IP Primer for South African Start-Ups

Vusi Thembekwayo, well-known South African venture capitalist, speaker and entrepreneur said, “You don’t need money to start, but to grow”. This is great advice for start-ups and small-to-medium enterprises (SMEs) in our country.

Applied to the field of intellectual property, the appropriate idiom might be, “You don’t need to exploit all IP, but awareness thereof is crucial”. Whether IP in your world means branding, customer data, tech, software, or even apps, all of these and more form an integral part of the commercial value of your company – and are worth protecting. The goal of this short IP primer is to give you some of the basics to do so.

To begin with, the IP you’re most likely to be concerned with as a start-up or SME are the following: trade marks, patents, designs, and copyright.

Trade marks

A trade mark is intended to protect a device, name, signature, word, series of letters, set of numerals, shape, configuration, pattern, ornamentation, colour or container – or any combination of these – that acts as a badge of origin for goods or services.

It may be registered (and feature the ® symbol) or unregistered (and feature the TM symbol). Trade mark protection covers both identical and similar marks and endures for 10 years, after which renewal is possible.

Trade marks (some would say, ‘service marks’) can also be registered for services like engineering, computer programming, advertising, banking and insurance, leasing, entertainment, hotels, restaurants and beauty salons. In these cases, service marks distinguish a service as opposed to a product.

Where to start?

Search (start with the CIPC’s IP Online portal, although there is great benefit to instructing an IP attorney to conduct a comprehensive search for you), then file with the help of an IP attorney, and then maintain – again, with an IP attorney’s help. And don’t forget that your domain names, company names and social media handles will reflect your main trade mark, so secure those too.

Read our Trade Mark introduction – a complete guide to get more insights.

Patents and designs

While a patent protects a novel and inventive process, machine, system, device, new material or chemical composition, and endures for 20 years, a registered design protects the physical form of an article of manufacture.

The latter is more concerned with how the item looks than how it works, and endures for 10 or 15 years, depending on the specifics.

Where to start?

In both cases, if you suspect your process, product or design to be worthy of IP protection, don’t disclose the details publicly and contact an IP attorney.

Be aware that a registered design is generally easier to obtain, quicker to register and easier to enforce than a patent. In instances where your competitors are likely to ride on the back of your efforts by simply copying your design, it can be beneficial to use a registered design to obtain enforceable rights quickly, while your patent application may take longer to proceed to grant.

The same strategy may be used to get design protection quickly for some trade marks, while a trade mark registration is pending.

Copyright

When your idea becomes a work that is expressed in a material form, it could automatically be protected by copyright, depending on the kind of work. This form of IP protection prevents others from copying or adapting the work without your authorisation.

But it’s not possible to register copyright, apart from films in South Africa. Copyright exists automatically when the work is created, if the work is original and fits into a category that is recognised and protected by the Copyright Act, like literary works (written text), artistic works (logos), computer programs (apps), musical works, cinematograph films, sound recordings, broadcasts and programme-carrying signals.

The exact duration of protection depends on the type of work concerned but is generally a period of at least 50 years from the end of the year in which the author dies.

Where to start?

To prove that you’re the creator of an original work, you may need to:

  • show supporting evidence as to the progression of the work (early drafts, sketches, synopses, rough recordings, etc.);
  • ensure that your work is properly marked and dated; and,
  • in the case of a joint venture, clearly stipulate, in writing, who will own what rights and what happens when someone exits the relationship.

Despite the fact that there’s no need for registration when it comes to copyright, a number of countries do allow for voluntary registration. This is intended to solve disputes over ownership or creation, as well as to facilitate financial transactions, sales, and the assignment and/or transfer of rights.

The symbol © is an indication that copyright has been claimed. In the past, some countries had legislation in place that required you to include it but today, very few countries – including ours – include the use of such symbols as a legal requirement.

So, these might cover your IP rights.

But remember: In addition to protecting your IP from third-party infringement and exploring your IP commercially, you should also be aware of others’ IP rights. This will help you to ensure that you’re not limited in, or even prevented from, operating your business in a particular manner. Watch this space for more information in this regard.

Article by Kim Pietersen