Protecting, managing and enforcing IP in Africa, a continent with 59 countries and islands, requires specialist IP knowledge, enduring relationships and on-the-ground resources, because each country has different laws, policies and infrastructures, at different stages of development.

Spoor & Fisher is proud to be the intellectual property partner of choice across Africa, where local and international companies, law firms and inventors trust our expertise, experience and know-how to protect their IP. With physical offices in Gambia, Ghana, Malawi, Zambia, OAPI (via Cameroon) and ARIPO (via Malawi), a direct filing presence in Sierra Leone and Zanzibar, and carefully appointed local associates, we don’t watch from afar; we actively manage the entire process.

Need information on filing requirements? Want to learn more about regional IP organisations? Use our interactive Africa map and browse our FAQs.

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South Africa FAQs

Country Information

Trade Mark Information

What is the classification for trade mark filing?

The Nice classification system applies, but only single-class filing is available. 

What are the international arrangements for trade marks?

South Africa is a signatory to the Paris Convention for the Protection of Industrial Property.

What categories of trade marks are provided for?

In addition to ordinary trade marks, there is provision for collective marks and certification marks.

What are the document requirements for a new trade mark application?
  1. Power of Attorney, simply signed
  2. Priority document (if applicable), with verified English translation
What are the document requirements for a trade mark renewal?

Power of Attorney, simply signed.

What are the document requirements for a trade mark assignment or merger?
  1. Power of Attorney, simply signed
  2. Deed of Assignment or other instrument of title, with verified English translation (if applicable).
What are the document requirements for a trade mark change of name?
  1. Power of Attorney, simply signed
  2. Certificate of Change of Name, with verified English translation
What are the document requirements for a trade mark change of address?

Power of Attorney, simply signed.

What are the document requirements for a trade mark licence/registered user?
  1. Powers of Attorney, simply signed, from owner and licensee
  2. Licence Agreement, with verified English translation
What is the legislation that governs trade marks?

Trade Marks Act, 194 of 1993.

Is electronic searching available?

The Registry maintains an electronic database. This database is available for private (non-official) online searching by approved users.

What are the trade mark registration duration and renewal terms?

The registration term is 10 years, as is the renewal term. 

Are trade mark assignments and licensing possible?

Assignments and the licensing of trade marks are recognised. 

Is there examination?

There is examination as to inherent registrability and prior rights.

Is opposition possible?

Opposition is possible after advertisement/publication.

Is cancellation possible for non-use?

A registration can be cancelled for non-use. The non-use term is 5 years from date of issue of registration certificate.

What is the situation regarding enforcement?

The owner of a trade mark registration can sue for infringement and this right extends to similar goods or services and even dissimilar goods or services in cases of dilution. Remedies available include an interdict, damages, a reasonable royalty and delivery-up. There are criminal sanctions for infringement and Customs provisions. There is also specific anti-counterfeiting legislation, the Counterfeit Goods Act 1997 – which also provides criminal penalties.

It is also possible to sue for passing off in the case of an unregistered trade mark, provided a reputation can be proven.

Is it possible to file a customs watch?

Recordal of trade marks with customs is possible and recommended.

Are there any related rights?

Common law (unregistered) trade marks that have a reputation can be enforced through the law of passing off. 

Patent Information

What categories of patents are provided for?
  • Patents of Invention
  • Patents of Addition
  • National Phase PCT Application
What are the document requirements for Ordinary Applications?

Minimum formal filing requirements:

  • Name(s) and address(es) of applicant(s)
  • Name(s) and address(es) of inventor(s)
  • Specification and claims in the language of any Paris Convention country together with any drawings
  • Number, date and country of the basic application if Paris Convention priority is to be claimed

Full formal filing requirements (including time limits):

  • Name(s) and address(es) of applicant(s) (required for filing)
  • Name(s) and address(es) of inventor(s) (required for filing)
  • Specification, claims and abstract in the language of any Paris Convention country together with any drawings (required for filing)

Note: A foreign language specification must be supplemented with a certified English translation thereof (three months from filing)

  • Declaration and Power of Attorney (form P.3) signed by or on behalf of the applicant – no legalisation required (six months from filing).
  • Statement on the Use of Indigenous Biological Resource, Genetic Resource, Traditional Knowledge or Use (form P.26) signed by or on behalf of the applicant – no legalisation required (six months).
  • Assignment from inventor where an assignee is the applicant – no legalisation required (eighteen months from filing date).
  • Assignment of priority rights where the applicant in South Africa differs from the applicant in the Paris Convention country – no legalisation required (eighteen months from filing date).
  • Certified copy of the basic application where Paris Convention priority is claimed, together with a verified English translation where necessary (six months from filing date).
  • The class into which the invention falls under the International Patent Classification (eighteen months from filing date).
What are the document requirements for filing urgent Paris Convention Applications?
  • Name and address of applicant
  • Number, date and country of the basic application in a Paris Convention country
  • Title of the invention

Note: an urgent filing must be supported within fourteen days by a specification and claims in the language of any Paris Convention country together with any drawings.

What are the document requirements for a National Phase PCT application?

Minimum formal filing requirements:

  • Name(s) and address(es) of applicant(s)
  • Name(s) and address(es) of inventor(s)
  • Number, date and country of the basic application if Paris Convention priority is to be claimed
  • International application number and filing date

Full formal filing requirements (including time limits):

  • Name(s) and physical address(es) of applicant(s) (required for filing).
  • Name(s) and address(es) of inventor(s) (required for filing).
  • Translation into English of specification, claims and textual matter of drawings (only if filed or published in a language other than English), including any amendments made under PCT Rules 19 and 34 (three months).
  • Declaration and Power of Attorney (form P.3) signed by or on behalf of the applicant – no legalisation required (six months).
  • Statement on the Use of Indigenous Biological Resource, Genetic Resource, Traditional Knowledge or Use (form P.26) signed by or on behalf of the applicant – no legalisation required (six months).
  • Assignment of invention (where an assignee is the applicant) – no legalisation required (twelve months)
  • Assignment of priority rights (where the South African applicant differs from the priority applicant) (twelve months).
  • Certified copy of the priority application where Paris Convention priority is claimed, if not filed with the PCT Receiving Office in terms of PCT Rule 17.1 (six months).
  • Copy of published specification, International Search Report and International Preliminary Examination Report, as well as any amendments made during the International phase, for our file.

Note: The deadline for filing national phase applications in terms of PCT Chapter I and Chapter

II is thirty-one months from the earliest priority date. This deadline may be extended by three months to thirty-four months from the earliest priority date.

What is the term of protection and renewal term?

The term of a South African patent is twenty years from the date of filing, in the case of ordinary patent applications, or from the international filing date in the case of national phase applications, subject to the payment of annual renewal fees from the third year following filing.

Extension of the patent term or extension of protection by way of Supplementary Protection Certificates cannot be obtained.

What are the novelty requirements?

Absolute novelty is required. Novelty is destroyed by:

  • all matter which has been made available to the public anywhere by written or oral description, by use or in any other way before the priority date;
  • matter contained in a South African patent application both as lodged and as open to public inspection if the priority date of that matter is earlier than the priority date of the invention; and
  • secret use on a commercial scale in South Africa before the priority date.

Exceptions: Disclosure or use which was made without the inventor’s/assignee’s knowledge or consent, and working of the invention in South Africa by way of reasonable technical trial or experiment, by the inventor or assignee.

What kind of works are patentable?

A discovery; a scientific theory; a mathematical method; a literary, dramatic, musical or artistic work or any other aesthetic creation; a scheme, rule or method for performing a mental act, playing a game or doing business; or the presentation of information are not patentable. However, an invention incorporating one or more of these items as a feature of the invention may still be patentable.

Can a patent be obtained for a plant / animal and / or a microbiological process?

A patent will not be granted for a plant, or an animal or an essentially biological process for the production of an animal or a plant, unless it is a microbiological process or the product of such a process. It is, however, possible to obtain protection for plant varieties by the grant of plant breeders’ rights.

Can a patent be obtained for methods of treatment and / or a pharmaceutical product?

Methods of treatment of the human or animal body by surgery or therapy or diagnosis are not patentable. However, a substance or composition for use in such a method is patentable even if the substance or composition itself is known.

Can a patent be obtained for software/computer programmes?

A program for a computer is not patentable.

What are the document requirements for an assignment or merger?
  1. Power of Attorney, simply signed
  2. Deed of Assignment or other instrument of title, with verified English translation
What are the document requirements for a change of name?
  1. Power of Attorney, simply signed
  2. Certificate of Change of Name, with verified English translation
What are the document requirements for a change of address?

Power of Attorney, simply signed.

Registered Design Information

What are the document requirements for an assignment or merger?
  1. Power of Attorney, simply signed
  2. Deed of Assignment or other instrument of title, with verified English translation
What are the document requirements for a change of name?
  1. Power of Attorney, simply signed
  2. Certificate of Change of Name, with verified English translation
What are the document requirements for a change of address?

Power of Attorney, simply signed.

What is the legislation that governs designs?

The South African Designs Act No. 195 of 1993 provides for the registration of designs applied to articles intended to be multiplied by industrial processes. In contrast to patent rights which are sought to protect an invention, i.e. the principle underlying a process or product, registered design rights are sought to protect only the physical form of an article of manufacture.

What is registerable as a design?
  • The Designs Act makes provision for the registration of both aesthetic designs (Part A registration) and functional designs (Part F registration).
  • An aesthetic design is defined as “any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of these purposes, and by whatever means is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof”. Design features which are necessitated by the function of the article in question, i.e. purely functional features, cannot validly be registered as aesthetic designs.
  • A functional design is defined as “any design applied to any article, either for the pattern or the shape or the configuration thereof, or for any two or more of these purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works”.
  • Both functional and aesthetic designs applications may be lodged in respect of the same article. It is important to note, however, that an aesthetic design registration affords the proprietor of the registration no rights in respect of the purely functional features of the article which is the subject of the registration, or its method of construction. Thus if it is important that a functional feature of an article also be protected, then it may be necessary to file applications for design protection in both Parts A and F of the designs register.
  • “Article” includes any article of manufacture, as well as any part of an article if manufactured separately.
  • A design may also be registered in respect of a set of articles of the same general character (which are ordinarily on sale or intended to be used together).
Is it possible to file more than one design embodiment in the same application?

Generally speaking, separate applications are required for different designs. However, in the case of a number of articles of the same general character (which are ordinarily on sale together or intended to be used together) and to which the same design (or the same design with modifications or variations not sufficient to alter the character of the articles) is applied, may constitute a “set of articles” and thus be subject of a single design application. An example would be a set of cutlery or a set of tools such as screwdrivers of different sizes.

To qualify as a set, each article in the set must have applied to it the same design, or the same design with modifications or variations not sufficient to alter the character or substantially alter the identity thereof.

Who may apply?

A person who claims to be the proprietor of a design may apply to register the design. If the application is made by a firm or partnership the full names of all partners must be provided. The proprietor of the design is:

  • the author of the design; or
  • where the author of the design executes the work for another person, the other person for whom the work is so executed; or
  • where a person, or his employee acting in the course and scope of his employment, makes a design for another person in terms of an agreement, such other person; or
  • where the ownership in the design has passed to any other person, such other person.
What are the novelty requirements?
  • An aesthetic design must be new and original and a functional design must be new and not commonplace in the art in question. Absolute novelty is required for both kinds of designs, subject to a six month period of grace from the “release date,” i.e. date of first disclosure.
  • A design is deemed to be new if it is different from or does not form part of the state of the art immediately before the priority date in the case of a convention application, or the date on which the application is lodged at the South African Designs Office in the case of non-convention application, or the release date, whichever is the earlier. The state of the art includes all matter which has been made available to the public anywhere in the world by written description, by use or in any other way.
  • Our courts have interpreted the meaning of “original” as akin to “original” in Copyright law. The design for which protection is claimed must, therefore, not have been copied from the design of an earlier article, and must have been created by the author in order to be protectable under Design law.
What Designs are not registrable?

A design will not be registered in respect of:

  • Any article not intended to be multiplied by an industrial process.
  • Design features of articles which are in the nature of spare parts for machinery, vehicles or equipment. There is unfortunately no definition in the Designs Act of what constitutes a “spare part”, nor have our Courts had an opportunity to rule on the matter. One possible interpretation is that a spare part is a wear part, i.e. one that would be expected to require regular replacement during the lifetime of a machine or piece of equipment, such as a spark plug in the case of an engine. A stricter interpretation is that any replaceable part of a machine or piece of equipment would constitute a spare part, for example, the cylinder head of an engine. (It must be noted that this exclusion does not in any way alter the availability of valid aesthetic design protection for appropriate features of component parts so long as the aesthetic features are sufficiently present and claimed).
  • Features necessitated solely by function (aesthetic designs only).
  • Method or principle of construction (aesthetic designs only).
Are Priority Claims allowed?

Multiple priority claims are allowed.

1. Examination by the designs office

There is no examination as to registerability. The Registrar considers each application, and once he is satisfied that all formal requirements have been met, and if he has no objection to the design being registered, accepts and registers the design and issues the official registration certificate. There is no provision for opposition. When a design is published, it is registered, and the official file becomes open to public inspection. An application must be finalised within twelve months of the date of filing. Errors in the application documents may be corrected upon application.

What are the terms of design?

The term of the registration of an aesthetic design is fifteen years and that of a functional design is ten years. The commencement of the duration is calculated from the application date or, if claimed, either the priority date or release date. Renewal fees are payable at the expiration of the third year from the application date, and annually there after.

What are the filing requirements?
  • Name & physical address of applicant
  • Article to which design is applied (title), e.g. “Bottle”
  • Type of design (aesthetic or functional)
  • Formal representations* with indication of views
  • Number, date and country of basic application if Paris Convention priority is to be claimed
  • Statement of features for which protection is sought (novelty statement)
  • Declaration and power of attorney (form D3) (six months from filing date)
  • Assignment of priority rights, where relevant (twelve months from filing date)
  • Certified copy of priority application, where relevant (six months from filing date)
  • Verified English translation of priority application, where relevant (six months from filing date)
  • International classification (Locarno Agreement)

 

* Representations: black and white photographs or drawings are acceptable.

What rights are granted on registration?

Once a design application has proceeded to registration, the proprietor of the design is granted, for the duration of the registration, the exclusive right in South Africa to exclude others from making, importing, using or disposing of any article embodying the registered design (or a design not substantially different from the registered design).

 

In cases of infringement of a registered design, the proprietor is entitled to the following relief:

  • an interdict;
  • surrender of any infringing product or any article or product of which the infringing product forms an inseparable part; and
  • damages or, in lieu of damages, a reasonable royalty which would have been payable by a licensee in respect of the registered design.
Can the design be assigned or licensed?

The proprietor of a design registration may assign or licence his rights in the registration to another person. It is not compulsory to record the assignment or licensing of a design registration at the Designs Office, but there are important advantages in doing so. Most importantly, an assignment which is not recorded has no validity except as between the parties to the assignment.

 

One possible consequence of this is that a third party who has no knowledge of the assignment can deal with the original proprietor as if that person were still the proprietor. This could be extremely detrimental for the new owner who would only have a contractual claim against the original proprietor. Also, in the case of infringement only the registered proprietor may institute proceedings. Thus, if an assignment is unrecorded, there will be a delay in taking action until such time as the assignment is recorded. Except in very limited circumstances, a licensee may not sue for infringement. Where the proprietor of a design registration institutes infringement proceedings, he is obliged to give notice thereof to all recorded licensees. Any such licensee is then entitled to intervene in the proceedings as a co-plaintiff.

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