The South African Trademarks Act (194/1993) provides for the registration of trademarks, certification trademarks and collective trademarks.
Selection, clearance and registration
Registration requirements and procedure
The South African Trademarks Act (194/1993) provides for the registration of trademarks, certification trademarks and collective trademarks.
To qualify for registration under the act, a trademark must be inherently capable of distinguishing the goods or services in relation to which it is used or proposed to be used, or capable of distinguishing those goods by virtue of its prior use, from the same or similar goods or services of others. The question of registrability is a factual enquiry.
Certain marks are specifically excluded from registration in terms of the act. These include marks that:
- lack the inherent capacity to distinguish;
- consist exclusively of a sign or indication that designates various characteristics of the goods or services; or
- have become customary in the current language or bona fide established practices in the trade.
It is unlikely that such marks could be capable of distinguishing one party’s goods or services from those of another.
Prior to adopting a mark, it is advisable to conduct a search of the Trademark Registry records, which should indicate whether it is anticipated by a prior registration or application for the same or a confusingly similar mark covering goods or services which are the same as, or similar to, those of interest.
However, the registry records are limited to trademarks that either have been registered or are in the process of registration. There are no official records of trademarks which are in use.
Anyone initiating the use of a new trademark assumes a calculated business risk and no absolute assurance can be given that a mark is free to use; but a register search should reduce the risk.
Once a trademark application is placed on file, it undergoes examination by the Trademarks Office to determine its inherent registrability as well as possible conflict with prior registrations or applications. All applications are examined by the registrar in chronological sequence of filing.
Registration of pharmaceutical proprietary names as trademarks
The Trademarks Act prevents the registration of trademarks that are inherently deceptive or when use would be likely to deceive or confuse, be contrary to the law or morality or be likely to cause offence to any party.
This is of particular relevance when considering the Guidelines Relating to Proprietary Names for Medicines issued by the Medicines Control Council (MCC) in October 2011, under which an applicant for a proprietary name will be advised whether it is identical or similar to a previously approved name. The guidelines provide for the registration of appropriate proprietary names, which may not be misleading in terms of their pharmaceutical or therapeutic qualities (eg, PAINKID for a non-paediatric medication) or derived from an international non-proprietary name.
Although the registration of a proprietary name with the MCC is completely separate from registration under the Trademarks Act, a refusal handed down by the MCC under the guidelines would arguably provide grounds to oppose registration of that proprietary name as a trademark on the basis that it would be contrary to law.
The registration of a shape or single colour mark as a trademark poses difficulties. The proprietor of a non-traditional trademark must convince the registrar of trademarks that the mark functions as a trademark and that its registration is unlikely to limit the development of art or industry. With non-traditional trademarks, the registrar may require evidence of use of the trademark in support of the applicant’s case that the mark is distinctive through use. This principle was confirmed by the South African courts in Beecham Group plc v Triomed (Pty) Ltd.
Sound marks are registrable as trademarks, subject to the registrability provisions of the Trademarks Act, including the requirement that they be capable of graphic representation. A written description of the mark may also be endorsed against the application to define the scope of protection and an analogue or digital recording of the mark must accompany the trademark application.
Taste and scent marks are also registrable as trademarks, provided that they are capable of graphic representation, and written descriptions of the marks may also be endorsed against the applications to define the scope of protection. Insofar as a scent mark is concerned, the mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective at the time of filing.
Parallel imports and repackaging
Medicines and Related Substances Act 1965
The Medicines and Related Substances Act 1965 allows the minister of health to prescribe the conditions under which more affordable medicines may be imported into South Africa. In particular, the minister of health may prescribe conditions under which any medicine that is identical in composition to, meets the same quality standard as and is intended to have the same proprietary name as another medicine already registered in South Africa may be imported by a party other than the holder of the medicine’s certificate of registration.
The Regulations to the Medicines Act provide that the parallel import of medicines is permitted if:
- the medicine is being sold outside South Africa with the consent of the patent holder for that medicine and is registered under the terms of the act; and
- the medicine is being imported by a party with the appropriate import/export licence issued by a regulatory authority that is recognised by the MCC.
Trademarks Act 1993
Further, the Trademarks Act states that a trademark is not infringed by the import into South Africa or the distribution, sale or offering for sale in South Africa of goods to which the trademark has been applied by, or with the consent of, its owner. South African courts have held that parallel importation does not constitute trademark infringement, unless the proprietor’s trademark is applied to goods that are no longer genuine by way of alteration.
Copyright Act 1978
On separate occasions the South African courts have recognised the copyright in a product’s trade dress, to the extent that the copyright in the get-up of a pharmaceutical product may be infringed where it is copied without the authorisation of the South African copyright holder.
Further, in 2002 the Supreme Court of Appeal recognised the copyright in the package insert of a pharmaceutical product and held that copyright infringement may occur where the package insert is reproduced without the copyright owner’s authority.
Consumer Protection Act 2008
The Consumer Protection Act 2008 provides that a party marketing any trademarked goods which have been imported without the approval or licence of the registered owner of the trademark must apply a conspicuous notice to those goods that no guarantee or warranty will be honoured or fulfilled by the official or licensed importer.
Anti-counterfeiting and enforcement
The Counterfeit Goods Act 1997 governs the rights of IP owners in respect of counterfeit goods (goods that are imitated to the extent that they are substantially identical copies of the protected goods, or colourable imitations) in South Africa. It enables the owner of an IP right (which includes rights under the terms of the Trademarks Act, copyright under the Copyright Act and the right of a party to use a specific mark under the Merchandise Marks Act) to act against parties involved in counterfeiting, on both a criminal and a civil basis. It is important for IP owners to record their rights with the South African Revenue Service in terms of Section 15 of the Counterfeit Goods Act.
The Counterfeit Goods Act provides for the detention and seizure of counterfeit goods, subject to an appropriate ex parte warrant being granted, by any one of three inspectorates – the South African Police Service, the South African Revenue Service (Customs and Excise) or the Department of Trade and Industry – following which criminal and/or civil proceedings must be instituted.
In criminal or civil proceedings, the court may order that the seized goods be delivered up to the owner of the IP right or to the complainant, and that the identity of any parties involved in the manufacture, import or distribution of the counterfeit goods be disclosed. In certain circumstances, goods which have been delivered up may not be returned to the market.
The Medicines Act authorises inspectors to enter any place or premises, or inspect and seize any medicine, on the reasonable suspicion that an offence under the Medicines Act has been committed, or in order to obtain any information believed to be relevant to the administration and/or enforcement of the act.
The Regulations to the Medicines Act provide that only medicines without a scheduled substance or medicines which contain a substance appearing in Schedule 0 or Schedule 1 may be advertised to the public.
Medicines which contain a substance appearing in Schedule 2 to 6 may be advertised only for the information of medical practitioners, dentists, veterinarians, pharmacists and other parties authorised to prescribe medicines, or in publications normally or only made available to healthcare practitioners.
Accordingly, only Schedule 0 and 1 medicines may be advertised to the general public, while Schedule 2 to 6 medicines may be advertised only to healthcare practitioners.
Written advertisements for a medicine must contain the following information:
- the proprietary name of the medicine;
- the approved name and quantity of each active ingredient of the medicine, in legible lettering (where a medicine contains only one active ingredient, such lettering may not be less than half the size of the largest lettering used for the proprietary name);
- the registration number allocated under the Medicines Act;
- the reference number allocated to an application for registration of a medicine followed by the words ‘Act 101/1965’;
- any name other than the proprietary name that is also used in lettering half the size of the largest type size in which the proprietary name appears in the ad;
- for a veterinary medicine, an indication that it is for veterinary use; and
- for a homeopathic medicine, an indication that it must be used in accordance with homeopathic principles.
When a medicine that contains Schedule 2 to 6 substances is advertised orally for the first time, written information must simultaneously be given to the parties to whom the oral ad is directed. When the medicine is advertised orally on subsequent occasions, such information must be made available upon request.
Health Products Code
The minister of health enacted the Health Products Code under the Medicines Act. The code sets out extensive provisions relating to the marketing of health products in South Africa.
It is enforced by the Marketing Code Authority, which is also responsible for adjudicating related complaints and disputes. Although the code is based on the principle of self-regulation through the health industry, it is legally binding, as national legislation recognises its principles and procedures.
The code governs the acceptable advertising of medicines, including comparative advertising, disparaging advertising, endorsements by healthcare professionals and the use of certain words such as ‘new’ and ‘safe’. The underlying theme behind these provisions, other than the specific requirements dealt with under the code, is that all advertising be honest and not misleading. Information, claims and comparisons must be accurate, balanced, fair, objective, unambiguous and supportable, and based on an up-to-date evaluation of all the evidence, and reflect that evidence clearly.
Unless forbidden from doing so by the prescribing doctor, and/or at the discretion of the patient, pharmacists shall under the Medicines Act inform all members of the public who visit a pharmacy or any other place where dispensing takes place of the benefits of substituting a branded medicine with an interchangeable multi-source medicine (defined as “medicines that contain the same active substances which are identical in strength or concentration, dosage form and route of administration and meet the same or comparable standards which comply with the requirements for therapeutic equivalence as prescribed”) and, in case of substitution, take reasonable steps to inform the person who prescribed the medicine of the replacement.
In 2012, the Supreme Court of Appeal in Adcock Ingram Intellectual Property (Pty) Ltd v Cipla Medpro (Pty) Ltd emphasised the patient’s role in selecting his or her pharmaceutical of choice. This starkly contrasted with previous decisions of the South African courts, which stated that it was the doctor’s responsibility to decide what medicine the patient should have, to the extent that the patient is reduced to a bystander in his or her treatment. However, the court in Adcock held that the provisions of the Medicines Act that deal with generic substitution envisage a situation where the patient is part of the decision-making process, thereby increasing the likelihood of deception or confusion between pharmaceutical trademarks.
The advertising of Schedule 0 and Schedule 1 medicines to the public is permitted. However, the Health Products Code provides that internet access to promotional material for Schedule 2 to 6 medicines for the South African public must be limited to healthcare professionals through a password protection scheme.
E-pharmacies are thus restricted to the promotion and online sale of Schedule 0 and Schedule 1 medicines only.
Information or promotional material relating to Schedule 2 to 6 medicines that is placed on the Internet outside of South Africa falls within the scope of the code if:
- it was placed on the Internet by a South African company or an affiliate of a South African company, or at the instigation or with the authorisation of a South African company or an affiliate of a South African company; and
- it makes specific reference to the availability or use of the medicine in South Africa.
Package inserts of Schedule 2 to 6 medicines can be made available on the Internet and accessed by members of the public, provided that the package inserts are not presented in such a way as to be promotional in nature.
Further, the promotion of medicines by email is prohibited, unless an opt-out option is given and the decision is subsequently respected. The opt-out option should also be provided in all subsequent communications, even if the addressee did not opt out after the first contact.
The registration and protection of domain names is regulated by the Alternative Dispute Resolution Regulations under the Electronic Communications and Transactions Act. In order to object successfully to the registration of a domain name, a complainant must show that:
- it has rights in respect of a trademark that is identical or similar to the domain name and the domain name is an abusive registration; or
- the domain name is an offensive registration, being contrary to law or, for example, likely to give offence to other parties.
The use and registration of a ‘.co.za’ domain name that is contrary to the rights afforded to an IP owner under the Trademarks Act or the Copyright Act could therefore be objectionable under the regulations.
If the domain name includes the name of a pharmaceutical (irrespective of its registration status as a trademark) which is a Schedule 2 to 6 medication, registration of the domain name could constitute an offensive registration and be contrary to law, unless password-protected access to the website that is linked to that domain name is available only to healthcare professionals.
Adams & Adams
4 Daventry Street
Tel +27 12 432 6000
Fax +27 432 6585
Samantha Copeling is a senior partner in the trademark department. She graduated with an LLB from Cape Town University in 1990 and has 23 years of post-qualification experience. She practises in the trademark prosecution department and specialises in clearance searches, all aspects of trademark registration and portfolio management. The focus of her work is on South Africa and African countries in general.
Ms Copeling is a fellow of the South African Institute of Intellectual Property and an active member of the Trademark Law Committee. She is also a member of the International Trademark Association (INTA) and the Pharmaceutical Trade Marks Group (PTMG).
Jenny Pienaar is a senior partner in the trademark department. She graduated with a BA from the University of Stellenbosch in 1988 and an LLB from the University of Cape Town in 1991. She was admitted as an attorney in 1994 and qualified as a trademark practitioner in 2004.
Her areas of practice include general commercial litigation, trademark litigation, domain name registration and securing domains from cybersquatters, as well as litigation relating to copyright, passing-off, unlawful competition, close corporation and company name objections and related issues. Her expertise also incorporates advertising law and regulatory compliance issues. Ms Pienaar is a member of INTA and the PTMG, and is chair of the Marketing Committee of the Global Advertising Lawyers’ Alliance.
Natasha Wright graduated with an LLB from the University of Pretoria in 2007. She was admitted as an attorney in 2010 and qualified as a trademark practitioner in the same year. Her practice areas include trademark litigation, copyright litigation, corporate and close corporation name objections, litigation relating to advertising, marketing, unlawful competition, passing-off and related issues.
Ms Wright is a fellow of the South African Institute of Intellectual Property Law and a member of the Law Society of Northern Provinces.