South Africa

Concrete steps are yet to be taken regarding the implementation of the IP Policy of the Republic of South Africa, Phase 1, a foundation of South Africa’s National Development Plan which aims to eradicate poverty and reduce inequality by 2030 through a greater emphasis on innovation. The policy should encourage domestic production and inspire local companies to fully utilise the IP system. Phase 1 focuses on intellectual property and public health, in the hope of creating a path to improved, more affordable medicines. However, with limited movement on this front, the country’s trademark practitioners are occupying themselves with traditional protection and enforcement matters, while also keeping an eye on the rapidly evolving digital landscape and the novel legal issues emerging in that space.

Firms

Adams & Adams 

A frontrunner for complex IP matters, Adams & Adams has the commercial acumen and resilience to accommodate both Fortune 500 companies and start-ups. In the words of one satisfied patron: “The team understands exactly how our business operates and always go the extra mile to guarantee we receive exceptional and the most suitable legal advice. They are the number one IP firm.” Constant growth and “excellent value for service quality” are par for the course at Adams, which continually attracts new names to an already lengthy client roster. Spearheading the prosecution practice, Simon Brown has “built a very strong and unique network of local associates, making it possible to seamlessly manage intellectual property throughout Africa”. Colleague Megan Moerdijk “is meticulous and detail oriented, and has a wealth of trademark prosecution knowledge across a wide range of territories”. Other masters of prosecution include Eugene Honey, Lucy Signorelli and Nelia Hickman, who all shine on the smart management of portfolios for domestic and international clients. This year, the WTR 1000 also welcomes Johan Du Preez, Samantha Copeling and Blain De Villiers, who further bolster Adams’ outstanding non-contentious capabilities. “Proactive, timely and outstanding” are the words used to describe Du Preez; while Copeling is “an amazing professional, a legend in portfolio management and really friendly too”. De Villiers “distinguishes himself with his professionalism and strategic thinking, as well as his practical and commercially oriented advice. He is a fountain of knowledge, even in far-flung jurisdictions”. The enforcement side of the practice is equally impressive. Chairman Gérard du Plessis is a “highly valued practitioner whose broad knowledge of the law always results in the highest-quality advice”. Nolwazi Gcaba, Dale Healy and Kelly Thompson flawlessly handle complex contentious matters and work effortlessly alongside brand owners. Well known for domain name disputes, Jenny Pienaar combines her “incredibly practical mindset and ability to intuitively understand clients’ needs with an outstanding courtroom track record”. “Competence, technical expertise, trademark knowledge and business-understanding are the qualities that make Steven Yeates an outstanding IP litigator.” Drawing on three decades of experience, Mariëtte du Plessis “always goes the extra mile to provide the best legal advice, which takes into consideration her clients’ business concerns”. IP triple threat Darren Olivier is highly regarded for his unmatched prosecution, litigation and transactional prowess. Rounding off a stellar troop is an anti-counterfeiting specialist Godfrey Budeli, who willingly shares his wisdom by training the country’s future trademark professionals.

Bouwers

Johannesburg-based firm Bouwers delivers thoughtful, precise trademark guidance to a colourful catalogue of domestic and international clients. With a particular focus on the South African market, the set acquits itself with distinction globally, having carefully cultivated a wide network of foreign correspondents . Pace-setter Deon Bouwers ticks all the boxes when it comes to efficient prosecution and robust enforcement. With two decades in the game, he is a “seasoned litigator who consistently yields gold-standard results”.

de Chalains IP 

Appearing in the WTR 1000 for the first time this year is thriving boutique de Chalains: “Knowledgeable and user friendly, it gets the job done with minimum fuss, even in difficult situations – and without breaking the bank either.” It offers shrewd, hands-on portfolio management and enforcement services to an enviable list of clients, particularly in the sports industry, where the firm has carved out a niche: for example, it undertakes filing and prosecution for the Rugby World Cup as well as the British and Irish Lions Designated Activity Company. This brief is the preserve of David Bernstein, who “applies a laser-sharp focus and solves problems creatively”. He provides strong leadership to the team alongside fellow managing principal Reinhold Gregorowski. Gregorowski has ample international know-how and particular expertise protecting rights across Africa. He gets even the most difficult jobs done efficiently and to the highest standard.

Dentons

Global law firm Dentons makes its debut in the WTR 1000 South Africa rankings for 2021; the local crew has been building momentum thanks to its integrated IP and commercial capabilities, nuanced grasp of diverse businesses and cultures, and flexible service. Its practitioners work hand in glove with their colleagues in the firm’s African and international offices, giving clients instant access to an extensive resource pool. Bringing 37 years of IP, technology and corporate experience to the table, Alan Jeftha makes for a supremely reliable guide in contentious and transactional scenarios. He has an outstanding lead IP associate in rising star Muhammad Patel: “A pleasure to deal with, Muhammad turns work around swiftly and gives considered business advice which takes clients’ commercial needs into account. He is a diligent practitioner who keeps you updated on matters and who adds great value in ensuring your rights are protected.”

ENSafrica

“ENSafrica is exceptionally efficient in dealing with vast and geographically diverse portfolios. The team gives sound commercial and realistic advice that is founded on deep research into clients’ businesses and anticipates their future needs. It is ever mindful of costs too, and suggests the most price-efficient courses of action that nonetheless render full trademark protection, which gives great confidence when reporting at company board level. The firm is one you can entrust your most precious assets to.” One USP is its cosmopolitan flavour: its 600 practitioners across seven African jurisdictions speak many languages, facilitating easy communication. The companies that appreciate this cross-border proficiency include MTN Group, one of South Africa’s most valuable brands: it has tasked ENSafrica with the management of some 2,400 trademarks across almost 50 jurisdictions. Taking the reins for MTN are Gaelyn Scott, Manisha Bugwandeen-Doorasamy and Waldo Steyn, each of whom garners warm recommendations from the market. “Gaelyn is efficient, responsive and hugely knowledgeable regarding South African trademark law. She is an excellent relationship partner who ensures that matters are quickly addressed and resolved.” “Manisha takes timely action to support dynamic brands as they expand their trademark portfolios and evolve into new business areas.” “When it comes to commercial IP work, Waldo is eminently capable and an excellent negotiator.” Other key contacts include prosecution ace Rowan Forster, portfolio management specialist Ilse du Plessis and pharmaceutical maven André Maré. “Extremely proactive and commercially astute”, Forster does sterling work maintaining trademark protection for Willowton Group as it expands its manufacturing operations and customer reach across Africa. “Exceptionally consistent in her delivery of a high-calibre professional service”, Du Plessis is responsible for the African trademark portfolio of Hilton Hotels Group. IP commercialisation is the metier of Maré, whose workload encompasses significant projects and deals in Africa, Europe, the Americas and Asia. All of these practitioners benefit from superb support from the firm’s associates, including standout Delene Bertasso. “Delene’s warm, open-minded and sensitive approach brings positive results time and again, but she isn’t found wanting when a more aggressive approach is required. She is meticulous in her execution, while making complex issues easy to understand.”

KISCH IP

For 145 years now, KISCH IP has been a trusted partner both to local companies with ambitions of expansion into neighbouring territories and to multinational entities looking to establish a presence in Africa. Its accomplished attorneys know their craft inside out and effectively guide patrons through all stages of the brand lifecycle. On the prosecution front, Lisa McIlwaine-Hill, Vicky Stilwell and David Legge hold down the fort. International trademark department spearhead McIlwaine-Hill has a thorough understanding of laws and policies across the continent, and devises perceptive strategies as a result. For filing, prosecution and portfolio management, Stillwell always hits the mark; while Legge – who recently moved over from Moore Attorneys – is a preferred choice for blue-chip companies seeking pragmatic brand management advice. Nola Bond and Andrew Papadopoulos deftly navigate the contentious/non-contentious divide, but draw particular praise for their litigation capabilities. Technology ace Derek Momberg understands the value of intellectual property and has the commercialisation of assets down to a T.

Moore Attorneys

“Professional and efficient, Moore Attorneys is vigilant in its approach, gets the job done quickly and provides all the necessary follow-up information.” Among other high-profile briefs, it provides the gamut of services for Sol Plaatje Educational Trust; assists Bridgestone South Africa in its filings and renewals; and protects the interests of publicly listed company Phumelela Gaming and Leisure at an international level. Driving the practice forward are Shane Moore and Tyrone Walker. Managing partner Moore draws on his experience practising in both South Africa and the United Kingdom to provide tailored, strategic counsel with an international touch; while the “super-knowledgeable and pragmatic” Walker dominates in litigation.

Spoor & Fisher

Celebrating 100 years of protecting and enforcing IP rights, industry titan Spoor & Fisher is well equipped to handle any and all trademark needs. “A premier firm for IP instructions”, it maintains a global footprint and has built up an impressively deep bench of practitioners, who take their cue from the “knowledgeable and prompt” Eben van Wyk. Lately the all-rounder has been assisting listed international education provider Curro Holdings and workplace management solutions company Tsebo Solutions with the management and expansion of their portfolios. Drawing on over two decades at the IP coalface is the equally versatile Louise Myburgh, “a highly regarded and well-reputed practitioner who always places her clients’ interests first”. The firm has a squad of crack litigators in John Foster, Carl van Rooyen, Megan Reimers, Herman Blignaut and Charles Webster. Foster frequently teams up with van Wyk and together they are acting for the United States Polo Association & Stable Brands on a commercially consequential mandate. Van Rooyen has a knack for disputes with unfair competition threads; while Reimers’ broad practice – which encompasses trademarks, copyright, advertising law and domain name disputes – makes her a great choice for holistic brand protection. Hailed for his advocacy skills, Blignaut debuts in the WTR 1000 this year; while Webster is “instrumental in helping companies make the right use of their assets and undoubtedly one of the country’s leading and practitioners”. Spoor & Fisher also has a much admired anti-counterfeiting team, led by Mohamed Khader: “Responsive and nice to work with, he also has great knowledge of South African enforcement issues. Khader’s connections with thought leaders in the area are also extremely helpful.” Working alongside him, Charl Potgieter frequently trains customs officials on product identification and executes enforcement plans at a national level. On the prosecution front, seasoned trademark attorneys Marco Van Der Merwe and Jean McIvor have won many fans among the firm’s domestic and international clients. Van Der Merwe is an authority on information technology; while McIvor’s four decades of experience provide valuable insight that is hard to match. A former president of the South African Institute of Intellectual Property, Tshepo Shabangu speaks eight languages, including German, which stands her in good stead for international clearance, registration and prosecution work. The side is also home to Stephen Goldberg and Kay Rickelman. Goldberg is a repository of trust for blue-chip companies seeking the smoothest route to trademark registration; while Rickelman is referred to as the “godmother of trademark law in Africa”. One source comments: “I have yet to come across a trademark office Kay hasn’t dealt with, counsel she doesn’t know or a situation she can’t handle. Her approach demonstrates an understanding of business concerns, while also being able to dip into her arsenal of skills to clear prosecution hurdles and win disputes.”

Von Seidels

“Fresh and nimble boutique” Von Seidels is a growing presence on the South African IP scene. Recently expanding from two offices to four and consistently enhancing its litigation and anti-counterfeiting offering, the ISO 9001 certified outfit always delivers on quality. Calling the shots in those two areas is Hugo Prinsloo. The enforcement team leader “tackles complex cases promptly and with a creative approach”. The firm is particularly strong in prosecution, with “commercial and down-to-earth” trio Christine Strutt, Simonne Moodie and Claire Brown all receiving warm plaudits from the market. Large-scale portfolio management comes easily to the “energetic and approachable” Strutt, who feels at home in the technology, media and luxury goods sectors. “Reliable and proactive”, Moodie provides work product “of the highest quality and at a reasonable price point too”. Trademarks division spearhead Brown “is super-friendly and replies promptly. She goes beyond the instructions received and considers the matter in full, looking at all available options”.

Webber Wentzel

Full-service commercial outfit Webber Wentzel marries refined trademark services with a fully integrated technology, data and media offering. The outfit has a longstanding alliance with international powerhouse Linklaters, which ensures seamless global brand protection. Captaining the practice, Leanne Mostert “impresses with her intellectual humility and empathy for clients’ beliefs. Her ability to provide on-the-spot advice is immeasurable and the turnaround time exceptional”. Mostert has also been making waves in the South African IP scene, successfully lobbying for amendments to the IP exchange control regulations. Fellow versatile practitioner Bernadette Versfeld “is efficient and responsive, and always provides a first-class and reliable service”. Lately, she has been assisting the JSE – the continent’s largest stock exchange – with its strategy, prosecution and infringement matters in Africa, the European Union and the United States.

Werksmans Attorneys

Breaking into the WTR 1000 this year on a wave of praise, Werksmans Attorneys is “a professional, resilient and accomplished firm with a quick, well-organised and trustworthy team. Its trademark portal is noteworthy too, as it helps when saving costs”. The Stellenbosch based ensemble provides the full package to an elite clientele; among other notable instructions, it has been appointed as counsel to South African Rugby Events Services, which is responsible for hosting the Irish and British Lions Tour. Here, head of trademarks Janine Hollesen and foreign trademarks division lead Donvay Wegierski are busy drafting a strategic branding policy which also mitigates the risk of counterfeiting. The duo also advise Monster Energy in both contentious and non-contentious scenarios. “Pleasant and responsive, Janine and Donvay do their utmost to manage matters efficiently and cost effectively, without compromising on quality.”

Other recommended experts

WTR 1000 debutant Esmari Jonker of Smit & Van Wyk is a franchising ace who draws on her understanding of local and international laws to facilitate swift and fruitful negotiations. “A go-to at Eversheds Sutherland, Sara-Jane Pluke is a fantastic litigator.” She tenaciously defends brand owners across the technology, media and telecoms sectors.

Individuals: anti-counterfeiting

  • Godfrey Budeli - Adams & Adams
  • Mohamed Khader - Spoor & Fisher
  • Charl Potgieter - Spoor & Fisher
  • Hugo Prinsloo - Von Seidels

Individuals: enforcement

  • Deon Bouwer - Bouwers
  • Darren T Olivier - Adams & Adams
  • Charles Webster - Spoor & Fisher
  • Gérard du Plessis - Adams & Adams
  • Mariette Du Plessis - Adams & Adams
  • Mohamed Khader - Spoor & Fisher
  • Louise Myburgh - Spoor & Fisher
  • Jenny Pienaar - Adams & Adams
  • Gaelyn Scott - ENSafrica
  • Kelly Thompson - Adams & Adams
  • Carl van Rooyen - Spoor & Fisher
  • Eben van Wyk - Spoor & Fisher
  • Steven Yeates - Adams & Adams
  • Herman Blignaut - Spoor & Fisher
  • Nola Bond - KISCH IP
  • John Foster - Spoor & Fisher
  • Nolwazi Gcaba - Adams & Adams
  • Dale Healy - Adams & Adams
  • Alan Jeftha - Dentons
  • Andrew Papadopoulos - KISCH IP
  • Muhammad Patel - Dentons
  • Sara-Jane Pluke - Eversheds Sutherland (International) LLP
  • Hugo Prinsloo - Von Seidels
  • Megan Reimers - Spoor & Fisher
  • Lucy Signorelli - Adams & Adams
  • Waldo Steyn - ENSafrica
  • Bernadette Versfeld - Webber Wentzel
  • Tyrone Walker - Moore Attorneys

Individuals: prosecution and strategy

  • Jean McIvor - Spoor & Fisher
  • Leanne Mostert - Webber Wentzel
  • Darren T Olivier - Adams & Adams
  • Kay Rickelman - Spoor & Fisher
  • David Bernstein - de Chalains IP 
  • Nola Bond - KISCH IP
  • Claire Brown - Von Seidels
  • Simon Brown - Adams & Adams
  • Manisha Bugwandeen-Doorasamy - ENSafrica
  • Samantha Copeling - Adams & Adams
  • Blain De Villiers - Adams & Adams
  • Ilse du Plessis - ENSafrica
  • Johan Du Preez - Adams & Adams
  • Rowan Forster - ENSafrica
  • Stephen Goldberg - Spoor & Fisher
  • Reinhold Gregorowski - de Chalains IP 
  • Nelia Hickman - Adams & Adams
  • Janine Hollesen - Werksmans Attorneys
  • Eugene Honey - Adams & Adams
  • Esmari Jonker - Smit & Van Wyk Inc
  • David Legge - KISCH IP
  • Lisa McIlwaine-Hill - KISCH IP
  • Megan Moerdijk - Adams & Adams
  • Simonne Moodie - Von Seidels
  • Shane Moore - Moore Attorneys
  • Louise Myburgh - Spoor & Fisher
  • Andrew Papadopoulos - KISCH IP
  • Tshepo Shabangu - Spoor & Fisher
  • Lucy Signorelli - Adams & Adams
  • Waldo Steyn - ENSafrica
  • Vicky Stilwell - KISCH IP
  • Christine Strutt - Von Seidels
  • Marco Van Der Merwe - Spoor & Fisher
  • Eben van Wyk - Spoor & Fisher
  • Bernadette Versfeld - Webber Wentzel
  • Donvay Wegierski - Werksmans Attorneys

Individuals: transactions

  • Mariette Du Plessis - Adams & Adams
  • Johan Du Preez - Adams & Adams
  • Reinhold Gregorowski - de Chalains IP 
  • André Maré - ENSafrica
  • Derek Momberg - KISCH IP
  • Leanne Mostert - Webber Wentzel
  • Darren T Olivier - Adams & Adams
  • Waldo Steyn - ENSafrica
  • Eben van Wyk - Spoor & Fisher
  • Bernadette Versfeld - Webber Wentzel