair competition matters. Having worked in London for a decade, the “really approachable” Darren Olivier is an expert in all things European. On the anti-counterfeiting front, Lucy Signorelli puts her 16 years’ experience and strong links with customs officials to good use masterminding effective regional programmes. Steven Yeates and Godfrey Budeli head the anti-counterfeiting team. Yeates serves as a member of the South African Institute of Intellectual Property Law’s (SAIPL) Counterfeit Goods Committee, while Budeli has special knowledge of criminal matters in sub-Saharan Africa. The “very experienced” Simon Brown is a star on the non-contentious side; he has lectured on international trademark law at the SAIPL and is a portfolio management magus.
Bouwers
Companies seeking a highly specialised IP team with a competitive fee structure will find what they are looking for in Bouwers. Established in 2004, the nimble boutique covers the full spectrum of trademark matters, with enviable expertise in unfair competition, media and advertising law. Director Deon Bouwer has chalked up more than 20 years at the coalface and is a senior dispute resolution adjudicator with the SAIPL. His client catalogue includes an array of blue-chip companies.
ENSafrica
Having set up shop in Ghana and Tanzania in 2015 – to complement its offices in Mauritius, Namibia, Rwanda, Uganda and, of course, South Africa – ENSafrica has a striking regional network and is thus a preferred choice for multinationals with interests across the continent. Recent highlights include advising Virgin Active South Africa on its eye-catching ‘Get Off Your Ass’ campaign and taking over the stewardship of Parmalat’s portfolio. Representing both clients, Gaelyn Scott is a “dedicated professional who provides comprehensive and professional counsel. She is mindful of costs – she will readily advise clients as to whether they would be wasting money pursuing a particular course of action and, if so, she will outline more cost-effective options”. “She goes to extraordinary lengths to resolve transgressions in the best manner possible.” Brand management marvel Waldo Steyn counts Red Bull and Cipla as clients: “He is very knowledgeable and straightforward. He distils trademark law to its essence and takes us professionally through the process.” Ilse Du Plessis assists major players in the financial services, food and beverages and media sectors, to name just three. “Very skilled, she is easy to work with and can truly be relied upon to settle a trademark dispute successfully.”
KISCH IP
With 16 partners and over 110 dedicated support staff on hand, the newly rebranded KISCH IP has the resources to meet and exceed the expectations of even the most demanding clients. “You will receive a personal service there – its members are really responsive.” Anti-counterfeiting is a forte, thanks in no small part to the formidable Vanessa Ferguson. “She is truly one of the top practitioners in that field – fantastic.” She has managed enforcement programmes for some of the world’s biggest names. Leading the trademark team, Nola Bond is another IP star. With experience across the board, she is best known for her deft portfolio management. The versatile Lisa McIlwaine-Hill has over 12 years in the game and handles filing and enforcement matters with aplomb.
Spoor & Fisher
The “really excellent” Spoor & Fisher is a “one-stop shop with excellent links and contacts”. Founded in 1920, the internationally-renowned outfit now has 53 lawyers on staff and adroitly undertakes everything from filing to registration, prosecution and enforcement. “Undoubtedly one of the best practitioners in South Africa, Charles Webster has remarkable IP knowledge. He really understands the law and is meticulous.” He is a co-author of the popular and comprehensive guide The South African Law of Trademarks. Carl van Rooyen has been representing Adcock Ingram on a crucial Supreme Court of Appeal case, testing the registrar of trademarks’ powers to condone late filing of an opposition where an extension to the opposition period was requested after this had expired. Leading the anti-counterfeiting unit, Mohamed Khader works closely with customs officials and police to secure the right result for brand owners. Equally proficient on both sides of the contentious/non-contentious divide, Eben van Wyk is a “hugely talented IP lawyer who knows how to think out of the box. He won’t hesitate to go the extra mile for clients. You can rely on him to come through for you when you need him most. He is extremely efficient, insightful and experienced”. Heading the Cape Town office is Louise Myburgh, who has assisted companies with every conceivable trademark issue, from registration to enforcement, for a client base featuring a panoply of national and international blue-chips. With more than 32 years’ experience – accumulated in both South Africa and the United States – Kay Rickelman is a search and clearance virtuoso. She “brings an international perspective to matters and is a pleasure to work with. She has some really impressive foreign clients and is a true IP expert”.
Von Seidels
Von Seidels has gone from strength to strength and really cemented its presence on the South African IP scene. One recent highlight was its representation of CCG Cable Terminations in a High Court infringement case against Cable Gland; it secured an interdict and ancillary relief for its client. In another success, it prevailed for Symantec in a domain name matter before the SAIPL. These matters bear testament to the firm’s facility for tricky clashes. Trademark head Christine Strutt remains the team’s most distinguished individual: “She has a special way of dealing with clients. She is really popular.” Her strong suits include passing-off and hashtag issues. Simonne Moodie is a business-minded whizz who furnishes clients with first-rate strategic marketing and branding counsel.
Webber Wentzel
Webber Wentzel is a titan of commercial law and as such its IP team is ideally placed to handle trademark issues stemming from high-rolling transactions. However, its offering is comprehensive, with clients seeking it out for the full suite of services. Of late, it has been busy representing Serenus Bio Therapeutics with prosecution and strategy throughout Africa, and Uber on infringement proceedings against competitors Zapacab and Taxify. These matters reflect the level at which the firm engages and the calibre of clients it attracts. Involved in the former matter, Leanne Mostert has a real affinity for IP issues arising from international acquisitions and disposals, and for IP monetisation. Cross-border licensing and portfolio management sage Bernadette Versfeld has pan-continental expertise, counselling companies on issues arising in more than 40 African countries.
Werksmans Attorneys
Based in Gauteng and the Western Cape, Werksmans has been delighting clients with its incisive, cost-effective service since the early 1990s. The full-service firm is home to solid banking and finance, tax and media teams, meaning that IP counsel reliably comes framed in commercial language. Director Donvay Wegierski is “a joy to work with” and has extensive experience in portfolio management, filing and opposition matters.

Individuals: anti-counterfeiting

Godfrey Budeli - Adams & Adams
Vanessa Ferguson - KISCH IP
Mohamed Khader - Spoor & Fisher
Lucy Signorelli - Adams & Adams
Steven Yeates - Adams & Adams

Individuals: enforcement and litigation

Deon Bouwer - Bouwers
Suzaan Laing - Adams & Adams
Gaelyn Scott - ENSafrica
Charles Webster - Spoor & Fisher
Mohamed Khader - Spoor & Fisher
Louise Myburgh - Spoor & Fisher
Darren T Olivier - Adams & Adams
Jenny Pienaar - Adams & Adams
Lucy Signorelli - Adams & Adams
Kelly Thompson - Adams & Adams
Carl van Rooyen - Spoor & Fisher
Eben van Wyk - Spoor & Fisher
Steven Yeates - Adams & Adams
Dale Healy - Adams & Adams
Vanessa Lawrance - Hahn & Hahn Inc
Waldo Steyn - ENSafrica
Bernadette Versfeld - Webber Wentzel
Tyrone Walker - Moore Attorneys

Individuals: prosecution and strategy

Nola Bond - KISCH IP
Simon Brown - Adams & Adams
Ilse Du Plessis - ENSafrica
Suzaan Laing - Adams & Adams
Simonne Moodie - Von Seidels
Leanne Mostert - Webber Wentzel
Louise Myburgh - Spoor & Fisher
Jenny Pienaar - Adams & Adams
Kay Rickelman - Spoor & Fisher
Waldo Steyn - ENSafrica
Christine Strutt - Von Seidels
Eben van Wyk - Spoor & Fisher
Bernadette Versfeld - Webber Wentzel
Donvay Wegierski - Werksmans Attorneys

South Africa: The Bar

Senior counsel

Lionel Bowman SC - Circle Chambers
Philip Ginsburg SC - Group One
Reinard Michau SC - Circle Chambers
Cedric Puckrin SC - Advocates Chambers
Ronee Robinson SC - Island Group
Owen Salmon SC - The Maisels Group

Junior counsel

Paola Cirone - Group One
Derek Harms - Advocates Chambers, George
Ilse Joubert - Circle Chambers
Fiona Southwood - Group One
Barbara Vaughan - Velocity Chambers

Senior counsel

Lionel Bowman SC of Circle Chambers comes recommended for his mastery of complex trademark law and his no-stone-unturned approach. Group One’s Philip Ginsburg SC is “one of the best IP barristers in South Africa; he has acted in most of the well-known cases”. The experienced and versatile Reinard Michau SC of Circle Chambers is “skilled in all aspects of IP law”. Advocates Chambers’ Cedric Puckrin SC made headlines with his involvement in the McDonald’s well-known marks case and remains one of the country’s pre-eminent trademark barristers. Island Group’s Ronee Robinson SC is a trademark whizz with complementary expertise in unfair competition and design issues. “She shows excellent attention to detail and really considers strategic options from a commercial perspective.” Owen Salmon SC at The Maisels Group is a domain name ace who has KOed trademark cases of all shapes and sizes in his time; he has appeared in all divisions of the High Court and at the Supreme Court of Appeal.

Junior counsel

Paola Cirone at Group One is an IP expert with a practice which also encompasses business rescues, insolvency and e-commerce; her counsel is always alive to the commercial realities. Advocates Chambers’ Derek Harms is “approachable, pragmatic and excellent at simplifying complex matters”. Online hotshot Ilse Joubert at Circle Chambers has “very strong IP knowledge and is really meticulous”. Group One’s Fiona Southwood is “technically superb and good on her feet – she has exceptional skills in relation to trademark infringement and opposition matters”. Barbara Vaughan of Velocity Chambers supplements her IP practice with unique knowledge of the insurance and shipping/maritime fields.

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Issue 67