Draft Intellectual Property Policy of the Republic of South Africa – Phased Implementation – Phase 2 – Part IV

On August 25, 2017, the Draft Intellectual Property (IP) Policy (Draft IP Policy) of the Republic of South Africa was published for public comments by November 17, 2017.  This Draft IP Policy follows from the IP Consultative Framework that was approved by the South African cabinet on July 6, 2016.  In this multi-part series, we address the need for the policy, the goals, the strategies to meet the goals, and the phases of implementation.  In the fourth part of this series, we focus on Phase 2 of the phased implementation of the Draft IP Policy.  In part one, we provided an introduction and the goals of the Draft Intellectual Property Policy.  In part two, we provided information on the strategies and key reforms of the Draft IP Policy.  In part three, we provided information on the phased implementation of the Draft IP Policy as it relates to IP and Public Health.

In order for the South African government to pursue urgent action in certain areas, conduct further in-depth study and consultation in other areas, and respond to a fast-evolving discipline, the Draft IP Policy will be implemented using a dynamic, two-phase approach.  Phase 1 will focus on: 1) IP and Public Health; and 2) will focus on International IP Cooperation (See, part three).

Phase 2 will focus on:

  • Intellectual Property Rights (IPRs) and the informal sector;
  • Branding of South African goods and services (collective marks, certification marks, and geographical indications);
  • Safeguarding South Africa emblems and national icons;
  • Commercialization of IP;
  • Enforcement;
  • IP localization and beneficiation;
  • IP awareness and capacity building;
  • IPRs and the environment/climate change/green technologies; and
  • IP in agriculture, IP and biotechnology, genetic resources and genomic sovereignty.

a) Intellectual Property Rights (IPRs) and the informal sector

The informal sector in South Africa has provided opportunities for employment for some of the most vulnerable populations in the country.  This sector is not traditionally thought to generate the type of innovation that would require IP protection.  Nonetheless, the Draft IP Policy raises the question as to whether IP is of relevance to the informal sector.  However, that does not mean that this sector may not be empowered and entitled to IPRs.  A key component of Phase 2 will be to explore how IPRs may optimally benefit the informal sector and generate a greater understanding of the costs and benefits.  Specifically, it has been suggested that the IP system could be used to empower this sector of the economy by using intangible assets as a veritable tool for the uplifting of economically marginalized communities.  The benefits of utility models and industrial designs, among others, will be explored.

b) Branding of South African goods and services (collective marks, certification marks, and geographical indications)

A key component of Phase 2 is assessing whether the relevant legislation provides sufficient and appropriate brand protection to South African goods and services.  Three signs used in branding are collective marks, certification marks, and geographical indications.  Collective marks are signs used to distinguish certain valued characteristics common to the products of the members of an association or cooperative.  Certification marks are distinctive signs used to indicate compliance with standards and characteristics pre-established by the owner of the mark, but are not confined to any membership.  Geographical indications are signs that have a specific geographical origin and possess qualities, reputation, or characteristics that are essentially attributable to that place of origin.  Currently, the Trade Marks Act makes provision for both collective marks and certification marks, and for the application of the provisions of the Trade Marks Act to such marks in so far as they can be applied.   With respect to geographical indicators (GI), the Liquor Products Act (LPA) provides protection for wine and spirits.  The Merchandise Marks Act (MMA) protects broader agricultural GIs as an interim measure pending migration of the protection to the Agricultural Products Standards Act.

c) Safeguarding South Africa emblems and national icons

In Phase 2, the Draft IP Policy will evaluate whether legislation is needed to protect South African emblems within the country.  If it is determined that protection is needed, the next step will be to determine the form of the protection.  Other countries have taken similar approaches, such as Australia, whose federal government decided against legislating a system specifically designed for protecting national icons.  This decision was made after Australia’s Advisory Council on IP (ACIP) was tasked with examining the possible mechanisms for doing so.  Currently, emblems and other official signs and hallmarks are protected at the international level by Article 6ter of the Paris Convention.  A party to the Convention, who is interested in obtaining protection, must notify other parties via WIPO of its desire to do so for its identified emblems.  Article 6ter requires that legislation must be enacted to protect other countries’ emblems, but does not require action to protect a country’s emblems domestically.

d) Commercialization of IP

The commercialization of IP is defined as the process, in which IP-protected products or services are brought to market.  Commercialization may be done by the rights holder alone, in partnership with another party, or by another party acting in terms of a license or an assignment of rights.  The process of commercialization as it currently stands, has proven challenging for innovators of varying scale in South Africa.  Phase 2 of the Draft IP Policy will explore options for ways that IP can help in bringing goods and services to market in the country.  Possibly policy interventions that may aide in this regard include: 1) the Department of Trade and Industry’s National Technology Commercialization Strategy; 2) the Department of Science & Technology’s (DST’s) Innovation White Paper; and 3) the Department of Telecommunications and Postal Service’s (DTPS) National Integrated Information Communication Technology (ICT) Policy White Paper.

e) Enforcement

Enforcement is an essential aspect in protecting IPRs.  The legal and institutional framework, in which IPRs are enforced, is provided by the South African government.  The government is also required to take reasonable measures to ensure that constitutionally protected rights are not infringed.  It has been suggested that South Africa may have to play a more active role in the enforcement of certain rights.  Accordingly, Phase 2 of the Draft IP Policy will evaluate the country’s current execution of enforcing the protection of IPRs, and will make modifications where necessary.

f) IP localization and beneficiation

The Draft IP Policy recognizes that IP is both an opportunity and a challenge to South African industry and society.  It is believed that Phase 2 will make use of existing scholarly evidence on the current production of IP within South Africa.  In doing so, and within the parameters of South Africa’s international obligations, the country will be able to create a differentiated system of empowerment and beneficiation for local industry groupings and individuals who seek to take advantage of the IP system in myriad ways.  Such a system will help to empower the people of South Africa.

g) IP awareness and capacity building

In an effort to promote IP awareness and capacity building, it is essential to thoroughly study and understand the opportunities and challenges that are presented by domestic and international IP policies in South Africa.  An optimal way to assess the opportunities and challenges is to garner input from diverse stakeholders from sections of industry, health, civil society, agriculture, and the arts.  This input would aid in remodeling and optimizing the IP system of South Africa.  During Phase 2, the work and coverage of the Companies and Intellectual Property Commission (CIPC) will be scaled up, so that South Africa is better able to communicate with stakeholders, particularly the most disadvantaged stakeholders.  This key element will ultimately help to promote domestic social and economic development.  

h) IPRs and the environment/climate change/green technologies

The development and use of green technologies are essential for meeting South Africa’s obligations with respect to the environment and climate change.  It has been suggested that adopting comprehensive flexibility to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) will be essential for the transfer and diffusion of new green technologies.  These measures will also help to facilitate opportunities for domestic research and generation of green technology.  A goal of Phase 2 will be to determine if there is any relevant flexibility in TRIPS that should be implemented in South Africa’s domestic IP law.  The use of such flexibilities would then be promoted for delivering domestic green technology to the country.

i) IP in agriculture, IP and biotechnology, genetic resources, and genomic sovereignty

The discussion on how to optimally apply IP within agriculture and related fields has been an evolving conversation that parallels that in other developing countries with comparable natural heritage, such as Asia and Latin America.  Thus, decisions made on domestic IP policy will take into consideration international obligations, which include conditions within the Paris Convention and the TRIPS Agreement.  Phase 2 of the Draft IP Policy will consider at least the following four issues: 1) how to reconcile provisions mandated by TRIPS and the Convention on Biological Diversity, especially as it pertains to “access and benefit-sharing” clauses that seek to give control of a region’s natural heritage to residents of that region; 2) Supporting efforts at developing indigenous and international biotechnology, without endangering access to agricultural products and/or limiting plant variety diversity; and 3) ensuring farmers’ rights, as well as implementing constitutional obligations to protect genomic sovereignty within South Africa; and considering other potential protections to boost domestic agricultural production.

The Draft IP Policy will ultimately promote and contribute to South Africa’s socioeconomic betterment by encouraging innovation, promoting local manufacture, preserving and leveraging the country’s resources and heritage, and empowering domestic industries and individuals who seek to take advantage of the IP system.  The implementation of phases of the Draft IP Policy will be monitored and evaluated to ensure success, which will greatly benefit South Africa and the international community as a whole.

This post was written by Lisa Mueller and Kate Merath of Michael Best and David Cochrane of Spoor & Fisher.


Changes to the IP Landscape in Turkey-Industrial Designs

On December 22, 2016, Turkey adopted a new IP Code of Property no. 6769 IP (IP Code), which repealed and replaced the Decree Laws on Patents and Utility Models, on Trademark and Service Marks, on Industrial Designs, and on Geographical Indications (Decree Law).  The new IP Code entered into effect on January 10, 2017.  In this multi-part series, we will address how this new IP Code changes the IP landscape in Turkey.  In our second installment of the series, we will examine the changes to the codes relating to industrial designs.  In part one, we examined the changes to the codes involving patents and utility models.

Submission of the Description of the Designs

Under the new IP Code, during examination, the submission of the description of an industrial design is optional.  This is because the information provided in the description does not affect the scope of the protection of the design.  In contrast, the former Decree Law required such a description to be provided during examination.  The new IP Code avoids an obligatory requirement for registering a design.

Industrial Designs will be Examined for Novelty

During examination, a design will now be examined for“novelty”.  Designs found not to be novel will be ex-officio refused.  The former Decree Law did not provide an ex-officio novelty search stage during examination.  In fact, novelty could only be questioned through a post-grant opposition or an invalidity action before the IP Courts.

Visible Parts of a Complex Product

According to the IP Code, only the visible parts of a complex product are protectable.   However, in order for the visible parts of a complex product to be protected, the visible parts must meet novelty and distinctive character requirements.  A design is considered to be novel if before the application date no identical design has been made available to the public anywhere in the world.

A design is understood to have an distinctive character if the overall impression it creates on the informed user is significantly different from the overall impression created on the same user by any design which has been made public (in Turkey or anywhere else in the world) before the application date of the design.  In the assessment of the distintiveness, the emphasis of the evaluation will be on the common features of the design; however, the degree of freedom of the designer in developing the design will also be taken into consideration.

Spare Parts of a Complex Product

According to Decree Law, the owner of a registered design could not assert its rights with respect to a visible part of a complex product until three years after the time period after which the design was first made available to the public. The new IP Code introduces a new derogation stating that the this three year period is not be applicable if the protected spare part design is mentioned among the list of “equivalent parts” issued by the Ministry of Science, Industry, and Technology.

Shorter Opposition Period

Under the new IP Code, the post grant-opposition period is now three instead of six months.  The reduction from six to three months will reduce the total registration time to less than a year.

Non-Registered Industrial Design Rights

In order for a design to be protected as a “non-registered” design, the design must first be made available to the public in Turkey.  The duration of protection for a non-registered design is three years from the date the design was first made available to the public (in Turkey).  Interestingly, non-registered design protection is intended to protect fast changing designs which are not intended to be registered for long periods by the design owner.  This type of protection will avoid registration costs for the designs for which registration is not preferred.  However, the owner of a non-registered design will be requested to evidence of ownership and that the design was first made available to the public in Turkey when enforcing its rights.

Non-registered designs are also protectable without any time limit under the unfair competition provisions of the Turkish Code of Commerce which remain in force.  During the next few years, it will be interesting to watch whether the Courts in Turkey will still allow such unfair competition cases after the completion of the 3 year protection period.

Enforcement of Non-Registered Designs

Under the new IP Code, designs are protectable for three years from the date of first public disclosure, if such disclosure was made in Turkey.  This protection is available for non-registered designs to prevent the use by third parties of identical or similar non-registered designs.  The IP Code also provides a common provision for the compensation of damages arising from intellectual property rights including registered and non-registered designs.  As a result, a design holder can ask for material damages which include actual damages and loss of income.  The loss of income can be calculated pursuant to one of the three (3) options mentioned in the IP Code, namely, the loss of income of the plaintiff, the income of the defendant or in accordance with an exemplary license fee.  Upon request by the plaintiff, the Court can increase the damages for the design holder under specific circumstances.  Moreover, the design holder can also seek moral/reputational damages.

Under the IP Code, a design holder can ask the Court to issue a preliminary and/or permanent injunction, compensation, the confiscation/destruction of the infringing goods and the tools and machinery (such as those used for manufacturing the infringing products), the publication of the verdict in a daily newspaper or any similar award.

Please continue to watch the BRIC Wall Blog for the remainder of the series on changes to the intellectual property landscape in Turkey.

This post was written by Lisa Mueller and Kate Merath of Michael Best and Okan Can of Deris.

Brazil: Strategies and Trends on Intellectual Property Technology Law and Litigation

On July 28 and July 29, Licks Attorneys and Quinn Emanuel Urquhart & Sullivan, LLP will be hosting a seminar in California on strategies and trends in intellectual property law in Brazil. With respect to the biotech, pharmaceutical and life sciences sectors, this seminar will examine topics such as intellectual property protection, the regulatory environment in Brazil, price control and reimbursement and legal issues for both the private as well as public market and PDP. To learn more, please find the conference invitation here: Brazil – Strategies and trends on IP Tech Law and Litigation