Anti-Counterfeiting

What countries are considered to be the counterfeiting ‘hotspots’ in Africa where brand owners should protect their trade marks as priority?

Counterfeiting hotspots include South Africa, Nigeria, Kenya and Tanzania amongst others. The starting point will be to identify the key markets in Africa for your goods or services. It is also worth considering those countries that have large or fast-growing consumer markets and therefore the largest consumer markets. However, given the economic growth across the continent, it is difficult to exclude any country. Brand owners should note that to take effective enforcement action, trade marks should be registered.

Which countries in Africa allow for effective enforcement action for registered trade marks?

Algeria, Botswana, Cameroon, Djibouti, Ghana, Ivory Coast, Kenya, Mauritius, Morocco, Mozambique, Namibia, South Africa, Sudan, Tanzania, Tunisia, and Zambia.

Where are Customs Watch notices or surveillance requests currently possible and recommended?

Algeria, Mauritius, Morocco, South Africa, Sudan and Tunisia. Customs Watch notices are also available in Ivory Coast, but they are not always effective.

Which intellectual property rights may be enforced to prevent counterfeiting?
  • The rights in respect of a trade mark conferred by the applicable trade mark legislation, including well-known marks
  • The copyright in any work in terms of the applicable copyright legislation
  • The use of a particular mark in relation to goods, under legislation pertaining specifically to merchandise marks
Which intellectual property rights are not enforceable to prevent counterfeiting?

Patent and design rights, including common law rights like passing off and unlawful competition, are not generally enforceable against counterfeiting.

What acts of dealing in counterfeit goods are prohibited?

Generally, counterfeit goods may not be:
  • imported into or through or exported from or through South Africa, except for the private and domestic use of the importer or exporter;
  • possessed or controlled by any person engaged in the business of dealing in those counterfeit goods;
  • manufactured, produced or made, except for the private and domestic use of manufacturer, producer or maker;
  • sold, hired out, bartered or exchanged, or offered or exposed for sale, hiring out, barter or exchange;
  • distributed for the purposes of trade or for any other purpose that prejudices the owner of an associated intellectual property right; or disposed of in the course of trade.
Is it possible to record my intellectual property rights with Customs authorities in Africa?

Yes. In many Africa countries, including South Africa, the owner of an intellectual property right can record this rights with Customs authorities so that suspected counterfeit goods imported into or entering that county can be seized and detained.

If you’re a brand owner, this is an important step you need to take to ensure a successful anti-counterfeiting enforcement programme.

What happens when Customs detains a consignment of counterfeit goods?

Customs will usually forward samples of those goods to the intellectual property right owner or their representatives, to verify the authenticity of the goods.

If the goods are counterfeit, a formal complaint can be lodged requesting the seizure of the goods.

The Court can be approached for relief, which would include various forms of interdicts, delivery of the seized goods for destruction, and costs.

Which ports of entry are primarily used by importers to import counterfeit goods into South Africa?

Durban Harbour is South Africa’s biggest port of entry and a significant quantity of counterfeit goods is stopped by its authorities. OR Tambo International Airport is also a major port used by traders to import counterfeit goods into South Africa.

Other frequently used ports include:

  • King Shaka International Airport
  • Cape Town International Airport
  • Cape Town Harbour
  • Port Elizabeth Harbour
  • Beitbridge Border Post (land border post between Zimbabwe and South Africa)
  • Golela Border Post (land border post between Swaziland and South Africa)
  • Kopfontein Border Post (land border post between Botswana and South Africa)
  • Lebombo Border Post (land border post between Mozambique and South Africa)
Are there remedies available if counterfeit goods are found in the market?

Anti-counterfeiting legislation provides a quick and effective mechanism for seizing counterfeit goods identified in a market. Initial investigations could be conducted to obtain evidence of the counterfeit goods available for sale in the market, usually in the form of a test purchase.

Thereafter, a complaint could be lodged with anti-counterfeiting inspectors, requesting the issuance and execution of a search and seizure warrant.

Where are counterfeit goods typically found?

Counterfeit goods are typically offered for sale in the informal trading sector.

In our experience, the Johannesburg CBD is the hub of counterfeit trade in South Africa, with a number of additional hot spots in South Africa, including Marabastad in Pretoria, Bellville Station and Wonderful Plaza in Bellville, Cape Town.

With the evolution of technology, counterfeit goods are also commonly found online on peer-to-peer marketplaces, and sellers of these goods often operate out of suburban homes.

What might the consequences be for a perpetrator?

Counterfeiters may face a fine or prison time.  In South Africa, for example, a perpetrator would be punished, in the case of a first conviction, with a fine of up to R5000 per article or item, or with a term of imprisonment of up to 3 years, or with both.

In the case of a second or subsequent conviction, the fine is up to R10 000 per article or item, or a term of imprisonment of up to 5 years, or both.

How are counterfeit goods typically destroyed?

Destruction of counterfeit goods takes place in an environmentally friendly manner, either by shredding or crushing. Certain goods can also be recycled.

All counterfeit goods must be destroyed to such an extent that they are unable to return into the open market for sale.

What are online takedowns?

Over the last few years, websites and social media platforms have become rife with advertisements for the sale of counterfeit goods. In order to prevent this, a takedown notice can be sent to the relevant service provider, stating that the infringing use is 1) unauthorised and 2) infringes the rights of a copyright or trade mark owner.

Thereafter, the service provider will investigate the user’s conduct and may delete or suspend the user’s account.

What are the main challenges associated with anti-counterfeiting?

In an informal market it can be extremely difficult to identify the main perpetrators of anti-counterfeiting, who are usually the financiers. The traders themselves are often mobile and act as “runners” for a larger distributor.

Similarly, counterfeit merchandise enters the country in a clandestine manner, in the luggage of travellers or residents arriving from abroad, or in containers imported under cover of falsified documents.

A ‘one size fits all’ anti-counterfeiting strategy cannot be adopted. However, there are many strategies and initiatives for successfully identifying and pursuing action against the guilty. Spoor & Fisher has built one of Africa’s most extensive Anti-Counterfeiting teams, with comprehensive expertise in the legal and practical aspects of anti-counterfeiting enforcement.

If you have an anti-counterfeiting matter to discuss, please contact us for more information.

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