South Africa

As a major economy with a sophisticated consumer market, South Africa is an important jurisdiction for trademark law. The country boasts a well-developed legal profession which has connections across Africa, it also serves as a conduit for brand protection throughout the region. However, there is currently a feeling of pessimism among the country’s IP lawyers: a slumping business environment has dramatically reduced instruction numbers and had a negative effect on fees; there are also concerns about inconsistency at the trademark office and a lack of specialised IP judges in the courts. The prolonged uncertainty regarding whether South Africa will join the Madrid Protocol is another key talking point. Some hope that the transition will take place sooner rather than later, while others are keen to ensure that further adaptations are made to the country’s trademark system before accession.

Firms

1
Adams & Adams
Spoor & Fisher
2
Bouwers
ENSafrica
Von Seidels
Webber Wentzel
Adams & Adams
Working masterfully across the IP spectrum, Adams & Adams is widely considered to be a top-tier practice by brand owners and fellow professionals. “Not only the largest team, it is the best for trademarks – there’s no doubt about it. Adams has excellent practitioners who benefit from fantastic systems and structures; as well as a core group of senior experts, it has well-trained younger staff whose work is of a consistently high quality.” “Superb strategist” Simon Brown provides assured leadership on the non-contentious side, implementing portfolio development programmes seamlessly across Africa. Flanking him is time-served strategist Eugene Honey, who has a flair for prosecution and IP commercialisation. Straddling both sides of the practice is the “absolutely excellent” Darren Olivier, who “stands out with his fantastic negotiating abilities and great people skills”; his perceptive rights management is informed by an exceptional understanding of international markets. Jenny Pienaar is a valuable ally when contentious matters arise; a courtroom virtuoso, she also sparkles in opposition proceedings and has a particular penchant for domain names. Accomplished enforcer Dale Healy is another key contact for dispute resolution, as is advertising and soft-IP aficionado Kelly Thompson. The business savvy Gérard du Plessis provides level-headed leadership to the civil litigation department. At the vanguard in the fight against fakes, Steven Yeates has broadened his focus since the recent departure of colleague Suzaan Laing – he now tackles a panoply of trademark spats from his new base in Cape Town. Other leading figures in the firm’s outstanding anti-counterfeiting offering include Lucy Signorelli and Godfrey Budeli.
Bouwers
Splendid boutique Bouwers offers a flexible, hands-on and strategically sharp service, functioning as an external in-house counsel for an array of large and small brands. Adroit in prosecution and sought after for its sagacious advice, the firm is most prized for its dexterous handling of must-win trademark disputes. Well-served by its specialist focus, it also draws on enviable know-how in advertising, media and unfair competition law. “Superb litigator” Deon Bouwers is the driving force behind the compact Bouwers set-up, which he founded in 2004: “He is a great enforcer who is very capable and can resolve the most difficult problems.”
ENSafrica
With over 600 commercial lawyers across Africa – 45 of which are IP specialists – the continent’s largest law firm ENSafrica manages the heftiest multinational IP instructions with poise. The firm’s size is matched by the quality of its work: “The trademark team in South Africa possesses remarkable knowledge of domestic and international law; and it gives commercially attuned advice, tailor-made for each client. Its lawyers are efficient, proactive and consistent in their approach; their turnaround time is impeccable.” These qualities are personified by local practice head Gaelyn Scott, a “brilliant and committed lawyer” whose adept brand rights management and enforcement is favoured by a slew of household names – she is currently handling disputes for Hilton Hotels, Ferrero Rocher and Bloomberg. Patrons also love working with prosecution and transactions maven Ilse du Plessis, they describe her as “very collegial and excellent at reaching agreements”. She has shown her steady hand while overseeing hybrid trademark management and advertising projects across 20 countries for MMI and demonstrated her talents in complex portfolio development and licensing instructions for Sanlam. “Very clever and always on top of things”, MBA holder Waldo Steyn expertly extracts commercial value from intangible assets. “An absolute professional and a caring individual”, he “explains all of the options clearly, lets clients know where they stand and makes them feel that they are in the driving seat”.

Since its rebranding in 2015, 140 year-old trademark powerhouse KISCH IP has been enjoying renewed momentum. The firm’s diverse bench of lawyers and support staff makes it a compelling choice for larger instructions. However, the “professionalism, experience and consistency” of its practitioners is what strikes a chord with peers. “Excellent lawyer” and department leader Nola Bond is outstanding across the trademark lifecycle – in litigation, oppositions and prosecution – while Vanessa Ferguson cultivates a sterling reputation as one of Africa’s foremost anti-counterfeiters; she is “assertive and knowledgeable, has integrity and is a pleasure to work with”. “Superb” all-rounder Lisa McIlwaine-Hill brings an assured touch to international filing campaigns and commands the foreign trademarks department with aplomb. Debuting in the WTR 1000 this year, her colleague Andrew Papadopoulos is a “young star” with an astute understanding of domain name matters. Another debutante Vicky Stilwell “has made a huge impact since joining in 2015; very efficient, she is an excellent prosecutor”.

Spoor & Fisher
Gold-tiered boutique Spoor & Fisher wins plaudits with its “proactive approach, strong infrastructure and commitment to getting results”. Founded almost a century ago, it now has more than 80 IP-specialist lawyers in its ranks, ably served by a team of over 350 support staff. Known for its established presence in South Africa and Jersey, the firm has an impressive network across the continent, boosted by offices in Gambia, Ghana, Malawi, Cameroon and Zambia. Bases in Johannesburg, Pretoria – where it has recently moved into a new, state-of-the-art facility – and Cape Town ensure comprehensive coverage in the Rainbow Nation. A force to be reckoned with in disputes, “national institution” Charles Webster has “extremely detailed knowledge of relevant case law”; the battle-hardened trial lawyer recently enjoyed a notable success in the Supreme Court of Appeal for British American Tobacco against Philip Morris. The firm also achieved a salient victory in opposition proceedings for the Scotch Whiskey Association in Tanzania, where IP decisions are few and far between. A further boost came in Kenya, where Spoor & Fisher struck a blow for rights holders by winning a court ruling which held that the country’s anti-counterfeiting laws are constitutional. Other hotshots in contentious matters include Carl van Rooyen, a 30-year veteran who can solve the most intractable brand rights conundrums and anti-counterfeiting supremo Mohamed Khader, who works skilfully with customs officials to remove imitations from the market. The firm is also highly esteemed for its prosecution efforts. Almost four decades at the coalface allow Jean McIvor to execute on the most challenging cross-border mandates with ease; she protects Discovery Healthcare’s brand in more than 35 countries. Her colleague, the “deeply erudite” Kay Rickelman acquires impervious protection across Africa for blue-chip companies such as Starbucks. Stephen Goldberg is “responsive and offers timely advice” when conducting searches and registering trademarks. Transcending the contentious/non-contentious boundary, Cape Town office chief Louise Myburgh is “very imaginative in her work, gives clear and relevant advice and is easy to work with”. The equally versatile Eben van Wyk is “a trusted partner and a bright pragmatic lawyer who tailors his approach to each client’s needs; he never fails to produce an exceptional strategy”.
Von Seidels
Dynamic IP shop Von Seidels has made huge strides since its establishment 10 years ago. With 16 trademark professionals, the set makes light work of major prosecution campaigns for a plethora of global brands and is one of the country’s most prolific filers. As Africa’s only ISO 9001-certified practice, the firm is also famed for its magnificent client service. Best known for strategically focused rights development, team captain Christine Strutt has been entrusted by Virgin Active with its regional portfolio. She also recently closed a number of licensing agreements for internet security giant Entersekt. African prosecution practice leader Claire Brown – who was promoted to partner in 2017 – is another cross-border brand protection pro, as is Simonne Moodie, who works hand-in-hand with patrons in Europe, the United States and Australia. Although most celebrated for its prowess in non-contentious matters, Von Seidels continues to enhance its standing in dispute resolution, thanks in part to Hugo Prinsloo – a specialist soft-IP litigator and fastidious anti-counterfeiter, who also made partner last year. He is “reliable, keeps the client informed about developments in their cases, and offers pragmatic and robust advice”.
Webber Wentzel
Lauded for its “large team and wide-ranging expertise”, Webber Wentzel is an exceptional choice for trademark mandates on either side of the contentious/non-contentious divide. Embedded in a general service firm, its IP team has a holistic commercial approach and is inimitable in transactional briefs. The ensemble’s membership of the Africa Legal Network gives it unsurpassed capabilities when it comes to pan-continental instructions. Brand rights monetisation whizz Leanne Mostert also handles complicated portfolios with consummate skill; she currently advises Haribo on a variety of trademark issues and of late has sewn up acquisitions for a host of major clients; Mostert has also been called on by US trademark law behemoth Fross Zelnick for one of its major South African filing projects. Another pillar of the practice, Bernadette Versfeld is “very proficient, flexible in her approach and has fantastic know-how”. Counselling Facebook and Red Bull on disputes, the judicious all-rounder also executes on prosecution briefs for Emirates.

Individuals: anti-counterfeiting

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

Individuals: enforcement and litigation

Deon Bouwer - Bouwers
Gaelyn Scott - Edward Nathan Sonnenbergs Inc
Charles Webster - Spoor & Fisher
Gérard du Plessis - Adams & Adams
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
Hugo Prinsloo - Von Seidels
Waldo Steyn - ENSafrica
Bernadette Versfeld - Webber Wentzel
Tyrone Walker - Moore Attorneys

Individuals: prosecution and strategy

Nola Bond - KISCH IP
Claire Brown - Von Seidels
Simon Brown - Adams & Adams
Ilse du Plessis - ENSafrica
Stephen Goldberg - Spoor & Fisher
Eugene Honey - Adams & Adams
Lisa McIlwaine-Hill - KISCH IP
Jean McIvor - Spoor & Fisher
Simonne Moodie - Von Seidels
Shane Moore - Moore Attorneys
Leanne Mostert - Webber Wentzel
Louise Myburgh - Spoor & Fisher
Darren T Olivier - Adams & Adams
Andrew Papadopoulos - KISCH IP
Jenny Pienaar - Adams & Adams
Kay Rickelman - Spoor & Fisher
Waldo Steyn - ENSafrica
Vicky Stilwell - KISCH IP
Christine Strutt - Von Seidels
Eben van Wyk - Spoor & Fisher
Bernadette Versfeld - Webber Wentzel

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
Ronée Robinson SC - Island Group
Owen Salmon SC - The Maisels Group
Alasdair Sholto-Douglas SC - Huguenot Chambers

Junior counsel

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

Senior counsel

Combining a strong command of the nuances of IP law with outstanding rhetorical skills, Lionel Bowman SC of Circle Chambers is a fine choice for brand owners in difficulty. A veteran of many big cases, Philip Ginsburg SC can be depended on when it matters most; he is part of Group One. “Excellent barrister” Reinhard Michau SC of Circle Chambers “has years of experience and is brilliant in the cross-examination of witnesses”. A fixture of Advocates Chambers, Cedric Puckrin SC ranks among the country’s finest barristers and has acted in many headline-grabbing trademark suits. Island Group’s Ronée Robinson SC is praised for “considering every angle available to a client”. The courtroom virtuoso has a holistic understanding of intellectual property and adjacent subjects. Distinctive signs aficionado Owen Salmon SC constructs persuasive arguments and thinks on his feet in the heat of trial. The “approachable, efficient and businessoriented” counsel can be found at The Maisels Group. Time-tested barrister Alasdair Sholto-Douglas SC of Huguenot Chambers makes his first WTR 1000 appearance this year on the back of glowing peer feedback.

Junior counsel

Group One lawyer Paola Cirone is “very approachable and a practical thinker”. She brandishes a mixture of specialist IP know-how and broad business law savvy. Derek Harms of Advocates Chambers knows how to get his point across in the most crucial cases. Circle Chambers’ Ilse Joubert advances compelling arguments based on a profound grasp of trademark law; she boasts niche expertise in internet law matters. Former Adams & Adams partner and IP law specialist Gavin Marriott is an attractive option for mission-critical cases. He works out of Group One, as does the “extremely thorough” Fiona Southwood. “I always try to get her on brief before the other side does,” comments one South African solicitor. Intellectual property is a major focus for Huguenot Chambers’ crack advocate Barbara Vaughan.

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Issue 74