INTRODUCTION
The above Act (‘the IPLA Act”) was assented to by the President on 10 December 2013 and will come into operation on a date to be fixed by the President by proclamation in the Gazette. This will take place after the necessary regulations have been drafted and approved.
In the meanwhile it will be instructive to see how the amendments brought about by the IPLA Act introduce new concepts into our trade mark law, and how these will operate and influence practice under the Trade Marks Act as amended (“the Act”).
NEW DEFINITIONS
The IPLA Act introduces various new definitions that are common to the four intellectual property (IP) Acts that are amended in the IPLA Act viz the Performers’ Protection Act, the Copyright Act, the Trade Marks Act and the Designs Act. These definitions are repeated under various sections of the IPLA Act, and include “collecting society”, “community protocol”, “Council” (i.e. the National Council for Indigenous Knowledge), “database” (i.e. the National Database for Indigenous Knowledge), “Fund” (i.e. the National Trust Fund for Indigenous Knowledge), “indigenous community”, “National Trust” (i.e. the National Trust for Indigenous knowledge). However, the following (new) definitions are of particular importance for application to and in the Act viz:
i) TRADITIONAL TERM OR EXPRESSION includes an indigenous term or expression and a derivative indigenous term or expression;
ii) DERIVATIVE INDIGENOUS TERM OR EXPRESSION means any term or expression forming the subject of this Act, applied to any form of indigenous term or expression recognized by an indigenous community as having an indigenous or traditional origin, and a substantial part of which was derived from indigenous cultural expressions or knowledge irrespective of whether such derivative indigenous term or expression was derived before or after the commencement of this Act;
iii) INDIGENOUS TERM OR EXPRESSION means a literary, artistic or musical term or expression with an indigenous or traditional origin and a traditional character, including indigenous cultural expressions or knowledge which was created by persons who are or were members, currently or historically, of an indigenous community and which is regarded as part of the heritage of the community;
iv) INDIGENOUS COMMUNITY means any recognizable community of people originated in or historically settled in a geographical area or areas located within the borders of the Republic, as such borders existed at the date of commencement of this Act, characterized by social, cultural and economic conditions which distinguish them from other sections of the national community, and who identify themselves and are recognized by other groups as a distinct collective;
v) INDIGENOUS CULTURAL EXPRESSIONS OR KNOWLEDGE means any form, tangible or intangible, or a combination thereof, in which traditional culture or knowledge are embodied, passed on between generations, and tangible or intangible forms of creativity of indigenous communities, including, but not limited to –
a) Phonetic or verbal expressions such as stories, epics, legends, poetry, riddles, and other narratives, words, signs, names and symbols;
b) Musical or sound expressions, such as songs, rhythms and instrumental music, the sounds of which are the expression of rituals;
c) Expressions by action, such as dances, plays, ceremonies, rituals, expressions of spirituality, or religion, sports, traditional games, puppet performances, and other performances, whether fixed or unfixed; and
d) Tangible expressions, such as material expressions of art, handicrafts, architecture, or tangible spiritual forms, or expressions of sacred places;
vi) GEOGRAPHICAL INDICATION in as far as it relates to indigenous cultural expressions or knowledge, means an indication which identifies goods or services as originating in the territory of the Republic or in a region or locality in that territory, and where a particular quality, reputation, or other characteristic of the goods or services is attributable to the geographical origin of the goods or services, including natural and human factors.
AMENDMENTS TO THE ACT - CERTIFICATION TRADE MARKS AND COLLECTIVE TRADE MARKS –
Application to traditional terms and expressions and geographical indications
REGISTRABLE TRADITIONAL TRADE MARKS
(New) section 43A of the Act provides that the newly introduced sections of the Act shall apply to traditional terms and expressions and geographical indications. Nothing in these sections shall be construed as conferring any rights on any person in respect of intellectual property which is not a traditional term or expression.
New section 43B provides that, other than rights acquired prior to the commencement of the IPLA Act, a traditional term or expression shall not be capable of constituting a trade mark (i.e. an ordinary trade mark ( – comment by the author hereof). A traditional term or expression shall be capable of constituting a certification or collective trade mark or a geographical indication. In order to be registrable as a certification or collective trade mark, a traditional term or expression must be capable of distinguishing the goods or services of an indigenous community from that of another community or person.
Geographical indications or other marks of geographical origin may be registered as certification marks or as collective marks, respectively; and the Registrar is required to indicate clearly in the Register that the certification mark or collective mark, respectively, is a geographical indication.
However, no right in respect of a derivative indigenous term or expression or knowledge shall be eligible for registration unless –
a) prior informed consent has been obtained from the relevant authority or indigenous community; and
b) disclosure of the indigenous expression or knowledge has been made to the Companies and Intellectual Property Commission; (“CIPC”) and
c) a benefit-sharing agreement between the applicant and the relevant authority or indigenous community has been concluded.
If an indigenous community has established a community protocol then that protocol must be taken into account in any interaction with the indigenous community.
A traditional term or expression or geographical indication shall only be registrable in terms of this section if –
a) the traditional term or expression or geographical indication is a derivative indigenous term or expression or geographical expression and was created on or after the date of commencement of the IPLA Act, and the community from which the term or expression, or a substantial part thereof originated, is or was an indigenous community when the term or expression was created; or
b) the traditional term or expression or geographical indication was passed down from a previous generation.
UNREGISTRABLE TRADITIONAL TRADE MARKS
(New) Section 43C provides that traditional terms and expressions and geographical indications shall not be registrable, or if registered shall, subject to any rights in respect of a traditional term or expression acquired by any person prior to the commencement of the IPLA Act, be liable for removal from the register:
subject to sections 42 and 43, - if these are marks as set out in section 10(2)(b) of the Act; or
subject to section 43B(3), a mark that consists exclusively of a traditional term or expression and which in the bona fide and established practices of the trade has become indicative of or is generally associated with the goods or services in respect of which the mark is sought to be registered.
NATIONAL DATABASE FOR INDIGENOUS KNOWLEDGE & APPLICATIONS FOR REGISTRATION
(New) Section 43D deals with the above aspects. The database will constitute and function as a sub-register within the register of trade marks in respect of traditional terms and expressions and geographical indications. Such terms, expressions and geographical indications contained in applications referred to the Council and accepted in terms of subsection 14 and sections 42 and 43 or 43D, will be recorded in the database.
A natural person who has created a traditional term or expression or a geographical indication, or a natural or juristic person authorized to act on behalf of an indigenous community or on behalf of a natural person, or a person appointed by the Minister of Trade and Industry (“the Minister”) to act on behalf of an indigenous community which is no longer in existence, may submit a request to the Registrar of trade marks as prescribed for a traditional term or expression or a geographical indication to be registered in the database.
The applicant for registration and the proprietor shall be the National Trust in the event that –
i) the originator of the traditional term or expression or the geographical indication cannot be determined; or
ii) the originator is an indigenous community; or
iii) the indigenous term or expression or the geographical indication has developed in a manner that proprietorship cannot be shared amongst indigenous communities.
However, in all other instances related to indigenous terms or expressions, a person authorized to act on behalf of an indigenous community, or on behalf of an individual, may apply and be the proprietor; or in all other instances related to geographical indications, such a person or the relevant member of the indigenous community may apply and be the proprietor; or in all other instances related to derivative traditional terms or expressions, the relevant member of the indigenous community may apply and be the proprietor.
It should be noted that, for the purposes of the Act, an indigenous community is deemed to be a juristic person.
If the applicant for registration is an indigenous community, the request referred to above shall include a community protocol; and the protocol must be kept with the registration.
The CIPC may determine which information in the database must be kept confidential; and if the protocol indicates that certain information is sacred or must be kept in confidence, the CIPC is obliged to treat that information confidentially.
Any person who has an interest in a traditional term or expression or a geographical indication may submit a request to the Registrar of trade marks for the amendment or removal of a traditional term or expression or a geographical indication in the database.
If it appears to the Registrar of trade marks that the mark sought to be registered consists exclusively of, or an essential part thereof constitutes, a traditional term or expression or a geographical indication as contemplated in section 43B and that it is registrable in terms of the abovementioned sections 42, 43 or 43B, the registrar shall register the mark.
However, if it appears to the Registrar of trade marks that the mark sought to be registered is not registrable in terms of the abovementioned sections, the Registrar shall provisionally refuse the application and refer it to the Council for its advice. The Council shall consider such application and advise the Registrar within three months whether or not, in its opinion, the mark can be registered. Upon receipt of the advice of the Council, the Registrar shall accept or refuse the application.
In the case of an acceptance by the Registrar of trade marks, the Registrar shall notify the Council accordingly. The Registrar shall also notify the Director-General of the Department of Agriculture.
It should be noted that section 27(1)(a) and (b) of the Act does not apply to a traditional term, expression or geographical indication.
TERM OF PROTECTION
(New) Section 43E provides that the duration of a registration for derivative terms or expressions and geographical indications shall be as set out in section 37 of the Act viz for a period of 10 years. However, the duration of a registration in the case of indigenous terms or expressions or geographical indications viz that have been passed down from a previous generation, shall be in perpetuity.
INFRINGEMENT OF TRADITIONAL MARKS AND RELATED MATTERS
(New) section 43F provides that a proprietor of a trade mark in respect of a traditional term or expression shall not be able to interfere with or restrain a person referred to in section 35 of the Act or a person who has commenced using a mark in the course of trade from a date prior to the commencement of the IPLA Act and has continued to make bona fide use of such mark.
However, if any commercial benefit has been derived from such use after the date of registration of the traditional term or expression or geographical indication, then a licence fee, or a benefit, or both, shall be paid by such person to the proprietor.
Any person who has acquired rights as above, must comply with the provisions of (new) section 43B(6)(b) and (c) within 12 months after the commencement of the IPLA Act viz that person must make disclosure of the indigenous cultural expression or knowledge to the CIPC; and that person must conclude a benefit-sharing agreement with the relevant authority or the indigenous community(- Provided that the rights of the indigenous community to licence fees or benefits, or both, shall start on the commencement of the IPLA Act; and such person shall continue to hold his or her rights in the same manner as before the commencement of the IPLA Act.)
Any person who intends to acquire rights pertaining to use of an indigenous term or expression or geographical indication after the commencement of the IPLA Act, must comply with the provisions of (new) section 43B(6), as set out above.
The amount or value of the licence fee, benefit, or both, as contemplated above or as negotiated, shall be determined by agreement between the user of the mark and the owner thereof; or by one or more collecting societies representing one or both parties; or, in the absence of agreement, by an institution accredited by the CIPC; or by arbitration in terms of the Arbitration Act. (- Provided that, if the above persons or collecting societies cannot agree on which referral to follow, as set out above, within a reasonable period, then any party may refer the dispute for resolution in terms of (new) section 43I (-see below).)
Agreements concluded in terms of the above sections must be submitted to the Council which must scrutinize the agreement for compliance with intellectual property laws, including the Act, and the community protocol; and must, where any clause within the contract is regarded as not being to the benefit of the indigenous community or a member of the indigenous community concerned, require re-negotiation of that clause and provide the necessary advice.
The owner of a certification or collective trade mark in a derivative indigenous term or expression or geographical indication must pay a licence fee or benefit, as agreed above, to the owner or owners of the certification or collective trade marks in the indigenous term or expression or geographical indication from which the derivative indigenous term or expression or geographical indication was derived. However, where a person derives less commercial benefit from the use of a traditional term or expression or geographical indication than the prescribed value, such person shall be excluded from the above requirement to pay a licence fee or benefit.
A traditional term or expression or geographical indication may be used without obtaining prior consent if it is for the purpose of private study or private use; or professional criticism or review; or reporting on current events; or education; or scientific research; or legal proceedings; or making of recordings and other reproductions of indigenous cultural expressions or knowledge for purposes of their inclusion in an archive, inventory, dissemination for non-commercial, cultural heritage safeguarding purposes and incidental uses. However, only such portions as are reasonably required for such use are to be made/used (-the author’s comment) and the trade mark owner’s name must be acknowledged.
NATIONAL TRUST AND FUND FOR INDIGENOUS KNOWLEDGE
(New) section 43G provides that the National Trust and Fund shall constitute and function as a National Trust and Fund in respect of traditional terms and expressions and geographical indications for purposes of the IPLA Act. All monies payable in respect of the use of an indigenous term or expression or geographical indication registered under the IPLA Act and owned by the National Trust must be paid into the Fund and must be applied for the benefit of indigenous communities in the manner prescribed.
ASSIGNMENT AND LICENCES
(New) section 43H provides that a certification or collective trade mark shall not be transmissible by assignment, testamentary disposition or operation of law but the doing of any act may be licensed. However, assignment of an indigenous term or expression or geographical indication to a collecting society or transfer to a duly appointed representative of the indigenous community may be carried out.
In the event that a certification or collective trade mark vests in a representative of an indigenous community, that community may, upon the death or liquidation of that representative, as the case may be, or prior to the death or liquidation of that representative, by agreement as set out in the community protocol, transfer such certification or collective trade mark to a person, as the indigenous community may decide.
In the event of a certification or collective trade mark vesting in a representative of an indigenous community, such trade mark shall automatically upon the death of the last living member of such indigenous community transfer to the National Trust.
DISPUTES
(New) section 43I provides that the CIPC must accredit certain institutions which have the necessary capacity to adjudicate any dispute arising from the IPLA Act. Any dispute arising from the application of the IPLA Act must first be instituted in such an institution. The Minister shall prescribe the fees, processes and formalities relating to the institution and adjudication of a dispute.
No person appearing in proceedings before such an institution shall have the right to legal representation unless –
a) the adjudicator and all other parties consent; or
b) the adjudicator, after considering –
i) the nature of the questions of law raised by the dispute;
ii) the relative complexity and importance of the dispute; and
iii) the comparative ability of the parties to represent themselves in the adjudication,
concludes that it would be unreasonable to expect a party to deal with the adjudication without legal representation.
Any adjudication must take into account existing customary dispute resolution mechanisms.
The decision of the institution may be served, executed and enforced as if it was an order of the High Court.
Any party to proceedings before such an institution may appeal to a court of law against any decision of such institution, and the appeal must be noted and dealt with in the manner prescribed by law for appeals against a civil order or decision of a single judge.
NATIONAL COUNCIL FOR INDIGENOUS KNOWLEDGE (“THE COUNCIL”)
(New) section 43 J provides that the Council must advise the Registrar of trade marks on the registration of traditional terms and expressions under the Act.
COMPLIANCE WITH INTERNATIONAL AGREEMENTS
(New) section 43K provides that the Minister may by notice in the Gazette advise that any provision of the Act, as specified in that notice, shall apply to a country specified so that a community recognized in the specified country as an indigenous community shall be deemed to be an indigenous community as defined in this Act; and so that traditional terms and expressions and geographical indications recognized in the specified country as such shall be deemed to be traditional terms and expressions and geographical indications as defined in this Act.
The Minister may in such notice make the provisions of this Act applicable, in respect of a specified country, to its citizens or subjects; to persons who at material times are domiciled or resident in the listed country and who are members of an indigenous community in that country; and to juristic persons incorporated under the laws of the specified country and representing indigenous communities of that country.
The abovementioned notice may include exceptions or modifications to the application of this Act in respect of a specified country; provide for general application of this Act; or may limit application of this Act to such types of traditional terms and expressions and geographical indications as may be specified.
No notice shall be issued under this section in respect of any country which is not a party to a convention relating to trade marks to which the Republic is also a party, unless the Minister is satisfied that, in respect of the class of traditional terms and expressions and geographical indications to which the notice relates, provision has been or will be made under the laws of that country whereby adequate protection will be given to owners of traditional trade marks under this Act.
Section 35 of the Act shall, with the necessary changes required by the context, apply in respect of traditional terms or expressions.
AMENDMENT OF SECTION 69 OF THE ACT
(New) section 69(4) (et seq) provides that the Minister may make regulations providing for the fees, processes and formalities related to the submission and adjudication of a dispute set out in section 43I.
The Minister may also make regulations in consultations with the Minister of Finance, providing for the establishment, composition, funding and functions of collecting societies contemplated in section 43F, and any other matter that may be necessary or expedient to regulate for the proper functioning of such societies.
The Minister may further make regulations providing for the appointment of a person to act on behalf of an indigenous community which is no longer in existence.
The Minister may prescribe the value of a commercial benefit contemplated in section 43F(7).
The Minister may issue guidelines on any aspect of the IPLA Act, including -
a) protection of traditional terms and expressions and geographical indications;
b) examples and other measures to identify traditional terms and expressions and geographical indications;
c) the database, insofar as it relates to traditional terms and expressions and geographical indications;
d) the National Trust and Fund, insofar as it relates to traditional terms and expressions and geographical indications;
e) the Council, insofar as it relates to traditional terms and expressions and geographical indications; and
f) the dispute process as set out in section 43I.
COMMENTS ON THE ABOVE AMENDMENTS TO THE ACT
At present the amended (Trade Marks) Act permits local indigenous communities only to obtain protection for their traditional terms and expressions and geographical indications as certification and collective marks - and hence does not presently provide reciprocity for foreign indigenous communities. Such foreign indigenous communities such as the Masai , Himba, or Maori communities, for example, will have to await the Minister’s notification in the gazette in due course to the effect that their communities in the specified countries have been recognized for purposes of granting them reciprocal rights in South Africa to protect their traditional cultural expressions (as our indigenous communities are now able to do). Let us hope that the Minister will attend to this formality as soon as possible so that South Africa can comply with its international obligations in this regard – viz in terms of the Paris Convention and the so-called TRIPS Agreement.
In certain of the above sections reference is made to traditional or indigenous “knowledge” and its protection as a certification or collective trade mark. This appears to be out of place in a Trade Marks Act which in principle does not provide protection for “knowledge” per se but for trade marks that are capable of distinguishing the goods or services of one person or community from that of another. Traditional or indigenous knowledge, correctly speaking, relates to the technical knowledge that exists in indigenous communities, for example, in respect of cultivating, harvesting, processing and treating their community members with plant-based/natural herbs and medicines. In support of the aforementioned comments, reference is made to the recent Bill published in the Government Gazette No. 38754 dated 20 March 2015 by the Department of Science and Technology and entitled “Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill, 2014”.
Bearing in mind that the definitions of “device” and “mark” require that these must generally be capable of being represented graphically, it seems peculiar that the definition of INDIGENOUS CULTURAL EXPRESSIONS OR KNOWLEDGE (as set out above) includes the wording “intangible” and “unfixed” (and even ‘tangible “spiritual” forms’) which appear to be at odds with the aforementioned requirement of a “device” and a “mark”.
Another comment is that the legislator has seen fit to protect traditional terms and expressions by way of certification marks, collective marks and geographical indications. The use of the first of these is not fully understood because it is not clear why certification marks should be use as a vehicle. Certification marks are invariably used to indicate a certain quality or standard such as the SABS mark or the WOOLMARK, etc. However, these characteristics do not appear to be present in traditional terms or expressions that can be protected as trade marks unless the Council was to register for example an indigenous cultural expression that can serve as an ”umbrella” mark for use by all South African indigenous communities to indicate and certify that their goods originate from such communities (and not from a bogus origin).
A last comment is that the IPLA Act and its impact on the Trade Marks Act provide a complex piece of legislation. Firstly, jurists, including our courts, may struggle with its interpretation; and application, and secondly one wonders whether such extensive amendments to the Trade Marks Act were required – and whether traditional terms and expressions could not simply have been registered under the Act in its unamended form namely as ordinary and collective marks.
Publication Name: The Intellectual Property Laws Amendment ACT NO. 28 of 2013 and its application in respect of Trade Marks
Date: March, 2015
Andre van der Merwe
Director
Trade Mark & Patent Attorney
Email andrev@kisch-ip.com
Tel +27 11 324 3084
