World-class specialist litigation teams
At Spoor & Fisher, we are dedicated to developing effective filing strategies that help companies to protect their intellectual property rights and minimise litigation risk – but there are cases in which litigation becomes unavoidable.
So whether your IP rights need to be defended, you want to challenge the validity of IP rights belonging to other owners, or you need to challenge a decision, we can assist. Our specialist litigation teams are known for their local and international successes in trade mark, patent, design and copyright litigation cases.
We manage IP enforcement cases throughout Africa, for both South African and international clients.
Having handled claims for clients across a vast range of industry sectors, we have built extensive expertise in all types of litigation matters.
Trade Mark Litigation
Our Trade Mark Litigation team has specialist experience in trade mark infringement, Anton Piller orders, ambush marketing, passing off, unlawful competition, trade mark opposition and cancellation, company and domain name objections and advertising complaints.
We also have extensive experience in the enforcement of copyright in computer programmes, art works, and literature and film, and were instrumental in drafting South Africa’s copyright legislation.
Our Anti-Counterfeiting team handles the specialist litigation of counterfeiting matters.
Patent and Design Litigation
Our Patent and Design Litigation team is composed of experts in technology-based IP litigation, spanning patent and design infringement, revocation and restoration, the amendment of patents and registered designs, technical copyright, trade secrets, and plant breeders’ rights litigation.
IP-related matters may be heard in special courts or tribunals or before specialist adjudicators. In South Africa, these are the Commissioner of Patents, the Trade Marks Tribunal, the Companies Tribunal, the High Court of South Africa, the Supreme Court of Appeal, the Constitutional Court of South Africa, and the Registrar of Plant Breeders’ Rights.
It is much easier to stop someone from copying your brand if it is registered as a trade mark. If you don’t have a registration, you have to prove your rights in the brand by proving a reputation, which is not always easy to do. Please visit the Trade Marks page for specific and detailed FAQs relating to trade marks.
You need to consider all the facts first. For example, you must be sure that you started using your brand first. If so, you can consider sending a demand to stop. If they don’t stop, you can take action against them in court for trade mark infringement (if you have a registered trade mark) or in some countries, passing off (if you don’t have a registered trade mark). Please visit the Trade Marks page for specific and detailed FAQs relating to trade marks.
Generally, a patentee as the right to exclude other people from making, using, exercising, disposing of, offering to dispose of or importing the patented invention in the country of registration. This means that the owner can enjoy the whole profit and advantage of the invention, whether it is a machine, article, product, method or process.
This may vary from country to country. In South Africa, only a patent-owner can institute infringement proceedings. In contrast, a license-holder or licensee has no independent right to institute infringement proceedings as the sole plaintiff/applicant.
Proceedings for the infringement of a South African patent must be instituted in the Court of the Commissioner of Patents against any person who, without the authority of the owner, performs any of the acts of infringement.
Infringement proceedings may be instituted at any time, subject to any country-specific exceptions that may apply. For example, in South Africa, no proceedings for infringement of a patent may be instituted within a moratorium period of nine months from the date of grant of the patent, but on good cause shown on application to Court, the Commissioner of Patents may grant leave to institute such proceedings at any time during this moratorium period.
Meet the team
Carl van Rooyen
Eben van Wyk
Partner, Chairperson of the Partnership
Louis van Wyk